Ex Parte Figlin

Patent Trial and Appeal Board

Dec 20, 2018

13659159 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/659, 159 10/24/2012
50400 7590 12/25/2018
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
OlegFiglin
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
2058.787US 1 3176
EXAMINER
TZENG, FENG-TZER
ART UNIT PAPER NUMBER
2659
NOTIFICATION DATE DELIVERY MODE
12/25/2018 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OLEG FIGLIN
Appeal2017-001719 1
Application 13/659,1592
Technology Center 2600
Before BRADLEY W. BAUMEISTER, JOSEPH P. LENTIVECH, and
SHARON PENICK, Administrative Patent Judges.
PENICK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1, 2, and 4--21. We have jurisdiction under 35 U.S.C.
§ 6(b )(1).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Appeal Br.," filed
March 18, 2016) and Reply Brief ("Reply Br.," filed November 14, 2016),
and the Examiner's Answer ("Answer," September 23, 2016) and Final
Office Action ("Final Act.," mailed December 11, 2015).
2 Appellant identifies SAP SE as the real party in interest. Appeal Br. 2.
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CLAIMED INVENTION
Appellant describes the claimed invention as "a conversation analysis
system for solution scoping and positioning." (Spec. ,r 1).
Claims 1, 15, and 18 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system comprising:
a computer processor;
a computer memory device coupled to the computer
processor; and
a computer display unit coupled to the computer
processor;
wherein the computer processor is configured to:
receive vocal input from one or more of a sales
representative or a customer during a sales meeting;
extract one or more keywords from the vocal input;
generate a query using the one or more keywords;
search a database of products and services using the
query; and
identify a product or service during the sales
meeting as a function of the query and display the product
or service on the computer display unit.
REJECTIONS
Claims 1, 2, and 4--21 are rejected under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more.
Claims 1, 2, 4--7, 9, 12, 13, 18 and 21 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Eggen et al. (US 2008/0235018 Al, published
Sept. 25, 2008) and Coleman et al. (WO 2009094482 Al, published July 30,
2009);
Claims 8, 10, and 19 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Eggen, Coleman, and Barlow (Linda Barlow, How to Use
Web Search Engines, THE SPIDER'S APPRENTICE) (hereinafter "Barlow");
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Claims 11 and 20 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Eggen, Coleman, and Kennewick et al. (US
2009/0150156 Al, published June 11, 2009);
Claims 14--16 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Eggen, Coleman, and Douglas A. Reynolds & Richard C. Rose, Robust
Text-Independent Speaker Identification Using Gaussian Mixture Speaker
Models, 3 IEEE TRANSACTIONS ON SPEECH AND AUDIO PROCESSING 72-83
(1995) (hereinafter "Reynolds"); and
Claim 17 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Eggen, Coleman, Reynolds, and Barlow.
ANALYSIS
Patent-Ineligible Subject Matter
With respect to the rejection of claims under 35 U.S.C. § 101,
Appellant argues claims 1, 2, and 4--20 as a group (App. Br. 8-17). We
select independent claim 1 as representative. The remaining claims stand or
fall with claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
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laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Mayo/Alice First Step
Evaluating the claims pursuant to the first step of the Mayol Alice
framework, the Examiner finds the claims to be "directed to the abstract idea
of a method of organizing human activities, where a human is able to
mentally perform each of the steps as noted in each of the independent
claims to extract [a] keyword from voice input to search a database of
products and services." Final Act. 6.
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Appellant argues that the claims "are more specifically directed to a
system or tool" and recite a mobile device or similar systems and are thus
not merely directed to the identified abstract idea. Appeal Br. 9--10.
However, our reviewing court has found that an abstract idea (such as "a
method that can be performed by human thought alone") is not rendered
patent-eligible merely by coupling it to a machine or manufacture.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373-1377
(Fed. Cir. 2011 ). Additionally, as the court noted in In re TL! Commc 'ns
LLC Patent Litig., 823 F.3d 607 (Fed. Cir. 2016), "not every claim that
recites concrete, tangible components escapes the reach of the abstract-idea
inquiry." Id. at 611.
Appellant additionally argues that "the Examiner offers no definition
of what is meant by 'abstract"' and directs us to a dictionary definition of the
term. Appeal Br. 10; Reply Br. 1. Appellant argues, alternatively, that the
case law (specifically Alice and In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)
( en bane)) provides a definition of "abstract" as relating to concepts such as
risk hedging and intermediated settlement, and that the concept identified
here is not an age-old concept such as these, but "are directed to novel,
specific features that were unknown prior to Appellant's invention." Appeal
Br. 10. Appellant argues that the determination of whether the claims are
directed to an abstract idea is not supported by evidence. Id. at 10-11.
Appellant contends that not all methods of organizing human activity and
not all methods that could be performed in the human mind are patent-
ineligible. Id. at 12-13. Appellant contends that "the driving concern of
preemption" is simply not present in this case. Id. at 14; Reply Br. 2.
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The Federal Circuit acknowledged in Amdocs that there is no single,
succinct, useful definition of "abstract idea," and the court suggested
examining earlier cases of a similar or parallel nature and the way those
cases were decided. Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F .3d
1288, 1294 (Fed. Cir. 2016) ("Instead of a definition [for what an 'abstract
idea' encompasses], then, the decisional mechanism courts now apply is to
examine earlier cases in which a similar or parallel descriptive nature can be
seen-what prior cases were about, and which way they were decided.").
It is well-settled that collecting information is within the realm of
abstract ideas - even when the information is limited to particular content.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016). It is also well-settled that analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, are
essentially mental processes within the abstract idea category. Id. at 1354.
And merely presenting the results of abstract processes of collecting and
analyzing information, without more, is abstract as an ancillary part of such
collection and analysis. Id. Similar to the claims at issue in Electric Power,
the claimed invention here gathers ("receive vocal input"), manipulates
("extract one or more keywords"), analyzes ("generate a query"; "search a
database"), and presents information ("identify a product or service ... and
display the product or service") of a specified content, but does not use any
particular inventive technology for performing those functions.
As the Examiner concludes, CyberSource is apposite here - in these
claims, what the computer processor is configured to perform can be
performed entirely mentally or using pen and paper, the system of claim 1
amounts to an abstract idea. CyberSource Corp. v. Retail Decisions, Inc.,
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654 F.3d 1366, 1372 (Fed. Cir. 2011) (cited in Ans. 3); see also In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (cited in Ans. 4.)
With respect to preemption, the Examiner specifically states that the
rejection is not motivated by concerns regarding preemption. Final Act. 3.
Furthermore, there is no dispute that the Supreme Court has described "the
concern that drives [the exclusion of abstract ideas from patent eligible
subject matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ fJor this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
Thus, we agree with the Examiner that the claims are directed to a
patent-ineligible abstract idea.
Mayo/Alice Second Step
With respect to the second step of the Mayo/Alice framework,
Appellant argues that the claims recite more than "simply conducting a sales
call" but also "identifying potential products for a customer based on
keywords identified in vocal input of the customer and sales representative."
Appeal Br. 15-16. However, this identification and use of a keyword were
also included in the abstract idea found in the claim, as discussed above.
Final Act. 6.
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Appellant further argues that the claim contains elements other than
generic computer structure implementing the abstract idea because the
system functions in a new and improved manner or contains a previously
unknown method. Appeal Br. 15-17. Putting aside the use of keywords,
addressed immediately above, Appellant provides us with no example of
what elements of the claimed system transforms the nature of the claim, and
we see no elements that are more than generic computer structure
implementing the abstract idea. Neither a finding of novelty nor a non-
obviousness determination automatically leads to the conclusion that the
claimed subject matter is patent-eligible. Although the second step of the
Mayo/Alice framework is termed a search for an "inventive concept," the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for "an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Alice Corp., 134 S. Ct. at 2355
( citation omitted).
Appellant's patent-ineligibility arguments have been fully considered,
but are not deemed persuasive, and, therefore, the rejection is sustained.
Obviousness
Claim 1
Appellant argues that Eggen teaches searching for information to
supplement a conversation, but that such information is not product and
services information, as in claim 1. Appeal Br. 17-18; Reply Br. 4.
Appellant further argues that Coleman discloses searching for products and
information on the basis of text messages and not from voice input. Appeal
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Br. 18; Reply Br. 4. Therefore, Appellant argues, Coleman, "either alone or
in combination with Eggen" does not teach or suggest the subject matter of
claim 1. Appeal Br. 18; Reply Br. 4.
It is axiomatic that "[t]he test of obviousness is what the combined
teachings of the references would have suggested to those having ordinary
skill in the art." In re Mouttet, 686 F.3d 1322, 1333 (Fed. Cir. 2012) (citing
In re Keller, 642 F.2d 413,425 (CCPA 1981)). The Examiner finds that one
of ordinary skill in the art at the time of the invention would have combined
Coleman's teaching of products and services information with Eggen's
teaching of supplemental content. Final Act. 8-9. Although Appellant
states in a conclusory fashion that the combination of the teachings of
Coleman and Eggen would not teach or suggest the subject matter of
claim 1, Appellant's discussion of the individual teachings of the two
references does not illuminate any error in the Examiner's findings and
conclusions regarding the combination of the two references.
Appellant's arguments relating to claim 1 have been fully considered
but are not deemed persuasive and, therefore, the rejection is sustained.
Claims 4-14, 18-20
Claims 4--14 depend, directly or indirectly, from claim 1. Claim 18 is
independent and bears relevant similarities to claim 1; claims 19 and 20
depend from claim 18. For these claims 4--14 and 18-20, no additional
arguments have been made. We sustain the rejection of these claims.
Claim 2
Claim 2 further limits the system of claim 1, requiring that "the
product or service comprises a software product or a software service; and
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wherein the computer processor is configured to display on a display unit
information relating to the identified software product or software service
and a demonstration of the identified software product or software service."
Appeal Br. 22 (Claims App'x).
The Examiner finds that the combination of Eggen and Coleman
teaches that goods or services including software being presented to a user
Final Act. 9 (citing Coleman ,r,r 37, 57; Eggen ,r 18). Appellant argues that
the combination does not teach or suggest "a demonstration of the identified
software product or service," because Coleman teaches only an audio feed.
Appeal Br. 19. "A demo of a music piece is not a disclosure of a
demonstration of a software product or service." Id.
We disagree that the Examiner erred. First, as before, Appellant does
not address "what the combined teachings of the references would have
suggested to those having ordinary skill in the art." In re Mouttet, 686 F.3d
1333. We agree with the Examiner that Coleman in combination with
Eggen ( teaching presentation of text, graphics, images, and videos) teaches
or suggests the demonstration of software. See Final Action 9-10.
Appellant argues that a demonstration of music is not a demonstration
of software, but Coleman teaches or suggests a demonstration of software
via an audio feed, as Coleman both discloses that software is a product that
might be sold and that the audio feed "preferably includes description or
demo of the product or service." Coleman ,r,r 37, 57. We agree with the
Examiner that the disputed limitation is taught or suggested by Coleman in
combination with Eggen's teachings, including the Eggen display device
(Eggen ,r 18, cited at Final Act. 9-10).
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Appellant's arguments relating to claim 2 have been fully considered,
but are not deemed persuasive, and, therefore, the rejection is sustained.
Claims 15-17
In Claim 15, Appellant claims:
15. A process comprising:
receiving into a mobile device vocal input from one
or more persons;
extracting one or more keywords from the vocal
input;
generating a query using the one or more keywords;
searching a database of products and services using
the query; and
identifying a product or service as a function of the
query;
wherein the computer processor is configured to
differentiate between the vocal input of
different persons during a conversation, and
to search the database using keywords from
the vocal input of only one of the persons in
the conversation.
Appeal Br. 24--25 (Claims App'x) (emphasis added).
The Examiner finds that the combination of Eggen, Coleman, and
Reynolds teaches this, finding that the speaker identification of Reynolds
teaches or suggests "differentiat[ion] between the vocal input of different
persons." Final Act. 19. The Examiner further adds that Eggen teaches
capturing the conversation of "one or more of the participants" ( quoting
Eggen ,r 22) and that this "reads on the option of capturing vocal input from
only one of the participants." Final Act. 5; Ans. 7.
Appellant argues that the Examiner has failed to show how the
combination teaches or suggests "searching the database using keywords
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from the vocal input of only one of the persons in the conversation." Appeal
Br. 19; Reply Br. 5.
We agree with Appellant. The ability to distinguish speakers ( as in
Reynolds) does not necessarily teach or suggest using only one speaker's
input for a search, and we do not agree that Eggen's disclosure of capturing
input of "one or more" person's speech, combined with Reynold's teachings,
would have taught or suggested to one of ordinary skill that only one
person's speech input, from among any other persons in the conversation, is
used.
Thus, we do not sustain this rejection.
We note that, although not specifically argued together, claims 16 and
17 depend from claim 15, and the rejections of these claims are based on the
rejection of claim 15. Thus we do not sustain the rejections of claims 16
and 17.
Claim 21
Claim 21 further limits the system of claim 1, adding that "the
computer processor is configured to generate a sales bid for the customer
using the identified product or service." Appeal Br. 25 (Claims App'x).
Appellant argues that Coleman "only relates to providing simple price
and availability information" and such information "is not a disclosure of
generating a sales bid, especially in the context of a sales meeting between a
sales representative and a customer as recited elsewhere in the claim."
Appeal Br. 20. We note that providing descriptions of products and services
and other additional information is contemplated in the cited portions of
Coleman. Coleman ,r 5.
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Claim terms are given their broadest reasonable interpretation
consistent with the specification in which they appear. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). Appellant's
Specification provides little detail to allow us to determine whether "simple
price and availability information" ( as Appellant characterizes the teachings
of Coleman) could be "a sales bid" (as in the claim). The only use of the
word "bid" in the Specification relates to a disclosure that the invention "can
be used during an opportunity generation phase as well as during a more
detailed bid process." Spec. ,r 10; see Appeal Br. 5 (citing this paragraph of
the Specification for claim 21 ). Although this bid process is described as
detailed, we do not see an indication that a "sales bid," according to its
broadest reasonable interpretation in this case, must be more narrowly drawn
to information other than price and availability. Thus, we agree with the
Examiner that Coleman's teaching teaches or suggests the "sales bid" of
claim 21.
Appellant's arguments relating to claim 21 have been fully considered
but are not deemed persuasive and, therefore, the rejection is sustained.
DECISION
The Examiner's rejection of claims 1, 2, and 4--21 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejections of claims 1, 2, 4--14, and 18-21 under
35 U.S.C. § 103(a) are affirmed.
The Examiner's rejections of claims 15-17 under 35 U.S.C. § 103(a)
are reversed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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