Ex Parte Flockhart et al

Patent Trial and Appeal Board

Jun 8, 2018

13250521 (P.T.A.B. Jun. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/250,521 09/30/2011
48500 7590 06/12/2018
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Andrew D. Flockhart
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.
4366-581 5934
EXAMINER
MISIASZEK, AMBER AL TSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/12/2018 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW D. FLOCKHART, JOYLEE KOHLER and
ROBERT C. STEINER
Appeal2017-001202
Application 13/250,521 1
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-21, which constitute all of the claims
pending in this application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Avaya, Inc. as the real party in interest. App. Br. 2.
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Application 13/250,521
THE INVENTION
The disclosed and claimed invention is directed to "communications
and more specifically toward contact centers." Spec. i-f 1. 2
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A method of assisting routing behavior in a contact center
that is operated by a first entity, the method comprising:
receiving, by the contact center, contacts comprising work
items from user communication devices over a network, wherein
work items are logical representations of work to be performed
at the contact center or at a second entity that operates additional
resources outside the contact center;
using, by a work assignment engine, a first routing
algorithm to make work item routing decisions in the contact
center, the first routing algorithm causing a first ratio or rate of
work items to be routed to the second entity;
assessing an agreement between the first entity and second
entity that defines one or more long-term commitments over a
commitment period;
estimating, at a first time during the commitment period, a
total number of work items that will be routed to the second
entity by the end of the commitment period;
determining, within a subset of a fixed period of time
during the commitment period, a number of work items that have
been routed to the second entity; and
determining, by a cost optimization agent operating on a
server in the contact center and based on the estimated total
number of work items that will be routed to the second entity by
2 We refer to the Specification filed Sep. 30, 2011 ("Spec."); Non-Final
Office Action mailed Sep. 10, 2015 ("Non-Final Act."); Appeal Brief filed
Feb. 10, 2016 ("App. Br."); Examiner's Answer mailed Aug. 26, 2016
("Ans."); and the Reply Brief filed Oct. 26, 2016 ("Reply Br.").
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the end of the commitment period, whether to continue using the
first routing algorithm or to switch to using a second routing
algorithm that causes a second ratio or rate of work items to be
routed to the second entity, wherein the second ratio or rate of
work items may only change by a determined percentage
compared to the first ratio or rate of work items during a
determined period of time.
REJECTIONS
Claims 1-21 stand rejected under 35 U.S.C. § 101 because the claims
are directed to patent-ineligible subject matter. Non-Final Act. 3.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants' arguments regarding claims.
Section 101 Re} ection
The Alice/Mayo Framework Governing Patent-Eligible Subject Matter
Patent-eligible subject matter is defined in§ 101 of the Patent Act,
which recites: "Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title."
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
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Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
134 S. Ct. at 2355. Thus, we must consider "the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (citing Mayo, 566 U.S. at 79). The claim must contain
elements or a combination of elements that are "sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[abstract idea] itself." Id. (citing Mayo, 566 U.S. at 79).
The Supreme Court set forth a two-part "framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Id. at
2355.
Id.
First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. [Mayo,] 132
S. Ct., at 1296-1297. If so, we then ask, "[w]hat else is there in
the claims before us?" Id., at--, 132 S. Ct., at 1297. To
answer that question, we consider the elements of each claim
both individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application. Id., at--, 132 S.
Ct., at 1298, 1297. We have described step two of this analysis
as a search for an "'inventive concept"'-i.e., 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." Id., at--, 132 S. Ct., at
1294.
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
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of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
"abstract idea." Rather, the Federal Circuit has explained that "both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfzsh, 822 F.3d at 1334; see also Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent eligible under § 101, "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").
Under the second step of the Alice/Mayo framework, we examine the
claim limitations "more microscopically," Elec. Power, 830 F.3d at 1354, to
determine whether they contain "additional features" sufficient to
"'transform the nature of the claim' into a patent-eligible application."
Alice, 134 S. Ct. at 2355, 2357 (quoting Mayo, 566 U.S. at 78). "Mere
recitation of concrete, tangible components is insufficient to confer patent
eligibility to an otherwise abstract idea. Rather, the components must
involve more than performance of well-understood, routine, conventional
activit[ies] previously known to the industry." In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at
2359).
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Abstract Idea
The Examiner concludes the claims are directed to "making a work
item routing decision and then routing a ratio or rate of work items to a
second entity." Non-Final Act. 3. More specifically, the Examiner
concludes the claims are directed to receiving a work item and determining
the routing of the work item, which is the abstract idea of using categories to
organize, store, and transmit information. Id. The Examiner further
determines the claims are similar to those found to be abstract in Cyberfone
System, LLC v. CNN Interactive Group., Inc., 558 F. App'x 988 (Fed. Cir.
2014). Non-Final Act. 3; Ans. 4, 7-8.
Appellants argue the claim cannot be carried out mentally or with
pencil and paper because the limitations are directed to "a technological
system for routing work items received by a contact center, which is
hardware." App. Br. 14; see App. Br. 10-11. Specifically, Appellants argue
the contacts comprising work items cannot be received without hardware
and network components, and the claims are directed to the call center
environment. App. Br. 15; Reply Br. 4--5. Appellants contend the claims,
unlike in Cybeifone, are "inextricably tied to a contact center ... which is a
particular machine or apparatus." Reply Br. 7 (citing SiRF Tech. v. Int'!
Trade Comm 'n, 601 F.3d 1319, 1332-33 (Fed. Cir. 2010)).
Appellants further argue the claim is directed to a "concrete, technical
solution rooted in computer technology that addresses challenges particular
to electronic commerce." App. Br. 15. Specifically, Appellants contend the
"claims improve the functioning of a contact center," and "recite meaningful
limitations that assist in making routing decisions for work items in a contact
center." Reply Br. 9, 12.
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Appellants further contend the claimed limitations do "not preempt
the entire field of 'making a work item routing decision and then routing a
ratio or rate of work items to a second entity."' App. Br. 17.
The Examiner further determines the claims are similar to those found
to be abstract in SmartGene, Inc. v. Advanced Biological Laboratories, SA,
555 Fed. App'x 950 (Fed. Cir. 2014). See Ans. 4 (the claims are directed to
"an idea 'of itself' ... [collecting and] comparing new and stored
information and using rules to identify options") (emphasis omitted). Claim
l's steps can be identified as collecting and comparing new and stored
information and using rules to identify options (making a work item routing
decision). A mental process comprising the "mental steps of computing new
and stored information and using rules to identify[] options" is not patent-
eligible. SmartGene, 555 Fed. App'x at 955.
The Examiner further determines the claims are similar to those found
to be abstract in Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344 (Fed. Cir. 2014). See Ans. 4 (the claims are
directed to "an idea 'of itself' ... organizing information through
mathematical correlations") (emphasis omitted). Claim l's steps can be
identified as organizing information through mathematical correlations
(making a work item routing decision). A method describing the "process of
organizing information through mathematical correlations" is an abstract
idea. Digitech, 758 F.3d at 1350.
We are not persuaded by Appellants' arguments that the Examiner
erred. The Examiner identifies the abstract idea using categories to organize
and transmit information, citing to Cyberfone. See Non-Final Act. 3; Ans. 4,
7-8. As identified by the Examiner, claim l's steps can be identified as
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using categories to organize information (making a work item routing
decision) and using categories to transmit information (routing a ratio or rate
of work items to a second entity). See Non-Final Act. 3. A method of
"using categories to organize, store, and transmit information is well-
established ... the idea of collecting information in classified form, then
separating and transmitting that information according to its classification, is
an abstract idea that is not patent-eligible." Cyberfone, 558 F. App'x at 992.
Moreover, we disagree with Appellants that the claims in this case are
directed to a computer-centric problem. In DDR3, the Court found that the
claims "do not merely recite the performance of some business practice
known from the pre-Internet world along with the requirement to perform it
on the Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR, 773 F.3d at 1257. We agree with
and adopt the Examiner's determination that unlike the claims in DDR, the
claims in this case do not improve computers as tools, but rather improve
independently abstract ideas that use computers as tools. Ans. 6.
We are also not persuaded by Appellant's arguments regarding
whether the claims can be performed mentally or with pen and paper.
Appellants appear to misunderstand the Federal Circuit's analogy to pen and
paper. The question is not whether a human, without hardware and network
components, can receive work as recited in the claims, but whether the
claims are merely invoking computer functionality to do what a human
might do mentally or with pen and paper:
3 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)
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The district court correctly held that the claim 1 method falls
outside the eligibility standards of section 101 as that provision
has been construed. This conclusion follows from CyberSource
Corp. v. Retail Decisions, Inc., where, based on earlier
precedents, this court held that section 101 did not embrace a
process defined simply as using a computer to perform a series
of mental steps that people, aware of each step, can and regularly
do perform in their heads. 654 F.3d 1366, 1373 (Fed.Cir.2011);
see also In re Grams, 888 F.2d 835, 840-41 (Fed. Cir. 1989); In
re Meyer, 688 F.2d 789, 794--95 (CCPA 1982). As CyberSource
explains, those precedents rest on Supreme Court decisions
indicating that section 101 covers neither "mental processes"-
associated with or as part of a category of "abstract ideas"-nor
processes that merely invoke a computer and its basic
functionality for implementing such mental processes, without
specifying even arguably new physical components or specifying
processes defined other than by the mentally performable steps.
See Gottschalk v. Benson, 409 U.S. 63, 67---68 (1972); Parker v.
Flook, 437 U.S. 584, 589 (1978).
SmartGene Inc. v. Adv. Bio. Labs. SA, 555 F. App'x 950, 954 (Fed. Cir.
2014); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 73 (Fed. Cir. 2011) ("Thus, claim 3 's steps can all be performed in the
human mind. Such a method that can be performed by human thought alone
is merely an abstract idea and is not patent-eligible under § 101. Methods
which can be performed entirely in the human mind are unpatentable not
because there is anything wrong with claiming mental method steps as part
of a process containing non-mental steps, but rather because computational
methods which can be performed entirely in the human mind are the types of
methods that embody the 'basic tools of scientific and technological work'
that are free to all men and reserved exclusively to none.") (quoting
Gottschalkv. Benson, 409 U.S. 63, 67 (1972)) (footnote omitted)).
Although a person using paper and pen cannot receive "contacts comprising
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work items from user communication devices over a network," a human can
receive a paper record (comprising a work item) and use that information to
make assignment routing decision. Therefore, contrary to Appellants'
assertion, claim 1 falls clearly within the pen and paper analogy for abstract
ideas.
With regard to Appellant's preemption argument, although the extent
of preemption is a consideration, the absence of complete preemption is not
dispositive. See, e.g., Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility."); Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346
(Fed. Cir. 2013) ("[T]he Supreme Court has stated that, even if a claim does
not wholly pre-empt an abstract idea, it still will not be limited meaningfully
if it contains only insignificant or token pre- or post-solution activity- such
as identifying a relevant audience, a category of use, field of use, or
technological environment.") (citations omitted), vacated and remanded,
WildTangent, Inc. v. Ultramercial, LLC, 134 S. Ct. 2870 (2014) (remanding
for consideration in light of Alice, 134 S. Ct. 2347). Accordingly, even if the
claims does not preempt the abstract idea, that alone is not enough to render
the claims patent-eligible.
Accordingly, we agree with the Examiner that the claims are directed
to an abstract idea.
Streamlined Analysis
Appellants further argue claim 1 should be evaluated using the so-
called "Streamlined Eligibility Analysis." See App. Br. 11-12 (citing
Section I.B.3 of the Interim Eligibility Guidance). Contrary to Appellants'
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argument, the Examiner is not required to use the streamlined patent-
eligibility analysis; instead, it is at the Examiner's discretion. As the Interim
Eligibility Guidance cited by Appellant states, "[a] streamlined analysis can
be used" (emphasis added), but it does not state any circumstances when the
streamlined analysis must be used. See 2014 Interm Guidance on Patent
Subject Matter Eligibility, 30 (emphasis added),
http_§_~LbYW~Y:_li§Q!Q_,_gQyL§jJ_~_§Ld~_fo11Hifil~_§L_g0g11m~nt~i!r9:ining~~9-2_Q::.
%202014%20intedm%20guidance.Qdf. Therefore, Examiner's decision to
perform a full section 101 analysis using the Al ice/Mayo framework is not
erroneous.
Moreover, even if the Examiner failed to follow the Director's
Guidance-which the Examiner did not do-such a failure would be
appealable only to the extent that the Examiner has failed to follow the
statutes or case law. That is, to the extent the Director's Guidance goes
beyond the case law and is more restrictive on the Examiner than the case
law, any alleged failure of the Examiner to follow those added restrictions is
a matter for petition to the Director as "petitionable matters should be
addressed before an appeal reaches the Board." Ex Parte Frye, 94 USPQ2d
1072, 1078 (BP AI 2010). "Filing a Board appeal does not, unto itself,
entitle an appellant to de novo review of all aspects of a rejection." Id. at
1075-76.
We review Appellants' particular arguments against the case law and
find no requirement in the law that the Examiner perform the so-called
streamlined analysis as opposed to utilizing the Alice/Mayo framework set
forth by the Supreme Court and the Federal Circuit. Accordingly, any
alleged failure to follow the Guidance is petitionable, not appealable. See,
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e.g., Ex Parte Hwang, Appeal 2017-007960, 2018 WL 1494738, *5 (PTAB
Mar. 20, 2018); Ex Parte Lindelsee, Appeal 2016-008327, 2018 WL
1419771, *5 n.2 (PTAB Mar. 14, 2018).
Significantly More
The Examiner determines that the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements amount to no more than generic
computer structures (i.e., communication device, network, and server)
serving to perform generic computer functions that are well-understood,
routine, and conventional activities previously known in the industry (i.e.,
receiving, assessing, estimating, and determining). Non-Final Act. 3--4. The
Examiner further determines Appellants' Specification does not describe a
specialized computer, but rather a generic computer executing standard
functions. Non-Final Act. 3.
Appellants argue claim 1 includes significantly more than an abstract
idea. App. Br. 16. Specifically, Appellants contend claim 1 includes
meaningful limitations beyond generally linking the use of the idea to a
particular generic technological environment, and the limitations are not
merely features of a generic computer but instead define features of a
specialized and novel method. App. Br. 17; Reply Br. 4.
We are not persuaded by Appellants' argument that the Examiner
erred. As cited by the Examiner (Ans. 6), this case is similar to Electric
Power, in which our reviewing court found the claims patent-ineligible
because "[t]he claims at issue do not require any nonconventional computer,
network, or display components, or even a 'non-conventional and non-
generic arrangement of known, conventional pieces,' but merely call for
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performance of the claimed information collection, analysis, and display
functions 'on a set of generic computer components' and display devices."
Elec. Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
(citing BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1349--52 (Fed. Cir. 2016)). Similarly, the claims in this case
merely recite using computers as tools while "collecting information
(receiving a work item), analyzing it (making a routing decision based on
assessing an agreement and estimating time/number of work items), and
providing certain results (determining a number of work items to be routed
and determining whether to use a different algorithm to route work items)."
Ans. 6.
Furthermore, the claimed agents and engines are defined by the
functions they perform rather than how they perform their functions, and do
not define specific machines performing specific functions. For example,
the work assignment engine is described in Appellant's Specification as
residing "in a number of different servers or processing devices," or
employing "cloud-based computing architectures" or "made available in a
cloud or network such that they can be shared resources." Spec. i-f 43. A
contact center is described "in which a plurality of resources 112 are
distributed to handle incoming work items (in the form of contacts) from the
customer communication devices 108." Spec. i-f 29. As such, the contact
center, work assignment engine, and agents claimed describe generic
computer components that perform generic computer functions.
Appellants further contend the claims include specific limitations
other than what is conventional in the field, as is evidenced by the lack of
any art-based rejection. App. Br. 17.
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We are not persuaded by Appellant's argument that the Examiner
erred. Appellant's Specification describes that "the contractor is
incentivized to meet their agreement minimums with each sub-contractor
without greatly exceeding such minimums," and "[h ]istorically speaking, the
adjustments made throughout the time period are made manually by the
contractor's administrative personnel." Spec. i-f 4. In other words,
Appellant's Specification describes that the functions of the claim, to adjust
routing to each of the sub-contractors throughout the time period, are known
and conventional. Furthermore, a novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. Mayo, 566 U.S. at 90.
Appellants contend claims 2, 7-10, 14--16, and 21 require additional
analysis to address the additional elements, and that the Examiner erred in
not making separate findings or additional analysis to address the additional
elements of claims 2, 7-10, 14--16, and 21. App. Br. 18-23; see Reply Br. 8.
We are not persuaded by Appellants' argument. Independent claims 9 and
16 are commensurate in scope with claim 1, and the dependent claims
include all of the limitations of the independent claims. We agree with the
Examiner's conclusion that the commensurate independent claims and the
dependent claims are all related to the same general concept with different
aspects as claim 1. Ans. 10.
Accordingly, we sustain the Examiner's rejection of claim 1 as being
directed to patent-ineligible subject matter, as well as commensurate
independent claims 9 and 16 and dependent claims 2-8, 10-15, and 17-21.
See App. Br. 23.
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DECISION
The Examiner's rejection of claims 1-21under35 U.S.C. § 101 is
affirmed.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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