Ex Parte Hill et al

Patent Trial and Appeal Board

Dec 17, 2018

12186905 (P.T.A.B. Dec. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/186,905 08/06/2008
48500 7590 12/19/2018
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
Deborah Hill
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.
4366-629 2016
EXAMINER
ARAQUE JR, GERARDO
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/19/2018 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 DEBORAH HILL, SARAH H. KIEFHABER,
JOYLEE E. KOHLER, KATHERINE A. SOBUS, and
RODNEY A. THOMSON
Appeal2017-007481
Application 12/186,905
Technology Center 3600
Before ERIC S. FRAHM, JOHN P. PINKERTON, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 31---60, which are all of the claims pending in this
application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Avaya, Inc. App. Br.
2.
2 Claims 1-30 have been canceled. App. Br. 46 (Claim App'x).
Appeal2017-007481
Application 12/186,905
INVENTION
Appellants' invention relates to a premises enabled mobile kiosk.
Spec 1. Claim 31 is illustrative and reads as follows:
3 1. A contact center, comprising:
a plurality of network interfaces that enable the contact
center to receive and service contacts from a plurality of
premises;
a microprocessor; and
computer memory comprising instructions that are
executable by the microprocessor, the instructions, when
executed by the microprocessor, enabling the contact center to:
receive a contact at a network interface of the multiple
network interfaces;
analyze the contact to determine whether the contact
includes a premises tag that identifies the contact as
originating from a first premises in the plurality of
premises as opposed to originating from a second premises
in the plurality of premises;
determine that the contact comprises the premises tag that
identifies the contact as originating from the first premises
as opposed to the second premises; and
in response to determining that the contact comprises the
premises tag, facilitate establishment of a communication
session between a contact center agent and a person
carrying a mobile kiosk with preferential treatment as
compared to if the contact lacked the premises tag.
REJECTIONS
Claim 42 stands rejected under 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement.
Final Act. 2-3.
Claims 31-60 stand rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as indefinite for failing to particularly point out and distinctly
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claim the subject matter which the applicant regards as the invention. Final
Act. 3-5.
Claims 31---60 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter. Final Act.
5-14.
Claims 31, 35, 37--42, 45, 46, 50, 51, 53, 54, and 58---60 stand rejected
under pre-AIA 35 U.S.C. § I02(b) as anticipated by Thomson
(US 2004/0078209 Al, published Apr. 22, 2004). Final Act. 14--26.
Claims 32, 33, 34, 47, 48, 49, 55, 56, and 57 stand rejected under pre-
AIA 35 U.S.C. § I03(a) as unpatentable over the combination of Thomson
and Hale et al. (US 2004/0172316 Al, published Sept. 2, 2004 (hereinafter
"Hale")). Final Act. 27-33.
Claim 36 stands rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over the combination of Thomson and Mendelson
(US 2007/0069923 Al, published Mar. 29, 2007). Final Act. 34--36.
Claims 43, 44, and 52 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as unpatentable over the combination of Thomson and Burckart et
al. (US 2008/0016181 A 1, published Jan. 17, 2008 (hereinafter "Burckart") ).
Final Act. 36--41.
ANALYSIS
Rejection of Claim 42 under 35 U.S. C. § 112, first paragraph
Claim 42 recites "wherein the person comprises an employee that
works at the first premises." The Examiner rejected claim 42 because it
depends from claim 31, and "claim 31 discloses that the person receives
preferential treatment and the specification only provides support that a
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customer is provided preferential treatment." See Final Act. 2-3 ( emphasis
omitted).
The Examiner provided no support for the interpretation of claim 31
as requiring a "person" that receives preferential treatment. See Final Act. 3.
The Examiner's interpretation of claim 31 is not consistent with the
Specification, which describes only that certain "contacts" receive
preferential treatment. 3 Spec. 3, 13. The Specification describes that a
contact is generated by way of a mobile kiosk, may be tagged with a
premises tag, and is sent to a contact center. See Spec. 3. The Specification
further describes that the use of a premises tag may allow a contact to
receive preferential treatment in the contact center. See id. at 13. We agree
with Appellants that written description support for claim 42 can be found in
originally-filed claim 1 and pages 3 and 13 of the Specification. App. Br.
10. In particular, page 3 teaches "[t]he mobile kiosk may be carried either
by the customer ... or by a customer service agent on premises," providing an
example of how a customer service agent ( an employee) may be the person
carrying the mobile kiosk when the communication session associated with
the contact has preferential treatment. See id.
Thus, the written description clearly allows persons of ordinary skill
in the art to recognize that the inventor invented what is claimed. See Ariad
Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
3 As an initial matter of claim construction, we give the claim its broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997). "In the patentability context, claims
are to be given their broadest reasonable interpretations .... limitations are
not to be read into the claims from the specification." In re Van Geuns, 988
F.2d 1181, 1184 (Fed. Cir. 1993) (citations omitted).
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bane) (citation and quotations omitted). Accordingly, on the record before
us, we do not sustain the Examiner's rejection of claim 42 under 35 U.S.C.
§ 112, first paragraph.
Rejection of Claims 31-60 under 35 U.S.C. § 112, second paragraph
The Examiner rejected all of the pending claims for indefiniteness
because "the Examiner is uncertain as to what 'contact' is supposed to be."
Final Act. 4.
Regarding independent claims 31, 46, and 54, we agree with
Appellants that the claims as originally filed describe that a contact includes
a premises tag, and that a communication session between a contact center
agent and a person carrying a mobile kiosk has preferential treatment. App.
Br. 11. The Specification describes that:
A typical contact center includes a switch and/ or server to
receive and route incoming packet-switched and/or circuit-
switched contacts and one or more resources, such as human
agents and automated resources (e.g., Interactive Voice
Response (IVR) units), to service the incoming contacts.
Contact centers distribute contacts, whether inbound or
outbound, for servicing to any suitable resource according to
predefined criteria.
Spec. 1, 11. 9-13. The Specification further describes that contacts are
generated via a mobile kiosk. Spec. 3, 11. 14--15. In claim 31, a contact is
received at a network interface and analyzed to determine whether it
includes a premises tag. If it does, a communication session is established
with preferential treatment. Because the independent claims particularly
point out and distinctly claim the subject matter the applicant regards as the
invention, the source of the Examiner's confusion as to the meaning of
"contact," and whether a "contact" and a "person" are the same in the last
limitation of claim 31, is unsupported.
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Accordingly, we reverse the Examiner's rejection of claims 31, 46,
and 54 under 35 U.S.C. § 112, second paragraph. We also reverse the
Examiner's rejection of claims 32-38, 40-45, 47-53, and 55---60, dependent
therefrom.
The Examiner further rejected claim 39 for indefiniteness because the
invention, as claimed, "has explicitly stated that the location data is attained
from the contact's premises tag ( claim 3 5), but then claims that it is distinct
from the premises tag (claim 39)." Final Act. 4--5.
We agree with Appellants that the Examiner erred. The Specification
describes that data for a contact can include a premises tag and a location
field that "may comprise both historical and current location information."
App. Br. 11 ( citing Spec. 24--25). In other words, the contact can have a
premises tag that is distinct from location data. Therefore, claim 35 properly
recites that "the premises tag identifies the contact as a premises-based
contact such that the contact center marks the contact as originating from the
first premises." Claim 39 properly depends from claim 35 and further
recites "wherein the contact further comprises location data, and wherein the
location data is distinct from the premises tag."
Because claim 39 particularly points out and distinctly claims the
subject matter the applicants regard as the invention, on the record before us,
we reverse the Examiner's rejection of claim 39 under 35 U.S.C. § 112,
second paragraph.
Rejection of Claims 31-60 under 35 U.S.C. § 101
We have reviewed the Examiner's § 101 rejection of claims 31---60 in
light of Appellants' arguments that the Examiner erred. We have considered
in this decision only those arguments Appellants actually raised in the
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Briefs. Any other arguments Appellants could have made, but chose not to
make, in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 5-24) and in the Action from which this appeal
was taken (Final Act. 5-14). We provide the following explanation for
emphasis.
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. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014). In determining whether a claim
falls within the excluded category of abstract ideas, we are guided in our
analysis by the Supreme Court's two-step framework, described in Mayo and
Alice. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)).
In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. See id. at 2356. If the
claim is "directed to" a patent-ineligible abstract idea, we then consider the
elements of the claim-both individually and as an ordered combination-to
assess whether the additional elements transform the nature of the claim into
a patent-eligible application of the abstract idea. Id. at 2355. This is a
search for an "inventive concept"-an element or combination of elements
sufficient to ensure that the claim amounts to "significantly more" than the
abstract idea itself. Id. (internal quotations and citation omitted). The Court
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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. We, therefore, look to whether the claims
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In rejecting claims 31---60 under 35 U.S.C. § 101, the Examiner
concluded
[ the claims] are directed to an abstract idea of queue
management and customer service that includes preferential
treatment for qualifying users, specifically, directed towards
providing customer service for a user by fulfilling their request
and utilizing the concept of queue management and location
information in order to fulfill the users request and taking into
account certain characteristics of the user in order to determine
whether they can be granted preferential treatment, which is (i)
a fundamental economic practice, (ii) a method of organizing
human activities, (iii) an idea of itself, or (iv) a mathematical
relationship or formula.
Final Act. 6. The Examiner further concluded the claimed invention is also
directed to the abstract idea of "collecting data, recognizing data, and storing
the recognized data in order to address a customer's need and have it
fulfilled." Id. at 11-12. Our reviewing court has held that combining
several abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
("Adding one abstract idea ... to another abstract idea ... does not render
the claim non-abstract."); see also Fair Warning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (patent-ineligible claims were
directed to a combination of abstract ideas).
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The Examiner also determined that the concept of data collection,
recognition, and storage is undisputedly well-known and, indeed, humans
have always performed these functions. Final Act. 12. The Examiner
determined that the claimed invention merely uses general purpose devices
to perform the steps of data retrieval regarding the customer, the need, and
available resources (employees) to fulfill the customer's request. Id. The
Examiner further determined there is no "inventive concept" in the claimed
invention's use of a general purpose computing device and mobile device to
perform well-understood, routine, and conventional activities commonly
used in the technical field of queue management, customer service, and
preferential treatment. Id. The Examiner determined that, instead, the
claims attempt to limit the abstract idea of recognizing and storing
information using the devices to a particular environment. Id.
Alice Step One: Abstract Idea
Appellants first contend the Examiner erred because the claims are
directed to a specific asserted improvement in computer capabilities, i.e., the
logic and structures involved in providing computerized contact center-type
customer service, including an improved communication session, to a person
who is correlated with a specific premises of a contact, for example. App.
Br. 14. Appellants argue that, because the claims are directed to the logical
structures and processes of providing computerized contact center-type
customer service to a person correlated with a specific premises, the claims
are patent eligible under Enfish. Id.; see Enfish, 822 F.3d at 1336.
Appellants also argue that the claims are necessarily rooted in technology
because computer elements in the claims are necessary to the functioning of
the claim elements. App. Br. 18.
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We are not persuaded. In Enfzsh, "the plain focus of the claims is on
an improvement to [the] computer functionality itself." Enfzsh, 822 F.3d at
1336. In contrast, we do not find a claimed focus on an improvement to the
computer functionality here. Appellants point to the Specification, but none
of the cited paragraphs explains how interacting with customers in a face-to-
face manner while also providing the advantages offered by a contact center
system improves any computer functionality. See App. Br. 17 ( citing Spec.
2-3). For these reasons, we agree with the Examiner that the claims are
directed to solving a business or commercial problem, not a technical
problem. See Ans. 6-7. Because we are not persuaded the Examiner erred
in concluding the claims are directed to abstract ideas, we proceed to step
two of the analysis under Alice.
Alice Step 2: Significantly More
Appellants first contend the claims are patent eligible because they do
not recite conventional computer functions in merely a generic manner.
App. Br. 23. In particular, Appellants argue the Examiner misconstrued and
oversimplified the concept of "queue management" because queue
management in computer contact centers is not well-understood, routine, and
conventional activity. Id. at 25.
We are not persuaded that the Examiner erred. We agree with the
Examiner's findings of fact and legal conclusions, set forth on pages 11-24
of the Answer, which we incorporate herein by reference. In view of
Appellants' Specification, and consistent with the Examiner's
determinations, we determine the claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
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(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a different
state or thing;
(v) other meaningful limitations beyond generally linking the use
of the abstract idea to a particular technological environment; or
(vi) a specific limitation other than what is well-understood, routine,
conventional activity in the field or unconventional steps that confine the
claim to a particular useful application. See Manual of Patent Examining
Procedure ("MPEP") § 2106.05. Thus, the claims are not directed to
something significantly more than the abstract idea.
Because we are not persuaded that the Examiner erred in concluding
the claims are directed to patent ineligible subject matter, we sustain the
Examiner's§ 101 rejection of claims 31-60, not argued separately. See
App. Br. 32.
Rejection of Claims 31, 35, 37--42, 45, 46, 50,
51, 53, 54, and 58-60 under 35 U.S.C. 102(b)
Appellants persuade us of error in the anticipation rejection of claim
31. App. Br. 32-33.
In rejecting claim 31, the Examiner cites to Thomson, without
providing a clear mapping of the contested limitation "a premises tag" to a
corresponding feature found in Thomson. Rather, the Examiner cites several
paragraphs of Thomson, without identifying to which "user information" the
recited "premises tag" maps. Final Act. 15-16. For example, the Examiner
relies on Thomson's disclosure of a location monitor (Thomson ,r 25),
information provided as part of a consumer registration process (Thomson
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,r,r 36-38), information about the user's location (Thomson ,r,r 42, 46), and
interactive help functionality (Thomson ,r,r 47--49).
Our reviewing court guides that "[a]nticipation requires the presence
in a single prior art reference disclosure of each and every element of the
claimed invention, arranged as in the claim." Lindemann Maschinenfabrik
GmbH v. Am. Hoist & Derrick Co., 730 F.2d 1452, 1458 (Fed. Cir. 1984).
We find the Examiner has not correctly or reasonably mapped the claimed
"premises tag" to a corresponding feature found in the Thomson reference.
Accordingly, on the record before us, we reverse the Examiner's
rejection of independent claim 31, as well as grouped claims 35, 37--42, 45,
46, 50, 51, 53, 54, and 58---60, not argued separately.
Rejection of Claims 32-34, 47--49, and 55-57
under 35 U.S.C. § 103(a)
For the reasons discussed above, the Examiner has not sufficiently
explained how Thomson teaches or suggests the recited "premises tag." The
Hale reference does not cure the deficiency in Thomson. The Examiner
relied on Hale as teaching that it is well-known in the art to provide a user,
who has subscribed to a particular service level, with preferential treatment
that gives the user priority in a queue relative to other users. Ans. 30.
For these reasons, we are persuaded that the Examiner erred in finding
the combination of Thomson and Hale teaches or suggests the disputed
limitation. On the record before us, therefore, we reverse the Examiner's
§ 103(a) rejection of claims 32-34, 47-49, and 55-57.
Rejection of Claims 36, 43, 44, and 52 under 35 U.S.C. § 103(a)
For the reasons discussed above, the Examiner has not sufficiently
explained how Thomson teaches or suggests the recited "premises tag." The
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Mendelson and Burckart references do not cure the deficiency in Thomson.
The Examiner explains that "Mendelson and Burckart are not being
provided to teach the premises tag, but that Thomson discloses this feature
.... " Ans. 31.
For these reasons, we are persuaded the Examiner erred in finding the
combination of Thomson and Hale teaches or suggests the disputed
limitation. On the record before us, therefore, we reverse the Examiner's
§ 103(a) rejections of claims 36, 43, 44, and 52.
DECISION
We affirm the Examiner's decision rejecting claims 31---60 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting:
- claim 42 under 35 U.S.C. § 112, first paragraph;
- claims 31---60 under 25 U.S.C. § 112, second paragraph;
- claims 31, 35, 37--42, 45, 46, 50, 51, 53, 54, and 58---60 under
35 U.S.C. 102(b); and
- claims 32-34, 36, 43, 44, 47--49, 52, and 55- 57 under 35 U.S.C.
§ 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 31-60 is
affirmed. See 37 C.F.R. § 4I.50(a)(l).
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(±).
AFFIRMED
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