Ex Parte Holal et al

Patent Trial and Appeal Board

Jul 13, 2017

13059013 (P.T.A.B. Jul. 13, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/059,013 04/29/2011 Sujai Karnam Holal 1109-002US 5732
29973 7590 07/17/2017
CRGO LAW
ATTN: STEVEN M. GREENBERG, ESQ.
7900 Glades Road
SUITE 520
BOCA RATON, EL 33434
EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
07/17/2017 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):
docketing@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUJAI KARNAM HOLAL, DODDAMANE GURURAJA,
AMIT NARASIMHA KAMATH, and MAHESH KUMAR SAHU
Appeal 2015-0064931
Application 13/059,0132
Technology Center 3600
Before PHILIP J. HOFFMANN, MATTHEW S. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—4 and 6—10. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1. Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
October 20, 2014) and Reply Brief (“Reply Br.,” filed June 22, 2015), the
Examiner’s Answer (“Ans.,” mailed April 20, 2015), and the Final Office
Action (“Final Act.,” mailed April 16, 2014).
2. Appellants identify Talisma Corporation Private Ltd. as the real party in
interest (Appeal Br. 2).
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CLAIMED INVENTION
Appellants’ claims “relate[] to a method to drive a Campaign
Workflow based on an SMS message response in a Customer Relationship
Management ( CRM) application,” and more particularly, “to a method and
system to generate and transmit appropriate [ajctions for different
customers, based on their response to a marketing Campaign, in a CRM
application” (Spec. 11).
Claims 1,8, and 9 are the independent claims on appeal. Claim 1,
reproduced below, with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
1. 1. A customer relationship management (CRM)
method to generate and transmit appropriate replies for different
customers, based upon the response to a marketing campaign by
each customer, the method comprising:
[a] receiving in memory of a computer a communication
event from a customer, the communication event encapsulating
an internal identifier;
[b] searching for and locating within the event in the
memory both an interaction identifier and a marketing campaign
code within the internal identifier;
[c] threading said communication event in the memory to
a corresponding preexisting interaction thread sharing a same
interaction identifier as the located interaction identifier, but if
no interaction thread already exists for the located interaction
identifier, starting a new interaction thread with a same
interaction identifier as the located interaction identifier;
[d] linking in the memory the interaction thread to a
campaign step associated with the located campaign step code;
and,
[e] performing by the computer an action for the customer
based upon the campaign step.
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REJECTIONS
Claims 1—4 and 6—10 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.3
Claims 1—4 and 6—94 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Checkoway (US 2002/0035607 Al, pub. Mar. 21, 2002)
and Duffek (US 2006/0155715 Al, pub. July 13, 2006).
Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Checkoway, Duffek, and D’Ambrosio (US 2007/0127693 Al, pub. June 7,
2007).
ANALYSIS
Non-statutory subject matter
Appellants argue claims 1—4 and 6—10 as a group (see Reply Br. 2—4).
We select claim 1 as representative. Claims 2—4 and 6—10 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting claims 1—4 and 6—10, the Examiner finds the claims
are directed to a method of receiving data, matching received
data with historical data in a datastore, if there are no matches,
begin a new communication point, and associate data with
criteria loaded into computer and performing said step loaded
into computer. In other words, the claimed method simply
describes the concept of gathering and matching data and
associating said data with previously defined instructions about
sending or displaying more data.
(Ans. 2-3).
3 The Examiner designates this rejection as a new ground of rejection in the
Answer (see Ans. 2—3).
4 The Examiner indicates improperly that claims 1—9 are currently rejected
under this heading (see Final Act. 6). We note, however, that claim 5 is
currently cancelled.
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Appellants do not appear to dispute the Examiner’s finding that
independent claim 1 is directed to an abstract idea (see Reply Br. 2-4).
Instead, Appellants argue their
invention presents functional and palpable applications in the
field of computer technology in which a computer performs steps
in memory by a processor to achieve results outside of the
ordinary function of a computer under comparable
circumstances. To wit, as stated at paragraph [0021] of the
originally filed specification, a mobile switching center directs
the transmission of SMS messages between a mobile device and
a text messaging device. Further, the mobile switching center in
paragraph [0021 ] is implemented in one or more specialized or
general purpose computers. Accordingly, Applicants’ claims are
drawn to a specific way of “doing something with a computer”.
{Id. at 3).
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
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
In determining whether independent claim 1 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. Id. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296—97 (2012)). In accordance with that framework, we first must
determine whether the claim is “directed to” a patent-ineligible abstract idea.
If so, we then consider the elements of the claim — both individually and as
an ordered combination — to assess whether the additional elements
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transform the nature of the claim into a patent-eligible application of the
abstract idea. Id. 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.
Here, we agree with the Examiner that the claims are directed broadly
to “the concept of gathering and matching data and associating said data
with previously defined instructions about sending or displaying more data”
(Ans. 2—3), and the concept is similar to the concept that the Federal Circuit
determined was patent ineligible in Electric Power Grp., LLC v. Alstom S.A.,
Grid, Inc., 830 F.3d 1350 (Fed. Cir. 2016). In Electric Power, the method
claims at issue were directed to performing real-time performance
monitoring of an electric power grid by collecting data from multiple data
sources, analyzing the data, and displaying the results. Electric Power Grp.,
LLC, 830 F.3d at 1351—52. The Federal Circuit held that the claims were
directed to an abstract idea, explaining that “[t]he advance they purport to
make is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions.” Electric Power Grp.,
830 F.3d at 1354.
More recently, the concept of “using an electronic device to obtain
clinical trial data that would otherwise be collected by pen-and-paper diary,
and analyzing the data to decide whether to prompt action” was found to be
an abstract idea. eResearchTechnology, Inc. v. CRF, Inc., 186 F. Supp. 3d
463, 473 (W.D. Pa. 2016), affd., No. 2016-2281, 2017 WF 1033672 (mem)
(Fed. Cir. Mar. 17, 2017) (citing OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1361—62 (Fed. Cir. 2015) (finding a method comprising (1)
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testing prices, (2) gathering statistics about how customers reacted to the
prices, (3) using that data to estimate outcomes, and (4) acting on estimated
outcomes (i.e., automatically selecting and offering new prices based on
estimated outcome) to be directed to the abstract idea of price optimization);
see also Intellectual Ventures ILLC v. Erie Indent. Co., 2015 U.S. Dist.
LEXIS 129153, at *94 (finding a method of “gathering, storing, and acting
on data based on predetermined rules” to be directed to an abstract idea).
Accordingly, we find that independent claim 1 involves nothing more
than receiving data, extracting data, and analyzing data to decide upon an
action — activities squarely within the realm of abstract ideas. See, e.g.,
Elec. Power Grp., LLC, 830 F.3d 1353—54 (when “the focus of the asserted
claims” is “on collecting information, analyzing it, and displaying certain
results of the collection and analysis,” the claims are directed to an abstract
idea).
Step two is “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.’” Alice, 134 S. Ct. at 2355 (alteration in original) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)).
And, similar to the situation in Electric Power, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
patenting. As the court explained in Electric Power, “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
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category of abstract ideas.” Elec. Power Grp., 830 F.3d at 1355.
Furthermore, “receiving” data, as recited by limitation [a], extracting data,
i.e., “searching for and locating within the event. . .an interaction identifier
and a marketing code,” as recited by limitation [b], analyzing data, i.e.,
“threading,” as recited by limitation [c], “linking ... to a [located] campaign
step,” as recited by limitation [d], and “performing ... an action . . . based
on the campaign step,” as recited by limitation [e], do not add inventiveness
because the steps merely require the application of conventional, well-
known analytical steps. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
716 (Fed. Cir. 2014) (“[T]he claimed sequence of steps comprises only
‘conventional steps, specified at a high level of generality,’ which is
insufficient to supply an ‘inventive concept.’”) (citing Alice, 134 S. Ct. at
2357) (internal citations omitted). And, there is no indication in the record
that any specialized computer hardware or other “inventive” computer
components are required. In fact, the Specification explicitly discloses that
“[i]t will be appreciated that Mobile Switching Center 104 and Short
message Service Center 105 may be implemented with one or more
specialized or general-purpose computer systems” (see, e.g., Spec. 120).
Appellants also argue that the claims are directed to patent-eligible
subject matter because “the structure of Appellants’ claims require complex
programming to enable the driving of a campaign workflow based upon
SMS response in a CRM application,” and “because Appellants’ claims
include limitations that attach the underlying idea of the claim to a specific
application of the underlying idea, Applicants’ claims are directed to
statutory subject matter” (Reply Br. 4 (emphasis omitted); see also Appeal
Br. 12—13). However, Appellants fail to provide any evidence that the
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related programming would entail anything atypical from conventional
programming (cf. Spec, 23—28), and we agree with the Examiner that the
claims “amount[] to no more than following instructions as per advertising
campaign criteria on a computer and sending] it over a network” (Ans. 3)
and “[tjhese generic computing elements alone do not amount to
significantly more than the judicial exception” (id.). Therefore, as the
Federal Circuit stated: “after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.” DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (citing Alice, 134 S. Ct. at 2358). The bare fact that a
computer exists in the physical rather than purely conceptual realm “is
beside the point.” Id. Unlike DDR, the instant claims are not “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” nor is there any evidence that
the programming reflected in the invention is anything but routine. DDR,
773 F.3d at 1257.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2-4 and 6—10 that fall
with independent claim 1.
Obviousness
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because the
combination of Checkoway and Duffek fails to disclose or suggest
“searching for and locating within the event in the memory both an
interaction identifier and a marketing campaign code within the internal
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identifier,” as recited by limitation [b] of independent claim 1 (see Appeal
Br. 13—17; see also Reply Br. 4—6).
The Examiner maintains the rejection is proper, and cites
paragraphs 27—29, 38, 145, and claim 15 of Checkoway, as well as
paragraphs 20, 26, 29, 31, and Figure 2, block 260, as disclosing the argued
limitation (see Final Act. 7—10; see also Ans. 3—7).
Checkoway is directed to a system “for accessing data and functions
that permit an ordinary e-mail client to be used as the interface” (Checkoway
13). Checkoway discloses
[an] email access gateway system includes an authorization
system that receives an e-mail message and determines whether
a reply to the e-mail message is authorized. A reply system
coupled to the authorization system receives the e-mail message
and generates a response message if the e-mail message is
authorized.
(Id. 19). Checkoway also discloses that “[a]n ad server 224 adds
commercial paid advertisements to the outgoing answers and responses” in
one embodiment (id. 126) using “topic servers 226 [that] are each
specialized to research particular topics from a variety of data sources 228”
(id.). More particularly, Checkoway discloses that its “topic server 226
derives information varies from topic to topic, and is typically a six-step
process” (id. 127; see also id. 1128-29).
Duffek is directed to a system for “associating] incoming emails to a
customer relationship management (CRM) object” (Duffek 12). Duffek
discloses that its system
creat[es] a user configurable tracking token that relates an email
to a CRM object, attaching the tracking token to an outgoing
email, sending the outgoing email to recipients, receiving an
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incoming email, determining whether the incoming email has a
tracking token and if the incoming email has a tracking token,
associating the incoming email with the matching CRM object.
(Id.). Duffek further discloses that its “tracking token” includes
an indication of whether the outgoing email was created one of
offline and online, an indication of a user ID of a sender of the
outgoing email and an indication of the number of outgoing
emails sent. The tracking token may be an indication in an email
subject line. The method may also include monitoring whether
a user has sent a maximum number of emails and allowing the
maximum number of emails to be reset. The tracking token may
further include an indication of a CRM company deployment.
(Id.; see also id. ]Hf 26—30).
In response to Appellants’ arguments (see Appeal Br. 13—17; see also
Reply Br. 4—6), the Examiner merely reproduces a copy of the rejection
from the Final Office Action without further explanation (see Ans. 3—7; cf
Final Act. 7—10), and we find nothing in the cited portions of Checkoway
and Duffek that discloses or suggests “searching for and locating within the
event in the memory both an interaction identifier and a marketing campaign
code within the internal identifier,” as recited by limitation [b] of
independent claim 1. Instead, we agree with Appellants that the
Examiner has failed to map the claimed extraction from the email
of both an interaction identifier and a campaign code and the
subsequent threading of the email in a thread sharing the same
identifier as that located in the email, and the performance of an
action based upon a campaign step corresponding to the located
campaign code.
(Appeal Br. 17).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
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also do not sustain the Examiner’s rejection of dependent claims 2-4, 6,
and 7.
Independent claims 8 and 9
Independent claims 8 and 9 include limitations substantially similar to
independent claim 1 ’s limitation discussed above. Therefore, we do not
sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent
claims 8 and 9 for the same reasons set forth above with respect to
independent claim 1.
Dependent claim 10
Claim 10 depends from independent claim 9. The Examiner’s
rejection of claim 10 under 35 U.S.C. § 103(a) based on D’Ambrosio, in
combination with Checkoway and Duffek, does not cure the deficiency in
the Examiner’s rejection of independent claim 1. Therefore, we do not
sustain the Examiner’s rejection of claim 10 under 35 U.S.C. § 103(a) for
the same reasons set forth above with respect to the independent claims.
DECISION
The Examiner’s rejection of claims 1—4 and 6—10 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejections of claims 1—4 and 6—10 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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