Ex Parte Meyer et al

Patent Trial and Appeal Board

Feb 14, 2019

14255626 (P.T.A.B. Feb. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/255,626 04/17/2014
94104 7590 02/14/2019
Taylor English Duma LLP
1600 Parkwood Circle, Suite 200
Atlanta, GA 30339
FIRST NAMED INVENTOR
Karl Meyer
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.
190330-1013 6969
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
02/14/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL MEYER and JONATHAN TURNER
Appeal2018-001257
Application 14/255,626
Technology Center 3600
Before CAROLYN D. THOMAS, JOSEPH P. LENTIVECH, and
SCOTT E. RAEVSKY, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants 1 appeal from the
Examiner's decision to reject claims 1, 2, 4, 6-11, 13, 14, 16, 18-21, and
23-31. Claims 3, 5, 12, 15, 17, and 22 have been canceled. See App.
Br. 25-39 (Claims Appendix). We have jurisdiction over the pending claims
under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is XPO Last Mile, Inc.
App. Br. 2.
Appeal2018-001257
Application 14/255,626
STATEMENT OF THE CASE
Appellants' Invention
Appellants' invention generally relates to "surveys, and more
particularly relates to survey automation." Spec. ,r 2. Claim 1, which is
illustrative of the claimed invention, reads as follows:
1. A computer-implemented method comprising the steps of:
receiving, by a survey triggering module, a trigger signal
from a servicer, the trigger signal indicating a completion of a
service performed by the servicer for a customer associated with
a customer location;
storing in a memory device a service record indicating that
the service performed by the servicer for the customer is
complete, the service record including a time that the trigger
signal was received;
conducting, by a survey conducting module, an automated
survey on the customer regarding the service performed by the
servicer after a predetermined time period based on the time that
the trigger signal was received, wherein the survey conducting
module conducting the automated survey is configured to
automatically prompt the customer for survey result information
regarding a quality of the service performed by the servicer for
the customer, wherein the customer location is a location of the
customer from which the servicer leaves upon completion of the
service performed by the servicer for the customer;
after conducting the automated survey with the customer,
automatically, in one data transmission, receiving by an
automated survey result analyzing module, the survey result
information regarding the service performed by the servicer for
the customer;
in response to receiving the survey result information
regarding the service performed by the servicer for the customer,
analyzing, by the automated survey result analyzing module, the
survey result information to determine a survey score for the
survey result information and whether the survey score is at or
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below a follow-up threshold, wherein a survey score at or below
the follow-up threshold indicates that at least one follow-up
action is warranted; and
in response to determining that the at least one follow-up
action is warranted,
determining, by a survey follow-up module, based
on predetermined criteria, whether the survey score
indicates that involvement by a client as part of the at least
one follow-up action is warranted,
communicating, by the survey follow-up module,
the survey result information to the client if involvement
by the client was indicated,
determining, by the survey follow-up module, based
on the predetermined criteria, whether the survey score
indicates that involvement by the servicer as part of the at
least one follow-up action is warranted, and
communicating, by the survey follow-up module,
the survey result information to the servicer if involvement
by the servicer was indicated,
wherein the at least one follow-up action is
performed to resolve issues related to the quality of the
service performed by the servicer for the customer, and
wherein the at least one follow-up action includes
providing the customer with at least one of a good or a
service from at least one of the client and the servicer.
Rejection
Claims 1, 2, 4, 6-11, 13, 14, 16, 18-21, and23-31 stand rejected
under 35 U.S.C. § 101 because the claimed subject matter isjudicially-
excepted from patent eligibility under § 101. Final Act. 9-13.
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Application 14/255,626
Issue on Appeal
Did the Examiner err in finding that claims 1, 2, 4, 6-11, 13, 14, 16,
18-21, and 23-31 are directed to subject matter that is judicially-excepted
from patent eligibility under § 101?
ANALYSIS
Appellants do not substantively argue the claims separately, but
instead rely on the same arguments for all claims. See App. Br. 14--22;
Reply Br. 2-10. In accordance with 37 C.F.R. § 4I.37(c)(l)(iv), we select
independent claim 1 as the representative claim. Remaining claims 2, 4, 6-
11, 13, 14, 16, 18-21, and 23-31 stand or fall together with claim 1.
Principles of Law
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573
U.S. 208,216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
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risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and, thus, patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal citation omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we first look
to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
See Memorandum, 84 Fed. Reg. at 52, 54--55. Only if a claim (1) recites a
judicial exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
(3) adds a specific limitation or combination of limitations
beyond the judicial exception that are not "well-understood,
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routine, conventional" activity in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56.
Does the Claim Recite a Judicial Exception?
Claim 1 recites "conducting, by a survey conducting module, an
automated survey on the customer regarding the service performed by the
servicer after a predetermined time period based on the time that the trigger
signal was received." This limitation, as drafted, is a process that, under its
broadest reasonable interpretation, covers a fundamental economic practice
relating to marketing or sales activities and business relations. See
Memorandum, Appendix A. Thus, this limitation recites a method of
organizing human activity.
Claim 1 further recites
in response to receiving the survey result information
regarding the service performed by the servicer for the customer,
analyzing, by the automated survey result analyzing module, the
survey result information to determine a survey score for the
survey result information and whether the survey score is at or
below a follow-up threshold, wherein a survey score at or below
the follow-up threshold indicates that at least one follow-up
action is warranted; and
in response to determining that the at least one follow-up
action is warranted,
determining, by a survey follow-up module, based
on predetermined criteria, whether the survey score
indicates that involvement by a client as part of the at least
one follow-up action is warranted,
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communicating, by the survey follow-up module,
the survey result information to the client if involvement
by the client was indicated,
determining, by the survey follow-up module, based
on the predetermined criteria, whether the survey score
indicates that involvement by the servicer as part of the at
least one follow-up action is warranted, and
communicating, by the survey follow-up module,
the survey result information to the servicer if involvement
by the servicer was indicated.
These limitations, as drafted, are processes that, under the broadest
reasonable interpretation, cover performance of the limitations in the mind
but for the recitation of generic computer components. That is, other than
reciting "the automated survey result analyzing module" and "a survey
follow-up module," nothing in the claim limitation precludes these steps
from practically being performed in the mind. Thus, these limitations recite
mental processes.
DOES THE CLAIM RECITE ADDITIONAL ELEMENTS THAT INTEGRATE THE
JUDICIAL EXCEPTION INTO A PRACTICAL APPLICATION?
The claim recites the additional elements of:
receiving, by a survey triggering module, a trigger signal
from a servicer, the trigger signal indicating a completion of a
service performed by the servicer for a customer associated with
a customer location;
storing in a memory device a service record indicating that
the service performed by the servicer for the customer is
complete, the service record including a time that the trigger
signal was received;
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Application 14/255,626
wherein the survey conducting module conducting the
automated survey is configured to automatically prompt the
customer for survey result information regarding a quality of the
service performed by the servicer for the customer, wherein the
customer location is a location of the customer from which the
servicer leaves upon completion of the service performed by the
servicer for the customer;
after conducting the automated survey with the customer,
automatically, in one data transmission, receiving by an
automated survey result analyzing module, the survey result
information regarding the service performed by the servicer for
the customer; [ and]
wherein the at least one follow-up action is performed to
resolve issues related to the quality of the service performed by
the servicer for the customer, and wherein the at least one follow-
up action includes providing the customer with at least one of a
good or a service from at least one of the client and the servicer.
These limitations are recited at a high level of generality and amount to mere
data gathering and manipulation, which is a form of insignificant extra-
solution activity, or merely narrowing the recited abstract ideas. These
limitations do not impose any meaningful limits on practicing the recited
abstract ideas and, therefore, do not integrate the abstract idea into a
practical application.
We disagree with Appellants that the claims are like those in Enfish
and McRO. App. Br. 17-18 ( citing Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1336-38 (Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1302, 06, 14--16 (Fed. Cir. 2016)). In Enfish, the
Federal Circuit noted that "[s]oftware can make non-abstract improvements
to computer technology just as hardware improvements can." Enfish, 822
F.3d at 1335. The court put the question as being "whether the focus of the
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claims is on [a] specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Id. at 1335-36. In Enfzsh, the
court found that the "plain focus of the claims" was on "an improvement to
computer functionality itself, not on economic or other tasks for which a
computer is used in its ordinary capacity." Id. at 1336. The present case is
different from Enfzsh because the focus of the claims here is not on an
improvement in computers as tools or upon an innovative way to use
computers or other devices, but on an improved business method.
The claims in McRO were directed to the creation of something
physical-namely, the display of "lip synchronization and facial
expressions" of animated characters on screens for viewing by human eyes.
McRO, 837 F.3d at 1313. The claimed improvement was to how the
physical display operated (to produce better quality images), unlike (what is
present here) a claimed improvement in a business method.
We also disagree with Appellants that the claims are like the claims in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), in
which claims addressing a "business challenge (retaining website visitors)
that is particular to the Internet" were held patent-eligible. App. Br. 18-19.
Conducting a survey, analyzing the results of the survey to determine
whether a follow-up action is warranted, and communicating the results of
the survey to an interested party ( e.g., a person responsible for providing the
service) are not business challenges particular to the Internet, or to any other
technological area.
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For the foregoing reasons, we find the claims are directed to certain
methods of organizing human activity and mental processes and, therefore,
an abstract idea.
DOES THE CLAIM PROVIDE AN INVENTIVE CONCEPT?
As discussed above, the additional elements recited in claim 1 are a
form of insignificant extra-solution activity or merely narrow the recited
abstract ideas. These limitations fail to cause the claim to recite
"significantly more" than the abstract ideas to which the claim is directed
because they fail to impose meaningful limits on the claim such that the
limitations are not nominally or tangentially related to the invention.
Further, we agree with the Examiner (Ans. 6-9, 15) that the Specification
describes these limitations as being implemented using conventional
computer hardware. See Spec. ,r,r 48-55; Fig. 5. As such, the claim fails to
recite significantly more than the recited abstract ideas. See Alice, 134 S. Ct.
at 2357.
We are not persuaded by Appellants' arguments that the claims are
like the claims in BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016) because they "do not preempt all ways
of 'receiving and analyzing numerical survey information regarding
customer satisfaction of a service, and then determining if follow up action
is needed and who needs to do the follow-up actions based on the results of
the analysis."' App. Br. 21. Claims that are otherwise directed to patent-
ineligible subject matter cannot be saved by arguing the absence of complete
preemption. Return Mail, Inc. v. U.S. Postal Service, 868 F.3d 1350, 1370
(Fed. Cir. 2017). "While preemption may signal patent ineligible subject
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matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015). "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework, as they
are in this case, preemption concerns are fully addressed and made moot."
Id.
To the extent Appellants argue the claims are directed to novel and
nonobvious subject matter and, therefore, necessarily entail an inventive
concept that transforms the claims to significantly more than the abstract
idea (App. Br. 21-22), we disagree. Although the second step in the
Alice/Mayo 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, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
Conclusion
Because the claims are directed to an abstract idea and fail to recite
"significantly more" under the second step of the Alice/Mayo analysis, we
sustain the Examiner's 35 U.S.C. § 101 rejection of claims 1, 2, 4, 6-11, 13,
14, 16, 18-21, and 23-31.
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DECISION
We affirm the Examiner's rejection of claims 1, 2, 4, 6-11, 13, 14, 16,
18-21, and 23-31 under 35 U.S.C. § 101.
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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