Ex Parte Pasquale et al

Board of Patent Appeals and Interferences

Apr 30, 2010

10436743 (B.P.A.I. Apr. 30, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
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BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
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Ex parte THEODORE B. PASQUALE, ROBERT R. BUSHEY, and 8
BENJAMIN A. KNOTT 9
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Appeal 2009-004373 12
Application 10/436,743 13
Technology Center 3600 14
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Decided: April 30, 2010 17
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Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and 21
ANTON. W. FETTING, Administrative Patent Judges. 22
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CRAWFORD, Administrative Patent Judge. 24
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DECISION ON APPEAL27
Appeal 2009-004373
Application 10/436,743

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STATEMENT OF THE CASE 1
Appellants appeal under 35 U.S.C. § 134 (2002) from a Final 2
Rejection of claims 23-42. We have jurisdiction under 35 U.S.C. § 6(b) 3
(2002). 4
Appellants invented systems and methods for automated customer 5
feedback that allows for automatically collecting and analyzing customer 6
feedback data regarding customer satisfaction and customer task completion 7
with respect to self-service applications and live agents (Abstr.). 8
Independent claim 23 under appeal reads as follows: 9
23. A method of improving caller 10
satisfaction comprising: 11
receiving an inbound inquiry from a caller; 12
receiving an indication of a task from the 13
caller; 14
routing the inbound inquiry based on the 15
task indicated by the caller to an automated self-16
service application including at least one user 17
interface menu presented to the caller; 18
after an indication that the caller completed 19
the indicated task and before terminating the 20
inbound inquiry, automatically asking the caller a 21
set of survey questions, the survey questions 22
concerning interactions of the caller with the self-23
service application; 24
receiving from the caller one or more survey 25
responses to the survey questions; and 26
based on the survey responses, altering the 27
user interface menu. 28
29
The prior art relied upon by the Examiner in rejecting the claims on 30
appeal is: 31
Gisby US 6,337,904 B1 Jan. 8, 2002 32
Appeal 2009-004373
Application 10/436,743

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The Examiner rejected claims 23-42 under 35 U.S.C. § 112, first 1
paragraph, for lack of enablement; claims 23-42 under 35 U.S.C. § 101 for 2
being directed to non-statutory subject matter1; claims 23-42 under 35 3
U.S.C. § 102(b) as being anticipated by Gisby; and claims 23-42 under 35 4
U.S.C. § 103(a) as being unpatentable over Gisby.2 5
We REVERSE. 6
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ISSUES 8
Did the Examiner err in asserting that “receiving from the caller one 9
or more survey responses to the survey questions; and based on the survey 10
responses, altering the user interface menu,” as recited in independent claim 11
23, does not meet the enablement requirement of 35 U.S.C. § 112, first 12
paragraph? 13
Did the Examiner err in asserting that independent claim 23 does not 14
satisfy the utility requirement of 35 U.S.C. § 101? 15
Did the Examiner err in asserting that the adjustment of the interactive 16
voice response (IVR) system of Gisby anticipates “receiving from the caller 17
one or more survey responses to the survey questions; and based on the 18
survey responses, altering the user interface menu,” as recited in 19
independent claim 23? 20

1 While page 4 of the Examiner’s Answer rejects claims 1-12, those claims
are no longer pending. We proceed assuming that the Examiner meant to
instead reject pending claims 23-42 on these grounds.
2 The Examiner’s Answer does not include the rejection of claims 23-42
under 35 U.S.C. § 112, second paragraph, set forth on pages 3-4 of the final
Office Action mailed July 3, 2007. We proceed assuming that this rejection
has been withdrawn.
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Did the Examiner err in asserting that a combination of the interactive 1
voice response (IVR) system of Gisby and Appellants’ statement that “one 2
of ordinary skill [in the art] could readily make or use an application that 3
receives responses to survey questions and then alters a user interface menu 4
based on the responses,” renders obvious “receiving from the caller one or 5
more survey responses to the survey questions; and based on the survey 6
responses, altering the user interface menu,” as recited in independent claim 7
23? 8
9
FINDINGS OF FACT 10
Specification 11
Appellants invented systems and methods for automated customer 12
feedback that allows for automatically collecting and analyzing customer 13
feedback data regarding customer satisfaction and customer task completion 14
with respect to self-service applications and live agents (Abstr.). 15
Customers often call a company service call center or access a 16
company's web page to perform a specific customer task such as change 17
their address, pay a bill, alter their existing services, or receive assistance 18
with problems or questions regarding a particular product or service. When 19
calling, the customers may either speak with customer service 20
representatives (CSR), also known as agents, or interact with an automated 21
self-service application such as an interactive voice response (IVR) system. 22
Because of the high costs associated with live service agents and because 23
companies often do not employ enough agents to handle all the customers 24
during peak customer calling times, companies are transitioning many of the 25
customer tasks performed by agents to be primarily performed by the 26
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automated self-service applications. Therefore, the customers typically do 1
not interact with a live person while performing the customer task when 2
using the automated self-service applications. Because the customers do not 3
interact with a live agent while performing customer tasks, the companies do 4
not know if the customers actually accomplish their customer tasks and the 5
satisfaction levels of customers. Therefore, many companies typically 6
assume that the customers are completing customer tasks using the 7
automated self-service applications and that the customers are satisfied 8
whether or not the assumption is actually correct (2:2-27). 9
10
Gisby 11
Gisby discloses that computer-telephony-integration (CTI) including 12
Internet Protocol Network Telephony (IPNT) and has particular application 13
to methods for initiating and completing customer call surveys (col. 1, ll. 16-14
20). 15
One of the major goals in operation of a call center, either CTI or 16
IPNT-enhanced, is to insure customer satisfaction. One of the methods 17
commonly employed in this regard involves taking customer surveys. In a 18
customer survey, questions are presented to the caller relating to customer 19
satisfaction and agent performance. In this way, a call center administrator 20
may evaluate agent performance. Adjustments may then be made depending 21
on the results of several surveys involving particular agents. For example, if 22
more than one caller has experienced a problem with a particular agent, that 23
problem can be isolated and appropriate actions such as additional training 24
and the like may be undertaken (col. 2, ll. 21-33). 25
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In some embodiments the survey point comprises a live survey agent 1
who conducts a survey with the caller. In some other embodiments the 2
survey point comprises an IVR adapted to conduct a survey with the caller. 3
In still other embodiments, at the survey point, the survey is partly 4
automated, and partly conducted by a live agent (col. 3, ll. 9-13). 5
IVR unit 61 includes software and typically digitally recorded 6
messages needed to interact with callers who may be routed to the IVR 7
instead of to a live agent (col. 4, ll. 65-67). 8
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PRINCIPLES OF LAW 10
Enablement 11
Enablement requires that the specification teach those in the art to 12
make and use the claimed invention without undue experimentation. In re 13
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). 14
15
Non-Statutory Subject Matter 16
The en banc court in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en 17
banc), cert. granted, 129 S. Ct. 2735 (Jun. 1, 2009) (No. 08-964), held that 18
“the machine-or-transformation test, properly applied, is the governing test 19
for determining patent eligibility of a process under § 101.” Id. at 956. The 20
court in Bilski further held that “the ‘useful, concrete and tangible result’ 21
inquiry is inadequate [to determine whether a claim is patent-eligible under § 22
101.]” Id. at 959-60. The court explained the machine-or transformation 23
test as follows: “A claimed process is surely patent-eligible under § 101 if: 24
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(1) it is tied to a particular machine or apparatus, or (2) it transforms a 1
particular article into a different state or thing.” Id. at 954 (citations 2
omitted). 3
Utility 4
On the question of utility, the test for utility is whether the application 5
shows that the invention is useful to the public as disclosed. “Simply put, to 6
satisfy the ‘substantial’ utility requirement, an asserted use must show that 7
that claimed invention has a significant and presently available benefit to the 8
public.” In re Fisher, 421 F.3d 1365, 1371 (Fed. Cir. 2005). “When a 9
properly claimed invention meets at least one stated objective, utility under § 10
101 is clearly shown.” Raytheon Co. v. Roper Corp., 724 F.2d 951, 958-59 11
(Fed. Cir. 1983). 12
As a matter of Patent Office practice, a 13
specification which contains a disclosure of utility 14
which corresponds in scope to the subject matter 15
sought to be patented must be taken as sufficient to 16
satisfy the utility requirement of § 101 for the 17
entire claimed subject matter unless there is reason 18
for one skilled in the art to question the objective 19
truth of the statement of utility or its scope. 20
Assuming that sufficient reason to question the 21
statement of utility and its scope does exist, a 22
rejection for lack of utility under § 101 will be 23
proper on that basis; such a rejection can be 24
overcome by suitable proofs indicating that the 25
statement of utility and its scope as found in the 26
specification are true. 27
In re Langer, 503 F.2d 1380, 1391-92 (CCPA 1974) (emphasis added). “To 28
violate [35 U.S.C.] § 101 the claimed device must be totally incapable of 29
achieving a useful result.” Brooktree Corp. v. Advanced Micro Devices, 30
Inc., 977 F.2d 1555, 1571 (Fed. Cir. 1992). 31
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Obviousness 1
During examination, the examiner bears the initial burden of 2
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d 3
1443, 1445 (Fed. Cir. 1992). 4
The analysis of the apparent reasons to combine the known elements 5
in the fashion claimed by the patent at issue should be made explicit. KSR 6
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). 7
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ANALYSIS 9
Enablement 10
We are persuaded that the Examiner erred in asserting that “receiving 11
from the caller one or more survey responses to the survey questions; and 12
based on the survey responses, altering the user interface menu,” as recited 13
in independent claim 23, does not meet the enablement requirement of 35 14
U.S.C. § 112, first paragraph (App. Br. 5-6; Reply Br. 2). The Examiner 15
asserts the aforementioned aspect of independent claim 23 is not enabled 16
because Appellants do not disclose exactly how the responses would be 17
weighted and applied to actually modify the application (Exam’r’s Ans. 3-4, 18
12). However, the claims do not recite that the responses are weighted and 19
applied to modify the application. Section 112 of 35 U.S.C. only requires 20
that the specification teach those in the art how to make and use the claimed 21
invention without undue experimentation. See In re Wands, 858 F.2d at 737. 22
23
Utility 24
We are persuaded that the Examiner erred in asserting that 25
independent claim 23 does not satisfy the utility requirement of 35 U.S.C. § 26
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101 (App. Br. 7-8; Reply Br. 3). Insofar as the Examiner is utilizing the 1
“useful, concrete, and tangible result” test for determining statutory subject 2
matter, that test was found inadequate in Bilski, 545 F.3d at 959-60. 3
Regarding utility, the Examiner admits that “no doubt improving 4
caller satisfaction has utility like amusement devices” (Exam’r’s Ans. 12). 5
That is at least one stated objective sufficient to meet the utility requirement 6
of 35 U.S.C. § 101. See Raytheon Co. v. Roper Corp., 724 F.2d at 958-59; 7
Brooktree Corp. v. Advanced Micro Devices, Inc., 977 F.2d at 1571. 8
Moreover, page 2, lines 2-27 of the Specification discloses that another 9
result is the collection of customer satisfaction data. Such a result also 10
meets the utility requirement. See In re Langer, 503 F.2d at 1391-92. 11
12
Adjustment of IVR 13
We are persuaded that the Examiner erred in asserting that the 14
adjustment of the IVR system of Gisby anticipates “receiving from the caller 15
one or more survey responses to the survey questions; and based on the 16
survey responses, altering the user interface menu,” as recited in 17
independent claim 23 (App. Br. 8-9; Reply Br. 4-5). While Gisby does 18
disclose that both live agents and IVR units 61 interact with callers (col. 3, 19
ll. 9-13; col. 4, ll. 65-67), the customer surveys taken with regard to 20
customer satisfaction and agent performance are only used to alter live agent 21
behavior (col. 2, ll. 21-33). Specifically, appropriate actions to isolate and 22
solve problems for live agents include “additional training and the like,” 23
which could not be applied to IVR units 61, and hence Gisby does not 24
disclose altering user interface menus. 25
26
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Admission 1
We are persuaded that the Examiner erred in asserting that a 2
combination of the interactive voice response (IVR) system of Gisby and 3
Appellants’ alleged admission renders obvious “receiving from the caller 4
one or more survey responses to the survey questions; and based on the 5
survey responses, altering the user interface menu,” as recited in 6
independent claim 23 (App. Br. 9-10; Reply Br. 5-6). Even if Appellants’ 7
statement is a proper admission, and “one of ordinary skill [in the art] could 8
readily make or use an application that receives responses to survey 9
questions and then alters a user interface menu based on the responses” 10
(emphasis added), the Examiner has not met the initial burden of providing 11
an explicit reason as to why one of ordinary skill would modify Gisby to 12
include the alleged admission. See In re Oetiker, 977 F.2d at 1445; KSR 13
Int’l Co. v. Teleflex Inc., 550 U.S. at 418. 14
15
CONCLUSION OF LAW 16
The Examiner did err in rejecting claims 23-42. 17
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DECISION 19
The decision of the Examiner to reject claims 23-42 is reversed. 20
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REVERSED 22
Appeal 2009-004373
Application 10/436,743

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