Ex Parte Sylvain

Patent Trial and Appeal Board

Jul 21, 2014

12047138 (P.T.A.B. Jul. 21, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DANY SYLVAIN

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Appeal 2012-001844
Application 12/047,138
Technology Center 2100
____________________

Before JOSEPH F. RUGGIERO, CAROLYN D. THOMAS, and
HUNG H. BUI, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s final rejection of claims 1-18 and 20-30.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE,3 but enter a new ground of rejection in accordance
with 37 C.F.R. § 41.50(b).

1 The Real Party in Interest is Avaya, Inc.
2 Claim 19 has been previously cancelled by Appellant and is not on appeal.
3 Our decision refers to Appellant’s Appeal Brief filed June 7, 2011 (“App.
Br.”); Reply Brief filed October 31, 2011 (“Reply Br.”); Examiner’s Answer
mailed August 30, 2011 (“Ans.”); and original Specification filed March 12,
2008 (“Spec.”).
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STATEMENT OF THE CASE
Appellant’s Invention
Appellant’s invention relates to a method of analyzing
communications to provide a ranked and dynamic list of relevant contacts
for a user so that the user can initiate communications with others and avoid
searching or sorting through more traditional contact listings. Abstract.
According to Appellant, affinity data, associated with communication
events, is used to generate a ranked contact list, known as an affinity list.
Spec. ¶ [0023]. A communication event score may be calculated from
weighted communication events. Other ranking criteria may include elapsed
time or the particular type of communication event. An overall contact score
is then calculated based on communication event scores, and an affinity
server updates the affinity list for delivery to a user or other entity. Id. at ¶¶
[0035]-[0036] and [0039].
Claims on Appeal
Claims 1, 25, and 28 are independent claims. Claims 1 and 28 are
illustrative of Appellant’ invention and are reproduced below with disputed
limitations emphasized:
1. A method of providing an affinity list for a user
comprising:
obtaining affinity data associated with each of a plurality
of communication events wherein each communication event
involves the user and at least one contact;
generating an affinity list that provides a ranked list of a
plurality of contacts based on the affinity data and at least one
ranking criterion, comprising:
generating a communication event score for each
communication event based on any affinity data for the
communication event and the at least one ranking
criterion;
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generating contact scores for each of the plurality
of contacts based on communication event scores
associated with each of the plurality of contacts; and
ranking the plurality of contacts for the affinity list
based on the contact scores for each of the plurality of
contacts; and
providing the affinity list to the user.

28. A method of providing an affinity list for a user,
comprising:
obtaining affinity data associated with each of a plurality
of communication events wherein each communication event
involves the user and at least one of a plurality of contacts;
generating an affinity list that provides a ranked list of
one or more of the plurality of contacts ranked based on the
affinity data associated with the corresponding contact from the
plurality of contacts and at least one ranking criterion for
weighing the communication events from the plurality of
communication events associated with the corresponding
contact; and
providing the affinity list to the user.

Evidence Considered
Rajagopalan et al. (Rajagopalan) US 2005/0157858 A1 July 21, 2005
Cadiz et al. (Cadiz) US 7,593,925 B2 Sept. 22, 2009
Charnock et al. (Charnock) US 7,519,589 B2 Apr. 14, 2009

Examiner’s Rejections
(1) Claims 1-18, 20-27, and 30 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Rajagopalan, Cadiz, and Charnock.
Ans. 7-27.
(2) Claims 28 and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Rajagopalan and Cadiz. Id. at 4-7.
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Issues on Appeal
Based on Appellant’s arguments, the dispositive issue on appeal is
whether the Examiner erred in rejecting: (1) claims 1-18, 20-27, and 30
under 35 U.S.C. § 103(a) as being obvious over the Examiner’s combination
of Rajagopalan, Cadiz, and Charnock, and (2) claims 28 and 29 under
35 U.S.C. § 103(a) as being obvious over the Examiner’s combination of
Rajagopalan and Cadiz. In particular, the appeal turns on:
(1) Whether Charnock discloses “generating contact
scores for each of the plurality of contacts based on
communication event scores associated with each of the
plurality of contacts.” App. Br. 13-16.

(2) Whether Cadiz discloses “generating an affinity
list that provides a ranked list of one or more of the plurality of
contacts ranked based on the affinity data and at least one
ranking criterion.” Id. at 17-19.

ANALYSIS
§ 103(a) Rejection of Claims 1-18, 20-27, and 30 based on Rajagopalan,
Cadiz, and Charnock

With respect to independent claim 1, the Examiner finds Rajagopalan
discloses a method of providing an affinity list for a user comprising
obtaining affinity data associated with each of a plurality of communication
events wherein each communication event involves the user and at least one
contact, providing the affinity list to the user. Ans. 7-8 citing (Rajagopalan
¶¶ [0091], [0102] and FIG. 6.)
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The Examiner acknowledges Rajagopalan does not explicitly disclose
(1) “generating an affinity list that provides a ranked list of a plurality of
contacts based on the affinity data and at least one ranking criterion,” nor (2)
“generating a communication event score . . . ranking the plurality of
contacts for the affinity list based on the contact scores for each of the
plurality of contacts.” Id. at 8-9. The Examiner then finds (1) Cadiz
discloses “generating an affinity list that provides a ranked list of a plurality
of contacts based on the affinity data and at least one ranking criterion,” and
(2) Charnock discloses generating consistency scores, coverage scores, and
product categorization (corresponding to the claimed contact scores,
communication event scores, and communication events, respectively). Id.
at 8-11 (citing Cadiz, FIG. 6, col. 3, ll. 20-24, 34-36, col. 8, ll. 46-53;
Charnock, col. 2, ll. 61-67, col. 32, ll. 3-15, col. 61, ll. 11-15, col. 65, ll. 44-
55, col. 66, ll. 8-10). Based on these factual findings in the same fields of
endeavor, the Examiner concludes that:
It would have been obvious . . . to modify the method of
Rajagopalan and Cadiz to include the method . . . of Charnock .
. . to provide improved method [sic] for analyzing [the]
communication data by identifying a plurality of characteristics
of a communication.

Id. at 10-11.

Appellant does not dispute the Examiner’s factual findings with
respect to Rajagopalan and Cadiz. Instead, Appellant argues (1) Charnock’s
consistency scores cannot be interpreted as Appellant’s claimed “contact
scores,” and (2) Charnock fails to disclose generating contact scores based
on communication event scores. App. Br. 12-17; Reply Br. 2-4.
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The Examiner does not respond to Appellant’s first argument. Ans.
27. With respect to Appellant’s second argument, the Examiner responds
that the consistency scores, corresponding to Appellant’s claimed “contact
scores,” are based on the consistency of reviewer coding decisions with the
sampled items/reviewed samples, but fails to articulate how the generating
of the contact scores is based on the communication event scores. Ans. 28.
We are partially persuaded by Appellant’s arguments. First, with
respect to Appellant’s argument that Charnock’s consistency scores cannot
be interpreted as Appellant’s claimed “contact scores,” we note the claim
term “contact scores” is not explicitly defined in Appellant’s Specification.
Nor does Appellant’s claim 1 further define a contact score. As such, we
interpret this limitation broadly. Charnock discloses consistency scores
determined by tallying reviewer coding decisions for requested discovery
items. See Charnock, col. 65, ll. 44-55. These consistency scores can
therefore be considered contact scores.
Second, with respect to Appellant’s argument that Charnock fails to
teach generating the contact scores based on communication event scores,
we agree. While Charnock’s consistency scores can be broadly interpreted
to read on Appellant’s claimed “contact scores” as the Examiner suggests,
the same consistency scores are not generated based on coverage scores, i.e.,
Appellant’s claimed “communication event scores.” The consistency scores
and coverage scores in Charnock are calculated independently of each other.
The consistency scores are calculated by tallying reviewer coding decisions
and dividing the largest tally by the total size of the item set. See Charnock,
col. 65, ll. 43-52. The coverage scores are calculated as a percentage of
cases for which an assigned production category agrees with the production
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category mapped from a reviewer’s coding decision. See Charnock, col. 57,
ll. 7-15. We find no evidence in Charnock of any disclosure of “generating
contact scores for each of the plurality of contacts based on communication
event scores associated with each of the plurality of contacts” as recited in
Appellant’s independent claim 1.
Because the combination of Rajagopalan, Cadiz, and Charnock fails
to teach the disputed limitations of Appellant’s independent claim 1, we do
not sustain the Examiner’s obviousness rejection of claims 1-18, 20-27, and
30.

§ 103(a) Rejection of Claims 28 and 29 based on Rajagopalan and Cadiz

With respect to independent claim 28, the Examiner finds
Rajagopalan discloses a method of providing an affinity list for a user
comprising obtaining affinity data associated with each of a plurality of
communication events wherein each communication event involves the user
and at least one contact, providing the affinity list to the user. Ans. 4-5
citing (Rajagopalan, FIG. 6, ¶¶ [0091], [0102].)
The Examiner acknowledges Rajagopalan does not explicitly disclose
generating an affinity list that provides a ranked list of a plurality of contacts
ranked based on the affinity data associated with the corresponding contact
from the plurality of contacts and at least one ranking criterion for weighing
the communication events from the plurality of communication events
associated with the corresponding contact. Id. at 5. The Examiner then
finds Cadiz discloses generating an affinity list that provides a ranked list of
a plurality of contacts ranked based on the affinity data associated with the
corresponding contact from the plurality of contacts and at least one ranking
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criterion for weighing the communication events from the plurality of
communication events associated with the corresponding contact. Id. at 6
(citing Cadiz, FIG. 6, col. 5, ll. 29-40, col. 8, ll. 46-53).
Based on these factual findings in the same fields of endeavor, the
Examiner concludes that:
It would have been obvious . . . to modify the method of
Rajagopalan to include the method . . . of Cadiz . . . to easily
locate and add contact information and enable real-time
communication by including a real-time identifier in the contact
information.

Id. at 6-7.

Appellant disputes the Examiner’s factual findings regarding Cadiz,
arguing that Cadiz fails to disclose (1) a ranked list based on (2) affinity data
and (3) at least one ranking criterion for weighing communication events.
App. Br. 17-19.
The Examiner responds that Cadiz discloses searching a contact data
store and sorting the results of the search by contact source, wherein the
contact source corresponds to the claimed at least one ranking criterion.
Ans. 28-29.
We do not agree with the Examiner’s characterization of Cadiz.
While Cadiz’s sorting of search results by contact source can be broadly
interpreted to read on either the affinity data or the at least one ranking
criterion as the Examiner suggests, Cadiz fails to disclose the affinity list
being ranked based on both the affinity data and the at least one ranking
criterion. We find no evidence in Cadiz of any disclosure of “generating an
affinity list that provides a ranked list of one or more of the plurality of
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contacts ranked based on the affinity data associated with the corresponding
and at least one ranking criterion” as recited in independent claim 28.
Because the combination of Rajagopalan and Cadiz fails to teach the
disputed limitations of Appellant’s independent claim 28, we do not sustain
the Examiner’s obviousness rejection of claims 28 and 29.

NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we also
separately reject claims 1-18 and 20-30 under 35 U.S.C. § 101 as being
directed to a non-statutory subject matter for the following reasons.
Pursuant to § 101, an inventor may obtain a patent for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. For all categories
except process claims, the eligible subject matter must exist in some
physical or tangible form. To qualify as a machine under section 101, the
claimed invention must be a “concrete thing, consisting of parts, or of
certain devices and combination of devices.” Burr v. Duryee, 68 U.S. 531,
570 (1863). To qualify as a manufacture, the invention must be a tangible
article that is given a new form, quality, property, or combination through
man-made or artificial means. Diamond v. Chakrabarty, 447 U.S. 303, 308
(1980). Likewise, a composition of matter requires the combination of two
or more substances and includes all composite articles. Id.
Appellant’s independent claims 1 and 28 are process claims that fall
within one of the four subject matter categories; nevertheless these claims
may still be ineligible if they encompass laws of nature, physical
phenomena, or abstract ideas. Id. at 309. The Supreme Court has recently
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reaffirmed that fundamental concepts, by themselves, are ineligible abstract
ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. ___, No. 13-298, slip op. 1 at
10 (June 19, 2014). In determining whether a process claim, such as
Appellant’s independent claims 1 and 28, recites an abstract idea, we must
examine the claim as a whole, keeping in mind that an invention is not
ineligible just because it relies upon a law of nature or mathematical
algorithm. As noted by the Supreme Court, “an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.” Diamond v. Diehr, 450 U.S. 175, 187
(1981). A claim may be eligible if it includes additional inventive features
such that the claim scope does not solely capture the abstract idea. Alice
Corp., 573 U.S. ___, slip op. at 6. But a claim reciting an abstract idea does
not become eligible “merely by adding the words ‘apply it.’” Bancorp
Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1276
(Fed. Cir. 2012). The method in Appellant’s independent claims 1 and 28
claims an abstract idea because it describes a process of organizing and
manipulating data (information) through certain correlations and is not tied
to a specific structure or machine.
For example, Appellant’s claim 1 describes a method of providing an
affinity list for a user comprising:
obtaining affinity data associated with each of a plurality
of communication events wherein each communication event
involves the user and at least one contact;
generating an affinity list that provides a ranked list of a
plurality of contacts based on the affinity data and at least one
ranking criterion, comprising:
generating a communication event score for each
communication event based on any affinity data for the
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communication event and the at least one ranking
criterion;
generating contact scores for each of the plurality
of contacts based on communication event scores
associated with each of the plurality of contacts; and
ranking the plurality of contacts for the affinity list
based on the contact scores for each of the plurality of
contacts; and
providing the affinity list to the user.

Similarly, Appellant’s claim 28 recites the same method having
similar steps, albeit with an even broader scope of coverage. In essence,
both Appellant’s claims 1 and 28 recite a process of obtaining affinity data,
generating an affinity list (a new form of data) based on that affinity data
and other collection of information and correlations, and then providing the
affinity list to the user. These claims recite nothing more than an ineligible
abstract process of gathering and manipulating data that does not require
input from a physical device. Without additional limitations, a process that
gathers and manipulates existing information to generate additional
information is not patent eligible. “[I]f a claim is directed essentially to a
method of calculating, using a mathematical formula, even if the solution is
for a specific purpose, the claimed method is nonstatutory.” Parker v.
Flook, 437 U.S. 584, 595 (1978) (internal quotations omitted). Accordingly,
we hold that the process described in Appellant’s claims 1 and 28 is directed
to an abstract idea and is not patent eligible under section 101.
With respect to Appellant’s sole apparatus claim 25, the inclusion of a
generic control system to perform the recited functions of Appellant’s
process claims 1 and 28 does not meaningfully distinguish the abstract
concept of organizing data. Nor does the control system “narrow, confine,
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or otherwise tie down the claim.” CLS Bank Int’l v. Alice Corp., 717 F.3d
1269, 1282 (Fed. Cir. 2013). Because Appellant’s apparatus claim 25 and
method claims 1 and 28 contain only “minor differences in terminology . . .
[but] require performance of the same basic process,” id. at 1291,
Appellant’s apparatus claim 25 falls together with Appellant’s process
claims 1 and 28.
For the reasons set forth above, we reject independent claims 1, 25,
and 28 and their respective dependent claims 2-18, 20-24, 26-27, and 29-30
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.

CONCLUSION
On the record before us, we conclude that the Examiner’s rejection of
(1) claims 1-18, 20-27 and 30 under 35 U.S.C. § 103(a) based on
Rajagopalan, Cadiz, and Charnock; and (2) claims 28 and 29 under
35 U.S.C. § 103(a) based on Rajagopalan and Cadiz should be reversed.
However, we also conclude that claims 1-18 and 20-30 should be rejected
under 35 U.S.C. § 101.

DECISION
As such, we REVERSE the Examiner’s final rejection of claims 1-18
and 20-30. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter
new grounds of rejection for claims 1-18 and 20-30 under 35 U.S.C. § 101
as directed to non-statutory subject matter.
Rule 37 C.F.R. § 41.50(b) states that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
Further, § 41.50(b) also provides that Appellants, WITHIN TWO MONTHS
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FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new grounds of rejection to avoid
termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the examiner, in
which event the prosecution will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. 41.50(b))

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