Ex Parte Tewari et al

Patent Trial and Appeal Board

Apr 20, 2018

11541056 (P.T.A.B. Apr. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/541,056 09/29/2006
75158 7590 04/24/2018
Verint Systems, Inc.
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
FIRST NAMED INVENTOR
Swati Tewari
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.
10171-386US2 1518
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/24/2018 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):
laaronson@mcciplaw.com
KCarroll@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SWATI TEWARI, MICHAEL ROBERT BOURKE,
JASON FAMA, and SHMUEL KORENBLIT
Appeal 2016-005577
Application 11/541,056
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Swati Tewari, Michael Robert Bourke, Jason Fama, and Shmuel
Korenblit (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1-7, 9-18, and 20, the only claims pending in the
1 Our decision will make reference to the Appellants' Appeal Brief ("Br.,"
filed September 8, 2015) and the Examiner's Answer ("Ans.," mailed
February 29, 2016), and Final Action ("Final Act.," mailed March 5, 2015).
The Real Party in Interest is Verint Americas Inc.
Appeal 2016-005577
Application 11/541,056
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellants invented a way of scheduling of a workforce.
Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of operating a computer system to perform
partial shift swapping, the method comprising the steps of:
[ 1] implementing a workforce optimization platform that
executes on the computer system,
wherein the workforce optimization platform generates a
schedule comprising a plurality of shifts;
in the computer system:
[2] receiving a partial shift swap request to swap a
portion of a shift from an offering agent to an accepting
agent,
the shift having a date and at least one time range
indicating the portion of the shift time range to be
re-assigned to the accepting agent;
[3] determining a disposition of the partial shift swap
request
by applying a set of criteria associated with a hard
validation rule to the partial shift swap request
when the accepting agent accepts the partial
shift swap request;
[ 4] if the partial shift swap request is denied based on the
hard validation rule,
denying the partial shift swap request;
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[ 5] if the partial shift swap request is not denied based on
the hard validation rule,
applying a set of criteria associated with a soft
validation rule to the partial shift swap request;
[ 6] if the partial shift swap request is not approved based
on the soft validation rule,
providing the partial shift swap request for review;
and
[7] if the disposition indicates the partial shift swap
request is approved based on the soft validation rule or
after review,
updating the schedule to reflect the partial shift
swap request.
Claims 1-7, 9-18, and 20 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
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those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as 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 Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to performing partial shift swapping. Final Act. 3.
Although the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is a method of operating a
computer system to perform partial shift swapping. The steps in claim 1
result in approving and updating a schedule to reflect a partial shift swap
request. The Specification at paragraph 1 recites that the invention relates to
scheduling of a workforce. Thus, all this evidence shows that claim 1 is
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directed to scheduling a partial shift swap in a workforce, i.e. scheduling
work. This is consistent with the Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of scheduling
work is a fundamental business practice long prevalent in our system of
commerce. The use of scheduling work is also a building block of
organizing human activity. Thus, scheduling work, like hedging, is an
"abstract idea" beyond the scope of§ 101. See Alice Corp. Pty. Ltd.,
134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of scheduling
work at issue here. Both are squarely within the realm of "abstract ideas" as
the Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
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generic computer technology to perform data reception, analysis, and
presentation and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation"). As such, claim 1 is directed to the abstract idea of receiving,
analyzing, and presenting data.
The remaining claims merely describe parameters for such scheduling.
We conclude that the claims at issue are directed to a patent-ineligible
concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
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"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive and analyze data amounts to electronic data query and
retrieval----one of the most basic functions of a computer. All of these
computer functions are well-understood, routine, conventional activities
previously known to the industry. In short, each step does no more than
require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence is a generic form of decision
blocks. Viewed as a whole, Appellants' method claims simply recite the
concept of scheduling work as performed by a generic computer. To be
sure, the claims recite doing so by advising one to respond to a swap request
by checking rules and approval and let one know when it is approved. But
this is no more than abstract conceptual advice on the parameters for such
scheduling work and the generic computer processes necessary to process
those parameters, and does not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 23 pages of specification spell
out different generic equipment and parameters that might be applied using
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this concept and the particular steps such conventional processing would
entail based on the concept of scheduling work under different scenarios.
They do not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of scheduling work using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting
§ 101 "in ways that make patent eligibility 'depend simply on
the draftsman's art.'
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellants' argument that
Similar to the rejection found insufficient in Google Inc. v.
SimpleAir Inc., here the Office Action ignores the claim
language by failing to explicitly address the actual claim
limitations. For example, the Office Action does not
sufficiently explain how the challenged claims allegedly relate
to the abstract idea of "comparing new and stored information
and using rules to identify options."
App. Br. 8. The Examiner finds the claims directed to performing partial
shift swapping. Final Act. 3. The preamble states this directly. Thus, the
Examiner has substantial evidence to support this finding. The Examiner
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then finds this is an abstract concept because shift swapping is a method of
organizing human activities. Contrary to Appellants' argument, the
Examiner explicitly addresses and relies on the actual claim limitations.
We are not persuaded by Appellants' argument that the Examiner makes
no reference whatsoever as to any of the actual limitations recited in the
claim, much less identifies which combination of steps, if any, were
considered. App. Br. 9. The claim stands on its own as a recitation of what
it contains. As we find supra, each limitation is a primitive data operation
such as receiving and presenting data and using data in decision blocks. The
meaning of the data is discemable only to the human mind and so
undeserving of weight. In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
We are not persuaded by Appellants' argument that no prima facie case
has been made as to the dependent claims. App. Br. 10. Appellants conflate
consideration with explication. The Examiner considered each claim and
provided a summary analysis of that consideration by stating that
the claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements or combination of elements in
the claims other than the abstract idea per se amount to no more
than: a method of organizing human activities and an abstract
idea limited solely by mere instructions to implement the idea
on a computer, or by recitation of generic computer structure
that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the industry.
Final Act. 3--4. As the Examiner makes findings as to what the claims do
not have as contrasted with what they have, there is little to be gained in
reciting each claim limitation and repeating the finding as to what is not
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there. What is not there is manifest on each claim's face. Claims 2-7 only
recite further data in the form of decision criteria, whose meanings again are
perceptible only to the human mind. Claim 9 only adds further decision
blocks, which again are primitive fundamental data processing operations.
The remaining claims are the equivalent of claims 1-7 and 9 but drafted to
cover software performing the steps.
CONCLUSIONS OF LAW
The rejection of claims 1-7, 9-18, and 20 under 35 U.S.C. § 101 as
directed to non-statutory subject matter is proper.
DECISION
The rejection of claims 1-7, 9-18, and 20 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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