INTERNATIONAL BUSINESS MACHINES CORPORATION

Patent Trials and Appeals Board

Feb 26, 2020

14449600 - (D) (P.T.A.B. Feb. 26, 2020)

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.
14/449,600 08/01/2014 Jorge A. Arroyo RSW920140080US1 9886
75949 7590 02/26/2020
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JORGE A. ARROYO, STEPHEN P. KRUGER,
PATRICK J. O’SULLIVAN, and LUCIANO SILVA

Appeal 2019-004101
Application 14/449,600
Technology Center 3600
____________

BEFORE RICHARD M. LEBOVITZ, ULRIKE W. JENKS, and
JOHN G. NEW, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as reciting
patent ineligible subject matter, under 35 U.S.C. § 102 as anticipated, and
under 35 U.S.C. § 103 as obvious. Pursuant to 35 U.S.C. § 134(a),
Appellant1 appeals from the Examiner’s decision to reject the claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and set forth new grounds of rejection pursuant to
37 C.F.R. § 41.50(b).

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as International
Business Machines. Appeal Br. 2.
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STATEMENT OF THE CASE
The claims stand rejected by the Examiner as follows (Ans. 3–4):
1. Claims 21–27 under 35 U.S.C. § 101 as directed to a judicial
exception and thus being patent ineligible.
2. Claims 21 and 24–26 as anticipated under 35 U.S.C. § 102 by
Rothermel et al. (US 2006/0143034 A1, June 29, 2006 (“Rothermel”).
3. Claims 8–11 and 14–18 under 35 U.S.C. § 103 as obvious in view
of Wagner et al. (US 2015/0170163 A1, June 18, 2015) (“Wagner”), Slater
et al. (US 2011/0246504 A1, published Oct. 6, 2011) (“Slater”), Taylor et al.
(US 2008/0222630 A1, published Sept. 11, 2008) (“Taylor”), and Hui et al.
(US 2015/0358303 A1, published Dec. 10, 2015) (“Hui”).
4. Claims 12, 13, 19, and 20 under 35 U.S.C. § 103 as obvious in
view of Wagner, Slater, Taylor, Hui and Potdar et al. (US 2015/0112755 A1,
published Apr. 23, 2015) (“Potdar”).
5. Claim 22 under 35 U.S.C. § 103 as obvious in view of Rothermel
and Hui.
6. Claim 23 under 35 U.S.C. § 103 as obvious in view of Rothermel
and Taylor.
7. Claim 27 under 35 U.S.C. § 103 as obvious in view of Rothermel
and Beechuk et al. (US 2014/0282101 A1, published Sept. 18, 2014)
(“Beechuk”).
REJECTIONS OF CLAIM 21
Claim 21 is reproduced below:
21. A system for modifying a number of opportunities in a
customer relationship management (CRM) system, the system
comprising a computer with a processor, memory and a
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network interface, the computer, with the processor and
memory, implementing all of:
an obtaining engine to obtain, from a customer
relationship management (CRM) system using the network
interface, data for a number of opportunities, each opportunity
represented by a record structure in the CRM system that
includes a number of fields of metadata;
a comparing engine to compare metadata associated with
a first opportunity to a number of archived opportunity
templates, each archived opportunity template comprising a
recommended action; an analyzing engine to determine which
archived opportunity templates match the first opportunity; and
a modifying engine to modify the first opportunity based
on the recommended action from an archived opportunity
template found to match the first opportunity by the analyzing
engine and to allocate resources to the first opportunity in
response to the modification of the first resource.

Before a claim can be examined, it must be properly interpreted.
Claim 21 comprises an obtaining engine, comparing engine, and modifying
engine. The claim does not recite the structure of each engine, but instead
claims the engine by the function it performs. Thus, these limitations invoke
35 U.S.C. § 112(f). Each engine performs an action with or on an
opportunity. The term “opportunity” is defined in the Specification “as a
complex record structure in a CRM system, in which each of the
opportunities captures a number of fields of metadata.” Spec. ¶ 29.
The “modifying engine” modifies “the first opportunity,” which we
understand to mean a modification to a record structure, based on the
meaning of the term “opportunity” as defined in the Specification. The
modifying engine also is “to allocate resources to the first opportunity in
response to the modification of the first resource.” Because the opportunity
is “record structure,” we find it confusing how a “resource” can be allocated
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to a “record” in a CRM system which is essentially information or data. In
addition to this, the claim requires the resource allocation to be “in response
to the modification of the first resource.” There is no antecedent basis in the
claim for “first resource.” It is therefore not clear what is the “first resource”
that is being referenced in the description of the function of the modifying
engine. Furthermore, the only modification previously described in the
claim is to the “first opportunity.” The phrase “in response to the
modification of the first resource” therefore does not have antecedent basis
because there is no “modification” of a resource recited in the claim. It is
unclear whether a step in the claim is missing as to how the first resource is
modified.
For the reasons described above, because we find the claim to lack
clarity and to be ambiguous, we cannot ascertain the scope of the claim. For
this reason, we find the claim to be indefinite under 35 U.S.C. § 112(b).
Furthermore, because the scope of the claim cannot be ascertained, we
are unable to determine whether the claim complies with 35 U.S.C. §§ 101,
102, and 103. Accordingly, we reverse, pro forma, Examiner’s obviousness
rejection of claim 21 and the claims which depend from it. See Ex parte
Miyazaki, 89 USPQ2d 1207, 1217–18 (BPAI 2008) (precedential) (prior art
rejections of indefinite claims reversed by Board “pro forma” where claim
interpretation required resort to “speculative assumptions as to the meaning
of the claims”); accord, In re Steele, 305 F.2d 859, 862 (CCPA 1962) (it is
legal error to analyze claims based on “speculation as to meaning of the
terms employed and assumptions as to the scope of such claims”).
In an attempt to understand the claim, we reviewed the Specification
and could not identify support for the “modifying engine” recited in claim
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21 which performs recited listed functions. Claim 21 was added by
amendment on February 17, 2017. At this time, Appellant did not disclose
written description support for the claim. The claim was amended on May
2, 2017. No support was cited at this time for the amendments to the claim.
In the Appeal Brief, paragraph 52 of the Specification is cited for written
description support of the modifying engine of claim 21. Appeal Br. 10.
However, paragraph 52 does not even recite the term “resource.” We
therefore conclude that claim 21, as a whole, lacks a written description and
is therefore not in compliance with 35 U.S.C. § 112(a). In response,
Appellant must show written descriptive support in the Specification for
each limitation of claim 21.
For the foregoing reasons, pursuant to 37 C.F.R. § 41.50(b), claim 21,
and dependent claims 22–27, are rejected under 35 U.S.C. § 112(a) and 35
U.S.C. § 112(b). These are new grounds of rejection.

OBVIOUSNESS REJECTION OF CLAIM 8
Claim 8 is reproduced below:
8. A system for modifying a number of opportunities in a
customer relationship management (CRM) system, the system
comprising a computer with a processor, memory and a
network interface, the computer, with the processor and
memory, implementing all of:
an obtaining engine, to obtain, from a customer
relationship management (CRM) system, data for a number of
opportunities, wherein each of the opportunities is represented
by a record structure in the CRM system, including a number of
fields of metadata;
a comparing engine, to compare the metadata associated
with the opportunities with a number of archived opportunity
templates to create a comparison that indicates, based on the
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templates, whether a corresponding opportunity is to be split
into multiple opportunities or merged with another opportunity
to reduce a total number of opportunities in the CRM system,
each archived opportunity template containing more data than
an opportunity from the CRM so as to indicate through the
comparison whether a corresponding opportunity is to be split
into multiple opportunities or merged with another opportunity
to reduce a total number of opportunities in the CRM system;
and
a modifying engine, to modify, based on the comparison
of the opportunity metadata to the archived opportunity
templates, the record structures of the opportunities to create at
least one new opportunity thereby automatically updating an
opportunity database of the CRM system, wherein the
modifying engine, based on the comparison, selectively splits at
least one opportunity to create two opportunities including a
new opportunity, thereby making the CRM system self-
expanding, or selectively merges at least two opportunities into
a single new opportunity, thereby making the CRM system self-
regulating, including discarding redundant metadata in a
merged record for the new opportunity; and
a storing engine to store the at least one new opportunity
in the CRM system.

Discussion
The Examiner found that Wagner describes a computer processor and
memory comprising the claimed “obtaining engine” and “storing engine.”
Final Act. 16–17. The Examiner found that Wagner does not described a
“comparing engine” and “modifying engine” as recited in the claims, but
found that these elements are described in Slater and Taylor, respectively.
Id. at 17–21. The Examiner explained why it would have been obvious to
one of ordinary skill in the art to have modified Wagner with the teachings
of Slate and Taylor. Id. at 19, 21–22. The Examiner further relied on Hui as
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teaching a “modifying engine” and additional aspects of the claim. Id. at
22–24.
Appellant contends that Wagner is deficient and that Slater, Taylor,
and Hui do not correct the deficiencies of Wagner. Appeal Br. 13–16.

Comparing engine
The claimed “comparing engine” compares “the metadata associated
with the opportunities with a number of archived opportunity templates.”
The comparison is used to determine “whether a corresponding opportunity
is to be split into multiple opportunities or merged with another opportunity
to reduce a total number of opportunities in the CRM system.” The claim
further recites that “each archived opportunity template contain[s] more data
than an opportunity from the CRM.” The Examiner found that the
comparing engine is described in Slater. Final Act. 18–19. We thus turn to
the disclosure in Slater.
Slater teaches that its system can be a customer relationship
management (CRM) system (Slater ¶ 75), the same type of system which is
claimed. Slater describes comparing client data in a database “to one or
more criteria” (Slater ¶¶ 23, 24, 26). Slater teaches that the client data “may
include one or more items of metadata.” Slater ¶ 27. Slater also teaches that
“comparing the data to the one or more criteria may be performed according
to a template” (corresponding to the “archived opportunity template” in
claim 8). Slater ¶ 35. Slater further discloses that the template can include
weighting factors and algorithms. Id. Slater’s template therefore contains
“more data than an opportunity from the CRM” as recited in claim 8 because
it also contains the weighting factors and algorithms. In addition, Slater
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does not restrict how much client data is used or how many criteria are in the
template. Therefore, the number of criteria in the template is not critical.
Appellant has not shown there is an advantage or benefit to having more
data in the opportunity template than in the CRM opportunity. See In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). Thus, any amount of data
in the template would have been obvious to one of ordinary skill in the art.
For these reasons, we are not persuaded by Appellant’s argument that Slater
fails to teach or suggest that requirement in claim 8 that “each archived
opportunity template containing more data than an opportunity from the
CRM.” Appeal Br. 14–15.
Slater teaches that comparison can be performed to determination
“deviation” from a predetermined baseline. Slater ¶ 33. Actions are taken
based on the comparison. Slater ¶ 36. “In this way, the client may be able to
ascertain whether the current configuration of their data is in line with the
criteria recommended by the system, administrator, etc.” Slater ¶ 36. The
comparisons may also be used to make recommendations to the client, for
example, “how to adjust or otherwise alter the data associated with the client
in order to better comply with the one or more criteria, based on the
comparing.” Slater ¶ 38. See also Slater ¶ 41 (“In another embodiment, the
client may be able to adjust one or more settings associated with the data,
based on the comparing.”)
However, while Slater teaches using the comparisons to make client
recommendations, the Examiner found that Slater does not describe splitting
opportunities or merging opportunities required by the comparing engine of
claim 8. The Examiner found Taylor describes this limitation. Final Office
Act. 20–21.
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Taylor describes CRM systems. Taylor ¶ 3. The system described by
Taylor has an “opportunities module.” Taylor ¶ 22. The module can be
searched for opportunities. Taylor ¶ 26. Taylor also teaches the managers
and users can use the system to look at opportunities. Taylor ¶¶ 35, 39.
Taylor teaches that opportunities can be edited and changed. Taylor ¶ 44.
Taylor teaches that duplicate records can get introduced into the system and
that the system can detect and “remove those duplicate records.”
Taylor ¶ 46.
Taylor teaches that the system “may permit various different duplicate
data record resolutions including, for example, merging extra data,
overriding data, a manual merge or rejecting the duplicate.” Id. “For the
merging the extra data, if the record being checked contains data that is not
present in the current record, the data is merged into the existing data
record.” Id. Thus, this step described in Taylor involves a comparison of
data records and a determination, as in step 2 of claim 8, whether there are
duplicate files, and if so merging them to create a new record that has data
from both files – which is the same as “to modify … the record structures of
the opportunities to create at least one new opportunity.” It is a “new
opportunity” because it has data from both records.
Appellant argues the comparison performed in Taylor is not against an
archived template. Appeal Br. 15. Rather, Appellant argues that the
comparison is between records to determine duplicates. Id.
First, we shall consult the Specification to determine the meaning of
the recited “archived opportunity template.” The Specification explains:
In the specification and appended claims, the term “archived
opportunity template” is meant to be understood broadly as an
example of an opportunity that associated with a number of
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defined characteristics. The archived opportunity template
may include a recommended action for an opportunity that
exhibits displayed in the archived opportunity template. The
archived opportunity template may include historic data from
other opportunities or may include future goals of an
organization. The archived opportunity template may aid in
identifying patterns for an opportunity, predict actions, and aid
in assigning resources to newly created opportunities. For
example, the archived opportunity template may recommend a
division of an opportunity, taking into consideration such
factors as historic opportunity observations and studied
opinions as to recommended changes when an opportunity
reaches a specific stage.
Spec ¶ 30 (emphasis added).
The records compared in Taylor are from actual customers (Taylor ¶¶
24, 26), and in contrast to the claimed “archived opportunity template,” are
not examples for comparison purposes or for “identifying patterns for an
opportunity, predict actions, and aid in assigning resources to newly created
opportunities” (Spec. ¶ 30). Therefore, Taylor does not use a template to
determine whether to merge opportunities as recited in claim 8. Rather,
Taylor compare customer records.
While Slater describes templates, the templates, as explained above,
are used to perform a comparison to determine whether there is a deviation
from a configuration, and if so, to make an adjustment. The Examiner did
not provide an adequate reason for using the template to decide whether to
merge or split opportunity records as required by claim 8.
Hui was further cited by the Examiner, but Hui does not describe
performing comparisons to a template; the only pertinent teaching is
merging feeds. Hui ¶¶ 2, 20, 24.
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Accordingly, for the reasons discussed above, the obviousness
rejection of claim 8 is reversed. Independent claim 14 has the same
limitation as claim 1 found to be deficient in Slater, Taylor, and Hui, and is
reversed for the same reasons. Dependent claims 9–11 and 15–18
incorporate all the limitations of claims 8 and 14 and are therefore are
reversed, as well.
Dependent claims 12, 13, 19, and 20 are further rejected over Potdar.
Final Act. 41–42. Potdar is not described by the Examiner to make up for
the deficiencies in claims 8 and 14 in Slater, Taylor, and Hui. This rejection
is also reversed.

CONCLUSION
In summary:
Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Grounds
21–27 101 Eligibility 21–27
21, 24–
26
102 Rothermel 21, 24–
26

8–11,
14–18
103 Wagner, Slater,
Taylor, Hui
8–11,
14–18

12, 13,
19, 20
103 Wagner, Slater,
Taylor, Hui, Potdar
12, 13,
19, 20

22 103 Rothermel, Hui 22
23 103 Rothermel, Taylor 23
27 103 Rothermel,
Beechuk
27
22–27 112(a) Written description 21–27
22–27 112(b) Indefinite 21–27
Overall
Outcome
8–20 21–27

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TIME PERIOD FOR RESPONSE
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under §41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.

Further guidance on responding to a new ground of rejection can be
found in the MPEP § 1214.01.
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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)(1). See 37 C.F.R.
§§ 41.50(f), 41.52(b).

REVERSED; 37 C.F.R. § 41.50(b)