SRI International

Patent Trials and Appeals Board

Apr 9, 2020

14079365 - (D) (P.T.A.B. Apr. 9, 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.
14/079,365 11/13/2013 Zor Gorelov SRI-00100 8153
34051 7590 04/09/2020
Stevens Law Group
1754 Technology Drive
Suite #226
San Jose, CA 95110
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
04/09/2020 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):
uspto@stevenslawgroup.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

Ex parte ZOR GORELOV, SASHA CASKEY, DROR OREN, and
WILLIAM MARK

Appeal 2019-001345
Application 14/079,365
Technology Center 3600

Before CATHERINE SHIANG, LINZY T. McCARTNEY, and
MICHAEL T. CYGAN, Administrative Patent Judges.

CYGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claim 20. Appeal Br. 1. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

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 SRI
International. Appeal Br. 1.
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Application 14/079,365

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CLAIMED SUBJECT MATTER
The claimed invention generally relates to communicating targeted
offers to particular users based on their current desires or intent. Spec. ¶¶ 2,
18. The claimed invention further relates to predicting the user’s actual
intent when making a request during a conversation. Id. at 18. The user’s
intent and the offer are based on information such as “the user’s current
location, account information, purchase history, [and] the time of day.” Id.
Independent claim 20 is the only claim under appeal:
20. A financial conversation management system
comprising:
a memory configured to store data associated with at least one
user conversation; and
one or more processors coupled to the memory, the one or more
processors configured to:
receive a request from a user, the request including one
or more natural language conversational statements from
the user;
identify words used in the requests;
determine one or parameters corresponding to the words
used in the request;
determine a current geographic location associated with
the user;
determine a user intent according to the words used in the
request, the one or more parameters, and the current
geographic location, wherein determining the user intent
includes evaluating the request using a plurality of
machine learning algorithms, the machine learning
algorithms further outputting confidence levels for the
user intent;
determine that a combination of the confidence levels is
below a threshold;
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in response to determining that the combination of the
confidence levels is below the threshold, request more
parameters from the user;
receive one or more additional parameters from the user;
identify purchase data associated with the user, the
purchase data corresponding to the one or more
parameters, the one or more additional parameters, and to
the current geographic location associated with the user;
determine an answer to the request from the user as a
function of the purchase data, the function corresponding
to the user intent; and
select an offer for the user based on the user intent.
Appeal Br. 11–12 (Claims App.).
Claims 1–19 have been cancelled during prosecution. Id. at 1.
REJECTION
Claim 20 is rejected under 35 U.S.C. §101 as being ineligible subject
matter.

OPINION
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
There is, however, an implicit, longstanding exception to patent-
eligible subject matter in 35 U.S.C. § 101: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014) (citation omitted). This exception precludes
patenting of “the basic tools of scientific and technological work” from
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which all inventions spring. Id. at 216–17 (quotation marks and citation
omitted). Invention or discovery under § 101 is distinguished as being the
application of such tools to an end otherwise satisfying the requirements of
the patent statutes. See Gottschalk v. Benson, 409 U.S. 63, 67 (1972).
The Supreme Court has established a framework for this eligibility
determination. Where a claim is directed towards a law of nature, natural
phenomena, or abstract idea, the elements of the claim as a whole must
ensure that the claim, in practice, amounts to significantly more than a patent
on the law of nature, natural phenomena, or abstract idea itself. Alice, 573
U.S. at 217–18. In applying this eligibility analysis, our reviewing court has
stated, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen[,] . . . the
classic common law methodology for creating law when a single governing
definitional context is not available.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citation omitted).
To address the growing body of precedent, the USPTO recently
published revised examination guidance on the application of § 101. 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 50
(Jan. 7, 2019) (hereinafter 2019 Guidance). The 2019 Guidance seeks to
improve the clarity of the subject matter eligibility analysis and improve
consistency of this analysis across the USPTO. Id.
Under the 2019 Guidance, we first look to whether the claim is
directed to a judicial exception because:
(1) the claim recites a law of nature, natural phenomenon, or abstract
idea, the last of which includes certain groupings, identified as
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mathematical concepts, certain methods of organizing human activity
and mental processes; and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see
MANUAL OF PATENT EXAMINATION PROCEDURE (hereinafter “MPEP”)
§ 2106.05(a)–(c), (e)–(h)).
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:
adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or instead,
simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance, passim.
A. Analysis
We have reviewed the Examiner’s subject matter eligibility rejection
(Final Act. 2–7; Ans. 3–5) in light of Appellant’s contentions that the
Examiner has erred (Appeal Br. 4–6; Reply Br. 1–5). We are not persuaded
by Appellant’s contention of Examiner error in rejecting claim 20 under 35
U.S.C. § 101.
1. “Recites an Abstract Idea”
The Examiner finds claim 20 to be directed to a set of behavioral
activities. Final Act. 4. Specifically, the Examiner finds claim 20 to recite
“receiving a request, identifying financial data associated with the user,
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determining an answer to the request, inferring a user’s intent, and selecting
an offer based on the user intent.” Id.
The Examiner finds these limitations to be similar to concepts
previously identified by the courts as abstract, such as the interpersonal
activities of “managing relationships or transactions between people, social
activities, or behaviors,” “satisfying or avoiding a legal obligation,” and
“advertising, marketing, and sales activities or behaviors.” Id. The
Examiner finds these to be activities that the courts have found to be abstract
as “certain methods of organizing human activity.” Id.
Appellant argues that the “ordered listing” of steps in claim 20 forms
an activity that is not inherently part of the alleged abstract idea. Appeal Br.
5. Regardless of the veracity of this assertion, and for this prong of the
eligibility analysis, we are not persuaded thereby. The USPTO’s 2019
Guidance states that the abstract idea exception includes certain methods of
organizing human activity “when recited as such in a claim limitation(s)
(that is when recited on their own or per se).” 2019 Guidance, 84 Fed. Reg.
at 52. Accordingly, the Examiner’s identification of at least one limitation
that corresponds to a prior-identified abstract idea satisfies this prong of the
eligibility analysis.
Furthermore, we agree with the Examiner’s determination that the
above-identified limitations involve commercial, business, sales, and
interpersonal interactions or behavior, which are examples of certain
methods of organizing activity indicating an abstract idea. Id. These
limitations, in claim 1, are:
A financial conversation management system, comprising . . .
receive a request from a user, the request including one or more
natural language conversational statements from the user;
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identify words used in the requests; determine one or
parameters corresponding to the words used in the request;
determine a current geographic location associated with the
user; determine a user intent according to the words used in the
request, the one or more parameters, and the current geographic
location, wherein determining the user intent includes
evaluating the request using a plurality of . . . algorithms, the . .
. algorithms further outputting confidence levels for the user
intent; determine that a combination of the confidence levels is
below a threshold; in response to determining that the
combination of the confidence levels is below the threshold,
request more parameters from the user; receive one or more
additional parameters from the user; identify purchase data
associated with the user, the purchase data corresponding to the
one or more parameters, the one or more additional parameters,
and to the current geographic location associated with the user;
determine an answer to the request from the user as a function
of the purchase data, the function corresponding to the user
intent; and select an offer for the user based on the user intent.
.
The above-identified limitations provide for selecting an offer based
on user intent. The user intent is determined from data provided to the
processor in the form of a voice statement data, geographic location data,
and, if the confidence in the intent is below a certain threshold, certain
purchase data. The preamble of the claim requires that the voice statement
data be part of a “financial” conversation. Thus, these limitations recite the
selection of a financial offer based upon certain data. We agree with the
Examiner’s determination that these limitations involve commercial,
business, sales, and interpersonal interactions or behavior, as described in
USPTO Guidance. 2019 Guidance, 84 Fed. Reg. at 52; October 2019
Update: Subject Matter Eligibility (October 2019 Update) 4–6, available at
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https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df.
We further note that prior court decisions have found such
commercial behavior where data is taken and analyzed to present financial
offers. See OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1361–1363 (Fed. Cir. 2015) (“the fundamental economic concept of offer-
based price optimization through the use of generic-computer functions”);
Trading Technols. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1092–1093 (Fed.
Cir. 2019) (“the abstract idea of graphing bids and offers to assist a trader to
make an order” wherein “the collection, organization, and display of two
sets of information on a generic display device is abstract”).
Consequently, we agree with the Examiner that claim 20 recites an
abstract idea. We consider the multiple limitations together as an abstract
idea for Step 2A, Prong Two, and Step 2B. October 2019 Update 2.
a) “Directed to an Abstract Idea”
Having determined that claim 20 recites an abstract idea, we next
determine, under Step 2A, Prong 2 of the 2019 Guidance, whether the claim
is directed to that abstract idea, or whether the claim has additional elements
that integrate the abstract idea into a practical application of that abstract
idea. 84 Fed. Reg. at 54. An improvement to a technology or technical field
may be indicative that an additional element or combination of elements
integrates the exception into a practical application. Id. at 55. However, an
additional element that merely includes instructions to implement an abstract
idea on a computer, or merely uses a computer as a tool to perform an
abstract idea, may be indicative that the judicial exception is not integrated
into a practical application. Id.
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The Examiner finds claim 20 to have elements additional to those
limitations reciting an abstract idea; namely, generic computing components
performing “generic computer functions.” Final Act. 5–6; Ans. 5.
Appellant first argues that the claimed invention “‘uses a combined
order of specific rules’ that provides a desired result,” drawing from the
analysis in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d
1299, 1315 (Fed. Cir. 2016). Appeal Br. 5. With respect to Appellant’s
invocation of McRO, the decision in McRO relied, in part, on a
determination that the computer performed a function in a distinctly
different manner from the corresponding subjective mental process, such
that the computer was not merely used as a tool for automating subjective
mental activity. McRO, 837 F.3d at 1305–1307 (explaining in detail the
prior art method and its differences from the claimed method), 1314.
Appellant does not explain how the claimed invention functions in a
distinctly different manner from the corresponding method of organizing
human activity, so as to provide a technological improvement to the
computer itself. Appeal Br. 5–6; Reply Br. 4. Accordingly, the facts before
us are distinguishable from those presented in McRO.
Appellant further argues that the claim “improves the capability of the
computer to interpret a user conversation.” Reply Br. 4. Specifically,
Appellant points to the “machine learning algorithms further outputting
confidence levels for the user intent” as going beyond the abstract idea.
Appeal Br. 5.
Here, the additional element of the processor is described by its
functions of gathering data (inputs) and comparing data with the goal of
presenting an offer to a user that is likely to be of interest to the user. Spec.
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¶ 18. The determination of what offer is likely to be of interest to a user is
based on the user’s intent, which is inferred from provided data. Id. The
steps themselves are not described in technological detail beyond the tasks
they perform. For example, the claimed “machine learning algorithms
further outputting confidence levels for the user intent” are described only
by their function of producing a numerical representation of the confidence
in the user intent as inferred by the “determine a user intent” step. See Ans.
4–5; Spec ¶ 33. The only reference in the Specification to “machine
learning algorithms” is in a listing of systems for evaluating a user request.
Spec. ¶ 33 (“These multiple systems include, for example, a parser, a
statistical parser (using different machine learning algorithms), and a
statistical classifier”). Appellant has not explained how the additional
limitations, i.e., the processor and its computer functions, act to improve any
computer or specific technology or technical field. Petitioner has merely
alleged a “technical advantage,” but has not provided an explanation of how
the particularly claimed manner of assembling data improves a particular
technology or technical field. Appellant has not explained how the alleged
improvement to decision making capabilities necessarily results from the
involvement of the claimed technological components, rather than from the
tasks themselves that the Examiner has identified as the abstract idea.
Unlike the cases cited by Appellant in which the courts found a
“specific improvement to the way computers operate,” Appellant merely
argues that the capabilities of the computer are enlarged in the sense that it is
made able to interpret a user conversation. Reply Br. 3–5. (quoting Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (2016)). Under Alice, merely
using a computer to act as a tool to perform a new function is not sufficient
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for patent eligibility where the computerized process qualifies as an abstract
idea. Enfish, 822 F.3d at 1336. Consequently, we are not persuaded that the
additional elements of claim 20 reflect an improvement in the functioning of
a computer, or an improvement to another technology or technical field.
For these reasons, we are not persuaded that claim 20 is directed to
any improvement in a computer, a technology or technological field so as to
show error in the Examiner’s determination that the additionally-recited
elements are not more than a processing tool that aids in the above-identified
abstract idea. Consequently, we are not persuaded of error in the
Examiner’s determination that claim 20 is directed to an abstract idea.
b) Significantly More Than an Abstract Idea
The Examiner has determined that the additional elements of database
and computer do not amount to significantly more than the abstract idea
when considered both individually and as a combination, since they amount
to no more than a generic computer performing generic computer functions
that would be routine, conventional and well-understood to one of ordinary
skill in the computer art. Final Act. 5–6. The Examiner relies on prior court
recognition that such well-understood, routine, and conventional computer
functions include “performing repetitive calculations, receiving, processing,
and storing data, electronic recordkeeping, automating mental tasks, and
receiving or transmitting data over a network, e.g., using the Internet to
gather data.” Id. at 5.
The Examiner identifies the following claimed functions as being
performed by a computer: mere collecting data (“receiving a request from a
user . . . .”), and searching and comparing data (“identifying financial data
associated with the user,” “determining an answer to the request,” “inferring
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a user’s intent,” and “selecting a best offer”). Id. The Examiner finds each
of these functions to be recognized by the courts as being well-understood,
routine and conventional. Id.
We agree with the Examiner’s determination. Generically claimed
elements of computers and computer databases have been found to be no
more than well-understood, routine, and conventional activity in the context
of gathering and assembling data. See, e.g., Berkheimer v. HP Inc., 890 F.3d
1369, 1370 (Fed. Cir. 2018) (“The conventional limitations of claim 1,
combined with limitations of analyzing and comparing data and reconciling
differences between the data . . . amount to no more than performing the
abstract idea of parsing and comparing data with conventional computer
components”); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (updating
an activity log by computer is well-understood, routine, conventional
activity). As explained by the Supreme Court, the presence of a generic
computer performing generic computer functions, such as calculation and
transmission of data, is not enough to transform an abstract idea into a
patent-eligible invention. Alice Corp. v. CLS Bank, 573 U.S. 208, 225–226
(2014). Here, the computer processor in the claimed “financial conversation
management system” functions as a computational tool to receive and
compare data for the purpose of determining a financial offer. Under our
governing case law, this is not enough to show that the database and
computer cause claim 20 to be significantly more than the identified abstract
idea.
In view of the foregoing, under the 2019 Guidance, informed by our
governing case law concerning 35 U.S.C. § 101, Appellant has not shown
the Examiner erred in concluding claim 20 is directed to a judicial exception,
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i.e., an abstract idea, without significantly more, and thus is patent-ineligible
under § 101. We therefore sustain the Examiner’s rejection of claim 20.
CONCLUSION
For the above-described reasons, we affirm the Examiner’s rejection
of claim 20 as lacking subject matter eligibility 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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Grounds Affirmed Reversed
20 101 Eligibility 20

AFFIRMED