Avaya, Inc.

Patent Trials and Appeals Board

Mar 16, 2020

14243108 - (D) (P.T.A.B. Mar. 16, 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.
14/243,108 04/02/2014 David Skiba 4366-645 4939
48500 7590 03/16/2020
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
03/16/2020 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):
cjacquet@sheridanross.com
edocket@sheridanross.com
pair_Avaya@firsttofile.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID SKIBA, GEORGE ERHART, and
VALENTINE C. MATULA
____________

Appeal 2019-002805
Application 14/243,108
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
MICHAEL A.VALEK, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal1 under 35 U.S.C. § 134(a) involving claims to a
computerized customer service system. The Examiner rejected the claims as
obvious and as reciting non-statutory subject matter. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse.

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 Avaya, Inc.
(see Appeal Br. 2).
Appeal 2019-002805
Application 14/243,108

2

Statement of the Case
Background
“Retail establishments constantly endeavor to improve the customer
experience and maximize sales. Oftentimes opportunities are lost to
improve customer relations at the final point of contact, the check-out”
(Spec. ¶ 2). “[A] real-time tool is provided to assist customer-service
employees in a retail environment to help maximize the customer experience
which may help to increase sales or improve customer satisfaction” (id. ¶ 4).
“The representative may be working at a checkout register/point-of-sale
terminal and initiate the dialogue/script based on a particular item being
purchased by the customer” (id. ¶ 7).
For example, if the customer is in a department store and
purchasing slacks, the representative may initiate a dialogue by
scanning the particular bar code associated with the slacks.
Scanning of the bar code may trigger the generation of a
dialogue that directs the representative to inquire if the
customer had seen the shirt, shoes, or belt that match the slacks
being purchased. As a benefit, improved customer experience
and added sales may be realized.
(Id.).
The Claims
Claims 1–20 are on appeal. Claim 1 is reproduced below, reformatted
for clarity, and with bracketed letters added to identify certain language:
1. A method, comprising:
[a] receiving a signal from a sensor, the signal
comprising indicia of an interaction and subject of the
interaction comprising an item at a first location wherein the
item is an item for purchase by a customer;
[b] conveying indicia of the signal to a
microprocessor;
Appeal 2019-002805
Application 14/243,108

3

[c] accessing, by the microprocessor, a database
comprising a set of first dialogues, each of the set of first
dialogues identifies a second item at a second location, different
from the first location, and associated with the first item and a
first action to be performed with the second item at the second
location and wherein the database further comprises a set of
second dialogues, each of the set of second dialogues identifies
a non-compliance action associated with noncompliance with
the first action;
[d] selecting, by the microprocessor, a first dialogue
from a set of first dialogues in accord with the signal;
[e] transmitting, by the microprocessor via a network,
the first dialogue to a device associated with a party comprising
the interaction;
[f] monitoring, by the microprocessor, the second
item for compliance with the first action; and
[g] upon the microprocessor determining a non-
compliance with the first action, selecting, by the
microprocessor a second dialogue from the set of second
dialogues in accordance with the non-compliance with the first
action and delivering the second dialogue to the device.

The Rejections
A. The Examiner rejected claims 1–20 under 35 U.S.C. § 101 as directed
to an abstract idea (Final Act. 7–9).
B. The Examiner rejected claims 1–20 under 35 U.S.C. § 103 as obvious
over Sriver2 and Daigle3 (Final Act. 10–15).

A. 35 U.S.C. § 101
The Examiner finds the claims are “directed to the abstract idea of
providing dialogues to a customer based upon the customer action with a

2 Sriver et al., US 2010/0145784 A1, published June 10, 2010.
3 Daigle et al., US 2011/0244798 A1, published Oct. 6, 2011.
Appeal 2019-002805
Application 14/243,108

4

first or second item” (Final Act. 7). The Examiner finds the claimed “steps
describe the concept of organizing human activities, which corresponds to
concepts identified as abstract ideas by the courts, such as gathering and
combining data by reciting steps of organizing information similar to
generating a second menu from a first menu and sending the second menu to
another location” (id.).
Appellant contends the claims are not drawn to methods of organizing
human activity and
submits the claims are entirely directed to other subject matter.
While one may speculate as to how the usage of the claimed
invention may prompt a human to act, the claims do not recite
humans or human actions, but rather physical devices with
location sensing and communication components that, in
response to a location, performs a particular task.
(Reply Br. 3).
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
Appeal 2019-002805
Application 14/243,108

5

intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”).
Concepts determined to be abstract ideas, and therefore patent
ineligible, include certain methods of organizing human activity, such as
fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
at 611) and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as “molding rubber products” (Diamond v. Diehr,
450 U.S. 175, 191 (1981)) or software “purporting to improve the
functioning of the computer itself” (Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1335 (Fed. Cir. 2016)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office published guidance
on the application of 35 U.S.C. § 101. USPTO’s 2019 Revised Patent
Appeal 2019-002805
Application 14/243,108

6

Subject Matter Eligibility Guidance (“Guidance”).4 Under the Guidance, in
determining what concept the claim is “directed to,” we first look to whether
the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes) (Guidance Step 2A, Prong 1);
and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)) (Guidance Step 2A, Prong 2).
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 contains an “‘inventive concept’ sufficient to ‘transform’”
the claimed judicial exception into a patent-eligible application of the
judicial exception. Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 82).
In so doing, we thus consider whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine and
conventional in the field” (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
(Guidance Step 2B). See Guidance, 84 Fed. Reg. at 54–56.
Analysis
Applying the Revised Guidance to the facts on this record, we find
that Appellant’s claims 1–20 are not directed to patent-ineligible subject

4 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50–57 (January 7, 2019).
Appeal 2019-002805
Application 14/243,108

7

matter. Because the same issues are present in each of the claims, we focus
our consideration on representative claim 1. The same analysis applied
below to claim 1 also applies to the other rejected claims.
A. Guidance Step 1
We consider whether the claimed subject matter falls within the four
statutory categories set forth in § 101, namely “[p]rocess, machine,
manufacture, or composition of matter.” 2019 Guidance 53–54; see 35
U.S.C. § 101. Claims 1 recites a “method” and claim 10 recites a “system”
and, thus, fall within the “process,” and “machine” categories respectively.
Consequently, we proceed to the next step of the analysis.
B. Guidance Step 2A, Prong 1
The Revised Guidance instructs us first to determine whether any
judicial exception to patent eligibility is recited in the claim. The Revised
Guidance identifies three judicially-excepted groupings identified by the
courts as abstract ideas: (1) mathematical concepts, (2) certain methods of
organizing human behavior such as fundamental economic practices, and (3)
mental processes.
The steps of claim 1 recite a computerized method of sending
dialogues, based on sensor signals, to a device that a customer is using, and
depending on the customer’s actions, sending a second dialogue to the
device.
The Examiner contends that this claim describes a “concept of
organizing human activities (user interactions with items for purchase that
then leads to a dialog for the user to another item at another location)”
Appeal 2019-002805
Application 14/243,108

8

because “[a]ll of these concepts relate to organizing human activities such as
the electronic record keeping of interpersonal activities” (Ans. 3–4).
We find the Examiner’s reasoning unpersuasive. Claim 1 does not
fall within any of the three of the judicially-excepted groupings listed in the
Revised Guidance. Claim 1 lacks any mathematical concept, claim 1 is not a
mental process, and the Examiner does not establish that claim 1 is directed
to a method of organizing human activity as recited in the Guidance such as
a fundamental economic practice or managing personal behavior or relations
or interactions between people.
While it is indisputable that claim 1 involves a person as a customer,
the Guidance does not suggest that every method that relates to people is
necessarily either a fundamental economic practice or a method managing
personal behavior or relations between people is abstract. Otherwise the
Guidance could simply have referred to any method associated with people
as an abstract idea, rather than identifying narrower categories.
As to claim 1, there is no evidence or reasoning suggesting that using
sensors and interactions to select and send dialogues to devices associated
with customers, monitoring the resulting response, and sending a second
dialogue, is a fundamental economic practice.
And while claim 1 is designed to impact customer purchasing
behavior, claim 1 does not directly manage personal behavior as in the
examples recited in the October 2019 Update on Subject Matter Eligibility.5
The October 2019 Update recites:

5 October 2019 Update, https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
Appeal 2019-002805
Application 14/243,108

9

According to the 2019 [Guidance], “managing personal
behavior or relationships or interactions between people”
includes social activities, teaching, and following rules or
instructions. Examples of these sub-groupings include subject
matter such as:
• a set of rules for playing a dice game, In re Marco
Guldenaar Holding B.V.;
• voting, verifying the vote, and submitting the vote for
tabulation, Voter Verified, Inc. v. Election Systems & Software
LLC;
• assigning hair designs to balance head shape, In re
Brown; and
• a series of instructions of how to hedge risk, Bilski v.
Kappos.

(October 2019 Update at 6; citations omitted).
We find the instant claims differ from the examples provided in the
October 2019 Update and recited in MPEP § 2106.04(a)(2)(II)(C) because
the instant claims do not directly instruct or direct the actions of a person,
but rather address steps performed by a computer system to another
computer device, based on data received by sensors. This is not abstract
simply due to human interaction just as the electronic brake system in KSR
that received sensor information from a person depressing a pedal that was
then used to send control information via a computer to a braking system is
not abstract simply because a human is involved in controlling the braking.
See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 411 (2007).
In re Marco Guldenaar Holding B.V. notes that the phrase “methods
of organizing human activities”
can be confusing and potentially misused, since, after all, a
defined set of steps for combining particular ingredients to
create a drug formulation could be categorized as a method of
organizing human activity. Here, however, where the Patent
Appeal 2019-002805
Application 14/243,108

10

Office further articulates a more refined characterization of the
abstract idea (e.g., ‘rules for playing games’), there is no error.
(In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160 (Fed. Cir.
2018). Here, the Examiner has not persuasively articulated a more refined
characterization of the abstract idea of claim 1 that comports with the
“methods of organizing human activity” type of abstract idea.
Accordingly, we conclude that the evidence of record does not
support the Examiner’s finding that claim 1 recites a judicial exception to
patent eligibility such as an abstract idea.
Guidance Step 2A, Prong 2 and Guidance Step 2B
Having determined that claim 1 does not recite a judicial exception,
we need not address whether claim 1 satisfies the requirements under either
Step 2A, Prong 2 or Step 2B of the guidance. See 84 Fed. Reg. 51.
The rejection of the claims under 35 U.S.C. § 101 is reversed.

B. 35 U.S.C. § 103(a) over Sriver and Daigle
The Examiner finds Sriver teaches all the steps of claim 1 except
monitoring, by the microprocessor, the customer for
compliance with the first action; and upon the microprocessor
determining a non-compliance with the first action, selecting,
by the microprocessor a second dialogue from the set of second
dialogs in accordance with the non-compliance with the first
action and delivering the second dialogue to the device.
(Final Act. 11; italics omitted; see step [g] of claim 1). The Examiner finds
Daigle teaches this step and finds it obvious “to use Daigle's data packet
generators in Sriver's time and location sensitive customer loyalty program
to improve the system and method with reasonable expectation that this
Appeal 2019-002805
Application 14/243,108

11

would result in a system which is able to utilize GPS and RFID
functionality” (id. at 12).

The issue with respect to this rejection is: Does a preponderance of the
evidence of record support the Examiner’s conclusion that Sriver and Daigle
render claim 1 obvious?
Findings of Fact
1. Sriver teaches, regarding step (a), a sensor signal that is
associated with an item for purchase, specifically “a gas station can set up a
discount code rule to generate a 10% off discount code for each customer
participating in its loyalty program whenever the customer's location is
within two miles of the gas station” (Sriver ¶ 97).
2. Sriver teaches, regarding step (b), indicia that are sent to a
processor, specifically a server. “The server can be configured to determine
a physical location of a user mobile device” and then the “server can be
configured to select a discount code based, in part, on the location, the local
time, and the user purchase history” (Sriver ¶ 102).
3. Sriver teaches, regarding step (c), that different dialogues may
be sent to different customers, where “discounts are associated with a
location (for example, valid at a specific store) and time (for example, an
expiration date/time). This allows retailers to engage with customers in a
customized manner” (Sriver ¶ 21).
4. Sriver teaches, regarding step (d), selecting a dialogue where
“the retailer sends the customer a text message with an offer” (Sriver ¶ 22).
5. Sriver teaches, regarding step (e), transmitting the offer to the
customer, specifically teaching “[c]ustomized discounts can be received as
Appeal 2019-002805
Application 14/243,108

12

notifications on the phone through the application utilizing the location of
the phone and the time of day” (Sriver ¶ 24).
6. The Examiner acknowledges that Sriver does not teach steps (f)
and (g) (see Final Act. 11).
7. Daigle teaches “user interface 1600 is also or alternatively used
in some embodiments to provide wayfinding for third parties. For example,
first responders or other emergency personnel uses user interface 1600 to
determine what instructions have already been given, and/or to guide them
to a place where their assistance is needed” (Daigle ¶ 224).
8. Daigle teaches “other embodiments are used to confirm that a
person made it to a particular location (e.g., a user made it to a location for a
treasure hunt, or made it to the top of Mt. Everest, etc.)” (Daigle ¶ 225).
9. Daigle teaches “[a]n example of a qualifying event is the
detection of potential tampering, such as by a tamper sensor” (Daigle ¶ 326).
10. Daigle teaches tracking where “[a]uthentication of the location
of an object is useful in many applications. For example, it is used in some
embodiments to track the location of a file, a piece of mail, furniture, or any
other object” and “[i]f any object has not been properly moved, the
information is available immediately in some embodiments, so that the
object may be located” (Daigle ¶¶ 243–244).
11. Daigle teaches:
a kit that includes a variety of Web-enabled RFID tags. Users
can then associate the tag to an object and update the
information online. In these cases, end users can do whatever
they want with the Web-enabled RFID tags that they own
(search for keys, wallet, socks, etc). Strength of signal and
direction of signal (for this and other applications) can be
useful.
Appeal 2019-002805
Application 14/243,108

13

(Daigle ¶ 554).
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
Analysis
Appellant contends6 “Daigle remains silent as to monitoring a second
item and providing a second dialog upon a determined non-compliance”
(Appeal Br. 17). Appellant contends
While “hot” or “cold” with respect to a target location may be
provided, to conclude that such a teaching is a determination of
a non-compliance of an interaction with a second item and
select a dialog in accordance with a first action (to be
performed with a second item), is to insert teachings absent
from the art of record.
(Appeal Br. 11). Appellant also contends “Daigle may teach asset tags and
their use, but as to a motivation to combine Daigle and Sriver to make the
claimed invention – Appellant submits none is present” (Appeal Br. 18).
The Examiner responds
the qualifying events that are able to trigger alerts or an invalid
message regarding the data packets from items, as described by

6 We note that Appellant contends that the Examiner has taken “Official
Notice” but find this request for a § 104(d)(2) affidavit or declaration
unpersuasive because the Examiner is relying not on personal knowledge but
on the teachings of the cited references. An argument by an Examiner is not
a taking of “Official Notice.”
Appeal 2019-002805
Application 14/243,108

14

[Daigle], in such a way as to provide a scavenger hunt or
obstacle course for a user, in combination with Sriver’s
purchasing system that reads upon the monitoring a second item
and providing a dialog upon a determined non-compliance. One
of ordinary skill in the art would be able to ascertain a
scavenger hunt or treasure hunt by receiving alerts or invalid
messages based upon the sensory devices that generate packets
of data for the wireless communication device, as taught by
[Daigle].
(Ans. 11–12).
We find Appellant has the better position because we are not
persuaded by the Examiner’s reason to combine Daigle’s “recalculating” or
“hot or cold” message with the location aware customer loyalty programs of
Sriver. Even if we treated Daigle as teaching a second message in the
context of locating people or items, Sriver’s reason for locating people is to
provide them with customized discounts (FF 5). The rejection provides no
teaching in Sriver or Daigle suggesting that when a customer chooses not to
take advantage of a customized discount the system would generate a second
message for some purpose.
We recognize the Examiner’s argument that “GPS signals are often
not strong enough to penetrate into buildings” and “[r]adio frequency
identification (RFID) technology is sometimes for identification or tracking
of objects” (Ans. 12). However, even if RFID technology would be obvious
to combine with GPS location determination, there is still no persuasive
reason to send a second dialogue due to non-compliance with a first action
as required by claim 1.
Conclusion of Law
A preponderance of the evidence of record does not support the
Examiner’s conclusion that Sriver and Daigle render claim 1 obvious.
Appeal 2019-002805
Application 14/243,108

15

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–20 101 Eligibility 1–20
1–20 103 Sriver, Daigle 1–20
Overall
Outcome
1–20

REVERSED