Avaya Inc.

Patent Trials and Appeals Board

May 4, 2020

14609615 - (D) (P.T.A.B. May. 4, 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.
14/609,615 01/30/2015 David Skiba 4366-702 4461
48500 7590 05/04/2020
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
ANDREI, RADU
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
05/04/2020 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, ANDREW MAHER,
GEORGE ERHART, and VALENTINE C. MATULA

Appeal 2019-005143
Application 14/609,615
Technology Center 3600
Before JAMES R. HUGHES, JOYCE CRAIG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
CRAIG, 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 claims 1–20. See Final Act. 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 the assignee Avaya,
Inc. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to sending location-based messages. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A system, comprising:
a server comprising at least one processor;
a database;
a communication interface logically connecting the server
to a network; and
the server:
receives a first location data of a portable device
associated with a user, the first location data comprising a
location and a duration at the location;
receives a second location datum comprising a
current location of the portable device;
accesses the database to obtain an entity
information associated with the first location data and,
from the entity information, identifies a context;
determines, from the database, a relationship
between the second location datum and the context;
generates a message comprising content selected in
accord with the relationship and message comprises at
least one of an indication of a future location for the user
or a future time for an activity for the user; and
transmits the message, in real-time and via the
communication interface, to the portable device for
display thereon.
REJECTIONS
Claims 1–20 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception without significantly
more. Final Act. 4–8.
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Claims 7 and 14 stand rejected under 35 U.S.C. § 112(a) as failing to
comply with the written description requirement. Final Act. 8–9.
Claims 1–10 and 12–20 stand rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Higgins et al. (US 2009/0138347 A1;
published May 28, 2009) (“Higgins”) and Petersen et al. (US 2012/0047102
A1; published Feb. 23, 2012) (“Petersen”). Final Act. 10–25.
Claim 11 stands rejected under 35 U.S.C. § 103 as unpatentable over
the combination of Higgins, Petersen, and I’Anson et al. (US 2001/0028304
A1; published Oct. 11, 2001) (“I’Anson”). Final Act. 25–26.
ANALYSIS
Rejection of Claims 1–20 under 35 U.S.C. § 101
Appellant argues that the Examiner’s rejection of claims 1–20 under
35 U.S.C. § 101 is in error. Appeal Br. 5–12; Reply Br. 2–8. To the extent
Appellant has not advanced separate, substantive arguments for particular
claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant argues claims 1–20 as a group. Appeal Br. 5–
12.2 Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the
§ 101 rejection of claims 1–20 based on representative claim 1.
Principles of Law
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601
F.3d 1319, 1331 (Fed. Cir. 2010).

2 Although Appellant highlights claim 10 in the § 101 arguments in the
Reply Brief, Appellant does not indicate an intention to separately argue the
claims. See Reply Br. 2–8.
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The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Per Office Guidance, this first inquiry has two prongs of analysis (i)
does the claim recite a judicial exception (e.g., an abstract idea), and (ii) if
so, is the judicial exception integrated into a practical application. 84 Fed.
Reg. at 54. Under the Office Guidance, if the judicial exception is integrated
into a practical application, see infra, the claim is patent eligible under §
101. 84 Fed. Reg. at 54–55. If the claim is directed to a judicial exception
(i.e., recites a judicial exception and does not integrate the exception into a
practical application), the next step is to determine whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56. If the claim is
“directed to” an abstract idea, we turn to the second step of the Alice and
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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 (citation omitted).
To summarize, under the current Office Guidance, 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); and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“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:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, 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.

See Office Guidance.
Step 1
Claim 1, as a system claim, falls within the machine category of
§ 101. See Office Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).
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Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 recites activities that “could
have been performed by a human being, or by a ‘human analog’ mentally or
manually, i.e. with pen and paper,” and thus is directed to an abstract idea.
Final Act. 4–5. The Examiner also determined that claim 1 recites
limitations that are “comparable to an advertising, marketing, process, i.e. a
process aimed at providing content (i.e. promotions) based on certain
parameters, including correlations between a user’s information, location
and context data,” which falls within the certain methods of organizing
human activity category of abstract ideas. Ans. 4.
Claim 1 recites the following limitations:
receives a first location data . . . associated with a
user, the first location data comprising a location and a
duration at the location;
receives a second location datum comprising a
current location . . . . ;
accesses . . . to obtain an entity information
associated with the first location data and, from the entity
information, identifies a context;
. . .
transmits the message, in real-time . . . .
We find these limitations, under their broadest reasonable interpretation,
cover gathering user information, including location information, and
sending a message, which as the Specification discloses, could be an
advertising message. See Spec. ¶ 5. This location-based advertising is a
commercial interaction that falls within the certain methods of organizing
human activity category of abstract ideas. See Office Guidance, 84 Fed. Reg.
at 52.
Claim 1 also recites the following limitations:
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determines . . . a relationship between the second
location datum and the context;
generates a message comprising content selected in
accord with the relationship and message comprises at
least one of an indication of a future location for the user
or a future time for an activity for the user . . . .
We find these limitations, under their broadest reasonable interpretation,
cover an evaluation of user information that results in a desired location or
time-based message for the user, which falls within the mental processes
category of abstract ideas. See id.
Because we agree with the Examiner that claim 1 recites abstract
ideas, we proceed to Prong Two of Step 2A to determine if the ideas are
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely the abstract ideas.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determined that claim 1 recites a patent-ineligible
concept, we next determine whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. Office
Guidance, 84 Fed. Reg. at 55 n.24. In claim 1, the additional elements
include the limitations “a server comprising at least one processor,” “a
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database,” “a communication interface logically connecting the server to a
network,” and “a portable device.”
Appellant argues that the claimed invention improves
communications because it “enable[s], among other things, the technical
field to be enhanced with automated means to detect a particular need of a
user via a series of locations and provid[e] a timely communication.” Appeal
Br. 11.
Appellant’s argument is not persuasive. Appellant does not identify
any technological communications improvement described in the
Specification, or explain how such improvement is embodied in claim 1. See
MPEP § 2106.05(a) (quoting Alice) (“[E]xaminers should consider whether
the claim ‘purport(s) to improve the functioning of the computer itself’ or
‘any other technology or technical field.’”). Rather, the focus of claim 1 is
on using location-based information to generate a message for the user, not
on the technical means of obtaining the information or transmitting the
message. The additional elements in claim 1 merely apply the recited
abstract ideas through the use of generic computer components. See MPEP §
2106.05(f).
Appellant also argues that “the server, database, network interface,
and messaging recited by the claims define a ‘particular machine.’” Appeal
Br. 11. Appellant further argues that “the claims do go beyond linking the
use of a judicial exception to a particular technological environment and that
monopolization of the exception is absent.” Appeal Br. 11.
Appellant’s arguments are not persuasive. The additional elements are
generic, conventional computer components. For example, the Specification
discloses the invention “may be performed by hardware components or may
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be embodied in sequences of machine-executable instructions, which may be
used to cause a machine, such as a general-purpose or special-purpose
processor (GPU or CPU) or logic circuits programmed with the instructions
to perform the methods (FGPA).” Spec. ¶ 84 (emphasis added). The
Specification further discloses “communication network 104 may comprise
any type of known communication medium or collection of communication
media and may use any type of protocols to transport messages between
endpoints.” Id. ¶ 45 (emphasis added). Finally, the Specification discloses
“communication devices 108 may comprise any type of known
communication equipment or collection of communication equipment.” Id.
¶ 49 (emphasis added). Accordingly, claim 1 recites neither a particular
machine, nor any meaningful limitations that go beyond a link to a particular
technological environment. See MPEP §§ 2106.05(b), (e).
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem. Claim 1 as a whole merely uses
instructions to implement the abstract ideas on a computer or, alternatively,
merely uses a computer as a tool to perform the abstract idea. Here, the
additional limitation(s) do not integrate the judicial exception into a practical
application. More particularly, the claims do not recite (i) an improvement to
the functionality of a computer or other technology or technical field (see
MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial
exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an
article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other
meaningful limitation (see MPEP § 2106.05(e)). See Office Guidance, 84
Fed. Reg. at 55.
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Therefore, because the combination of abstract ideas is not integrated
into a practical application, we conclude that the claim is directed to the
judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B,
we must “look with more specificity at what the claim elements add, in order
to determine ‘whether they identify an “inventive concept” in the application
of the ineligible subject matter’ to which the claim is directed.” Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016)). We look to see whether there are any
“additional features” in the claims that constitute an “inventive concept,”
thereby rendering the claims eligible for patenting even if they are directed
to an abstract idea. Alice, 573 U.S. at 221. Those “additional features” must
be more than “well-understood, routine, conventional activity.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79 (2012).
Appellant argues that the claimed invention embodies an
“unconventional way” of gathering data. Appeal Br. 12. We are not
persuaded by Appellant’s argument. Claim 1 simply recites, for example,
that the server “receives a first location data,” “receives a second location
datum,” and “accesses the database to obtain an entity information
associated with the first location data and, from the entity information,
identifies a context.” Claim 1 recites no details to distinguish the receiving
and accessing functions from any conventional performance of those
functions. Moreover, as discussed above, the Specification discloses generic,
conventional computer components. See Spec. ¶¶ 45, 49, 84. Appellant does
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not direct our attention to anything in the Specification that indicates the
computer components, alone or in combination, perform anything other than
well-understood, routine, and conventional functions, such as receiving
information over a network and accessing information from a database. See
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That
a computer receives and sends the information over a network—with no
further specification—is not even arguably inventive”); In re TLI Commc’ns
LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016) (server that receives
data, extracts classification information from the received data, and stores
the digital images insufficient to add an inventive concept); Alice, 573 U.S.
at 225–26 (receiving, storing, sending information over networks
insufficient to add an inventive concept).
Appellant also argues the Examiner failed to provide an analysis
under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Reply Br. 6.
However, the Examiner has identified specific portions of the Specification
that support a finding that the additional elements are no more than well-
understood, routine, and conventional computer components (see Final Act.
7–8; Ans. 7–8), and thus satisfies Office guidance regarding the Berkheimer
case. See Berkheimer Memo3 § III.A.1.

3 “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” at 3 (Apr. 19, 2018) (explaining that a specification that describes
additional elements “in a manner that indicates that the additional elements
are sufficiently well-known that the specification does not need to describe
the particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
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Appellant further argues that the art of record, including Higgins, does
not teach “obtaining a customer’s context based on a first and second
location and information gathered associated with such locations.” Appeal
Br. 12. We disagree with Appellant’s characterization of Higgins, as
discussed further below with respect to obviousness. Further, although Step
2B is a search for an “inventive concept,” the analysis is not an evaluation of
novelty or non-obviousness. A novel and non-obvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at
90; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151
(Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.
The search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty.”).
We conclude that claim 1 does not include an inventive concept
because the claim, in essence, merely recites various computer-based
elements along with no more than instructions to implement the identified
combination of abstract ideas using the computer-based elements. We,
therefore, sustain the Examiner’s § 101 rejection of independent claim 1 and
grouped claims 2–20, not argued separately with particularity, because the
claims are directed to abstract ideas, without significantly more.

Rejection of Claims 7 and 14 under 35 U.S.C. § 112(a)
The Examiner determined the limitation “to determine a modified
correlation,” recited in both claims 7 and 14, does not have adequate written
description support. Final Act. 8–9. Appellant contends the Examiner fails to
make a prima facie rejection for lack of support under the written description
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requirement. See Appeal Br. 12–13; see also Reply Br. 8–11. We are
persuaded the Examiner erred.
Claim 7 recites that the server “analyzes a third location datum when
classified as the indicative tier to determine a modified correlation for the
indication of the at least one of the future location for the user or the future
time for the activity for the user.” The Specification discloses an
embodiment where “a third or more location datum . . . may be analyzed”
and “[a] modified marketing action may be identified for presentation to the
user.” Spec. ¶¶ 70–71. In another embodiment, the Specification discloses
determining whether a “marketability correlation is above a previously
determined threshold,” where, afterward, “direct tier 202 may be processed,
such as one source of a third location datum,” in order “to determine if a
modification to the marketing activity determined in step 622 is justified.”
Id. ¶¶ 81–82. Moreover, original claim 7 recited “analyzing a third location
datum when classified as the indicative tier to determine a modified
marketability correlation.”
We find the disclosure cited above would have reasonably conveyed
to a person of ordinary skill in the art possession of the disputed claim 7
limitation, as well as the similar disputed claim 14 limitation. Accordingly,
we find the Examiner erred in rejecting claims 7 and 14 for failing to comply
with the written description requirement.

Rejection of Claims 1–20 under 35 U.S.C. § 103
We have reviewed the § 103 rejection of claims 1–20 in light of
Appellant’s arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
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other arguments Appellant could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appellant’s arguments
are not persuasive of error. We agree with and adopt as our own the
Examiner’s findings of facts and conclusions as set forth in the Answer and
in the Final Action from which this appeal was taken. We provide the
following explanation for emphasis.
Appellant argues Higgins fails to teach the following claim 1
limitations: “accesses the database to obtain an entity information associated
with the first location data and, from the entity information, identifies a
context; [and] determines, from the database, a relationship between the
second location datum and the context.” Appeal Br. 13–14; Reply Br. 11–12.
We are not persuaded the Examiner erred.
Higgins teaches a system for the distribution, management, and
redemption of commercial incentives, including offers intended to motivate
a consumer to engage in commercial activity such as the purchase of a
product or service. Higgins ¶ 49. In Higgins, a user data database stores
consumer data that may be collected from consumer systems, and may
include “spatial data 302, temporal data 304, social data 306 and topical data
308.” Id. ¶¶ 56–57. The user data also includes “deduced information [that]
may comprise one or more of a primary user location, secondary user
location, past locations, present location, and predicted future location
information.” Id. ¶ 68. “In a particular embodiment, spatial data 302 is
correlated with temporal data 304 to determine a primary user location (e.g.,
home), a secondary location (e.g., school or work) and/or other locations.”
Id.
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Higgins further teaches that “matching of commercial incentives to
consumers may be performed using any combination of spatial, temporal,
social and topical user/targeting data, thereby allowing commercial
incentives to be delivered to consumers in highly targeted fashion.” Higgins
¶ 109. In an example the Examiner cites (see Final Act. 10–11), Higgins
teaches, “if the advertiser is an automobile dealership, user data associated
with a consumer may reveal that the consumer has been downloading
advertising content relating to cars that are sold at the dealership, that the
user has applied for a car loan, and that the user is currently driving in the
neighborhood of the dealership.” Id. ¶ 112.
Based on the portions of Higgins cited above, one of ordinary skill in
the art would have understood that to target a particular consumer, Higgins
would access the user data database to look up the consumer based on the
consumer’s user data (i.e., the claimed “entity information” (see Ans. 11)),
where user data may be associated with the primary user location (e.g.,
home) (i.e., the claimed “first location” (see id.)). See Higgins ¶¶ 56–68.
We disagree with Appellant’s arguments that “Higgins may determine
a context based on location-irrelevant activities (i.e., downloading
advertising content, applied for a car loan)” and is “not particularly looking
at a first location of a user for context.” Appeal Br. 14. Higgins discloses
distributing commercial incentives based on targeting information such as
“location of residence” or “an area, zone or geographic region.” Higgins
¶¶ 81–82. It follows that there would be little reason, from an advertising
standpoint, to begin looking at the activities of a user with no connection to
the general area of the automobile dealership. Moreover, Higgins discloses
identifying consumers in different stages of a “purchase funnel,” and that “a
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commercial incentive engine” provides leads to an advertiser “in an evolving
and dynamic manner and to deliver commercial incentives to those leads at a
time when it is most likely to influence purchasing decisions and/or most
convenient for the consumer to make a purchase.” Id. ¶¶ 111–112. This
suggests that the automobile dealership in Higgins would be looking at a
particular consumer’s activity based on the location of the consumer’s
residence or place of work or otherwise frequent presence in the general area
of the automobile dealership prior to the consumer’s “driving in the
neighborhood of the dealership.” Id. ¶ 112.
We thus find Higgins teaches, or at least suggests, that the server
“accesses the database to obtain an entity information associated with the
first location data and, from the entity information, identifies a context,” as
recited in claim 1. We also find Higgins teaches that the server “determines,
from the database, a relationship between the second location datum and the
context” because Higgins targets a consumer with a commercial incentive
based on the connection between the consumer’s activities in downloading
car advertisements and applying for a car loan and the fact that the consumer
is currently driving near the automobile dealership. See id.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent claim 1, as well as independent claims 10 and 17 and dependent
claims 2–9, 11–16, and 18–20, not specifically argued separately.
CONCLUSION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner’s decision rejecting claims 1–20 is
affirmed. See 37 C.F.R. § 41.50(a)(1).
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–20 101 Eligibility 1–20
7, 14 112(a) Written Description 7, 14
1–10, 12–20 103 Higgins, Petersen 1–10, 12–20
11 103 Higgins, Petersen,
I’Anson
11
Overall
Outcome
1–20

TIME PERIOD FOR RESPONSE
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).
AFFIRMED