AVAYA INC.

Patent Trials and Appeals Board

Sep 23, 2020

14068513 - (D) (P.T.A.B. Sep. 23, 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.
14/068,513 10/31/2013 John H. Yoakum 4366-962 8820
48500 7590 09/23/2020
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
LINDSEY III, JOHNATHAN J
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
09/23/2020 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 JOHN H. YOAKUM
Appeal 2020-001226
Application 14/068,513
Technology Center 3600
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
BAYAT, 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 1–21, which constitute all pending
claims in the application. 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 Avaya Inc. Appeal
Br. 2.
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CLAIMED SUBJECT MATTER
Appellant’s claimed invention “relates to employee access to
employer communications systems.” Spec. ¶ 1. More specifically, the
claims address “control of employee access to employer communications
systems during periods of employee furlough.” Id. ¶ 23. Claims 1, 16,
and 21 are independent and recite substantially similar subject matter.
Claim 16, reproduced below, is representative of the claimed subject matter.
16. A method for providing unified control of employee
access to a plurality of employer communications systems
during periods of employee furlough, comprising:
receiving from a user a set of employee furlough
information for each of a plurality of employees, the employee
furlough information for each of the employees of the plurality
of employees comprising an employee indicia identifying the
employee, a furlough period identifying a time period of
furlough for the employee, and a list of restricted employer
communication systems from which the employee is restricted
during the furlough period;
determining the restricted employer communications
systems for each employee of the plurality of employees from
among the plurality of employer communications systems
based on the received employee furlough information for each
employee; and
instructing the restricted employer communications
systems to restrict communications access of each employee to
the restricted employer communications systems during the
furlough period for each employee, wherein the restricted
employer communications systems include at least one
telephonic system and at least one email system and wherein
instructing the restricted employer communications systems
further comprises providing forwarding instructions for
incoming calls on the at least one telephonic system and
incoming email messages on the at least one email system.
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REJECTION
Claims 1–21 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 2.
OPINION
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. 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
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus 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);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
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such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice 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.
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(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 USPTO published revised guidance on the application of § 101.
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Guidance”). Under the Guidance, the Examiner looks 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 of 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, does the Examiner 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 Guidance, 84 Fed. Reg. at 56.
Alice Step One
Prong One of Step 2A of the Guidance
Appellant argues all claims together as a group. See Appeal Br. 5–8.
We select claim 16 as representative of the group, with claims 1–15 and 17–
21 standing or falling therewith. See 37 C.F.R. § 41.37(c)(1)(iv).
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In evaluating the three steps of process claim 16, the Examiner finds
the step of receiving employee furlough information from a user is a data
gathering step that represents insignificant extra-solution activity. Final Act.
3–4. As for the “determining” and “instructing” steps of claim 16, the
Examiner determines that these steps recite abstract mental processes
because they can be performed in the human mind. Id. at 3 (citing
Guidance, 84 Fed. Reg. at 52 (“mental processes include concepts performed
in the human mind (including an observation, evaluation, judgment,
opinion.)”).
The step of “receiving from a user a set of employee furlough
information . . . [including] a list of restricted employer communication
systems from which the employee is restricted during the furlough period” is
described as collecting information from a user. Spec. ¶ 7. We determine
that the step of collecting information regardless of its content is an abstract
idea. In Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed.
Cir. 2016), the court reiterated: “[W]e have treated collecting information,
including when limited to particular content (which does not change its
character as information), as within the realm of abstract ideas.”2
The “determining” step involves checking a list to see which
resources (employer communications systems) are restricted based on the
received employee furlough information. Spec. ¶ 32. Evaluating a list to
determine which resources are to be restricted is an activity that can be

2 See also, e.g., Internet Patents, 790 F.3d at 1349; OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347
(Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs. For Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014).
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performed in the human mind by reading the list and assessing which
resources are restricted to the furloughed employee. See CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method
that can be performed by human thought alone is merely an abstract idea.”);
accord Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir.
2015).
The final step of claim 16 recites “instructing the restricted employer
communications systems to restrict communications access of each
employee . . . during the furlough period for each employee.”3 Appellant
does not define the term “instructing,” and the mechanism of performing
that function is not described in the Specification. See Spec. ¶¶ 8, 24, 34, 35
(cited Appeal Br. 5). The ordinary and customary meaning of “instruct” is
“to give knowledge to . . . to provide with authoritative information or
advice . . . to give an order or command to.”4 We construe “instructing” to
mean to convey a message containing information and/or a command to
control access to system resources, by restricting access.
In a similar case, the Federal Circuit held that “controlling access to,
or limiting permission to, resources” is an abstract idea. Ericsson Inc. v.
TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1326 (Fed. Cir. 2020).
Controlling access to resources is exactly the sort of
process that “can be performed in the human mind, or by a
human using a pen and paper,” which we have repeatedly found
unpatentable. See CyberSource Corp. v. Retail Decisions, Inc.,

3 “[A]n employer communications system is any communications system
provided or controlled by an employer that facilitates communications
between the employer and employees.” Spec. ¶ 24.
4 Merriam-Webster Online Dictionary (last retrieved on Sept. 15, 2020 at
https://www.merriam-webster.com/dictionary/instruct).
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654 F.3d 1366, 1372 (Fed. Cir. 2011). The idea long predates
the ’510 patent and is pervasive in human activity, whether in
libraries (loaning materials only to card-holding members),
office buildings (allowing certain employees entrance to only
certain floors), or banks (offering or denying loans to applicants
based on suitability and intended use). In each of these
circumstances, as in the claims at issue, a request is made for
access to a resource, that request is received and evaluated, and
then the request is either granted or not.

Id. at 1327. The court reiterated: “[W]e have repeatedly found the concept
of controlling access to resources via software to be an abstract idea.” Id.
(citing Smart Sys. Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364, 1371 (Fed. Cir. 2017); Prism Techs. LLC v. T-Mobile USA, Inc., 696
F. App'x 1014, 1017 (Fed. Cir. 2017); Smartflash LLC v. Apple Inc., 680 F.
App'x 977 (Fed. Cir. 2017). As such, we are not persuaded by Appellant’s
arguments that the claimed method cannot be performed in the human mind.
See Appeal Br. 6; see also Reply Br. 2–3.
In light of these precedents, we conclude that claim 16 equally recites
an abstract idea.
Prong Two of Revised Step 2A of the Guidance
Turning to the next step in the Guidance, we determine if the claimed
method is integrated into a “practical application.” Guidance, 84 Fed. Reg.
at 54. We use the term “additional elements” for “claim features,
limitations, and/or steps that are recited in the claim beyond the identified
judicial exception.” See id. at 55 n.24.
We initially note that the first two “receiving” and “determining”
steps of claim 16 do not require any computer implementation, and, as such,
can be performed manually. The only additional element is recited as part of
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the “instructing” step, which is the “employer communications systems.”
The Specification describes these systems broadly as “any communications
system provided or controlled by an employer that facilitates
communications between the employer and employees.” Spec. ¶ 24.
Claim 16 further defines these systems as a “telephonic system” and “email
system.” Appeal Br. 14, Claims App.
Appellant’s Specification discloses that the claimed method “may be
provided in or integrated into any processor-based device.” Spec. ¶ 71; see
also id. ¶ 65 (“the term ‘server’ shall also be taken to include any collection
of machines that individually or jointly execute a set (or multiple sets) of
instructions to perform any one or more of the methodologies discussed
herein”). Because a particular computer is neither recited nor required for
the method of claim 16, the claim also does not define or rely on a
“particular machine.” 84 Fed. Reg. at 55; see also MPEP § 2106.05(b).
Further, the method does not transform matter because it merely
communicates restriction instructions to an employer communications
system. Guidance, 84 Fed, Reg. at 55; see also MPEP § 2106.05(c). The
method has no other meaningful limitations (MPEP § 2106.05(e)), and thus
merely recites instructions to execute the recited judicial exception on a
generic communications system.
We are unpersuaded that “the claimed invention is a technical solution
to a technical problem,” similar to claims in DDR Holdings. LLC v.
Hotels.com, L.P., 773 F. 3d 1245 (Fed. Cir. 2014). Appeal Br. 6; see also
Reply Br. 3–4. Appellant’s reliance on DDR is unavailing because claim 16
neither recites nor addresses a problem unique to the Internet. See
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
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1371 (Fed. Cir. 2015) (“The patent at issue in DDR provided an Internet-
based solution to solve a problem unique to the Internet that (1) did not
foreclose other ways of solving the problem, and (2) recited a specific series
of steps that resulted in a departure from the routine and conventional
sequence of events after the click of a hyperlink advertisement. The patent
claims here do not address problems unique to the Internet, so DDR has no
applicability.”)
Appellant contends: “Prior to the invention, employers were
dependent on self-compliance by the employee and/or physically taking
possession of communication devices. Alternatively, employers could
manually lock each userid/password and then later unlock the same.”
Appeal Br. 7. We find Appellant’s contention here underscores the court’s
reasoning in Ericsson supra; that the claimed method was performed
manually in the past before implementation on generic computers or
systems.
Though not advanced until the Reply Brief, and thus waived,
Appellant argues “that claimed invention constitutes an improvement, and a
more efficient way to restrict communication access by furloughed
employees.” Reply Br. 4. However, this alleged improvement lies in the
abstract idea itself, regardless of the type of employees, furloughed or not,
access to resources is being restricted. See Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] new abstract
idea is still an abstract idea.”).
The remaining arguments advanced on pages 5 and 6 of the Reply
Brief (“claims improve the functioning of employer communication
systems,” the “claims improve employer communication systems (e.g.,
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telephone and email) by automatically restricting and restoring access by
furloughed employees,” and the “claims recite a specific manner of
restricting access to employer communication systems”) are forfeited,
because “[a]ny bases for asserting error, whether factual or legal, that are not
raised in the principal brief are waived.”5 Ex parte Borden, 93 USPQ2d
1473, 1474 (BPAI 2010) (informative). Regardless, we have considered
these arguments, but we are not persuaded for the following reasons.
“[T]o be directed to a patent-eligible improvement to computer
functionality, the claims must be directed to an improvement to the
functionality of the computer or network platform itself.” Customedia
Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020)
(citing Enfish, 822 F.3d at 1336–39). The final step of claim 16 recites an
employer communications system arranged in no particular way to perform
basic function of receiving instructions, without improving the system. The
Specification’s description of the this system makes clear that generic
computer components and systems are utilized as tools to implement the
abstract idea of restricting access of each employee during the furlough
period to resources, rather than improving the functioning of the employer
communications system or other technology. Claim 16 does no more than
use instructions to implement the abstract idea on a generic communications
system.

5 Appellant may not present arguments in a piecemeal fashion, holding back
arguments until an Examiner answers the original brief, without giving the
Examiner an opportunity to respond. 37 C.F.R. § 41.37(c)(1)(iv).

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As a whole, claim 16 merely instructs generic systems to restrict
access, and does not “ha[ve] the specificity required to transform a claim
from one only claiming a result to one claiming a way of achieving it.” SAP
Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018). Claim 16
is silent as to how restricting access to these generic systems is controlled,
beyond merely reciting generic functional recitations that employee furlough
information is received and evaluated, and an instruction is sent to restrict
access to system resources based on a restricted employer communication
systems list. Simply claiming “those functions in general terms, without
limiting them to technical means for performing the functions” (Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016)), does not
reflect a technological improvement and fails to integrate the judicial
exception into a practical application.
As such, we determine that claim 16 does not integrate the recited
judicial exceptions into a “practical application.”
Alice Step Two
Step 2B of the Guidance
In Step 2B, we consider whether an “additional element,” or
combination of “additional elements,” adds a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field, which would be considered “something
more” than the judicial exception. Guidance, 84 Fed. Reg. at 56.
As discussed, the only “additional elements” that lie outside the scope
of the abstract in claim 16 are the “employer communications systems [that]
include at least one telephonic system and at least one email system.”
Appeal Br. 14, Claims App. However, these conventional systems are
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merely targets to which the restricting access instructions are directed. The
Specification describes these systems and processors as well-understood,
routine, or conventional. Spec. ¶ 75 (“A processor may be a microprocessor,
but in the alternative, the processor may be any conventional processor,
controller, microcontroller, or state machine.”) (Emphasis added).
We agree with the Examiner that claim 1 lacks additional elements
that provide an inventive concept. As an ordered combination, the
additional elements provide no more than when they are considered
individually. Alice, 573 U.S. at 225. They recite generic computer
components and systems that perform well-understood and conventional
functions. They are used as tools to implement the judicial exception. See
Inventor Holdings LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (considering the method steps of the representative claims
as an “ordered combination” reveals that they “amount to ‘nothing
significantly more’ than an instruction to apply [an] abstract idea” using
generic computer technology).
We are not persuaded that claim 16 is directed to patent eligible
subject matter because “the instant claims do not pre-empt all ways for
restricting communications access.” Appeal Br. 7–8. “While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). “Where a
patent’s claims are deemed only to disclose patent ineligible subject matter”
under the Alice framework, “preemption concerns are fully addressed and
made moot.” Id.
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For these reasons, we agree with the Examiner that claim 16 is
directed to a judicial except that is not integrated into a practical application,
and fails to contain an inventive concept. Accordingly, we sustain the
rejection of independent claim 16 under Section 101, and claims 1–15
and 17–21, which fall with claim 16.
CONCLUSION
The Examiner’s decision to reject claims 1–21 is affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis/Reference(s) Affirmed Reversed
1–21 101 Eligibility 1–21
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