Avaya Inc.

Patent Trials and Appeals Board

Apr 28, 2021

2021000023 (P.T.A.B. Apr. 28, 2021)

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.
14/971,501 12/16/2015 Jonathan Silverman 4366-980 1462
48500 7590 04/28/2021
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
MISIASZEK, AMBER ALTSCHUL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
04/28/2021 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 JONATHAN SILVERMAN and
JOHN H. YOAKUM

Appeal 2021-000023
Application 14/971,501
Technology Center 3600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
ULRIKE W. JENKS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as lacking
patent eligibility. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from
the Examiner’s decision to reject the claims. We have jurisdiction under
35 U.S.C. § 6(b).
We 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.
Appeal 2021-000023
Application 14/971,501

2
STATEMENT OF THE CASE
There are the three independent claims on appeal, claims 1, 20, and
21. Claim 1 is directed to a method; claim 20 is directed to a system for
carrying out the same method as claim 1; claim 21 is directed to non-
transitory computer-readable medium comprising the instructions for
carrying out the same method recited in claim 1.
The Examiner rejected claims 1–21 in the Final Office Action (“Final
Act”) under 35 U.S.C. § 101 because “the claimed invention is directed to a
judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract
idea) without significantly more.” Final Act. 3 (emphasis omitted).
Appellant did not provide separate arguments for any of
theindependent or dependent claims. We therefore select claim 1 as
representative. Claim 1 is reproduced below with additional formatting and
numbered annotations added to reference the limitations in the claim:
1. A method for selecting deployable resources comprising:
[1] automatically determining, via a processor-based
controller, a contact load parameter for a contact center;
[2] automatically determining, via the processor-based
controller, a contact load threshold for the contact center, the
contact load threshold based on a load capacity parameter of the
contact center;
[3] automatically determining, via the processor-based
controller, whether the contact load parameter exceeds the
contact load threshold;
[4] automatically selecting, via the processor-based
controller in response to determining that the contact load
parameter for the contact center exceeds the contact load
threshold, a first subset of deployable resources from a
predetermined plurality of deployable resources, the
automatically selecting comprising:
[5] receiving personal information about each
deployable resource of the first subset of deployable resources
Appeal 2021-000023
Application 14/971,501

3
via a respective wearable device configured to be worn by each
deployable resource of the plurality of deployable resources, the
personal information based on information determined by a
wearable device while the wearable device is being worn by the
respective deployable resource;
[6] comparing the personal information received
from each deployable resource of the first subset of the plurality
of deployable resources to a selection criterion;
[7] selecting, based on the comparing of the
personal information to the selection criterion, a second subset
of deployable resources from the first subset of the plurality of
deployable resources; and
[8] electronically notifying, via a network-
connected device, each deployable resource of the second
subset of deployable resources to request assistance with
respect to the contact center,
[9] wherein electronically notifying each
deployable resource of the second subset of deployable
resources comprises sending an electronic notification to the
wearable device and/or a user device associated with each
deployable resource of the second subset of deployable
resources.

PATENT ELIGIBILITY
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
Appeal 2021-000023
Application 14/971,501

4
U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If
it is determined that the claims are directed to an ineligible concept, then the
second step of the two-part analysis is applied in which it is asked “[w]hat
else is there in the claims before us?” Id. (alteration in original) (citation and
quotation marks omitted). The Court explained that this step involves
a search for an “‘inventive concept’”—i.e., an element or
combination of elements that is “sufficient to ensure that the
patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself.”
Alice, 573 U.S. at 217–18 (alteration in original) (citing from Mayo, 566
U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217
(citation omitted).
The PTO published revised guidance on the application of 35 U.S.C.
§ 101, USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Eligibility Guidance”) (we cite to the Federal Register where the
Eligibility Guidance was published). This guidance provides additional
direction on how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the Eligibility Guidance looks at the specific
limitations in the claim to determine whether the claim recites a judicial
Appeal 2021-000023
Application 14/971,501

5
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” Eligibility
Guidance, 84 Fed. Reg. at 54 (Step 2A, Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
“inventive concept” to ensure that the claims define an invention that is
significantly more than the ineligible concept itself. Eligibility Guidance, 84
Fed. Reg. at 56.
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

Discussion
Claim 1 is directed to a method for selecting deployable resources
comprising steps we have numbered [1]–[8]. A method is a “process,” which
is one of the broad statutory categories of patent-eligible subject matter
listed in 35 U.S.C. § 101. Therefore, following the first step of the
Mayo/Alice analysis, we find that the claim is directed to a statutory class of
invention. We thus proceed to Step 2A, Prong One, of the 2019 Eligibility
Guidance.

Appeal 2021-000023
Application 14/971,501

6
Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely, whether the claim recites an
abstract idea, law of nature, or natural phenomenon. The Eligibility
Guidance directs us to search each limitation in the claim to determine
whether it recites an abstract idea. Eligibility Guidance, 84 Fed. Reg. at 54.
The Examiner found that the steps recited in claim 1 involve “both an
observation (determining availability of a deployable resource) and an
evaluation (comparing the deployable resource information with the
selection criterion based on the task to be performed),” which the Examiner
stated are “concepts [that] have been considered ineligible mental processes
by the Courts (See 2019 Revised Patent Subject Matter Eligibility
Guidance).” Final Act. 5.
Appellant argues that the claims do not recite any steps which could
be performed in a human mind. Appeal Br. 8. Appellant states that “[e]ach
feature of each claim is necessarily tied to a computer element.” Id.
Appellant, after reciting the limitations in the claim, argues that “the system
receives information from the wearable device and the system sends, via a
network-connected device an electronic notification to a wearable device
and/or a user device associated with each deployable resource from which
assistance is requested,” which “‘the human mind is not equipped to
perform.’” Appeal Br. 9 (quoting from Eligibility Guidance, 84 Fed. Reg. at
53–54).
Appellant’s arguments do not persuade us that the Examiner erred.
Appeal 2021-000023
Application 14/971,501

7
Claim 1 is directed to a method of “selecting deployable resources.”
While the term “deployable resources” is used throughout the claim and
Specification, the only example we could find in the Specification of a
deployable resource is of an agent at a “contact center.” Spec. ¶¶ 24, 25. The
term “contact center” is also recited in steps [1], [2], [4], and [8] of claim 1.
We interpret a “contact center” to be a center staffed by agents who support
customer interactions across a range of channels, including phone calls,
email, Web chat, Web collaboration.2 We therefore understand the claim to
be directed to a process that would occur at a contact center and involves
managing the staffing at contact centers to select additional agents (the
“deployable resources”) when the load of customer contacts at the center
exceeds a certain threshold.
In the first step of the claim, a “contact load parameter for a contact
center” is automatically determined using a process-based controller. The
term “contact load parameter” is not explicitly defined in the Specification,
but the Specification explains that such a parameter “may include customer
contacts across a set of different communication channels, the skill sets and
competencies of currently working agents, and the service levels being
experienced by customers.” Spec. ¶ 26. The Specification also discloses that,
in some embodiments, “the contact load parameter 18 may be a current
contact volume or a ratio of a current contact volume to a current contact
capacity.” Spec. ¶ 27. The “contact load” in simple terms refers to the
volume of contacts between customers and agents at the contact center.

2 https://www.gartner.com/en/information-technology/glossary/contact-
center (last accessed Apr. 8, 2021).
Appeal 2021-000023
Application 14/971,501

8
In step [2], of the claim, a “contact load threshold” is automatically
determined using a process-based controller. A “contact load threshold” is
described in the Specification as a “predetermined contact volume, or a
predetermined ratio of contact volume to contact capacity.” Spec. ¶ 27. In
other words, the contact load threshold is the volume of contacts the contact
center can handle with the existing staff of deployable resources.
In step [3] of the claim, the processor-based controller determines
automatically “whether the contact load parameter [step [1]] exceeds the
contact load threshold [step [2]].” Step [3] therefore determines whether the
volume of contacts at the contact center exceeds the volume that the contact
center can handle with the existing staff.
We see no reason why steps [1]–[3] could not be performed mentally
in the mind of a human, where the human makes the determinations of steps
[1] (e.g., the skill set, competency, and service level ratings of an agent) and
step [2] (e.g., a predetermined number of contacts (“volume”) that an agent
can make), and then determines whether [1] the contact load parameter is
higher (“exceeds”) than the [2] the contact load threshold. If it is higher, the
claim, step [4] requires automatically selecting “a first subset of deployable
resources.” In other words, a set of contact call agents are automatically
selected in response to step [3] because when step [3] is met, this is an
indication that more agents will be needed at the contact center to handle the
contact volume. Again, this step could be performed mentally by a human
selecting available agents who could be deployed at the contact center when
it is determined that more are needed.
Step [5] of claim receives personal information about the agent from a
“wearable device” worn by the agent. The Specification discloses that “a
Appeal 2021-000023
Application 14/971,501

9
suitable wearable device 24 may include a smartwatch, fitness tracker, or
other electronic device that is configured to be worn by a person and is
capable of collecting, storing and/or communicating personal information
about the wearer.” Spec. ¶ 28. Personal information, according to the
Specification, may include, for example, “location information such as a
proximity to a contact center 14, or personal characteristics relating to job
readiness, such as a rest state or BAC [(blood alcohol content)] level.” Spec.
¶ 30.
The personal information is compared to a selection criterion in step
[6]. This step could be performed mentally, for example, by looking up the
agent’s address and making a phone call inquiring whether the agent is at
home. Agents are selected by this comparison and the contact center is
notified to request assistance from these selected agents in steps [7] and [8],
respectively, which are, again, steps that could be performed in the mind of a
human by a human determining which agents meet the criterion and then
informing the contact center of their availability.
While we agree that the steps in the claim are performed using
processors, wearable devices, and electronic notifications, the steps could be
performed in the mind of a human, which is the category of abstract ideas
identified in the Eligibility Guidance as “mental processes.” “Courts have
examined claims that required the use of a computer and still found that the
underlying, patent-ineligible invention could be performed via pen and paper
or in a person’s mind.” Versata Devel. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1335 (Fed. Cir. 2015); Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed Cir. 2016) (“Furthermore, with the exception of
generic computer-implemented steps, there is nothing in the claims
Appeal 2021-000023
Application 14/971,501

10
themselves that foreclose them from being performed by a human, mentally
or with pen and paper.”). Thus, we are not persuaded by Appellant’s
argument that just because a processor and other electronic devices are used
in the claim to make certain determinations, gather information, and send
notifications, the claim is foreclosed from encompassing an abstract idea.
Because we find that the Examiner properly found that claim 1 recites
an abstract idea, we proceed to the next step in the analysis of determining
whether the abstract idea is integrated into a practical application.

Step 2A, Prong Two
Prong Two of Step 2A under the Eligibility Guidance asks whether
there are additional elements that integrate the exception into a practical
application. We must look at the claim elements individually and “as an
ordered combination” to determine whether the additional elements integrate
the recited abstract idea into a practical application. As explained in the
Eligibility Guidance, integration may be found when an additional element
“reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field” or “applies or uses the
judicial exception in some other meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort designed to
monopolize the exception.” Eligibility Guidance, 84 Fed. Reg. at 55.
Appellant argues the claim “only receives personal information about
each deployable resource of the first subset of deployable resources when
the contact center load parameter exceeds a threshold (i.e., limiting when the
information is collected)” and that “the personal information is only received
Appeal 2021-000023
Application 14/971,501

11
from a first subset of deployable resources not all the deployable resources,
which further limits the personal information that needs to be transmitted.”
Appeal Br. 11. Appellant argues that these are improvements like those in
Example 40 of the Subject Matter Eligibility Examples: Abstract Ideas (Jan.
7, 2019) (“SMEE”)3 in which patent-eligibility was found.
In Example 40, while the comparison step in the claim was
determined to be a mental process, the claim was found to be patent-eligible.
It was explained:
Although each of the collecting steps analyzed individually
may be viewed as mere pre- or post-solution activity, the claim
as a whole is directed to a particular improvement in collecting
traffic data. Specifically, the method limits collection of
additional Netflow protocol data to when the initially collected
data reflects an abnormal condition, which avoids excess traffic
volume on the network and hindrance of network performance.
The collected data can then be used to analyze the cause of the
abnormal condition. This provides a specific improvement over
prior systems, resulting in improved network monitoring.
SMEE 11.
Appellant states that rejected claim 1 is analogous to the claim in
Example 40 because the collection of personal information is only collected
when a threshold is met and then it is collected from only a subset of
deployable resources. Appeal Br. 11.
We do not agree that the reasoning in Example 40 is applicable to the
rejected claim here. The claim in Example 40 recited:
comparing, by the network appliance, at least one of the
collected traffic data to a predefined threshold; and

3 https://www.uspto.gov/sites/default/files/documents/101_
examples_37to42_20190107.pdf (last accessed Feb. 12, 2021).
Appeal 2021-000023
Application 14/971,501

12
collecting additional traffic data relating to the network
traffic when the collected traffic data is greater than the
predefined threshold, the additional traffic data comprising
Netflow protocol data.
SMEE 10.
The comparison in the claim of Example 40 that determined when to
collect additional traffic data was for the purpose of improving network
monitoring, avoiding “excess traffic volume on the network and hindrance
of network performance.” Here, Appellant has not identified a problem that
is solved by collecting personal information only when “the contact load
parameter exceeds the contact load threshold.” The claim as a whole is
aimed at determining when additional agents may be needed to staff the
contact center, and when this determination is made, the claim uses personal
information gathered from the wearable device to ascertain what agents are
available. Unlike the claim in Example 40 where traffic data is collected
continuously from the network and then this data is used to determine when
to collect additional traffic data, the personal data in rejected claim 1 is only
collected when there is a need to deploy more resources (i.e., people) and is
not collected prior to this step. Consequently, we conclude that the claim in
Example 40 does not dictate a finding that claim 1 is patent-eligible because
the “personal information” collected in the claim is not similar to the
collection of the “traffic data” throughout the claim in Example 40 and does
not solve the same type of technical problem. The wearable device merely
facilitates data collection.
We find Appellant’s argument that personal information is only
selected from a “subset” of deployable resources to be a confusing
interpretation of the claim because personal information is collected from all
Appeal 2021-000023
Application 14/971,501

13
wearable devices in step [5] and then this information is subsequently used
to identify a subset of deployable workers who meet the selection criterion
in step [7]. Thus, we do not see how the personal information that needs to
be transmitted to make this determination is “limited” as asserted by
Appellant. Appeal Br. 11. The only step in the claim which collects personal
information is step [5] and all of this information is used in making the
comparison to a selection criterion recited in step [6] of the claim. Example
40, in contrast, collects “traffic data” in the first step of the claim and then
only collects “additional traffic data” when a threshold is met. Thus,
Example 40 of the 2019 SMEE limits the collection of additional traffic data
when a threshold is met. Rejected claim 1 does not limit the collection of the
personal data in the same way that the collection of “additional traffic data”
is limited by the claim. While it limits the collection of personal information
to when deployable resources are needed, unlike Example 40, there is no
collection of personal data before additional deployable resources are
needed.
Appellant also argues that “receiving personal information about each
deployable resource via a wearable device worn by each deployable
resource, the personal information based on information determined by a
wearable device, which provides specific improvements over prior systems.”
Appeal Br. 12. Appellant states that the improvement is the wearable device
being used to select resources. Id. Appellant asserts: “For example, using the
deployable resource’s location (e.g., real time information), the system
selects resources that are closest to the contact center, which may result in a
quicker response time (e.g., resource arriving at the contact center).” Id.
Appeal 2021-000023
Application 14/971,501

14
This argument does not persuade us that the abstract idea is integrated
into a practical application. Using the “wearable device” for its generic
functionality in collecting personal information is insufficient to confer
eligibility on the claims. As explained in Ericsson Inc. v. TCL
Communication Technology Holdings Limited, 955 F.3d 1317, 1330–1331
(Fed. Cir. 2020):
Even assuming that this collection of elements led to a more
efficient way of controlling resource access, “our precedent is
clear that merely adding computer functionality to increase the
speed or efficiency of the process does not confer patent
eligibility on an otherwise abstract idea.” Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed.
Cir. 2015). Thus, the claims do not “recite[ ] a specific solution
to a security problem,” as Ericsson contends. Appellees’ Br. 35.
To the contrary, when a claim “does no more than require a
generic computer to perform generic computer functions,” as
here, the claims lack an inventive concept sufficient to
demonstrate eligibility at step two. Alice, 573 U.S. at 225, 134
S.Ct. 2347.
Here, the wearable device is simply being using to collect
information. While the device may increase the speed or efficiency of the
process, the device is a generic component, and thus like the computer in
Ericsson, it is insufficient to confer eligibility on the claim.
The claimed advance described by Appellant of using the wearable
device to gather information does not provide a technological improvement
to the process of identifying deployable resources for the contact center. It
simply facilitates the gathering of the information by using a generic device.
Mere data-gathering steps are insufficient to make a patent-ineligible claim
eligible. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370,
1372 (Fed. Cir. 2011). See also Eligibility Guidance, 84 Fed. Reg. at 55
Appeal 2021-000023
Application 14/971,501

15
(characterizing the collection of data as insignificant “extra-solution
activity”).
The steps recited in the claim are stated in a “result-oriented way,”
where the desired result of the step is recited without claiming how the result
is accomplished. For example, steps [1]–[3] and [7] of the claim make
automatic determinations and selections, but there is no recitation in the
claim as to how the steps are accomplished – only the result is claimed,
namely, automatically determining the contact load parameter (step [1]) and
contact load threshold (step [2]), where [1] exceeds [2], and selecting
deployable resources based on a comparison between personal information
and a selection criteria (step [6]). As the claim is written, each of the steps
could be performed mentally. There is no mechanism recited that dictates
how to achieve the result recited in each step and convert any abstract idea
into a practical application. Dropbox, Inc. v. Synchronoss Techs., Inc., 815
Fed.Appx. 529, 533 (Fed. Cir. 2020) (nonprecedential), further summarized:
The patent has to describe how to solve the problem in a
manner that encompasses something more than the “principle in
the abstract.” See [ChargePoint, Inc. v. SemaConnect, Inc., 920
F.3d 759, 769 (Fed. Cir. 2019)] (explaining that an invention
may not be patent eligible if the “claims ‘were drafted in such a
result-oriented way that they amounted to encompassing the
‘principle in the abstract’ no matter how implemented’ ”
(quoting Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335,
1343 (Fed. Cir. 2018))).
Dropbox, 815 Fed.Appx. at 533.
Appellant also argues that the claimed method is patent-eligible
because, in steps [8] and [9], the claim “electronically notifies, via a
network-connected device, each deployable resource of the second subset of
deployable resources to request assistance with respect to the contact center,
Appeal 2021-000023
Application 14/971,501

16
wherein electronically notifying each deployable resource comprises sending
an electronic notification to the wearable device and/or a user device
associated with each deployable resource.” Appeal Br. 13
We do not agree these steps confer patent-eligibility. The claim does
not indicate how the notifications are sent to the “deployable resources,”
which as discussed above, could be human agents who work at a contact
center. Performing these steps electronically simply automates what could
be done manually, such as making a call to the human. As explained above,
the claim does not improve how the messages are sent but rather uses the
devices for their generic communication functions.
Example 42 of the 2019 SMEE, cited by Appellant in support of
patent-eligibility, sends electronic message as in rejected claim 1, but the
improvement described is not in the message sending itself, but of
“converting updated information that was input by a user in a non-
standardized form to a standardized format.” SMEE 18. It is explained in the
SMEE that the claim is eligible for a patent because “the additional elements
recite a specific improvement over prior art systems by allowing remote
users to share information in real time in a standardized format regardless of
the format in which the information was input by the user.” SMEE 18–19.
The claim in Example 42 recites steps of messaging, but these steps take
place after the steps of “converting, by a content server, the non-
standardized updated information into the standardized format” and “storing
the standardized updated information about the patient’s condition in the
collection of medical records in the standardized format,” the specific
improvement described for the claim. Rejected claim 1, therefore, is nothing
like the claim in Example 42 of the SMEE because there is no converting of
Appeal 2021-000023
Application 14/971,501

17
the personal information to a standardized format, but rather it is received
without any action being performed on it (see step [5] of claim 1).
Because we find that the abstract idea is not integrated into a practical
application under Step 2, Prong Two, we proceed to Step 2B of the analysis.

Step 2B
Step 2B of the Eligibility Guidance asks whether there is an inventive
concept. In making this Step 2B determination, we must consider whether
there are specific limitations or elements recited in the claim “that are not
well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present” or whether the claim
“simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception, which is indicative that an inventive concept may not be present.”
Eligibility Guidance, 84 Fed. Reg. at 56 (footnote omitted).
Appellant does not provide evidence that the wearable device is being
used in a non-conventional way or arranged with other elements in the claim
in such a way that would confer eligibility when the claim as a whole is
examined. As indicated above, the wearable device is being used for its
generic function to gather personal information from the wearer of the
device. The distinction between when a claim utilizes a data-gathering
device in an inventive, non-conventional way, and when it does not, was
articulated in iLife Technologies, Inc. v. Nintendo of America, Inc., 839
Fed.Appx. 534, 536 (Fed. Cir. 2021). In iLife, the claims were directed to a
system comprising a sensor “that senses dynamic and static accelerative
phenomena” of a body and then processes that information to “determine
Appeal 2021-000023
Application 14/971,501

18
whether said evaluated body movement is within environmental tolerance.”
The court, in finding the claim ineligible for a patent because it recited an
abstract idea, explained:
iLife argues claim 1 is not directed to an abstract idea because it
recites a physical system that incorporates sensors and
improved techniques for using raw sensor data like the claims
we held eligible in Thales Visionix Inc. v. United States, 850
F.3d 1343 (Fed. Cir. 2017) and CardioNet, LLC v. InfoBionic,
Inc., 955 F.3d 1358 (Fed. Cir. 2020). But in Thales, the claims
recited a particular configuration of inertial sensors and a
specific choice of reference frame in order to more accurately
calculate position and orientation of an object on a moving
platform. 850 F.3d at 1349. We held the claims were not
directed to an abstract idea because they sought to protect “only
the application of physics to the unconventional configuration
of sensors as disclosed.” Id. Likewise, the claims in CardioNet
were not abstract because they focused on a specific means or
method that improved cardiac monitoring technology,
improving the detection of, and allowing more reliable and
immediate treatment of, atrial fibrillation and atrial flutter. 955
F.3d at 1368. In contrast, claim 1 of the ’796 patent is not
focused on a specific means or method to improve motion
sensor systems, nor is it directed to a specific physical
configuration of sensors. It merely recites a motion sensor
system that evaluates movement of a body using static and
dynamic acceleration information.
iLife, 839 Fed.Appx. at 537.
Here, like the claims in iLife, and in contrast to the technological
improvements recited in the claims of Thales and CardioNet, rejected claim
1 is not focused on an improvement to the wearable device technology. The
device is worn by the “deployable resource,” which we understand to be a
human. Appellant does not provide arguments or evidence that it is being
worn in a non-conventional manner, rather than simply being used in the
standard position necessary to gather data from a human using the device.
Appeal 2021-000023
Application 14/971,501

19
The Specification does not describe in the paragraphs cited by
Appellant how the wearable device is able to gather personal information,
such as “biometric information such as heart rate, blood pressure, rest and
sleep status, current activity or physical exertion, and activity over time”
(Spec. ¶ 28), but simply characterizes the wearable device as “a smartwatch,
fitness tracker, or other electronic device that is configured to be worn by a
person and is capable of collecting, storing and/or communicating personal
information about the wearer” (id.). Thus, there is inadequate evidence on
this record that the wearable device is anything other than a conventional,
generic device performing its well-understood and conventional functions.
Likewise, nothing in the Specification indicates that the “processor-based
controller” is unconventional. As discussed in British Telecommunications
PLC v. IAC/InterActiveCorp., 813 Fed.Appx. 584, 587 (Fed. Cir. 2020):
“Nothing in the claims, understood in light of the specification,
requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering,
sending, and presenting the desired information.” Electric
Power, 830 F.3d at 1355. Such claims fail under Alice.
Because Appellant has not provided adequate evidence of a non-
conventional and inventive arrangement of the elements in the claim beyond
the judicial exception, we are compelled to affirm the rejection of claim 1 as
patent-ineligible. Claims 2–21 are not argued separately and fall with
claim 1. 37 C.F.R. § 41.37(c)(1)(iv) (2019).

Appeal 2021-000023
Application 14/971,501

20
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED