Avaya Inc.

Patent Trials and Appeals Board

Mar 18, 2022

2021003296 (P.T.A.B. Mar. 18, 2022)

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. 14/982,364 12/29/2015 Valentine C. Matula 4366-784 4656 48500 7590 03/18/2022 SHERIDAN ROSS P.C. 1560 BROADWAY, SUITE 1200 DENVER, CO 80202 EXAMINER SCHEUNEMANN, RICHARD N ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 03/18/2022 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 VALENTINE C. MATULA, DAVID SKIBA, and GEORGE ERHART ____________ Appeal 2021-003296 Application 14/982,364 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, MICHAEL C. ASTORINO, and KENNETH G. SCHOPFER, Administrative Patent Judges. MOHANTY, 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 1-4, 7-14, 16, 18-20, 22, and 23. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as Avaya Inc. (Appeal Br. 2). Appeal 2021-003296 Application 14/982,364 2 CLAIMED SUBJECT MATTER The Appellant’s claimed invention relates to the temporal management of enqueued transactions on a communication system (Spec., para. 1). Claim 16, reproduced below with the italics added, is representative of the subject matter on appeal. 16. A method, comprising: accessing, by a processor, a communication with a customer via a customer communication device via a communications network, wherein the communication is an ongoing communication; initiating, by the processor, an automated interaction portion of an interaction with the customer and an automated resource wherein the automated interaction portion is performed at a first pace and, once completed, the communication is enqueued for interaction with an agent and wherein the interaction comprises a text interaction; determining, by the processor, an estimated wait time (EWT) for the customer to interact with the agent; accessing, by the processor, a likely abandonment time; and upon determining the EWT is greater than the likely abandonment time, executing a delay strategy to cause the automated interaction portion to be performed at a second pace to consume at least an additional portion of the EWT over the automated interaction portion when performed at the first pace; wherein the delay strategy comprises a delay in acknowledging an input to the text interaction provided by the customer and further comprising receiving a text character input as a portion of the text interaction by echoing back the text character input to the customer communication device; and upon the agent becoming available, connecting the customer communication device to an agent communication device associated with the agent. Appeal Br. 22-23 (Claims Appendix). Appeal 2021-003296 Application 14/982,364 3 THE REJECTIONS The Examiner relies upon the following as evidence in support of the rejections: Name Reference Date Brown US 2003/0103621 A1 June 5, 2003 Shaffer US 2007/0211879 A1 Sept. 13, 2007 Erhart US 2009/0041212 A1 Feb. 12, 2009 McGuffin US 2011/0210870 A1 Sept. 1, 2011 O’Malley US 2011/0276507 A1 Nov. 10, 2011 Surridge US 2015/0189088 A1 July 2, 2015 The following rejections are before us for review: 1. Claims 1-4, 7-14, 16, 18-20, 22, and 23 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter. 2. Claims 1-4, 7, 11-14, 16, 18, and 23 are rejected under 35 U.S.C. § 103 as unpatentable over Surridge, Shaffer, McGuffin, and Brown. 3. Claims 8-10, 19, and 20 are rejected under 35 U.S.C. § 103 as unpatentable over Surridge, Shaffer, McGuffin, Brown, and Erhart. 4. Claim 22 is rejected under 35 U.S.C. § 103 as unpatentable over Surridge, Shaffer, McGuffin, Brown, and O’Malley. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence2. 2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). Appeal 2021-003296 Application 14/982,364 4 ANALYSIS Rejection under 35 U.S.C. § 101 The Appellant argues that the rejection of claim 16 is improper because the claim does not set forth a judicial exception under Step 2A Prong One (Appeal Br. 5-7; Reply Br. 3-5). The Appellant also argues under Step 2A, Prong Two that the claim recites additional elements that integrate any judicial exception into a practical application (Appeal Br. 7- 14; Reply Br. 5, 6). The Appellants argue further that the rejection has failed to show that the claimed elements are well understood, routine, conventional activity (Appeal Br. 14-16; Reply Br. 6, 7). In contrast, the Examiner has determined that the rejection of record is proper (Final Action 2-8; Ans. 4-7). We agree with the Examiner. 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) Appeal 2021-003296 Application 14/982,364 5 (“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, 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, 192 (1981)); “tanning, dyeing, making waterproof 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. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or Appeal 2021-003296 Application 14/982,364 6 mathematical formula to a known structure or process may well be deserving of patent protection.”). In January 2019, 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, 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, i.e., evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (see Guidance, 84 Fed. Reg. at 54; see also 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 Guidance. 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 (citation omitted). “A claim Appeal 2021-003296 Application 14/982,364 7 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. (alterations in original) (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 Specification at paragraph 1 states that the invention generally relates to the temporal management of enqueued transactions on a communication system. Here, the Examiner has determined that the claim “recites steps for determining whether a customer is likely to abandon a call, which is a process a human being would use in a customer service environment to prevent a customer from abandoning a call” and relates to steps for managing personal behavior or interactions between people and is drawn to an abstract concept (Final Act. 6). We substantially agree with the Examiner. We determine that the claim sets forth the subject matter in italics above which sets forth: [1] “accessing… a communication with a customer”; [2] “initiating… an automated interaction portion of an interaction with the customer and an automated resource wherein the automated interaction portion is performed at a first pace and, once completed, the communication is enqueued for interaction with an agent and wherein the interaction comprises a text interaction”; [3] “determining… an estimated wait time (EWT) for the customer to interact with the agent”; [4] “accessing… a likely abandonment time”; [5] “upon determining the EWT is greater than the likely abandonment time, executing a delay strategy to cause the automated interaction portion to be performed at a second pace to consume at least an additional portion of the EWT over the automated interaction portion when performed at the first pace”; [6] “wherein the delay Appeal 2021-003296 Application 14/982,364 8 strategy comprises a delay in acknowledging an input to the text interaction provided by the customer and further comprising receiving a text character input as a portion of the text interaction by echoing back the text character input to the customer communication device”; and [7] “upon the agent becoming available, connecting the customer communication device to an agent communication device associated with the agent”; which sets forth a determining that if the estimated wait time for a customer is greater than a likely abandonment time and executing a delay strategy to connect the customer to an agent which is a certain method of organizing human activities relating to managing relationships or transactions between people, i.e. a judicial exception. A method, like the claimed method, “a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing it, and displaying results from certain results of the collection and analysis was held to be an abstract idea. We next determine whether the claim recites additional elements in the claim to integrate the judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 54-55. The Revised Guidance references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.04(d) and 2106.05(a)-(c) and (e)-(h). Here, the claim does not improve computer functionality, improve another field of technology, utilize a particular machine, or effect a particular physical transformation. Rather, we determine that nothing in the Appeal 2021-003296 Application 14/982,364 9 claim imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort to monopolize the judicial exception. For example, in the claim, the additional elements beyond the abstract idea are the recited “processor”, “communication device”, and “communication network.” The claimed limitations of “accessing”, “initiating”, “determining”, “executing”, “receiving” and “connecting” as recited in the claim “do not purport to improve the functioning of the computer itself,” do not improve the technology of the technical field, and do not require a “particular machine.” Rather, they are performed using generic computer components. See, e.g., Spec., paragraph 66. Further, the claim as a whole fails to effect any particular transformation of an article to a different state. The recited steps in the claim fail to provide meaningful limitations to limit the judicial exception. In this case, the claim merely uses the claimed computer elements as a tool to perform the abstract idea. Considering the elements of the claim both individually and as “an ordered combination” the functions performed by the computer system at each step of the process are purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Revised Guidance which references the MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.04(d) and 2106.05(a)-(c) and (e)-(h). Turning to the second step of the Alice and Mayo framework, we determine that the claim does not contain an inventive concept sufficient to “transform” the abstract nature of the claim into a patent-eligible application. Appeal 2021-003296 Application 14/982,364 10 Considering the claim both individually and as an ordered combination fails to add subject matter beyond the judicial exception that is not well- understood, routine, and conventional in the field. Rather the claim uses well-understood, routine, and conventional activities previously known in the art and they are recited at a high level of generality. The Specification at paragraph 66 for example describes using conventional computer components such as general-purpose processers, CD-ROM’s, and flash memory, in a conventional manner. The claim specifically includes recitations for computers to implement the method but these computer components are all used in a manner that is well-understood, routine, and conventional in the field. Here, the claimed generic computer components which are used to implement the claimed method are well understood, routine, or conventional in the field. As noted, the Specification at paragraph 66 discloses that the method can be implemented with general- purpose computers. Here, the claim has not been shown to be “significantly more” than the abstract idea. For these above reasons the rejection of claim 16 is sustained. The Appellant has presented the same arguments for the remaining claims which are drawn to similar subject matter and the rejection of these claims is sustained for the same reasons given above. Rejection under 35 U.S.C. § 103 The Appellant argues that the rejection of claim 1 is improper because the prior art fails to disclose the claim limitation for “further comprising receiving a text character input as a portion of the text interaction by echoing Appeal 2021-003296 Application 14/982,364 11 back the text character input to the customer communication device” (Appeal Br. 17). In contrast, the Examiner has determined that the cited claim limitation is disclosed by Brown at paras. 39, 47, and 50 (Ans. 8). We agree with the Appellant. The Appellant has argued that the cited prior art fails to disclose the method “further comprising receiving a text character input as a portion of the text interaction by echoing back the text character input to the customer communication device”. The citations to Brown at paras. 39, 47, and 50 fail to disclose this argued limitation. For example, Brown at paragraph 39 discloses collecting information by detecting and interpreting dual tone multifrequency signals entered by a caller, but it does not specifically disclose receiving a text character input and echoing back the text character input to the customer communication device in the manner claimed. Accordingly, the rejection of independent claim 1 and its dependent claims under is 35 U.S.C. § 103 as unpatentable over Surridge, Shaffer, McGuffin, and Brown not sustained. Independent claims 11 and 16 contain a similar limitation to that discussed above and the rejection of these claims relies on the same portions of Brown at paras. 39, 47, and 50 to disclose the argued claim limitation (Ans. 8). Because Brown at these portions fail to disclose the argued claim limitation as noted above, the rejection of these claims and their dependent claims is not sustained. For the remaining dependent claims, the additional references of Erhart and O’Malley fail to cure the deficiency in the base rejection and rejection of these claims is not sustained. Appeal 2021-003296 Application 14/982,364 12 CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1-4, 7-14, 16, 18-20, 22, and 23 under 35 U.S.C. § 101 as being directed to non-statutory subject matter. We conclude that Appellant has shown that the Examiner erred in rejecting claims 1-4, 7, 11-14, 16, 18, and 23 under 35 U.S.C. § 103 as unpatentable over Surridge, Shaffer, McGuffin, and Brown. We conclude that Appellant has shown that the Examiner erred in rejecting claims 8-10, 19, and 20 under 35 U.S.C. § 103 as unpatentable over Surridge, Shaffer, McGuffin, Brown, and Erhart. We conclude that Appellant has shown that the Examiner erred in rejecting claim 22 under 35 U.S.C. § 103 as unpatentable over Surridge, Shaffer, McGuffin, Brown, and O’Malley. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-4, 7-14, 16, 18-20, 22, 23 101 Eligibility 1-4, 7-14, 16, 18-20, 22, 23 1-4, 7, 11- 14, 16, 18, 23 103 Surridge, Shaffer, McGuffin, Brown 1-4, 7, 11- 14, 16, 18, 23 8-10, 19, 20 103 Surridge, Shaffer, McGuffin, Brown, and Erhart 8-10, 19, 20 22 103 Surridge, Shaffer, McGuffin, Brown, O’Malley 22 Appeal 2021-003296 Application 14/982,364 13 Overall Outcome 1-4, 7-14, 16, 18-20, 22, 23 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