Chinnappa, Shanmugam

Patent Trials and Appeals Board

Mar 23, 2020

13554357 - (D) (P.T.A.B. Mar. 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.
13/554,357 07/20/2012 Shanmugam Chinnappa 11290.0012-00000 2804
22852 7590 03/23/2020
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
03/23/2020 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SHANMUGAM CHINNAPPA
__________

Appeal 2019-002359
Application 13/554,357
Technology Center 3600
__________

Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

Opinion for the Board filed by Administrative Patent Judge PRATS.

Opinion Concurring filed by Administrative Patent Judge TOWNSEND.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–3, 5–13, and 15–20. 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 states that “AMDOCS DEVELOPMENT
LIMITED is the real party in interest.” Appeal Br. 1.
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STATEMENT OF THE CASE
The Specification explains that, “[c]ompanies commonly employ
customer service representatives (CSRs) to speak with, and resolve issues or
problems for, customers. Customer Relationship Management (CRM)
software has been developed that assists CSRs when attempting to resolve
issues for customers.” Spec. ¶ 2.
The Specification explains that CRM software can have deficiencies,
however, because the software can depend heavily on a representative’s
capacity “to determine a problem underlying a customer’s call. Thus, an
inexperienced CSR may not be able to efficiently resolve a customer’s
problem. Similarly, an experienced CSR may not be able to efficiently
resolve a customer’s problem when the problem is uncommon or complex.”
Id.
To address these deficiencies, “[v]arious embodiments for performing
automated issue resolution are disclosed. Issue resolution begins when a
user transmits a communication to a CSR regarding a symptom of an
underlying issue or problem that s/he is experiencing.” Id. ¶ 16.
The Specification explains that a “symptom of the underlying problem
may be, for example, an inability to access the Internet with a certain device.
The CSR may then perform operations in an attempt to resolve the user’s
problem. Some or all of the operations may be recorded.” Id. User devices
that may be serviced according to Appellant’s invention include electronic
devices such as computers and mobile phones. Id. ¶ 18.
The Specification explains that if the customer service representative
(CSR) is able to resolve the user’s problem, the problem-resolving
operations “may be compared to a model to identify the problem and/or
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symptoms associated with the problem. After waiting for a predetermined
time, the process may determine whether symptoms of the previously
identified problem are present and, if so, attempts to resolve the problem.”
Id. ¶ 16.
Appellant’s claim 1 is representative of the subject matter on appeal,
and reads as follows:
1. A computer-implemented method for monitoring and
resolving problems with user devices, comprising the following
operations performed by one or more processors:
storing an identified problem associated with a first
symptom of a first problem with a user device,
wherein the identified problem corresponds to a
particular problem from a set of possible problems,
the particular problem selected by:
recording on a second device, a first set of
operations intended to resolve the first
problem, and
comparing the recorded first set of
operations to a model, wherein the
model comprises a mapping between
a set of possible operations and the set
of possible problems with known
resolutions;
determining the identified problem is a recurring
problem;
establishing, based on the identified problem being a
recurring problem, a monitoring schedule;
receiving data from the user device according to the
monitoring schedule;
automatically monitoring the received data from a
computer system associated with the user device
for a second symptom of the identified problem;

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automatically determining that the second symptom of
the identified problem is present in the monitored
data;
providing a signal to the user device to perform the first
set of operations to resolve the identified problem
based on the determination that the second
symptom of the identified problem is present in the
monitored data, wherein performing the first set of
operations resolves the identified problem;
determining the identified problem is associated with a
device type associated with the user device;
receiving data from a set of other devices for the second
symptom of the identified problem, wherein the set
of other devices is based on the device type
associated with the user device;
automatically monitoring the received data from the set
of other devices for the second symptom of the
identified problem; and
automatically providing a signal to a device in the set of
other devices to perform the first set of operations
to resolve the identified problem.
Appeal Br., Claims App’x.
The following rejections are before us for review:
(1) Claims 1–3, 5–13, and 15–20, under 35 U.S.C. § 101, as being
directed to subject matter not eligible for patenting (Ans. 3–7); and
(2) Claims 1–3, 5–13, and 15–20 under 35 U.S.C. § 112(a) or pre-AIA
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement (Ans. 7–10).
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35 U.S.C. § 101—
ELIGIBILITY FOR PATENTING
The Examiner’s Rejection
The Examiner determined that representative claim 1’s process of
storing a problem selected by comparison to a model, “monitoring data and
determining a second symptom[,] and providing instruction to perform a first
set of operations on a user device that resolves the problem is considered to
be an abstract idea . . . itself because [it] can be performed mentally or is
analogous to human me[n]tal work.” Ans. 4.
The Examiner determined also that “fixing problems in user devices is
a known business concept . . . that has traditionally been performed
manually in the customer service field and is similar to certain methods of
human activity that have been identified as abstract, e.g., concepts relating to
sales activities or transactions.” Id. at 5 (citing Spec. ¶¶ 1–4).
The Examiner determined that, beyond the abstract ideas, the features
of representative claim 1, when considered separately and as a whole, did
not include additional elements sufficient to ensure that the claimed process
amounted to significantly more than the judicial exception. Id. at 5–6. In
particular, the Examiner determined that claim 1’s processor and user
devices were “recited at a high level of generality and are described as
general purpose devices.” Id. at 5 (citing Spec. ¶¶ 17–19). The Examiner
determined further that claim 1’s steps of storing and receiving data are
functions that have been identified in case law as well-understood, routine,
and conventional computer functions, “or as insignificant extra-solution
activity.” Id. at 6.
Therefore, the Examiner concluded:
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[T]aken alone, the additional elements do not amount to
significantly more than the abstract idea. Looking at the
limitations as an ordered combination adds nothing that is not
already present when looking at the elements taken
individually. There is no indication that the combination of
elements improves the functioning of a computer or improves
any other technology.
Id.
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit
exceptions, however: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. 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
Collaborative Services v. Prometheus Laboratories., Inc., 566 U.S. 66
(2012) and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). 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.”).
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 v. Kappos, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
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594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63,
69 (1972)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
Early in 2019, the PTO published revised guidance on the application
of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“Memorandum” or “2019 Office
Guidance” or “Office Guidance”).2 In light of comments received in
response to the Office Guidance, the PTO subsequently issued the October
2019 Patent Eligibility Guidance Update (“October 2019 Update”).3
Following the Office Guidance and the October 2019 Update, under
Revised Step 2A, we first look to whether the claim recites the following:
(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 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, under Step 2B of the
Office Guidance, to whether the claim:

2 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf.
3 https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf.
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(3) adds specific limitations beyond the judicial exception that
are 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 Memorandum.
Analysis
Office Guidance—Revised Step 2A, Prong 1
Appellant’s claim 1 is representative of the claims subject to this
rejection. Applying Revised Step 2A, Prong 1, of the 2019 Office Guidance,
we agree with the Examiner that Appellant’s claim 1 recites judicial
exceptions, in the form of abstract ideas.
Claim 1 recites “[a] computer-implemented method for monitoring
and resolving problems with user devices.” Appeal Br., Claims App’x. The
process includes the step of “providing a signal to [a first] user device to
perform [a] first set of operations to resolve [an] identified problem” and the
later subsequent step of “providing a signal to a device in [a] set of other
devices to perform the first set of operations to resolve the identified
problem.” See id. Claim 1 thus recites a process in which a problem in a
first user device is resolved, and then the same problem is resolved in a
second user device, where the second user device is the same type of device
as the first. See id.
As the Examiner noted, Appellant’s Specification explains that
solving problems in user devices is a common business practice. See Spec.
¶ 2 (“Companies commonly employ customer service representatives
(CSRs) to speak with, and resolve issues or problems for, customers.”).
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And, as also explained in Appellant’s Specification, the processes of
Appellant’s invention automate that common business practice. See id. ¶ 16
(“Various embodiments for performing automated issue resolution are
disclosed.”).
Thus, when read in context with Appellant’s Specification,
Appellant’s claim 1 recites a process that automates the common business
practice of solving problems in user devices, that is, devices used by
customers. Read in context with the Specification, therefore, Appellant’s
claim recites a process of commercial interaction between a vendor and a
customer, which is considered a method of organizing human activity, and
ultimately an abstract idea. See Office Guidance (84 Fed. Reg. at 52
(abstract ideas include “(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including hedging, insurance,
mitigating risk); commercial . . . interactions (including agreements in the
form of contracts; legal obligations; advertising, marketing or sales activities
or behaviors; business relations”) (emphasis added))).
The fact that claim 1 recites performing a number of steps to
accomplish the ultimate customer problem-solving result does not persuade
us that, by characterizing the claimed process as problem solving, the
Examiner overgeneralized the claimed process, in the context of this
application. See Appeal Br. 13; Reply Br. 3. Indeed, we agree with the
Examiner that, beyond claim 1’s abstract business relational processes of
providing problem-solving operations to customer/user devices, claim 1
recites only mental processes, which constitute abstract ideas. See Office
Guidance (84 Fed. Reg. at 52 (abstract ideas include “(c) Mental
processes”)).
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As an initial matter, we note that claim 1 expressly recites that the
claimed operations are performed by one or more processors, as Appellant
contends. See Appeal Br. 12–13, 15–16, Claims App’x; Reply Br. 2–3. As
explained in the Office Guidance, however, “[i]f a claim, under its broadest
reasonable interpretation, covers performance in the mind but for the
recitation of generic computer components, then it is still in the mental
processes category unless the claim cannot practically be performed in the
mind.” 84 Fed. Reg. at 52, n.14.
In the first set of steps recited in claim 1, a problem is selected by
comparing (“mapping”) a recorded set of operations to a model, and then
stored. Appeal Br., Claims App’x. Because comparing and
recording/storing information (i.e., memorization) can be performed in the
human mind, we agree with the Examiner that, but for the generic computer
components recited in claim 1, the initial step of storing a problem identified
by a comparison step involves mental processes, which are abstract ideas.
See Office Guidance (84 Fed. Reg. at 52 (abstract ideas include “(c) Mental
processes—concepts performed in the human mind (including an
observation, evaluation, judgment, opinion”) (citations omitted))).
Similarly, the next set of steps in claim 1, which provide the criteria
for deciding whether to send a signal to perform problem-solving operations
in the first-recited user device, all may be performed in the human mind, but
for the generic processors recited in the claim. Specifically, claim 1’s steps
of determining that the identified problem is a recurring problem in the user
device, establishing a monitoring schedule for the device, receiving data
from the device according to the schedule, monitoring the received data for a
second symptom of the identified problem, and determining that the second
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symptom of the identified problem is present in the monitored data, all
involve observation, evaluation, and judgment, and therefore are mental
processes constituting abstract ideas. See Office Guidance (84 Fed. Reg. at
52). Indeed, the decision whether to provide the signal to perform the
problem-solving operations to the first-recited user device is conditioned on
a mental process: “the determination that the second symptom of the
identified problem is present in the monitored data.” Appeal Br., Claims
App’x.
The final set of steps recited in claim 1 are directed to the abstract
mental decisional processes involved in determining whether to send a
signal to a second user device to perform the problem-resolving operations.
Specifically, the steps of determining that the identified problem is
associated with a particular type of device, receiving data from other devices
of that type for the second symptom of the identified problem, and
monitoring the received data for the second symptom of the identified
problem all involve observation, evaluation, and judgment, and therefore are
mental processes constituting abstract ideas. See Office Guidance (84 Fed.
Reg. at 52).
In sum, viewed as a whole, Appellant’s claim 1 recites a process in
which a recurring problem is identified in a first-recited user device, the
problem in the first user device is then resolved by signaling the device to
perform problem-resolving operations, and then, after determining that the
problem is associated with a certain type of device, a signal is sent to other
devices of the same type to also perform the problem-resolving operations.
As discussed above, when read in context with the Specification, claim 1’s
overall problem-resolving process is a process of commercial interaction
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between a vendor and a customer, which is considered a method of
organizing human activity, and ultimately an abstract idea.
As also discussed above, but for the generic recitation of using
processors, the individual steps recited in claim 1 all involve the mental
processes employed in deciding whether to signal the user devices to
perform the problem-resolving operations. Accordingly, viewed as a whole
or as an individual series of steps, we agree with the Examiner that
Appellant’s claim 1 recites judicial exceptions in the form of abstract ideas.
Office Guidance—Revised Step 2A, Prong 2
Having determined that Appellant’s claim 1 recites judicial exceptions
in the form of abstract ideas under Revised Step 2A, Prong 1, of the 2019
Office Guidance, we turn to Revised Step 2A, Prong 2, of the Office
Guidance to determine whether claim 1 recites additional elements that
integrate the judicial exceptions into a practical application. See Office
Guidance (84 Fed. Reg. at 54–55).
We find that Appellant’s claim 1 does not recite additional elements
sufficient to integrate the judicial exceptions into a practical application. As
discussed above, claim 1’s overall process is directed to the abstract business
relational idea of resolving problems in user/customer devices, and the
individual steps all involve abstract mental processes that are performed to
accomplish the problem resolutions.
We again acknowledge claim 1’s express recitation that the individual
steps are performed by one or more processors. See Appeal Br. 16–18;
Reply Br. 6–7. We also acknowledge Appellant’s contention that the
claimed process improves the function of devices, including computers, by
fixing problems in the devices. See Appeal Br. 15–17; Reply Br. 3–4.
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However, because claim 1 does not recite any particular structure or
algorithms in relation to the claimed processors, and does not limit the user
devices to any particular machine or apparatus, we are not persuaded that
claim 1 includes limitations that are sufficiently specific to integrate the
claimed process into a practical application. See Office Guidance (84 Fed.
Reg. at 55 (example in which a judicial exception is not integrated into a
practical application includes situation in which claim “merely includes
instructions to implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea”)). Accordingly, evaluating
the claimed elements individually and in combination, we are not persuaded
that claim 1 integrates any of the recited judicial exceptions into a practical
application under Revised Step 2A, Prong 2, of the 2019 Office Guidance.
Office Guidance—Step 2B
For the reasons discussed above, we are persuaded that Appellant’s
representative claim 1 recites judicial exceptions (abstract ideas in the form
of methods of organizing human activity and mental processes) under
Revised Step 2A, Prong 1, of the 2019 Office Guidance, and does not
integrate those judicial exceptions into a practical application under Revised
Step 2A, Prong 2. Accordingly, we turn to Step 2B of the Office Guidance
to determine whether (a) claim 1 recites specific limitations beyond the
judicial exceptions that are not well-understood, routine, or conventional in
the field, or (b) whether claim 1 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 (84 Fed.
Reg. at 56).
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In the present case, as discussed above, when the steps of
representative claim 1 are viewed as an ordered combination, the overall
claimed process, as a whole, recites an automated method of resolving
problems in user/customer devices, which is a process of commercial and
business interaction. In other words, viewed as a whole, and as an ordered
combination of steps and elements, claim 1 recites no specific additional
elements beyond the features involved in the recited method of organizing
human activity, which is an abstract idea. We are not persuaded, therefore,
that when claim 1 is viewed as a whole, claim 1 includes specific limitations
beyond the judicial exception that are not well-understood, routine, or
conventional in the field. As explained in the 2019 Office Guidance, it is the
“additional elements recited in the claims” beyond the judicial exceptions in
the claim that must provide significantly more than the recited judicial
exception. See Office Guidance (84 Fed. Reg. at 56) (emphasis added).
Viewing the steps of claim 1’s process individually, we come to the
same conclusion. As noted above, the steps employed in deciding whether
to signal the user devices to perform the problem-resolving operations all
involve mental processes. Beyond those abstract ideas, the only tangible
elements recited in claim 1 are the user devices to which the problem-
resolving operations are provided, and the generically recited processors.
See Appeal Br., Claims App’x.
As noted above, claim 1 does not recite any particular structure or
algorithms in relation to the claimed processors, and does not limit the user
devices to any particular machine or apparatus. We are not persuaded,
therefore, that beyond the recited judicial exceptions, claim 1 adds specific
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limitations that amount to significantly more than the recited judicial
exceptions.
As the Examiner contends, moreover, Appellant’s Specification
discloses that a user device may be a computer (Spec. ¶ 18), and that
computer components including processes are “well-known in the art” (id. ¶
17). Appellant does not persuade us, therefore, that the Examiner failed to
advance evidence sufficient to support a finding that the non-abstract
elements of Appellant’s claim 1 are well-understood, routine, and
conventional activities previously known to the industry, specified at a high
level of generality. See Appeal Br. 19–20 (citing Berkheimer v. HP Inc.,
881 F.3d 1360 (Fed. Cir. 2018)).
In sum, for the reasons discussed, viewing Appellant’s claim 1 as a
whole, as an ordered combination, and considering the claimed steps and
elements individually, we find that the preponderance of the evidence
supports the Examiner’s determination that claim 1 simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exceptions
recited in the claim.
Eligibility for Patenting—Conclusion
As discussed above, we are persuaded that Appellant’s representative
claim 1 recites judicial exceptions (abstract ideas in the form of methods of
organizing human activity and mental processes) under Revised Step 2A,
Prong 1, of the 2019 Office Guidance, and does not integrate those judicial
exceptions into a practical application under Revised Step 2A, Prong 2. As
also discussed above, we are persuaded that, to the extent claim 1 recites
additional elements beyond the judicial exceptions recited in the claim,
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claim 1 simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exceptions.
Accordingly, applying the principles set forth in the 2019 Office
Guidance, we find that the preponderance of the evidence supports the
Examiner’s determination that Appellant’s claim 1 is directed to subject
matter that is ineligible for patenting. We, therefore, affirm the Examiner’s
rejection of claim 1 as being ineligible for patenting. Claim 2, 3, 5–13, and
15–20 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
WRITTEN DESCRIPTION
The Examiner’s Rejection
The Examiner rejected claims 1–3, 5–13, and 15–20, for failure to
comply with the written description requirement. Ans. 7–10. The Examiner
determined, essentially, that Appellant’s Specification does not demonstrate
possession of claim 1’s step of “automatically providing a signal to a device
in the set of other devices to perform the second set of operations to resolve
the identified problem.” Id. at 7.
Although the Examiner conceded, apparently, that paragraphs 25 and
26 of the Specification provide literal support for automatically signaling a
device to perform problem-resolving operations, the Examiner determined
that paragraphs 25 and 26 “do not seem to show how the ‘automatically [sic]
problem is automatically resolved’ for a device after determining the second
symptom occurs [in] a device from the set of the device but merely indicate
‘the problem may be resolved automatically.’” Id. at 8–9. In particular, the
Examiner reasoned that:
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There no indication what instructions or what algorithm is
performed in order to is send to the device to perform the
operation to resolve the identified problem. Considering with
the variety of the problems and when the system determines
particular problem to resolve, what instruction is automatically
being provided to the device based on the identified problem?
In the other words, the specification does not describe the
claimed invention in such full, clear, concise, and exact terms
that a skilled artisan would recognize applicant was in
possession of the claimed invention.
Id. at 9.
Analysis
We reverse the Examiner’s rejection for lack of written description.
As we understand it, the Examiner’s position is not that claim 1 lacks literal
support for the step of automatically signaling a device to perform problem-
resolving operations. Rather, the Examiner determines that the Specification
does not disclose the specific operations that are performed to resolve the
problem. See Ans. 8–9, 19–20.
Our reviewing court has explained, however, that:
A claim will not be invalidated on section 112 grounds
simply because the embodiments of the specification do not
contain examples explicitly covering the full scope of the claim
language. That is because the patent specification is written for
a person of skill in the art, and such a person comes to the
patent with the knowledge of what has come before. Placed in
that context, it is unnecessary to spell out every detail of the
invention in the specification; only enough must be included to
convince a person of skill in the art that the inventor possessed
the invention and to enable such a person to make and use the
invention without undue experimentation.
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Falko-Gunter Falkner v. Inglis, 448 F.3d 1357, 1366 (Fed. Cir. 2006)
(quoting LizardTech, Inc. v. Earth Resource Mapping, Inc., 424 F.3d 1336,
1345 (Fed. Cir. 2005)).
In the present case, as discussed above, Appellant’s Specification
explains (and the Examiner does not dispute) that resolving problems in user
devices is a common business practice. See Spec. ¶ 2 (“Companies
commonly employ customer service representatives (CSRs) to speak with,
and resolve issues or problems for, customers.”). Because resolving
problems in user devices is a common business practice we find that, on the
current record, a skilled artisan would understand what operations may be
performed to resolve problems in user devices, and that the details of those
operations therefore need not be spelled out in Appellant’s Specification.
Indeed, reading the Specification as a whole, it is evident that
Appellant’s invention is not directed to the actual problem-resolving
operations. Rather, Appellant’s invention is directed to automated methods
of signaling user devices to perform the problem-resolving operations. See
Spec. ¶ 16 (“Various embodiments for performing automated issue
resolution are disclosed.”). Accordingly, when read in the context of the
actual application, we are not persuaded that the Examiner has shown that
Appellant failed to possess the claimed invention, or that the Specification
failed to describe the disputed limitation adequately. We, therefore, reverse
the Examiner’s rejection of claims 1–3, 5–13, and 15–20, for failure to
comply with the written description requirement.

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CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1–3, 5–13,
15–20
101 Ineligibility 1–3, 5–13,
15–20

1–3, 5–13,
15–20
112, first
paragraph
Lack of
Written
Description
1–3, 5–13, 15–
20
Overall
Outcome
1–3, 5–13,
15–20

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

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte SHANMUGAM CHINNAPPA
__________

Appeal 2019-002359
Application 13/554,357
Technology Center 3600
__________

Before ERIC B. GRIMES, FRANCISCO C. PRATS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

TOWNSEND, Administrative Patent Judge, concurring.

I agree with my colleagues’ analysis and decision to reverse the
Examiner’s written description rejection.
However, I concur with my colleagues that the Examiner’s rejection
under 35 U.S.C. § 101 should be affirmed. In my view, there are limitations
recited in the method that my colleagues refer to as “mental processes” that I
would not so categorize. Nevertheless, I agree with my colleagues and the
Examiner that claim 1 is directed to patent-ineligible subject matter. I
provide my reasoning below.

Step 2A, Prong Two
I would evaluate the two “receiving data” steps and the “providing a
signal” steps as insignificant extra-solution activity. The first receiving data
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step is effected to gather data for the purpose of analyzing that data to
determine whether to signal the user device to perform resolution of the
identified problem. Similarly the second receiving data step is effected to
gather data for the purpose of analyzing that data to determine whether to
signal other devices of the same device type as the user device to perform
resolution of the identified problem on those other devices. These receiving
steps do not integrate a judicial exception into a practical application, but
rather are mere data gathering steps that are necessary for use of the mental
processes of monitoring for a symptom in the device data being collected.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50, 55 n.31 (January 7, 2019) (“Guidance”) (“insignificant extra-solution
activity” includes “mere data gathering such as a step of obtaining
information about credit card transactions”); see also Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“‘data-gathering steps,’
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011), . . . add nothing of practical significance to the underlying abstract
idea.”).
The “providing a signal” steps are effected if the second symptom is
determined to be present. Although there is corrective action identified that
is to be taken from the signaling, the signaling itself does not effect any
change to any device. The signaling is thus akin to generating a report or
displaying information based on the analysis of data.
Moreover, the corrective action to be effected in both signal providing
steps is recited at a high level of generality: “perform the first set of
operations to resolve the identified problem.” The claim identifies the first
set of operations as “a first set of operations intended to resolve the first
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problem.” These signal providing limitations cover signaling so that any
steps to resolve any problem are undertaken. In other words, these steps are
no more than mere instructions to apply the judicial exception in a generic
manner. See MPEP 2106.05(f) (“The recitation of claim limitations that
attempt to cover any solution to an identified problem with no restriction on
how the result is accomplished and no description of the mechanism for
accomplishing the result, does not provide significantly more because this
type of recitation is equivalent to the words ‘apply it’.”). Thus, neither step
of “providing a signal” applies or uses the judicial exception in a manner
that imposes a meaningful limit on the judicial exception. Guidance, 84 Fed.
Reg. at 54.
The foregoing is true whether these steps are considered individually
or in combination.

Step 2B
Step 2B requires that we look to whether the claim, that we have
determined above to set forth the judicial exception of an abstract idea,
“adds a specific limitation beyond the judicial exception that [is] not ‘well-
understood, routine, conventional’ in the field.” Guidance, 84 Fed. Reg. at
56; MPEP § 2106.05(d)). In light of my position that the “receiving data”
steps and the “providing a signal” steps are not themselves mental steps,
those steps must be addressed in the Step 2B analysis.
I conclude these steps and the recited computer element (i.e., the
processor recited that performed the recited steps), whether considered
individually or in combination, do not result in claim 1 amounting to
significantly more than the recited abstract ideas. I agree with the Examiner
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that the processor is recited at a high level of generality and is recited to
perform functions of a processor that are well-understood, routine and
conventional. (Final Action 4.) Appellant’s Specification teaches that a
general purpose processor is suitable to carry out the claimed invention.
(Spec. ¶ 41; see also ¶ 17 (explaining that a central processing unit of the
computer 110 that can be used to carry out the method is “well known in the
art and will not be further discussed.”); ¶ 19 (“system 220 may include a
CSR system 260 comprising a CSR device 240 and, in some embodiments, a
communication device 250. CSR device 240 may be an electronic device,
such as, for example, computer 110.”).) The Specification further provides
that the receiving of data is accomplished in a conventional matter. (Id. ¶ 41
(“Generally, a processor will receive instructions and data from a read only
memory or a random access memory or both.”)
With respect to the “providing a signal” steps, I note that there is scant
description in the Specification as to what this entails. However, it would
appear that, generally, the signal involves the normal operation of computers
in automatically carrying out functional processing steps. (See, e.g., ¶ 37
(“all of the functional operations described in this specification can be
implemented in digital electronic circuitry”).) This is consistent with
Appellant’s response to the Examiner’s rejection of the claims under 35
U.S.C. § 112, first paragraph with respect to the “automatically providing a
signal” step. (Appeal Br. 23–25 (indicating that the Specification describes
at ¶¶ 34 and 36 that to automatically resolve a problem a signal may be sent
to “reset [a] 3G gateway configuration” and in ¶ 45 “that the system may
operate with user devices in a client-server environment, in which signals
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and data are sent between the user devices (e.g., the clients) and a backend
system (e.g., a server) to implement the claimed processes.”)
Thus, I agree with the Examiner that claim 1 does not include an
inventive concept, such that the additional elements results in a claim
directed to something significantly more that the abstract ideas.
Consequently, I agree with my colleagues and the Examiner that the claim is
directed to patent-ineligible subject matter.