Ex Parte Cloran

Patent Trial and Appeal Board

Aug 3, 2018

14136003 (P.T.A.B. Aug. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/136,003 12/20/2013
758 7590 08/07/2018
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Michael Eric Cloran
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
28151-25248/US 7065
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/07/2018 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):
PTOC@Fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL ERIC CLORAN
Appeal 2016-006704
Application 14/136,003
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
NINA L. MEDLOCK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Michael Eric Cloran (Appellant) seeks review under 35 U.S.C. § 134 of
a non-final rejection of claims 1-12, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed December 14, 2015) and Reply Brief ("Reply Br.," filed June 21,
2016), and the Examiner's Answer ("Ans.," mailed April 22, 2016), and
Non-Final Action ("Non-Final Act.," mailed April 17, 2015).
Appeal 2016-006704
Application 14/136,003
The Appellant invented an interactive response communications system
that uses human interpretation of customer intent as input to a workflow on a
computer. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method for operating an interactive
response system comprising:
[ 1] receiving audio from a person;
[2] processing the audio via an automated subsystem;
[3] determining a portion of the audio to provide to a human
analyst;
[ 4] responsive to the determination, providing the determined
portion of the audio to the human analyst,
said processing, determining, and providing causing a
response delay;
and
[ 5] selectively accelerating a rate of presentation of the
determined portion of the audio to the human analyst
to compensate for the response delay.
The Examiner relies upon the following prior art:
Henja US 2002/0013949 Al
Bahl US 6,377,921 B 1
Shpiro US 2002/0086269 Al
Ehrlich US 6,442,269 B 1
Chan US 6,470,077 B 1
2
Jan. 31, 2002
Apr. 23, 2002
July 4, 2002
Aug. 27, 2002
Oct. 22, 2002
Appeal 2016-006704
Application 14/136,003
Claims 1-12 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1, 3, 5, 7, 9 and 11 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chan, Ehrlich, and Henja.
Claims 2, 4, 6, and 8 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chan, Ehrlich, Henja, and Shpiro.
Claims 10 and 12 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chan, Ehrlich, Henja, and Bahl.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of obviousness tum primarily on whether the art describes the
claim limitations.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Facts Related to the Prior Art
Chan
01. Chan is directed to call handling systems for use in call centers.
Chan 1:7-9.
02. Chan stores audible signals received during a call (e.g., a called
party's voice samples) while a call classifier processes such
audible signals. If the call classifier determines that a live party
has been reached, control of the call is switched to an agent and
the stored voice samples are played to the agent at an accelerated
rate, so that information provided by the called party during the
call classification process is provided to the agent. Chan 1 : 60-
2: 3.
03. A call processing unit manages placement and processing of
calls and the recording of responses within the call center. When
the call processing unit determines that a call needs to be placed to
a predetermined party, it dials a telephone number associated with
the party to establish a communications connection with the party.
At the same time, or slightly thereafter, the call processing unit
assigns a call classifier from the call classifier pool to the call for
use in classifying audible signals received from the called party
location during the call. The call classifier detects when the call
has been answered and then waits for audible signals from the
called party location. When audible signals are detected, the call
classifier processes the signals to determine whether the signals
have originated from a live party or from a machine, such as an
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Application 14/136,003
automated telephone answering machine. When the call classifier
has completed processing of the audible signals, it delivers the
results of the processing to the call processing unit. If the call
classifier indicates that the call was answered by a live party, the
call processing unit immediately patches a waiting agent from the
agent pool into the connection to handle the call. Chan 2:35---60.
04. The processing performed by the call classifier includes some
inherent processing delay to ensure accurate call classification.
Thus, after the call classifier has received audible signals from the
called party location, there is typically a period of time before the
call processing unit knows whether a live party has answered. If
no measures were taken to store the audible signals used to
classify the call, the information included in the audible signals
would be lost and the agent from the agent pool would not have
the benefit of such information. Therefore, in accordance with the
present invention, the call processing unit forwards the audible
signals to the recording/playback unit as the call classifier is
making its determination. If the call classifier indicates that a live
party has answered the call, the call processing unit signals the
recording/message playback unit to playback the recorded audible
signals to the agent. Subsequently, the call processing unit
connects the agent to the call. Chan 2:61-3:11.
05. The process of recording and playing back voice samples at an
accelerated rate may continue even after the call classification
process. Preferably, the voice samples are placed in a queue in the
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recording/playback unit. The voice samples would continue to be
recorded and played back at an accelerated rate until no further
voice samples remained in the queue. In other words, the agent
would be switched over to realtime speech of the called party after
the recording/message playback unit has allowed the agent to
"catch up" with the called party. Chan 3:31--40.
Ehrlich
06. Ehrlich is directed to tracking and storing information about
individual transactions for report generation. Ehrlich 1 :7-11.
07. A "call" is typically defined in a limited way that prevents
complete records about a call from being collected. For example,
in the case of a call that is transferred at least once after being
initially received by the system, the call is typically defined as
occurring between connection and disconnection, or hang up.
Henja
This definition is not very accurate or useful, because the call may
have included several segments during which different resources
were connected, and involved several different agents and several
different periods during which a calling customer was required to
"hold." It would be extremely useful to be able to identify each
segment of a call and what happened during each segment in order
to in order to better analyze customer needs and agent
performance. Ehrlich 2:45---60.
08. Henja is directed to multi-media broadcast and presentation of
broadcast multi-media. Henja para. 1.
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Application 14/136,003
ANALYSIS
Claims 1-12 rejected under 35 US.C. § 101 as directed to non-statutory
subject matter
Method claim 1 recites receiving, processing, and determining a portion
of audio data, providing that portion of data, which causes a delay, and
changing the rate of data presentation to compensate for the delay. Thus,
claim 1 recites receiving, processing, analyzing, modifying, and transmitting
data. None of the limitations recites implementation details for any of these
steps, but instead recite functional results to be achieved by any and all
possible means. Data reception, processing, analysis, modification, and
transmission are all generic, conventional data processing operations to the
point they are themselves concepts awaiting implementation details. The
sequence of data reception-processing-analysis-modification-transmission is
equally generic and conventional. The ordering of the steps is therefore
ordinary and conventional. The remaining claims merely describe process
parameters, with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an "'inventive concept"'-i.e., an
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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 Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner determines the
claims to be directed to compensating for a delay by accelerating audio
presentation, which is a method of organizing human activity and an abstract
idea. Final Act. 3.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 recites that it is a method for operating an
interactive response system. The steps in claim 1 result in adjusting a
presentation rate absent any technological mechanism other than a
conventional computer for doing so. The Specification at paragraph 2
recites that the invention relates to an interactive response communications
system that uses human interpretation of customer intent as input to a
workflow on a computer. Thus, all this evidence shows that claim 1 is
directed to using human interpretation of data to adjust the rate of a
presentation, i.e., modifying a presentation. This is consistent with the
Examiner's determination.
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It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. The concept of modifying a presentation is a
fundamental social practice long prevalent in our system of communication.
The use of modifying a presentation is also a building block of ingenuity in
communicating ideas and concepts. Thus, modifying a presentation, like
hedging, is an "abstract idea" beyond the scope of§ 101. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of modifying a
presentation at issue here. Both are squarely within the realm of "abstract
ideas" as the Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct.
at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, processing, analysis,
modification, and transmission and does not recite an improvement to a
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particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 1 is directed to the abstract idea of
receiving, processing, analyzing, modifying, and transmitting data.
The remaining claims merely describe process parameters. We conclude
that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
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"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, processing, analyzing, modifying, and transmitting
data amounts to electronic data query and retrieval----one of the most basic
functions of a computer. The limitation of said processing, determining, and
providing causing a response delay is not a step, but a recitation of an
inherent characteristic of data processing, viz. a delay. All of these computer
functions are well-understood, routine, conventional activities previously
known to the industry. See Elec. Power Grp. v. Alstom S.A., supra. See also
In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP America Inc. v. InvestPic LLC, 890 F.3d 1016,
1022 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-processing-
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analysis-modification-transmission is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F .3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission); Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is, therefore, ordinary and conventional.
Viewed as a whole, Appellant's method claims simply recite the concept
of modifying a presentation as performed by a generic computer. To be
sure, the claims recite doing so by advising one to modify the rate to
compensate for an inherent delay. But this is no more than abstract
conceptual advice on the parameters for such modifying a presentation and
the generic computer processes necessary to process those parameters, and
does not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 18 pages of Specification spell
out different generic equipment2 and parameters that might be applied using
this concept and the particular steps such conventional processing would
2 The Specification describes using a general purpose computer. Spec.
para. 54.
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entail based on the concept of modifying a presentation under different
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of modifying
a presentation using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellant's argument that the rejection "does
not identify how the present claims are similar to the methods of organizing
human activity identified by the courts as abstract ideas." Appeal Br. 7. As
we determine supra, the claims are directed to no more than receiving,
processing, analyzing, modifying, and transmitting data absent any
technological implementation details. This was found to be an abstract idea
in Electric Power, supra. Also, accelerating a presentation as such is no
more than abstract conceptual advice to do something by any and all
possible means without reciting how to do so.
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We are not persuaded by Appellant's argument that "[a]ccelerating audio
presentation is therefore not merely an abstract idea being performed by a
computer, but rather is inextricable from a computing environment" (Appeal
Br. 8) for similar reasons. Again, reciting a functional result without any
technological means for doing so is abstract conceptual advice.
At that level of generality, the claims do no more than
describe a desired function or outcome, without providing any
limiting detail that confines the claim to a particular solution
to an identified problem. The purely functional nature of the
claim confirms that it is directed to an abstract idea, not to a
concrete embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269
(Fed. Cir. 2016).
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Appeal Br. 8-9. In DDR Holdings, the
court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The court cautioned,
however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings
the Court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258-59 (citing
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Ultramercial, 772 F.3d at 715-16). As noted there, the Ultramercial
claims were "' directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before."' Id. at 1258 (quoting Ultramercial, 772 F.3d at 715-
16). Nevertheless, those claims were patent ineligible because they
"merely recite[d] the abstract idea of 'offering media content in exchange
for viewing an advertisement,' along with 'routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet."' Id.
Appellant's asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website"; "restricting general public access to said
media product"; "receiving from the consumer a request to view [a]
sponsor message"; and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellant's asserted claims recite
receiving, analyzing, modifying, and transmitting data. This is precisely
the type of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellant's argument that "the need to
selectively accelerate the audio is created precisely because of the delay
caused by distributing the audio over a computer network and processing the
audio by computer systems." Reply Br. 6. The delay caused by transmitting
information predates computers in the forms of radio and television
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transmission, and even mail and oral presentation before that. The solution
to use accelerating techniques to overcome such delays is as old as the use of
shorthand.
Claims 1, 3, 5, 7, 9 and 11 rejected under 35 US.C. § 103(a) as
unpatentable over Chan, Ehrlich, and Henja
Chan describes a call handling system that receives audio over a phone
and processes it via a call classifier. A portion of the audio data is entered
into a queue. The amount of data in the queue is the amount determined to
be provided to the agent, and when the queue is empty, the call is switched
over to live play. The audio data in the queue is accelerated to compensate
for the delay caused by the classifier processing. FF 01---05. Although
Chan's agent receives all the audio data, he receives it in two portions, one
of which is sized by the data in a queue and accelerated in transmission. The
remainder is directly fed to the agent. The claim does not preclude the agent
receiving all the data, but only requires that some portion be determined and
accelerated.
The Examiner applies Ehrlich for the background use of the concept of
call segments and Henja for an additional example of providing data to a
person. Thus, Chan anticipates claim 1. "Anticipation is the epitome of
obviousness." Structural Rubber Products Co. v Park Rubber Co., 749 F.2d
707, 716 (Fed. Cir. 1984).
We are persuaded by Appellant's argument that the art fails to describe
claim 9 not providing a portion to the analyst. Appeal Br. 13. The
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Examiner presents no separate determinations as to claim 9. The remaining
claims are not argued separately.
Claims 2, 4, 6, and 8 rejected under 35 USC§ 103(a) as unpatentable over
Chan, Ehrlich, Henja, and Shpiro
These claims are not separately argued.
Claims 10 and 12 rejected under 35 USC§ 103(a) as unpatentable over
Chan, Ehrlich, Henja, and Bahl
These claims are not separately argued.
CONCLUSIONS OF LAW
The rejection of claims 1-12 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1, 3, 5, 7, and 11 under 35 U.S.C. § 103(a) as
unpatentable over Chan, Ehrlich, and Henja is proper.
The rejection of claim 9 under 35 U.S.C. § 103(a) as unpatentable over
Chan, Ehrlich, and Henja is improper.
The rejection of claims 2, 4, 6, and 8 under 35 U.S.C. § 103(a) as
unpatentable over Chan, Ehrlich, Henja, and Shpiro is proper.
The rejection of claims 10 and 12 under 35 U.S.C. § 103(a) as
unpatentable over Chan, Ehrlich, Henja, and Bahl is proper.
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DECISION
The rejection of claims 1-12 is affirmed.
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)(l)(iv) (2011).
AFFIRMED
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