Ex Parte Delinsky et al

Patent Trial and Appeal Board

Sep 18, 2018

14275094 (P.T.A.B. Sep. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/275,094 05/12/2014 William John Delinsky
28710 7590 09/19/2018
PETER K. TRZYNA, ESQ.
PO BOX 7131
CHICAGO, IL 60680
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.
Peregrin-P2- l 4 1099
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
09/19/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM JOHN DELINSKY, TIMOTHY JAMES FISH,
MICHAEL D. MORENCY, and DAVID GARY WALKER
Appeal2017-006557
Application 14/275,094 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 36-63. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Peter K. Trzyna.
(Appeal Br. 2.)
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CLAIMED SUBJECT MATTER
Appellants' "invention pertains to call referral, as in the case of a
calling debtor who is referred by the lender to a credit counseling agency,
along with automated generation of related documentation, inter-computer
communication, and networking." (Spec. ,r 3. 2) In other words, "the
invention involves, a computerized system for the management, tracking,
and reporting of referrals made from one company, individual, or entity to
another company, individual, or entity." (Id. ,r 16.)
Claims 3 6 and 62 are the independent claims on appeal. Claim 3 6 is
illustrative. It recites:
36. A method of using an apparatus processing phone call
routing, the method including:
automatically capturing, by an apparatus comprising a
programmed computer system, call data for each of a plurality of
phone calls utilizing a toll free number and routed as referrals to
a service, which engages an association of the captured phone
call data for each of the referrals with call referral information
generated by the apparatus so as to distinguish the service from
phone call referral data for a plurality of other services receiving
other referrals,
wherein, the association is used by the apparatus in
generating a digital reporting, that is communicated to the
service, which comprises the captured call data and the generated
call referral information for the referrals to the service.
2 "Spec." refers to the "Substitute Specification-Clean Version" filed
May 12, 2014.
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REJECTI0N3
Claims 36-63 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
ANALYSIS
Appellants argue claims 3 6-51 and 5 8---61 together. We select
claim 36 as representative. Claims 37-51 and 58-61 will stand or fall with
claim 36. See 37 C.F.R. § 4I.37(c)(l)(iv).
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.'" Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
3 The rejection of claims 62 and 63 under 35 U.S.C. § 112, second
paragraph, was withdrawn. (Advisory Action mailed Mar. 30, 2016.)
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idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 2357 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that the claims
are directed to the abstract idea of "electrical digital computer
machine and a data processing system, methods of making and
for using the machine, products produced thereby, as well as data
structures and articles of manufacture pertaining thereto, and all
necessary intermediates of that which is discussed herein, all in
the field of computerized aspects of card crediting to mortgages
and the like."
(Final Action 4, quoting Spec. ,r 3; see also Answer 4.) The Examiner also
determines that the claims "are directed to a method of using an apparatus
[for] processing phone call routing." (Final Action 7.)
Appellants argue that the former is not "correct because this excerpt
from the Field of Invention [in the Specification] specifies items not found
in the claims, such as 'data structures and articles of manufacture' etc."
(Reply Br. 4.) As to the latter, Appellants argue that "'using an apparatus
[for] processing phone call routing' is not an abstract idea." (Appeal
Br. 23.) Moreover, in view of the two determinations by the Examiner,
Appellants argue that "Applicant [is left] to guess ... what is the contended
abstract idea." (Appeal Br. 24.)
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
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v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the "invention
pertains to call referral." (Spec. ,r 3.) Claim 36 provides further evidence.
Claim 36 recites "[a] method of ... processing phone call routing ...
including," "capturing, by ... a programmed computer system, call data,"
the computer system "engages an association of the captured phone call data
... with call referral information generated by the" computer system,
"wherein the association is used by the [ computer system] in generating a
digital reporting, that is communicated to the service" to which the calls are
routed as referrals.
Although "[a]n abstract idea can generally be described at different
levels of abstraction," Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016), here we agree with Appellants that the Examiner's
determination that the claims "are directed to the abstract idea of 'electrical
digital computer machine and a data processing system, methods of making
and for using the machine, products produced thereby, as well as data
structures and articles of manufacture pertaining thereto ... "' (Final
Action 4), specifies items not found in the claims and does not correctly
reflect to what claim 3 6 is directed.
However, we agree with the Examiner that the claims are directed to
the abstract idea of "using an apparatus [for] processing phone call routing."
(See id. at 7.) Specifically, and in view of the above, it is clear that claim 36
is directed to collecting call data, analyzing data (to associate the collected
data with the generated call referral data), and presenting the results. "[W]e
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have treated collecting information, including when limited to particular
content (which does not change its character as information), as within the
realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353. "In a similar
vein, we have treated analyzing information by steps people go through in
their minds, or by mathematical algorithms, without more, as essentially
mental processes within the abstract-idea category." Id. at 1354. "And we
have recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more ( such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis." Id.
Moreover, here, the limitations do not recite implementation details.
Instead, they recite functional results to be achieved. In other words,
claim 36 does not recite "a particular way of programming or designing the
software ... , but instead merely claim[s] the resulting [method]." Apple,
Inc. v. Ameranth, Inc., 842 F.3d at 1241. In short, claim 36 is directed to the
abstract idea of capturing/collecting call data, associating/analyzing the call
data with other data ("call referral information"), and generating a report.
Nonetheless, Appellants seek to analogize the present claims to the
claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016). (Reply Br. 15.) Appellants argue that the present
claims "do not simply use a computer as a tool to automate a conventional
activity." (Id.) We disagree. In McRO, the court determined that
the claimed improvement here is allowing computers to produce
"accurate and realistic lip synchronization and facial expressions
in animated characters" that previously could only be produced
by human animators. As the district court correctly recognized,
this computer automation is realized by improving the prior art
through "the use of rules, rather than artists, to set the morph
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weights and transitions between phonemes." The rules are
limiting in that they define morph weight sets as a function of the
timing of phoneme sub-sequences.
McRO, 837 F.3d at 1313 (citations omitted). Here, rather than a
technological improvement, the asserted improvement is to a business
practice regarding capturing/collecting call data, associating/analyzing the
call data with other data ("call referral information"), and generating a
report. (See Claim 36.)
In view of the above, we agree with the Examiner that independent
claim 3 6 is directed to an abstract idea. 4
Step two of the Alice framework has been described "as 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, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72-73).
Appellants argue that "[t]he Examiner has not explained, nor is an
explanation apparent, as to how no more than a generic computer to perform
generic functions can handle telephone calls as claimed without significantly
more." (Appeal Br. 20, internal quotes and emphasis omitted.) Appellants
further argue that the Examiner has provided no evidence that the specific
limitations are well-understood, routine and conventional. (Id. at 30.)
4 We will analyze claims 52-57 and 62---63 under step two. See Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016) (In some "cases
involving computer-related claims, there may be close calls about how to
characterize what the claims are directed to. In such cases, an analysis of
whether there are arguably concrete improvements in the recited computer
technology could take place under step two.").
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"Thus, the Office rejects claims based on a contention of fact ... without
providing any 'substantial evidence' .... " (Id. at 37.)
The Examiner determines that "[t]he claim(s) does/do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception, because the additional elements are simply a generic
recitation of a computer and a computer network performing their generic
computer functions." (Final Action 5.) Citing paragraph 47 of Appellants'
Specification, the Examiner determines that
these are general purpose computers that perform routine and
conventional activities. All of the claimed steps directed to the
abstract idea ( capturing and generating) are well understood,
routine and conventional functions (see page 7 of July 2015
update: Subject Matter Eligibility). These steps are similar to
examples of well understood, routine and conventional functions
that are listed on this page (receiving, processing and storing
data, electronic recordkeeping, etc.). . . . It is the routine and
conventional functions of the claims used to carry out the abstract
idea and general purpose computers as admitted by Appellant
[sic] on page 8-9 of the specification that fail Part 2B of the
Subject Matter Eligibility test [i.e., step two of the Alice
framework]. Therefore, claim limitations do not amount to
significantly more.
(Answer 8.)
The Examiner appears to rely on paragraph 47 of the Specification as
disclosing that use of a programmed computer system to perform all of the
steps of, e.g., claim 36, was well-known, routine, or conventional. (See
Answer 7-8). But, paragraph 47 relates to a step of "referring a telephone
communication." To the extent the Examiner determines that paragraph 4 7
relates to other claim steps, e.g., capturing call data or associating call data
with call referral information, the Examiner does not clearly articulate why
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the paragraph should be so broadly read. Moreover, paragraph 4 7, like
paragraphs 22 and 23 (relating to detecting and associating phone numbers),
appears in the Specification under the heading of "Summary of the
Invention," rather than, e.g., "Background of the Invention," or the like.
(See Spec. at 6, 4.) Thus, it is unclear why the Examiner has determined that
these paragraphs provide evidence of what was well-known, routine, or
conventional to a person having ordinary skill in the art.
Notwithstanding, claim 36 recites capturing/collecting call data,
associating/analyzing the call data with other data ("call referral
information"), and generating a report. Collecting, analyzing, and reporting
data are routine computer functions. See Elec. Power Grp., 830 F.3d at
1355. And "limiting the claims to [a] particular technological environment
... is, without more, insufficient to transform them into patent-eligible
applications of the abstract idea at their core." Id. at 1354. There can be no
reasonable argument here that collecting, analyzing, and reporting data are
not routine activities of general purpose computers. Therefore, we agree
with the Examiner that the generic computer components in claim 36, i.e.,
the "programmed computer system," performs routine computer functions.
(See Final Action 6.) "Whether something is well-understood, routine, and
conventional to a skilled artisan ... is a factual determination." Berkheimer
v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018). "The improvements in the
specification, to the extent they are captured in the claims, create a factual
dispute regarding whether the invention describes well-understood, routine
and conventional activities." Id. We see no factual dispute here.
Additionally, we note that claim 36 does not recite a step for receiving
or routing phone calls. Claim 36 recites data collection, analysis, and
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reporting. Therefore, we do not find persuasive Appellants' argument that
"'a generic computer' cannot handle telephone calls without significantly
more" or that there is "no factual basis whatsoever that 'no more than a
generic computer' can handle telephone calls as claimed." (Appeal Br. 33.)
Appellants seek to analogize the present claims to the claims in DDR
Holdings. (See Appeal Br. 50---51.) We disagree. Unlike claim 36 here, the
claims in DDR Holdings "specify how interactions with the Internet are
manipulated to yield a desired result-a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
hyperlink." DDR Holdings, 773 F.3d 1245, 1258 (Fed. Cir. 2014) (emphasis
added). In other words, the invention claimed in DDR Holdings does more
than "simply instruct the practitioner to implement the abstract idea with
routine, conventional activity." See Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 715 (Fed. Cir. 2014); see also DDR Holdings, 773 F.3d at 1259.
Appellants also seek to analogize the present claims to those in
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016). (See Appeal Br. 51-52.) In Bascom, the court
determined that "an inventive concept can be found in the non-conventional
and non-generic arrangement of known, conventional pieces." Bascom,
827 F.3d at 1350. Specifically, "[t]he inventive concept described and
claimed in the '606 patent is the installation of a filtering tool at a specific
location, remote from the end-users, with customizable filtering features
specific to each end user." Id. at 1350. The Federal Circuit determined that
this "particular arrangement of elements is a technical improvement over the
prior art ways of filtering." Id. Appellants argue that "no consideration was
given [by the Examiner] as to whether the inventive concept was found in
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the non-conventional and non-generic arrangement of known, conventional
pieces." (Appeal Br. 52.) But Appellants do not clearly indicate what
element(s) in method claim 36 might correspond to, e.g., the "filtering tool
at a specific location, remote from the end-users." Therefore, we do not find
this argument persuasive.
In view of the above, we agree with the Examiner, albeit under a
different rationale, that claim 3 6 is directed to a judicial exception without
significantly more. Claims 37-51 and 58-61 fall with claim 36. See 37
C.F.R. § 4I.37(c)(l)(iv). Further in view of the above, we designate our
decision as a new ground of rejection.
Appellants separately argue, claims 52-57. In particular, Appellants
argue that
the Examiner has not provided information sufficient to
understand how "not more than a generic computer" can carry
out . . . connecting the inbound communication to an outbound
line to connect the caller with the phone number ( claims 52-53)
or . . . routing the inbound communication to an outbound
communication line, regardless of whether the location is
identified, to connect the caller with a phone number ( claims 54-
55).
(Appeal Br. 53, emphasis and paragraphing omitted.) Appellants also argue,
with regard to claims 56 and 57, that the Examiner has not explained how
the step of "from a trunk interface, receiving an inbound communication"
can be met by use of "not more than a generic computer." (Id.) We are
persuaded of error.
Claim 52, which depends from claim 36 recites, in relevant part,
"connecting the inbound communication [ from a trunk interface] to an
outbound communication line to connect the caller with the phone number
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for the service associated with the location of the caller." Claim 53 depends
from claim 52.
Claim 54, which depends from claim 3 6 recites, in relevant part,
"routing the inbound communication [ from a trunk interface] to an outbound
communication line, regardless of whether the location is identified, to
connect the caller with a phone number of one the [sic] services." Claim 55
depends from claim 54.
Claim 56, which depends from claim 36 recites, in relevant part,
"from a trunk interface, receiving an inbound communication from a caller."
Claim 57 depends from claim 56.
Appellants' Figure 1 shows an arrangement of a generic computer
system ("database management system" and "custom software") connected
with an "IVR" (interactive voice response system) and "trunk interface
boards" ( connected to inbound and outbound audio lines). This may reflect
a well-understood, routine, and conventional configuration that performs the
well-understood, routine, and conventional steps of connecting and routing
inbound communications. But, as made clear in Berkheimer, this is a
question of fact. See Berkheimer, 881 F.3d at 1369. And here, the Examiner
has not provided sufficient evidence to support a finding that these steps
were well-understood, routine, or conventional to a skilled artisan.
Therefore, we will reverse the rejection of claims 52-57.
Appellants also separately argue independent claim 62 and claim 63,
which depends from claim 62. Claim 62 recites:
62. In an apparatus which, for each of a plurality of phone
calls, detects and stores a number received from a trunk line
interface, captures call data from a phone call from which the
number has been detected, performs a routing of the phone call
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to an outbound phone line by using a stored telephone number of
a service to connect to one of multiple long distance carriers,
generates call referral information, engages an association of the
captured call data and the generated call referral information, the
association used to generate a digital reporting that is
communicated to the service to which the telephone call was
routed, a method comprising:
automatically capturing, by an apparatus comprising a
programmed computer system, call data for each of a plurality of
phone calls connecting to the one of the multiple long distance
carriers in routed referrals to a service, which engages an
association of the captured phone call data for each of the
referrals with call referral information generated by the apparatus
so as to distinguish the service from phone call referral data for
a plurality of other services receiving other referrals,
wherein, the association is used by the apparatus in
generating a digital reporting, that is communicated to the
service, which comprises the captured call data and the generated
call referral information for the referrals to the service.
Appellants argue that claims 62 and 63
positively recite: a trunk line interface, routing a phone call, an
outbound phone line, captured call data and generated call
referral information, connect to one of multiple long distance
carriers, and digital reporting, that is communicated to the
service, which comprises the captured call data and the generated
call referral information. While clearly the Examiner's
contention that these can be carried out with "no more than a
generic computer" cannot possibly be correct.
(Appeal Br. 57, emphasis omitted.)
We note that the claim terms cited by Appellants as being "positively
recited," appear in the preamble to claim 62. Indeed, even though "call
data" is recited in the preamble, the reference to "call data" in the body of
the claim does not indicate an antecedent basis. Similarly, even though
"digital reporting" and "call referral information" are recited in the
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preamble, the reference to "digital reporting" and the initial reference to
"call referral information" in the body of the claim do not indicate an
antecedent basis. Likewise, "an apparatus" is recited in the preamble, yet
the initial reference to "an apparatus" in the body of the claim does not
indicate an antecedent basis. Nonetheless, we also note that in the body of
the claim, the term "connecting to the one of the multiple long distance
carriers" has antecedent basis from the term "one of multiple long distance
carriers" in the preamble. Hence, it is unclear if the "apparatus" term of the
preamble takes with it into the body of the claim the features recited in the
preamble, such as "a trunk line interface." See Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305---06 (Fed. Cir. 1999).
In determining the preamble's effect on claim scope, we consider,
among other factors, whether there is "dependence on a particular ...
preamble phrase for antecedent basis" and whether there is "clear reliance on
the preamble during prosecution ... because such reliance indicates use of
the preamble to define, in part, the claimed invention." Catalina Mktng.
Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).
In view of the above, the question of dependence on the preamble
language for antecedent basis leads to, at best, mixed results. However,
Appellants clearly rely on the preamble in arguing for patent eligibility. (See
Appeal Br. 57 .) This supports construing the claim preamble as if it was in
the balance of the claim, i.e., that the claim preamble limits the scope of the
claim. See id.
It is not clear from either the Final Action or the Examiner's Answer
that the Examiner has considered whether the apparatus recited in the
preamble of claim 62 amounts to more than a generic computer performing
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routine computer functions, e.g., "detects and stores a number received from
a trunk line interface," and "performs a routing of the phone call to an
outbound phone line." (See, e.g., Final Action 5.) In other words, in view of
the above, it is not clear that the Examiner has determined whether the
additional elements recited in the preamble of claim 62 are sufficient to
amount to significantly more than the judicial exception. (See id.) It follows
that the Examiner has not provided sufficient evidence to support a finding
that the claimed configuration of these elements was well-understood,
routine, or conventional to a skilled artisan. See Berkheimer, 881 F.3d at
1369.
Therefore, we will reverse the rejection of claims 62 and 63.
DECISION
The Examiner's rejection of claims 36-51 and 58---61 under 35 U.S.C.
§ 101 is affirmed under a different rationale and, therefore, we designate this
as a new ground of rejection of claims 36-51 and 58-61 under 35 U.S.C.
§ 101.
The Examiner's rejection of claims 52-57 and 62---63 under 35 U.S.C.
§ 101 is reversed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). Section 4I.50(b) provides that, "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) further provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THIS DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
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( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
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).
AFFIRMED-IN-PART; 37 C.F.R. § 4I.50(b)
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