Ex Parte Erbey et al

Board of Patent Appeals and Interferences

May 13, 2010

10918699 (B.P.A.I. May. 13, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE 1
___________ 2
3
BEFORE THE BOARD OF PATENT APPEALS 4
AND INTERFERENCES 5
___________ 6
7
Ex parte WILLIAM C. ERBEY and 8
SCOTT PAUL CONRADSON 9
___________ 10
11
Appeal 2009-011919 12
Application 10/918,699 13
Technology Center 3600 14
___________ 15
16
Decided: May 13, 2010 17
___________ 18
19
Before HUBERT C. LORIN, ANTON W. FETTING, and 20
BIBHU R. MOHANTY, Administrative Patent Judges. 21
FETTING, Administrative Patent Judge. 22
DECISION ON APPEAL 23
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STATEMENT OF THE CASE 1
William C. Erbey and Scott Paul Conradson (Appellants) seek review 2
under 35 U.S.C. § 134 (2002) of a final rejection of claims 46-67, 71, and 3
72, the only claims pending in the application on appeal. Oral arguments 4
were presented on April 22, 2010. 5
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b) 6
(2002). 7
SUMMARY OF DECISION1 8
We AFFIRM. 9
THE INVENTION 10
The Appellants invented expert methods and systems for providing 11
customer relations information via the Internet, an interactive automated 12
response system, and an automated expert system accessed by a user 13
(Specification 1:¶ 0002). 14
An understanding of the invention can be derived from a reading of 15
exemplary claim 46, which is reproduced below [bracketed matter and some 16
paragraphing added]. 17
46. A method for providing customer service information, the 18
method comprising: 19
[1] identifying a customer 20

1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed December 9, 2008) and Reply Brief (“Reply Br.,” filed September
29, 2008), and the Examiner’s Answer (“Ans.,” mailed July 29, 2008).
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based on a call from the customer; 1
[2] accessing the customer's account based on the identifying; 2
[3] determining one or more likely reasons for the call 3
based on recent customer account activity, 4
wherein the one or more likely reasons are reasons that 5
are most probable 6
on a basis of previous cases, inquiries or 7
experiences; 8
[4] providing a list of one or more scripts, 9
each script being based on one or more of the determined 10
likely reasons for the call; 11
[5] selecting a script from the list of scripts; and 12
[6] providing information 13
from the selected script 14
to the customer. 15
THE REJECTIONS 16
The Examiner relies upon the following prior art: 17
Khuc US 6,819,759 B1 Nov. 16, 2004
Bob Gdovic, Calling all customers, Bank Marketing, vol. 33, Iss. 4, p. 18
32, May 2001. 19
Claims 46-50, 71, and 72 stand rejected under 35 U.S.C. § 101 as 20
directed to non-statutory subject matter. 21
Claims 46-67, 71, and 72 stand rejected under 35 U.S.C. § 103(a) as 22
unpatentable over Gdovic and Khuc. 23
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ARGUMENTS 1
Claims 46-50, 71, and 72 rejected under 35 U.S.C. § 101 as directed to non-2
statutory subject matter. 3
The Examiner rejected these method claims because they fail the test for 4
statutory processes under Bilski2. Although the Examiner did not cite Bilski 5
per se, the test the Examiner applied was that from Bilski. Ans. 3-5. The 6
Appellants argue that the claims are tied to a particular machine because 7
they are implemented via a communication apparatus to initiate a call and a 8
recording medium for storing account information and that the claims cause 9
a transformation by creating scripts. Appeal Br. 12. 10
Claims 46-67, 71, and 72 rejected under 35 U.S.C. § 103(a) as unpatentable 11
over Gdovic and Khuc. 12
The Appellants argue these claims as a group. Accordingly, we select 13
claim 46 as representative of the group. 37 C.F.R. § 41.37(c)(1)(vii) (2008). 14
The Examiner found that Gdovic describes the call center and script 15
activities of the claims and that Khuc describes determining a likely reason 16
for the call and initiating a promotion related to that reason. Ans. 5-7. 17
The Appellants argue that Khuc does not describe determining likely 18
reasons for the call because Khuc merely provides advertisement to the 19
customer while the customer is queued. Appeal Br. 8. The Appellants also 20
argue insufficient reason to combine the references is found. Appeal Br. 9-21
10. 22

2 In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc).
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ISSUES 1
The issue of whether the Examiner erred in rejecting claims 46-50, 71, 2
and 72 under 35 U.S.C. § 101 as directed to non-statutory subject matter 3
turns on whether the claims recite using an apparatus, such as a phone, in 4
more than an insignificant manner, and whether selecting a script is a 5
transformation of real world matter. 6
The issue of whether the Examiner erred in rejecting claims 46-67, 71, 7
and 72 under 35 U.S.C. § 103(a) as unpatentable over Gdovic and Khuc 8
turns on whether Khuc shows or renders predictable determining likely 9
reasons for a call. 10
FACTS PERTINENT TO THE ISSUES 11
The following enumerated Findings of Fact (FF) are believed to be 12
supported by a preponderance of the evidence. 13
Facts Related to the Prior Art 14
Gdovic 15
01. Gdovic is directed to describing how call centers have evolved 16
to service internet as well as conventional phone messages. 17
Gdovic 2. 18
02. Gdovic generally describes call center methodology and 19
technology which is able to discern a customer’s identity 20
automatically from the customer’s originating equipment and 21
provides scripts that the call center staff may use to respond to 22
customer inquiries. Gdovic 4-5. 23
24
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Kuhc 1
03. Kuhc is directed to call processing systems that provide 2
personalized and customized services for call center customers 3
waiting in a queue. Khuc 1:21-24. 4
04. Khuc provides service information to a call in a queue for a call 5
center based on caller data. The provision of service information 6
such as advertising messages, audio entertainment, and interactive 7
applications based on caller data creates a personalized and 8
customized service for the customer. Khuc 1:63 – 2:1. 9
05. Khuc’s service server receives caller data for a call in a queue. 10
In response, the service server identifies the service information 11
based on the caller data. For example, the service information is 12
an advertising message, or could be personalized messages related 13
to the customers' profile. Some examples described by Khuc are 14
messages indicating order status, product information, status of 15
support personnel, upcoming sales, careers, surveys, 16
recommendations for services, expiration status, availability of 17
resources, account status, and account balance. Khuc 5:65 – 6:10. 18
06. Khuc describes examples of product information in such 19
messages as product upgrades, features, recalls, and product-20
related news. Another example could indicate status of support 21
personnel who served the customer previously, or recommend 22
services based on time since last service. 23
07. Another example described by Khuc is automatically 24
identifying the appropriate advertising message to provide to the 25
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call center customer who previously ordered a breadmaker a 1
message about the new improved breadmaker model. Khuc 2:17-2
21. 3
PRINCIPLES OF LAW 4
Obviousness 5
A claimed invention is unpatentable if the differences between it and 6
the prior art are “such that the subject matter as a whole would have been 7
obvious at the time the invention was made to a person having ordinary skill 8
in the art.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 9
v. John Deere Co., 383 U.S. 1, 13-14 (1966). 10
In Graham, the Court held that that the obviousness analysis is 11
bottomed on several basic factual inquiries: “[(1)] the scope and content of 12
the prior art are to be determined; [(2)] differences between the prior art and 13
the claims at issue are to be ascertained; and [(3)] the level of ordinary skill 14
in the pertinent art resolved.” Graham, 383 U.S. at 17. See also KSR, 550 15
U.S. at 406. “The combination of familiar elements according to known 16
methods is likely to be obvious when it does no more than yield predictable 17
results.” Id. at 416. 18
ANALYSIS 19
Claims 46-50, 71, and 72 rejected under 35 U.S.C. § 101 as directed to non-20
statutory subject matter. 21
The claims are nominally directed to processes. The test for 22
determining whether a claimed process is a statutory process under 23
§101 is the Bilski machine-or-transformation test, that is: 24
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[T]he proper inquiry under § 101 is not whether the 1
process claim recites sufficient “physical steps,” but 2
rather whether the claim meets the machine-or-3
transformation test. [fn]25 As a result, even a claim that 4
recites “physical steps” but neither recites a particular 5
machine or apparatus, nor transforms any article into a 6
different state or thing, is not drawn to patent-eligible 7
subject matter. Conversely, a claim that purportedly 8
lacks any “physical steps” but is still tied to a machine or 9
achieves an eligible transformation passes muster under § 10
101. 11
In re Bilski, 545 F.3d 943, 961 (Fed. Cir. 2008) (en banc). 12
The claimed processes do not satisfy the transformation prong because 13
the claimed subject matter does not transform any article into a different 14
state or thing. “A claimed process is patent-eligible if it transforms an article 15
into a different state or thing. This transformation must be central to the 16
purpose of the claimed process.” In re Bilski, 545 F.3d at 962; see also 35 17
U.S.C.A. § 101. The Appellants argue that they create and therefore 18
transform a script. We disagree. Claim 46 only recites providing and 19
selecting scripts. No transformation is recited. Further, a script is not a 20
physical article, but rather an intangible set of instructions. Thus the claims 21
do not recite transformation of an article into a different state or thing. 22
The claimed processes also do not satisfy the machine prong of the 23
Bilski machine-or-transformation test. No machine or apparatus is recited. 24
The Appellants argue that claim 46 uses a phone. Nothing in claim 46 25
recites such a usage. The closest recitation is limitation [1] in which a 26
customer is identified based on a call, but the claim recites no particular 27
manner of making such an identification and certainly does not recite using a 28
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phone itself to make such an identification. Thus, no machine or apparatus 1
is recited in the claims. 2
Because the claimed processes do not pass the Bilski machine-or-3
transformation test, the processes as claimed are not patent-eligible 4
processes under §101. 5
Claims 46-67, 71, and 72 rejected under 35 U.S.C. § 103(a) as unpatentable 6
over Gdovic and Khuc. 7
The only limitation under contention is that of the manner of making the 8
determination in limitation [3] of claim 46. Indeed the remainder of claim 9
46 simply describes conventional call center methodology as described in 10
Gdovic. FF 02. Khuc provides service information to a call in a queue for a 11
call center based on caller data. FF 04. Khuc’s service server identifies the 12
needed service information, such as an advertising message or personalized 13
messages based on the caller data related to the customers' profile such as 14
messages indicating order status. FF 05. 15
The claim limitation under dispute recites that a likely reason based on 16
recent customer account activity be determined, not the actual reason. The 17
likely reason does not have to be the only reason determined, nor does it 18
have to be accurate (the Specification discloses no enabling description of 19
mind reading) or the only determination made. The claim recites that the 20
reasons are most probable as being on a basis of previous cases, inquiries or 21
experiences. 22
Khuc describes making a determination to discern an order status when 23
an order is outstanding, or an account balance for a customer with an 24
account. It has been widely known to the general public, and therefore to 25
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those of ordinary skill as well, from voice mail experience that checking on 1
order status or account information is among the likely reasons for making 2
such calls. Similarly, Khuc also describes providing upgrade information 3
for products the customer has purchased and the status of support staff the 4
customer dealt with prior. Again, the general public, and therefore those of 5
ordinary skill as well, knew that inquiries about recent dealings with a 6
company related to product or staff were among the likely reasons to make a 7
customer support contact. 8
Each of these examples discerns a reason for a particular message based 9
on recent customer activity, and such a reason is by its very nature, at least a 10
likely reason for the call. Khuc explicitly recites that it identifies service 11
information based on the caller data. FF 05. Thus Khuc intends to discern 12
the reason for the call to supply a message responsive to that need, and 13
provides examples of it doing so. 14
As to the reason for applying Khuc to the call centers described by 15
Gdovic, Khuc provides the rationale in the need for personalized and 16
customized services for call center customers waiting in a queue. FF 03. 17
CONCLUSIONS OF LAW 18
The Examiner did not err in rejecting claims 46-50, 71, and 72 under 35 19
U.S.C. § 101 as directed to non-statutory subject matter. 20
The Examiner did not err in rejecting claims 46-67, 71, and 72 under 35 21
U.S.C. § 103(a) as unpatentable over Gdovic and Khuc. 22
DECISION 23
To summarize, our decision is as follows. 24
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• The rejection of claims 46-50, 71, and 72 under 35 U.S.C. § 101 as 1
directed to non-statutory subject matter is sustained. 2
• The rejection of claims 46-67, 71, and 72 under 35 U.S.C. § 103(a) as 3
unpatentable over Gdovic and Khuc is sustained. 4
No time period for taking any subsequent action in connection with this 5
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 6
7
AFFIRMED 8
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