Ex Parte Hoff

Patent Trial and Appeal Board

Mar 14, 2018

11830911 (P.T.A.B. Mar. 14, 2018)

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.
11/830,911 07/31/2007 Roland Hoff 0035-025001/2007P00275US 3605
56056 7590 03/16/2018
BRAKE HUGHES BELLERMANN LLP
C/O CPA Global
900 Second Avenue South
Suite 600
MINNEAPOLIS, MN 55402
EXAMINER
CHOY, PAN G
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/16/2018 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):
uspto@brakehughes.com
docketing@brakehughes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. POPOWICH
Appeal 2016-002219
Application 11/830,9111
Technology Center 3600
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1-5, 7, 8, 16-22, 25, and 28-33. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appellant identifies SAP SE as the real party in interest. Appeal Br. 1.
Appeal 2016-002219
Application 11/830,911
ILLUSTRATIVE CLAIM
1. A non-transitory computer-readable storage medium
storing code representing instructions that when executed are
configured to cause a processor to perform a customer
relationship management process comprising:
receiving a plurality of customer inquiries related to one
or more pre-sales documents associated with a product;
associating a sales opportunity with the plurality of
customer inquiries based on the one or more pre-sales
documents;
tracking one or more sales activities performed with
respect to the sales opportunity and in response to the plurality
of customer inquiries;
determining a status for each of the plurality of customer
inquiries based on the one or more sales activities, the status
being one of a resolved status, an unresolved status, and an
unsatisfactory status;
generating an activity report including a status field
associated with the sales opportunity, the status field divided
into at least two priority subdivisions, each priority subdivision
divided into a plurality of status indicators, each of the plurality
of customer inquiries being sorted into the at least two priority
subdivisions based on a priority associated with the customer
inquiry, each status indicator representing a count of the status
determined for each of the plurality of customer inquiries and
including a link to information for each customer inquiry of the
respective status;
providing the activity report to a computing device for
display in a user interface on the computing device;
receiving an indication of a selection of the link to
information for each customer inquiry of a respective status;
and
in response to receiving the indication of the selection of
the link, providing information associated with each customer
inquiry sorted into the priority subdivision for the status field
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and that is of the respective status, the information for display
in the user interface of the computing device.
REJECTIONS
I. Claims 1-5, 7, 8, 16-22, 25, and 28-33 are rejected under 35
U.S.C. § 101 as ineligible subject matter.2
II. Claims 1-5, 16-18, 20, 22, 25, 28, 29, and 31-33 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Grover et al. (US
2006/0074919 Al, pub. Apr. 6, 2006, hereinafter “Grover”), Thier (US
2006/0155596 Al, pub. July 13, 2006), and Schlick et al. (US 7,096,188 Bl,
iss. Aug. 22, 2006, hereinafter “Schlick”).
III. Claim 8 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Grover, Thier, Schlick, and Inagaki (US 2008/0168074 Al, pub. July
10, 2008).
IV. Claims 7, 19, 21, and 30 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Grover, Thier, Schlick, and Parker et al. (US
2002/0052774 Al, pub. May 2, 2002, hereinafter “Parker”).
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
2 We regard as inadvertent the inclusion of canceled claims 15, 26, and 27 in
Rejection I (e.g., Final Action 7-8). See Appeal Br. 37, 39.
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ANALYSIS
Subject-Matter Eligibility
Applying the first step of the methodology delineated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347, 2355 (2014), the
rejection states that the claims at issue are directed to the abstract idea of
managing customer relationships, which is characterized as a fundamental
economic practice (Final Action 7), an ineligible method of organizing
human activity, and “mathematical relationships” (Answer 10). Under the
second Alice step, the Examiner determines that the claimed features do not
involve significantly more than the abstract idea, because the claimed
elements merely link the use of the abstract idea to a particular technical
environment, by reciting generic computer equipment performing generic,
well-understood computer functions. Final Action 7-8.
Alleging error in the rejection of claim 1, and as to the first step of the
Alice analysis, the Appellant contends that the rejection fails to set forth a
prima facie case that the claims are directed to an abstract idea, because
“[tjhere is no evidence on the record to establish that the claims are an
abstract idea of a fundamental economic practice, that of ‘managing
customer relationship[s].’” Appeal Br. 21. See also Appeal Br. 31, Reply
Br. 12-13. This argument does not persuade us of error in the rejection.
As an initial matter, the Federal Circuit has explained that “the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
USPTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the
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Application 11/830,911
applicant of the reasons for rejection, “together with such information and
references as may be useful in judging of the propriety of continuing the
prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011). Thus, all that is required of the Office is that it set forth the
statutory basis of the rejection, and the reference or references relied on, in a
sufficiently articulate and informative manner as to meet the notice
requirement of § 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) (Section 132 “is violated when the rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”) Here, the Examiner analyzed the claims
using the Alice two-step framework, as discussed above. Accordingly, the
Examiner notified the Appellant of the reasons for the rejection “together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.” 35 U.S.C.
§ 132. In doing so, the Examiner set forth a prima facie case of
unpatentability. Notably, the Appellant does not contend that the rejection
was not understandable or that it failed to provide notice of the basis for the
rejection. Instead, the Appellant’s understanding of the rejection is clearly
evidenced by the substantive response in the Appeal Brief.
With regard to the role of evidence in the first Alice step, the
Examiner points out that there is no requirement to provide “documentary
evidence to demonstrate abstractness.” Answer 9. See also Answer 13.
More particularly, though, as the Examiner explains, the determination of
abstractness aligns with the approach of looking to court decisions regarding
fundamental economic practices and methods of organizing human activity.
See Amdocs (Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288, 1294
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Application 11/830,911
(Fed. Cir. 2016) (a “decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen —
what prior cases were about, and which way they were decided.”)
Fundamental economic practices and methods of organizing human activity
— such as the identified abstract idea in this case — are a categories of basic
tools of technological work, which courts regard as abstract ideas ineligible
for patenting. See Alice, 134 S. Ct. at 2356-57; buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1353-55 (Fed. Cir. 2014). Additionally, the Appellant
asserts that evidence is needed, but without providing any supporting
reasoning, or any evidence, that might contradict the Examiner’s
determination.
The Appellant also alleges error, on account of the alternative
characterization of the identified abstract idea as a method of organizing
human activities. Appeal Br. 28-30; Reply Br. 20-21. The Appellant
submits that “the Office has entire classes of patents directed towards
methods of organizing human activities, for example, methods of fishing
(Class 43/4.5), and methods of bee keeping (Class 449/1)” and asks:
“Should these classes of patents become no longer patent eligible?” Appeal
Br. 30. According to the Appellant, “not only does the claim recite more
than a method of organizing human activities, the inclusion of ‘certain
methods of organizing human activities’ should not be an identified abstract
idea.” Id. Yet, the expression has been applied in a more limited way, in
subject-matter-eligibility jurisprudence. Courts use “the phrase ‘methods of
organizing human activity’ to describe concepts relating to interpersonal and
intrapersonal activities, such as managing relationships or transactions
between people, social activities, and human behavior; satisfying or avoiding
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Application 11/830,911
a legal obligation; advertising, marketing, and sales activities or behaviors;
and managing human mental activity.” MPEP § 2106.04(a)(2)(H) (9th ed.,
Rev, 8, Jan. 2018) (collecting cases).3 In regard to the Appellant’s concern
about the potential overbreadth of this category of abstract ideas, the MPEP
notes that only “certain methods of organizing human activity” would be
ineligible; “[t]he term ‘certain’ qualifies this category description as a
reminder that (1) not all methods of organizing human activity are abstract
ideas, and (2) this category description does not cover human operation of
machines.” Id.
Further, the Appellant contends that the abstract-idea identification of
the rejection is erroneous, because the claims require a particular set of
detailed operations that distinguish them from the general concept of
managing customer relationships. See Appeal Br. 22-26, Reply Br. 13-18.
The Appellant asserts that “[tjhese claims are clearly not just for managing a
customer relationship,” but nevertheless concedes that the claimed subject
matter “can be part of managing a customer relationship.” Appeal Br. 25.
As the Federal Circuit has explained, “[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). Rather than negating the propriety of
the identified abstract idea, the Appellant’s argument instead proposes that
there are particular, important claim features that do not simply implement
the abstract idea. Such an exercise is the aim of the second step of the Alice,
3 Although the MPEP “does not have the force of law or the force of the
rules in Title 37 of the Code of Federal Regulations” (MPEP, Foreword (9th
ed., Rev. 8, Jan. 2018)), this Decision refers to the MPEP, here, for its
collection of cases are authoritative.
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analysis. Accordingly, we are not persuaded that the Appellant’s argument
establishes that the claims are not directed to the identified abstract idea.
The Appellant also contends that claims were rejected erroneously,
because the claims do not “pre-empt the broad field of managing issues with
respect to customer management,” such that the claims cannot be directed to
an ineligible abstract idea. Appeal Br. 27; see also Reply Br. 18-20.
However, as the Examiner points out (see Answer 12), the absence of
complete preemption does not establish subject-matter eligibility. See
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”)
Turning to the second step of the Alice analysis, the Appellant argues
that claim 1 recites “improvements to the technical field of database
management for customer relationship management” (Appeal Br. 31) or
“meaningful limitation[s] beyond generally linking the use of an abstract
idea to a particular technological environment” (id. at 32). Specifically, the
Appellant, citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), correctly argues that “the types of features recited in the
claimed invention are directed to how computer interactions are manipulated
to yield a desired result — a result that allows a sales representative to more
quickly determine whether and how to respond to customer inquiries.”
Appeal Br. 26. We agree. Claim 1 results in a link-based interaction and
structured result stating:
receiving an indication of a selection of the link to
information for each customer inquiry of a respective status;
and
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in response to receiving the indication of the selection of
the link, providing information associated with each customer
inquiry sorted into the priority subdivision for the status field
and that is of the respective status, the information for display
in the user interface of the computing device.
The Appellant correctly argues:
The improvements to the technical field of database
management for customer relationship management recited by
the claims result in a customer relationship management system
that can “manage (e.g., prioritize, categorize and track) the
customer inquiries for the sales representative 104, so that the
sales representative 104 may more quickly determine whether
and how to respond to each of the customer inquiries.”
Appeal Br. 31 (quoting Spec. ^ 4). We agree with Appellant that like the
claims in DDR Holdings, the claimed solution of the present case “‘do[es]
not merely recite the performance of some business practice known from the
pre-Internet world along with the requirement to perform it on the Internet’,
but rather ‘is rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.’” Appeal Br. 25.
In addition, the Appellant argues that claim 1 amounts to significantly
more than the identified abstract idea, based upon its combination of
“generating an activity report” with “each status indicator . . . providing a
link to information for each customer inquiry of the respective status” and
“in response to receiving the indication of the selection of the link, sending
information associated with each customer inquiry sorted into the priority
subdivision for the status field and that is of the respective status, the
information for display in the user interface of the computing device” Id. at
32. According to the Appellant:
The feature of including the link in the activity report can
provide a sales representative with “more detailed [sic] about
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Application 11/830,911
one or more of the customer inquiries associated with the box”
(the box being the claimed status indicator) because “clicking
on the box for the priority 1 fields for Comp03 that are open
(e.g., the box with the number 5) may provide more detailed
[sic] about one or more of the customer inquiries associated
with the box.”
Id. (quoting Spec. ^ 65).
But, according to the rejection, the identified claim elements do not
amount to more than the abstract idea, because these elements “are merely
receiving, processing and transmitting data, which have been recognized by
the courts as merely well-understood, routine, and conventional functions of
generic computers.” Answer 14. See also Final Action 7-8 (“Although the
claims do recite the use of a server, nothing more than a generic computer,
performing generic, well-understood and routing computer functions, would
be required to implement the aforementioned abstract idea.”)
Essentially, the rejection regards particular elements of claim 1
individually, but “[t]he inventive concept inquiry requires more than
recognizing that each claim element, by itself, was known in the art.”
BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1350 (Fed. Cir. 2016). Indeed, an “inventive concept” that satisfies
the second Alice step “can be found in the non-conventional and non-generic
arrangement of known, conventional pieces.” Id. In view of the Appellant’s
explanation of the effect of coordinated claim elements, the rejection does
not sufficiently establish that the combined activity of various claim
elements, as identified by the Appellant, fails to constitute significantly more
than the abstract idea itself.
Accordingly, we do not sustain the rejection of independent claim 1
— and, for similar reasons, independent claims 17 and 33, as well as
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dependent claims 2-5, 7, 8, 16, 18-22, 25, and 28-32 — under 35 U.S.C.
§ 101.
Obviousness
The Appellant argues that independent claim 1 was rejected
erroneously, because the identified prior art references do not teach or
suggest the recitation of “each status indicator representing a count of the
status determined for each of the plurality of customer inquiries.” See
Appeal Br. 18-19; Reply Br. 10-12.
According to the rejection, Schlick teaches this feature in regard to its
disclosed tables with rows and columns — such as in Schlick’s Figures 9,
10, and 37 — wherein the defined cells (and subdivisions thereof) can
display various items of status information. See Final Action 12 (citing
Schlick, col. 9,1. 3-28, col. 20,11. 23-67); Answer 8-9 (citing Schlick, col.
8,1. 66-col. 9,1. 45, col. 20,11. 10-67, Figs. 9, 10, 37).
Although the Examiner’s Answer acknowledges that “the status
priority in Fig. 9 and Fig. 37 [of Schlick] are not represented by a number
value,” the Answer goes on to state that “the number of priority indicators in
the cells can also representing [sic] a count of status.” Answer 9.
The Appellant contends that, because of this absence of a numerical
count, Schlick fails to meet the limitation at issue — explaining that even if
“a CONCERN cell of [Figure 37 of] Schlick is considered the claimed
‘status indicator’, Schlick is silent regarding ‘each status indicator
representing a count of the status determined for each of the plurality of
customer inquiries.’” Reply Br. (Appellant’s emphasis).
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The role of the claimed “count of the status determined for each of the
. . . customer inquiries” is addressed in the Appellant’s Specification, which
states, e.g., that the activity report of Figure 4 shows “[e]ach priority
subdivision 232B . . . subdivided into one or more status fields 236A, 23 6B
and 236C,” in which “[t]he status fields 236A, 236B and 236C may
correspond to how many customer inquiries associated with a sales
opportunity 206 are unsatisfactory (e.g., not okay), open (e.g., unresolved)
and okay, respectively.” Spec. ^ 61. By making the “count” manifest — as
in claim 1, per the Appellant’s interpretation — “[t]he activity report of FIG.
4 may be useful, for example, for a sales manager to quickly review the
status of one or more sales representatives for whom the manager may be
responsible.” Spec. ^ 66.
Notwithstanding the statement in the Examiner’s Answer that “the
number of priority indicators in [Schlick’s] cells can also representing [sic] a
count of status” (Answer 9) in some manner, this priority information is “not
represented by a number value” in Schlick (id). Nor does the rejection
explain how Schlick might be modified to provide claim 1 ’s numerical
“count.”
In addition, neither of the two other references (Grover and Thier),
relied upon in the rejection of claim 1, is shown to overcome the defect in
Schlick.
Therefore, the Appellant persuades us that the cited prior art does not
teach or suggest claim l’s requirement of “each status indicator representing
a count of the status determined for each of the plurality of customer
inquiries.”
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Accordingly, we do not sustain the rejection of independent claim 1
— and, likewise, independent claims 17 and 33, as well as dependent claims
2-5, 7, 8, 16, 18-22, 25, and 28-32 — under 35 U.S.C. § 103(a).
DECISION
We REVERSE the Examiner’s decision rejecting claims 1-5, 7, 8,
16-22, 25, and 28-33 under 35 U.S.C. § 101.
We REVERSE the Examiner’s decision rejecting claims 1-5, 7, 8,
16-22, 25, and 28-33 under 35 U.S.C. § 103(a).
REVERSED
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