Ex Parte John et al

Patent Trial and Appeal Board

Feb 26, 2019

12978973 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/978,973 12/27/2010
48500 7590 02/28/2019
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
AjitaJohn
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.
4366-843 2196
EXAMINER
MISIASZEK, AMBER AL TSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AJITA JOHN and
DOREE DUNCAN SELIGMANN
Appeal2018-002138
Application 12/978,973 1
Technology Center 3600
Before ALLEN R. MacDONALD, JASON V. MORGAN, and
JAMES B. ARPIN, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-20, all of the pending claims. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Avaya, Inc., as the real party in interest. Appeal Br. 2.
Appeal2018-002138
Application 12/978,973
Summary of Disclosure
Appellants disclose a system for managing resources that:
( 1) identifies a group of users by categorizing users according to common
characteristics and behaviors with respect to a first domain; (2) identifies a
user behavior, associated with an event in a second, different domain, for a
user in the group of users; and (3) provides a response, based on the user
behavior and the event, at the second domain. Spec., Abstract.
Representative claim
1. A method comprising:
receiving, at a processor and via a communication interface,
first user data from a first electronic media channel and second
user data from a second electronic media channel, the first
electronic media channel different from the second electronic
media channel;
storing the first and second user data in a memory coupled to
the processor;
identifying, with the processor and based on the first user data,
a group of user terminals corresponding to users having a
common usage characteristic with respect to a first website, the
first website associated with the first electronic media channel;
analyzing with the processor, during a first time interval and
based on the second user data, a usage of a first user terminal
from the group of user terminals with respect to a second
website associated with the second electronic media channel,
the second website different from the first website;
making a determination, with the processor, about a likely
behavior of the group of user terminals based on the analyzing
the usage; and
during a second time interval after the first time interval,
modifying, with the processor and based on the determination,
one of a resource or a user interface corresponding to the
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second website for a second user terminal of the group of user
terminals.
Appeal Br. 13 (Claims Appendix).
Rejection
The Examiner rejects claims 1-20 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter.
PRINCIPLES OF LAW
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in§ 101, including: (1) laws of nature; (2) natural phenomena; and (3)
abstract ideas. Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 217 (2014).
The U.S. Supreme Court has set forth a framework for distinguishing patents
with claims directed to these implicit exceptions "from those that claim
patent-eligible applications of those concepts." Id. ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The
evaluation follows a two-part analysis: (1) determine whether the claim is
directed to a patent-ineligible concept, e.g., an abstract idea; and (2) if so,
then determine whether any element, or combination of elements, in the
claim is sufficient to ensure that the claim amounts to significantly more
than the patent-ineligible concept itself. See Alice, 573 U.S. at 217-18.
Although the second step in the Alice/Mayo framework is termed a
search for an "inventive concept," the analysis is not an evaluation of
novelty or non-obviousness, but rather a search for "an element or
combination of elements that is 'sufficient to ensure that the patent in
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Application 12/978,973
practice amounts to significantly more than a patent upon the [ineligible
concept] itself."' Alice, 573 U.S. at 217-18 ( citation omitted). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Ass 'n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)
("Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry").
If a claim proves to be unpatentable as a result of the two-part
analysis, no additional determination regarding preemption is necessary.
"While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility," as
"questions on preemption are inherent in and resolved by the § 101
analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (internal quotation marks and citation omitted).
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. USPTO's
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
( 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) (see Memorandum, 84 Fed. Reg. at 54 (Step 2A-Prong
One)); and
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Application 12/978,973
(2) additional elements that integrate the judicial exception into a
practical application (see Memorandum, 84 Fed. Reg. at 54--55 (Step
2A-Prong Two); 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 to whether the claim:
(3) adds a specific limitation 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, 84 Fed. Reg. at 56 (Step 2B).
ANALYSIS
Memorandum Step 2A - Prong One
Appellants acknowledge "that the general principle underlying the
pending Claims-that users grouped by a common user behavior or usage
characteristic tend to perform similar actions-is an abstract idea that is not,
by itself, patentable." Appeal Br. 8. The Examiner similarly determines the
claimed steps "are directed to actions that facilitate sharing data [where]
information is gathered about . . . user[ s] to determine ... usage
characteristics." Final Act. 5. More specifically, claim 1 is directed to:
(1) identifying a group of users with similar behavior at a first website; (2)
analyzing the behavior of a first user from the group at a second website;
and (3) modifying the second website for a second user from the group
based on the assumption that the first user's behavior at the second website
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Application 12/978,973
predicts the likely behavior of the second user at the second website. See,
e.g., Spec. ,r,r 42, 44, 45, 47, Fig. 3.
The claimed process is analogous to identifying a group of individuals
exhibiting common behaviors in a first context and predicting that the
behavior of an individual from the group, in a second context, is
representative of the likely behavior of others in the group. That is, the
claimed process represents the mental process of predicting future behavior
of members of a group of individuals, who behaved similarly in the past, by
observing the behavior of a representative member of the group----an abstract
idea.
Even when the behavior being observed involves use of computer
technologies, the acts of observing and making predictions may be
performed without a computer (e.g., through the use of one-way mirrors).
See, e.g., Ahmed Seffah and Halima Habieb-Mammar, Usability engineering
laboratories: limitations and challenges toward a unifying tools/practices
environment, J. of Behavior and Info. Tech., Vol. 28, No. 3, 281-91, 282-83
(May-June 2009) (although software is typically used as part of analysis and
observation, the basis of a traditional usability lab starts with "two rooms
separated by a one-way mirror and a sound-proof wall"); see also Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed.
Cir. 2016) ( claims reciting "nothing more than the collection of information
to generate a 'credit grading' and to facilitate anonymous loan shopping"
were directed to an abstract idea); Memorandum, 84 Fed. Reg. 52 (mental
processes "including an observation, evaluation, judgment, opinion" are
abstract).
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Application 12/978,973
Importantly, claim 1 does not limit the analysis, determination, and
modification steps in a manner that, other than their execution "with the
processor," distinguishes these parts of the claimed process from how a
human would likely engage in modifying a website by predicting the
behavior of a group of users based on a representative user's behavior. Cf
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed.
Cir. 2016) (citing Myriad, 569 U.S. at 595-96) (recitation of limited rules
reflecting "a specific implementation not demonstrated as that which 'any
[animator] engaged in the search for [ an automated process] would likely
have utilized"' (alterations in original) limited claim to patent-eligible
subject matter). Therefore, the claimed process is analogous to a mental
process of predicting, based on a representative member's behavior, future
behavior of members of a group of individuals, who behaved similarly in the
past.
Accordingly, claim 1 is directed to an abstract idea.
Memorandum Step 2A - Prong Two
Appellants argue that claim I-which includes recitations such as
user data from and websites associated with electronic media channels, and a
resource or user interface corresponding to a website-includes features
"unique to the specific application claimed" such that the claimed invention
"constitute[s] a real-world embodiment of the general principle described in
the specification." Appeal Br. 8. That is, Appellants proffer that claim 1
integrates the underlying abstract idea into a practical application "such that
the claim is more than a drafting effort designed to monopolize the judicial
exception." Memorandum, 84 Fed. Reg. at 54.
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Application 12/978,973
Appellants' argument is unpersuasive because the cited recitations
merely link the abstract mental process to the particular technological
environment of website interactions. See id. at 55 (citing, e.g., Bilski v.
Kappas, 561 U.S. 593, 612 (2010)).
Appellants further argue the "modifying" step of claim 1
in particular constitutes "applying the data in a step of the overall
method," and is therefore the type oflimitation that the Classen[2J
Court found to distinguish between claims directed to patent-
ineligib le subject matter (if such a limitation were not included
in the claim) and claims directed to patent-eligible subject matter
(if such a limitation were included in the claim).
Appeal Br. 9; see also Reply Br. 3, 5---6.
Appellants' reliance on Classen is unavailing because Appellants'
arguments do not show that modifying a resource or user interface "based on
[a] determination" represents something more than "insignificant extra-
solution activity." Classen, 659 F.3d at 1067. The Specification broadly
discloses modifications, such as customizing a user interface "with the
addition or subtraction of some the elements therein, or a rearrangement
and/or a reconfiguration (e.g., color, size, shape) of the original elements of
the default user interface" (Spec. ,r 48) or including a direct link to an online
resource to "reduce[] the number of links that need to be followed to access
the resource" (id. ,r 49; see also Reply Br. 5). These conventional
modifications are more comparable to the alarm limit adjustments in the
patent-ineligible process of Parker v. Flook, 437 U.S. 584 (1978), than to the
Classen act of immunization according to a lower-risk schedule, which
2 Classen Immunotherapies, Inc. v. Elan Pharm., Inc., 786 F.3d 892 (Fed.
Cir. 2015).
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Application 12/978,973
represented a practical use that went beyond insignificant post-solution
activity (see Classen, 659 F.3d at 1067-68).
Appellants argue "a modified web page or other user interface is not
simply 'a result of analysis.'" Reply Br. 5. Both the claimed modification
step and the supporting disclosure, however, are broad enough to encompass
a modification that merely makes the results of the analysis or determination
steps available for display. See, e.g., Spec. ,r,r 48--49. Therefore, we do not
determine that inclusion of the modification step integrates the underlying
abstract idea of claim 1 into a patent-eligible practical application.
Memorandum, 84 Fed. Reg. 54--55.
Memorandum Step 2B
Appellants argue
[t]he step of modifying a resource or a user interface
corresponding to the second website based on the determination
of a likely behavior of the group of users, in particular, is alone
sufficient to add significantly more to the pending claims, as
there is nothing abstract about modifying a resource or a user
interface corresponding to the second website as claimed.
Appeal Br. 10. As discussed above, however, the claimed modification step
includes well-understood, routine, conventional activities, such as changing
the appearance of a user interface or including a direct link to a resource.
See Spec. ,r,r 48, 49. Therefore, contrary to Appellants' argument, we
determine that this step alone does not provide an inventive concept that
makes claim 1 significantly more than the underlying abstract idea.
Furthermore, the additional recitations of claim I-such the
processor, communication interface, memory, and electronic media channel
recitations-represent generic computer implementation elements that do
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Application 12/978,973
not supply the necessary inventive concept. See Alice, 573 U.S. at 222; see
also, e.g., Spec. ,r,r 21, 29, 30, Fig. 1. In particular, despite Appellants'
arguments, we do not determine that these elements are arranged in a non-
conventional and non-generic manner so that claim 1 recites more than
performing the underlying abstract process on generic computer
components. See Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1350 (Fed. Cir. 2016).
For these reasons, claim 1 does not include additional recitations that
make claim 1 significantly more than the underlying abstract idea discussed
above. Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claim 1, and claims 2-20, which Appellants do not argue separately. Appeal
Br. 11.
DECISION
We affirm the Examiner's decision rejecting claims 1-20.
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.
§ 4I.50(f).
AFFIRMED
10
APPENDIX
Ahmed Seffah and Halima Habieb-Mammar, Usability engineering
laboratories: limitations and challenges toward a unifying tools/practices
environment, J. of Behavior and Info. Tech., Vol. 28, No. 3, 281-91, 281-83
(May-June 2009)
Application/Control No. Applicant(s)/Patent Under Patent
Appeal No.
12/978,973 2018-002138
Notice of References Cited
Examiner Art Unit
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* Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages)
Ahmed Seffah and Halima Habieb-Mammar, Usability engineering laboratories: limitations and challenges toward a
u unifying tools/practices environment, I. of Behavior and Info. Tech., Vol. 28, No. 3, 281-91, 281-83 (May-June
2009)
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*A copy of this reference 1s not being furnished with this Office action. (See MPEP § 707.05(a).)
Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
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Behaviour & Information Technology
Vol. 28, No. 3, May-June 2009, 281-291
r:::,.., Taylor & Francis
~ Taylor&.FrancisGroup
Usability engineering laboratories: limitations and challenges toward a unifying
tools/practices environment
Ahmed Seffah* and Halima Habieb-Mammar
Human-Centered Software Engineering Group, Department of Computer Science and Software Engineering, Montreal, Quebec,
Canada
(Received November 2006; final version received November 2007)
This article discusses the limitations and challenges surrounding the present usability engineering (UE) labs.
Usability laboratories include hardware and software tools to observe users, collect and analyse diverse data
about the users' interactions, behaviours, actions, and reactions including their raw feedback regarding their
experiences. Using statistical analysis and data mining software, these qualitative and quantitative data are
transformed into design insights and recommendations for future usability improvements. First, we survey the
existing stationary, portable, and remote laboratories. We then review the current usability tools while
highlighting the gap between the existing tools/labs and the UE practices. We will show how this gap can be
closed via a roadmap using a computer-assisted usability engineering environment (CAUTE). A CAUTE
provides a unifying user interface that exploits a process-sensitive architecture for integrating the large variety of
the existing tools into the best UE practices. Beyond the technical problems, there is also a need to address
research issues including determining the interest of the CAUTE approach in comparison with the current
usability labs.
Keywords: usability testing; testing lab; tools; computer-assisted usability engineering; integration;
user acceptance tests
1. Introduction
In the last two decades, usability and its engineering have
been recognised as a major milestone in the software
engineering lifecycle (Seffah and Metzker 2004). The
costs and benefits of usability engineering (UE) tech-
niques have been largely demonstrated by the human
interaction and human factors community (see, e.g. Bias
and Mayhew 1994, Landauer 1995, Bevan 2000).
UE is concerned with the question of how to
specify, design, develop, and evaluate interactive soft-
ware that is easy to use and easy to learn. As a
disciplined engineering process, UE includes different
activities:
• Analysis of existing or similar products to learn
from previous designs and user experiences
success and failures;
• Analysis of customer field studies and contextual
inquiries to understand the users' workflows,
tasks, profiles, environments, and how much
they vary;
• Collect customer feedback to understand past
issues and problems with the product;
*Corresponding author. Email: seffah@cs.concordia.ca
ISSN 0144-929X print/ISSN 1362-3001 online
© 2009 Taylor & Francis
DOI: 10.1080/01449290701803482
http://www.informaworld.com
• Participatory design sessions to understand
customers' tasks and generate design directions
through collaboration among developers, users,
and usability engineers;
• Interface prototyping, where a key to producing
usable products is to have a professional inter-
face designer work on the project.
• Performing interactive usability tests on proto-
types and the product as it is being developed;
• Worldwide usability tests that can either be done
in different locations or from a specific lab via
remote usability testing.
Usability labs offer the computers, software and
audio/video infrastructure needed to support these UE
activities. The emphasis is on observation of people
using the software to learn what people want and need
from software systems. Laboratories include software
tools to observe users directly, record and analyse
data about their experiences, behaviours, actions,
reactions, as well as their raw feedback. Using
data analysis software, these qualitative and quantita-
tive data are analysed and transformed into design
282 A. Seffah and H. Habieb-Mammar
insights and recommendations for future usability
improvements.
As it will be highlighted in this article, the existing
'black box' labs as well as the lack of integration
between the diverse tools needed by testers and the
informal testing practices is a major obstacle for the
maturity of UE and its integration in the mainstream
software development lifecycle. Closing such a gap will
lead not only to making studies more accurate and
objective but it will also pave the road for the
development of the next-generation of usable UE
tools. A usability lab requires a well-defined process. In
addition, many usability labs are custom made and
therefore are unusable for projects or in environments
other than those for which they were designed.
This article starts by describing a set of limitations
intrinsic to current usability labs, and then by surveying
the software tools in use today. We examine the impacts
of these limitations and the lack of integration between
tools and labs on the specification, design and valida-
tion of usability studies. In the last section, we discuss
the research and development opportunities in impor-
tant topics relevant to future labs including the concept
of computer-assisted usability engineering environment
(CAUTE). We will highlight how this concept,
borrowed from the field of software engineering, can
contribute to the emergence of an advanced, integrative
and powerful framework capable of effectively and
efficiently supporting a large set of UE studies; not just
testing as it is today in current labs.
2. Usability labs today: stationary, mobile,
and remote
Three types of labs are available today. Most often
they are designed to support usability tests. In this
section, we briefly introduce their structure and point
to their limitations.
2.1. The traditional stationary, heavy,
and home-made lab
Traditional stationary usability labs include two
rooms separated by a one-way mirror and a sound-
proof wall (Figure 1 ). A room, intended to the
participants' test, simulates the user work environ-
ment. The term 'participant' designates the user who
has been selected, recruited, and interviewed. In the
other room are observers who can watch the
participants in action. Generally, there is also a
reception hall for the participants' convenience and
sometimes one user may sit near the participant. These
traditional laboratories allow the observers to watch
and study the participant's behaviours including facial
expressions. Observers can talk, exchange and record
ideas between themselves during the tests without
disturbing the participants. Recently, some usability
labs started offering the possibility to observe and
record the observers. Such practice is useful for the
improvement of testing practices as well as for the lab
equipment.
Figure 1. Floor plan and layout of a stationary lab [Swiburne University, Australia].
Behaviour & Information Technology 283
In spite of their considerable contribution to user
interface engineering and to the empirical-based
comprehension of human-computer interaction nat-
ure, the stationary laboratories have some major
weaknesses.
Firstly, these labs are costly in equipment and
software used for analysis and observation. As a
matter of fact, the cost of a typical infrastructure for
fixed labs is estimated between 100 000 and 150 000 US
dollars excluding the cost of deployment, management,
training, frequent upgrades, and advanced test analysis
software. Furthermore, it requires dedicated rooms
with soundproof walls, one-way mirrors, wires and
fixtures for video and audio equipment. The customi-
sation of such labs to meet the requirements of some
tests is often impossible to do within reasonable costs.
Secondly, fixed labs force the participants as well as
the testers and all observers to all gather in the same
place and at the same time. This makes it difficult to
hire a representative sample of the target population
because participants' trips to usability lab locations are
costly and sometimes just impossible. Moreover, the
number of participants is restricted mainly due to
financial reasons and by the time required to analyse
the large amount of data generated by the tests.
Because of these reasons, in general, a test session does
not include more than 10 participants. Thus, the
recommendations are extracted from a small sample
size and consequently their reliability is limited.
Thirdly, tests are realised outside the participants'
natural work environment. Feeling surrounded and
watched by the observers and by the testers, the
participants are generally anxious about not being able
to achieve the assigned tasks. We observed this
behaviour during tests that we conducted within our
lab. The environment and the formal character of tests
have a negative influence on the participant's beha-
viour and actions and, consequently, on the pertinence
and the reliability of test results.
2.2. Mobile or portable usability labs
Mobile usability labs, also called portable labs,
emerged essentially to overcome some limitations of
fixed platforms. A mobile lab comes generally in the
form of a suitcase, which includes a laptop equipped
with a camera, a camcorder and a video recorder for
collecting the data (Figure 2). It also includes a
software tool for recording video observations and
analyses the tests results.
Rubin (1994) estimates the approximate cost of the
basic equipment between $10 000 US and $15 000 US,
which makes such labs more cost-effective compared
with the heavy stationary labs. Including the test soft-
ware, the total cost amounts to $15 000-$20 000 US,
Figure 2. Examples of mobile and portable usability lab.
which constitutes an undeniable advantage in compar-
ison with fixed labs.
Moreover, it is easy to install mobile labs in the
participant's workplace and conduct the tests. Never-
theless, the observers and the testers are forced to
move and for the same reasons mentioned in the case
of fixed usability labs, the number of participants is
often limited. In addition, even though they are in their
own work environment, the user is still influenced by
the presence of the observers, the testers and to
somehow the equipment as shown in Figure 2.
These laboratories are used to supplement fixed
labs, especially for field observations studies in the
user's work environment. However, they do not solve
the major disadvantage of fixed labs: the recruitment
and movement of test subjects.
2.3. Remote usability tests
The convergence of the Internet, videoconferencing as
well as mobile telephony technologies has led to the
emergence of promising new labs: remote testing.
Remote usability tests can be defined as being usability
tests, in which the testers, in charge of carrying out the
observation and the analysis of participants, are
separated in space and/or time from the participants
they have to observe (Figure 3).
A remote usability lab can be developed by
connecting, via the network, a stationary and/or