Ex Parte KANNAN et al

Patent Trial and Appeal Board

Aug 21, 2018

13862002 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/862,002 04/12/2013 Pallipuram V. KANNAN
22862 7590 08/23/2018
GLENN PATENT GROUP
c/o Perkins Coie LLP
P.O. Box 1247
Seattle, WA 98111-1247
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.
110524-8041.USOl 2486
EXAMINER
BYRD, UCHE SOW ANDE
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
patentprocurement@perkinscoie.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte P ALLIPURAM V. KANNAN and RA VI VIJA Y ARAGHA VAN
Appeal2017-003190 1
Application 13/862,0022
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-5, 9, 10, and 12-21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
February 23, 2016) and Reply Brief ("Reply Br.," filed December 13, 2016),
and the Examiner's Answer ("Ans.," mailed October 20, 2016) and Final
Office Action ("Final Act.," mailed September 24, 2015).
2 Appellants identify 24/7 Customer, Inc. as the real party in interest. App.
Br. 2.
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CLAIMED INVENTION
Appellants describe that the claimed invention "relates to improving
customer experiences during online commerce" and more particularly "to
predictive analytics based systems and methods that improve customer
experiences during online commerce" (Spec. 1, 11. 16-19).
Claim 1, reproduced below, is the sole independent claim and is
representative of the subject matter on appeal:
1. A computer implemented method, implemented in a
computer system comprising a processor and memory, for
improving customer expenences m online commerce,
compnsmg:
said processor applying predictive analytics to anticipate
customer needs through prediction of customer intent as said
customer interacts with a customer service system;
said processor further comprising a framework comprising
any of a Web server or an application server for hosting an
application, an application level database server, and an
Anticipate-Simplify-Learn (ASL) engine;
said ASL engine comprising:
an anticipation engine for anticipating and/ or
predicting said customer's intent when said customer
visits a website of interest and/or when said customer
interacts with said system;
a simplification engine for analyzing and
identifying best possible customer engagement modes by
implementing an intuitive customer experience in a
dynamic manner through real-time analysis, wherein said
simplification engine provides an intuitive customer
experience by minimizing customer effort involved during
an engagement, wherein reduction of customer effort is
reflected in any of time in a current journey, number of
interactions and/ or contacts required, language used in an
interaction to display frustration and/or ease of interaction,
relative complexity of an issue resolved, and comparison
relative to benchmark; and
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a learning engine comprising a closed-loop system
that continuously learns from data to anticipate customer
needs and to simplify customer interaction by updating
one or more models with new information obtained from
new customer interactions.
REJECTIONS
Claims 1-5, 9, 10, and 12-21 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1-5, 9, 10, and 12-14 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Phillips (US 2010/0049679 Al, pub. Feb. 25, 2010) and
Kannan et al. (US 2010/0138282 Al, pub. June 3, 2010) ("Kannan").
Claims 15-21 are rejected under 35 U.S.C. § I03(a) as unpatentable
over Phillips, Kannan, and Guheen et al. (WO 00/73955 A2, pub. Dec. 7,
2000) ("Guheen").
ANALYSIS
Patent-Ineligible Subject Matter
Appellants argue claims 1-5, 9, 10, and 12-21 as a group (App.
Br. 10-13). We select independent claim 1 as representative. The
remaining claims stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. 3 The Supreme Court, however, has long interpreted§ 101
3 Although the Examiner determined that the claims are nominally directed
toward a statutory category (Final Act. 2), Appellants nevertheless argue that
claim 1 "is directed to a machine which is a statutory category of invention."
App. Br. 11. But on its face, claim 1 is directed to "[a] computer
implemented method." Thus, claim 1 is nominally directed to a "process,"
one of the enumerated categories set forth in 35 U.S.C. § 101.
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to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth 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 Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination"' to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
( quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that the claims are directed to "an abstract idea of
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applying, hosting, predicting, [ and] analyzing customer commerce
experiences" (Final Act. 2 (citing the USPTO's 2014 "Interim Guidance on
Subject Matter Eligibility," 79 Fed. Reg. 74618, 74622 (Dec. 16, 2014)));
and that the claims do not include additional elements that are sufficient to
amount to significantly more than the judicial exception itself because "they
involve nothing more than generic processors to perform [the] well
understood, routine, and conventional activities of applying, hosting,
predicting, [and] analyzing customer commerce experiences, which are
commonly used in [the] industry" (id. at 2-3 (citing Spec. 23, 27, and 28 as
evidence that "the processor, memory and any other computer system
components used in the claimed invention can be known devices")).
Addressing step one of the Mayo/Alice framework, Appellants argue
that claim 1 is not directed to an abstract idea because it does not recite a
mathematical algorithm or a fundamental economic or longstanding
commercial practice; instead, according to Appellants, claim 1 is similar to
the claims held patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014) (App. Br. 11-13).
Appellants assert that, similar to DDR Holdings, "[c]laim 1 addresses
a business challenge, i.e. improving customer experiences in online
commerce, that is particular to the Internet," and that claim 1 differs from
other claims found by the courts to recite abstract ideas in that "it does 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"
(App. Br. 11).
Contrary to Appellants' assertion, the Federal Circuit did not conclude
in DDR Holdings that the claims were patent-eligible merely because the
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claims did not recite the performance of a business practice known from the
pre-Internet world, along with the requirement to perform it on the Internet.
Instead, the court held that the claims were directed to patent-eligible subject
matter because they claimed a solution "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks," i.e., retaining website visitors who, if adhering to the
routine, conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host's website after "clicking" on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
Appellants argue here that "the claimed solution is necessarily rooted
in computer technology in order to overcome a problem specifically arising
in the realm of computer networks" (App. Br. 12) and that the claims "are
related to mitigating deficiencies inherent in user interaction with an online
user interface - quite similar to the facts in the DDR decision" (id.; see also,
Reply Br. 2 ("the focus of the claims is, among other components, an
Anticipate-Simplify-Learn engine that utilizes machine learning aspects and
determines how to direct or organize a non-human customer support
interface to reduce customer effort with said non-human interface."). But,
we can find nothing in the claim language that supports Appellants' position.
Claim 1 is directed to "[a] computer implemented method,
implemented in a computer system comprising a processor and memory, for
improving customer experiences in online commerce," and recites that the
method comprises "said processor applying predictive analytics to anticipate
customer needs through prediction of customer intent as said customer
interacts with a customer service system" (App. Br. 16 (Claims Appendix)).
The Specification does not provide a definition for the claimed "customer
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service system," and instead only describes a customer service system, by
way of example, as including a machine and/ or a human (see Spec. 4, 11. 21-
22 ("the customer interacts with a customer service system, e.g. machine
and/or human.")). Thus, claim 1 encompasses a customer interacting with a
human (e.g., a human customer service agent). Contrary to Appellants'
assertion, claim 1 does not recite "an online user interface," "a non-human
customer support interface," or any other "interface" for that matter.
We also cannot agree with Appellants that "[ c ]laim 1 does not recite a
mathematical algorithm" (App. Br. 11 ). As best understood, predictive
analytics, i.e., "said processor applying predictive analytics," as recited in
claim 1, refers to the use of statistical algorithms and mathematical
techniques to identify the likelihood of future outcomes, e.g., to predict
customer intent as the customer interacts with a customer service system.
This understanding also is consistent with Appellants' Specification, which
describes the claimed "engines" that comprise the claimed processor purely
in terms of mathematical models and algorithms. 4 And the law is clear that
4 See, e.g., Spec. 23, 11. 23-27 ("ASL engine 203 comprises an anticipation
engine 801, a simplification engine 802, and a learning engine 803. The
ASL engine 203 may also comprise a database for storing information that
relates to predictive analysis and modeling performed by the various engines
801, 802, and 803."); id. at 27, 11. 4--5 ("ASL engine 203 uses a customer
experience score to measure, compare, and improve models."). See also
e.g., id. at 5, 11. 20--23 ("Embodiments of the invention also incorporate a
predictive engine which compiles the data from the data warehouse and
organizes the data into clusters known as contributing variables.
Contributing variables are variables that have a statistically significant effect
on the data."); id. at 5, 1. 30--6, 1. 6 ("Contributing variables are calculated
according to whether the variable is a numerical or a categorical prediction.
Contributing variables for numbers are calculated using regression analysis
algorithms, e.g.[,] least squares, linear regression, a linear probability model,
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"a process that employs mathematical algorithms to manipulate existing
information to generate additional information [ e.g., a prediction] is not
patent eligible." Digitech Image Techs., LLC v. Elecs.for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014). See Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) ("Flook [i.e., Parker v. Flook, 437 U.S. 584 (1978)] stands
for the proposition that the prohibition against patenting abstract ideas
'cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment' or adding 'insignificant postsolution
activity."') (quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
Attempting to draw a further analogy with the claims held patent-
eligible in in Enfzsh, LLC v. Microsoft Corp., 822 F.3d. 1327 (Fed. Cir.
2016), Appellants argue that the claims are not directed to an abstract idea
because "the plain focus of the claims ... is on improvements to
computer/network functionality concerning how to facilitate and implement
a customer support system in online shopping" (Reply Br. 3). There is,
however, a fundamental difference between computer functionality
improvements, on the one hand, and the uses of existing computers as tools
to perform a particular task, on the other. Indeed, the Federal Circuit applied
this distinction in Enfzsh, in rejecting a § 101 challenge at the step one stage
in the Alice analysis, because the claims at issue focused on a specific type
nonlinear regression, Bayesian linear regression, nonparametric regression,
etc."); id. at 22 ("Embodiments of the invention use various statistical and
machine learning models to achieve these purposes."); id. at 24, 11. 15-18
("The modeling engine may use models such as Markov models of higher
orders combined with Neural Network, Support Vector machine,
Collaborative filtering, Sequential Pattern methods, Survival Analyses, and
similar tools.").
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of data structure, i.e., a self-referential table for a computer database,
designed to improve the way a computer carries out its basic functions of
storing and retrieving data, and not on asserted advances in uses to which
existing computer capabilities could be put. Id. at 1335-36.
We find no parallel between the present claims and the claims in
Enfzsh, nor any comparable aspect in the present claims that represents "an
improvement to computer functionality." The alleged advantage that
Appellants tout, i.e., "how to facilitate and implement a customer support
system in online shopping" (Reply Br. 3), does not concern an improvement
to computer capabilities but instead relates to an alleged improvement in
customer support for which a computer is used as a tool in its ordinary
capacity.
Rather than paralleling the claims in DDR Holdings or Enfzsh,
independent claim 1, in our view, is substantially similar to the claims that
the Federal Circuit determined were patent-ineligible in Electric Power
Group LLC v. Alstom, S.A., 830 F.3d 1350 (Fed. Cir. 2016). There, the court
held that the claims were directed to an abstract idea because "[ t ]he advance
they purport to make is a process of gathering and analyzing information of
a specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions." Electric
Power, 830 F.3d at 1354; see also id. at 1353-54 (characterizing collecting
information, analyzing information by steps people go through in their
minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas).
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Similarly here, we find that independent claim 1 involves nothing
more than collecting data (i.e., regarding customer interactions with a
customer service system) and analyzing the data (i.e., applying predictive
analytics to anticipate customer needs through prediction of customer intent
as said customer interacts with a customer service system)- without any
asserted inventive technology for performing these functions. For example,
there is no indication in the record that the operations called for in claim 1
require any specialized computer hardware or other inventive computer
components, or that the claimed invention is implemented using other than
generic computer components to perform the claimed method. In fact, the
Specification suggests just the opposite, i.e., that the claimed invention is
implemented using only generic computer components (see, e.g.,
Spec. 27, 1. 16-29, 1. 9 (describing the "Computer Implementation" of the
invention as including, inter alia, "any machine capable of executing or
transmitting a sequence of instructions that specify actions to be taken" and
"software, 1626 embodying any one, or all, of the methodologies described
herein ... ")), which is not enough for patent-eligibility. See DDR
Holdings, 773 F.3d at 1256 ("[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.").
Addressing the step two of the Mayol Alice framework, Appellants
argue that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because the pending claims, as a whole, amount
to significantly more than the alleged abstract idea when the claim features
are viewed as an ordered combination (Reply Br. 5, 8). Yet, to the extent
Appellants maintain that the claimed invention is patent-eligible, i.e., that
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the claims amount to "significantly more" than an abstract idea, and/or that
the recited features are not "well-understood, routine and conventional,"
because the claims are allegedly novel and/or non-obvious in view of the
prior art, 5 Appellants misapprehend the controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. Although
the second step in the Mayo/Alice 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 practice amounts to
significantly more than a patent upon the [ineligible concept] itself."' Alice
Corp., 134 S. Ct. at 2355. "Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the§ 101 inquiry." Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and
non-obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Diehr, 450 U.S. at 188-89
("The 'novelty' of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a claim
falls within the§ 101 categories of possibly patentable subject matter.").
Finally, we are not persuaded of Examiner error by Appellants'
argument that "the pending claims do not preempt the use of the alleged
5 See, e.g., Reply Br. 8 ("[A] single feature or combination of features that
are not well-known and conventional (e.g., are instead novel and non-
obvious) can amount to 'significantly more.' .... Applicant respectfully
posits that this is indeed the case here because the pending claims have
already been shown to be novel and non-obvious in view of the previously-
cited references.").
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abstract idea and instead specify a specific dynamic technique for creating an
online commerce support experience" (Reply Br. 8).
There is no dispute that the Supreme Court has described "the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354. But,
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ f]or this reason,
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) (citing Alice Corp., 134 S. Ct. at 2354). "[P]reemption may signal
patent ineligible subject matter, [but] the absence of complete preemption
does not demonstrate patent eligibility." Id.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection of claim 1, and claims 2-5, 9, 10, and 12-21, which
fall with claim 1.
Obviousness
Independent Claim 1 and Dependent Claims 2-5, 9, 10, and 12-14
Appellants argue claims 1-5, 9, 10, and 12-14 as a group (App. Br. 1,
5-14). We select independent claim 1 as representative. The remaining
claims stand or fall with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
We are not persuaded by Appellants' argument that the Examiner
erred in rejecting independent claim 1 under 35 U.S.C. § 103(a) because
Phillips, on which the Examiner relies, does not disclose or suggest "a
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simplification engine for analyzing and identifying best possible customer
engagement modes by implementing an intuitive customer experience in a
dynamic manner through real-time analysis," as recited in claim 1 (App.
Br. 13-14).
Phillips is directed to experimentation and optimization of the
delivery of content to users within a digital network, such as the Internet
(Phillips ,r 2). For example, Phillips discloses that "an on-line retailer might
test the effectiveness of different headlines and benefit statements in on-line
advertising" (id. ,r 3). To achieve this optimization, Phillips discloses "a
computer system for coordinating the systematic variation of content
delivered to users via a digital data network during interactive sessions
between the users and a plurality of external content systems" (id. ,r 7). The
computer system includes "a model engine that identifies the degree to
which the variations influence the behaviour of users" and uses "the
predicted likelihood of future actions by users in response to variations to
determine the variations that are optimal for a predetermined outcome" (id.).
Phillips teaches that the invention can be used with various types of external
content systems including "websites, portals, ad servers, advertising
networks, video servers, CRM systems, business intelligence systems, web
analytics platforms, content management systems and search engine system"
(id. ,r 6), and that the invention is widely applicable and "can be used to
optimize delivery of content to anyone who is presented digital content" (id.
Appellants argue that there is a fundamental difference between the
claimed invention and Phillips in that Phillips is concerned with testing sets
of content elements, i.e., treatments, during a series of experiments to
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optimize the content that is then presented to users whereas "in the subject
invention, a model is applied in real time to a user to modify the user's
experience in real time" (App. Br. 13). Therefore, according to Appellants,
the Phillips model engine "cannot generate the customer experience in a
'dynamic manner through real-time analysis' as claimed" because it "is
dependent on received data from the experiment engine" (id. at 14).
Responding to Appellants' argument in the Answer, the Examiner
cites paragraphs 38, 55, 199, and 201 of Phillips as disclosing "improving of
the customer's experience through the tracking and analyzing the effects of
real-time data that includes: viewers, historical users, user interactions, and
user behaviors" (Ans. 6).
Appellants offer no substantive arguments to rebut the specific
underlying factual findings made by the Examiner. For example,
Appellants, in the Appeal Brief, do not address paragraph 55 of Phillips,
which discloses "a systematic approach for the design and development of
interactive communication to optimize, enhance, or otherwise improve, for
example, ... customer service, ... electronic commerce, or any other
application which can benefit from real-time customization of content 15"
( emphasis added). And Appellants do not respond to the Examiner's
findings in the Reply Brief; instead Appellants assert "that the remarks
contained in Appellant's [sic] [Appeal] brief are sufficient on the§ 103
issues" (Reply Br. 9).
In the absence of a more detailed explanation, we are not persuaded of
error on the part of the Examiner. See In re Jung, 637 F.3d 1356, 1365
(Fed. Cir. 2011) ("[I]t has long been the Board's practice to require an
applicant to identify the alleged error in the examiner's rejections")
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( citing Ex Parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential)
("The panel then reviews the obviousness rejection for error based upon the
issues identified by appellant, and in light of the arguments and evidence
produced thereon.")).
Therefore, we sustain the Examiner's rejection of claim 1 under
35 U.S.C. § 103(a). We also sustain the rejection of claims 2-5, 9, 10, and
12-14, which fall with claim 1.
Dependent Claims 15-21
Appellants do not present any response to the Examiner's rejection of
claims 15-21 under 35 U.S.C. § 103(a). Therefore, we summarily sustain
the Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-5, 9, 10, and 12-21 under
35 U.S.C. § 101 is affirmed.
The Examiner's rejections of claims 1-5, 9, 10, and 12-21 under
35 U.S.C. § 103(a) are affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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