Ex Parte Klemm et alDownload PDFPatent Trial and Appeal BoardSep 13, 201813789160 (P.T.A.B. Sep. 13, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/789, 160 03/07/2013 145139 7590 09/17/2018 ServiceNow c/o Fletcher Yoder PC P.O. Box 692289 Houston, TX 77269 FIRST NAMED INVENTOR Reinhard P. Klemm 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. SNPA:0900CIP 5612 EXAMINER BAHL, SANGEETA ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 09/17/2018 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): docket@fyiplaw.com hill@fyiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte REINHARD P. KLEMM and SHMUEL SHAFFER Appeal2017-006682 Application 13/789,160 1 Technology Center 3600 Before ST. JOHN COURTENAY III, LARRY J. HUME, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 25--45, which are all of the claims pending in this application. Claims 1-24 are cancelled. Final Act. 2. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 According to Appellants, the real party in interest is Avaya, Inc. App. Br. 2. Appeal2017-006682 Application 13/789,160 INVENTION Appellants' application relates to providing customer service and particularly to a system and method for providing personalized customer service utilizing contact center technology. Spec. ,r 3. Claim 25 is illustrative of the appealed subject matter and reads as follows: 25. A system for customized routing of a customer service request to an agent terminal of an enterprise, comprising: a memory device storing executable instructions, and a processor in communication with the memory device, wherein the processor when executing the executable instructions: receives the customer service request from a user terminal, the user terminal associated with a user; determines if information related to preferences of the associated user is available based at least partially on user defined permissions stored in a memory of the user terminal; retrieves first user data from one or more social media sources as permitted by user defined access rights stored in the memory of the user terminal; retrieves preference data about the associated user stored in the memory of the user terminal; selects one agent terminal from among a plurality of agent terminals of the enterprise based at least in part on the first user data and the preference data; and establishes a communication session between the one agent terminal and the user terminal. REJECTIONS Claims 25--45 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception to patentable subject matter, without significantly more. Final Act. 3-6. Claims 33 and 43 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Final Act. 6-7. 2 Appeal2017-006682 Application 13/789,160 Claims 25-28, 31-38, and 41--45 stand rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Kumar et al. (US 2010/0027778 Al; published Feb. 4, 2010) ("Kumar") and Schoeneberger et al. (US 2004/0141508 Al; July 22, 2004) ("Schoeneberger"). Final Act. 8-18. Claims 29 and 39 stand rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Kumar, Schoene berger, and Lenard (US 7,023,980 B2; April 4, 2006). Final Act. 18-19. Claims 30 and 40 stand rejected under 35 U.S.C. § I03(a) as unpatentable over the combination of Kumar, Schoene berger, and Brand et al. (US 7,088,813 Bl; Aug. 8, 2006). Final Act. 20-21. ANALYSIS Rejection of Claims 33 and 43 under 35 US. C. § 112, First Paragraph The Examiner rejected claims 33 and 43 for lack of written description because the Specification fails to support the recited limitation "determine a target response time to handle the received customer service request based on one or more of the first user data or the preference data." Final Act. 7. In particular, the Examiner found the "Specification is silent regarding determining a target response time and how the first user data or preference data is used to determine a target response time." Id. Appellants contend the Examiner erred because the disputed "target response time" limitation is supported by paragraph 68 of the Specification. App. Br. 23; Reply Br. 4. We agree. Paragraph 68 specifically describes that the social media manager may map the user's data to actions such as a response time. Spec. ,r 68. We agree with Appellants that such disclosure is 3 Appeal2017-006682 Application 13/789,160 sufficient to show possession at the time of invention of a target response time. See Reply Br. 4. Accordingly, we do not sustain the Examiner's rejection of claims 33 and 43 under 35 U.S.C. § 112, first paragraph, for lack of written description. Rejection of Claims 25-45 under 35 US.C. § 101 With regard to whether the claims are directed to patentable subject matter, Appellants contend the Examiner erred in concluding the claims are directed to an abstract idea without significantly more. App. Br. 12. In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice. Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356. If the claim is "directed to" a patent-ineligible abstract idea, we then consider the elements of the claim-both individually and as an ordered combination-to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. This is a search for an "inventive concept"-an element or combination of elements sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself. Id. (internal quotations and citation omitted). In step one of the Alice analysis, the Examiner concluded claims 25- 45 are directed to comparing new and stored information and using rules to 4 Appeal2017-006682 Application 13/789,160 identify options ( citing Smart gene) and using categories to organize, store and transmit information ( citing C:yhe1jCopy with citationCopy as parenthetical citation