Ex Parte Klemm et al

Patent Trial and Appeal Board

Sep 13, 2018

13789160 (P.T.A.B. Sep. 13, 2018)

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:yhe1j