Ex Parte Kolegayev et al

Patent Trial and Appeal Board

Sep 17, 2018

14066808 (P.T.A.B. Sep. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/066,808 10/30/2013
29973 7590 09/19/2018
Shutts & Bowen LLP
ATTN: STEVEN M. GREENBERG, ESQ.
525 Okeechobee Blvd
Suite 1100
West Palm Beach, FL 33401
FIRST NAMED INVENTOR
Dmitriy Kolegayev
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.
1301-025U 4808
EXAMINER
KNOX, TYLER W
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
09/19/2018 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):
docketing@crgolaw.com
sgreenberg@shutts.com
aschneider@crgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DMITRIY KOLEGA YEV and SHAJI SARAN GAD HARAN
Appeal2017-002068
Application 14/066,808
Technology Center 3600
Before HUNG H. BUI, JON M. JURGOVAN, and MICHAEL M. BARRY,
Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-17, which are all the pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify SugarCRM, Inc. as the real party in interest.
App. Br. 2.
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Application 14/066,808
Introduction
Appellants' disclosed and claimed invention is for "AUTOMATION
OF CUSTOMER RELATIONSHIP MANAGEMENT (CRM) TASKS
RESPONSIVE TO ELECTRONIC COMMUNICATIONS." Title; see also
Spec. ,r 2. The invention automates CRM tasks by determining a message
context, such as the sender, the time of transmission, or the subject of the
message, and then "monitoring a set of manual operations performed by an
end user in a CRM application." Abstract, Spec. ,r 15. The manual
operations are grouped into an automated task, and a rule associating the
automated task with the context is stored. Abstract. In response to detecting
receipt of a new message, its context is matched to the rule and the
automated task is triggered. Id.
Claim 1 is representative of the claims on appeal:
1. A method of automating customer relationship
management (CRM) tasks responsive to inbound and outbound
messages, the method comprising:
determining a context for a message;
monitoring a set of manual operations performed by an
end user in a CRM application subsequent to the determination
of the context of the message;
grouping the set of manual operations into an automated
task for the CRM application;
storing a rule associating the automated task with the
context; and,
responsive to detecting receipt of a new message,
matching a context for the new message to the rule and
triggering the automated task associated with the rule.
App. Br. 22 (Claims App'x).
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Re} ections & References
Claims 1-17 stand rejected 35 U.S.C. § 101 as directed to a judicial
exception (i.e., an abstract idea) without reciting significantly more. Final
Act. 7-11.
Claims 1-3, 5-8, 10-14, 16, and 17 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Malyshev (US 2012/0197907 Al; Aug. 2, 2012)
and Microsoft Office Professional Plus 2010 ( screen shots from Microsoft
Outlook for "Create Rule," "Select Context for Rule," "Select Automated
Tasks for Rule, Triggered by Previously Selected Context," "Manually
Name, Tum On, and Store Rule," "Access Stored Rule," "View Stored
Rule," and "Manual Enhancements") (hereafter "Microsoft Outlook"). Final
Act. 12-26.
Claims 4, 9, and 15 stand rejected under§ 103 as unpatentable over
Malyshev, Microsoft Outlook, and Fabre (US 2005/0198158 Al; Sept. 8,
2005). Final Act. 26-30.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
contentions of reversible error. We disagree with Appellants' conclusions.
Instead, as consistent with our discussion below, we adopt the Examiner's
findings and reasons as set forth in the Final Office Action from which this
appeal is taken and as set forth in the Answer. We highlight the following
for emphasis.
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The§ 1 OJ Rejection
The Supreme Court has set forth an analytical "framework 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. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine
whether the claims at issue are "directed to" a judicial exception, such as an
abstract idea. Alice, 134 S. Ct. at 2355. If we determine they are not, then
the inquiry ends. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed.
Cir. 2016). If we determine they are, then we consider under step two
whether the claims contain an "inventive concept" sufficient to "'transform
the nature of the claim' into a patent-eligible application." Alice, 134 S. Ct.
at 2355 (quotations and citation omitted).
In considering whether a claim is directed to an abstract idea, we
acknowledge, as did the Court 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. Noting that the two stages involve
"overlapping scrutiny of the content of the claims," the Federal Circuit has
described "the first-stage inquiry" as "looking at the 'focus' of the claims,
their 'character as a whole,"' and "the second-stage inquiry (where
reached)" as "looking more precisely at what the claim elements add-
specifically, whether, in the Supreme Court's terms, they identify an
'inventive concept' in the application of the ineligible matter to which (by
assumption at stage two) the claim is directed." Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Therefore, we look to
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whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery. See
Enfish, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Appellants argue claims 1-17 together as a group, see App. Br. 4--18,
and we select claim 1 as representative, see 37 C.F.R. § 4I.37(c)(l)(iv). The
Examiner determines the claims are "directed toward automating user
actions with rules-based tasks triggered by correspondence context," and
concludes this amounts to an abstract idea in view of Federal Circuit
precedent. Final Act. 8, 9 ( citing SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 F. App'x 950 (2014) and Alice, 134 S. Ct. at 2347.
We agree with the Examiner.
Appellants argue the Examiner errs, contending the description of the
claim is at too high of a level of abstraction. App. Br. 5-10. Appellants
contend that, consistent with Enfish, the combined limitations are directed to
a patent-eligible "process driven improvement to the functionality of a
computer" rather than to an ineligible idea. App. Br. 9. This argument is
unpersuasive. Appellants do not persuade us that the focus of steps of claim
1 is directed to computer technology-as discussed below, the claim recites
nothing more than routine computer technology limitations in furtherance of
the abstract idea.
The first-recited limitation of claim !-"determining a context for a
message"-is a broadly recited function or activity that humans routinely
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perform (e.g., determining the sender of the message). This constitutes a
basic abstract idea.
Similarly, the second-recited step of "monitoring a set of manual
operations performed by an end user in a CRM application" is a broadly
recited, high-level activity that a human may perform. For example, it is
routine for a manager of call center agents to observe (monitor) an agent in
the performance of his or her tasks. This step by itself also constitutes an
abstract idea.
The third-recited step of "grouping the set of manual operations into
an automated task" is plainly directed to an abstract idea-i.e., the idea of
automating manual operations.
The fourth-recited step, "storing a rule associating the automated task
with the context," is a type of high-level computer functionality that our
instructing court has identified also to be an abstract idea. For example, in
SmartGene, the Federal Circuit found that limitations requiring stored rules
for an automated expert system that involved a mental process did not render
a claim to the expert system non-abstract or otherwise patent eligible. 555 F.
App'x at 955. Similarly, in Accenture Global Services, GmbH v. Guidewire
Software, Inc., the court found a computerized system for "generating tasks
[based on] rules ... to be completed upon the occurrence of an event" was
directed to an abstract idea. 728 F.3d 1336, 1344 (Fed. Cir. 2013); see also
id. at 1338 (claim at issue specifically reciting "a task library database for
storing rules for determining tasks to be completed upon an occurrence of an
event").
Finally, the fifth-recited step, "responsive to detecting receipt of a new
message, matching a context for the new message to the rule and triggering
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the automated task associated with the rule," broadly requires starting the
matching task when a new message comes in. This fifth step is directed to
the fundamental idea of determining what to do when a message comes in
and then starting to do it (i.e., "triggering the [] task associated with the
rule"). The claimed "message" is very broad (although Appellants'
preferred embodiments in Specification are directed to email messages,
claim 1 is not so limited----e.g., in a CRM system, a message can be voice
input from a caller). The recited "context" similarly is very broad ( e.g., it
can be who the message is from, or the time of day, etc. (see Spec. 15)).
The abstract idea to which claim 1 is directed, i.e., the focus of
claim !-"automating user actions with rules-based tasks triggered by
correspondence context"-is, in essence, a combination of these underlying
abstract ideas. "Adding one abstract idea ... to another abstract idea ...
does not render the claim non-abstract."). See RecogniCorp, LLC v.
Nintendo Co. LTD., 855 F.3d 1322, 1327 (Fed. Cir. 2017); see also
Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) (patent-ineligible claims were directed to a combination of abstract
ideas).
Appellants argue that, under the precedent of Enfish, claim 1 is
directed to patent-eligible subject matter. See App. Br. 8-1 O; Reply Br. 2.
We disagree. In Enfish, the claims at issue were found to be "directed to a
specific improvement to the way computers operate, embodied in [a] self-
referential table." 822 F.3d at 1336. Although Appellants' Specification
explains that the "invention may take the form of an entirely hardware
embodiment, an entirely software embodiment ... or an embodiment
combining software and hardware" (Spec. ,r 22), unlike the claim in Enfish,
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Appellants' claim 1 is not directed to any new or improved software
technology to carry out the recited steps-it is not directed to a software
feature that is "a specific improvement to the way computers operate." In
other words, although implementation of Appellants' claim 1 is directed to
functional aspects that may be implemented in software, unlike Enfish, it is
not directed to any specific software technology feature.
Accordingly, we agree with the Examiner that, looking at claim 1 's
limitations individually and as a whole, the claim is directed to an ineligible
abstract idea. Final Act. 7-10; Ans. 2-10. Thus, we proceed to step two.
Step Two: Whether the Claims Recite "Significantly More" than the
Patent Ineligible Concept.
In the second step of the Alice analysis, the Examiner determines that
claim 1 does not recite significantly more than the abstract idea to which it is
directed, similar to the "steps and structure of SmartGene." Final Act. 10.
The Examiner finds the limitations related to computer technology "require
only generic computer components executing generic functions previously
and well-known to those of ordinary skill in the art of electronically
receiving, correlating, and generating rules for to process data limited to a
business field of use. This lacks improvement to the functioning of the
claimed machine itself." Final Act. 11. We agree.
Appellants argue the Examiner errs, contending that precedent such as
Ex parte Starbuck, Appeal No. 2010--007936, 2013 WL 5400174 (PTAB
2013) and DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014) are analogous cases, compelling a determination that claim 1 is
directed to patent-eligible subject matter. See App. Br. 12-18; see also
Reply Br. 3--4. We disagree.
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In Ex parte Starbuck, this Board determined that a claim reciting "a
message parsing component that identifies features relating to at least a
portion of origination information of a message" and "a feature pairing
component that combines the features into useful pairs, the features of the
pairs are evaluated for consistency with respect to one another" recited more
than a patent-ineligible concept. Starbuck, 2013 WL 5400174 at *2-5. The
claim at issue in that Starbuck was similar to the claim in Enfish-in both
cases, the claims were directed to specific, improved software technology
features. Here, by contrast, although implementation of Appellants' claim 1
is directed to functional aspects that may be implemented in software, unlike
Starbuck and Enfish, claim 1 is not directed to any specific software
technology feature.
In DDR Holdings, the Federal Circuit found claims at issue were not
directed to an abstract idea because they were directed to "a challenge
particular to the Internet," and were "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." 773 F.3d at 1257. Here, however, automating
message handling is not a challenge particular to computer networks.
Rather, it is routine automation of an abstract idea using generic computer
components. It is not the type of claim that is "necessarily rooted in
computer technology." See Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015) ("[r]equiring the use of a
'software' 'brain' 'tasked with tailoring information and providing it to the
user' provides no additional limitation beyond applying an abstract idea,
restricted to the Internet, on a generic computer"). Even assuming arguendo
that the automation in claim 1 can qualify as challenge related to
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computerized technology, we are not persuaded claim 1 is directed to
achieving a result that overrides the routine and conventional use of the
recited devices and functions. See Ultramercial, Inc. v. Hulu, LLC, 772 F .3d
709, 715-18 (Fed. Cir. 2014).
Appellants further argue that claim 1 is patent eligible because it is "a
very specific process of five steps" and recites "how the innovative concept
is achieved without foreclosing other ways of solving the problem." App.
Br. 17, 18; see also Reply Br. 3--4. This argument-that claim 1 recites
significantly more than an abstract idea because it does not preempt all ways
of carrying out the idea-is unpersuasive. To be sure, the Supreme Court
has described "the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre-
emption." See Alice, 134 S. Ct. at 2354. However, characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the test for patent eligibility. As our reviewing
court has explained: "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, 134 S. Ct. at 2354). Thus,
although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility." Id.
Thus, having considered all of Appellants' arguments, see App. Br. 4--
18; Reply Br. 2--4, we are unpersuaded of Examiner error, and we sustain
the § 101 rejection of claim 1 and of claims 2-17, which Appellants argue
together with claim 1.
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The§ 103 Rejections
In rejecting claim 1, the Examiner finds the combined disclosures of
Malyshev and Microsoft Outlook teach "monitoring a set of manual
operations performed by an end user in a CRM application subsequent to the
determination of the context of the message," as recited. Final Act. 13-14
(citing Malyshev ,r,r 99, 101, 129), 15-17 (citing Microsoft Outlook Exhs.
1-7). Appellants argue the Examiner errs because "[p]lainly absent in
Malyshev ... is the claimed notion of monitoring of a set of manual
operations performed by an end user in a CRM application subsequent to the
determination of the context of a message." App. Br. 21 ( emphasis added).
Appellants further argue "it is plainly absent in Malyshev that any grouping
of manual operations into an automated task occurs in response to the
monitoring." Id. ( emphasis added). This argument is unpersuasive.
Appellants' argument focuses on the disclosure of Malyshev while
ignoring the disclosure of Microsoft Outlook. See App. Br. 19-21. We
agree with the Examiner's response----one cannot show nonobviousness by
attacking references individually when the rejection is based on a
combination of references. Ans. 12; In re Merck & Co. Inc., 800 F.2d 1091,
1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,425 (CCPA 1981). The
Examiner specifically does not rely on Malyshev for teaching manual
operations, see Final Act. 13 ( striking through the word "manual" in the
finding that Malyshev teaches "monitoring a set of manual operations"),
15 ( explaining "Malyshev does not explicitly teach manual operations").
Instead, the Examiner relies on Microsoft Outlook for teaching the claim
feature of manual operations. See Final Act. 15. The Examiner's rejection
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explained that the combination of Malyshev and Microsoft Outlook, not
Malyshev alone, teaches monitoring manual operations. See Final Act. 16-
17 ( "At the time of the invention it would have been obvious for one of
ordinary skill in the art to modify the monitoring of automatic operations in
a CRM application as taught by Malyshev with the manual rule creation
operations as taught by MICROSOFT.") (citing Malyshev ,r 101; Microsoft
Outlook Exhs. 1, 7 for why the ordinarily skilled artisan would have been
motivated to combine the relevant teachings of the two references).
Appellants contend in reply that the Examiner's Answer contradicts
the Examiner's rejection. See Reply Br. 5-7. Having reviewed the Answer
and the rejection, we disagree. See Final Act. 12-17; Ans. 12.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection of
claim 1, and the rejections of claims 2-17, for which Appellants offer no
separate arguments.
DECISION
For the above reasons, we affirm the 35 U.S.C. §§ 101 and 103
rejections of claims 1-17.
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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