Ex Parte Livne et alDownload PDFPatent Trial and Appeal BoardAug 14, 201813282047 (P.T.A.B. Aug. 14, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/282,047 10/26/2011 49443 7590 08/16/2018 Pearl Cohen Zedek Latzer Baratz LLP 1500 Broadway 12th Floor New York, NY 10036 FIRST NAMED INVENTOR Eshai Livne 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. P-79279-US 9865 EXAMINER KONERU, SUJAY ART UNIT PAPER NUMBER 3624 NOTIFICATION DATE DELIVERY MODE 08/16/2018 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): USPTO@PearlCohen.com Arch-USPTO@PearlCohen.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ESHAI LIVNE, YIZHAR RONEN, BRENDA KAY HANSEN, and PAUL HAROLD LEAMON Appeal2016-007553 1 Application 13/282,0472 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and ROBERT J. SILVERMAN, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL 1 Our decision references Appellants' Appeal Brief ("App. Br.," filed March 15, 2016) and Reply Brief ("Reply Br.," filed August 4, 2016), and the Examiner's Answer ("Ans.," mailed July 14, 2016) and Final Office Action ("Final Act.," mailed February 19, 2016). The record includes a transcript ("Tr.") of the July 26, 2018 oral hearing. 2 Appellants identify NICE Systems Limited and its wholly owned subsidiary, IEX Corporation, as the real parties in interest. App. Br. 1. Appeal2016-007553 Application 13/282,047 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 1, 3-5, 7, 10, and 11. We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on July 26, 2018. We AFFIRM. CLAIMED INVENTION Appellants' claimed invention "relates generally to computer- implemented monitoring of agent performance within an enterprise ( e.g., back office) workplace environment" (Spec. 1, 11. 7-8). Claim 1, reproduced below, is the sole independent claim on appeal, and representative of the claimed subject matter: 1. A computer-implemented method for monitoring applications in use on a computer during implementation of a process, the method comprising: receiving, by the computer, one or more processes, each process of the one or more processes comprising one or more tasks to be completed with one or more applications on the computer; assigning, by the computer, a unique process identifier to each of the one or more tasks of the same process; determining, by the computer, for every application opened and closed on the computer, an application start time based on a time when a task executing within an application starts, an application stop time based on the time when the task executing within the application stops, an application hold time indicates a first time duration over which the task executing with the application is not active , an idle time indicates a second time duration over which the computer is idle, a lock time indicates a third time duration over which the computer is locked, and a corresponding task of the one or more tasks the application is opened to execute; 2 Appeal2016-007553 Application 13/282,047 determining, by the computer, for each of the one or more tasks, a task handle time by i) summing a corresponding hold time, idle time and lock time, ii) differencing a corresponding application start time and, and [sic] a corresponding application stop time, and iii) differencing the result of ii) with the result of i) and determining, by the computer, for each of the one or more processes, an overall process handle time by aggregating the handle time for each of the one or more tasks that have equivalent process identifiers; and directing, by the computer, the data processing system to provide a workforce management computing system the handle times for the one or more tasks, the overall process handle time, or both, to facilitate an improved operation of the management system. REJECTI0N3 Claims 1, 3-5, 7, 10, and 11 are rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. ANALYSIS 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. The Supreme Court, however, has long interpreted§ 101 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 3 The Examiner has withdrawn the rejection of claim 1 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. See Ans. 3. 3 Appeal2016-007553 Application 13/282,047 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)). In rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that the claims are directed to assessing an employee's performance by measuring the employee's time on various tasks - an activity that the Examiner opined could be performed with a stopwatch or a clock (Final Act. 3)- and, therefore, directed to a method for organizing human activities, i.e., an abstract idea, "because the tasks that are timed are a type of human activities and identifying the handle times and improving 4 Appeal2016-007553 Application 13/282,047 tasks based on such data is a type of organization of the human activities" (id. at 4). The Examiner further determined that the claims are "strongly related to a mathematical relationship as the claims heavily involve making a determination based on summing, differencing and aggregating data" and that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception itself (id. at 4--5). Appellants maintain that the claims cannot be fairly characterized as directed to a method of organizing human activity because "it is not realistic that the claimed invention can be executed by a human" (App. Br. 5). Yet, the courts have not limited use of the phrase "methods of organizing human activity" in subject matter-eligibility jurisprudence to methods that can be executed by a human. Instead, the courts have used the phrase to describe "concepts relating to interpersonal and intrapersonal activities, such as managing relationships or transactions between people, social activities, and human behavior; satisfying or avoiding a legal obligation; advertising, marketing, and sales activities or behaviors; and managing human mental activity." See Manual of Patent Examining Procedure ("MPEP") § 2106.04(a)(2)(II) (9th ed., Rev. 8, Jan. 2018) (collecting cases). Here, the Examiner determined that the claims can be considered a type of organizing human activity because the tasks being timed are a type of human activity, and the claims involve the management of such tasks based on an analysis of the time information, which the Examiner concluded can be considered a type of organizing (see Final Act. 4; see also Ans. 4). We are not persuaded that the Examiner's position is unreasonable or otherwise unsupported. 5 Appeal2016-007553 Application 13/282,047 We also are not persuaded of Examiner error to the extent that Appellants argue that the claims are automatically patent-eligible and/or necessarily rooted in computer technology because the "claimed invention solves a problem that only arises out of [the] use of a computer" (App. Br. 6). Whether it would be "feasible" to perform the method using "a stopwatch or a clock," as the Examiner suggests, also is beside the point (id. at 5---6). Although a method that can be performed mentally or manually by a human, e.g., using pen and paper, "is merely an abstract idea and is not patent-eligible under§ 101," CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011), it does not logically follow that methods that arguably cannot be performed by a human, i.e., methods that require computer implementation, are, therefore, not directed to abstract ideas. See Alice Corp., 134 S. Ct. at 2359 ("use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions" is not an inventive concept)). Appellants argue that, like the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), Appellants' claimed invention is necessarily rooted in computer technology to overcome a problem (i.e., tracking employee activity) specifically arising in the realm of computers (App. Br. 7; see also Reply Br. 6 (arguing that the ordered combination of claim limitations "addresses and is tied to a problem only arising in computer operations" and describing the problem to be solved as "determining application usage" and the solution as "collecting data essentially hidden from human perception and performing calculations on that data")). Yet, unlike the situation in DDR Holdings, it is unclear to us how tracking, i.e., monitoring, employee activity is "necessarily rooted in 6 Appeal2016-007553 Application 13/282,047 computer technology" or otherwise tied to a "problem only arising in computer operations." Workforce management, e.g., tracking employee activity for use in forecasting staffing needs and scheduling and balancing workload, existed before and still exists outside of computer technology. And, unlike the situation in DDR Holdings, there is no indication here that a computer is used other than in its normal, expected, and routine manner, e.g., for receiving, processing, and transmitting information. Appellants further argue that the claims are patent-eligible because claim 1 "effect[ s] and [sic] improvement in another technology, namely a workforce management system" (App. Br. 8). Yet, the focus of claim 1 is not on the improvement of any technology or technical field, but rather on implementation of the abstract idea itself, i.e., monitoring the time an employee takes to complete various tasks. Indeed, the Specification supports this view, disclosing that the claimed invention relates to "computer-implemented monitoring of agent performance within an enterprise ( e.g., back office) workplace environment" (Spec. 1, 11. 7-8) ); that desktop application monitoring is implemented "so that back office managers can obtain an accurate view of the time employees take to complete tasks that are required to complete one or more defined business processes" (id. at 2, 11. 10-13); and that activity monitoring "enable[s] an enterprise to address back office operational inefficiencies that are exposed by the data" (id. at 3, 11. 5-7). It appears clear, when considered in light of the Specification, that rather than teaching a technical solution to a problem "that only arises out of use of a computer" (App. Br. 6), the focus of the claimed invention is on achieving a business objective (i.e., ensuring that back office managers have 7 Appeal2016-007553 Application 13/282,047 an accurate view of the time employees take to complete tasks that are required for one or more defined business processes), and not on any claimed means for achieving this objective that improves technology. Responding to the Examiner's Answer in the Reply Brief, Appellants argue that the claims cannot be characterized as an abstract idea because, as in Enfzsh, the present "claims are directed to a specific implementation of a solution to a problem in the software arts" (Reply Br. 4 ( citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)). Yet, Appellants do not identify the problem in the software arts that the claims allegedly solve. We also find nothing from our review of the Specification that attributes any particular improvement in the software arts to the claimed invention nor any indication that the present claims, like those in Enfzsh, are directed to a specific improvement in the way computers operate rather than to an alleged improvement in workforce management for which a computer is used as a tool in its ordinary capacity. Appellants argue that the "present claims, even if describing a process operating on a generic computer, describe a patent-eligible way of manipulating data" (Reply Br. 5). And Appellants point to the "determining" steps recited in claim 1, which Appellants assert are a "complex set of tasks" that are "active parts of a computer's operation, and cannot be considered abstract" (id.). But, Appellants do not explain how the claimed operations are technically performed such that they are not routine, conventional functions of a generic computer. For example, we find no indication in the Specification, nor do Appellants point us to any indication, that the particular operations recited in claim 1 require any specialized computer hardware or inventive computer components, invoke any 8 Appeal2016-007553 Application 13/282,047 assertedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform the claimed method steps. To the contrary, it is clear from the Specification, as the Examiner observes, that no more than generic computer components are required (see Ans. 4 (citing Spec. 7-9)). Citing Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018) and the Office's April 19, 2018 Memorandum, "Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)," 4 Appellants asserted at oral argument that the Examiner has not met the evidentiary burden, required by Berkheimer, of proving conventionality, i.e., that the Examiner has not provided evidence that the additional elements in the claim, beyond the abstract idea, are well-understood, routine, and conventional (see Tr. 13-15). Appellants ostensibly base their argument on the following statement in the February 19, 2016 Office Action from which this appeal is taken: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements such as using a computer to implement steps of the process, where the tasks analysis is analysis of applications on a computer such as idle time of an application and locked time of a computer, directing a data processing system to facilitate an improved operation of the management system do not recite anything that is beyond conventional and routine use of computers and the additional limitations are for mere data gathering, data transformation and extra solution activity or are merely an extension of the abstract idea. 4 Available at https://www.uspto.gov/sites/default/ files/documents/memo- berkheimer-20180419 .pdf. 9 Appeal2016-007553 Application 13/282,047 Final Act. 4--5. But, contrary to Appellants' suggestion, the Examiner did not find that the claimed summing and differencing steps themselves - i.e., "i) summing a corresponding hold time, idle time and lock time"; "ii) differencing a corresponding application start time and a corresponding application stop time"; and "iii) differencing the result of ii) with the result of i) and determining, by the computer, for each of the one or more processes, an overall process handle time by aggregating the handle time for each of the one or more tasks that have equivalent process identifiers" - are well-understood, routine, and conventional. Instead, the Examiner observed that these steps "do not recite anything that is beyond [the] conventional and routine use of computers" (Final Act. 4--5). In other words, the steps require no more than generic computer components performing generic computer functions - an observation wholly consistent with the Specification (see Spec. 7-10). Although Appellants contend otherwise, we also are not persuaded that the facts in McRO are sufficiently analogous to the present facts to control the outcome here (see Tr. 3, 11, 15-16). In McRO, the court determined that the claim was not directed to an abstract idea, and was patent-eligible under 35 U.S.C. § 101 where the claim "focused on a specific asserted improvement in computer animation" of facial expressions made during speech and where "incorporation of the claimed rules, not the use of the computer ... 'improved [the] existing technological process' by allowing the automation of further tasks." McRO, 837 F.3d at 1314. The court emphasized that the automation went beyond, for example, merely "organizing [existing] information into a new form." Id. at 1315 (internal quotes and citation omitted). Instead, the claim used limited rules in a 10 Appeal2016-007553 Application 13/282,047 process specifically designed to achieve an improved technological result in conventional industry practice. Id. at 1316. In this sense, McRO is akin to DDR Holdings, Enfish, and similar decisions which have held claims patent- eligible where the claimed invention provided a technological improvement in industry practice. See DDR Holdings, 773 F.3d at 1257 (holding that claims reciting computer processor for serving "composite web page" were patent eligible because "the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks"); Enfish, 822 F.3d at 1338 (holding that claims directed to self-referential table for computer database were patent eligible because claims were directed to an improvement in the functioning of a computer); Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims directed to "an improved computer memory system" having many benefits were patent eligible). In contrast here, the present claims collect data, manipulate that data, and provide an output. Appellants do not persuasively argue that the claims provide any improvement in technology or that they improve the functionality of the computer itself. Instead, although Appellants argue that the claims interact directly with a computer, with applications on a computer, and with details of the operations of these applications and of the computer, e.g., idle time, lock time, etc., (see, e.g., Tr. 16), the computer is ultimately being used for a standard computing function: computation. The claims at issue here are, thus, most akin to claims directed to gathering data, computing, and displaying results, which are not patent-eligible. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (holding claims directed to "a process of gathering and analyzing 11 Appeal2016-007553 Application 13/282,047 information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions" were not patent eligible); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (holding that claims were not patent eligible because they were "directed to the abstract idea of collecting, displaying, and manipulating data"). We are not persuaded, on the present record, that the Examiner erred in rejecting claims 1, 3-5, 7, 10, and 11 under 35 U.S.C. § 101. Therefore, we sustain the Examiner's rejection. DECISION The Examiner's rejection of claims 1, 3-5, 7, 10, and 11 under 35 U.S.C. § 101 is 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 12 Copy with citationCopy as parenthetical citation