Ex Parte MesserDownload PDFPatent Trial and Appeal BoardNov 17, 201711943221 (P.T.A.B. Nov. 17, 2017) Copy Citation United States Patent and Trademark Office 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/943,221 11/20/2007 Martin Messer 05220.995 (L945) 3067 14400 7590 11/17/2017 LOWENSTEIN SANDLER LLP / Red Hat Patent Docket Administrator One Lowenstein Drive Roseland, NJ 07068 EXAMINER GART, MATTHEW S ART UNIT PAPER NUMBER 3623 MAIL DATE DELIVERY MODE 11/17/2017 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARTIN MESSER Appeal 2016-000868 Application 11/943,221 Technology Center 3600 Before BIBHU R. MOHANTY, MICHAEL W. KIM, and AMEE A. SHAH, Administrative Patent Judges. MOHANTY, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellant seeks our review under 35 U.S.C. § 134 of the final rejection of claims 1—20 which are all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF THE DECISION We AFFIRM. Appeal 2016-000868 Application 11/943,221 THE INVENTION The Appellant’s claimed invention is directed to systems and methods for technical support (Spec., para. 2). Claim 1, reproduced below, is representative of the subject matter on appeal. 1. A method comprising: tracking, by a processing device, an amount of technical assistance requests handled by each of a plurality of technical groups, each of the plurality of technical groups to process technical assistance requests relating to technical issues of different types; receiving a request for one of the plurality of technical groups to resolve a technical issue, wherein each of the plurality of technical groups comprises at least one junior member and at least one senior member, the junior member having less experience than the senior member; determining a technical group having a highest probability of resolving the technical issue based on a type of the technical issue and a technical group, of the plurality of technical groups, having handled a highest percentage of received technical assistance requests of the type; selecting, by the processing device, a selected technical group to resolve the technical issue according to the determined highest probability of resolving the technical issue; assigning the technical issue to a first available junior member of a plurality of members of the selected technical group; and providing a notification to a rest of the plurality of members of the selected technical group, the rest of the plurality of members having not been assigned the technical issue, and the notification to indicate that the technical issue is assigned to the first member. THE REJECTION The following rejection is before us for review: 2 Appeal 2016-000868 Application 11/943,221 Claims 1—20 are rejected under 35U.S.C. § 101 as being directed to non-statutory subject matter. FINDINGS OF FACT We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence1. ANALYSIS The Appellant argues that the rejection of claim 1 under 35 U.S.C. § 101 is improper (App. Br. 8—15, Reply Br. 8—16). The Appellant has argued that the claims are not directed to an abstract idea, and are instead rooted in technology, that the claims do not preempt every application of the idea, and that the claim is significantly more than any abstract idea itself (App. Br. 8-15). In contrast, the Examiner has determined that rejection is proper (Final Rej. 2—6, Ans. 2—7). The Examiner has determined that the claim is directed to the abstract concept of a method of organizing human activities, and that the claimed limitations fail to transform the nature of the claim (Final Rej. 2—6, Ans. 2—7). We agree with the Examiner. 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: “laws of nature, 1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings before the Patent Office). 3 Appeal 2016-000868 Application 11/943,221 natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014). In judging whether claim 1 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. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012)). In accordance with that framework, we first determine whether the claim is “directed to” a patent-ineligible abstract idea. If so, we then consider the elements of the claim both individually and as “an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application of the abstract idea. Id. 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. The Court also stated that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention”. Id at 2358. Here, we determine that the claim is directed to the concept of determining which technical group would have the highest probability of resolving a technical issue, and then assigning that technical group the issue to resolve. Each method step, set forth in independent claim 1, is a logical step that would be taken in implementing the aforementioned concept. See also Spec., para. 5 (“there is a need in the art for a way to provide resolution of technical issue without demanding for specialized skills and a wide breadth of knowledge for entry level technical support personnel.”). Furthermore, we have no trouble finding that this is a method of organizing human activities that is an abstract idea beyond the scope of § 101. 4 Appeal 2016-000868 Application 11/943,221 We note the point about pre-emption in the Appeal Brief at page 12. While pre-emption “might tend to impede innovation more than it would tend to promote it, ‘thereby thwarting the primary object of the patent laws’” {Alice, 134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293 (2012)), “the absence of complete preemption does not demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[Tjhatthe claims do not preempt all price optimization or may be limited to price optimization in the e- commerce setting do not make them any less abstract.”). To that end, we have no trouble finding that the aforementioned concept is not sufficiently limiting so as to fall clearly on the side of patent-eligibility. We next consider whether additional elements of the claim, both individually and as an ordered combination, transform the nature of the claim into a patent-eligible application of the abstract idea, e.g., whether the claim does more than simply instruct the practitioner to implement the abstract idea over the using generic computer components. We conclude that it does not. Considering each of the claim elements in turn, the function performed by the computer system at each step of the process is purely conventional. Each step of the claimed method does no more than require a generic computer to perform a generic computer function. Here, the claim is not rooted in technology, but rather in the abstract concept of determining which technical group would have the highest probability of resolving a technical issue. This abstract concept is directed 5 Appeal 2016-000868 Application 11/943,221 to a method of organizing human activities. The claimed recitations also fail to transform the abstract nature of the claim. For these reasons, the rejection of claim 1 and its dependent claims is sustained. We reach the same conclusion as to independent claims 6, 12, 18, and their dependent claims. Here, as in Alice, “the system claims are no different in substance from the method claims. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea.” Alice, 134 S. Ct. at 2351. “[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible invention. Stating an abstract idea “while adding the words ‘apply if” is not enough for patent eligibility.” Id. at 2358 (quoting Mayo, 132 S. Ct. at 1294). CONCLUSIONS OF LAW We conclude that Appellant has not shown that the Examiner erred in rejecting claims 1—20 under 35 U.S.C. § 101. DECISION The Examiner’s rejection of claims 1—20 is sustained. AFFIRMED 6 Copy with citationCopy as parenthetical citation