Ex Parte O et alDownload PDFPatent Trial and Appeal BoardAug 23, 201813832112 (P.T.A.B. Aug. 23, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/832, 112 03/15/2013 136582 7590 08/27/2018 STEVENS & SHOWALTER, LLP Box AVAYA Inc. 7019 Corporate Way Dayton, OH 45459-4238 FIRST NAMED INVENTOR Neil O'Connor 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. 413039-US-NP/AVA059PA 3477 EXAMINER FRUNZI, VICTORIA E. ART UNIT PAPER NUMBER 3688 NOTIFICATION DATE DELIVERY MODE 08/27/2018 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): pto@sspatlaw.com pair_avaya@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte NEIL O'CONNOR, TONY McCORMACK, and PAUL D'ARCY Appeal2017-006218 Application 13/832, 112 1 Technology Center 3600 Before HUNG H. BUI, NABEEL U. KHAN, and PHILLIP A. BENNETT, Administrative Patent Judges. BUI, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) from the Examiner's final rejection of claims 21-3 7, which are all the claims pending in the application. Claims App'x. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 2 1 According to Appellants, the real party in interest is Avaya Inc. Br. 2. 2 Our Decision refers to Appellants' Appeal Brief ("Br.") filed September 13, 2016; Examiner's Answer ("Ans.") mailed December 15, 2016; Final Office Action ("Final Act.") mailed April 14, 2016; and original Specification ("Spec.") filed March 15, 2013. Appeal2017-006218 Application 13/832, 112 STATEMENT OF THE CASE Appellants' invention relates to "a system and a method for assisting an enterprise [e.g., online merchants] in growing business opportunities [i.e., identifying and engaging a potential target in a promotional activity corresponding to the enterprise]." Spec. ,r,r 2, 7, Abstract. Claims 21 and 35 are independent. Representative claim 21 is reproduced below with disputed limitations in italics: 21. A system in a contact center comprising: a server; a communication link that couples the server to an external communication system, wherein the external communication system is communicatively coupled to a plurality of end-user devices; wherein the server comprises: a processor; a computer-readable medium coupled to the processor; and an experience database coupled to the processor; wherein the computer-readable medium comprises a plurality of web robots coupled as a network and comprising computer readable instructions, the plurality of web robots each comprising: a set of target searching programmed instructions that causes the processor to search the external communication system for a target entity of a promotional sales activity; a set of strategy determining programmed instructions that causes the processor to determine a strategy to engage the target entity into the promotional sales activity, wherein the strategy is selected by the processor based on a plurality of strategies and associated strategy results stored in an experience database shared among the plurality of web robots; a set of strategy executing programmed instructions that causes the processor to execute the strategy to 2 Appeal2017-006218 Application 13/832, 112 communicate with the target entity during the promotional activity by selecting a persona corresponding to the target entity; and a set of strategy sharing programmed instructions that causes the processor to store results of the strategy executed by the set of strategy executing programmed instructions in the experience database. Br. 25 (Claims App'x). EXAMINER'S REJECTIONS & REFERENCES (1) Claims 21-37 stand rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Final Act. 2-5. (2) Claims 21, 24, and 27-29 stand rejected under 35 U.S.C. § I03(a) as being obvious over Smith (US 2014/0129344 Al; published May 8, 2014) and Simmons et al. (US 2012/0323674 Al; published Dec. 20, 2012; "Simmons"). Final Act. 5-10. (3) Claim 22 stands rejected under 35 U.S.C. § I03(a) as being obvious over Smith, Simmons, and Spivack et al. (US 2012/0278164 Al; published Nov. 1, 2012). Final Act. 11. (4) Claim 23 stands rejected under 35 U.S.C. § I03(a) as being obvious over Smith, Simmons, Spivack, and Haszto et al. (US 6,192,338 B 1; issued Feb. 20, 2001). Final Act. 11-12. (5) Claims 25, 26, and 33 stand rejected under 35 U.S.C. § I03(a) as being obvious over Smith, Simmons, and Estes (US 2012/0059776 Al; published Mar. 8, 2012). Final Act. 12-15. (6) Claims 30, 32, 35, and 36 stand rejected under 35 U.S.C. § I03(a) as being obvious over Smith, Simmons, and Garcia et al. (US 2006/0053047 Al; published Mar. 9, 2006). Final Act. 15-19. 3 Appeal2017-006218 Application 13/832, 112 (7) Claim 31 stands rejected under 35 U.S.C. § I03(a) as being obvious over Smith, Simmons, and Swanson et al. (US 2014/0040786 Al; published Feb. 6, 2014). Final Act. 19--20. (8) Claim 34 stands rejected under 35 U.S.C. § I03(a) as being obvious over Smith, Simmons, and Estill (US 8,244,567 B2; issued Aug. 14, 2012). Final Act. 20-21. (9) Claim 37 stands rejected under 35 U.S.C. § I03(a) as being obvious over Smith, Simmons, Garcia, and Spivack. Final Act. 21-22. DISCUSSION 35 USC§ 101: Claims 21-37 In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Supreme Court reiterates an analytical two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 79 (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, 134 S. Ct. at 2355. The first step in the analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts," such as an abstract idea. Id. If the claims are directed to eligible subject matter, the inquiry ends. Thales Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims "individually and 'as an ordered combination'" to determine whether there are additional elements that "'transform the nature of the claim' into a patent-eligible 4 Appeal2017-006218 Application 13/832, 112 application." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In other words, the second step is to "search for an 'inventive concept'-i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Id. ( citing Mayo, 566 U.S. at 72-73). In rejecting claims 21-3 7 under 3 5 U.S. C. § 10 1, the Examiner determines these claims are directed to the abstract idea of "engaging potential targets of a promotion using target information" which is considered as (1) "an idea itself' or (2) "a method of organizing human activities comprising advertising and marketing," and includes limitations that are analogous to those discussed in Cyberfone and CyberSource. Final Act. 2--4 (quoting Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988 (Fed. Cir. 2014) (holding that using categories to organize, store, and transmit information is an abstract idea); and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (holding that obtaining and comparing intangible data is an abstract idea; method steps that can be performed in the human mind, or by a human using a pen and paper are also an abstract idea)). The Examiner also determines "[t]he additional elements [in the claims] do not [i] [i]mprove another technology or technical field; [ii] [i]mprove the functioning of a computer itself; and [iii] add a specific limitation other than what is well-understood, routine, and conventional in the field." Final Act. 4--5. Alice/Mayo-Step 1 (Abstract Idea) Turning to the first step of the Alice inquiry, Appellants argue the claims are not directed to an abstract concept because (1) "no court has 5 Appeal2017-006218 Application 13/832, 112 previously found that claims having the features recited in [representative] claim 21 were directed to an abstract idea"; (2) the Examiner improperly evaluates the claim at [a] high level of abstraction and eliminates all aspects of the specifically recited features of web robots arranged as a network, web robots sharing strategy results in an experience database, and web robots determining strategies based on a plurality of different strategies and their associated results in the experience database; and (3) "claim 21 is directed to a technological solution to [a technology- based] problem" similar to Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). Br. 11-13. According to Appellants, [T]he claim recites a method to improve the way a computer system works a) to manipulate information in a more timely manner (i.e., improve time needed for robot learning) and b) to interact with users of a computer system in a more responsive manner (i.e., present information to a user that is targeted to them). Br. 13. Appellants' arguments are not persuasive. At the outset, we note the Examiner is required to characterize whether a claim is directed to an abstract idea under Alice step 1. However, because there is no single universal definition of an abstract idea, the Examiner is asked "to examine earlier cases in which a similar or parallel descriptive nature can be seen- what prior cases were about, and which way they were decided." Amdocs, 841 F.3d at 1288 (Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)); accordUSPTO Memorandum, July 2015 Update: Subject Matter Eligibility (July 30, 2015), 6 Appeal2017-006218 Application 13/832, 112 https ://www. uspto. gov/ sites/ default/files/ docmnents/ieg-july-2015- update. pdf (instructing Examiners that "a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea"). In this case, the Examiner did what was required under the USPTO Memorandum, and characterized the claims as required under Alice. Second, Appellants' reliance on Enfzsh is misplaced. In Enfzsh, the claims were directed to an improved database architecture, i.e., a self- referential table - "a specific type of data structure designed to improve the way a computer stores and retrieves data in memory." Enfzsh, 822 F.3d at 1339. Such a data structure has several distinct advantages over conventional relational databases, including: (1) faster searching of data than would be possible with the conventional relational model (see US 6,151,604 "Enfish '604 patent," 1:55-59, 2:66-3:6); (2) more effective storage of data other than structured text, such as storage of images and unstructured text (Enfzsh '604 patent, 2: 16-22, 2:46-52); and (3) more flexibility in configuring the database (Enfish '604 patent, 2:27-29). In Enfzsh, the Federal Circuit characterized the "directed to" inquiry as a stage-one filter to the claims, "considered in light of the specification, based on whether 'their character as a whole is directed to excluded subject matter."' Enfzsh, 822 F.3d at 1335. In particular, the Federal Circuit interpreted the "directed to" inquiry as asking "whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea." Enfzsh, 822 F.3d at 1335 ( emphasis added). "[T]he focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database)." Id. 7 Appeal2017-006218 Application 13/832, 112 Based on the "plain focus of the claims," the Federal Circuit reached the conclusion that Enfish 's claims were directed to "a specific improvement to the way computers operate, embodied in the self-referential table," and, as such, were more than a mere abstract idea. Id. at 1336. Because the Federal Circuit found step 1 of the Alice two-step analysis was satisfied, Alice step 2 was not required. Id. In contrast to Enfish, Appellants' claims 21 and 35 are directed to an abstract idea of "presenting a targeted promotion to a user based on collected user data," i.e., information, as recognized by the Examiner, that is akin or analogous to those discussed in Cyberfone and CyberSource. Final Act. 2- 4. Moreover, identifying and engaging a potential target in a promotional activity corresponding to a business enterprise is also a fundamental business practice, like: (1) risk hedging in Bilski; (2) intermediated settlement in Alice, 134 S. Ct. at 2356-57; (3) verifying credit card transactions in CyberSource, 654 F.3d at 1370; (4) guaranteeing transactions in buySAFE, Inc., 765 F.3d at 1354; (5) distributing products over the Internet in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); ( 6) determining a price of a product offered to a purchasing organization in Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015); and (7) pricing a product for sale in OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015). Steps of identifying and engaging a potential target in a promotional activity corresponding to a business enterprise are also a building block of a market economy. Thus, identifying and engaging a potential target in a promotional activity corresponding to a business enterprise, like risk hedging, intermediated settlement, and 8 Appeal2017-006218 Application 13/832, 112 verifying credit card transactions, is an "abstract idea" beyond the scope of 35 U.S.C. § 101. See Alice, 134 S. Ct. at 2356. Separately, we note Appellants' claims 21 and 3 5 do not improve the performance of a computer or solve a problem specific to computers or computer networks. Appellants' Specification and arguments do not demonstrate the claims "improve the way a computer stores and retrieves data in memory," as the claims in Enfzsh did via a "self-referential table for a computer database." See Enfzsh, 822 F.3d at 1336, 1339. Instead, as recognized by the Examiner, the claims are [not] directed to a technological solution to a problem. The improvement recited by the Applicant is not improving the computer but implementing the business strategy of a reward system to reward bots for working more efficiently. The web bot, the computer, and the database are not being improved. Ans. 4. In fact, neither the steps recited in Appellants' claims 21 and 3 5 nor the rest of Appellants' Specification supply any description or explanation as to how these data processing steps are intended to provide: (1) a "solution ... necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks," as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) "a specific improvement to the way computers operate," as explained in Enfzsh, 822 F.3d at 1336; or (3) an "unconventional technological solution ... to a technological problem" that "improve[ s] the performance of the system itself," as explained in Amdocs, 841 F.3d at 1300, 1302. 9 Appeal2017-006218 Application 13/832, 112 Accordingly, we agree with the Examiner that claims 21 and 3 5 are directed to the abstract idea of "presenting a targeted promotion to a user based on collected user data." Final Act. 5. Alice/Mayo-Step 2 (Inventive Concept) In the second step of the Alice inquiry, Appellants do not argue whether the claims contain an "inventive concept." Instead, Appellants argue "the limitations of claim 21, when considered in combination, recite more than merely the abstract concept of ''presenting a targeted promotion to a user based on collected user data." Br. 14. According to Appellants, Br 14. the combination of elements imposes meaningful limits such that a specific application of a process is recited that improves the content of information that is presented to a computer user and improves the timeliness of providing that information to the user a plurality of cooperating web robots that share information with one another through an experience database. Improving the manner in which users and computers interact and improving the manner in which information is timely processed have been identified specifically as examples of when a claim, considered as a whole, amounts to significantly more than the judicial exception and, accordingly, is drawn to patent eligible subject matter. Appellants' arguments are not persuasive. As recognized by the Examiner, "the instant cases is merely describing a reward system for the bots" and "is merely pointing to a reward system for encouraging the bots to expedite its learning and function, but does not 'improve a computer or technology."' Ans. 5. 10 Appeal2017-006218 Application 13/832, 112 Under current Federal Circuit precedent, an "inventive concept" under Alice step 2 can be established by showing, for example, that the patent claims: (1) provide a technical solution to a technical problem unique to the Internet, e.g., a "solution ... necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks" (see DDR, 773 F.3d at 1257); (2) transform the abstract idea into "a particular, practical application of that abstract idea," e.g., "installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user" (see Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016)); or (3) "entail[] an unconventional solution ([e.g.,] enhancing data in a distributed fashion) to a technological problem ([ e.g.,] massive record flows [that] previously required massive databases)" and "improve the performance of the system itself' (see Amdocs, 841 F.3d at 1300, 1302). In this case, however, we find no element or combination of elements recited in Appellants' claims 21 and 35 that contains any "inventive concept" or adds anything "significantly more" to transform the abstract concept (i.e., "engaging potential targets of a promotion using target information") into a patent-eligible application. Alice, 134 S. Ct. at 2357. Instead, we agree with the Examiner that added computer elements such as a service provider computer, processor, and memory cannot transform the abstract idea into a patent eligible invention. As our reviewing court has observed, "after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent- eligible." DDR, 773 F.3d at 1256 (citing Alice, 134 S. Ct. at 2358)). 11 Appeal2017-006218 Application 13/832, 112 Additional Argument Appellants argue that the claims "do not seek to tie up any judicial exception such that others cannot practice that exception" or "preempt the identified abstract idea." Br. 10. However, this argument is not persuasive because, although "preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are deemed only to disclose patent ineligible subject matter" under the Alice/Mayo framework, "preemption concerns are fully addressed and made moot." Id. Because Appellants' claims 21 and 3 5 are directed to a patent- ineligible abstract concept and does not recite something "significantly more" under the second prong of the Alice analysis, we sustain the Examiner's rejection of claims 21-37 under 35 U.S.C. § 101. 35 US.C. § 103(a): Claims 21-37 In support of the obviousness rejection, the Examiner finds Smith teaches most aspects of Appellants' claim 21 and similarly, claim 35, including a set of target searching programmed instructions that causes the processor to search the external communication system for a target entity of a promotional sales activity; a set of strategy determining programmed instructions that causes the processor to determine a strategy to engage the target entity into the promotional sales activity, wherein the strategy is selected by the processor based on a plurality of strategies and associated strategy results stored in an experience database shared among the plurality of web robots; 12 Appeal2017-006218 Application 13/832, 112 a set of strategy executing programmed instructions that causes the processor to execute the strategy to communicate with the target entity during the promotional activity by selecting a persona corresponding to the target entity; and a set of strategy sharing programmed instructions that causes the processor to store results of the strategy executed by the set of strategy executing programmed instructions in the experience database. Final Act. 5-8 (citing Smith ,r,r 21, 22, 35, 37, 38, 43, Fig. 1). The Examiner acknowledges Smith does not teach, but relies on Simmons for teaching the use of "a plurality of web robots coupled as a network" and each web robot comprises instructions to perform functions recited in Smith in order to support the conclusion of obviousness. Final Act. 8-9 (citing Simmons ,r,r 7, 15, 148,237, 256-257). Appellants argue neither Simmons nor Smith, whether considered individually or in combination, teaches or suggests "a plurality of web robots, having all of the attributes recited in claim 21, arranged as a network." Br. 20. Appellants also argue the combination of Simmons and Smith does not teach or suggest a plurality of web robots that each determine the strategy to engage the target entity based on the strategies and associated results that are stored in the experience database shared among all of the web robots. Br. 20-21. Appellants further argue even if modifying Simmons in view of Smith might result in a neural network being used as a machine learning algorithm somewhere in the advertising service 122, such a modification would not result in a plurality of web robots each having the 13 Appeal2017-006218 Application 13/832, 112 characteristics recited in claim 21 and, thus, the system of claim 21, when considered as a whole, would not be realized. Br. 21. In response, the Examiner has shifted her position from Simmons to Smith and now relies on (1) Figures 5A and 5C of Smith to show "a plurality of web robots communicating with each other" and (2) paragraph 62 of Smith to describe "a scenario of the branded avatar responding to questions or interacting with additional avatars." Ans. 6-7 (citing Smith ,r 62, Figs. 5A, 5C). We do not agree with the Examiner's position. Instead, we agree with Appellants that neither Simmons nor Smith, whether considered individually or in combination, teaches or suggests "a plurality of web robots, having all of the attributes recited in claim 21, arranged as a network." Br. 20. For example, Smith's Figure 5C is reproduced below: ! L__ __ """"""'"""""""-"''-'"'""'"""""'""""""""___ j Smith's Figure 5C shows an advertisement provided to a user that employs the advertising avatar, and user's interaction with the advertisement by clocking on the advertising avatar or via voice and/or gesture control. 14 Appeal2017-006218 Application 13/832, 112 Paragraph 62 of Smith describes user's interaction with advertising avatars, for example, "where a pizza delivery person avatar 912 representing the same advertiser enters the display and encourages the user to get a pizza delivered." Smith ,r 62. Neither Figure 5C nor paragraph 62 of Smith teaches or suggests Appellants' claimed "plurality of web robots coupled as a network" and each web robot comprises instructions to perform functions recited in Appellants' claim 21, including, for example, ( 1) "to search the external communication system for a target entity of a promotional sales activity"; (2) "to determine a strategy to engage the target entity into the promotional sales activity, wherein the strategy is selected by the processor based on a plurality of strategies and associated strategy results stored in an experience database shared among the plurality of web robots"; (3) "to execute the strategy to communicate with the target entity during the promotional activity by selecting a persona corresponding to the target entity"; and (4) "to store results of the strategy executed by the set of strategy executing programmed instructions in the experience database." For these reasons, we are persuaded of Examiner error. Accordingly, we do not sustain the Examiner's obviousness rejection of (1) claims 21, 24, and 27-29 as being obvious over Smith and Simmons; (2) claim 22 as being obvious over Smith, Simmons, and Spivack; (3) claim 23 as being obvious over Smith, Simmons, Spivack, and Haszto; (4) claims 25, 26, and 33 as being obvious over Smith, Simmons, and Estes; (5) claims 30, 32, 35, and 3 6 as being obvious over Smith, Simmons, and Garcia; ( 6) claim 31 as being obvious over Smith, Simmons, and Swanson; (7) claim 34 as being obvious over Smith, Simmons, and Estill; and (8) claim 37 as being obvious over 15 Appeal2017-006218 Application 13/832, 112 Smith, Simmons, Garcia, and Spivack, which Appellants do not argue separately. CONCLUSION On the record before us, we conclude Appellants have not demonstrated the Examiner erred in rejecting claims 21-3 7 under 35 U.S.C. § 101. However, we conclude Appellants have demonstrated the Examiner erred in rejecting claims 21-3 7 under 3 5 U.S. C. § 10 3. DECISION As such, we AFFIRM the Examiner's final rejection of claims 21-37 under 35 U.S.C. § 101. However, we REVERSE the Examiner's final rejection of claims 21-37 under 35 U.S.C. § 103(a). Because we have affirmed at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner's decision rejecting claims 21-37. See 37 C.F.R. § 4I.50(a)(l). 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 16 Copy with citationCopy as parenthetical citation