Ex Parte Shanahan et al

Patent Trial and Appeal Board

Dec 22, 2016

13102481 (P.T.A.B. Dec. 22, 2016)

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.
13/102,481 05/06/2011 Matthew R. Shanahan CAM. TIN 7202
82551 7590
Mersenne Law
9600 S.W. Oak Street
Suite 500
Tigard, OR 97223
12/22/2016 EXAMINER
FEACHER, LORENA R
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
12/22/2016 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 MATTHEW R. SHANAHAN and PETER H. HORADAN
Appeal 2015-0030971
Application 13/102,4812
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—10. We have jurisdiction under 35 U.S.C. §§ 134
and 6(b).
We AFFIRM.
1 Our decision refers to the Appellants’ Appeal Brief (“Appeal Br.,” filed
Aug. 3, 2014) and Reply Brief (“Reply Br.,” filed Jan. 20, 2015), and the
Examiner’s Final Office Action (“Final Act.,” mailed Dec. 3, 2013) and
Answer (“Ans.,” mailed Nov. 17, 2014).
2 According to Appellants, the real party in interest is ServiceSource
International, Inc. (Appeal Br. 1).
Appeal 2015-003097
Application 13/102,481
Introduction
Appellants’ disclosure relates to “collecting and processing
information during the operation of a business to improve the accuracy of
planning and prediction to further guide the business's operations [and more
specifically] to methods for analyzing data about customers’ use of products
or services to learn how to find or serve particular customers better” (Spec.
11).
Claim 1, reproduced below, is the sole independent claim on appeal
and is illustrative of the subject matter on appeal:
1. A method for scheduling sales activity to improve
business outcomes comprising:
for each subscriber of a plurality of subscribers,
computing a value received by the subscriber as a ratio of
a worth of a product received by the subscriber to a
subscription fee paid by the subscriber;
observing an event of interest in a first relationship
between a company and a first subscriber of the plurality
of subscribers;
identifying a second subscriber of the plurality of
subscribers, where the first subscriber and the second
subscriber have similar computed values received; and
scheduling a workflow item to alter a likelihood that
the event of interest will occur with the second
subscriber.
(Appeal Br., Claims App.)
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Appeal 2015-003097
Application 13/102,481
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 1—10 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.3
II. Claims 1, 7, and 8 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Wright (US
2003/0200135 Al, Oct. 23, 2003) in view of R. Brennan,
Abstract: Customer Value Elasticity, Equi-Value Curves
and Value Vectors: Implications for Customer Behaviour
and Strategic Marketing, The 25th IMP Conference:,
Thursday 3rd September - Saturday 5th September
2009, EUROMED Ecole de Management, Marseille,
http://eprints.mdx.ac.uk/3169/1/7213.pdf, last visited
Dec. 7, 2016 (hereinafter, “Brennan”).
III. Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wright, Brennan, and
Eskandari (US 2004/0034558 Al, pub. Feb. 19, 2004).
IV. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wright, Brennan, and Culbert
(US 2009/0292690 Al, pub. Nov. 26, 2009).
3 The Examiner withdrew a previous rejection under § 101 at the same time
as the Examiner entered this rejection under § 101 as a new ground of
rejection in the Answer, pursuant to the procedures for new grounds.
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Application 13/102,481
V. Claims 5 and 6 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Wright, Brennan, and Official
Notice.
VI. Claim 9 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wright, Brennan, and Li (US
2008/0195461 Al, pub. Aug. 14, 2008).
VII. Claim 10 stands rejected under 35 U.S.C. § 103(a) as
being unpatentable over Wright, Brennan, and Sparks
(US 2010/0223075 Al, pub. Sept. 2, 2010).
ANALYSIS
Rejection I (Unpatentable subject matter)
In analyzing whether claimed subject matter is patent eligible, the
Court in Alice articulated the use of a two-step framework set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289
(2012):
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. If so, we then ask,
“[wjhat else is there in the claims before us?” To answer that
question, we consider the elements of each 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.
See Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014). See
also USPTO 2014 Interim Guidance on Patent Subject Matter Eligibility,
79 Fed. Reg. 74,618, 74,621 (Dec. 16, 2014).
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Application 13/102,481
The Examiner determines that
The claims are directed to the abstract idea of using
collected subscriber data to predict subscriber behavior and
determining ways to serve customers better, which is
considered a method of organizing human activities. The instant
claims do not identify any claim elements that qualify as
significantly more than the abstract idea itself. As such the
claims do not provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract
idea.
(Ans. 15).
Appellants argue that the claims at issue do not attempt to prevent
every application of the idea of sales activity and the claims only reach a
particular method of scheduling sales activity based on the identification of
targets by computation of a value of a mathematical function (Reply Br.
3-5).
We are unpersuaded by Appellants’ argument. With respect to step one
of Alice, we agree with the Examiner inasmuch as claim 1 is directed to the
idea of using information gathered from one customer to make decisions on
how to approach other customers. We conclude that this is not only a
method of mentally organizing human activities, but also a fundamental
economic practice, and is therefore patent-ineligible subject matter. See
Alice, 134 S.Ct. at 2355-56.
Under step two of Alice, we determine that the additional recitations
of claim 1 are based on a mathematical algorithm to calculate value. Such
an algorithm is also abstract under Alice (see id.), and does not serve to
transform the claim into patent-eligible subject matter. We, therefore,
sustain the Examiner’s rejection under § 101 of independent claim 1.
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We have reviewed the additional recitations of dependent claims
2—10, and determine that they do not, individually, or as a whole, transform
the claims into patent eligible subject matter, for similar reasons as for
independent claim 1, i.e., they relate to the same abstract idea of customer
relations. Therefore, we sustain the Examiner’s rejection under § 101 of
dependent claims 2—10.
Rejections II—VII (Obviousness)
Independent claims 1 and dependent claims 2—10
We are unpersuaded by Appellants’ argument that the Examiner has
provided insufficient articulated reasoning for the combination of Wright
and Brennan (see Appeal Br. 5—6). Appellants assert that neither Wright nor
Brennan disclose a known element for substitution (see Appeal Br. 5).
However, the Supreme Court’s opinion in KSR clarifies that the prior art
references themselves need not supply a suggestion for combination, as long
as it would have been obvious to a person of ordinary skill, e.g., if
components function the same way when combined as when separate. See
KSR Inti Co. v. Teleflex Inc., 550 U.S. 416, 417 (2007) (“Finally, in
Sakraida v. AgPro, Inc., 425 U.S. 273, 96 S.Ct. 1532, 47 L.Ed.2d 784
(1976), the Court derived from the precedents the conclusion that when a
patent ‘simply arranges old elements with each performing the same
function it had been known to perform’ and yields no more than one would
expect from such an arrangement, the combination is obvious. Id., at 282,
96 S.Ct. 1532.”).
The Examiner reasons that it would have been obvious to substitute
the value calculation of Brennan for the value calculation of Wright, as a
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Application 13/102,481
simple substitution, and in order to prevent customers from churning or to
indicate a type of intervention (see Final Act. 4; Ans. 13). The Examiner
finds that Wright (H 37—42, 48 & Fig. 5) implements a chum intervention
process for at risk customers based on a score (Final Act. 3 4) and that
Brennan discloses a method of calculating the value of a service perceived
by a consumer (Ans. 14). We agree with the Examiner that a person of
ordinary skill would have used Brennan’s method as a means of identifying
“at-risk” customers for the intervention of Wright, e.g., a person of ordinary
skill in the art would have understood that customers with low values for
perceived value of a service, as identified by Brennan, would have been at
risk for “chum,” as described in Wright.
Appellants argue that the Examiner’s selection of Brennan’s equation
is based on hindsight and “cherry-picking” because, according to Appellants,
the Examiner (and Wright) pass over other methods of data analysis for
identifying customers as risk of chum:
Then, among Wright's acknowledged but unused metrics:
subscription age (Wright at [0034]), number and frequency of
dropped calls (id. at [0035] and [0042]), "transaction source
systems; billing, switch/mediation, contact center, POS, and
web; marketing and third party applications" (id. at [0038]), and
completed calls and average call duration (id. at [0044])....
Appeal Br. 6 (discussing Wright || 34, 35, 38, 42, 44)). However, we agree
with the Examiner inasmuch as Wright’s teaching of intervening with
customers at risk of chum would have been understood to be applicable to
other methods of identifying customers at risk of chum. Nor, does Wright
discourage a person of ordinary skill from using Brennan’s method of
valuation.
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We, therefore, sustain the Examiner’s rejection under § 103 of
independent claim 1.
Appellants do not argue the rejection under § 103 of claims 2—10
separately from that of independent claim 1, from which they depend. We,
therefore, sustain the Examiner’s rejection under § 103 of claims 2—10, for
similar reasons as for independent claim 1.
DECISION
The Examiner’s decision to reject claims 1—10 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
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