International Business Machines Corporation

Patent Trials and Appeals Board

Sep 24, 2020

2020001592 (P.T.A.B. Sep. 24, 2020)

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.
14/283,643 05/21/2014 Donna K. Byron AUS920130383US1 5971
75916 7590 09/24/2020
IBM AUS IPLAW (GLF)
c/o Garg Law Firm, PLLC
800 Bonaventure Way, suite 115
Sugar Land, TX 77479
EXAMINER
NEAL, ALLISON MICHELLE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/24/2020 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):
dpandya@garglaw.com
garglaw@gmail.com
uspto@garglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DONNA K. BYRON,
DUKE CHANG,
ALEXANDER PIKOVSKY, and
TIMOTHY WINKLER

Appeal 2020–001592
Application 14/283,643
Technology Center 3600

Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final decision to reject claims 11–20.1 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies International Business Machines Corporation
as the real party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to a system, and
computer program product for improving customer satisfaction. More
particularly, the present invention relates to a system, and computer program
product for minimizing undesirable user responses in automated business
processes.” (Spec. para. 1). Claim 11, reproduced below with emphasis
added, is illustrative of the claimed subject matter:
11. A computer usable program product comprising a computer
usable storage device including computer usable code for
minimizing undesirable user responses in automated business
processes, the computer usable code when executed by a
processor cause operations of a method to be performed, the
method comprising:
identifying, using a processor and a memory, a user
response in an interaction between a user and an automated
business process during a present transaction;
determining, using sentiment analysis, that the user
response comprises an undesirable response based on an
undesirable emotional state of the user, wherein determining that
the user response comprises an undesirable response is based on
a plurality of users providing a plurality of responses in a
plurality of interactions with the automated business process
during previous transactions that exceed a threshold amount of
undesirable responses;
selecting a modification of the automated business
process, wherein the modification causes a change in the
automated business process to reduce subsequent undesirable
responses in the automated business process below the threshold
amount, wherein the change applies to the user, and wherein the
change comprises removing a step from the automated business
process and modifying a timeline of a future portion of the
present transaction; and
applying the modification to the automated business
process to cause the change in a future portion of the interaction.
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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Naik US 9,549,065 B1 Jan. 17, 2017
Mintz US 2010/0161604 A1 June 24, 2010
Hakkani-Tur US 2011/0172999 A1 July 14, 2011
Kalns US 2014/0310001 A1 Oct. 16, 2014
Fitterer US 2014/0316765 A1 Oct. 23, 2014
REJECTIONS
Claims 11–20 are provisionally rejected on the ground of nonstatutory
double patenting over claims 1–10 of copending Application No.
14/332,609.
Claims 11–20 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
Claims 11–16 and 18–20 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Fitterer, Mintz, Naik, and Kalns.
Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Fitterer, Mintz, Naik, Kalns, and Hakkani-Tur.
OPINION
The rejection of claims 11–20 are provisionally rejected on the ground of
nonstatutory double patenting over claims 1–10 of copending Application
No. 14/332,609.
The rejection is set forth on page 5 of the Non–Final Action and
appears to be pending. We do not see that Appellant has addressed it.
Accordingly, it is summarily affirmed.

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The rejection of claims 11–20 under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
The Appellant argues these claims as a group. See Appeal Br. 9–13.
We select claim 11 as the representative claim for this group, and the
remaining claims 12–20 stand or fall with claim 11. See 37 C.F.R.
§ 41.37(c)(1)(iv).
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 11 covers a “manufacture” and is thus statutory
subject matter for which a patent may be obtained.2 This is not in dispute.
However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
In that regard, notwithstanding claim 11 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 11 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one — the “directed to” inquiry:

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 84 Fed.
Reg. at 53. See also id. at 53–54 (“consider[] whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. 101.”).
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According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Abstract Idea3
The Examiner determined, inter alia, that claim 11 “is directed to the
abstract idea of improving customer satisfaction and minimizing undesirable
user responses.” Non–Final Act. 7. According to the Examiner, “improving
customer satisfaction and minimizing undesirable user responses” falls
within the enumerated “[c]ertain methods of organizing human activity”
grouping of abstract ideas set forth in the 2019 Revised 101 Guidance.4 Id.
at 3 (“Examiner reasonably interprets that claim 11 is directed to methods of
organizing human activity.”)

3 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.
4 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates
subject matter grouping “(b):” “(b) Certain methods of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
marketing or sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions).” Id. at 52.
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We have carefully reviewed the Briefs but do not see that the
Appellant has explicitly disputed the Examiner’s characterization of what
claim 11 is directed to.
According to Appellant, “Claim 11 is not directed to any of the listed
economic practices or commercial or legal interactions, in particular
managing interactions between people, but is instead directed to minimizing
undesirable user responses in automated business processes.” Appeal Br.
10. Appellant explains that
determining that the user response comprises an undesirable
response is based on a plurality of users providing a plurality of
responses in a plurality of interactions with the automated
business process during previous transactions, not interactions
between people. Therefore, claim 11 cannot properly be
considered as falling under the methods of organizing human
activity grouping of the Guidance [ ].
Id. at 11. “Appellants submit that claim 11 does not fall within any of [the]
three groupings of subject matter [identified in the 2019 Revised 101
Guidance].” Id. at 10. See also Reply Br. 2–4.
As we understand it, Appellant is presenting a characterization of
what claim 11 is directed to (i.e., “minimizing undesirable user responses in
automated business processes” (Appeal Br. 10)) that is more specific than
that of the Examiner (“improving customer satisfaction and minimizing
undesirable user responses” (Non–Final Act. 7) and, based on that more
specific characterization, arguing that claim 11 is not directed to an abstract
idea that falls within the enumerated “[c]ertain methods of organizing
human activity” grouping of abstract ideas set forth in the 2019 Revised 101
Guidance as the Examiner alleges because, unlike the Examiner’s
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characterization, Appellant’s characterization is not directed to “interactions
between people” (Appeal Br. 11).
We have reviewed the 2019 Revised 101 Guidance and do not see
there a distinction being made between “interactions between people” and
“automated business processes,” in that only the former fall within the
enumerated “[c]ertain methods of organizing human activity” grouping of
abstract ideas.
In footnote 13, the Guidance lists numerous decisions where the
claimed subject matter at issue is characterized by the court as abstract ideas
and which the Guidance includes as “[c]ertain methods of organizing human
activity.” For example, the Guidance cites Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1376 (Fed. Cir. 2017). The claims there
at issue were directed to “local processing of payments for remotely
purchased goods.” Here is one of the claims that was at issue:
8. A method of processing a payment for a purchase of goods,
comprising the steps of:
receiving at a point-of-sale system a code relating to a
purchase of goods;
determining if said code relates to a local order or to a
remote order from a remote seller;
if said code relates to a remote order, then
determining a price for said remote order,
receiving a payment for said remote order, and
transmitting to said remote seller data indicating that said
payment has been received for said remote order.
This is similar to the claims here on appeal in that here user responses in
automated business processes are processed to minimize undesirable use
responses. Accordingly, we do not see the Guidance limiting the “[c]ertain
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methods of organizing human activity” grouping to “interactions between
people” as Appellant argues.
Furthermore5, when we consider the claim as a whole6 giving it the
broadest reasonable construction7 as one of ordinary skill in the art would
have interpreted it in light of the Specification8 at the time of filing, we find
that it is reasonable to characterize the claim as being directed to minimizing
undesirable user responses in a business process that is automated via
generic computing devices as Appellant has done.
However, Appellant’s characterization of what the claim is directed to
is similar to that of the Examiner’s, albeit the Appellant’s characterization is
described at a somewhat lower level of abstraction. Nevertheless, “[a]n
abstract idea can generally be described at different levels of abstraction.”

5 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
6 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
7 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, footnote 14 (“If a
claim, under its broadest reasonable interpretation.”) (emphasis added).
8 “First, it is always important to look at the actual language of the claims. .
. . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
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Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240, 1240–41 (Fed. Cir.
2016) (“The Board’s slight revision of its abstract idea analysis does not
impact the patentability analysis.”).
We do not see, and Appellant has not persuasively shown, how claim
11 fails to be directed to an abstract idea falling within the enumerated
“[c]ertain methods of organizing human activity” grouping of abstract ideas
set forth in the 2019 Revised 101 Guidance.
To the extent Appellant means to argue that the claim presents a
technical-improvement solution9, it is unpersuasive as to error in the
Examiner’s determination that the claimed subject matter is directed to an
abstract idea. This is so because the manufacture as claimed fails to
adequately support it. We are unable to point to any claim language
suggestive of an improvement in technology.
The steps as claimed involve, inter alia, “identifying [a user
response],” “determining [that the user response comprises an undesirable

9 If Appellant means to argue this point, then such an argument would
correspond to Prong Two [“If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application”] of Step 2A of the 2019 Revised 101 Guidance. “A claim that
integrates a judicial exception into a practical application will apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” 84 Fed. Reg. at 54. One
consideration, implicated here, that is “indicative that an additional element
(or combination of elements) may have integrated the exception into a
practical application” is if “[a]n additional element reflects an improvement
in the functioning of a computer, or an improvement to other technology or
technical field.” Id. at 55.

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response],” “selecting [a modification of the automated business process to
reduce subsequent undesirable responses in the automated business process
below a threshold amount],” and “applying” [the modification to the
automated business process].
The steps as claimed are not focused on improving technology. Cf.
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019)
(“The claims are focused on providing information to traders in a way that
helps them process information more quickly, ’556 patent at 2:26–39, not on
improving computers or technology.”). Rather than being directed to any
specific asserted improvement in computer capabilities, the claim supports
the opposite view — that the claimed subject matter is directed to
minimizing undesirable user responses in a business process that is
automated via generic computing devices employing generic devices. The
Specification evidences the generic nature of the devices that may be used to
automate the process. See, e.g., para. 37 (“Clients 110, 112, and 114 may be,
for example, personal computers, network computers, thin clients, or
industrial control systems.”) “[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.” Alice, 573 U.S. at 223.
The claim provides no additional structural details that would
distinguish any device required to be employed to practice the steps as
claimed from its generic counterparts.10

10 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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Looking to the Specification, it describes the invention in “business
relations” (see 2019 Revised 101 Guidance 52) terms, explaining that an
objective of the claimed invention is to reduce “user–attrition” based on
“offending business processes.” Spec., para. 4.
Businesses often lose customers who are upset due to an
automated process which results in an action that is unfair to the
customer (generally, a user). For example a business process in
a business enterprise may assess a fee to a user's account due to
an honest misunderstanding by the user.
Id. at para. 2.
Also, it attributes no special meaning to any of the recited operations,
individually or in the combination, as claimed. In our view, the
“identifying,” “determining,” “selecting,” and “applying” steps are common
computer processing functions that one of ordinary skill in the art at the time
of the invention would have known generic computers were capable of
performing and would have associated with generic computers. Cf. OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities
or routine data-gathering steps. Alice, 134 S.Ct. at 2359 (quoting
Mayo, 132 S.Ct. at 1294) . . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”
storing test results in a “machine-readable medium,” and “using
a computerized system . . . to automatically determine” an
estimated outcome and setting a price. Just as in Alice, “all of
these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.],
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765 F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer
receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
By so broadly defining the inventive method, that is, by setting out
what it is aspiring to accomplish without any means for achieving it (other
than via generic devices), let alone any purported technological
improvement, the claim is in effect presenting the invention in purely result-
based functional language, strengthening our determination under Alice
step one that the claim is directed to an abstract idea. Cf. Two-Way Media
Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir.
2017) (“Claim 1 recites a method for routing information using result-based
functional language. The claim requires the functional results of
‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating
records,’ but does not sufficiently describe how to achieve these results in a
non-abstract way.”). See also Uniloc USA v. LG Elecs. USA, 957 F.3d 1303,
1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly failed
to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method of
transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims solved
data transmission problems, including load management and
bottlenecking, but the claimed method was not directed to those
improvements. Id. at 1336–37. We therefore held the claims
ineligible because they merely recited a series of abstract steps
(“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
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language” without the means for achieving any purported
technological improvement. Id. at 1337.
Accordingly, notwithstanding Appellant reasonably characterizes the
claim as being directed to minimizing undesirable user responses in an
automated business process, we are unpersuaded that the claim is thereby
rendered not directed to an abstract idea and failing to fall within the
enumerated “[c]ertain methods of organizing human activity” grouping of
abstract ideas set forth in the 2019 Revised 101 Guidance. For the foregoing
reasons, the record supports the Examiner’s determination that claim 11 is
directed to an abstract idea.
We note that Appellant also argues that:
Even if, arguendo, claim 11 is directed to an abstract idea,
Prong Two of the Guidance directs examiners to evaluate
whether the claim as a whole integrates the recited judicial
exception into a practical application of the exception. Id. at p.
54. In performing this evaluation, several considerations are
indicative that an additional element has integrated the exception
into a practical application. Id. One of these considerations is that
an element effects a transformation or reduction of a particular
article to a different state or thing. Id. Appellants submit that
claim 11 meets this consideration.
Appeal Br. 12.
“[E]ffect[ing] a transformation or reduction of a particular article to a
different state or thing” (id.) implicates the machine–or–transformation test
that was in vogue prior to Bilski v. Kappos, 561 US 593 (2010). Appellant
appears to recognize that under that test an article had to be transformed.
Yet, according to Appellant, “although the transformed article can be a
physical article, it is not required to be a physical article. Enfish, LLC v.
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Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016); see also MPEP
2106.05(c).” Appeal Br. 12.
We have reviewed Enfish and MPEP 2106.05(c) but do not see there
stated that when seeking to show a “transformation” under the old machine–
or–transformation test11an article was unnecessary. Different points are
made there – that “[t]he machine-or-transformation test is not the sole test
for deciding whether an invention is a patent-eligible ‘process.’” (Bilski, 561
at 604) and, under that test, a change in an article’s function may be
evidence of an article’s transformation, respectively.
Be that as it may, we are unpersuaded that claim 11 transforms an
article. Appellant duplicates the claim and argues that, inter alia, “a change
in the automated business process to reduce subsequent undesirable
responses” amounts to a transformation in the article. See, e.g., Appeal Br.
12. Appellant does not help us understand what exactly has been
transformed. The generic device employed to perform the claimed steps
remains the same. At best the process changes the information; that is, the
steps manipulate undesirable user responses so as to minimize them. But this
does not amount to a transformation of an article. Cf. In re Bilski, 545 F.3d
943, 963 (Fed. Cir. 2008) (en banc) (“Purported transformations or
manipulations simply of public or private legal obligations or relationships,
business risks, or other such abstractions cannot meet the test because they
are not physical objects or substances, and they are not representative of

11 “Under the Court of Appeals' formulation, an invention is a ‘process’ only
if: ‘(1) it is tied to a particular machine or apparatus, or (2) it transforms a
particular article into a different state or thing.’ [In re Bilski, 545 F.3d 943,
954 (Fed. Cir. 2008)].” Bilski v. Kappos, 130 S.Ct. 3218, 3225–26 (U.S.
2010).
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physical objects or substances, and they are not representative of physical
objects or substances.”)

Alice step two — Does the Claim Provide an Inventive Concept?12
Step two is “a 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.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that:
The claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because they, whether taken separately or as a whole,
merely use conventional computer components to retrieve,
process, transmit and store data and thus do not provide an
inventive concept in the claims.
Non–Final Act. 8. We agree.
Appellant does not appear to challenge the Examiner’s determination
under step two of the Alice framework.
We addressed the matter of whether the claim presented any purported
specific asserted technical improvements in our analysis above under

12 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 “if a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
(emphasis added).
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step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”).
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed devices as claimed are conventional. In doing so,
we have followed “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO Memorandum, Robert
W. Bahr, Deputy Commissioner For Patent Examination Policy, April 19,
2018 (the “Berkheimer Memo”)).
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 11 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into a patent–eligible application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 11, and claims 12–20 which stand
or fall with claim 11, are directed to an abstract idea and do not present an
“inventive concept,” we sustain the Examiner’s conclusion that they are
directed to patent-ineligible subject matter for being judicially-excepted
from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 F. App’x
991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s
remaining arguments and have found them unpersuasive. Accordingly,
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because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an ‘inventive concept,’ we hold that they are directed
to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs.,
788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).

Claims 11–16 and 18–20 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fitterer, Mintz, Naik, and Kalns.
Independent claims 11 and 20 call for “[a] change compris[ing]
removing a step from the automated business process.”
According to the Examiner,
Naik: Figs. 1-4 and Cols. 6-9: Specific events associated with a
dialog can be obtained by mining call logs from existing or new
applications in real-time to generate events of interest. Classified
interaction data can be used to train models which can be used to
perform classification in an online manner. As was the case with
offline classification, a variety of techniques can be used for the
training of models. For instances records could be classified as
"good" or "bad" using finite state machine based on the meanings
of responses given by a caller. Once a model for online
classification has been trained, that model can actually be used
to determine whether to replace the automated interaction
process [automated business process] by transferring a call from
an automated interaction to a live interaction. Specifically, the
classification model uses a log likelihood ratio as a basis for
good/bad classification. If the "good" log likelihood falls below
a set threshold, then the automated interaction process is replaced
by a live operator; thereby increasing customer satisfaction and
subsequently reducing undesirableness.).
Id. at 14.
It would have been obvious to one of ordinary skill in the art at
the time of the effective filing date to combine Fitterer with
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Naik's automated business process and emotion detection
because the references are analogous/compatible since each is
directed toward features for detecting emotion in user
communication, and because incorporating Naik's automated
business process and emotion detection in Fitterer would have
served Fitterer's pursuit of promoting effective communication
(See Fitterer ¶ 0001-0009) and further obvious since the claimed
invention is merely a combination of old elements, and in the
combination each element merely would have performed the
same function as it did separately, and one of ordinary skill in the
art would have recognized that the results of the combination
were predictable.
Id. at 14–15.
We have reviewed Naik, specifically Figs. 1-4 and cols. 6–9, but have
been unable to discern what the Examiner is relying upon as evidencing “[a]
change compris[ing] removing a step from the automated business process”
as claimed.
The Examiner may be referring to this passage:
For example, it is possible that a classification model could be
used directly to predict whether an interaction is "good" and
therefore should continue in automation or "bad" and therefore
should be transferred to a live individual (e.g., using a language
model as described above, the interaction could be transferred to
a live individual if P(xlLMgood) falls below a set threshold, or if
P(xlLMbad) rises above a set threshold).
Naik, 8:57–64. But we do not see how transferring a customer to a live
individual amounts to “removing a step from the automated business
process” as claimed.
We agree with Appellant that:
the only remedy for a poor automated customer interaction Naik
teaches is to transfer the customer to a human actor. This remedy
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cannot reasonably be interpreted as teaching or suggesting
selecting a modification of the automated business process,
wherein the modification causes a change in the automated
business process to reduce subsequent undesirable responses in
the automated business process below the threshold amount,
wherein the change applies to the user, and wherein the change
comprises removing a step from the automated business
process; and modifying a timeline of a future portion of the
present transaction, as in claim 11, either.
App. Br. 15.
The rejection is not sustained on the ground that a prima facie case of
obviousness has not been made out in the first instance for the subject matter
of claim 11 and that of claims 12–16 and 18–20 that depend from claim 11.

Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable over
Fitterer, Mintz, Naik, Kalns, and Hakkani-Tur.
This rejection of dependent claim 17 is not sustained for the reasons
given above in not sustaining the rejection of independent claim 11 from
which it depends.

CONCLUSION
The decision of the Examiner to reject claims 11–20 is affirmed.
More specifically:
The rejection of claims 11–20 are provisionally rejected on the ground
of nonstatutory double patenting over claims 1–10 of copending Application
No. 14/332,609.
The rejection of claims 11–20 under 35 U.S.C. § 101 as being directed
to judicially-excepted subject matter is affirmed.
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The rejection of claims 11–16 and 18–20 under 35 U.S.C. § 103(a) as
being unpatentable over Fitterer, Mintz, Naik, and Kalns is reversed.
The rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Fitterer, Mintz, Naik, Kalns, and Hakkani-Tur is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
11–20 Nonstatutory Double
Patenting
11–20
11–20 101 Eligibility 11–20
11–16,
18–20
103(a) Fitterer, Mintz, Naik,
Kalns
11–16,
18–20
17 103(a) Fitterer, Mintz, Naik,
Kalns, Hakkani-Tur
17
Overall
Outcome
11–20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED