International Business Machines Corporation

Patent Trials and Appeals Board

Apr 23, 2020

14708842 - (D) (P.T.A.B. Apr. 23, 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.
14/708,842 05/11/2015 Jorge A. Arroyo RSW920140082US2 8630
75949 7590 04/23/2020
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JORGE A. ARROYO, STEPHEN P. KRUGER,
PATRICK J. O’SULLIVAN, and LUCIANO SILVA
________________

Appeal 2019-001213
Application 14/708,842
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
JEREMY J. CURCURI, Administrative Patent Judges.

MORGAN, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–16 and 19–22. This appeal is related
to appeal number 2019-001194 (application number 14/449,973). See
Appeal Br. 3. 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. Appellant identifies International Business Machines
Corporation as the real party-in-interest. Appeal Brief filed June 12, 2018
(“Appeal Br.”), 2.
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Summary of the disclosure
Appellant’s claimed subject matter relates to “[r]eassigning a business
hierarchy of roles associated with an opportunity in a social customer
relationship management (CRM) system.” Abstract.
Illustrative claims (disputed recitations emphasized)
1. A method (300) for reassigning a business hierarchy of roles
associated with an opportunity in a social customer relationship
management (CRM) system, the method comprising:
receiving modifications, the modifications representing an
adjustment to a business hierarchy of roles;
identifying, in a social customer relationship management
(CRM) system (204), an opportunity associated with the
business hierarchy of roles, the modifications comprising a
disposition of products associated with the opportunity; and
reassigning, based on the modifications, the opportunity
associated with the business hierarchy of roles;
in which reassigning, based on the modifications, the business
hierarchy of roles associated with the opportunity comprises
adding or deleting a member or a department from the business
hierarchy of roles.
7. The method of claim 1, in which the opportunity represents
a complex record structure in the social CRM system and the
opportunity is associated with a number of fields of metadata,
the metadata defining a number of customer accounts, a
number of members, a number of products, or combinations
thereof.
8. A method of managing a social Customer Relationship
Management (CRM) system with a processor, memory in
communication with the processor, and an interface to allow the
processor to access the CRM system with access to a social
media system, the CRM system storing records for a number of
opportunities, each opportunity associated with a business
hierarchy of roles, the business hierarchy of roles identifying at
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least one individual person associated with the opportunity, the
method comprising:
monitoring for user-entered modifications to the CRM system
and, in response to receiving a user-entered modification,
identifying a first opportunity having a first business hierarchy
of roles that is effected by the user-entered modification;
modifying the first business hierarchy of roles associated with
the first opportunity based on the user-entered modification;
and
recommending a number of candidate persons to replace the
first individual person based on similarities between the
candidate persons and the first individual person as determined
by information in the CRM system and the social media system.
The Examiner’s rejections and cited references
The Examiner rejects claims 1–16 and 19–22 under 35 U.S.C. § 101
as being directed to a judicial exception to patent-eligible subject matter
without significantly more. Final Act. 2–5.
The Examiner rejects claims 1–4, 6, and 7 under 35 U.S.C. § 103 as
obvious over Pall et al. (US 2009/0157570 A1; published June 18, 2009)
(“Pall”) and Freedenberg et al. (US 2008/0015880 A1; published Jan. 17,
2008) (“Freedenberg”). Final Act. 6–12.
The Examiner rejects claim 5 under 35 U.S.C. § 103 as obvious over
Pall, Freedenberg, and Frost (US 2005/0273346 A1; published Dec. 8,
2005). Final Act. 12–13.
The Examiner rejects claims 8–16 and 19–22 under 35 U.S.C. § 103
as obvious over Pall, Freedenberg, and O’Malley (US 2011/0276507 A1;
published Nov. 10, 2011). Final Act. 13–23.
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35 U.S.C. § 101
Principles of Law
To constitute patent-eligible subject matter, an invention must be a
“new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof.” 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in 35 U.S.C. § 101, including: (1) laws of nature; (2) natural phenomena;
and (3) abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014). The U.S. Supreme Court has set forth a framework for
distinguishing patents with claims directed to these implicit exceptions
“from those that claim patent-eligible applications of those concepts.” Id. at
217 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66 (2012)). The evaluation follows a two-part analysis: (1) determine
whether the claim is directed to a patent-ineligible concept, e.g., an abstract
idea; and (2) if so, then determine whether any element, or combination of
elements, in the claim is sufficient to ensure that the claim amounts to
significantly more than the patent-ineligible concept itself. See id. at 217–18.
“[A]ll 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. We “‘must be careful to avoid oversimplifying the claims’ by looking
at them generally and failing to account for the specific requirements of the
claims.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313
(Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent Litigation, 823
F.3d 607, 611 (Fed. Cir. 2016)).
Last year the U.S. Patent and Trademark Office (USPTO) published
guidance on the application of the two-part analysis. USPTO, 2019 Revised
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Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7,
2019) (“2019 Revised Guidance”); see also USPTO, October 2019 Update:
Subject Matter Eligibility, available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019). Under
that guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
of organizing human activity such as a fundamental economic
practice, or mental processes) (see 2019 Revised Guidance,
84 Fed. Reg. 54 (step 2A, prong one)); and
(2) additional elements that integrate the judicial
exception into a practical application (see id. at 54–55 (step 2A,
prong two); MPEP §§ 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. 56.
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Step 2A, prong one
The Examiner determines claim 1 is
directed to the abstract idea of reassigning a business hierarchy
of roles associated with an opportunity, including receiving
modifications, the modifications representing an adjustment to
a business hierarchy of roles; identifying an opportunity
associated with the business hierarchy of roles, the
modifications comprising a disposition of products associated
with the opportunity; and reassigning, based on the
modifications, the opportunity associated with the business
hierarchy of roles; in which reassigning, based on the
modifications, the business hierarchy of roles associated with
the opportunity comprises adding or deleting a member or a
department from the business hierarchy of roles.
Final Act. 3.
The Examiner further determines that the recitations are similar to
concepts such as “human activity relating to concepts involving structuring a
sales force or marketing company (Ferguson[2]), which have been found by
the courts to be abstract ideas.” Id. at 4.
Appellant contends the Examiner does not identify “any particular
abstract idea that the claims are thought to impact.” Appeal Br. 15. Rather,
according to Appellant, “the Action merely repeats the language of claim
and labels the entire claim an abstract idea without supporting analysis.” Id.
(citing Final Act. 3).
This argument is unpersuasive. The Examiner adequately identifies
the specific limitations that recite an abstract idea and provides sufficient
analysis to make apparent the subject matter grouping of abstract idea
embodied therein. See 2019 Revised Guidance, 84 Fed. Reg. 54.

2 In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009).
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Specifically, the Examiner shows that claim 1 recites certain methods
of organizing human activity (e.g., commercial or legal interactions such as
business relations). See id. at 52; see also Ferguson, 558 F.3d at 1364
(a method directed to organizing business or legal relationships in the
structuring of a sales force was patent-ineligible). That is, claim 1 recites
restructuring a business hierarchy of roles (e.g., adding or deleting a member
or a department) in response to a change in how products associated with an
opportunity are disposed. Such restructuring organizes human activity (i.e.,
determines what role members or departments have in the business
hierarchy).
Furthermore, Appellant presents an argument that supports, rather
than contradicts, the Examiner’s determinations. Specifically, Appellant
argues claim 1 is “directed to an improvement in business environments that
provide a mutually beneficial value in a trusted and transparent business
environment and a richer and more accurate reassignment of business
hierarchy . . . roles associated with an opportunity due to the information the
social CRM system gathers.” Appeal Br. 14 (citing Spec. ¶¶ 24, 37, 38).
That is, Appellant characterizes claim 1 as restructuring a business hierarchy
of roles. See id.
Appellant also argues claim 1 recitations do not represent “abstract
ideas, but [instead represent] novel, useful, and non-obvious techniques for
improved management of the CRM system. Thus, it is not the case that
Applicant’s claims monopolize or tie-up any identified abstract idea.”
Appeal Br. 15.
Appellant’s arguments are unpersuasive. We recognize that the Court
has described “the concern that drives this exclusionary principle [i.e., the
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exclusion of abstract ideas from patent eligible subject matter] as one of pre-
emption.” Alice, 573 U.S. at 216. However, characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. As our reviewing court has
explained: “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216). Although “preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Ariosa, 788 F.3d at
1379.
For these reasons, we determine that claim 1 recites certain methods
of organizing human activity (e.g., commercial or legal interactions such as
business relations), and thus claim 1 recites a judicial exception to patent-
eligible subject matter—i.e., an abstract idea.
Step 2A, prong two
As noted above, Appellant argues the claim is not directed to patent-
eligible subject matter because, like the claimed subject matter of McRO,
claim 1 describes a specific way to solve a problem that goes beyond merely
using a computer to automate a conventional activity. See Appeal Br. 13. In
particular, Appellant argues that the “prior ‘uncomputerized’ manual
reassignment [processes] (if one exists[]) were clearly carried out differently
than the solution recited within the claims.” Id. at 14. Appellant also argues
errors would have been prevalent in prior uncomputerized manual processes.
Id. at 10 (citing Spec. ¶ 24), 14.
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Appellant’s arguments are unpersuasive because “mere automation of
manual processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). The patent in McRO did not
merely automate existing processes for animating a character, which even
with computer assistance, were criticized as “very tedious and time
consuming.” McRO, 837 F.3d at 1306 (quoting Rosenfeld col. 2, ll. 35–37
(US 6,307,576 B1; issued Oct. 23, 2001)). Instead, McRO applied rule sets
that went beyond the human-driven process of “simply matching single
phonemes from [a] timed transcript with [an] appropriate morph target.” Id.
at 1307.
Unlike with McRO, the evidence of record here does not sufficiently
show that the process of claim 1 has limited rules structured to reflect a
specific implementation that a human restructuring a business hierarchy of
roles would not have likely used. See id. at 1316; see also Ans. 6–8. That is,
the claimed invention merely uses computer technology as a tool to perform
an abstract idea and fails to reflect an improvement in the functioning of a
computer or other technology or technical field. 2019 Revised Guidance, 84
Fed. Reg. 55.
The Examiner also determines:
there isn’t any improvement to another technology or technical
field, or the functioning of the computer itself. Moreover,
individually, there are not any meaningful limitations beyond
generally linking the abstract idea to a particular technological
environment, i.e., implementation via a computer system.
Further, taken as a combination, the limitations add nothing
more than what is present when the limitations are considered
individually. There is no indication that the combination
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provides any effect regarding the functioning of the computer
or any improvement to another technology.
Final Act. 4; see also Ans. 8.
Appellant contends the Examiner erred because the recitations of
claim 1 “improve the business technologies by providing a mutually
beneficial value in a trusted and transparent business environment and a
richer and more accurate reassignment of business hierarchy of roles
associated with an opportunity due to the information the social CRM
system gathers.” Appeal Br. 10 (citing Spec. ¶¶ 24, 37, 38). That is,
Appellant argues the claimed invention prevents human error that may be a
result of manually reassigning opportunities in a social customer relationship
management system. See id.; see also Reply Br. 5.
Appellant’s arguments are unpersuasive because, as noted above,
“mere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology.” Credit
Acceptance Corp., 859 F.3d at 1055.
For these reasons, we determine that claim 1 does not have additional
recitations that, whether considered individually or in combination, integrate
the underlying abstract idea into a patent-eligible abstract idea. See id.
Step 2B
The Examiner determines claim 1 requires “no more than a general
purpose computer, performing generic computer functions that are well-
understood, routine, and conventional activities previously, known to the
pertinent industry.” Final Act. 5.
Appellant argues the Examiner erred by failing “to indicate what
elements are well-understood, routine or conventional, but only states,
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‘taken as a combination, the limitations add nothing more than what is
present when the limitations are considered individually.’” Appeal Br. 12;
see also Reply Br. 5–6.
We are, however, unable to identify any substantive additional
recitations in claim 1 (i.e., recitations that do not merely recite the abstract
idea addressed above). Therefore, we agree with the Examiner that claim 1
does not have additional elements that amount to significantly more than the
underlying abstract idea. See Final Act. 4–5; see also 2019 Revised
Guidance, 84 Fed. Reg. 56.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1, and claims 2–16 and 19–22, which Appellant does not argue
separately with respect to this rejection.
35 U.S.C. § 103
Claims 1–6 and 22
Pall discloses “[a]n interface component [that] can receive a role-
based model reflective of at least one position within an environment,
wherein the environment includes two or more entities within an organized
hierarchy.” Pall, Abstract. Freedenberg discloses “a composite application
providing processes for managing the business acquisition, the composite
application providing an integrated,” wherein the “processes include: (1) a
capture opportunity process . . . ; (2) a pursuit planning process . . . ; (3) a
solicitation planning process . . . ; (4) a proposal development process . . . ;
and (5) a contract negotiation process.” Freedenberg, Abstract.
In rejecting claim 1 as obvious, the Examiner finds that Freedenberg
teaches or suggests “identifying . . . an opportunity associated with the
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business hierarchy of roles, the modifications comprising a disposition of
products associated with the opportunity.” See Final Act. 8 (citing
Freedenberg ¶ 22).
The Examiner relies on Pall to teach or suggest “in which the
reassigning engine reassigns, based on the modifications, the business
hierarchy of roles associated with the opportunity by adding or deleting a
member or a department from the business hierarchy of roles.” See id. at 7
(citing Pall ¶ 38). The Examiner concludes “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 9.
Appellant contends the Examiner erred because “the acquisitions
described in Freedenberg are not ‘associated with the opportunity’ or ‘a
disposition of products associated with the opportunity.’” Appeal Br. 17. In
particular, Appellant argues “Freedenberg is entirely silent regarding
products or disposition of products.” Id.; see also Reply Br. 11.
Appellant’s arguments are unpersuasive because Freedenberg
discloses that “a business acquisition refers to the acquisition by a first
enterprise of the opportunity to sell products and/or services to another
enterprise, which may be a new or existing client. In one example, a
business acquisition is a contract for a first enterprise (the acquirer of the
business) to provide products and/or services to another enterprise.”
Freedenberg ¶ 22 (cited in Final Act. 8) (emphases added); see also Ans. 13.
Appellant’s conclusory assertions fail to distinguish the claimed disposition
of products from selling or providing products, as disclosed in Freedenberg.
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Appellant also argues “the acquisitions described in Freedenberg are
described in the context of being between two separate entities, and not with
‘a business hierarchy of roles’ in which the roles are reassigned by ‘adding
or deleting a member or a department from the business hierarchy of roles.’”
Appeal Br. 18; see also Reply Br. 11.
Appellant’s argument is unpersuasive because the Examiner also
relies on Pall to teach or suggest the claimed business hierarchy of roles. See
Final Act. 6–7. The Examiner’s finding accords with Pall’s disclosed
management of an organization or hierarchy of roles. See Pall ¶ 33 (cited in
Final Act. 7).
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of
claim 1, and claims 2–6 and 22, which Appellant does not argue separately
with persuasive specificity with respect to this rejection. See Appeal Br. 19–
20.
Claim 7
The Examiner finds that Pall’s disclosure of a data store that can
include data such as roles and positions and that this disclosure teaches or
suggests “metadata defining a number of customer accounts, a number of
members, a number of products, or combinations thereof.” See Final Act. 12
(citing Pall ¶ 30); see also Ans. 14. Specifically, the Examiner finds that the
roles and positions teach or suggest “metadata defining . . . a number of
members.” Final Act. 12.
Appellant contends the Examiner erred because “the ‘data store 210’
of Pall does not include any of the following: ‘a number of customer
accounts, a number of members, a number of products, or combinations
thereof.’” Appeal Br. 20. That is, Appellant argues none of Pall’s data store
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“items may be qualified as ‘a number of customer accounts, a number of
members, a number of products, or combinations thereof’ but are merely
data regarding roles.” Reply Br. 14.
Appellant’s conclusory contentions are unpersuasive because
Appellant fails to distinguish between the roles and positions data of Pall
and the claimed metadata defining a number of members. Accordingly, we
sustain the Examiner’s 35 U.S.C. § 103 rejection of claim 7.
Claims 8–16 and 19–21
In rejecting claim 8 as obvious, the Examiner finds that O’Malley’s
disclosure that a job opening applicant can use a body language feedback
system to “compare his/her Body Language to others applying for the same
job position . . . against those of the same age, with similar qualifications,
and/or similar feedback” teaches or suggests “recommending a number of
candidate persons to replace the first individual person based on similarities
between the candidate persons and the first individual person as determined
by information in the CRM system and the social media system.” See Final
Act. 14 (citing O’Malley ¶ 468).
The Examiner further cites to teachings in O’Malley related to
assigning people to fulfill roles related to a job opening), to managing a
campaign, including assigning rules to a job post, and exchanging data with
online social networks. Id. at 14–15 (citing O’Malley ¶¶ 340, 352); see also
Ans. 15–16 (citing O’Malley ¶ 159).
The Examiner concludes that the use of Pall, Freedenberg, and
O’Malley, combined in the manner claimed, “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
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the art would have recognized that the results of the combination were
predictable.” Final Act. 15.
Appellant contends the Examiner erred because “the cited references
fail to describe recommending candidate persons to replace an individual
using both a CRM system and a social media system.” Appeal Br. 21.
Specifically, Appellant argues the Examiner does “not address the recitation
‘and a social media system.’” Id.; see also Reply Br. 16.
Appellant’s conclusory contentions are unpersuasive because
Appellant fails to distinguish the claimed “social media system” from
O’Malley’s “[o]nline social networks.” O’Malley ¶ 159 (cited in Ans. 15–
16). Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection of
claim 8, and claims 9–16 and 19–21, which Appellant does not argue
separately with respect to this rejection.
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CONCLUSION

Claims
Rejected 35 U.S.C. § References/Basis Affirmed Reversed
1–16, 19–22 101 Eligibility 1–16, 19–22
1–4, 6, 7 103 Pall, Freedenberg 1–4, 6, 7
5 103 Pall, Freedenberg,
Frost
5
8–16, 19–22 103 Pall, Freedenberg,
O’Malley
8–16, 19–22
Overall
Outcome
1–16, 19–22

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