Jennifer L. Blackwell et al.Download PDFPatent Trials and Appeals BoardAug 20, 201914640412 - (D) (P.T.A.B. Aug. 20, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/640,412 03/06/2015 Jennifer L. Blackwell P2015-06NP 1003 103720 7590 08/20/2019 Noble Systems Corporation Attn: Karl Koster 1200 Ashwood Parkway Suite 300 Atlanta, GA 30338-4747 EXAMINER NELSON, FREDA ANN ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 08/20/2019 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): chaggerty@noblesys.com kkoster@noblesystems.com noblepatent@gmail.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JENNIFER L. BLACKWELL, KARL H. KOSTER, and ANDY E. PERDUE1 ________________ Appeal 2017-009367 Application 14/640,412 Technology Center 3600 ________________ Before BRADLEY W. BAUMEISTER, JEREMY J. CURCURI, and RUSSELL E. CASS, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s Non-Final Rejection of claims 1, 5, 6, 8, and 21–29, which stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. App. Br. 2; Ans. 2.2 The Examiner previously issued additional rejections of 1 Appellants identify Noble Systems Corporation as the real party in interest. Appeal Brief filed January 2, 2017 (“App. Br.”), 2. 2 Rather than repeat the Examiner’s positions and Appellants’ arguments in their entirety, we refer to the above-mentioned Appeal Brief, as well as the following documents, for their respective details: the Non-Final Action mailed November 18, 2016 (“Non-Final Act.”); the Examiner’s Answer mailed May 12, 2017 (“Ans.”); and the Reply Brief filed June 21, 2017 (“Reply Br.”). Appeal 2017-009367 Application 14/640,412 2 the claims under 35 U.S.C. § 103(a), but withdrew those rejections in the Examiner’s Answer. Ans. 2–3. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. THE INVENTION Appellants describe the present invention as follows: A mechanism is disclosed for selecting a communications channel in a contact center to use for sending event notification information to an individual, based in part on a profile for the individual indicating whether consent has been received from the individual to receive such communication. In one embodiment, a set of rules governs how to send information to a telephone number based on whether consent was previously provided, which may include whether the individual associated with the telephone number has downloaded a mobile application. An individual may also submit a request to opt-out or withdraw consent, which updates the profile and may impact whether and how event notifications are sent to the individual. Various contact devices in a contact center may be used to then transmit the event notification based on various rules and the profile. Abstract. Independent claim 1 illustrates the appealed claims. Claim 1 is reproduced below with modified formatting added for clarity and with emphasis added to indicate the claim language that recites one or more abstract ideas: 1. A non-transitory computer readable medium comprising instructions that when executed by a computer processor in a contact device cause the computer processor to: [i] receive package delivery information in electronic form at an interface of the contact device, the package delivery Appeal 2017-009367 Application 14/640,412 3 information indicating one of either a scheduled or completed delivery of a package to a specified individual; [ii] in response to receiving the package delivery information, retrieve a profile associated with the specified individual from a profile database into a memory of the contact device, wherein the profile comprises data indicating: a name of the specified individual, a telephone number associated with the specified individual, wherein the telephone number is a wireless telephone number, and a consent indication identifying whether consent has been provided by the specified individual for allowing a call to the telephone number to notify the specified individual of the scheduled or completed delivery of the package; [iii] select one of a plurality of campaign rule sets to define how to initiate a package delivery notification call based on whether the consent indication identifies whether consent has been provided by the specified individual, wherein the plurality of campaign rule sets comprises a consent campaign rules set (“C-CRS”) and an exempt campaign rules set (“E-CRS”), and wherein the C-CRS is selected if the consent indication indicates consent has been provided by the specified individual and the E- CRS is selected if the consent indication indicates consent has not been provided by the specified individual, wherein the C-CRS is different from the E-CRS, [iv] wherein the E-CRS is selected, and wherein the E-CRS defines a rule indicating that the package delivery notification call should be an SMS text call comprising a single text sent to the telephone number using a free-to-end-user service; and [v] cause the package delivery notification call to be placed to the telephone number by the contact device using the selected one of the plurality of campaign rule sets. Appeal 2017-009367 Application 14/640,412 4 PRINCIPLES OF LAW A. SECTION 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 Appeal 2017-009367 Application 14/640,412 5 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). Appeal 2017-009367 Application 14/640,412 6 “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. B. USPTO SECTION 101 GUIDANCE The United States Patent and Trademark Office (“USPTO”) recently published revised guidance on the application of 35 U.S.C. § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84. Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under the 2019 Guidance, we first look to whether the claim recites the following: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). See 2019 Guidance, 84 Fed. Reg. at 52–55. 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 Guidance, 84 Fed. Reg. at 56. Appeal 2017-009367 Application 14/640,412 7 ANALYSIS Step 2A, Prong 1 The Examiner finds that the following claim language “relate[s] to economic practices in which monetary transactions between people are managed and the obtaining, comparing[,] and processing of data:” receiv[ing] package delivery information indicating one of either a scheduled or completed delivery of a package to a specified individual; retriev[ing] a profile associated with the specified individual; select one of a plurality of campaign rule sets to define how to initiate a package delivery notification call; and caus[ing] the package delivery notification call to be placed. Non-Final Act. 3 (citing claim 1). We agree that claim 1 recites abstract ideas. Limitations [iii] and [iv] of claim 1 recite steps of selecting a campaign rule to define how to communicate—in the claim parlance, “how to initiate a package delivery notification call.” These limitations reasonably can be characterized as managing personal behavior or relations or interactions between people including following rules or instructions. Alternatively, these limitations also can be characterized reasonably as sales activities or behaviors or as business relations. These different types of methods of organizing human activities are expressly recognized by the 2019 Guidance as constituting abstract ideas. Furthermore, limitations [i] and [ii] of claim 1 set forth steps of gathering data about the status of a package’s delivery (limitation [i]) and about an individual’s profile (limitation [ii]). Limitation [v] sets forth a step of delivering a notification about a package delivery. Gathering information and delivering information reasonably can be characterized as managing personal behavior or interactions between people. Such steps of managing Appeal 2017-009367 Application 14/640,412 8 human behavior and human interaction constitute certain methods of organizing human activity that are expressly recognized by the 2019 Guidance. As such, limitations [i], [ii], and [v] also can be interpreted reasonably as reciting abstract ideas under step 2A, prong 1, of the 2019 Guidance. Step 2A, Prong 2 Having determined that the claims recite at least one judicial exception, we next inquire whether the claims recite “additional elements that integrate the [judicial] exception into a practical application.” See 2019 Guidance, 84 Fed. Reg. at 54; MPEP § 2106.05(a)–(c), (e)–(h). For the following reasons, we determine that the claims do not so integrate the recited abstract ideas. The Examiner finds that “there is no indication that the combination of elements improves the functioning of a computer or improves any other technology.” Non-Final Act. 4. Appellants’ Specification supports this finding. Appellants acknowledge that an array of communication channels was known at the time of the invention. Spec. ¶¶ 5–6 (discussing known channels such as postal mail, email, voice call, text messaging, and instant messaging). Appellants do not allege that they are inventing a new communication channel or improving any given one of these known channels, but instead assert that their invention is directed to “improved approaches . . . for determining the appropriate channel for sending such communications.” Id. ¶ 8. Restated, Appellants invention entails automating the decision-making for deciding how to provide a package delivery notification to an individual based upon received data. See claim 1. Appeal 2017-009367 Application 14/640,412 9 Claim 1, then, merely entails steps of data gathering (limitations [i] and [ii]), steps of automating decision-making (limitations [iii] and [iv]), and a step of sending information in a selected format (limitation [v]). Previous cases have similarly found that such activities are conventional computer activities or routine data-gathering steps. See, e.g., Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of the specification, requires anything other than off-the- shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”); OIP Techs. v. Amazon.com, Inc., 788 F.3d 1359, 1363, (Fed. Cir. 2015) (alteration in original) (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite “well-understood, routine conventional activit[ies],” by either requiring conventional computer activities or routine data-gathering steps); see also buySAFE, Inc. v. Google, Inc., 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.”); Bancorp Servs. v. Sun Life Assurance Co., of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Appellants argue that the rejection is facially deficient because it fails to address Appellants’ arguments made during prosecution and because it raises new arguments of patent ineligibility. App. Br. 6–7 (citing MPEP Appeal 2017-009367 Application 14/640,412 10 § 707.07(f)). These arguments are unpersuasive because both rationales relate to petitionable matters. The authority of the Board under 35 U.S.C. § 6(b) is limited to reviewing adverse decisions of patent examiners. If Appellants believe the rejection needs to be clarified, petitions to the Director are available under 37 C.F.R. § 1.181 to require an examiner to clarify an official action in accordance with 37 C.F.R. § 1.104. “[P]etitionable matters should be addressed before an appeal reaches the Board.” Ex Parte Frye, 94 USPQ2d 1072, 1078 (BPAI 2010). Also, by regulation, “[a]ny request to seek review of the primary examiner’s failure to designate a rejection as a new ground of rejection in an examiner’s answer must be by way of a petition to the Director . . . before the filing of any reply brief” and “[f]ailure of appellant to timely file such a petition will constitute a waiver of any arguments that a rejection must be designated as a new ground of rejection.” 37 C.F.R. § 41.40(a). Appellants also argue, inter alia, the invention is not just directed to various conventional data gathering steps, but the application of these steps for the purpose of ascertaining how to generate communication in the form of, e.g., a telephone call delivering a recorded announcement or data communications message in the form of a text message. . . . [T]he purpose is to control how the communication occurs, and the communication is not merely a post-solution activity. Therefore, the claims recite “something more” that make the claims patent eligible. App. Br. 17. This argument is unpersuasive. As explained above in the analysis of step 2A, prong 1, of the 2019 Guidance, delivering information reasonably can be characterized as managing personal behavior or interactions between Appeal 2017-009367 Application 14/640,412 11 people. Such steps of managing human behavior and interaction constitute certain methods of organizing human activity that are expressly recognized by the 2019 Guidance. As such, communication, per se, is not “something more” than an abstract idea. Appellants argue that the Examiner’s determination of what the claims are directed to is overly broad and incompatible with the scope of pre-emption of the claims. App. Br. 7–10. This argument is unpersuasive. We recognize that the Supreme Court has described “the concern that drives this exclusionary principle [i.e., the 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.” Id. Appellants argue that the rejection is improper because the Examiner did not follow the USPTO’s Enfish Guidelines. App. Br. 10–12 (citing USPTO subject matter eligibility guidelines that issued May 19, 2016) (“Enfish Guidelines”); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016) (after which the Enfish Guidelines are named). According to Appellants, the Enfish Guidelines state that “when determining Appeal 2017-009367 Application 14/640,412 12 whether a claim is directed to an abstract idea, it is appropriate [for the Examiner] to compare the claim [under examination] to claims already found to be directed to an abstract idea in a previous court decision.” App. Br. 11 (emphasis omitted) (citing Enfish Guidelines 1). Appellants then argue why the present claims are not similar in scope to those court decisions cited by the Examiner. Id. at 11–12. This argument is unpersuasive. The Office’s 2016 Guidelines have been superseded by the 2019 Guidelines, outlined above. Under step 2A, prong 1, of the 2019 Guidelines, the appropriate inquiry is whether the claims recite one of the recognized abstract ideas. 84 Fed. Reg. at 52–53. Appellants also argue that the fact that the Examiner has withdrawn the obviousness rejections in the Examiner’s Answer “impacts that patent eligibility analysis” and “supports a determination that the claims are directed to patent[-]eligible subject matter.” Reply Br. 2. This argument is unpersuasive. “The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981). A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. Mayo, 566 U.S. at 90. See also Parker v. Flook, 437 U.S. 584, 594–95 (1978) (holding claims to “a new and presumably better method for calculating alarm limit values,” of undisputed usefulness, to be directed to patent-ineligible subject matter); see also Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013) (“Groundbreaking, Appeal 2017-009367 Application 14/640,412 13 innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.”). In summary, the Examiner determined that claim 1 fails to recite an improvement to the functioning of a computer or to any other technology or technical field. See MPEP § 2106.05(a). And for the reasons set forth above, Appellants do not persuade us that the Examiner erred in this determination. Appellants likewise do not persuade us that claim 1 is directed to a particular machine, a particular transformation, or add other meaningful limitations. See MPEP §§ 2106.05(b), (c), (e). As such, Appellants fail to persuade us that claim 1 integrates the recited abstract idea into a practical application within the meaning of the 2019 Guidance. 84 Fed. Reg. at 52–55. Step 2B The Examiner further determines that the additional claim elements, viewed individually and as an ordered combination, are insufficient to amount to significantly more than an abstract idea. Non-Final Act. 4. More specifically, the Examiner finds that independent claims 1, 21, and 25 recite claim elements such as instructions, a computer processor, an interface a contact device, a profile database, memory, and a telephone number. Id. The Examiner determines that these recited elements “are all generic computer elements, and would [have been] routine in any computer implementation of the abstract idea.” Id. Appellants argue that the Examiner erred in determining that the claimed “contact device,” for example, is a generic computer element. App. Br. 12–14; Reply Br. 8–10. Appellants argue that the Examiner has not provided support for the allegation that the “contact device” is a generic Appeal 2017-009367 Application 14/640,412 14 computer element and that the Examiner has improperly ignored the Specification, which indicates the contrary. Id. Specifically, Appellants note that Appellants’ Specification “includes a glossary of terms that defines ‘Contact Device’ as ‘specialized communications device typically used in a contact center to originate communication to an identified individual. This would encompass devices configured to originate voice calls or SMS text calls.’” App. Br. 13 (citing Spec. ¶ 35). Appellants argue: One skilled in the art would not interpret this limitation as a “generic computer element” because the specification defines it as a specialized communications device, not as a general processing device. Indeed, claim 1 requires that the call to the telephone number placed by the contact device is “an SMS text call comprising a single text sent to the telephone number using a free-to-end-user service.” Again, one skilled in the art would not view this limitation as a “generic computer element” [because] . . . generic computers do not initiate SMS text calls. Id. Appellants’ argument is unpersuasive. Simply labeling a component as “specialized” does not necessarily mean that a computer component adds “significantly more” to an abstract idea within the meaning of a patent- eligibility inquiry. If this necessarily were so, clever claim drafters could circumvent all patent-eligibility rejections under 35 U.S.C. § 101 simply by labeling generic computer components as “specialized.” See Flook, 437 U.S. at 593 (“respondent incorrectly assumes that if a process application implements a principle in some specific fashion, it automatically falls within the patentable subject matter of § 101”). A better test for determining whether a computer component adds significantly more to an abstract idea is to inquire whether the claimed Appeal 2017-009367 Application 14/640,412 15 abstract idea can be implemented by a generic computer. Alice, 573 U.S. at 221 (“[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.”); see also Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that “[o]ur law demands more” than claim language that “provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it”). Furthermore, Appellants’ Specification supports the Examiner’s determination that the recited contact device was a generic computing device. Appellants cite to Figure 6 and paragraphs 138 and 139 of their Specification as providing support for the claim limitation of causing the package delivery notification call to be placed by the contact device. App. Br. 4. These cited portions merely depict and describe a flowchart used for determining what communication channel should be used for making the delivery notification call. See, e.g., Spec. FIG. 6 (depicting a decision tree with ultimate communication options including a voice call 620, a short message service (SMS) text call 630, an instant message 635 and no information being sent 660). The cited portions of Appellants’ Specification and Drawings do not indicate that the contact device must include any specialized processing components to carry out the communication-selection function or that it must include any specialized communications components to carry out these generic communication functions. Dependent Claims Appellants also argue that the analysis of the additional claim elements in the dependent claims is deficient. App. Br. 15. Appellants first take issue with the Examiner’s determination that “[a]s per claims 5–6, 8, Appeal 2017-009367 Application 14/640,412 16 21–24, and 26–29, the claims’ limitations further narrow the abstract idea and accordingly are not enough to make the claims eligible.” Non-Final Act. 4, cited in App. Br. 15 (emphasis added). Appellants argue all dependent claims narrow the scope of the corresponding independent claim, and this cannot be a reason why the limitations recited therein are not enough to make the claims patent eligible. If this logic were true, then no dependent claim could ever recite any limitations that make the claim patent eligible, since all dependent claims narrow the scope of their corresponding independent claim. App. Br. 15. This argument is unpersuasive. The Examiner’s position is not that the dependent claims are patent ineligible by virtue of the fact that the dependent claims merely narrow the scope of claim protection being sought. Rather, we understand the Examiner’s position to be that the dependent claims add limitations that narrow only the abstract ideas of the independent claims. Apple v. Ameranth Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction.”) Appellants’ first argument does not address the Examiner’s underlying determination that the dependent claims narrow only the abstract idea. See App. Br. 15. Appellants next argue that the Examiner’s determination “glosses over various limitations in the dependent claims that are clearly non-abstract.” Id. at 16. Appellants more specifically list the following claim limitations for which the Examiner allegedly provides no analysis: • Claim 5: “receive an opt-out indication in a SMS text message from the specified individual,” • Claim 22: “originate the package delivery notification call as a voice telephone call” and “play a pre-recorded announcement,” Appeal 2017-009367 Application 14/640,412 17 • Claim 23: “cause a SMS gateway system to originate the package delivery notification call,” • Claim 28: “the package delivery notification call is sent to the telephone number using a free-to-end-user service.” App. Br. 16. This argument is unpersuasive because we disagree with Appellants’ premise that the Examiner provided no analysis. Although admittedly thin on detail, the Examiner did reason that the dependent claims’ limitations only narrow the underlying abstract ideas that were recited in the independent claims. Non-Final Act. 4. As such, the Examiner’s reasoning is sufficient to shift the burden to Appellants to present arguments for why the claims do not merely narrow the claimed abstract ideas. But Appellants present no persuasive arguments. They only reproduce the claim language. “A statement [that] . . . merely points out what a claim recites will not be considered an argument for separate patentability of the claim.” 37 C.F.R. § 41.37(c)(1)(iv). For these reasons, Appellants have not persuaded us that the Examiner erred in concluding that the claims are directed to patent-ineligible subject matter under 35 U.S.C. § 101. DECISION The Examiner’s decision rejecting claims 1, 5, 6, 8, and 21–29 is affirmed.3 3 Upon any further prosecution, the Examiner should consider whether at least claim 1, for example, raises any questions of indefiniteness under 35 U.S.C. § 112(b). The preamble of claim 1 states that the claim is directed to “a computer readable medium comprising instructions that when executed by a computer processor in a contact device cause the computer processor Appeal 2017-009367 Application 14/640,412 18 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED to” perform recited method steps. Claim 1 (emphasis added). This language indicates that the claim is directed to a computer readable medium containing instructions that have yet to be executed by a computer processor. Limitation [v] of claim 1 sets forth the step of “caus[ing] the package delivery notification call to be placed . . . using the selected one of the plurality of campaign rule sets.” This limitation also indicates that claim 1 covers a process in which one particular campaign rule set has yet to be selected. In contrast, limitation [iv] of claim 1 recites that the exempt campaign rule set is selected and further recites what rules this rule set defines. This language alternatively indicates, then, that the claim is directed to a computer readable medium that already have been executed by a computer processor and already has had one of the computer instructions’ available rule sets selected. As such, the Examiner should consider whether the scope of claim 1, for example, is (1) broad enough to cover computer readable media prior to, but merely capable of, being executed by a computer processor, or (2) limited to such computer readable medium that already has been executed on a computer processor in a contact device and in which a campaign rule already has been selected. The Examiner also should consider whether it is reasonably clear which of these claim scopes is encompassed by claim 1. See MPEP 2173.05(c)(I) (discussing how the presence of a narrow range and a broader range within the same claim can lead to undue confusion as to the intended metes and bounds of the claim); see also Ex parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential) (“if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite”). Copy with citationCopy as parenthetical citation