Krishna Kishore. Dhara et al.

Patent Trials and Appeals Board

Oct 29, 2019

14856667 - (D) (P.T.A.B. Oct. 29, 2019)

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.
14/856,667 09/17/2015 Krishna Kishore Dhara 4366-919-CON-2 9787
48500 7590 10/29/2019
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
EXAMINER
HO, BINH VAN
ART UNIT PAPER NUMBER
2152
NOTIFICATION DATE DELIVERY MODE
10/29/2019 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):
cjacquet@sheridanross.com
edocket@sheridanross.com
pair_Avaya@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte KRISHNA KISHORE DHARA,
VENKATESH KRISHNASWAMY, EUNSOO SHIM,
and XIAOTAO WU1
____________________

Appeal 2018-008953
Application 14/856,667
Technology Center 2100
____________________

Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.

NAPPI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4 through 10, and 12 through 20. 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). According to Appellant, Avaya Inc. is the real party in interest.
App. Br. 2.
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INVENTION
The invention is directed to a system for predicting the subject,
logistics, and resources of associated with a communication event. Spec.
Abstract. Claim 1 is illustrative of the invention and is reproduced below.
1. A method comprising:
identifying, by a processor, a series of previous
communication events among a first plurality of human
participants, the series of previous communication events
being associated with a common resource used in each
one of the series of previous communication events;
receiving, by the processor, a request to create an
invitation for a future communication event the request
comprising the common resource;
based on a determination, by the processor, that the
future communication event comprises the common
resource, adding the first plurality of human participants
to the invitation; and
sending, by the processor via a communication
interface, the invitation to the first plurality of human
participants.

EXAMINER’S REJECTION2
The Examiner rejected claims 1, 2, 4 through 10, and 12 through 20
under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
Final Act. 3.
The Examiner rejected claims 1, 9, 15, and 18 under 35 U.S.C. §
103(a) as being unpatentable over the combined teachings or suggestions of

2 Throughout this Decision we refer to the Appeal Brief filed April 23, 2018
(“App. Br.”); Reply Brief filed September 13, 2018 (“Reply Br.”); Final
Office Action mailed December 28, 2017 (“Final Act.”); and the Examiner’s
Answer mailed July 13, 2018 (“Ans.”)
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Horvitz (US 8,271,631 B1, issued Sep. 18, 2012), Ritter (US 2009/0125818
A1, published May 14, 2009), and Lyon (US 2010/0312838). Final Act. 6–
13.
The Examiner rejected claims 2, 4 through 6, 10, 12, 13, 16, 17, and
19 under 35 U.S.C. § 103(a) as being unpatentable over the combined
teachings or suggestions of Horvitz, Ritter, Lyon, and Hehmeyer (US
2010/0235446 A1, published Dec. 9, 2010). Final Act. 14–18.
The Examiner rejected claims 7 and 14 under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings or suggestions of Horvitz,
Ritter, Lyon, Conmy (US 6,101,480, issued Aug. 8, 2002), and Blume (US
2004/0059785 A1, published Mar. 25, 2004). Final Act. 19–21.
The Examiner rejected claims 8 and 20 under 35 U.S.C. § 103(a) as
being unpatentable over the combined teachings or suggestions of Horvitz,
Lyon, and Conmy. Final Act. 21–22.

ANALYSIS
We have reviewed Appellant’s arguments in the Briefs, the
Examiner’s rejections, and the Examiner’s response to Appellant’s
arguments. Appellant’s arguments have not persuaded us of error in the
Examiner’s rejection of all of the claims under 35 U.S.C. § 101. However,
we are persuaded of error in the Examiner’s rejections under 35 U.S.C.
§ 103.
35 U.S.C. § 101 Rejection
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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Whoever 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, subject to the conditions and requirements of this title.

There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “[l]aws of
nature, natural phenomena, and abstract ideas.” Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
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, 69 (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
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 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 187; 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. (quoting Mayo, 566 U.S. at 77).
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“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office “USPTO” published
revised guidance on the application of § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Memorandum”). Under that guidance, we first determine 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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 Memorandum.

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DISCUSSION
The Judicial Exception
The Examiner determines the claims are not patent eligible because
they are directed to a judicial exception without reciting significantly more.
Final Act. 3. Specifically, the Examiner determines the claims are directed
collecting information, analyzing it and displaying the results, similar to
those found Abstract in Electric Power Grp., LLC v. Alstom S.A., 830 F.3d
1350 (Fed. Cir. 2016). Final Act. 3.
Appellant argues the claims are unlike those at issue in Electric Power
Group as in Appellant’s claims “a specific invitation is created and sent - a
result absent from the retrieving data, performing calculations and
displaying results of Electric Power Group.” Reply Br. 2.
We concur with the Examiner that representative claim 1 sets forth an
abstract concept, a mental process of collecting information, analyzing it and
displaying the results. We also consider claim 1 to set forth a method of
organizing human activity. Claim 1 recites “identifying … a series of
previous communication events among a first plurality of human
participants” (a data gathering or observation element); “receiving … a
request to create an invitation for a future communication event the request
comprising the common resource.” (A data gathering or observation
element); “based on a determination … that the future communication event
comprises the common resource, adding the first plurality of human
participants to the invitation” (a data analysis or evaluation element); and
“sending … the invitation to the first plurality of human participants” (a
means of communicating the result of the analysis). We consider these
limitations to recite an abstract mental process.
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The claims at issue in Electric Power Group recited several steps of
receiving data from various sources, detecting and analyzing the data and
displaying the data. Elec. Power Grp., 830 F.3d at 1351–52. The court
stated “we have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas.” Id. at 1353. We find no distinction
between sending via a communication interface an invitation and displaying
data, as the term invitation is merely a title for the data and displaying data is
presenting information via a communication interface.
We also note that Appellant’s Specification identifies that the
invention is to fulfil a need to “quickly and efficiently find useful, relevant
information for inviting people to and participating in communication
events.” Spec. ¶ 4. Claim 1 recites identifying previous communications
between human participants, receive a request to create an invitation for
future communications, adding a human participant to an invitation and send
the invention to a human participant. We consider claim 1 to recite steps of
managing personal behavior and interactions between people, an abstract
idea, a method organizing human activity.
Thus, we conclude representative claim 1 sets forth an abstract idea.

Integration of the Judicial Exception into a Practical Application
The Examiner finds that the additional claim limitations “do not
include additional elements that are sufficient to amount to significantly
more than the abstract idea because a communication events are well-known
techniques in the art of a communication events.” Final Act. 3.
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Appellant argues that the claims are directed to improvements in
computers as tools as “the claims at issue here, gather information from prior
communications that are associated with a common resource and, upon
determining an invitation is created that identifies the resource, selects those
previously engaged in the prior discussion for inclusion in, and sending, the
invitation.” App. Br. 6 (citing Elec. Power Grp., Enfish, LLC v Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016), and BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)). Further,
Appellant argues the claims are similar to those at issue in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) as the:
claims do not merely recite the performance of a business
method from the pre-Internet and computerized world. Rather it
is only with the advent of networks and computers that the
technical issues emerged and that claims of the instant
application seeks to improve.
App. Br. 7.
We are not persuaded of error by Appellant’s arguments. As
discussed above, we concur with the Examiner that the claims recite an
abstract idea. Further, we do not consider the claims to be drawn to a
practical application of the abstract idea as we do not find that the claim
recites an improvement to the functioning of the computer or other
technology or otherwise tied to technology. App. Br. 6.
We are not persuaded of error by Appellant’s argument, which relies
upon Enfish and asserts the claims are directed to improving a computer
technology. As discussed above, Appellant’s Specification identifies that
the invention is to fulfill a need to “quickly and efficiently find useful,
relevant information for inviting people to and participating in
communication events.” Spec. ¶ 4. The Specification does not identify that
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the method changes the operation of a computer to improve the function of
the computer, but rather to improve the abstract concepts of managing
personal behavior and interactions between people (and mental process).
Thus, the claims, when interpreted in light of the Specification, merely recite
use of a computer as a tool to implement a method of organizing human
activity involving a fundamental economic principle (an abstract idea). See,
e.g., RecogniCorp, 855 F.3d at 1327 (“Unlike Enfish, [the claim] does not
claim a software method that improves the functioning of a computer . . .
[but] claims a ‘process that qualifies as an “abstract idea” for which
computers are invoked merely as a tool.’”) (Citation omitted).
Further, we do not find that the claims are necessarily rooted in
computer technology as were the claims in DDR Holdings. In DDR
Holdings, the claimed invention created a hybrid web page that combined
advantageous elements from two web pages, bypassing the expected manner
of sending a visitor to another party’s web page, in order to solve the
internet-centric problem of retaining website visitors. DDR Holdings, 773
F.3d at 1257–1259. Unlike DDR Holdings, the claims do not overcome a
problem specifically arising in the realm of computer networks. While the
user of computer processors are recited in the method of sending an
invitation, the creation of invitations for a human person to engage in a
communication event is an old custom (e.g., inviting a person to a party
based upon meeting them at a prior party) and predates computer
technology. Although Appellant states that the computer implementation
resulted in technical issues that the claims seek to improve (Appeal Br. 7.
Reply Br. 3), Appellant has not identified any such technical issues, nor
explained how the claimed invention provides a technical improvement.
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Thus, the problem addressed in representative claim 1 is not related to a
computer or to another technology, but instead to “the performance of some
business practice known from the pre-Internet world along with the
requirement to perform it” via computer and Internet (web server), which the
DDR court distinguished as not involving solutions necessarily rooted in
computer technology. DDR Holdings, 773 F.3d at 1257. Thus, we conclude
representative claim 1 does not recite a practical application of the judicial
exception.
Significantly More than the Abstract Idea
Under the Memorandum, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
Representative claim 1 recites the additional element of a processor.
Appellant’s Specification identifies that the invention is employed using a
“basic general purpose system or computing device”. See Spec. ¶¶ 27 and
28. As such we concur with the Examiner that the additional elements recite
well known elements. Final Act. 3
In summary, Appellant’s arguments have not persuaded us of error
in the Examiner’s determination that representative claim 1 is directed to an
abstract idea; both a method of collecting/gathering information and
analyzing it (mental processes) and to a method of organizing human
activity. Further, Appellant’s arguments have not persuaded us that the
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Examiner erred in finding that the claims are not: directed to an
improvement in the functioning of the computer or to other technology or
other technical field; directed to a particular machine; directed to performing
or affecting a transformation of an article to a different state or thing;
directed to using a judicial exception in some meaningful way beyond
linking the exception to a particular technological environment such that the
claim as a whole is more than a drafting effort to monopolize the judicial
exception. For these reasons, we are unpersuaded that the claims recite
additional elements that integrate the judicial exception into a practical
application. See Memorandum, 84 Fed. Reg. at 54. Accordingly, we sustain
the Examiner’s rejection of claim 1.
Appellant has not presented separate arguments with respect to
claims 2, 4 through 10, and 12 through 20, and thus these claims are grouped
with claim 1. Accordingly, we sustain the Examiner’s rejection of claims 1,
2, 4 through 10, and 12 through 20 under 35 U.S.C. § 101 as being directed
to a patent-ineligible abstract idea, that is not integrated into a practical
application, and does not include an inventive concept.

35 U.S.C. § 103 Rejection
Appellant argues that that the Examiner’s rejection of independent
claims 1, 9, and 15 is in error as the combination of the references do not
teach creating an invitation to a future event with a common resource, based
upon a prior communication event with the common resource. App. Br. 9–
10, Reply Br. 3–4. Specifically, Appellant argues that Horvitz categorizes
people into groups for invitations but does not discuss a common resource.
App. Br. 9, Reply Br. 3. Further, Appellant argues that Ritter discuss
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participants of a meeting being invited to a next meeting but also does not
discuss the common resource. App. Br. 9–10, Reply Br. 3–4.
The Examiner’s rejection repeats the language of claim 1 and cites to
Horvitz to teach the disputed limitations. Final Act. 6–7 (citing Horvitz, col.
6, ll. 27–34). Further, in response to Appellant’s arguments the Examiner
cites to several additional paragraphs and figures in Horvitz, and finds that
Horvitz teaching that a user is included in communications concerning topic
x meets the claims, i.e., equating topic x with the claimed resource. Ans.
10–11 (citing Horvitz, col. 6, ll. 28–34, col. 42, ll. 38– 46, and Fig. 21).
We have reviewed the teachings of Horvitz cited by the Examiner and
disagree with the Examiner’s findings. Each of the independent claims
recites communication events being associated with a resource. Appellant’s
Specification identifies resources broadly, as “files attached, files used,
communication event minutes, recordings made, Internet browsers, and
other programs which may be utilized by the user in the communication
event” and “notes, documents, recordings, software programs, Internet
searches, files or applications which the user has a high probability of using
given the current logistics and communication context of the meeting.”
Spec ¶¶ 06 and 39. Thus, the resources are things that the user will use/need
during a conference. The Examiner has not explained how the topic of a
meeting in Horvitz equates to “resources.” Accordingly, we do not sustain
the Examiner’s obviousness rejection of independent claims 1, 9 and 15.
The Examiner’s rejections of dependent claims 2, 4 through 8, 10, 12
through 14, and 16 through 20 similarly rely upon Horvitz to teach the
limitation of the independent claims. Accordingly, we similarly do not
sustain the Examiner’s obviousness rejections of dependent claims 2, 4
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through 8, 10, 12 through 14, and 16 through 20.

CONCLUSION
We affirm the Examiner’s rejection of claims 1, 2, 4 through 10, and
12 through 20 under 35 U.S.C. § 101 but we reverse the Examiner’s
rejections of claims 1, 2, 4 through 10, and 12 through 20 under 35 U.S.C.
§ 103.

Claims
Rejected
35 U.S.C § Reference(s)/Basis Affirmed Reversed
1, 2, 4–10, 12–
20
101 1, 2, 4–10,
12–20

1, 9, 15, 18 103 Horvitz, Ritter, Lyon 1, 9, 15, 18
2, 4–6, 10, 12,
13, 16, 17, 19
103 Horvitz, Ritter, Lyon,
Hehmeyer
2, 4–6, 10, 12,
13, 16, 17, 19
7, 14 103 Horvitz, Ritter, Lyon,
Conmy, Blume
7, 14
8, 20 103 Horvitz, Ritter, Conmy 8, 20
Outcome 1, 2, 4–10,
12–20

AFFIRMED