Livne, Eshai et al.

Patent Trials and Appeals Board

Nov 4, 2019

13340177 - (D) (P.T.A.B. Nov. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/340,177 12/29/2011
49443 7590 11/19/2019
Pearl Cohen Zedek Latzer Baratz LLP
1500 Broadway
12th Floor
New York, NY 10036
FIRST NAMED INVENTOR
Eshai Livne
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
P-79280-US 3974
EXAMINER
DELI CH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/19/2019 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):
USPTO@PearlCohen.com
Arch-USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ESHAI LIVNE,
ITAI NAHSHON, and PAUL HAROLD LEAMON
Appeal 2018-000818
Application 13/340, 177
Technology Center 3600
Before MURRIEL E. CRAWFORD, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision rejecting claims 1-14. We have jurisdiction under
35 U.S.C. § 6(b).
An Oral Hearing in this Appeal was held on October 24, 2019.
1 We use the word "Appellant" to refer to "applicant" as defined in
37 C.F.R. § 1.42. "The real parties in interest in this Appeal are IEX
Corporation, the assignee of U.S. Patent Application No. 13/340,177, Nice-
Systems Ltd., its parent company, and JPMorgan Chase Bank, N.A, as
Administrative Agent of a patent security agreement." Appeal Br. 1.
Appeal 2018-000818
Application 13/340,177
We AFFIRM.
ILLUSTRATIVE CLAIM2
1. A method for generating a process object for
monitoring one or more computer applications during use,
performed on a computing device having a processor and
memory, the method comprising:
initiating, by the processor, recording of a computer
session when one or more computer applications are running;
as the computer session is being recorded, continuously
capturing, by the processor, a set of events associated with the
computer session based on the recorded computer session, at
least one of the set of events being a screen activation event
having an associated agent-generated screenshot;
generating, by the processor, a process tree based on the
captured set of events including the screen activation event,
wherein the process tree is generated automatically as the
computer session is being recorded and without requiring
additional user input to define the process tree;
instantiating, by the processor, the process tree into an
application monitoring process object;
using, by the processor, the application monitoring
process object for a subsequent monitoring of the one or more
applications; and
providing, by the processor, data generated from the
subsequent monitoring activity using the application monitoring
process object to improve one of: a workforce management
system, a back office system, a performance management
system, and a quality management system.
2 Claim 1 of the Appeal, presented here, reflects an amendment submitted on
May 10, 2017 and authorized by the Examiner. See Advisory Action (June
20, 2017).
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Application 13/340,177
REFERENCES
The prior art relied upon by the Examiner is:
Erdosi US 2008/0256399 Al
Grenell US 2009/0018731 Al
Ricketts US 2009/0049394 Al
O'Brien US 2011/0071869 Al
Deshmukh US 2011/0218841 Al
REJECTIONS
Oct. 16, 2008
Jan. 15,2009
Feb. 19,2009
March 24, 2011
Sept. 8, 2011
I. Claims 1-14 are rejected under 35 U.S.C. § 101 as ineligible
subject matter.
II. Claims 1-10 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ricketts, 0 'Brien, Grenell, and Deshmukh.
III. Claims 11-14 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Ricketts, 0 'Brien, Grenell, Deshmukh, and Erdosi.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
Under 35 U.S.C. § 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. Yet, subject matter belonging to anyofthe statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
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Application 13/340,177
patent protection would risk inhibiting future innovation premised upon
them. Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, "[a]t some level, 'all inventions ... embody, use, reflect,
rest upon, or apply"' these basic tools of scientific and technological work.
Alice Corp. v. CLS Bankint'l, 573 U.S. 208,217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for "distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention." Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88-89 (2012)). The first step determines whether
the claim is directed to judicially excluded subject matter (such as a so-
called "abstract idea"); the second step determines whether there are any
"additional elements" recited in the claim that ( either individually or as an
"ordered combination") amount to "significantly more" than the identified
judicially excepted subject matter itself. Id. at 217-18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance with judicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) ("2019
Revised Guidance"). Under the 2019 Revised Guidance, a claim is "directed
to" an abstract idea, only if the claim recites any of ( 1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes - without integrating such abstract idea into a "practical
application," i.e., without "apply[ing], rely[ing] on, or us[ing] the judicial
exception in a manner that imposes a meaningful limit on the judicial
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Application 13/340,177
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception." Id. at 52-55. The considerations
articulated in MPEP § 2106.05(a}-(c) and (e}-(h) bear upon whether a claim
element ( or combination of elements) integrates an abstract idea into a
practical application. Id. at 55. A claim that is "directed to" an abstract idea
constitutes ineligible subject matter, unless the claim recites an additional
element ( or combination of elements) amounting to significantly more than
the abstract idea. Id. at 56.
Although created "[i]n accordance with judicial precedent" (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court's Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of§ 101. Id. at 53-54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited, Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54--55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element ( or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
According to the Examiner, "[t]he claims are directed to the abstract
idea of itself that includes a series of steps directed to monitoring
applications, organizing the captured data into a process tree, instantiating an
object and using the object for additional monitoring." Final Action 8.
Yet, we agree with the Appellant that the Examiner has not
characterized the claims, or any limitation thereof, as an abstract idea within
the ambit ofprecedential case law or the 2019 Revised Guidance. See
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Application 13/340,177
Supplemental Appeal Br. 2--4. Notably, independent claim 1 (the sole
independent claim in this Appeal) does not recite a mathematical concept,
and the Examiner states nothing to the contrary. See id. at 2.
Nor may the features of claim 1 be characterized as belonging among
ineligible methods of organizing human activity. According to the 2019
Revised Guidance, 84 Fed. Reg. at 52, such methods of organizing human
activity pertain to "fundamental economic principles or practices,"
"commercial or legal interactions," and "managing personal behavior or
relationships or interactions between people." By contrast, claim 1 is drafted
in terms of computer-implemented operations ( e.g., "recording ... a
computer session"; "capturing ... a set of events associated with the
computer session based on the recorded computer session, at least one of the
set of events being a screen activation event having an associated agent-
generated screenshot"; "generating ... a process tree based on the captured
set of events including the screen activation event"; and "instantiating, by
the processor, the process tree into an application monitoring process
object").
In addition, the method of claim 1 does not recite limitations
constituting mental processes - i.e., limitations that could practically be
performed in the human mind. See id. n.14. The Examiner (Final Action 9)
compares the claimed features of "generating ... a process tree based on the
captured set of events including the screen activation event" and
"instantiating, by the processor, the process tree into an application
monitoring process object" to the mentally performable activity of using
categories to organize, store, and transmit information in Cyberfone Systems,
LLC v. CNN Interactive Group, Inc., 558 F. App'x 988, 991-92 (Fed. Cir.
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Application 13/340,177
2014) (nonprecedential). Yet, the Examiner does not adequately establish
that either "generating ... a process tree based on the captured set of events
including the screen activation event" or "instantiating, by the processor, the
process tree into an application monitoring process object" could be
performed practically in the human mind. Notably, the Specification
describes "generating ... a process tree" through the operation of a
"configurator tool" as follows:
Using [a configurator] tool, a user navigates to a Business
Logic window tab, selects a New Process button, assigns a
name to the process, and then defines the relevant screen
elements to be used as triggers, the properties of the process,
the one or more task(s) of the process that are to be monitored,
the rules or events that may be designated to "start" and/or
"stop" the monitoring for each task, and so forth. The result of
this configuration is a process tree.
Spec. 15, 11. 13-19. Further, the term "instantiation" is generally understood
to mean "[i]n object-oriented programming, a process in which an instance
of a class (that is, an object) is created from the class template by supplying
the needed properties (values)." Webster's New World Computer
Dictionary, Bryan Pfaffenberger (10th ed., 2003) ("instantiation"),
https :// search. credoreference. com/ content/ entry/webstercom/instantiation/0?
institutionld=743 (accessed 29 Oct. 2019). Thus, contrary to the Examiner's
position (see Final Action 9), these identified processes of claim 1 differ
substantially from the referenced use of categories to organize, store, and
transmit information addressed in Cyberfone.
In view of the foregoing, the Examiner does not adequately establish
that independent claim 1 recites judicially excepted subject matter, under
Step 2A, Prong One, of the 2019 Revised Guidance. Accordingly, we do not
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Application 13/340,177
sustain the rejection of independent claim 1 and dependent claims 2-14
under 35 U.S.C. § 101.
Obviousness
The Appellant contends that the cited prior art references fail to teach
or suggest the following limitations of independent claim 1:
as the computer session is being recorded, continuously
capturing, by the processor, a set of events associated with the
computer session based on the recorded computer session, at
least one of the set of events being a screen activation event
having an associated agent-generated screenshot; [and]
generating, by the processor, a process tree based on the
captured set of events including the screen activation event,
wherein the process tree is generated automatically as the
computer session is being recorded and without requiring
additional user input to define the process tree.
See Appeal Br. 19-22.
The Appellant argues:
It is clear in O'Brien that the tree structure is built based
on user input before the process is run. Building a tree
structure before the process is run based on user input, as is
done in O'Brien, is the opposite of the claimed invention which
requires automatically generating a process tree " ... as the
computer session is being recorded and without additional user
input to define the process tree" (emphasis added). To
emphasize this distinction, and for the purposes of advancing
prosecution of this application, Appellant previously amended
claim 1 to additionally specifically recite: "as the computer
session is being recorded, continuously capturing, by the
processor, a set of events associated with the computer session
based on the recorded computer session" ( emphasis added). As
such, it is clear that O'Brien does not teach or suggest at least
this feature of claim 1.
In claim 1 as amended, the tree is generated from data
different from the data used to generate the tree in O'Brien.
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0 'Brien teaches a use presenting an organized process to a
computer, and the computer creating a tree from the process.
O'Brien, para. [0009]. In contrast, claim 1 teaches a computer
capturing events and creating a tree based on the events. In
0 'Brien, a process, which includes for example activities,
dependencies, and conditions for actions to take place, is used
as input for O'Brien to create the tree. O'Brien, paras. [0009],
[0012], and [0013]. To the extent that O'Brien's input data
results from a screen it is merely user input typed into on-screen
forms, the user input being the user created process. 0 'Brien,
para. [0013]. Thus, O'Brien cannot teach or suggest
"generating ... a process tree based on the captured set of
events" ( emphasis added). "Events" as claimed ("events
associated with the computer session based on the recorded
computer session, at least one of the set of events being a screen
activation event having an associated agent-generated
screenshot") are not used to create a tree in O'Brien or any
other cited reference.
Appeal Br. 20-21. The Appellant goes on to assert deficiencies in the
Grenell reference, as well, stating: "Grenell does not cure these deficiencies,
nor does Grenell teach or suggest 'wherein the process tree is generated
automatically as the computer session is being recorded and without
requiring additional user input to define the process tree,' as the Office
Action asserts on page 19." Id. at 21. The Appellant argues:
Grenell shows that a previously existing process tree, i.e., a
previously defined process tree, can be restarted as a "new
process tree" to avoid the software program and the monitoring
program from being shut down simultaneously. Appellant
respectfully submits that this is clearly not the same as
"generating, by the processor, a process tree based on the
captured set of events including the screen activation event,
wherein the process tree is generated automatically as the
computer session is being recorded and without requiring
additional user input to define the process tree;" as recited in
claim 1 in accordance with embodiments of the invention. The
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Application 13/340,177
Office Action (page 19) states that "Grenell [O 109-011 OJ
describes how events that can result in the generation of a new
process tree include restarting a program or a monitoring
session." However, as explained above, there is no process tree
"generatecf' by Grenell: Grenell, at best, executes an existing
process tree. Thus, Grenell cannot teach or suggest "wherein
the process tree is generated automatically as the computer
session is being recorded and without requiring additional user
input to define the process tree." As Grenell does not generate
a process tree, Grenell also does not teach "generating, by the
processor, a process tree based on the events, wherein the
process tree is generated automatically as the session is being
recorded and without requiring additional user input to define
the process tree," as the Examiner states on page 19 of the
Office Action.
Id. at 21-22. In addition, with regard to the claimed "captured set of events"
including "a screen activation event having an associated agent-generated
screenshot," the Appellant contends that "Deshmukh also does not cure this
deficiency, and the Office Action does not allege as much." Id. at 22.
The foregoing arguments do not persuade us of error in the rejection,
because the Examiner relies upon the combined teachings of the Ricketts,
0 'Brien, Grenell, and Deshmukh, in order to satisfy the identified
limitations of claim 1 - but the Examiner does not rely upon O'Brien or
Grenell alone, in the manner that the Appellant alleges.
In particular, the Examiner relies upon the combined teachings of
Ricketts (i1i112, 30-31, 35-38, 52, 64---65, 71-72, Fig. 1) and Deshmukh
(i1i15, 52-55, 66-68, Figs. 1, 5, 7), in order to satisfy claim 1 's features of
"continuously capturing ... a set of events associated with the computer
session based on the recorded computer session." See Answer 9-10. See
also Final Action 14, 20-23. In addition, the Examiner (Final Action 20-23)
relies upon Deshmukh for teaching claim 1 's feature of "capturing ... a
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screen activation event having an associated agent-generated screenshot."
See Deshmukh ,r 5 ("Current monitoring tools used for monitoring an
agent's desktop interaction activities may include web logging tools,
application logging tools, screen capture tools, screen recording tools and
the like.")
As noted above, the Appellant asserts that Grenell generates a
previously existing process tree - a circumstance that allegedly does not
amount to the claimed features of "generating ... a process tree based on the
captured set of events ... , wherein the process tree is generated
automatically as the computer session is being recorded and without
requiring additional user input to define the process tree." Appeal Br. 21-
22. Yet, even if Grenell were to create a process tree identical to one that
had existed before, it would, nevertheless, satisfy the claim limitation at
issue. As the Examiner points out, the Appellant points to no recitation in
claim 1 that might preclude "generating ... a process tree" that had existed
previously. See Answer 10-11.
In addition to the arguments recounted above, the Appellant also
argues that the obviousness rejection of claim 1 is erroneous, because
"it would not have been obvious to combine the cited references." Appeal
Br. 22. Specifically, the Appellant contends that "Grenell is in a different
technical field and is directed to a different set of problems, and one skilled
in the art would not look to Grenell to improve on Ricketts and/or O'Brien."
Id.
The Appellant appears to contend that Grenell is a non-analogous
prior art reference, such that it may not be relied upon to establish
obviousness. Subject matter is analogous if it is: (1) from the same field of
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Application 13/340,177
endeavor as the claimed invention (regardless of the problem addressed); or
(2) reasonably pertinent to the particular problem with which the inventor is
involved (even if not within the field of the inventor's endeavor). In re
Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). In the instant case, however,
the Appellant does not adequately the predicate facts needed to demonstrate
a shortcoming, with respect to either prong delineated in Bigio.
In view of the foregoing analysis, we are not persuaded of error in the
obviousness rejection of independent claim 1. In regard to dependent claims
2-14, the Appellant relies upon the arguments presented for independent
claim 1. Appeal Br. 23. Accordingly, we sustain the rejection of claims 1-
14 under 35 U.S.C. § 103(a).
1-14
1-10
CONCLUSION
In summary:
101 Ineligible subject
matter
103(a) Ricketts, 0 'Brien,
Grenell, Deshmukh
11-14 103(a) Ricketts, 0 'Brien,
Grenell, Deshmukh,
Erdosi
1-10
11-14
1-14
TIME PERIOD FOR RESPONSE
1-14
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)(l )(iv).
AFFIRMED
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Notice of References
Document Number
Countiy Cotie-Number-Kind Code
A US-
B US-
c US-
C\ US-!J
E US-
F US-
c; US-
H US-
US-
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K US-
L US-
M US-
Document Number
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Cited
Date
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Date
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Application/Contro! No. Applicant(s)/Patent Under Patent
Appeal No. 2018 .. ()00818
13/340, 177
Examiner Art Unit
3623
Page 1 of ·1
U.S. PATENT DOCUMENTS
Name CPC Classification US Classification
FOREIGN PATENT DOCUMENTS
Country Name CPC Classification
NON-PATENT DOCUMENTS
* Include as applicable: Author, Tille Date, Publ;sher, Edition or Volume, Pertinent Pages)
u
Webster's New World Computer Dictionary, Bryan Pfaffonberger (l 0th ed., 2003) ("instantiation"), https://
search.credoreference.com/ content/ entry/webstercom/instantiation/O?institutionld= 7 43 ( accessed 29 Oct 2019)
V
w
X
',<\ copy of tt11s reference 1s not being furr11shed w1m mis Office act1orL (See MPEP § 707.05(a).)
Dates in MM-YYYY tormat are publication dates. Classifications may be US or foreign.
U.S. Patent and Trademark Office
PT0-892 (Rev. 01-2001) Notice of References Cited Part of Paper r~o. 20170303
.in stan tiaticm
frorn V/ ebster1s_ rv~e1.v__!/V1or/cf''' _(:orn;Juter _Di ctiono{)l
Vievv articie on Credo
In object-oriented pro£1rarnmin£J, a process in which an lnstance of a dass (that ls, an object) is created
from the class template by supplying tr1e needed properties (values). See dm2~ .. QIJJfc-:;_;;L QIJJfc-:;_;;t.rn:[0.rn.0.d.
proman1rn1nc:.
https:J/search.c:redoreference.corn/content/ent1v1'ivebsterc:o:11/:nsta::tiation10
APA
instantiation. (2003). In 8. Pfafienberger, Webster's nevv Wor!d&Trode; Computer Dictionory (10th ed.).
Boston, MA: Hou£1hton MiffHn Harcourt Retrieved from
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Chicago
"instantiation." In Vl/ebster's New World'"' Cornputer Dictionary, by B1yan Pfaffenberger. 10th ed. Houghton
Mifflin f·kircoutt, 2003. https://semch.credoreference.com/content/entry/1,vebstercom/instantlc'ltioniO?
instit ut ionld= 7 43
Harvard
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[Online_]. Boston: Houghton Mifflin Harcourt. Avai!abie from:
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[Accessed 29 October 2019].
l\lUA
"instantiation." Vlebster's New World''' Computer Dictionary, Bryan Pfaffenberger, Houghton Mifflin
Harcou1t, 10th edition, 2003. Credo f?eference,
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