NICE-SYSTEMS LTD.

Patent Trials and Appeals Board

May 12, 2020

14267638 - (D) (P.T.A.B. May. 12, 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.
14/267,638 05/01/2014 Omer EREL P-77957-US 6102
49443 7590 05/12/2020
Pearl Cohen Zedek Latzer Baratz LLP
1500 Broadway
12th Floor
New York, NY 10036
EXAMINER
HOANG, HAU HAI
ART UNIT PAPER NUMBER
2167
NOTIFICATION DATE DELIVERY MODE
05/12/2020 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):
Arch-USPTO@PearlCohen.com
USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte OMER EREL, TAMIR LEVY, and OFIR ROTH
________________

Appeal 2019-000672
Application 14/267,638
Technology Center 2100
________________

Before JASON V. MORGAN, LINZY T. McCARTNEY, and
MATTHEW J. McNEILL, 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, 3–8, 10, 12–18, and 20–22. Claims 2,
9, 11, and 19 are canceled. Corrected Appeal Br. 3–5 and 7 (July 3, 2018).
An oral hearing was held April 21, 2020. A transcript was entered into the
record April 30, 2020. 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 the real party-in-interest as NICE LTD.
Appeal Br. 1 (June 18, 2018) (“Appeal Br.”)
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Summary of the disclosure
Appellant’s claimed subject matter relates to reporting invalid
recordings of interactions where records from an interaction exchange list
are matched with records from a recorded interaction list to determine
whether all listed interactions have operational recorded interactions.
Abstract.
Representative claim2
1. A method for identifying and reporting invalid recordings of
interactions, performed on a computer having a processor,
memory, and one or more code sets stored in the memory and
executing in the processor, the method comprising:
receiving, by the processor, from an interaction exchange an
interaction exchange list of interactions, transferred as
interaction metadata from the interaction exchange;
generating, by the processor, a recorded interaction list of
recorded interactions, wherein the recorded interactions were
recorded by a recording device and stored in a memory;
during a record matching process, matching, by the processor,
records from the interaction exchange list with records from the
recorded interaction list, wherein each record in the interaction
exchange list is matched to a record in the recorded interaction
list having the same record parameters selected from a group
consisting of: interaction identification, user device
identification, number of segments in the interaction,
interaction duration, interaction start time, interaction stop time,
and interaction date; and
for each record in the interaction exchange list:
if a matching record from the recorded interaction list is
found:

2 All quotes from the claims are based on the Corrected Appeal Brief filed
July 3, 2018.
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determining, by the processor, if the associated
recorded interaction is operational;
wherein, determining if the associated recorded
interaction is operational comprises at least one of
(1) analyzing one or more predefined exceptions
fields to determine whether or not an exception
applies which renders the associated recorded
interaction operational or non-operational; and
(2) attempting to play the recording and testing for
any system errors; and
if no matching record from the recorded interaction list is
found or if the associated recorded interaction is
determined to be non-operational:
reporting, by the processor, that the associated
recorded interaction is invalid;
wherein reporting by the processor that the
associated recorded interaction is invalid
comprises displaying the invalid associated
recorded interaction on a display for a user;
automatically sending, by the processor, a request
to initiate a new interaction with a user device
interacting in the invalid recorded interaction;
recording, by the processor, the new interaction
with the user device; and
verifying, by the processor, that the contact center
stores a record and an operational recorded
interaction for the new interaction.
The Examiner’s rejection
The Examiner rejects claims 1, 3–8, 10, 12–18, and 20–22 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter without
significantly more. Non-Final Act. 2–20.
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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.
Last year the U.S. Patent and Trademark Office (USPTO) published
guidance on the application of the two-part analysis. USPTO, 2019 Revised
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) (“Oct. 2019
Update”). 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
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practice, or mental processes) (see 2019 Revised Guidance, 84
Fed. Reg. at 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. at 56.
ANALYSIS
Step 2A, prong one
The Examiner determines that claim 1 “recites comparing and
matching an interaction exchange list with a recorded interaction list based
on record parameters to detect discrepancies in the records.” Non-Final Act.
2–3. Thus, the Examiner determines the recitations of claim 1 “are similar to
the concept identified as abstract ideas by the court[s], such as Obtaining
and comparing intangible data.” Id. at 3 (citing CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011)); see also, e.g., Ans. 10.
That is, although Appellant argues “the Examiner does not allege that the
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claims fall into one of the three categories identified in the Jan. 2019
Revised Guidance” (Supp. Appeal Br. 2 (Apr. 15, 2020)), the Examiner’s
determinations are reasonably characterized as determining claim 1 recites
mental processes (i.e., concepts performed in the human mind, including
observation, evaluation, judgment, opinion), and thus an abstract idea (see
CyberSource, 654 F.3d at 1376–77; 2019 Revised Guidance, 84 Fed. Reg. at
52).
Appellant contends the Examiner “impermissibly simplified [claim 1]
by pointing to the preamble of the claim and arguing that ‘it is clearly in the
claim.’” Reply Br. 6. Appellant contends that the “Examiner’s reliance on
the preamble of the claim in identifying an alleged abstract idea literally
ignores every limitation in the body of the claim and specific requirements
of the claims.” Id.
Appellant’s arguments are unpersuasive because the Examiner’s
characterization of claim 1 accords with recitations throughout the claim, not
just in its preamble. In particular, claim 1 recites steps that include
“‘collecting information, analyzing it, and displaying certain results of the
collection and analysis,’ where the data analysis steps are recited at a high
level of generality such that they could practically be performed in the
human mind.” Oct. 2019 Update at *7 (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)).
Specifically, claim 1 recites the information collecting steps of
“receiving . . . an interaction exchange list” and “generating . . . a recorded
interaction list of recorded interactions.” Claim 1 recites the analysis steps of
“matching . . . records from the interaction exchange list with records from
the recorded interaction list” and “determining . . . if the associated recorded
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interaction is operational.” And claim 1 recites displaying certain results by
“reporting . . . that the associated recorded interaction is invalid” and
“sending . . . a request to initiate a new interaction.”
The information collection recitations of receiving an interaction
exchange list and generating a recorded interaction list recite insignificant
extra-solution activities. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1310 (Fed. Cir. 2016) (“the prohibition against patenting
abstract ideas cannot be circumvented by limiting the use of the idea to a
particular technological environment or adding insignificant extra-solution
activity”); see also, e.g., Elec. Power, 830 F.3d at 1351–52 (patent-ineligible
claim recited “receiving a plurality of data streams” and data from power
system and non-grid data sources); Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1345 (Fed. Cir. 2014)
(patent-ineligible claim recited receiving output from “an automated
digitizing unit”).
The displaying recitations of claim 1—along with additional
recitations that include “recording . . . the new interaction” and “verifying
. . . that the contact center stores a record and an operational recorded
interaction for the new interaction”—represent conditional steps that need
only be performed “if no matching record from the recorded interaction list
is found or if the associated recorded interaction is determined to be non-
operational.” See Ex parte Schulhauser, Appeal No. 2013-007847, 2016 WL
6277792, at *5 (PTAB 2016) (precedential) (the broadest reasonable
interpretation of a claim to a method excludes conditional steps that need not
be performed). That is, if a matching record is found and the associated
recorded interaction is operational, the display steps and other conditional
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steps are not performed. Thus, we need only consider whether the
embodiment that performs only information collection and analysis steps
recites an abstract idea. Cf. Mentor Graphics Corp. v. EVE-USA, Inc., 851
F.3d 1275, 1295 (Fed. Cir. 2017) (citing MPEP § 2106 (9th ed. Mar. 2014))
(“a claim [that] covers ‘both statutory and non-statutory embodiments,’ . . .
is not eligible for patenting”).
Because the collection and conditional display recitations are
insignificant extra-solution activities, we focus on the analysis recitations.
Our reviewing court has “treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Elec. Power,
830 F.3d at 1354. That is, steps that “can be performed in the human mind,
or by a human using a pen and paper” are unpatentable mental processes.
CyberSource, 654 F.3d at 1372.
Here, the analytical step of “matching . . . records from the interaction
exchange list with records from the recorded interaction list” can be
performed in the human mind. Cf. Univ. of Utah Research Found. v. Ambry
Genetics, 774 F.3d 755, 763 (Fed. Cir. 2014) (“comparing BRCA sequences
and determining the existence of alterations” is an abstract idea). Matching
records as claimed entails matching records in the interaction exchange list
with records in the recorded interaction list “having the same record
parameters selected from a group consisting of: interaction identification,
user device identification, number of segments in the interaction, interaction
duration, interaction start time, interaction stop time, and interaction date.”
See also Spec. ¶¶ 9, 34, 48, 69–70.
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Appellant argues that “[c]omplex technology has been developed to
record, track, and organize this data,” but “the data may not be stored,
initially, in an ideal manner, requiring complex processing of past data.”
Appeal Br. 8 (citing Declaration of Omer Erel ¶ 6 (filed Feb. 1, 2018) (“Erel
Decl.”)). This assertion is not only uncorroborated by the Specification, as
the Examiner correctly notes (Ans. 7), it is uncorroborated by any evidence
of record identified by Appellant. Moreover, it is not enough that a technical
solution exists to perform operations that can be performed in the human
mind. See, e.g., Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (claim reciting
“mathematical procedures [that could] be carried out in existing computers
long in use, no new machinery being necessary [or] without a computer”
claimed an unpatentable abstract method). Furthermore, claim 1 fails to
preclude processing data that has been recorded in an ideal, organized
manner (e.g., sorted and cross-indexed based on values used for matching).
See Ans. 7; see also Appeal Br. 9 (citing Erel Dec. ¶ 9) (Appellant
acknowledges that only in “some embodiments” would the claimed
matching process match records “quickly and efficiently . . . without
requiring additional processing power or time to identify and review each
record individually”).
The analytical step of “determining . . . if the associated recorded
interaction is operational” can also be performed in the human mind. Such
determination comprises “at least one of (1) analyzing one or more
predefined exceptions fields to determine whether or not an exception
applies which renders the associated recorded interaction operational or non-
operational; and (2) attempting to play the recording and testing for any
system errors.” That is, a recording can be deemed non-operational if it is
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“lost, damaged, incomplete, or transferred away” or if a recording has “no
audio, no channel found, [the recording is] damaged [or] will not play.”
Spec. ¶ 28. We agree with the Examiner that a human can perform this
determination “by attempting to play the recording and testing for errors.”
Ans. 8–9.
Appellant argues that the method of claim 1 “could not as a practical
matter be performed in the human mind, at least because the claimed
invention solves the problem in a manner that is different than how the
human mind would solve it.” Supp. Appeal Br. 4; see also Reply Br. 4–5;
Appeal Br. 11. A human can, however, look at record parameters in multiple
lists to ascertain whether records match. And a human can attempt to play a
recording and test for errors. Despite Appellant’s arguments—including
assertions made in the Erel Declaration (e.g., in paragraph 12)—nothing in
the claim limitations makes it impractical for these steps to be performed in
a human mind.
Because claim 1, given its broadest reasonable interpretation, recites
steps that include collecting information and analyzing in a manner that
could be performed in a human mind (and optionally displaying
information), claim 1 recites mental processes (observation, evaluation,
judgment, opinion) and thus an abstract idea.
Step 2A, prong two
Appellant further argues that even if claim 1 recites an abstract idea
(e.g., mental processes), it is nonetheless patent-eligible because it integrates
the abstract idea into a practical application. See Supp. Appeal Br. 5–6.
Appellant argues, for example, that claim 1 “improve[s] the technology of
recording compliance systems and equipment.” Appeal Br. 8 (citing McRO,
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Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
2016)); see also 2019 Revised Guidance, 84 Fed. Reg. at 55 (“[a]n
additional element [that] reflects an improvement in the functioning of a
computer, or an improvement to other technology or technical field” may
indicate “that an additional element (or combination of elements) may have
integrated the exception into a practical application”).
In particular, Appellant argues that “[t]ypical prior art recording
compliance systems require that each recording be checked and confirmed
separately in order to confirm that each individual record has been recorded
and saved properly, and is operational.” Appeal Br. 8 (citing Erel Decl. ¶ 8).
That is, Appellant contends that
[i]n prior art technology performing processes to achieve the
result the presently pending claims achieve, and should people
attempt to perform such a process manually, a system or person
would be required to begin with a first record from the
interaction exchange list, compare it with each and every record
from the recorded interaction list . . . and then repeat the
process for each and every record from the interaction exchange
list.
Id. at 10 (citing Erel Decl. ¶ 10). Thus, Appellant argues “prior technology
systems when attempting to perform this task cause tremendous amounts of
computer database memory to be wasted, as there may be many records
which have not been recorded and saved properly, and/or are non-
operational.” Id. at 11 (citing Erel Decl. ¶ 13).
Appellant acknowledges these arguments are based on the declaration
of a named inventor, but Appellant argues “the Examiner has offered no
contrary evidence as to why the improvements to the technology of
recording compliance systems and equipment Declarant Erel describes are
not true.” Reply Br. 1. Appellant thus contends that these “statements
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regarding the improvements to the technology . . . should be interpreted as
fact.” Id. at 1–2.
Appellant’s arguments and the Erel Declaration are unpersuasive. An
inventor declaration is less persuasive than that of a disinterested person,
although “it is not to be disregarded for that reason alone and may be relied
on when sufficiently convincing.” In re McKenna, 203 F.2d 717, 720 (CCPA
1953) (emphasis added). Moreover, the “Board has broad discretion as to the
weight to give to declarations offered in the course of prosecution.” In re
Am. Acad. Of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004). That is,
the “Board is entitled to weigh the declarations and conclude that the lack of
factual corroboration warrants discounting the opinions expressed in the
declarations.” Id.
Here, the inventor declarant assertions regarding prior approaches to
matching records are uncorroborated and speculative. See, e.g., Ans. 7 (“the
original specification never discuss the prior art recording compliance
system”). Not only is claim 1 not limited to applying the method to matching
sufficiently numerous records that an inefficient approach provides any
meaningful benefit, claim 1 does not preclude the use of purportedly
inefficient matching techniques. See id. (“[t]he specification and the claim
do not include [a] limitation” to avoid “requiring additional processing
power or time to identify and review each record individually”). That is,
claim 1 recites matching records without reciting any particular algorithm or
class of algorithms to use to perform the matching.
Appellant also argues that claim 1 allows “a computer, which thinks
and operates differently from how a human thinks and operates, to achieve a
result which a human might achieve.” Appeal Br. 11. That is, “[t]he
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computer must be told to use specific operations different from those a
human would use.” Id. (citing McRO, 837 F.3d at 1314); see also id. at 13;
Supp. Appeal Br. 4. Claim 1, however, does not have limited rules structured
to reflect a specific implementation that differs from what a human would
have used in detecting record discrepancies. See McRO, 837 F.3d at 1316
(citing Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 595–96 (2013)). Even a claimed invention designed for use on a
computer that varies the ordinary steps a human would use can be patent-
ineligible. See Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1150 (Fed. Cir. 2016) (quoting Benson, 409 U.S. at 67). As previously
discussed, claim 1 broadly recites steps such as matching records without
reciting any particular algorithm or class of algorithms to use to perform
such steps.
For these reasons, claim 1 does not integrate the recited mental
processes (observation, evaluation, judgment, opinion), the underlying
abstract idea, into a patent-eligible practical idea.
Step 2B
The Examiner determines that the additional limitations of claim 1 do
“not provide additional elements to be considered ‘significantly more’” than
the patent-ineligible idea to which claim 1 is directed. Non-Final Act. 6; see
also, e.g., Ans. 23, 32–33, 36.
Appellant argues the invention of claim 1 “is not in the prior art, and
thus has not been previously performable by a computer.” Appeal Br. 15.
Thus, Appellant contends claim 1 includes “an ‘inventive concept’ which
transforms the alleged abstract idea into a patent-eligible invention, as the
additional limitations provide ‘significantly more’ than the alleged abstract
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idea itself.” Id. (citing BASCOM Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016)). That is, Appellant
argues claim 1 recites “a combination of elements [that add] a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field [indicating] that an inventive
concept may be present meaning [claim 1 is] patent-eligible.” Supp. Appeal
Br. 6; see also Appeal Br. 18–19; Reply Br. 7–8.
Appellant’s arguments are unpersuasive because merely applying a
mental processes (i.e., an abstract idea) on a computer is not only
insufficient to integrate the abstract idea into a patent-eligible practical
application (see 2019 Revised Guidance, 84 Fed. Reg. at 55), it is
insufficient to show that claim 1 recites additional elements provide
significantly more than the underlying abstract idea (id. at 56).
Appellant’s reliance on BASCOM is particularly unpersuasive because
the patent-eligible claims in BASCOM did more than “merely recite the
abstract idea of filtering content along with the requirement to perform it on
the Internet, or to perform it on a set of generic computer components. Such
claims would not contain an inventive concept.” BASCOM, 827 F.3d at 1350
(citing CyberSource, 654 F.3d at 1370). Rather, the patent-eligible claim in
BASCOM recited a “particular arrangement of elements [representing] a
technical improvement over prior art ways” of performing the underlying
abstract idea of filtering content on the internet. Id. (emphasis added).
No such technical improvement is evident in the additional recitations
of claim 1. Rather, claim 1 recites well-understood, routine, and
conventional generic components such as a “processor,” “recording device,”
“memory,” and “user device.” See Spec. ¶¶ 30, 34, 37, Fig. 1. Even read as
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an ordered combination, the additional recitations fail to add significantly
more to the underlying abstract idea (i.e., the mental processes) of claim 1.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claim 1, and claims 3–8, 10, 12–18, and 20–22, which Appellant argues
together with claim 1. Appeal Br. 21.
CONCLUSION
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 3–8, 10,
12–18, 20–22
101 Eligibility 1, 3–8, 10,
12–18, 20–22

TIME PERIOD FOR RESPONSE
No time period for taking 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