Ashish Verma

Patent Trials and Appeals Board

Dec 27, 2019

12908253 - (D) (P.T.A.B. Dec. 27, 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.
12/908,253 10/20/2010 Ashish Verma IN920100116US1 3550
124677 7590 12/27/2019
Russell Ng PLLC (IBM AUS)
8729 Shoal Creek Blvd., Suite 100
Austin, TX 78757
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
12/27/2019 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):
stephanie@russellnglaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ASHISH VERMA
____________

Appeal 2018-004357
Application 12/908,253
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
SHEILA F. McSHANE, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 7−19. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies International Business Machines
Corporation as the real party in interest. (Appeal Br. 2.)
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THE INVENTION
Appellant claims a data processing system to obtain a data driven
metric for service quality. (Spec. ¶ 1, Title).
Claim 7 is representative of the subject matter on appeal.
7. A data processing system, comprising:
a processor;
data storage coupled to the processor; and
program code within the data storage that, when executed by
the processor, causes the data processing system to perform:
establishing a mapping between a plurality of internal data
sources all within a same service organization and multiple
service quality factors regarding a service provided by the
service organization, wherein each of the plurality of internal
data sources provides objective, quantifiable internal service
quality data regarding the service provided by the service
organization;
monitoring and capturing internal service quality data
from the plurality of internal data sources via at least one data
communication link between the plurality of internal data
sources and the data processing system;
determining, from a customer satisfaction value for the service
and internal service quality data for provision of the service, a
mathematical transformation of internal service quality data
obtained from the plurality of internal data sources to obtain the
customer satisfaction value;
estimating and reporting a service quality delivered by
the service organization in provision of the service by applying
the mathematical transformation to at least some of the internal
service quality data obtained from the plurality of internal data
sources; and
routing communication to selected ones of a plurality of
terminals based on the estimated service quality, such that
operation of the data processing system is improved.
Appeal Br. 13 (Claims Appendix).
THE REJECTION
Claims 7−19 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
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ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 7−19 under 35 U.S.C. § 101.
The Supreme Court:
set forth a framework for distinguishing patents
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, . . .
determine whether the claims at issue are directed
to one of those patent-ineligible concepts. . . . If so,
. . . then ask, “[w]hat else is there in the claims
before us?” . . . To answer that question, . . .
consider the elements of each claim both
individually and “as an ordered combination” to
determine whether the additional elements
“transform the nature of the claim” into a patent-
eligible application. . . . [The Court] described step
two of this analysis as a search for an “‘inventive
concept’”—i.e., an element or combination of
elements that is “sufficient to ensure that the patent
in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
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on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50–57 (Jan. 7, 2019).
The Examiner determines that the claims are directed to estimating
and reporting a service quality delivered by a service organization by
applying a mathematical transformation of at least some of internal service
quality data obtained from a plurality of terminals based on the estimated
service quality. (Non-Final Act. 6). The Examiner determines that the
claims are directed to comparing stored data to new data to make decisions
and to organizing human activity. (Id.).
The Specification discloses that for service organizations, maintaining
high service quality delivered to its customers is essential to the success of
the mission of the service organization. (Spec. ¶ 2). Service quality factors
such as tangibility, responsiveness, reliability, assurance and empathy
depend on the perception of customers. (Spec. ¶ 3). Service organizations
obtain information regarding service quality by surveying some or all
customers, but this data can be expensive to collect and not all customers are
willing to provide survey responses. (Spec. ¶ 4). To address the problems
of collecting service quality data, the present invention provides a data
processing system that establishes a mapping between each of a plurality of
internal data sources within a service organization and a respective one of
multiple service quality factors. The present invention uses a mathematical
transformation of internal service quality data obtained from the plurality of
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internal data sources to obtain a customer satisfaction value by applying the
mathematical transformation to at least some of the data. (Spec. ¶ 5).
As this disclosure is in essence the collection and analysis of customer
satisfaction data, it supports the Examiner’s determination that the claims
recite comparing stored data to new data to make decisions.
Consistent with this disclosure, claim 7 recites “establishing a
mapping between a plurality of internal data sources. . . and multiple service
quality factors (processing data),” “monitoring and capturing internal service
quality data (transmission and processing of data),” “determining. . . a
mathematical transformation of internal service quality data (processing
data),” “estimating and reporting a service quality (processing data),” and
“routing communication to selected ones of a plurality of terminals
(transmitting data).”
The steps of claim 7 constitute “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
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims
directed to certain arrangements involving contractual relations are directed
to abstract ideas). Thus, we find that the claims recite the judicial exception
of a mental process. Id
In addition, as the data that is transmitted and processed relates to the
satisfaction of customers with services provided and more consistently
obtaining customer quality data, the method of claim 7 method relates to
relationships between a service organization and its customers and the
behavior of customers, and therefore recites a certain method of organizing
human activity. Guidance, 84 Fed. Reg. 52.
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Further, claim 7 recites determining “a mathematical transformation
of internal service quality data” and as such also recites a mathematical
formula or equation, with the Specification disclosing estimating and
reporting a service quality by applying a mathematical transformation to
internal data sources obtained from internal data sources (Spec. ¶ 5).
Guidance, 84 Fed. Reg. 52.
As such, we agree with the Examiner’s determination that the claims
are directed to the judicial exceptions of a mental process, a certain method
organizing human activity, and a mathematical formula or equation.
Turning to the second prong of the “directed to test,” claim 7 requires
a “processor,” a “data storage, and “terminals.” These recitations do not
impose “a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
Guidance 84 Fed. Reg. 54. We find no indication in the Specification, nor
does Appellant directs us to any indication, that the operations recited in
independent claim 7 invoke any inventive programming, require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, or that the claimed invention is implemented using
other than generic computer components to perform generic computer
functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation
of generic computer limitations does not make an otherwise ineligible claim
patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
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functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
55.
In this regard, these recitations do not affect an improvement in the
functioning of the processor, the data storage or other technology, do not
recite a particular machine or manufacture that is integral to the claims, and
do not transform or reduce a particular article to a different state or thing.
Id. Thus, claim 7 is directed to judicial exceptions that are not integrated
into a practical application and thus recite an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an “inventive concept” in order to be patent-eligible, i.e., there must
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
See Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The introduction of a computer into the claims does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a
patent-eligible invention. Stating an abstract idea
“while adding the words ‘apply it’” is not enough
for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological
environment.’” Stating an abstract idea while
adding the words “apply it with a computer”
simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a
computer amounts to a mere instruction to
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“implemen[t]” an abstract idea “on . . . a
computer,” that addition cannot impart patent
eligibility. This conclusion accords with the
preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers,
wholly generic computer implementation is not
generally the sort of “additional featur[e]” that
provides any “practical assurance that the process
is more than a drafting effort designed to
monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. at 225. They do not.
Taking the claim elements separately, the function performed by the
recited processor and data storage at each step of the process is purely
conventional. Using a processor to retrieve, select, and apply decision
criteria to data and modify the data as a result amounts to electronic data
query and retrieval—one of the most basic functions of a computer. All of
the computer functions performed by the processor and the data storage are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “even if a process of
collecting and analyzing information is ‘limited to particular content’ or a
particular ‘source,’ that limitation does not make the collection and analysis
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other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. The combination of a processor and data storage is
well-understood, routine and conventional. The sequence of data
monitoring, analysis and reporting is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval,
analysis, modification, generation, display, and transmission was abstract),
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling,
and monitoring was abstract). The ordering of the steps is, therefore,
ordinary and conventional.
Claim 7 does not, for example, purport to improve the functioning of
the processor or data storage. As we stated above, the claims do not affect
an improvement in any other technology or technical field. The
Specification spells out different generic equipment and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of information
access under different scenarios. (See, e.g., Spec. ¶ 11). Thus, the claims at
issue amount to nothing significantly more than instructions to apply the
abstract idea using some unspecified, generic computer. Under our
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precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 226.
We have reviewed all the arguments (Appeal Br. 4−16; Reply Br.
2−12) Appellant has submitted concerning the patent eligibility of the claims
before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments made.
Nevertheless, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We agree with Appellant that the inclusion of a mathematical
transformation in the claim is not, of itself, determinative of what the claim
is “directed to.” (App. Br. 7). In this regard, as we detailed above, the
“directed to” test involves first determining whether the claims recite a
judicial exception such as a mathematical equation or formula and then
determining whether that judicial exception is integrated into a practical
application. As we determined above, claim 7 does indeed recite a judicial
exception of a mathematical equation or formula and this judicial exception
is not integrated into a practical application and thus we determine that the
claim is directed to an abstract idea on this basis. Moreover, we also note,
that claim 7 recites several judicial exceptions in addition to a mathematical
equation or formula such as a mental process and a certain method of
organizing human activity and on these bases claim 7 is directed to a judicial
exception.
We are not persuaded of error on the part of the Examiner because the
one data communication link between the plurality of internal data sources
and the data processing system cannot be performed other than by a data
processing system. (Appeal Br. 8). As we stated above, the inclusion of the
processor, a data storage and network interface in the data processing system
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does alter the analysis. Although, the steps recited by independent claim 7
are performed by a data processing system, mental processes, for example,
remain unpatentable even when automated to reduce the burden on the user
of what once could have been done with pen and paper. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson [409 U.S. 63 (1972)].”); see also In re Salwan, 681 F. App’x 938,
941 (Fed. Cir. 2017) (claims for organizing patient health information,
transferring patient health information to a patient network, and billing
insurance companies held patent-ineligible).
In addition, we agree with the Examiner’s response to this argument
found on page 7 of the Answer. Specifically, we agree that if one were to
remove the system’s computer components, people could physically and
mentally perform the steps of claim 7 as has been done before the age of
computer devices for gathering service quality data for organizations. As
pointed out by the Examiner, a quality assurance representative observing a
merchant’s customer service representative or sales person could compare
customer services quality with pen/pencil and paper for an organization. As
such, the method of claim 7 could indeed be done without a data processing
system.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 7 recites an improved routing function by
basing the routing to selected ones of a plurality of terminals based on the
result of estimation of service quality performed. (Appeal Br. 8−9).
According to the Appellant, this is an improvement because it does not base
which terminals receive the communication on conventional criteria such as
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queue depths, path lengths, etc. (Appeal Br. 11). This alleged improvement
does not concern an improvement to how the routing is technically
performed or to the technical components that perform the routing but
instead relates to an improvement in the method of determining which
terminal receives communication based on estimated service quality, which,
again, could be determined by human mental processes.
We agree with the Examiner that claim 7 may recite an improvement
to the business method of estimating and reporting service quality for an
organization and may make the process of data analysis faster through
automation and a particular combination of many different components, but
does not recite an improvement to technology. (Answer 9).
A previous Board Decision found that claims in that Appeal were not
anticipated or rendered obvious by the prior art relied upon by the Examiner
in the earlier rejection. Appellant argues that based on that Decision the
claim elements are not “generic” or “conventional.” First, the claims in the
instant appeal and the claims in the earlier appeal are different and as such
our determination regarding the patentability of the earlier claims is not
dispositive of the patentability of the present claims. In addition, the
previous determinations were specific to that Appeal; we found only that the
references applied did not disclose “determining a mathematical
transformation of quality data to obtain the consumer satisfaction value” in
the anticipation/obviousness determinations. There is no determination that
the prior art relied on was the best prior art for the claims in the earlier
appeal and certainly no determination that the cited prior art in the earlier
appeal is the best prior art for the instant claims. Moreover, to the extent
Appellant maintains that the limitations of claim 7 necessarily amount to
“significantly more” than an abstract idea because the claimed apparatus is
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allegedly patentable over the prior art, Appellant misapprehends the
controlling precedent. Although the second step in the Alice/Mayo
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “‘an
element or combination of elements that is sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.”’ Alice, 573 U.S. at 217. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90.
We do not agree with Appellant that the Examiner erroneously relied
on Ultramercial rather than DDR Holdings in determining whether the
claims recite an improvement that results in significantly more than the
abstract idea. (Appeal Br. 11). In DDR Holdings, the Court evaluated the
eligibility of claims “address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host’s website after ‘clicking’ on an advertisement and activating a
hyperlink.” DDR, 773 F.3d at 1257. There, the Court found that the claims
were patent eligible because they transformed the manner in which a
hyperlink typically functions to resolve a problem that had no “pre-
Internet analog.” Id. at 1258. The Court cautioned, however, “that not
all claims purporting to address Internet-centric challenges are eligible
for patent.” Id. For example, in DDR Holdings the Court distinguished
the patent-eligible claims at issue from claims found patent-ineligible in
Ultramercial. See DDR,773 at 1258–59 (citing Ultramercial, 772 F.3d
7 0 9 , 715–16 (Fed. Cir. 2014)). As noted there, the Ultramercial claims
were “directed to a specific method of advertising and content distribution
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that was previously unknown and never employed on the Internet before.”
Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–16). Nevertheless,
the claims in Ultramercial were patent ineligible because they “merely
recite[d] the abstract idea of ‘offering media content in exchange for
viewing an advertisement,’ along with ‘routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
We agree with the Examiner that Appellant’s claims are analogous to
claims found ineligible in Ultramercial and distinct from claims found
eligible in DDR Holdings. The ineligible claims in Ultramercial recited
“providing [a] media product for sale at an Internet website;” “restricting
general public access to said media product;” “receiving from the
consumer a request to view [a] sponsor message;” and “if the sponsor
message is an interactive message, presenting at least one query to the
consumer and allowing said consumer access to said media product after
receiving a response to said at least one query.” Ultramercial, 772 F.3d
at 712. Similarly, Appellant’s asserted claims recite receiving,
analyzing, modifying, and transmitting data. This is similar to the type of
activity found ineligible in Ultramercial.
We also do not agree with Appellant that claim 7 recites technical
means for performing the functions that are an advance over conventional
computer network technology or includes a data processing system which
does not perform conventional functions and as such is distinguishable from
the cases cited by the Examiner. (Reply Br. 10−12). We agree with the
Examiner that although claim 7 recites that the data processing system is
improved, there is no specific detail provided on how the system is
improved. (Ans. 4). In addition, as discussed above, the functions of the
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software are directed to abstract ideas and not technical improvements, and
the functions are performed using a generic computer. And, as discussed in
BSG Tech LLC v. Buyseasons, Inc., “[i]f a claim’s only ‘inventive concept’
is the application of an abstract idea using conventional and well-understood
techniques, the claim has not been transformed into a patent-eligible
application of an abstract idea.” 899 F.3d 1281, 1290-1291 (Fed. Cir. 2018)
(citing Berkheimer v. HP Inc., 881 F.3d at 1370 (holding claims lacked an
inventive concept because they “amount to no more than performing the
abstract idea of parsing and comparing data with conventional computer
components”)). Appellant’s argument thus do not apprise us of error
because Appellant conflates the steps being performed by a processor,
which are directed to abstract ideas, and the conventionality of the computer
functions required to implement the steps.
In view of the foregoing, we sustain the rejection as it is directed to
claim 7. We also sustain the rejection as it is directed to the remaining
claims because the Appellant does not present separate arguments for the
eligibility of these claims.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 7−19 under
35 U.S.C. § 101.
DECISION
In summary:
Claim(s)
Rejected 35 U.S.C. § Basis Affirmed Reversed
7−19 101 Eligibility 7−19
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED