Barry R. Beggs et al.

Patent Trials and Appeals Board

Sep 6, 2019

14645186 - (D) (P.T.A.B. Sep. 6, 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.
14/645,186 03/11/2015 Barry R. Beggs JR. RSW920140107US2 7606
75949 7590 09/06/2019
IBM CORPORATION
C/O: Fabian Vancott
215 South State Street
Suite 1200
Salt Lake City, UT 84111
EXAMINER
WAESCO, JOSEPH M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/06/2019 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):
patents@fabianvancott.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte BARRY R. BEGGS JR., FENG-WEI CHEN,
BRETT GAVAGNI, DAVID G. GEORGE,
and LUCIANO SILVA
____________

Appeal 2018-0070991
Application 14/645,186
Technology Center 3600
____________

Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
GARTH D. BAER, Administrative Patent Judges.

BAER, Administrative Patent Judge.

DECISION ON APPEAL

1 Appellants identify International Business Machines Corporation (“IBM”)
as the real party in interest. App. Br. 2.
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STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s Non-Final rejection of claims 1–7, which are all the pending
claims. Claims 8–17 were withdrawn by the Examiner as being directed to a
non-elected invention. Appeal Br. 4; Non-Final Act. 5–6. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
BACKGROUND
A. The Invention
Appellants’ invention is directed to providing “[m]atching resources
to an opportunity in a customer relationship management (CRM) system.”
Abstract. Independent claim 1 is representative and reproduced below, with
emphasis added to the disputed elements:
1. A method for matching resources to an opportunity
in a customer relationship management (CRM) system,
the method comprising:
obtaining, from a customer relationship
management (CRM) system, an opportunity, the
opportunity representing a complex record structure in the
CRM system, in which the opportunity captures a number
of fields of metadata;
determining, from the metadata, a number of
opportunity attributes associated with the opportunity;
determining a number of resource attributes for a
number of resources;
ranking the resource attributes with the opportunity
attributes to determine a score for each of the resources;
and
presenting, based on the score, a list of the
resources that are recommended for the opportunity.

App. Br. 22. (Claims App.).
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B. The Rejections on Appeal2
The Examiner rejects claims 1–7 under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Non-
Final Act. 8.
The Examiner rejects claims 1–4 under 35 U.S.C. § 102(a)(2) as being
anticipated by Potdar et al. (US 2015/0112755 A1; Apr. 23, 2015)
(“Potdar”). Non-Final Act. 11.
The Examiner rejects claims 5–7 under 35 U.S.C. § 103 as being
unpatentable over Potdar in view of Broderson et al. (US 2005/0091098 A1;
Apr. 28, 2005). Non-Final Act. 13.

ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments. Arguments Appellants could have made but chose not to make
are deemed waived. See 37 C.F.R. § 41.37(c)(1)(iv). Except where noted,
we adopt the Examiner’s findings and conclusions as our own, and add the
following primarily for emphasis.

A. Ineligible Subject Matter Rejection of Claims 1–7
The Examiner determines claim 1 is patent ineligible under 35 U.S.C.
§ 101 “because the claimed invention is directed to a judicial exception (i.e.,

2 The Non-Final Action includes a provisional non-statutory double
patenting rejection of claims 1–7, but this provisional rejection was removed
in the Advisory Action. See Non-Final Act. 6–8; Adv. Act. 3.
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a law of nature, a natural phenomenon, or an abstract idea) without
significantly more.” Non-Final Act. 5; see also Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 217 (2014) (describing the two-step framework “for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts”).
After the docketing of this appeal, the USPTO published revised
guidance on the application of § 101 (“Guidance”). See USPTO’s 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Memorandum”). Pursuant to the Guidance “Step 2A,” the office
first looks to whether the claim recites:
(1) Prong One: 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) Prong Two: additional elements that integrate the judicial exception
into a practical application (see 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, does the Office then (pursuant to the
Guidance “Step 2B”) look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are 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.
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See Memorandum Section III.
We are not persuaded the Examiner’s rejection is in error.

1. Step 2A
Appellants argue “the presently claimed subject matter comprises an
improvement in a user interface for a CRM system” (Reply Br. 8), but do
not argue that the claims do not recite an abstract idea. See App. Br. 14–21,
Reply Br. 8–14. Rather, Appellants contend that “the claimed subject matter
improves the functioning of a CRM database by creating a new database or
dataset in which resources are matched to and recommend for opportunities
in the CRM database” and “this improvement to computer functionality can
be recognized ‘even at the first step of the Alice analysis’ and the claim
properly categorized as patent-eligible.” Reply Br. 12, citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).

Prong One
Pursuant to Step 2A, Prong One of the Guidance, we are not
persuaded the Examiner errs in determining claim 1 recites an abstract idea.
See Non-Final Act. 8–9; Ans. 3–5; Memorandum Section III(A)(1) (Prong
One: Evaluate Whether the Claim Recites a Judicial Exception), 84 Fed.
Reg. at 54. Claim 1 recites “matching resources to an opportunity in a
customer relationship management (CRM) system.” A customer
relationship management system is used to organize human activity
surrounding sales and marketing. CRM
can be understood as a revolving process during which companies
interact with their customers, thereby generating, aggregating, and
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analyzing customer data, and employing the results for service and
marketing activities.3
CRM links the business relationship to the bottom line: companies “manage
their customer relationships” to
increase profitability by concentrating on the economically valuable
customers, thus increasing revenue (“share of wallet”) from them,
while possibly “de-marketing” and discontinuing the business
relationship with less valuable customers.4
The Specification supports that claim 1 is abstract. It notes that the claimed
“resource” is “meant to be understood broadly [as] a specific individual
and/or organization that aids in the progression of an opportunity through
selling products and/or services” (Spec. ¶ 29), and that “the term
‘opportunity attributes’ is meant to be understood broadly as criteria for a
specific sale that is associated with an opportunity” (Spec. ¶ 28). Further,
“opportunities may include a business’s sales and/or interaction with current
customers, future customers, or combinations thereof.” Spec. ¶ 32.
The “obtaining,” “determining . . . a number of opportunity
attributes,” “determining a number of resource attributes,” and “ranking”
limitations of claim 1 recite the information processing steps used to connect
the claimed “resources” with the claimed “opportunity.” These limitations
accomplish the method of matching resources to an opportunity in a
customer relationship management system, and are steps of “marketing or
sales activities or behaviors; business relations.” Memorandum Section I, 84

3Schoder and Madeja, “Is Customer Relationship Management A Success
Factor In Electronic Commerce?” J. of Elec. Commerce Research, Vol. 5,
No. 1, p. 38 (2004), available at:
http://web.csulb.edu/journals/jecr/issues/20041/Paper4.pdf.
4 Id.
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Fed. Reg. at 52. Thus, this portion of the claim recites “commercial or legal
interactions,” which are “[c]ertain methods of organizing human activity.”
Id.; see also Spec. ¶¶ 28, 29, 32. Accordingly, claim 1 “recites a judicial
exception . . . [and] requires further analysis in Prong Two” of the Guidance.
Memorandum, 84 Fed. Reg. at 54.

Prong Two
We are also not persuaded the Examiner’s rejection is in error
pursuant to Step 2A, Prong Two of the Guidance. The remaining limitation
not considered in the Prong One analysis above is the “presenting” step.
This step displays the data of the identified judicial exception, and is extra-
solution activity. Memorandum, 84 Fed. Reg. at 55; see also n.31. The
limitations, thus, represent the mere use of “a computer as a tool to perform
an abstract idea,” and “do[] no more than generally link the use of a judicial
exception to a particular technological environment.” Memorandum, 84
Fed. Reg. at 55; see also Non-Final Act. 9; Trading Techs. Int’l, Inc. v. IBG
LLC, 921 F.3d 1378, 1385 (Fed. Cir. 2019) (“[T]he purported advance is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions.”) (citation and quotation marks omitted);
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1371 (Fed. Cir. 2015) (“Requiring the use of a ‘software’ ‘brain’ ‘tasked
with tailoring information and providing it to the user’ provides no
additional limitation beyond applying an abstract idea, restricted to the
Internet, on a generic computer.”).
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Appellants contend that “[t]he method that creates an entirely new
database using a novel approach, as recited in claim 1, is the technological
improvement.” Reply Br. 11 (citing McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). However, claim 1 does not recite
creating a new database. In addition, neither Figure 4 nor Figure 5 (the
figures illustrating the method of the invention) include a step of creating a
new database and Appellants point to nothing in the Specification that might
support their assertion. In short, Appellants provide no factual support or
technical reasoning for the purported improvements in computer
functionality. See, e.g., In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997)
(attorney arguments or conclusory statements are insufficient to rebut a
prima facie case); see also Trading Techs. Int’l, Inc. v. IBG LLC, No. 2017-
2257, 2019 WL 1716242, at *3 (Fed. Cir. April 18, 2019) (“This invention
makes the trader faster and more efficient, not the computer. This is not a
technical solution to a technical problem.”).
Accordingly, we determine claim 1 does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. As the “claim recites a judicial exception and fails to integrate the
exception into a practical application” (id. at 51), “the claim is directed to
the judicial exception” (id. at 54).

2. Step 2B
Appellants argue “the fact that the most relevant art found after
careful search does not describe the claimed subject matter is probative
evidence that such subject matter is not well-known, routine or conventional
in the art.” Reply Br. 10. Appellants, however, have not shown the recited
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additional elements (or combination of elements) amount to significantly
more than the judicial exception itself. See Non-Final Act. 5–6, Ans. 4–5;
Memorandum, Section III(B) (Step 2B), 84 Fed. Reg. at 56. The Examiner
finds
the processor, memory, CRM, engines (code), etc. are all
generic computing components, and no detail is given as to how
any of these additional elements are improved or non-
conventional in any way, and thus are generic.
Ans. 4 (citing Spec. ¶¶ 42, 49). Based on the record before us, we agree
with the Examiner that the claimed additional elements and combination of
elements recite only generic components and steps that are well-understood,
routine, and conventional. See Spec. ¶ 34–42; see also Alice, 573 U.S. at
226.
Accordingly, we agree with the Examiner that claim 1 is patent
ineligible, as well as independent claims 11 and 21, and dependent claims
2–7 not separately argued. See App. Br. 14–21.

B. Anticipation Rejection of Claim 1
Appellants argue that:
the subject matter of claim 1 requires the following elements:
(1) an opportunity (with opportunity attributes), (2) a resource
(with resource attributes), and (3) a user to whom is presented
the resources recommended for a particular opportunity.

Reply Br. 3. Appellants contend the Examiner improperly attempts “to
construe one single element in Potdar as meeting two of these three claimed
elements and/or switching construction mid-stream when the logical
inconsistency is noted.” Reply Br. 4 (citing Ex parte Weideman, No. 2008-
003454; App. No. 10/035,334 (BPAI Jan. 27, 2009)).
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We do not find this argument persuasive. Claim 1 recites no “user”
and contains no limitation regarding who “the list of resources” is
“present[ed]” to. The Examiner’s finding that Potdar’s user “is a resource to
the company” (Ans. 2–3) is reasonable, and further comports with
Appellants’ disclosure stating that “the term ‘resource’ is meant to be
understood broadly [as] a specific individual and/or organization that aids in
the progression of an opportunity through selling products and/or services.”
Spec. ¶ 28 (emphasis added). A motivated employee, functioning as the
claimed “resource,” would perform the claimed method while in search of
new leads.
Appellants’ related argument that Potdar’s scenario has “no discussion
of a resource that is also being matched to the opportunity” (Reply Br. 6), is
unpersuasive given that Potdar is matching a “user” to a “business lead.”
Further, claim 1’s recitations of “a number of {opportunity attributes,
resources, resource attributes}” does not require a plurality of any of these
items. The “number” may be equal to one.
Appellants further contend that claim 1 “start[s] with the metadata of
an opportunity and from that derive[s] attributes of the opportunity.” Reply
Br. 7. Potdar, in contrast, “start[s] with data/inputs that are then used to
identify or arrive at an opportunity” and is thus “the opposite of what is
claimed.” Id. (citing Potdar ¶ 6).
We do not find this argument persuasive. The Examiner finds, and we
agree, that “Potdar teaches in [¶ 39] [that] Potdar receives information, such
as high margin customers, which is received metadata of an opportunity, an
opportunity attribute [is] used to match users/resources to opportunities and
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vice-versa.” Ans. 3. Appellants do not address and challenge the
Examiner’s specific findings in the Reply. See Reply Br. 3–7.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1 and dependent claims 2–4 not argued separately. We further sustain
the Examiner’s rejection of dependent claims 5–7 not argued separately. See
Reply Br. 8; App. Br. 14.

DECISION
The Examiner’s decision rejecting claims 1–7 as directed to non-
statutory subject matter is affirmed.
The Examiner’s decision rejecting claims 1–4 as anticipated is
affirmed.
The Examiner’s decision rejecting claims 5–7 as obvious is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED