Callidus Software, Inc.

Patent Trials and Appeals Board

Nov 5, 2021

2021001478 (P.T.A.B. Nov. 5, 2021)

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.
14/985,910 12/31/2015 Anthony J. Ventrice CAL-031-US01 (S21.337) 9353
52025 7590 11/05/2021
SAP SE c/o BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
BULLINGTON, ROBERT P
ART UNIT PAPER NUMBER
3715
NOTIFICATION DATE DELIVERY MODE
11/05/2021 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):
colabella@bmtpatent.com
martin@BMTPATENT.COM
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANTHONY J. VENTRICE, SANJEEV CHAKRAVARTY, and
STEPHEN A. SIMS
Appeal 2021-001478
Application 14/985,910
Technology Center 3700
Before EDWARD A. BROWN, JEREMY M. PLENZLER, and
MICHAEL L. WOODS, Administrative Patent Judges.
PLENZLER, 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 to reject claims 1–8 and 21–32. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as SAP SE. Appeal
Br. 2.
Appeal 2021-001478
Application 14/985,910

2
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A computing system, comprising:
one or more processors; and
a memory coupled to the one or more processors, the
memory storing computer-executable instructions that, when
executed by the one or more processors, cause the one or more
processors to:
store information regarding one or more users of a
gamification network system including information
regarding a past behavior of a particular user of the one or
more users, wherein the past behavior includes frequency
of interaction with a gamification site of the gamification
network system and an amount of time used to complete a
task on the gamification site, and wherein the gamification
network system includes a number of gamification sites;
access the stored information and using machine
learning to create a model associated with the particular
user, and wherein the machine learning to create the model
is selected from a group consisting of decision tree
learning, association rule learning, artificial neural
network, inductive logic programming, clustering,
reinforcement learning, representation learning, similarity
and metric learning, sparse dictionary learning, or genetic
algorithm;
determine a likelihood that the particular user is
going to disengage with the gamification network system
by correlating the model associated with the particular
user to the past behavior of the particular user and by
determining a strength of the correlation; and
modify, based at least on the determining the
likelihood that the particular user is going to disengage
with the gamification network system, a content of the
Appeal 2021-001478
Application 14/985,910

3
gamification network system that is associated with the
particular user,
wherein the model is refined by receiving data
associated with behavior of the particular user including
time taken to complete a task, types of tasks completed,
order in which tasks were completed, interaction between
the particular user with other users, or engagement level
of the particular user.
REJECTION
Claims 1–8 and 21–32 are rejected under 35 U.S.C. § 101 as being
patent-ineligible.
OPINION
Patent Eligibility
The Examiner determines that the claims are patent-ineligible under
35 U.S.C. § 101. Final Act. 2–5. Appellant argues claims 1–8 and 21–32 as
a group. Appeal Br. 5–11. We select claim 1 as representative. Claims 2–8
and 21–32 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. Claim 1
falls within the literal scope of this provision because it recites a system.
The Supreme Court, however, has long recognized an implicit
exception to this section: “Laws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 216
(2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of
these excluded categories, the Court has set out a two-part framework. The
Appeal 2021-001478
Application 14/985,910

4
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “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.” Id. (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
That is, we examine the claims for an “inventive concept,” “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 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
Under the 2019 Eligibility Guidance, to decide whether a claim is
“directed to” an abstract idea, we evaluate whether the claim (1) recites an
abstract idea grouping listed in the guidance and (2) fails to integrate the
recited abstract idea into a practical application. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019)
(“2019 Eligibility Guidance”).2,3 The groupings of abstract ideas listed in
the guidance include, for example: “Mathematical concepts,” “Certain
methods of organizing human activity,” and “Mental processes.” 2019
Eligibility Guidance, 84 Fed. Reg. at 52. If the claim is “directed to” an

2 An Appendix to the 2019 Eligibility Guidance (“Appendix I”) includes
examples 37–42 illustrating eligibility analysis.
3 An update to the 2019 Revised Patent Subject Matter Eligibility Guidance
issued in October 2019 (“October 2019 Update,” available at https://
www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.pdf).
An Appendix to the October 2019 Update (“Appendix II”) includes
examples 43–46 illustrating eligibility analysis.
Appeal 2021-001478
Application 14/985,910

5
abstract idea, as noted above, we then determine whether the claim recites an
inventive concept. The guidance explains that, when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not [a] well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
Step 2(A), Prong 1
The Examiner determines that the claims recite abstract ideas in the
mental processes category. Non-Final Act. 3–4. Appellant responds that the
“claims cannot be considered as falling within the enumerated Mental
Processes grouping, at least because the claimed subject matter is both not
performed in the human mind and cannot practically be performed in the
human mind.” See Appeal Br. 8.
The Examiner has the better position. As the Examiner explains, for
example, “other than reciting being executed by a processor with a memory
storing computer-executable instructions and machine learning, nothing in
the claim elements preclude the steps from practically being performed in
the mind.” Non-Final Act. 3. The Examiner provides an analogy where “a
teacher can mentally form an opinion of a student, mentally evaluate how
likely the student will give up on the material, change parts of the lesson
accordingly, and further update the opinion of the student based on further
interactions.” Id. As the Examiner further explains, “[t]he[] limitations
simply describe a process of data gathering and manipulation, which is
partially analogous to ‘collecting information, analyzing it, and displaying
certain results of the collection analysis.’” Id. at 4 (quoting Elec. Power
Appeal 2021-001478
Application 14/985,910

6
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–56 (Fed. Cir. 2016)
(emphasis omitted)).
We agree with the Examiner’s analogy and comparison to Electic
Power. Appellant does not dispute the Examiner’s determination that the
claims recite mental processes in any meaningful way. Rather, Appellant’s
contentions are essentially just allegations that the recited steps cannot be
performed in the human mind. Even looking to the particular examples
provided in the Specification, we do not see why the recited steps are not
properly characterized as mental processes.
For example, the Specification references “machine learning module
310 includ[ing] algorithms that utilize the stored user data or user data 308
to learn from and predict user behavior, such as user engagement,” but
provides no detail regarding those algorithms. Spec. ¶ 35. Rather, the
Specification simply explains that “[a]ny suitable machine learning approach
can be used.” Id. The Specification further explains that “the machine
learning module 310 and/or the model development engine 312 determines
correlations between user data and outcomes in order to predict future
outcomes based on the determined correlations.” Id. ¶ 37. But those
correlations are simply described as “a weighted sum.” Id. ¶ 38. The
Specification explains:
In th[e] example [provided], an equation such as P=Ax+By could
be used, where P is the probability of disengagement, x is the
length of time since the user’s last interaction with the system, y
is the user’s achievement level, and A and B are constants
calculated by the machine learning module 310 and/or the model
development engine 312 based on past behavior data from the
user population, or a subset of the user population.
Appeal 2021-001478
Application 14/985,910

7
Id. Again, there is no particular detail about these steps that removes them
from the realm of mental processes. The “stor[ing],” “access[ing],”
“determin[ing],” and “modify[ing]” steps recited in claim 1 are all mental
processes.
We are not apprised of error in the Examiner’s determination that
claim 1 recites an abstract idea.
Step 2(A), Prong 2
The Examiner determines that
the claims do not include additional elements that either alone or
in combination are sufficient to claim a practical application
because to the extent that, e.g., “one or more processors,” “a
memory coupled to the one or more processors,” and “the
memory storing computer-executable instructions” are claimed,
as these are merely claimed to add insignificant extra-solution
activity to the judicial exception (e.g., pre-solution activity of
data gathering and post-solution activity of presenting data)
and/or do no more than generally link the use of a judicial
exception to a particular technological environment or field of
use. In other words the claimed “dynamically defined content,”
is not providing a practical application.
Non-Final Act. 4. Appellant responds by alleging, without detailed analysis,
that “the pending claims are directed to technological improvements and
therefore integrate any alleged judicial exception into a practical
application” because “the claimed features utilize a user-specific machine-
learning-trained model to enable efficient determination of a likelihood that
the particular user is going to disengage with a gamification network system
and modification of the gamification network system based on the
determination.” Appeal Br. 10. Appellant’s contention is not persuasive.
Appeal 2021-001478
Application 14/985,910

8
Beyond the abstract ideas noted above, the claim adds nothing more
than a generic processor and memory that perform generic computer
functions to implement the abstract ideas. At step 2A, prong 2, we are
instructed to “evaluate integration into a practical application by: (a)
Identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (b) evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.” 2019 Eligibility
Guidance, 84 Fed. Reg. at 55. The generic processor and memory are
additional elements in claim 1. “[A] judicial exception has not been
integrated into a practical application” when, as in claim 1 of the present
application, “[a]n additional element merely recites the words ‘apply it’ (or
an equivalent) with the judicial exception, or merely includes instructions to
implement an abstract idea on a computer, or merely uses a computer as a
tool to perform an abstract idea.” Id.
For the reasons set forth above, we agree that the claim is directed to
an abstract idea.
Step 2(B)
Because we agree with the Examiner that claim 1 is directed to an
abstract idea, we next determine whether the claim provides an inventive
concept. See 2019 Eligibility Guidance, 84 Fed. Reg. at 56. This requires us
to evaluate whether the additional claim elements add “a specific limitation
or combination of limitations that are not [a] well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Id.
Appeal 2021-001478
Application 14/985,910

9
The Examiner determines that the claim does not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because
the claims do not include additional elements that either alone or
in combination are sufficient to amount to significantly more
than the judicial exception because to the extent that, e.g. “one
or more processors,” “a memory coupled to the one or more
processors,” and “the memory storing computer-executable
instructions” are claimed these are generic, well-known, and
conventional data gather computing elements. As evidence that
this is generic, well-known, and a conventional data gathering
computing element, Applicant’s specification discloses them in
a manner that indicates that the additional element is sufficiently
well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C.
§ 112(a).
Non-Final Act. 4.
Appellant does not dispute the Examiner’s determination.
Accordingly, we are not apprised of error in the Examiner’s determination
that the claim does not add any inventive concept.
Conclusion
For the reasons set forth above, after applying the 2019 Eligibility
Guidance, we sustain the Examiner’s decision to reject claims 1–8 and
21–32 under 35 U.S.C. § 101.
CONCLUSION
The Examiner’s rejection is affirmed.
Appeal 2021-001478
Application 14/985,910

10
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–8, 21–32 101 Eligibility 1–8, 21–32

TIME PERIOD FOR RESPONSE
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