Edward Charles. Southey et al.

Patent Trials and Appeals Board

Sep 26, 2019

13795087 - (D) (P.T.A.B. Sep. 26, 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.
13/795,087 03/12/2013 Edward Charles Southey 20121224-US-
NP / XRX-001
9927
144584 7590 09/30/2019
GORDON & JACOBSON, P.C.
60 LONG RIDGE ROAD
SUITE 407
STAMFORD, CT 06902
EXAMINER
RIFKIN, BEN M
ART UNIT PAPER NUMBER
2123
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
Conduent.PatentDocketing@conduent.com
PTO@GORDONJACOBSON.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EDWARD CHARLES SOUTHEY, TIMOTHY JOHN FORSYTH,
MARK PIPER, DAVID JOHN BUTT, PAUL MARTIN WALLINGFORD,
DANIEL JAMES GRIFFIN, JEREMY J. McKINLEY,
BENJAMIN JAMES HOOPER, MICHAEL CARL THELIN,
NICHOLAS MARK GYLES, and TIMOTHY T. JOYCE
____________

Appeal 2019-000033
Application 13/795,087
Technology Center 2100
____________

Before JOSEPH L. DIXON, SCOTT B. HOWARD, and SCOTT E. BAIN,
Administrative Patent Judges.

BAIN, Administrative Patent Judge.

DECISION ON APPEAL1

Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–11, 14, 15, 17–28, 31, 32, and 34–39, which
constitute all claims pending in the application. 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 Conduent Business Services, LLC as
the real party in interest. App. Br. 3.
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BACKGROUND
The Claimed Invention
The invention relates to troubleshooting customer support issues.
Spec. ¶ 1. The Specification explains that prior troubleshooting systems,
such as a “question and answer model” or a “case-based reasoning” model,
were “constrained by scope and size.” Id. at ¶¶ 3–4. The Specification
describes the present invention as providing improved troubleshooting,
including a “knowledge interface” that interacts with a “user-operated data
processing system” in order to identify a solution to a problem or issue
experienced by a customer, regarding a particular product or service. Id. at
¶ 6.
Claims 1, 18, and 35 are independent. Claim 1 is illustrative of the
invention and the subject matter in dispute, and reads as follows:
1. An apparatus that interacts with a first data processing
system operated by a user via networked communication to
identify a solution to problem or issue experienced by a
customer with respect to a particular product or service, the
apparatus comprising:
a second data processing system configured to supply
information to the user operated first data processing system,
the information representing a number of components that are
graphically presented in a common display window displayed
by the user-operated first data processing system, wherein the
components presented graphically to the user include:
i) first data identifying a plurality of predetermined
symptoms linked to the problem or issue experienced by the
customer, the plurality of symptoms being presented together as
a listing of symptoms,
ii) first interface elements corresponding to each of the
plurality of predetermined symptoms, the first interface
elements configured to allow the user to selectively assign the
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plurality of symptoms identified by the first data to a first class
of symptoms representing symptoms most likely experienced
by the customer, and the first interface elements are further
configured to allow the user to selectively assign at least one
other symptom identified by the first data to a second class of
symptoms representing symptoms most likely not experienced
by the customer, the first interface elements being presented
together with their corresponding symptoms in the listing of
symptoms,
iii) second data identifying a plurality of predetermined
root causes linked to the plurality of symptoms identified by the
first data, wherein the second data is updated dynamically in
response to user input with respect to the first interface
elements to show root causes linked to the plurality of
symptoms that have been selectively assigned to the first class
of symptoms as dictated by user input with the first interface
elements, the plurality of root causes being presented together
as a listing of root causes,
iv) second interface elements corresponding to each of
the plurality of predetermined root causes, the second interface
elements configured to allow the user to selectively assign the
plurality of root causes identified by the second data to a first
class of root causes representing root causes most likely
experienced by the customer, and the second interface elements
are further configured to allow the user to selectively assign at
least one other root cause identified by the second data to a
second class of root causes representing root causes most likely
not experienced by the customer, the second interface elements
being presented together with their corresponding root causes in
the listing of root causes, and
v) third data identifying a set of solutions presented
together as a listing of solutions, wherein the third data is
updated dynamically in response to user input with respect to
the first or second interface elements to show a best solution
that is linked to the plurality of symptoms that have been
selectively assigned to the first class of symptoms as dictated
by user input with the first interface elements and to the
plurality of root causes that have been selectively assigned to
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the first class of root causes as dictated by user input with the
second interface elements,
wherein the first data, the first interface elements, the
second data, the second interface elements, and the third data
are displayed together in a plurality of distinct regions of the
common display window corresponding to respective first data,
second data, and third data,
wherein the distinct regions are configured to
dynamically update in response to the user selectively assigning
the plurality of symptoms to the first class of symptoms and the
user selectively assigning the plurality of root causes to the first
class of root causes, and
wherein the plurality of distinct regions are laid out
together adjacent one another across the horizontal extent of
the common display window.
App. Br. 48–50 (Claims Appendix) (emphases added).
The Rejections on Appeal
Claims 1–11, 14, 15, 17–28, 31, 32, and 34–39 are rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter.
Ans. 35.2
Claims 1, 6–8, 14, 15, 18, 31, 32, and 35 are rejected under pre-AIA
35 U.S.C. § 103(a) as unpatentable over Skaaning et al. (US 6,535,865 B1;
issued Mar. 18, 2003) (“Skaaning”), Rother (US 6,141,608; issued Oct. 31,
2000), Heckerman et al. (US 5,715,374; issued Feb. 3, 1998)
(“Heckerman”), Microsoft Windows Version 3.1 (1992) (“Toastytech”),

2 The Examiner designated the § 101 rejection as New Grounds in the
Answer (at 34–36), and Appellant addressed the New Grounds in the Reply
Brief (at 4–13).
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Spoto et al. (US 5,539,869; issued Jul. 23, 1996) (“Spoto”), and Yutkowitz
(US 2003/033105 A1; published Feb. 13, 2003). Final Act. 6–29.
Claims 2, 4, 5, 11, 17, 19, 21–25, 28, 34, and 36 are rejected under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Skaaning, Rother,
Heckerman, Toastytech, Spoto, Yutkowitz, and Suda et al. (US 5,282,265;
issued Jan. 25, 1994) (“Suda”). Final Act. 29–34.
Claims 3 and 20 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Skaaning, Rother, Heckerman, Toastytech, Spoto,
Yutkowitz, and Oracle Data Mining Concepts (May 2008) (“Oracle”). Final
Act. 34–35.
Claims 9, 10, 26, and 27 are rejected under pre-AIA 35 U.S.C.
§ 103(a) as unpatentable over Skaaning, Rother, Heckerman, Toastytech,
Spoto, Yutkowitz, and Bender et al. (US 6,341,276 B1; issued Jan. 22, 2002)
(“Bender”). Final Act. 35–37.
DISCUSSION
We have reviewed the Examiner’s rejection in light of Appellant’s
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(1)(iv). On the record before us, Appellant has persuaded us that
the Examiner erred in rejecting the claims as obvious, but has not persuaded
us of error regarding the subject matter eligibility rejection. We address the
rejections in turn, below.
Rejection under 35 U.S.C. § 101
The Examiner determined that the claims are directed to “finding a
solution to a problem or issue” (i.e., “troubleshooting”), which is a mental
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process (or method of organizing human activity) and, accordingly,
constitutes an abstract idea. Final Act. 2; Ans. 35; Alice Corp. v. CLS Bank
lnt’l, 573 U.S. 208, 217 (2014) (describing 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”). Further, the Examiner found that the additional elements in the
claims merely constituted conventional steps performed on a generic
computer, and therefore did not include additional elements sufficient to
amount to significantly more than the abstract idea. Ans. 36–46.
Accordingly, the Examiner concluded that the claims constitute ineligible
subject matter.
Appellant argues that the claims “are directed to specific
improvements in the capabilities of computing devices” and, therefore, “do
not merely embody an abstract idea.” Reply Br. 4; see also App. Br. 12–14.
Specifically, Appellant argues that the claims are directed to a “particular
manner of summarizing and presenting information graphically in a common
display window.” Reply Br. at 6.
After the Briefs were filed and Answer mailed in this case, the
USPTO published “Revised Subject Matter Eligibility Guidance”
synthesizing case law and providing agency instruction on the application of
§ 101. See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
Guidance, we must look to whether a claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
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organizing human activity such as a fundamental economic
practice, or mental processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h))
(“Step 2A, Prong Two”).
See 84 Fed. Reg. at 54–55.
Only if a claim recites a judicial exception and 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 id. at 56 (collectively “Step 2B”).
We begin our de novo review with Step 2A, Prong One of the
Guidance, as applied to Appellant’s claim 1.3 Claim 1 recites an apparatus
“to identify a solution to problem or issue experienced by a customer,”
which we discern to comprise the following elements: (1) a “data processing
system configured to supply information” (i.e., data) representing
“components that are graphically presented;” (2) “data” identifying
“symptoms;” (3) “interface elements” configured to allow a user to “assign”

3 The Guidance refers to “Step One” as determining whether the claimed
subject matter falls within the four statutory categories identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this case.
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symptoms (data); (4) “data” identifying “root causes;” (5) “interface
elements” corresponding to “root causes;” (6) “data” identifying “solutions;”
(7) displaying “data” and “interface elements” together in a “distinct regions
of the common display window;” (8) “dynamically updat[ing]” the display
regions; and (9) “adjacent” distinct regions in the common display window.
App. Br. 48–50. Upon review of the foregoing, we agree with the
Examiner’s determination that the elements recited in claim 1 merely
constitute the idea of troubleshooting a product using computers. Each of
the foregoing elements either recites collecting data relating to a user
problem, comparing such data to potential “solutions” for the problem (i.e.,
data processing), or displaying a step or results in the troubleshooting
process. Accordingly, like the data collection and analysis in Electric Power
Group, claim 1 recites a mental process, which is one of the categories of
subject matter deemed abstract under the Guidance. Electric Power Group,
LLC, v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir. 2016) (“[W]e have
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”); id. at 1353 (“[W]e have treated collected
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”).4
We next proceed to Step 2A, Prong 2 of the Guidance. Under this
step, if the claim “as a whole” integrates the abstract idea into a “practical

4 Alternatively, the troubleshooting process recited in claim 1 may be
characterized as a fundamental business practice or managing a business
relationship, which are methods of organizing human activity deemed
abstract under the Guidance. See also Bilski v. Kappos, 561 U.S. 593
(2010); Alice, 573 U.S. 208.
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application,” it is patent eligible. Appellant argues that claim 1 recites “an
improved user interface for electronic devices.” Reply Br. 11; see also App.
Br. 20 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014)).
Improving the functioning of a computer can reflect integration of an
idea into a “practical application.” Guidance Section III; see also DDR, 773
F.3d 1245; Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016). Appellant, however, does not explain, and we
do not discern, any improvement in technology from the claimed invention.
Compare DDR, 773 F.3d at 1258 (Fed. Cir. 2014) (“the claims at issue here
specify how interactions with the Internet are manipulated to yield a desired
result––a result that overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink.”) (emphasis added);
see also Bascom, 827 F.3d at 1350 (“harness[ing a] technical feature of
network technology in a filtering system” to customize content filtering).
The claims in DDR, for example, were “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks,” see, e.g., DDR, 773 F.3d at 1257, but
Appellant’s claim 1 recites a troubleshooting system that merely uses
generic computing elements. See Spec. ¶ 39 (“browser-based desktop
interface served by customer relationship management platform [] that
allows a respective call center representative to log into the platform” and
“view a work queue”); id. at ¶ 44 (invention “implements a [] Bayes
classification methodology”); id. at Fig. 1 (illustrating standard computer
elements). As the Examiner determined, the “entire purpose of these claims
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is to provide solutions to a customer’s issue, which has no impact on the
computer in any way.” Ans. 45.
Appellant also does not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
Rather, claim 1 recites troubleshooting by collecting data on “symptoms”
and matching that data to “root causes,” according to algorithms not recited
in the claim and only vaguely referenced in the Specification. App. Br. 48–
50 (Claims App.); Spec. ¶ 44. Reciting a result-oriented solution that lacks
any details as to how the computer performed the modifications is the
equivalent of the words “apply it.” Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2015) (citing Elec.
Power Grp., LLC, v. Alstom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016)
(cautioning against claims “so result focused, so functional, as to effectively
cover any solution to an identified problem”)); see also CyberSource v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (mere data
gathering does not make a claim patent-eligible). The data gathering and
processing steps in claim 1 do not add meaningfully to the recited mental
processes.
Finally, under Step 2B of the Guidance, we must look to whether the
claims include any “additional limitation that is not well-understood, routine
[or] conventional.” The “question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016)
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(holding that patent eligibility inquiry may contain underlying issues of
fact).
Claim 1 recites a troubleshooting system facilitated by various data
gathering, processing, and display steps. See supra. We agree with the
Examiner’s finding that simply using standard computer elements (as
described in the Specification, see supra) to implement troubleshooting is
well understood, routine, and conventional. Ans. 45–46; see supra.
Appellant asserts that the “specific manner of displaying” the information
(namely, in a “plurality of distinct regions [] laid out together adjacent [to]
one another”) constitutes an additional, unconventional element. Reply Br.
9. As the Examiner finds, however, establishing display “regions” and
arranging such regions adjacent to one another or in any other fashion (and
updating such regions) are conventional functions of the Windows operating
system. See, e.g., Toastytech 2–3; Final Act. 10. Appellant does not rebut
the Examiner’s findings or identify any unconventional elements, and we
discern none in the record before us.
Accordingly, we conclude that the Examiner did not err in concluding
that claim 1 constitutes ineligible subject matter, and we sustain the rejection
of claim 1 under 35 U.S.C. § 101. Appellant makes the same arguments
regarding the remaining claims, and for the same reason, we also sustain the
§ 101 rejection of these claims (i.e., claims 2–11, 14, 15, 17, 28, 31, 32, and
34–39).
Rejections Under 35 U.S.C. § 103(a)
Appellant argues that the Examiner erred in combining the six
references used in rejecting claim 1 as obvious, and more specifically, that
the “teachings of two or more” of the references “conflict,” that the
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Examiner has not provided any rationale for combining the references, and
that Yutkowitz is not analogous art to the claimed invention. App. Br. 38–
41; Reply 14–42. We are persuaded of error, for several reasons.
First, as Appellant argues, the Examiner’s finding that several of the
references are analogous to each other, Final Act. 11–13, Ans. 54, is not
sufficient to establish the references as analogous art. The Examiner finds
that “the Yutkowitz and the Skaaning reference[s] are clearly analogous art,
as both involve providing computer based tech support for a device.” Ans.
54. A reference qualifies as analogous art, however, “only when analogous
to the claimed invention,” which is established if the “art is from the same
field of endeavor” as the claimed invention or “is reasonably pertinent to the
particular problem with which the inventor is involved.” In re Clay, 966
F.2d 656, 658 (Fed.Cir.1992) (emphasis added); In re Deminski, 796 F.2d
436, 442 (Fed.Cir.1986). The record does not reflect any finding that
Yutkowitz, which is directed to a “self-calibrating [] motion control system,”
is analogous to Appellant’s claimed invention directed to a “knowledge
interface” or technical support. Yutkowitz Abstract, Fig. 4A.
The Examiner further finds that “Yutkowitz and Skaaning modified
by Heckerman are analogous art because both involve tech support of a
device.” Ans. 13. As discussed above, a finding that references are
analogous to one another is not sufficient to establish a reference as
analogous art. Moreover, if the Examiner intended to imply that Yutkowitz
(and Skaaning) as “modified by Heckerman” would be analogous to the
claimed invention, this finding also is insufficient, as the Examiner appears
to conflate the rationale to combine references with the separate issue of
whether each particular reference (on its own) is analogous art.
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Second, we also agree with Appellant’s argument that the Examiner
has not provided “articulated reasoning with some rational underpinning” to
support combining all six of the references. KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007); Reply Br. 32. The Examiner explains the
rationale for combining several pairs of references only in conclusory
fashion. See, e.g., Final Act. 11 (“in the case of Skaaning, [to] allow the
system to display the various information in lists in order of importance to
the subject at hand”). Moreover, although the Examiner attempts to provide
some rationale for combining some pairs of references, the record does not
reflect a sufficient rationale for combining all six references (i.e., combining
the various modifications the Examiner proposes) in the manner applied by
the Examiner. See Reply Br. 15.
For the foregoing reasons, we do not sustain the Examiner’s
obviousness rejection of independent claims 1, 18, and 35 as unpatentable
over the combination of Skaaning, Rother, Heckerman, Toastytech, Spoto,
and Yutkowitz. For the same reasons, we also do not sustain the
obviousness rejections of the remaining dependent claims, all of which rely
on the foregoing references combined with additional reference(s).
DECISION
Because we sustain at least one ground of rejection for each claim on
appeal, i.e., claims 1–11, 14, 15, 17–28, 31, 32, and 34–39, we affirm the
Examiner’s decision rejecting these claims.
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). See
37 C.F.R. § 41.50(f).
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AFFIRMED