Ex Parte Bethea et al

Patent Trial and Appeal Board

Mar 1, 2019

12756813 (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/756,813 04/08/2010
99337 7590 03/01/2019
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
FIRST NAMED INVENTOR
Timothy J. Bethea
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
ATTORNEY DOCKET NO.
ARC920090059US 1
(890.013)
CONFIRMATION NO.
1394
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
03/01/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY J. BETHEA, NEIL H. BOYETTE, ISAACK. CHENG,
VIKAS KRISHNA, YOLANDA A. RANKIN, and YONGSHIN YU
Appeal 2017-011367
Application 12/7 56,813 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 3-11, 13-20, and 25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' invention "relates to software and systems used in data
centers, call centers and/or customer support applications," and specifically
1 According to Appellants, the real party in interest is International Business
Machines Corporation. (Appeal Br. 3.)
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Application 12/756,813
to a "method, system and computer program product for a real-time
collaborative technical support (RTCTS) system." (Spec. ,r,r 1, 5.)
Claims 1, 11, and 25 are the independent claims on appeal. Claim 11
is illustrative. It recites:
11. A computer implemented method comprising the steps of:
converting, using a speech to text processor, spoken words
of voice recordings into text;
determining, using a natural language speech processor,
what problem two or more support people are currently working
on from the text;
accepting, using a classification system, as input data of
the natural language speech processor and grouping the two or
more support people together in a temporary group based on the
text indicating a similar problem is being worked on by the two
or more support people;
generating, using the classification system, a social
network comprising two or more support people based on the
text;
facilitating, using a processor, collaboration in a real-time
support provider environment of the two or more support people
with said support provider environment, comprising the steps of:
combining the two or more support people into the
temporary group, wherein the temporary group comprises a
social network dashboard having a group chat functionality for
communication between the two or more support people of the
temporary group; and
maintaining the dashboard of the social network based
upon said temporary group to support requests in said related
work area.
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REJECTIONS
Claims 1, 3-11, 13-20, and 25 2 are rejected under 35 U.S.C. § 112,
second paragraph, as failing to comply with the written description
requirement.
Claims 1, 3-11, 13-20, and 25 3 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1, 3-11, 13-20, and 25 4 are rejected under 35 U.S.C. § I03(a)
in view of Martinez (US 7,444,323 B2, iss. Oct. 28, 2008), Erhart
(US 2006/0025995 Al, pub. Feb. 2, 2006), Alaniz (US 2008/0195897 Al,
pub. Aug. 14, 2008), and Covell (US 2007/0124756 Al, pub.
May 31, 2007).
ANALYSIS
The § 112. second paragraph. reiection
The Examiner determines that "Claims 1, 11 and 25 recite combining
people into a temporary group that comprises a dashboard of the social
network having a group chat functionality. It is unclear as to how human
2 The Examiner refers to "[c]laims 1, 3-11, 14-20, and 25." (Final Action 2.)
Because claim 13 is pending and depends from rejected claim 11, we
consider the omission of reference to claim 13 to be a typographical error.
3 Again, the Examiner refers to "[c]laims 1, 3-11, 14-20, and 25." (Final
Action 3.) And again, we consider the omission of reference to claim 13 to
be a typographical error.
4 Again, the Examiner refers to "[c]laims 1, 3-11, 14-20, and 25." (Final
Action 6.) Because the Examiner specifically discusses the rejection of
claim 13 (Final Action 7), we consider the omission of reference to claim 13
on page 6 of the Final Action to be a typographical error.
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beings can be grouped so as to include a software application." (Final
Action 3.)
Appellants disagree and argue:
As elaborated by the underlying specification, "[t]he social
networks 80 may be used and/or visualized 86 in a variety of
ways, from a simple group chat to a dashboard-like application
to a virtual world. These visualizations may be different for
support people 22, managers 30 and support users 12." See
Specification at [0068]. More particularly, the specification and
the aforementioned claimed limitation refer to a virtual group
( e.g., a chat room comprising a group chat, etc.) where at least
two customer support representatives may be seated at different
computers but may be grouped into a temporary virtual group
( e.g., using a software application, etc.) having a dashboard with
communication features. Applicants respectfully submit that
such a limitation would be clear to one having ordinary skill in
the art.
(Appeal Br. 15.)
We are persuaded of error. Claim 11 requires 1) combining two or
more support people into a temporary group, and 2) that the group includes a
social network dashboard having a group chat functionality for
communication between the people of the group. The Examiner does not
sufficiently explain why the group cannot include the recited dashboard.
Applying a broadest reasonable interpretation, the term "temporary group"
includes both support people and the recited social network dashboard.
Absent the dashboard, the group of support people remains a group of
people, but it is not a "temporary group" as that term is used in the claim.
Independent claims 1 and 25 contain similar language. For the reasons
discussed above, we will reverse the Examiner's§ 112, second paragraph
rejection.
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The§ 1 OJ re;ection
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.'" Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 573 U.S. 208,216 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 573 U.S. at 217.
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second step of the framework is applied to determine if "the
elements of the claim ... contain[] an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id.
at 221 (citing Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, we apply a "directed
to" two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim "appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
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that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception." See 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter "2019 Guidance").
Here, the Examiner determines that the claims are "directed to
facilitating collaboration by combining at least two support people into a
group by monitoring to determine a similar problem being worked. This is
the abstract idea of [a] certain method of organizing human activity,
specifically, the management of relationships and transactions between
people." (Final Action 3.)
Appellants disagree and argue that rather than being directed to an
abstract idea, the
claims are directed to a technique for facilitating collaboration in
a real-time support provider environment by combining two or
more support people into a temporary group, where the
temporary group comprises a social network dashboard having a
group chat functionality that allows the two or more support
people to communicate with each other.
(Appeal Br. 17.)
We are not persuaded of error. Under step one of the Alice
framework, we "look at the 'focus of the claimed advance over the prior art'
to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The 'directed to' inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
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. . . . Rather, the 'directed to' inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether
'their character as a whole is directed to excluded subject
matter.' Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework "asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an 'abstract idea' for
which computers are invoked merely as a tool." Id. at 1335-36; see also
2019 Guidance at 54--55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to a "method, system and computer program product for a real-time
collaborative technical support (RTCTS) system." (Spec. ,r 5.) Claim 11
provides further evidence. Claim 11 recites "converting ... spoken words
... into text," "determining ... what problem two or more support people
are currently working on from the text," "grouping the two or more support
people together in a temporary group based on the text," "generating ... a
social network comprising two or more support people," "facilitating .. .
collaboration ... comprising the steps of: combining the two or more
support people into the temporary group, wherein the temporary group
comprises a social network dashboard having a group chat function," "and
maintaining the dashboard." In other words, claim 11 is directed to
managing relationships or interactions between people, i.e., a method of
organizing human activity. See, e.g., In re Ferguson, 558 F.3d 1359, 1364--
65 (Fed. Cir. 2009); see also 2019 Guidance at 52.
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Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241.
Claim 11 accomplishes the claimed method by converting words to
text, analyzing the text, and grouping/combining people based on the
analyzed text. Speech conversion, data analysis, and classification are well-
known computer functions. See, e.g., In re TL! Commc 'ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); see also Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014). We do not see how the recitation of processors and a
dashboard with a group chat feature, even in conjunction with the recited
functions, "ensure[ s] 'that the [claim] is more than a drafting effort designed
to monopolize the [abstract idea]." Alice, 573 U.S. at 221 (brackets in
original) (quoting Mayo, 566 U.S. at 77.) Moreover, the limitations of
claim 11 do not recite implementation details. Rather, "the recited physical
components merely provide a generic environment in which to carry out the
abstract idea." In re TL! Commc 'ns LLC Patent Litig., 823 F.3d at 611.
"[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353. "In
a similar vein, we have treated analyzing information by steps people go
through in their minds [e.g., by grouping people based on collected
information], or by mathematical algorithms, without more, as essentially
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mental processes within the abstract-idea category." Id. at 1354; see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
Appellants also argue that there is "no risk that the claims will 'tie up'
the subject matter," i.e., that the claims will preempt all applications of the
abstract idea. (Appeal Br. 18.)
We do not find this persuasive of error. Preemption is not a separate
test. "Where a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, "preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility." Id.
In view of the above, we agree with the Examiner that claim 11 is
directed to an abstract idea.
Step two of the Alice framework has been described "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, 573 U.S. at
217-18 (citing Mayo, 566 U.S. at 72-73).
Appellants argue:
The present claims recite methods and systems for
facilitating collaboration in a real-time support provider
environment by combining two or more support people into a
temporary group that clearly were not well-understood, routine
and conventional in the field at the time of filing. Specifically,
the present claims recite additional, novel and non-obvious
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functionality that improves the operation of devices with regard
to grouping determinations.
(Appeal Br. 19.)
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. They do not.
"If 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" BSG
Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290-91 (Fed. Cir. 2018). As
discussed above, converting words to text, analyzing the text, and grouping
people based on the analysis using processors simply use conventional and
well-understood techniques. Moreover, merely adding communication
between people in the group using similarly conventional and well-
understood techniques "does not amount to an improvement in computer
technology" or otherwise transform the abstract idea into patent-eligible
subject matter. See Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1055 (Fed. Cir. 2017).
Nor do we find persuasive Appellants' argument that the claims recite
"novel and non-obvious functionality." "[U]nder the Mayo/Alice
framework, a claim directed to a newly discovered law of nature ( or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility." Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
Taking the claim elements separately, the function performed by the
processors and dashboard are purely conventional. Converting, analyzing,
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and grouping/combining information are basic computer functions, i.e., they
are well-understood, routine, and conventional functions previously known
to the industry. See Elec. Power Grp., 830 F.3d at 1356 (The claims "do not
include any requirement for performing the claimed functions of gathering,
analyzing, and displaying in real time by use of anything but entirely
conventional, generic technology. The claims therefore do not state an
arguably inventive concept .... ").
Considered as an ordered combination, the generic computer
components of Appellants' method add nothing that is not already present
when the steps are considered separately. For example, claim 11 does not,
as discussed above, purport to improve the functioning of the components
themselves. Nor does it effect an improvement in any other technology or
technical field. Instead, claim 11 amounts to nothing significantly more than
an instruction to apply the abstract idea using generic computer
components. That is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 573 U.S. at 225-26. In short, "these claims in
substance [are] directed to nothing more than the performance of an abstract
business practice ... using a conventional computer. Such claims are not
patent-eligible." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014).
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 11 under§ 101. Claims 1, 3-10, 13-20, and 25 are not
separately argued and fall with claim 11. See 37 C.F.R. § 4I.37(c)(l)(iv).
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The § 103 (a) reiection
Appellants argue independent claims 1, 11, and 25 together.
Appellants do not separately argue dependent claims 3-10, and 13-20. We
select claim 11 as representative. Claims 1, 3-10, 13-20, and 25 will stand
or fall with claim 11. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants argue that the Examiner erred in rejecting independent
claim 11 as obvious. Specifically, Appellants argue "that Martinez does not
disclose 'converting, using a speech to text processor, spoken words of voice
recordings into text; determining, using a natural language speech processor,
what problem two or more support people are currently working on from the
text.'" (Appeal Br. 20.) Appellants also argue that
nowhere in Erhart is "determining, using a natural language
speech processor, what problem two or more support people are
currently working on . . . and grouping the two or more support
people together in a temporary group based on the text indicating
a similar problem is being worked on by the two or more support
people".
(Id. at 21.)
The Examiner finds that "Martinez discloses combining at least two
people into a temporary group supporting a related work area and forming-
maintaining at least one social network based upon said temporary group to
support requests." (Final Action 6.) The Examiner finds that Martinez
teaches "grouping based on expertise matching." (Answer 3.) The
Examiner also finds that Erhart "discloses classifying using natural language
processing and speech to text conversion to classify calls into a particular
subject area in order to route to appropriate agents or response teams."
(Final Action 6.) Also, the Examiner determines that "it would have been
obvious to one of ordinary skill in the art to include in the content routing
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system of Martinez the ability to classify using natural language processing
and speech to text conversion into a particular subject area as taught by
Erhart." (Id. at 6-7 .)
Nonobviousness is not established by attacking references
individually when the rejection is based on a combination of references. See
In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). A reference
"must be read, not in isolation, but for what it fairly teaches in combination
with the prior art as a whole." Id. Appellants read and argue Martinez and
Erhart in isolation and do not persuasively argue error with respect to the
Examiner's proposed combination. Therefore, we are not persuaded that the
Examiner erred.
Appellants next argue that, with regard to the Covell reference, "the
GUI in Covell is not related at all to a 'social network dashboard having a
group chat functionality for communication between two or more support
people of the temporary group."' (Appeal Br. 22.) In particular, Appellants
argue that "a person having ordinary skill in the art of call routing would not
have looked to the teachings in Covell, which deals with the unrelated matter
ofun-grouped user interactions with an interface, to learn the content
associated with the aforementioned limitation." (Id.) We understand this to
be a nonanalogous art-type argument.
The Examiner finds that Alaniz "discloses a collaboration program
that allows technicians, outside experts and other to participate in remote
troubleshooting." (Final Action 7.) Also, the Examiner determines that
it would have been obvious to one of ordinary skill in the art at the
time the invention was made to have included a visualization of
the social network that allows insertion of an expert into said social
network, as disclosed by Alaniz in the system disclosed by
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Martinez, for the motivation of providing a method of remote
collaboration in order to debate and discuss (Alaniz; P[0036]) the
content under review of Martinez's system. Martinez discloses
review meetings (C12; L28-37). The combination with Alaniz
enables a meeting to take place via collaboration tools.
(Id.) With regard to Covell, the Examiner finds that Covell "discloses a GUI
(i.e., a dashboard) with a group chat function." (Id.; see also Covell ,r,r 68,
73, and Fig. 5.) Also, the Examiner finds that "it would have been obvious
to one of ordinary skill in the art to include in the content routing system of
Martinez the ability access a group chat feature via an interface as taught by
Covell." (Id.) In short, the Examiner relies on Covell only for its disclosure
of "a GUI (i.e., a dashboard) with a group chat function" for remote
collaboration in the modified system of Martinez. (Answer 3.)
The analogous-art test requires that the Board show that a
reference is either in the field of the applicant's endeavor or is
reasonably pertinent to the problem with which the inventor was
concerned in order to rely on that reference as a basis for
rejection. In re Oetiker, 977 F.2d 1443, 1447 (Fed.Cir.1992).
References are selected as being reasonably pertinent to the
problem based on the judgment of a person having ordinary skill
in the art. Id. ("[I]t is necessary to consider 'the reality of the
circumstances, '-in other words, common sense-in deciding in
which fields a person of ordinary skill would reasonably be
expected to look for a solution to the problem facing the
inventor." (quoting In re Wood, 599 F.2d 1032, 1036 (C.C.P.A.
1979))).
In re Kahn, 441 F.3d 977, 986-87 (Fed. Cir. 2006).
Covell discloses a "commenting medium display area 504 [that]
presents a chat room type environment where multiple users can comment
.... " (Covell ,r 73.) While the commenting discussed in Covell relates to
broadcasts (id.), Covell is clearly related to the use of chat room type
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environments. Thus, we do not find persuasive Appellants' argument that
"the GUI in Covell is not related at all to a 'social network dashboard having
a group chat functionality .... "' (Appeal Br. 22.)
Moreover, one of the problems with which the inventors were
concerned was real-time communication between people. For example, the
Specification discloses that the invention relates to "a real-time collaborative
technical support (RTCTS) system." (Spec. ,r 5.) Appellants do not
persuasively argue why the disclosure in Covell of such real-time
communication between people via a chat room type environment is not
reasonably pertinent to a problem with which the inventors were concerned.
Therefore, we are not persuaded that Covell is nonanalogous art.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 11 under§ 103(a). Claims 1, 3-10, 13-20, and 25 fall with
claim 11. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
The Examiner's rejection of claims 1, 3-11, 13-20, and 25 under
35 U.S.C. § 112, second paragraph, is reversed.
The Examiner's rejection of claims 1, 3-11, 13-20, and 25 under
35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1, 3-11, 13-20, and 25 under
35 U.S.C. § 103(a) 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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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