Ex Parte Chavez et al

Patent Trials and Appeals Board

Mar 29, 2019

12720869 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/720,869 03/10/2010
48500 7590 04/02/2019
SHERIDAN ROSS P.C.
1560 BROADWAY, SUITE 1200
DENVER, CO 80202
FIRST NAMED INVENTOR
David Chavez
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. CONFIRMATION NO.
4366YDT-59 9975
EXAMINER
BOYCE, ANDRE D
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
cjacquet@sheridanross.com
pair_Avaya@firsttofile.com
edocket@sheridanross.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID CHAVEZ, JEFFREY G. GARTNER,
and GERARD O'SULLIVAN
Appeal2017-011022
Application 12/720,869
Technology Center 3600
Before NINA L. MEDLOCK, CYNTHIA L. MURPHY, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-7 and 11-23 under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more. 3 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Throughout this Decision, we refer to the Appellants' Appeal Brief
("Appeal Br.," filed Mar. 21, 2017), Reply Brief ("Reply Br.," filed Aug. 18.
2017), and Specification ("Spec.," filed Mar. 10, 2010), and to the
Examiner's Answer ("Ans.," mailed July 20, 2017) and Final Office Action
("Final Act.," mailed Dec. 22, 2016).
2 According to the Appellants, the real party in interest is Avaya Inc.
Appeal Br. 2.
3 Claims 8-10 have been cancelled.
Appeal2017-011022
Application 12/720,869
STATEMENT OF THE CASE
The Appellants' invention "is directed toward an automated, or
semi-automated system that limits conference attendance to the parties who
are really necessary based on, for example, one or more of participation and
feedback during previous conference call(s) (and/or on a current call)."
Spec. 1, 11. 5-8.
Claims 1 and 11 are the independent claims on appeal. Claim 1
(Appeal Br. 27 (Claims App.)), is illustrative of the subject matter on appeal
and is reproduced below (with added bracketing for reference):
1. A method for improving conference efficiency
compnsmg:
[(a)] establishing, by at least one processor and via a
communication network, a conference session between a
plurality communication devices of a plurality of conference
participants;
[(b )] monitoring, by the at least one processor, activities of
one or more conference participants in the conference session
between the plurality of communication devices;
[ ( c)] determining, at least based on the monitoring, by the
at least one processor, whether a conference participant in the
conference session between the plurality of communication
devices should be included in future conference sessions that are
already scheduled in an electronic calendar of the conference
participant;
[ ( d)] in response to determining whether the conference
participant in the conference session between the plurality of
communication devices should be included in the future
conference sessions that are already scheduled in the electronic
calendar of the conference participant, automatically updating,
by the at least one processor, the conference participant's
electronic calendar; and
[ ( e)] notifying, by the at least one processor, a conference
host of the update by sending a message to a communication
device of the conference host.
2
Appeal2017-011022
Application 12/720,869
ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014) (internal quotation marks and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice,
573 U.S. at 219 ("On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
3
Appeal2017-011022
Application 12/720,869
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a
patent-eligible application." Alice, 573 U.S. at 221 ( citation omitted).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
4
Appeal2017-011022
Application 12/720,869
The PTO recently published revised guidance on the application of
§ 101. 2019 REVISED PA TENT SUBJECT MATTER ELIGIBILITY GUIDANCE,
84 Fed. Reg. 50 (Jan. 7, 2019) ("2019 Revised Guidance"). Under the 2019
Revised Guidance, we first look to whether the claim recites:
(1) 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) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) § 2106.05(a}-(c), (e}-(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
Only if a claim (1) recites a judicial exception and (2) 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 2019 Revised Guidance.
Claims 1, 3, 11, 13, 18, and 19
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework and Step 1 of Office
Guidelines (see 2019 Revised Guidance, 84 Fed. Reg. at 53-54), the
Examiner first determines that the independent claims "are directed to a
process and machine," two of the categories of statutory subject matter.
Final Act. 3.
5
Appeal2017-011022
Application 12/720,869
Under the first step of the Mayo/Alice framework and Step 2A,
Prong 1 of the 2019 Revised Guidelines (84 Fed. Reg. at 54), the Examiner
determines that
the claims are directed to the abstract idea of improving
conference efficiency, including establishing a conference
session; monitoring activities of one or more conference
participants in the conference session between the plurality of
communication devices; determining, at least based on the
monitoring, whether a conference participant in the conference
session between the plurality of communication devices should
be included in future conference sessions that are already
scheduled in an electronic calendar of the conference participant;
in response to determining whether the conference participant in
the conference session between the plurality of communication
devices should be included in the future conference sessions that
are already scheduled in the electronic calendar of the conference
participant, automatically updating the conference participant's
calendar; and notifying a conference host of the update.
Id. at 3; Ans. 6. The Examiner determines that this is a concept that is "an
idea of itself, and human activity relating to concepts involving concepts
involving organizing information," and thus, citing judicial decisions as
support, an abstract idea. Final Act. 3; Ans. 6.
The Appellants contend that the Examiner's determination is in error
because the elements are not abstract ideas, are not "something that can be
accomplished abstractly," require hardware to implement, and are not
similar to the cited judicial decisions. See Appeal Br. 11-16; see also Reply
Br. 5-9.
An examination of the claims shows that independent claim 1 recites
"[a] method for improving conference efficiency comprising:"
(a) a processor establishing, via a communication network, a conference
session between a plurality of participants' communication devices, (b) the
6
Appeal2017-011022
Application 12/720,869
processor monitoring activities of the participants in the conference session,
( c) the processor determining, based on the monitoring, whether a
conference participant should be included in future conference sessions
already scheduled in an electronic calendar of the conference participant,
( d) the processor automatically updating, the conference participant's
electronic calendar in response to the determination of whether the
conference participant should be included in the future scheduled conference
sessions, and ( e) the processor notifying a conference host of the update by
sending a message to a communication device of the conference host. See
Appeal Br. 27 (Claims. App). Independent claim 11 recites an apparatus
comprising a microprocessor and computer readable medium with
instructions that program the microprocessor to execute modules for
performing the steps of claim 1. See id. at 29.
The method and system may be implemented "on a special purpose
computer ... , a programmed microprocessor or microcontroller and
peripheral integrated circuit element(s), an ... integrated circuit, a digital
signal processor, a hard-wired electronic or logic circuit ... , a
communications device, such as a phone, any comparable means, or the
like," using "any device capable of implementing a state machine that is in
tum capable of implementing the methodology illustrated herein," "in
software using object or object-oriented software development environments
that provide portable source code that can be used on a variety of computer
or workstation platforms," "partially or fully in hardware using standard
logic circuits or VLSI," "in hardware and/or software using any known or
later developed systems or structures, devices and/ or software by those of
ordinary skill in the applicable art from the functional description provided
7
Appeal2017-011022
Application 12/720,869
herein and with a general basic knowledge of the computer and
communication arts," "in software that can be stored on a storage medium,
executed on a programmed general-purpose computer with the cooperation
of a controller and memory, a special purpose computer, a microprocessor,
or the like," or "by physically incorporating the system and/or method into a
software and/or hardware system, such as the hardware and software
systems of a communications device or system." Spec. 17, 1. 19-18, 1. 19,
Fig. 1.
The claims recite the results of the functions without providing details
on how, i.e., by what algorithm or on what basis/method, the processor
performs the steps/functions of (a) establishing a session, (b) monitoring
activities, ( c) determining whether a participant should be included in future
sessions, and ( d) automatically updating an electronic calendar. For
establishing a session, limitation (a), the Appellants direct attention to
Figure 3, step S310 and page 14, lines 1-3. Appeal Br. 3. These portions of
the Specification simply provide that the method "begins in step S300 and
continues to step S31 O" (Spec. 14, 11. 2-3) to "Initiate Conference" (Id.
Fig. 3 "S31 O"). Elsewhere, the Specification provides that "a conference
host 2, typically in cooperation with the conference interface 32, and
conference bridge 15, initiate a conference." Spec. 8, 11. 24--25. However,
the Specification does not provide details on how the session is established.
As such, establishing a conference can be by any means.
For limitation (b) of monitoring activities, the Appellants direct
attention to the Specification at Figure 3, step S320 and page 5, line 20.
Appeal Br. 3. Step S320 of Figure 3 states "Initiate Monitoring of
Participant Activity" and line 20 of page 5 states "[ e ]ven further aspects are
8
Appeal2017-011022
Application 12/720,869
directed toward monitoring of participant activity." Lines 3--4 of page 14
state that "in step S320, monitoring of participant activity can optionally be
initiated." The Specification provides examples of activities being
monitored (see id. at 9, 11. 1-14), but does not provide details on how such
monitoring is technologically performed by the processor. As such,
monitoring activities can be by any means.
Regarding limitation ( c) of determining further inclusion of a
participant, the Appellants direct attention to page 6, lines 4--8 and page 11,
lines 24--28 of the Specification. Appeal Br. 3. Page 6 at lines 6-7 states
"determining, at least based on the monitoring, whether a conference
participant should be included in future conferences," and page 11 provides
for using information from the monitoring to invite or exclude participants
from meetings. However, the Specification, including the claims, does not
provide any implementation details as to how the information is used to
make the determination of future inclusion. As such, the determining can
comprise any analysis incorporating the monitoring data.
For limitation ( d) of the processor automatically updating an
electronic calendar, the Appellants direct attention to the Specification at
page 6, line 8 (Appeal Br. 3) that simply states "updating the conference
participants [sic] calendar." There are no further technological details on
how the processor performs the automatic updating.
Thus, these limitations, under the broadest reasonable interpretation of
the claim limitations, recite scheduling conferences and improving
conference efficiency by establishing a conference, monitoring activities,
determining future participants, updating an electronic calendar in response
to that determination, and notifying a host of the updates. The limitations of
9
Appeal2017-011022
Application 12/720,869
(a) establishing a conference, (b) monitoring participant activities, and
( c) determining future session participants based on the activities are all
activities that are ordinarily performed in scheduling conferences/meetings.
The limitations of ( d) updating a calendar and ( e) notifying the host of the
update amount to updating data and notifying someone of the update,
post-solution activities, and also ordinarily performed in scheduling
conferences.
Scheduling conferences and improving conference efficiency is
similar to the concepts of tailoring content based on user information in
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015), of customizing a user interface in Affinity Labs of
Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016), of
dynamically selecting and sorting information by user interest or subject
matter in Evolutionary Intelligence LLC v. Sprint Nextel Corp., 677
F. App'x 679, 680 (Fed. Cir.), cert. denied, 138 S. Ct. 521 (2017), of
"personal management, resource planning, or forecasting" in In re Downing,
No. 2018-1795, 2018 WL 6436437, at *4 (Fed. Cir. Dec. 7, 2018), and of
"scheduling business activities using a computer and computer network" in
P & RO Sols. Grp., Inc. v. CiM Maint., Inc., 273 F. Supp. 3d 699, 708 (E.D.
Tex. 2017) ( quotation marks omitted). Accordingly, we conclude the claims
recite a way of managing interactions between people, which is one of the
certain methods of organizing human activities identified in the 2019
Revised Guidance (84 Fed. Reg. at 52), and thus an abstract idea. As such,
we disagree with the Appellants' contentions that the claims are not directed
to an abstract idea because the elements are not abstract ideas, and the
claims are not similar to judicial decisions. See Appeal Br. 11-15.
10
Appeal2017-011022
Application 12/720,869
Under Step 2A, Prong 2 of the 2019 Revised Guidance (84 Fed. Reg.
at 54), we look to whether the claims "apply, rely on, or use the judicial
exception in a manner 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," i.e., "integrates the ... judicial
exception into a practical application." Here, the Appellants contend that the
claims are not directed to an abstract idea because the limitations of
monitoring, determining, and automatically updating require hardware
(Appeal Br. 12) comprise "a specific improvement on the conference
bridge" (id. at 13), and are "directed toward a new conference server" (id.
at 14). However, the claimed hardware comprises conventional components
used in their ordinary capacities. See Spec. 7, 1. 8 - 8, 1. 17, 17, 1. 10 - 18,
1. 19. The Appellants do not contend that they invented any of those
components or their basic functions or that those components, claimed
generally, were unknown in the art as of time of the invention. Affinity Labs,
838 F.3d at 1270; see also Intellectual Ventures, 792 F.3d at 1370. There is
no technological improvement to the computer components used or to the
electronic calendar. Computers "have become the substrate of our daily
lives-the 'basic tool[],' Gottschalkv. Benson, 409 U.S. 63, 67 ... (1972),
of a great many of our social and economic interactions-generic computer
functions, such as storing, analyzing, organizing, and communicating
information, carry no weight in the eligibility analysis. See Alice, 134 S.Ct.
at 2357." In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1165 (Fed.
Cir. 2018) (Mayer concurring). The conference bridge is recited generally
(see, e.g., Spec. 8, 11. 1-2). "[C]laims are not saved from abstraction merely
because they recite components more specific[, i.e., here, a conference
11
Appeal2017-011022
Application 12/720,869
bridge,] than a generic computer." BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1286 (Fed. Cir. 2018). That the invention is related to
electronic scheduling and conferencing, i.e., in the area of technology, does
not make the claim not abstract. See Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716 (Fed. Cir. 2014) (limiting the use of the abstract idea "to a
particular technological environment" does not make the abstract idea
patent-eligible) ( citation omitted).
In response to the Appellants' argument that the claims are not
abstract because the determining step is not taught by the prior art ( Appeal
Br. 13; see also Reply Br. 4), we note that an abstract idea does not
transform into an inventive concept just because the prior art does not
disclose or suggest it. See Mayo, 566 U.S. at 78. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). Indeed, "[t]he 'novelty' of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diehr, 450 U.S. 188-89; see also
Mayo, 566 U.S. at 78 (rejecting "the Government's invitation to substitute
§§ 102, 103, and 112 inquiries for the better established inquiry under
§ 101 ").
We also disagree with the Appellants' contention that "[l]ike DDR
Holdings, the methods and systems of claims 1 and 11 are necessarily rooted
in computer technology to overcome a problem specifically arising in the
realm of computer networks and conference bridges" (Appeal Br. 16 ( citing
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014));
12
Appeal2017-011022
Application 12/720,869
see also Reply Br. 9-10), i.e., "[a]n additional element [that] reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field" as described in the 2019 Revised Guidance
(84 Fed. Reg. at 55) as indicative that the elements may have integrated the
judicial exception into a practical application. 4 The Appellants argue that
" [ e] ach of these steps [ recited in the claims] are [sic] rooted in computer
technology to overcome the problem of inefficient use of conference bridges
and electronic calendaring systems." Appeal Br. 16.
However, the Specification does not provide that the invention
"overcome[ s] the problem of inefficient use of conference bridges and
electronic calendaring systems." Id. Rather, the Specification discusses
company "productivity issues" in that "[ e ]mployers may have no idea that
they have employees whose productivity is not optimal on these
[conference] calls" and employee frustration in attending meetings for which
there is no need for them to attend. Spec. 1, 11. 12-17. The Specification
also discusses "challenges for the conference coordinator or host where they
have trouble scheduling conferences due to conflicting calendar availability
across the attendee list which contains people who are not really contributing
to an ongoing discussion(s)" and that "it is well known that smaller
meetings are easier to schedule, are more effective and take fewer
resources." Id. at 1, 11. 18-22 ( emphasis added). There is no discussion of
what type of resources are decreased with smaller meetings; the resources
4 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
them under Step 1 of Alice (Step 2A of Office guidance). See 2019 Revised
Guidance, 84 Fed. Reg. at 55.
13
Appeal2017-011022
Application 12/720,869
can simply be human and space resources. The Specification further
provides that "it is currently incumbent on the host and participants to make
scheduling decisions wisely and this is not always possible in advance of a
conference." Id. at 1, 11. 24--25.
Thus, the problem the claimed invention is addressing, as discussed in
the Specification, is the inefficiency of conferences having unnecessary
attendees. This is not a problem specifically arising in the realm of
computer networks, but, as the Specification points out, a problem rooted in
employee productivity and business concerns. And, the purported solution
requires one or more generic computer systems operating in their ordinary
capacities. See Spec. 7, 1. 8 - 8, 1. 1 7, 17, 1. 10 - 18, 1. 19; supra. Claim 1
does not recite how the processor itself is technologically improved;
claim 11 does not recite how the microprocessor and bridge are
technologically improved.
We further disagree with the Appellants' contention that "the
conference bridging systems/methods of claims 1 and 11 are similar to the
claims in Enfish" because "claims 1 and 11 make the conference system
more efficient." Appeal Br. 17 (emphasis omitted); see also Reply Br. 9.
Unlike Enfish, where the court determined the claims were directed to a
self-referential table for a computer database and were directed to "a specific
improvement to the way computers operate" (Enfish, 822 F.3d at 1336),
here, the claims are not directed to an improvement in the way computers
operate. The Appellants' contention that "[t]he method/system of claim[s] 1
and 11 provide a more efficient conference bridge/electronic calendar
because only necessary participants are scheduled in meetings. This frees up
conference bridge resources ( e.g., trunks to connect participants) and
14
Appeal2017-011022
Application 12/720,869
calendaring resources because only the necessary participants are scheduled"
(id.) is unsupported attorney argument. The Specification does provide that
"it is well known that smaller meetings are easier to schedule, are more
effective and take fewer resources" (Spec. 1, 11. 21-22), i.e., that fewer
resources are needed when there are smaller meetings. However, as
discussed above, there is no discussion of what type of resources are
decreased, whether they are human resources, space resources (i.e.,
conference rooms), or other resources. And neither claim 1 nor claim 11
recites how the bridge is made more efficient or that the determination of
who should be included results in fewer participants; there could be the same
number or more participants with no added efficiency.
We disagree with the Appellants' contention that "[l]ike McRO, the
instant claims do not recite conventional methods managing a conference
session that have been used by humans or by existing machines. Instead, the
claims are a patentable, technological improvement over existing
conferencing methods." Appeal Br. 18 (citing McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016); see also Reply Br. 10-11).
The Appellants do not point to anything in the claims that resembles the
improvement to the technical field of computer animation that was not
simply the use of a generic computer in McRO. The Specification, including
the claims, does not discuss or claim how any technical aspect of the
processor, electronic calendar, microprocessor, or bridge itself is improved.
As discussed above, the Specification does not provide details on the
technological manner in which the steps are performed.
For the reasons discussed above, we disagree that "[l]ike BASCOM
and DDR, the independent claims of the instant case are directed to a
15
Appeal2017-011022
Application 12/720,869
technology-based solution of reducing conferencing/calendaring resources
by minimizing the number of participants in future conferences." Appeal
Br. 20 (citing BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016); see also Reply Br. 10). Specifically, we
note that the claims do not recite or require that the number of participants is
minimized or reduced in future conferences. And, the Appellants provide no
further arguments how the claim is similar, such as why the claims'
particular arrangement and/or integration of elements is a technical
improvement or is a "non-conventional and non-generic arrangement of
known, conventional pieces." BASCOM, 827 F.3d at 1350.
Regarding the Appellants' argument that the claims are patent-eligible
under Alice because they "do not preempt all ways for managing conference
sessions, but instead recite a discrete implementation of managing
conferencing sessions to solve existing problems" (Appeal Br. 20), although
the Supreme Court has described "the concern that drives this exclusionary
principle[, i.e., the exclusion of abstract ideas from patent eligible subject
matter,] as one of pre-emption" (see Alice, 573 U.S. at 216-17),
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[ fJor this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 573 U.S. at 216). Although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Id.
16
Appeal2017-011022
Application 12/720,869
Thus, we are not persuaded of error in the Examiner's determination
that the claims are directed to an abstract idea.
Step Two of the Mayo/Alice Framework
Under the second step in the Mayo/Alice framework, and Step 2B of
the 2019 Revised Guidance, we find supported the Examiner's
determination that the claims' limitations, taken individually or as an
ordered combination, do not amount to significantly more than the judicial
exception because "no more than a general purpose computer, performing
generic computer functions that are well-understood, routine, and
conventional activities previously, known to the pertinent industry, is
required by the claims." Final Act. 5; see also id. at 4; Ans. 7-8.
We are unpersuaded by the Appellants' argument that the limitation of
determining is not well understood, routine, and conventional because it was
"indicated" as "novel" by the Board and the Examiner. Appeal Br. 15; see
also id. at 16; Reply Br. 4--5. As discussed above, an abstract idea does not
transform into an inventive concept just because the prior art does not
disclose or suggest it. See Mayo, 566 U.S. at 78. The step of determining is
part of the abstract idea and can be performed mentally. "It has been clear
since Alice that a claimed invention's use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
'significantly more' than that ineligible concept." BSG Tech, 899 F.3d
at 1290. Moreover, the claims simply recite the functional results to be
achieved of a processor or modules establishing a conference session
monitoring activities, determining participants, updating an electronic
calendar, and notifying a host. The claims "provide[] only a result-oriented
solution[] with insufficient detail for how a computer accomplishes it. Our
17
Appeal2017-011022
Application 12/720,869
law demands more." Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1342 (Fed. Cir. 2017).
Thus, we are not persuaded of error in the Examiner's determination
that the limitations of the independent claims do not transform the claims
into significantly more than the abstract idea.
Based on the foregoing, we are not persuaded that the Examiner erred
in rejecting independent claims 1 and 11 under 35 U.S.C. § 101, and we
sustain the rejection of claims 1 and 11 and of dependent claims 3, 13, 18,
and 19, for which no separate argument is presented (see Appeal Br. 20).
Claims 2, 4, 12, and 14
Dependent claims 2 and 12 provide a further limitation of a processor
or module automatically adding communication device( s) to the conference
session based on reaching an agenda item. See Appeal Br. 27, 30 (Claims
App.). Similarly, dependent claims 4 and 14 provide a further limitation of a
processor or module automatically removing communication device( s) from
participating in an agenda item. See id. at 28, 30. The Appellants contend
that these limitations are "not something that can be accomplished by a
person and is clearly not an abstract idea." Appeal Br. 20, 21; see also
Reply Br. 11, 12. We disagree. Adding and removing devices, i.e.,
participants, even "automatically," are activities that are ordinarily
performed in scheduling and having conferences/meetings. Moreover, the
claims simply recite the functional results, i.e., adding and removing
devices, without any technological details on how these functions are
accomplished, i.e., without any indication that the claimed generic processor
or module is acting in an unconventional manner or in a technologically
improved way.
18
Appeal2017-011022
Application 12/720,869
The Appellants also repeat the argument that "[b ]y only having the
necessary participants in the conference session for specific agenda items,
the method of claim 2 [ and 4] makes the conferencing process more efficient
because the process uses less resources" and is, thus, like Enfzsh. Appeal
Br. 20-21. We disagree for the reasons discussed above. Regarding
claims 2 and 12, we again note that the claims do not recite or require that
the number of participants is minimized or reduced in future conferences;
rather, by adding participants' devices, the claims require the number of
participants to increase.
Thus, we are not persuaded that the Examiner erred in rejecting
dependent claims 2, 4, 12, and 14 under 35 U.S.C. § 101, and we sustain the
rejection of these claims.
Claims 5 and 15
Dependent claims 5 and 15 provide a further limitation of a processor
or module initiating monitoring of electronic sidebar discussions with the
information being used in the determining step. See Appeal Br. 28, 30
(Claims App.). The Appellants contend that "[t]he process of claim 5
clearly provides a technical improvement over conventional systems and
human systems because the conventional system would be unaware of any
sidebar communications that occur during the conference session." Appeal
Br. 22; see also Reply Br. 12-13. We disagree. The claims do not recite
how the monitoring is technologically performed in a way that is not
well-known, routine, and conventional. And simply monitoring activities,
i.e., collecting data, even electronically, is a well-known, routine, and
conventional function of a generic computer in the field of Internet-based
activity. See Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1346
19
Appeal2017-011022
Application 12/720,869
(Fed. Cir. 2018) (claim including monitoring data comprises "generic and
conventional information acquisition and organization steps that are
connected to, but do not convert, the abstract idea ... into a particular
conception of how to carry out that concept."); Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017), cert.
denied, 139 S. Ct. 378 (2018) (claims lacked inventive concept when they
"use[ d] a conventional ordering of steps-first processing the data, then
routing it, controlling it, and monitoring its reception-with conventional
technology to achieve its desired result."). As discussed above, the
processor/module performing this function is acting in its ordinary capacity.
The monitoring of electronic sidebar discussion is not directed to an
improvement in technology, but adds a limitation to monitor/collect data that
merely elaborates on the abstract idea of managing interactions between
people (here, scheduling conferences and improving conference efficiency)
and does not amount to significantly more.
Thus, we are not persuaded that the Examiner erred in rejecting
dependent claims 5 and 15 under 35 U.S.C. § 101, and we sustain the
rejection of these claims.
Claims 6 and 16
Dependent claims 6 and 16 provide a further limitation of a processor
or module detecting a push-to-talk request received from a participant
device. See Appeal Br. 28, 30 (Claims App.). The Appellants contend that
"[t]he concept of push to talk is clearly a computer construct that is rooted in
computer technology." Appeal Br. 22; see also Reply Br. 12-13. But, the
question is not whether a limitation requires computer technology. The
claims do not recite how the detecting is technologically performed in a way
20
Appeal2017-011022
Application 12/720,869
that is not well-known, routine, and conventional. And simply detecting an
activity or information is a well-known, routine, and conventional function
of a generic computer in the field of Internet-based activity. See Two-Way
Media, 874 F.3d at 1340-41 (claim reciting "receiving and transmitting a
real-time media stream from an intermediate server, detecting the
termination of the stream, and recording certain information about the
stream" required nothing "other than conventional computer and network
components operating according to their ordinary functions."). As discussed
above, the processor/module performing this function is acting in its
ordinary capacity. The detecting of a request/push to talk from a device is
not directed to an improvement in technology, but adds a limitation that
merely elaborates on the abstract idea of managing interactions between
people and does not amount to significantly more.
Thus, we are not persuaded that the Examiner erred in rejecting
dependent claims 6 and 16 under 35 U.S.C. § 101, and we sustain the
rejection of these claims.
Claims 7, 1 7, and 23
Dependent claims 7 and 17 provide a further limitation of the
push-to-talk request resulting in an automatic breaking into the conference,
allowing the requestor to speak, notifying the host device of the request,
performing an analysis of rules, and/or performing a speech-to-text
conversion. See Appeal Br. 28-31 (Claims App.). Claim 23 depends from
claim 7 and further provides for the results of the request to comprise
performing speech-to-text conversion or recording and forwarding the
conversion or recording. Id. at 32. The Appellants repeat the arguments that
"[t]he concept of push-to-talk is clearly a non-abstract computer construct"
21
Appeal2017-011022
Application 12/720,869
and the claim "clearly requires hardware." Appeal Br. 23; see also id. at 26;
Reply Br. 13-15. For the reasons discussed above with respect to claims 1,
11, 6, and 16, we find these arguments unpersuasive. As with the other
claims, claims 7, 17, and 23 do not recite how the functions, i.e., breaking
into a conference, allowing speaking, notifying, analyzing, and converting
speech to text, are technologically performed in ways that are not
well-known, routine, and conventional. The Appellants do not contend they
invented or improve upon speech-to-text conversion, but claim the function
generically, using existing systems. Converting text is a well-known,
routine, and conventional function of a generic computer. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1244--45 (Fed. Cir. 2016) (claims capturing
inputs that are recognized and converted to text involved functionality
well-known or conventional). As discussed above, the processor/module
performing this function is acting in its ordinary capacity. The limitations
are not directed to an improvement in technology, but merely elaborate on
the abstract idea and do not amount to significantly more.
Thus, we are not persuaded that the Examiner erred in rejecting
dependent claims 7, 17, and 23 under 35 U.S.C. § 101, and we sustain the
rejection of these claims.
Claim 20
Claim 20 depends from claim 11 and provides "wherein at least some
of the modules are included in a robust or intelligent client" that allows (but
does not positively perform) negotiations and dynamic changes to electronic
calendars based on the negotiations. See Appeal Br. 31 (Claims App.). The
Appellants repeat the argument that "[t]this is clearly not an abstract idea
that can be performed by a person." Appeal Br. 24; see also Reply Br. 12.
22
Appeal2017-011022
Application 12/720,869
But, the question is not only whether a limitation requires computer
technology. The claim does not recite how the module is more "intelligent"
than a generic computer. The claim further does not provide how the
functions are performed in an "intelligent" way such that allowing
negotiations and updating the calendar based on those negotiations make the
modules of claims 11 and 20 more "intelligent" or operate in an
unconventional manner. See In re TL! Commc'ns LLC Patent Litig.,
87 F. Supp. 3d 773, 790 (E.D. Va. 2015), ajf'd, 823 F.3d 607 (Fed. Cir.
2016); see also Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1348--49 (Fed. Cir. 2015) (claims reciting an "intelligent user
interface" were directed to "the idea of retaining information in the
navigation of online forms" without an inventive concept).
Thus, we are not persuaded that the Examiner erred in rejecting
dependent claim 20 under 35 U.S.C. § 101, and we sustain the rejection of
this claim.
Claims 21 and 22
Claim 21 depends from claim 1 and provides that the monitoring step
detects that the participant is lurking and in response, removing, in the
updating step, a future session in the participant's calendar. See Appeal
Br. 32 (Claims App.). Claim 22 depends from claim 21 and further
describes lurking, the future sessions, and updating the future sessions by
removing them from the calendar. Id. The Appellants repeat the arguments
that detecting lurking cannot be performed by a person and requires
hardware, and is, thus, not abstract. See Appeal Br. 24--25; see also Reply
Br. 14--15. This argument is unpersuasive for the reasons discussed above
with respect to claims 6 and 16. And, the claims do not recite how the
23
Appeal2017-011022
Application 12/720,869
detecting of lurking is technologically performed in a way that the detecting
is not well-known, routine, and conventional or that the processor
performing this function is not acting in its ordinary capacity. The detecting
of lurking is not directed to an improvement in technology, but adds a
limitation that merely elaborates on the abstract idea and does not amount to
significantly more.
The Appellants' argument that the claim is similar to Enfzsh because it
makes the system more efficient by reducing participants (Appeal Br. 25) is
unpersuasive for the reasons provided above.
Thus, we are not persuaded that the Examiner erred in rejecting
dependent claims 21 and 22 under 35 U.S.C. § 101, and we sustain the
rejection of these claims.
DECISION
The Examiner's rejection of claims 1-7 and 11-23 under 35 U.S.C.
§ 101 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)(l )(iv).
AFFIRMED
24