Ex Parte Erhart et al

Patent Trial and Appeal BoardNov 2, 2018

12777031 (P.T.A.B. Nov. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/777,031 05/10/2010 48500 7590 11/06/2018 SHERIDAN ROSS P.C. 1560 BROADWAY, SUITE 1200 DENVER, CO 80202 FIRST NAMED INVENTOR George Erhart 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. 4366CSM-106 3521 EXAMINER MEINECKE DIAZ, SUSANNA M ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 11/06/2018 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 GEORGE ERHART, VALENTINE C. MATULA, and DAVID SKIBA Appeal2017-007407 Application 12/777,031 1 Technology Center 3600 Before ERIC S. FRAHM, BETH Z. SHAW, and JOHN D. HAMANN, Administrative Patent Judges. FRAHM, Administrative Patent Judge. DECISION ON APPEAL 1 According to Appellants, Avaya, Inc. is the real party in interest (App. Br. 2). Appeal2017-007407 Application 12/777,031 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-13 and 16-22. Claims 14 and 15 have been canceled (see Final Act. 2; App. Br. 2). We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Appellants' application relates to customer satisfaction monitoring through the use of social media (Title), i.e., "automatically conducting customer surveys" (Spec. ,r 1; see also Spec. ,r,r 2--4). More particularly, the disclosed and claimed invention pertains to "a method of utilizing the increased use of social media and the ability to monitor social media interactions to produce a customer satisfaction metric without formal surveys or other artificial methods" (Spec. ,r 5), "without burdening the customer" (Spec. ,r 4), and without "produc[ing] artificial or inaccurate responses" (Spec. ,r 3). Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method, comprising: identifying, by a microprocessor, via a network, computer systems of a plurality of publicly-available information sources; monitoring in real-time, by the microprocessor, via the network, the computer systems of the plurality of publicly- available information sources; detecting, by the microprocessor, a survey-initiating trigger; after the detection of the survey-initiating trigger, identifying, by the microprocessor and based on the detection of the survey-initiating trigger, a selected one of the computer systems of the publicly-available information sources that comprises information; retrieving, by the microprocessor, via the network, the information from the selected one of the computer systems of the publicly-available information sources, for a predetermined 2 Appeal2017-007407 Application 12/777,031 amount of time that starts after the detection of the survey- initiating trigger; filtering, by the microprocessor, the retrieved information; and generating, by the microprocessor, survey results based on the retrieved filtered information, wherein the survey results relate to the retrieved filtered information. Rejection The Examiner made the following rejection: Claims 1-13 and 16-22 stand rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Final Act. 8-10; Ans. 2--4. Issue on Appeal Did the Examiner err in rejecting claims 1-13 and 16-22 under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter? ANALYSIS We have reviewed the Examiner's rejection in light of Appellants' arguments in the Appeal Brief (App. Br. 9-23) and the Reply Brief (Reply Br. 3-13). For the reasons discussed infra, as well as the reasons provided by the Examiner in the Final Rejection (Final Act. 8-10; see also Ans. 2--4), and the Examiner's Answer (Ans. 5-18), we are not persuaded by Appellants' arguments (App. Br. 9-23; Reply Br. 3-13) that the Examiner erred in rejecting claims 1-13 and 16-22 under 35 U.S.C. Â§ 101. In Alice, the Supreme Court reiterated the two-step framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), for determining whether claimed subject matter isjudicially- excepted from patent eligibility under Â§ 101. Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355 (2014). Assuming that a claim nominally 3 Appeal2017-007407 Application 12/777,031 falls within one of the statutory categories of machine, manufacture, process, or composition of matter, the first step in the analysis is to determine if the claim is directed to a law of nature, a natural phenomenon, or an abstract idea Uudicial exceptions). Alice, 134 S. Ct. at 2355. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355-57. If the claim is directed to a judicial exception, such as an abstract idea, the second step is to determine whether additional elements in the claim "'transform the nature of the claim' into a patent-eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This second step is described as "a search for an "'inventive concept"'-i. e., an element or combination of elements that is ' ... significantly more than ... the [ineligible concept] itself."' Id. at 2355 (alteration in original) (quoting Mayo, 566 U.S. at 73). Alice Step One "[T]he first step in the Alice inquiry ... asks whether the focus of the claims is on the specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (2016). "The abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished."' McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). "We therefore look to whether the claims ... focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the 4 Appeal2017-007407 Application 12/777,031 abstract idea and merely invoke generic processes and machinery." McRO, 837 F.3d at 1314. Appellants contend claims 1, 11, and 16 are not directed to the abstract idea of performing surveys and filtering information, because the recited steps and system limitations could not possibly be performed in a person's head (App. Br. 10). Specifically, Appellants contend the step of selecting a specific computer system recited in claim 1 to filter information from multiple computer systems from plural publicly-available information sources like web-social media sites cannot be accomplished without a microprocessor and computer network/systems (App. Br. 11 ). Appellants further contend "the steps of claim 1 are not an automation of a mental task," "cannot be performed in someone's head," and therefore "are clearly non abstract" (App. Br. 11 ). Finally, Appellants argue that because claim 1 recites "monitoring in real-time, by the microprocessor, via the network, the computer systems of the plurality of publicly-available information sources," this step of claim 1 "requires the ability to monitor multiple computer systems over the network, which cannot be performed mentally by a person" (App. Br. 11-12). We are not persuaded by Appellants' arguments. In rejecting the claims under 35 U.S.C. Â§ 101, the Examiner concludes that claims 1, 11, and 16 are directed to a method and systems for automating customer surveying (Ans. 2-8). We agree, and further conclude the claims are directed to human behavior involving identifying a trigger event (e.g., a product purchase) and then monitoring a customer's social media to generate survey results. The Examiner also finds the claims do not include limitations that are "significantly more" than the abstract idea because the claims do not include an improvement to another technology or 5 Appeal2017-007407 Application 12/777,031 technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment (e.g., a computing/network system/device). Final Act. 9-10; Ans. 3--4, 8-9. We agree with the Examiner. The Examiner sets forth a prima facie case for the rejection at pages 8 through 10 of the Final Rejection and 2 through 4 of the Examiner's Answer, and as further supported at pages 2 through 8 of the Final Rejection and pages 5 through 12 of the Examiner's Answer. In addition, the Examiner has provided a comprehensive response to Appellants' arguments supported by a preponderance of evidence. Ans. 5-18. As such, we adopt all of the Examiner's legal conclusions, findings, and explanations provided therein (Final Act. 2-10; Ans. 2-18). Appellants' arguments (App. Br. 9-23; Reply Br. 3-13) that the Examiner erred in concluding the subject matter of claims 1-13 and 16-22 is directed to an abstract idea which is patent-ineligible are also not persuasive for the following reasons. First, we note that the fact that the claims do not explicitly recite a mathematical formula or equation is insufficient to show the claims are not directed to an abstract idea. The presence or absence of a mathematical formula equation is not determinative in the Alice analysis, because the focus is on the claim as a whole. See Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) ("Under step one of Mayo/Alice, the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter."). In this 6 Appeal2017-007407 Application 12/777,031 case, the overall focus of claim 1 is on monitoring social media, and not a technological improvement. Second, we note that examining earlier cases can have a role in deciding whether a concept that claims are found to be directed to is an abstract idea. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("Instead of a definition [for what an 'abstract idea' encompasses], then, the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen-what prior cases were about, and which way they were decided."). Our finding that claim 1 is directed to an abstract idea is supported by analogy to the Federal Circuit's decision in Electric Power Group, LLC v. Alstom S.A., where the court found claims that focused on "gathering and analyzing information of a specified content, then displaying the results," to be directed to an abstract idea. 830 F.3d 1350, 1354 (Fed. Cir. 2016). In particular, the representative claim in Electric Power was drawn to a "method of detecting events on an interconnected electric power grid in real time" and included limitations such as "detecting and analyzing events in real-time." Id. at 1351-52 (emphasis added). Accordingly, Appellants' emphasis on the real-time aspect of claim 1 in the present case (see App. Br. 11-12) is not in itself persuasive of error in the Examiner's finding that claim 1 is directed to an abstract idea. Additional analogous cases where the Federal Circuit has found claims involving no more than data collection, manipulation, and/or display to be directed to abstract ideas include OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) (offer-based price optimization), Intellectual Ventures I LLC v. Capital One Bank (USA), 7 Appeal2017-007407 Application 12/777,031 792 F.3d 1363, 1370 (Fed. Cir. 2015) (tailoring information presented to a user based on particular information), Versata Development Group v. SAP Am., Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015) ("determining a price, using organizational and product group hierarchies"), Digitech Image Technologies, LLC v. Electronics For Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) ( employing "mathematical algorithms to manipulate existing information to generate additional information"), and Accenture Global Services, GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344-- 46 (Fed. Cir. 2013) (generating tasks based on rules in response to events). Moreover, claim 1 is analogous to other Federal Circuit cases where the court found claims relating to data gathering and analysis to be directed to abstract ideas, for example, Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1092 (Fed. Cir. 2016) (recording audit log data for protected health information, analyzing it against a rule, and providing a notification if the analysis detects misuse), Elec. Power Grp., 830 F.3d at 1354 ("gathering and analyzing information of a specified content, then displaying the results"), OIP Technologies, 788 F.3d at 1362---63 (offer-based price optimization), Versata, 793 F.3d at 1333 ("determining a price, using organizational and product group hierarchies"), Digitech, 758 F.3d at 1351 ( employing "mathematical algorithms to manipulate existing information to generate additional information"), and Accenture, 728 F.3d at 1344--46 (generating tasks based on rules in response to events). Further, claim 1 is also analogous to patent-ineligible claims falling into the category of advertising, marketing, and sales activities. For example, in In re Maucorps, the claimed invention that was directed to an abstract idea under Â§ 101 determined "the optimum number of times a sales 8 Appeal2017-007407 Application 12/777,031 representative for a business should visit each customer over a period of time." 609 F.2d 481,482 (CCPA 1979). Similarly, claim 1 in this case improves customer survey accuracy by "monitor[ ing] social media interactions to produce a customer satisfaction metric without formal surveys or other artificial methods" (Spec. ,r 5), "without burdening the customer" (Spec. ,r 4), and without "produc[ing] artificial or inaccurate responses" (Spec. ,r 3). Alice Step Two The second step in the Alice analysis requires a search for an "inventive concept" that "must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer." Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). There must be more than "computer functions [that] are 'well-understood, routine, conventional activit[ies]' previously known to the industry." Alice, 134 S. Ct. at 2359 (second alteration in original) (quoting Mayo, 566 U.S. at 73). As recognized by the Supreme Court, "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent- eligible invention." Alice, 134 S. Ct. at 2358; see also id. at 2359 ( concluding claims "simply instruct[ing] the practitioner to implement the abstract idea of intermediated settlement on a generic computer" are not patent eligible); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014) (claims merely reciting abstract idea of using advertising as currency as applied to particular technological environment of the Internet are not patent eligible); Accenture, 728 F.3d at 1344--45 (claims reciting "generalized software components arranged to implement an abstract 9 Appeal2017-007407 Application 12/777,031 concept [ of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer" are not patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided' limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible"); Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1056 (Fed. Cir. 2017) (generic computer elements did not represent improvement in computer technology but rather were invoked merely as tools, and did not transfonn the claims into significantly more than claims to abstract idea itself); Elec. Power Group, 830 F.3d 1351 (rejection affirmed for a method of performing real-time performance monitoring of an electric power grid because "the claims do not go beyond requiring the collection, analysis, and display of available information in a particular field ... over conventional computer and network technology"). Appellants contend (App. Br. 12-17; Reply Br. 5-9) claims 1, 11, and 16 do more than implement an abstract idea on a computer because the claimed limitations offer technical improvements to the related technology and technical field (e.g., computer network systems) by overcoming an existing problem in the field of survey processing - determining customer satisfaction without burdening the customer- i.e., automating a manual process. However, merely making the practice of an abstract idea more effective by implementing the idea on a computer does not suffice to meet the inventive concept requirement of Alice. See OIP Technologies, 788 F.3d at 1363 ("[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render 10 Appeal2017-007407 Application 12/777,031 a claim patent eligible."). Further, in the Electric Power case mentioned above, the Federal Circuit found that even performing claimed functions in real-time was insufficient to provide an inventive concept where only conventional, generic technology was involved: The claims in this case specify what information in the power- grid field it is desirable to gather, analyze, and display, including in "real time"; but they 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 in the realm of application of the information-based abstract ideas. 830 F.3d at 1356. Here too, Appellants' claims 1, 11, and 16 recite no more than a generic processor and storage to implement the claimed real-time social media monitoring and survey generating functions. The Examiner finds (Final Act. 9-10; Ans. 3--4), and we agree, that claims 1, 11, and 16 recite no more than the abstract idea automating customer surveying, a human behavior involving identifying a trigger event (e.g., a product purchase) and monitoring a customer's social media to generate survey results. Appellants' argument (Reply Br. 8-9) that the Examiner erred in relying (see Ans. 9) on Chung (US 2010/0241498 Al; published Sept. 23, 2010) (Abstract; ,r,r 24, 25) as evidence that gathering data from the Internet without formal surveys using crawling agents upon detection of a trigger event was old and well-known at the time of Appellants' application filing date, is unpersuasive. Chung discloses a trigger parameter (i-f 24) used to trigger a trend/event crawler 112 to retrieve information corresponding to trigger events from the Internet and/or plural other computer resources connected thereto. This monitoring may be done "continuously" to monitor 11 Appeal2017-007407 Application 12/777,031 "current events" (Chung ,r 25). Thus, we find monitoring websites in real- time was well-known, routine, and conventional at the time Appellants' Specification was filed. Appellants' arguments (App. Br. 15; Reply Br. 5-6) that the pending claims present an inventive concept sufficient to pass muster under Â§ 101 because they otherwise appear to be allowable under Â§ 102 and Â§ 103 (i.e., no rejections of the claims are presently made under relevant sections) are unpersuasive. The Supreme Court guides: "[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 Â§ 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court further emphasizes that "[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (holding that "[e]ven assuming" that a particular claimed feature was novel does not "avoid the problem of abstractness"). Therefore, we find Appellants' novelty and non-obviousness arguments (App. Br. 8-9) are not persuasive. With regard to each of the dependent claims separately argued ( claims 2--4, 9, 12, 13, 17, and 22), we are similarly not persuaded by Appellants' arguments (App. Br. 17-23; Reply Br. 9-13) that the Examiner erred in concluding these claims are directed to patent-ineligible subject matter. We are, therefore, not persuaded the Examiner erred by rejecting as patent-ineligible claim 1, and claims 2-13 and 16-22 not specifically argued 12 Appeal2017-007407 Application 12/777,031 separately. In view of the foregoing, we sustain the Examiner's rejection under 35 U.S.C. Â§ 101 of claims 1-13 and 16-22. CONCLUSION Under 35 U.S.C. Â§ 101, the Examiner did not err in rejecting claims 1-13 and 16-22 as being patent-ineligible. DECISION We affirm the Examiner's decision to reject claims 1-13 and 16-22 under 35 U.S.C. Â§ 101 as being drawn to patent ineligible subject matter. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 4I.50(f). AFFIRMED 13