Ex Parte Meyer et al

Patent Trial and Appeal Board

Feb 13, 2019

14057396 (P.T.A.B. Feb. 13, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/057,396 10/18/2013
94104 7590 02/14/2019
Taylor English Duma LLP
1600 Parkwood Circle, Suite 200
Atlanta, GA 30339
FIRST NAMED INVENTOR
Karl Meyer
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.
190330-1012 9494
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
02/14/2019 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 KARL MEYER and JONATHAN TURNER
Appeal2017-008543
Application 14/057 ,396 1
Technology Center 3600
Before JOHNNY A. KUMAR, JENNIFER S. BISK, and LARRY J. HUME,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 4, 5, 7, 10-15, 17, 18, 21, 23, 24, 26, 28, 29, and
31--43, which are all claims pending in the application. Appellants have
canceled claims 3, 6, 8, 9, 16, 19, 20, 22, 25, 27, and 30. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is XPO Last Mile, Inc.
App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "generally
relate[] to surveys, and more particularly relate[] to survey automation."
Spec. ,r 2.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases and formatting added to contested prior-art limitations):
1. A computer-implemented method for conducting
an automated survey regarding quality of a service performed
by a servicer for a customer associated with a customer location
and determining if at least one follow-up action is warranted
based in part on analyzing survey result information, the
computer-implemented method comprising the steps of:
conducting the automated survey on the customer
regarding the quality of the service performed by the servicer
for the customer associated with the customer location, the
automated survey being configured by a computer utilizing a
processing device to automatically prompt the customer for
numerical answers to represent survey result information
regarding the quality of the service performed by the servicer
for the customer associated with the customer location;
after conducting the automated survey on the customer
regarding the quality of the service performed by the servicer
for the customer associated with the customer location,
automatically receiving in one data transmission, by the
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Sept. 9, 2016); Reply Brief ("Reply Br.," filed Mar. 10, 2017); Examiner's
Answer ("Ans.," mailed Jan. 17, 2017); Final Office Action ("Final Act.,"
mailed Apr. 11, 2016); and the original Specification ("Spec.," filed
Oct. 18, 2013).
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computer, the survey result information regarding the quality of
the service performed by the servicer for the customer
associated with the customer location;
in response to receiving the survey result information
regarding the quality of the service performed by the servicer
for the customer associated with the customer location,
automatically analyzing by the computer the survey result
information by performing a numerical analysis of the survey
result information regarding the quality of the service
performed by the servicer for the customer associated with the
customer location, wherein performing the numerical analysis
includes calculating a score;
determining, by the computer, if at least one subsequent
follow-up action is warranted based at least in part on the
calculated score being below a threshold; and
determining, by the computer, if at least one subsequent
follow-up action is warranted based at least in part on at least
one numeric answer indicating a lowest level of satisfaction.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Todd US 6,380,928 Bl Apr. 30, 2002
Trauth et al. US 2002/0138338 Al Sept. 26, 2002
("Trauth")
Shoemaker et al. US 2003/0167197 Al Sept. 4, 2003
("Shoemaker")
Stone et al. US 2005/0203809 Al Sept. 15, 2005
("Stone")
Brinkerhoff US 6,963,848 Bl Nov. 8, 2005
Seetharaman et al. US 2010/0080365 Al Apr. 1, 2010
("Seetharaman")
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Rejections on Appeal
RI. Claims 1, 2, 4, 5, 7, 10-15, 17, 18, 21, 23, 24, 26, 28, 29, and
31--43 stand rejected under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter. Final Act. 10.
R2. Claims 1, 2, 4, 5, 7, 10-15, and 32--43 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Brinkerhoff,
Shoemaker, Todd, and Stone. Final Act. 13.
R3. Claims 17, 18, 21, 23, 24, 26, 28, 29, and 31 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Brinkerhoff, Shoemaker, Todd, Trauth, Seetharaman, and Stone. Final Act.
28.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 11-36) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible
subjectmatterRejectionRl of claims 1, 2, 4, 5, 7, 10-15, 17, 18, 21, 23, 24,
26, 28, 29, and 31--43 on the basis of representative claim 1; we decide the
appeal of obviousness Rejection R2 of claims 1, 2, 4, 5, 7, 10-15, and 32--43
on the basis of representative claim 1; and we decide the appeal of
obviousness Rejection R3 of claims 17, 18, 21, 23, 24, 26, 28, 29, and 31 on
the basis of representative claim 17. 3
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
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ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1, 2,
4, 5, 7, 10-15, 17, 18, 21, 23, 24, 26, 28, 29, and 31--43 and, unless
otherwise noted, we incorporate by reference herein and adopt as our own:
( 1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons and rebuttals set forth in the
Examiner's Answer in response to Appellants' arguments. We highlight and
address specific findings and arguments regarding claims 1 and 17 for
emphasis as follows.
1. § 101 Rejection RI of Claims 1, 2, 4, 5, 7, 10-15, 17, 18, 21, 23, 24,
26, 28, 29, and 31--43
Issue 1
Appellants argue (App. Br. 12-19; Reply Br. 2---6) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
In light of recent USP TO Guidance on subject matter patent
eligibility, and informed by our governing case law concerning 35 U.S.C.
§ 101, did the Examiner err in concluding claim 1 is directed to a judicial
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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exception, i.e., an abstract idea, without significantly more, and thus is
patent-ineligible under§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
We first note "[w]hether a claim is drawn to patent-eligible subject
matter is an issue of law that we review de novo." SiRF Tech., Inc. v. Int 'l
Trade Comm'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.4
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. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
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
4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the patent-eligibility
inquiry under § 101.
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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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); 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 "[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 176; 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
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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 ( quotation marks 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.
B. USPTO Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-07 /pdf/
2018-28282.pdf).
Under that 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 interactions such as a fundamental
economic practice, or mental processes); 5 and
5 Referred to as "Revised Step 2A, Prong l" in the Guidance (hereinafter
"Step 2A(i)").
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(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.0S(a}-
( c), (e }-(h)). 6
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 are not "well-understood, routine, conventional"
in the field (see MPEP § 2106.0S(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. 7
See Guidance.
Step 2A(i) ~ Abstract Idea
Informed by our judicial precedent, the recent Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity -
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
6 Referred to as "Revised Step 2A, Prong 2" in the Guidance (hereinafter
"Step 2A(ii)").
7 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Guidance. 8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) ~ Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Guidance,
Section III.C.
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The seven identified "practical application" sections of the MPEP, 9
cited in the Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05( c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An
Exception
( 6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B ~ "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 10 The Federal Circuit has held claims eligible at
9 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer to
revision [R-08.2017].
10 See, e.g., Diehr, 450 U.S. at 187.
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the second step of the Alice/Mayo test (US PTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception ( e.g., because the additional elements were
unconventional in combination). 11 Therefore, if a claim has been
determined to be directed to a judicial exception under Revised Step 2A, we
must evaluate the additional elements individually and in combination under
Step 2B to determine whether they provide an inventive concept (i.e.,
whether the additional elements amount to significantly more than the
exception itself). 12
Under the Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Guidance, III.B. 13
11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
12 We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
13 In accordance with existing Step 2B guidance, an Examiner's conclusion
that an additional element ( or combination of elements) is well understood,
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In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine, or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element( s ).
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05( d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element( s ).
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element( s ).
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
routine, conventional activity must be supported with a factual
determination. For more information concerning evaluation of well-
understood, routine, conventional activity, see MPEP § 2106.05( d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 9, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memo").
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activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1
Claim 1, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to "receiving and
analyzing numerical survey information regarding customer satisfaction of a
service," i.e., "the claim recites comparing information using rules to make a
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determination [ which is] simply the organization and comparison of data
which can be performed mentally and is an idea of itself." Final Act. 10.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. We note "an idea of itself' is no
longer a category included in the Guidance, and therefore we reevaluate
whether an abstract idea is recited by claim 1 based upon the Guidance.
We agree with the Examiner that claim 1 merely organizes and
compares survey data, which is a mental process that can be performed in
the human mind and/or by pen and paper. Id. We find this type of activity,
i.e., comparing information using rules to make a determination (i.e.,
conducting a survey regarding quality of a service performed and
determining if follow-up action is warranted) for example, includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson."). 14
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since Cy her Source in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, ... without more, as essentially
14 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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mental processes within the abstract-idea category." Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016) (quoting
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information (e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Also,
collecting and comparing known information has been determined to be an
abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d
1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the '283 patent states the idea of
collecting and comparing known information"). Also, more recently, our
reviewing court has also concluded that acts of parsing, comparing, storing,
and editing data are abstract ideas. Berkheimer, 881 F.3d at 1366. 15
Moreover, the Specification provides evidence as to what the claimed
invention is directed. In this case, the Specification discloses that the
15 Our reviewing court recognizes 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." Id. at 1241.
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invention "generally relates to surveys, and more particularly relates to
survey automation." Spec. ,r 2. Claim 1 provides additional evidence.
Claim 1 recites, in part, "[a] computer-implemented method for conducting
an automated survey regarding quality of a service performed by a servicer
for a customer associated with a customer location and determining if at
least one follow-up action is warranted based in part on analyzing survey
result information." In particular, claim 1 recites:
in response to receiving the survey result information
regarding the quality of the service performed by the servicer
for the customer associated with the customer location,
automatically analyzing by the computer the survey result
information by performing a numerical analysis of the survey
result information regarding the quality of the service
performed by the servicer for the customer associated with the
customer location, wherein performing the numerical analysis
includes calculating a score.
Claims App'x 1. We conclude this limitation recites an abstract idea. 16
Appellants rely upon the Federal Circuit's holding in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to contend alleged
improvements in computer operation allow claims to pass the abstract idea
test in Alice. In particular, Appellants argue:
Applicant's claims here, just like the claims in Enfish, are
"directed to a specific improvement to the way computers
operate" ... examples of which are "automatically receiving in
one data transmission, by the computer, the survey result
information," "automatically analyzing ... " the information,
16 The Specification at paragraph 2 describes the invention as relating "to
surveys, and more particularly relates to survey automation." Spec. ,r 2.
Thus, this intrinsic evidence shows that claim 1 is directed to collecting and
analyzing (survey) data. This is consistent with the Examiner's
determination.
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"determining, by the computer, if at least one subsequent
follow-up action is warranted based at least in part on the
calculated score being below a threshold," and "determining, by
the computer, if at least one subsequent follow-up action is
warranted based at least in part on at least one numeric answer
indicating a lowest level of satisfaction," recited features
common to all remaining independent claims. The one data
transmission and computer analysis performed thereafter
presented in the independent claims, alone, and in the
combinations as claimed, provide specific improvements in the
way the computer system operates with increased bandwidth,
improved efficiency in processing power, and more efficient
use of communication technology. The survey conducting
module and the survey result analyzing module, for example,
provide a coordinated effort that triggers surveys at appropriate
times, analyzes the survey result information, determines if a
follow-up action is warranted, and sends the appropriate
information to the servicer (e.g. field engineer) and client, and
in tum saves performance bandwidth throughout the survey
follow-up system. See Specification at ,r,r [0063]-[0068],
[0072]. Further, efficient use of bandwidth and processing
power used by the survey follow-up module is accomplished by
sending, in one data transmission, an e-mail to "transmit the
survey result information and recorded voice messages and/ or
links to the information and voice messages ... to both the
client and the field manager." Id. Therefore, the survey result
analysis system provides a more efficient use of communication
technology used within the survey follow-up system. Such
improvements in computer functioning allow claims to pass
Part 1 of the Alice test.
App. Br. 14--15. 17
17 Appellants further contend "claims 29-31 are directed towards statutory
subject matter because they include means-plus-function limitations ...
[that] are 'not capable of being performed by just any generic computer that
performs generic computer functions' .... Rather, the means-plus-function
limitations encompass the processing steps 'that amount to a specific
algorithm that transforms an otherwise general purpose computer into a
18
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In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id.
at 1333. The court found the claims directed to "a specific improvement to
the way computers operate, embodied in the self-referential table" (id.
at 1336), and explained that the claims are "not simply directed to any form
of storing tabular data, but instead are specifically directed to a self-
referential table for a computer database" that functions differently than
conventional databases. Id. at 1337.
We find Appellants' reliance upon Enfzsh is misplaced, for similar
reasons cited by the Examiner, with which we agree. Specifically,
in addressing Appellant's arguments, it is noted that the term
and concept of "single data transmission" does not appear in
Appellant's above cited paragraphs of Appellant's
specification, nor anywhere else, either implicitly nor explicitly.
Further, the above cited paragraphs of Appellant's specification
make no mention or reference to "bandwidth", or the
improvement of or efficient use of bandwidth or processing
power.
Ans. 4.
In the Reply Brief, Appellants state they "respectfully disagree[] and
in the next subsection of this Response, Applicant articulates below why
these claimed elements are inherently found in the specification ....
special purpose computer programmed to perform the recited function."'
App. Br. 15 ( citation and emphasis omitted). We are not persuaded by
Appellants' argument at least because none of claims 29-31 on appeal (as
found in the Claims Appendix in the "RESPONSE TO NOTIFICATION OF
NON-COMPLIANT APPEAL BRIEF" filed October, 17, 2016) recite
means plus function limitations under 35 U.S.C. § 112, sixth paragraph.
19
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Appellant submits that 'one data transmission' would be understood by one
of ordinary skill in the art as being inherent in the original description."
Reply Br. 5 (citing MPEP § 2163(I)(B), ,I 2 and Spec. ,r,r 71-72.
We disagree because there is no evidence of record to substantiate
such a finding that "one data transmission" is inherently disclosed in
Appellants' Specification. 18
Thus, under Step 2A (i), we conclude claim 1 recites the abstract idea
of conducting a survey, i.e., organizing and comparing survey data, and
using rules to make a determination.
18 In the event of further prosecution, we leave it to the Examiner to
determine whether the claims on appeal have adequate written description
support under 35 U.S.C. § 112, first paragraph, with respect to the recitation
of "one data transmission," a limitation added during prosecution. Written
description is a question of fact, judged from the perspective of one of
ordinary skill in the art as of the relevant filing date. See Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1563---64 (Fed. Cir. 1991). However, "actual
'possession' or reduction to practice outside of the specification is not
enough. Rather ... it is the specification itself that must demonstrate
possession." Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co., 598 F.3d 1336,
1352 (Fed. Cir. 2010); see also PowerOasis, Inc. v. T-Mobile USA, Inc., 522
F.3d 1299, 1306--07 (Fed. Cir. 2008) (explaining that§ 112, ,r 1 "requires
that the written description actually or inherently disclose the claim
element"). "[I]t is not a question of whether one skilled in the art might be
able to construct the patentee's device from the teachings of the disclosure.
Rather, it is a question whether the application necessarily discloses that
particular device .... A description which renders obvious the invention for
which an earlier filing date is sought is not sufficient." Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997) (quoting
Jepson v. Coleman, 314 F.2d 533,536 (CCPA 1963)). Although the Board
is authorized to reject claims under 37 C.F.R. § 4I.50(b), no inference
should be drawn when the Board elects not to do so. See Manual of Patent
Examining Procedure (MPEP) § 1213.02.
20
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Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
In addition to the abstract "analyzing ... the survey results" limitation
identified in Step 2A(i), supra, claim 1 recites (1) "conducting the ...
survey," (2) "receiving ... the survey result information," (3) "determining
... if at least one subsequent follow-up action is warranted based at least in
part on the calculated score being below a threshold," and ( 4) "determining
... if at least one subsequent follow-up action is warranted based at least in
part on at least one numeric answer indicating a lowest level of satisfaction."
As to the specific limitations, we find limitations (1) and (2) recite
insignificant data gathering. See MPEP § 2106.05(g). Data gathering, as
performed by the steps or function in Appellants' claims, is a classic
example of insignificant extra-solution activity. See, e.g., In re Bilski, 545
F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd sub nom, Bilski v. Kappas,
561 U.S. 593 (2010).
21
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We also find limitations (3) and (4) recite insignificant post solution
activity. 19 The Supreme Court guides that the "prohibition against patenting
abstract ideas 'cannot be circumvented' [by] adding 'insignificant
postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting Diehr, 450 U.S.
at 191-92). On this record, we are of the view that Appellants' claims do
not operate the recited generic computer components in an unconventional
manner to achieve an improvement in computer functionality. See MPEP
§ 2106.05(a).
Accordingly, we conclude the recited judicial exception is not
integrated into a practical application as determined under one or more of
the MPEP sections cited above, such that the claim is directed to the judicial
exception.
Step 2B - "Inventive Concept" or "Significantly More"
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For Step 2B we
must "look with more specificity at what the claim elements add, in order to
determine 'whether they identify an "inventive concept" in the application of
the ineligible subject matter' to which the claim is directed." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
19 We also note the "determining" steps can be carried out by a human in the
mind or by use of pen and paper. See CyberSource, 654 F.3d at 1375.
22
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patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" ( or an
equivalent) with an abstract idea20 ; mere instructions to implement an
abstract idea on a computer21 ; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 22
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of collecting and analyzing survey data into a
patent-eligible application of that abstract idea. See Final Act. 12. 23
20 Alice, 573 U.S. at 221-23.
21 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84--85).
22 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
23 The Examiner concludes:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements or combination of
23
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Further, The Examiner reiterates, and we agree,
These elements amount to no more than mere
instructions to implement the idea on a computer, and the
recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine,
and conventional activities previously known to the industry ...
. Appellant's specification at FIG. 5 and [0048]-[0055]
provides descriptions of generic computer structures [ e.g.
laptop or desktop computer systems].
Ans. 5.
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, 811 F.3d at 1325. In particular, "[t]he question of
whether a claim element or combination of elements is well-understood,
routine and conventional to a skilled artisan in the relevant field is a question
of fact." Berkheimer, 881 F.3d at 1368.
elements in the claims other than the abstract idea per se [ e.g.
the automated survey being configured by a computer utilizing
a processing device to automatically prompt the customer for
numerical answers, a memory, automatically receiving in one
data transmission, and automatically analyzing] amount to no
more than mere instructions to implement the idea on a
computer, or by recitation of generic computer structure that
serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously
known to the industry [ e.g. performing repetitive calculations;
receiving, processing, and storing data; electronically scanning
or extracting data from a physical document; electronic
recordkeeping; automating mental tasks; and receiving or
transmitting data over a network, e.g., using the Internet to
gather data].
Final Act. 12.
24
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As evidence of the conventional nature of the claimed network
components and processes, we note the Examiner's citation (Ans. 5) to
Appellants' Specification in paragraphs 48 through 55. For example:
The processing device 48 may be one or more general-
purpose or specific-purpose processors or microcontrollers for
controlling the operations and functions of the automated
survey system 36. In some implementations, the processing
device 48 may include a plurality of processors, computers,
servers, or other processing elements for performing different
functions within the automated survey system 36.
Spec. ,r 50.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellants' Specification, as quoted
above. 24
With respect to the Step 2B analysis, we agree with the Examiner
because, as in Alice, the recitation of either a "computer-implemented
method for conducting an automated survey regarding quality of a service
performed by a servicer for a customer associated with a customer location
and determining if at least one follow-up action is warranted based in part on
24 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
25
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analyzing survey result information" using a "a computer utilizing a
processing device" ( claim 1 ); a "survey result analysis system for
conducting an automated survey regarding quality of a service performed by
a servicer for a customer associated with a customer location and
determining if at least one follow-up action is warranted based in part on
analyzing survey result information," having "a processing device," "a
memory device," a "survey program including a survey conducting module"
and "an automated survey result analyzing module" ( claim 1 O); a
"computer-implemented method for conducting an automated survey
regarding quality of a service performed by a servicer for a customer
associated with a customer location" that utilizes "a computer utilizing a
processing device" ( claim 17); a "survey result analysis system for
conducting an automated survey regarding quality of a service performed by
a servicer for a customer associated with a customer location" having "a
processing device," "a memory device," a "survey program including a
survey conducting module" and "an automated survey result analyzing
module" ( claim 23); a "survey result analysis system for conducting an
automated survey regarding quality of a service performed by a servicer for
a customer associated with a customer location" that includes various means
for: conducting the survey, receiving the survey result information,
analyzing the survey result, and determining "if at least one subsequent
follow-up action is warranted" ( claim 32); and a "method" that uses a
computer to carry out the steps of "triggering ... an automated survey,"
"receiving ... the survey result information," "analyzing ... the survey
result information," and "determining ... if at least one subsequent follow-
up action is warranted" ( claim 39) is simply not enough to transform the
26
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patent-ineligible abstract idea here into a patent-eligible invention. See
Alice, 573 U.S. at 221 ("[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention.").
Appellants cite to BASCOM in support of their contention that the
claims on appeal set forth an inventive concept. Specifically,
The present claims include an "inventive concept" when
compared to BASCOM, in which the Federal Circuit found that
claims directed to a specific implementation of filtering content
on the Internet did include an inventive concept where the
claims set forth a "non-conventional and non-generic
arrangement of known, conventional pieces." [] The Federal
Circuit further found that the claimed invention in BASCOM
did not "preempt all ways of filtering content on the Internet;
rather, they recite a specific, discrete implementation of the
abstract idea of filtering content." [ ] Similarly, Applicant's
claims do not preempt all ways of "comparing information
using rules to make a determination"; instead ... they provide
specific and discrete implementation of such concepts. Further,
as established in ... the subsequent section with regard to the
35 U.S.C. § 103 rejections, the claims recite patentable subject
matter over the cited references. Thus, all of the present claims
are "non-conventional" and "non-generic" over the cited
references.
App. Br. 16-17 (citations omitted).
In BASCOM, the claims were directed to the inventive concept of
providing customizable Internet-content filtering which, under the Alice
analysis, was found to transform the abstract idea of filtering content into a
patent-eligible invention. Although the underlying idea of filtering Internet
content was deemed to be abstract, under the Alice analysis, the claims
carved out a specific location for the filtering system, namely a remote
27
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Internet service provider (ISP) server, and required the filtering system to
give users the ability to customize filtering for their individual network
accounts. BASCOM, 827 F.3d at 1349.
In response to Appellants' reliance upon BASCOM, supra, we note
there is no evidence of record to substantiate the assertion that the claims
recite non-conventional and non-generic arrangement of known,
conventional elements, as in BASCOM. Moreover, we find no analogy
between Appellants' claimed automated survey and the Internet content
filtering claims in BASCOM.
Regarding Appellants' preemption argument, "[ w ]hile preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility .... 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); see also OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract").
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped claims 2, 4,
5, 7, 10-15, 17, 18, 21, 23, 24, 26, 28, 29, and 31--43, not argued separately,
and which fall therewith. See Claim Grouping, supra.
28
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2. § 103 Rejection R2 of Claims 1, 2, 4, 5, 7, 10-15, and 32--43
Issue 2
Appellants argue (App. Br. 19-24; Reply Br. 6-7) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Brinkerhoff, Shoemaker, Todd, and Stone is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "computer-implemented method for conducting an automated
survey regarding quality of a service performed by a servicer for a customer
associated with a customer location and determining if at least one follow-up
action is warranted based in part on analyzing survey result information"
that includes, inter alia, the limitations of (1) "automatically receiving in one
data transmission ... the survey result information," (2) "determining ... if
at least one subsequent follow-up action is warranted based at least in part
on the calculated score being below a threshold," and (3) "determining ... if
at least one subsequent follow-up action is warranted based at least in part
on at least one numeric answer indicating a lowest level of satisfaction," as
recited in claim 1?
ANALYSIS
Limitation (1)- "one data transmission"
Initially, the Examiner cites Brinkerhoff Figure 6, elements 614 and
616, as teaching or suggesting the contested "automatically receiving [the
survey result information] in one data transmission." Final Act. 14.
29
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Appellants contend Brinkerhoff fails to teach or suggest this limitation, in
particular, the aspect of "one data transmission." App. Br. 21. 25
In the Answer, the Examiner elaborates on Brinkerhoff' s teaching or
suggestion of this limitation by citing "a review provided via e-mail" as
disclosed by Brinkerhoff at column 7, lines 56 through 68. Ans. 14.
Appellant[] has not shown how receiving a customer review via
e-mail is not a "single transmission", as there is no disclosure in
Brinkerhoff that the emails, which are sent from a singular
customer (as required by the claim), and performed in multiple
transmissions. Further, since Appellant's specification states
that "Responses may be received via telephone, in a return e-
mail or chat session" (see Appellant's specification, paragraph
[0081 ]), Brinkerhoff reads on the claimed invention.
Id. We agree with the Examiner's findings, and note Appellants do not rebut
these findings in the Reply Brief. Arguments not made are waived. See
37 C.F.R. § 4I.37(c)(l)(iv).
Limitation (2)- "determining . .. based . .. on the
calculated score being below a threshold"
The Examiner initially points to Shoemaker paragraphs 33 through 35
as teaching or suggesting this limitation, but also supplements the combined
teachings and suggestions of Brinkerhoff and Shoemaker. Final Act. 16-17.
The Examiner turns to Todd ( col. 14, 1. 66 - col. 17, 1. 28) for more
specificity. Final Act. 17. In particular, the Examiner cites Todd's claim 1:
wherein said control program executing on said microprocessor
includes a pre-determined set of criteria which triggers a
transfer of at least one pre-determined data message from said
25 See n.18, supra, regarding the potential lack of explicit or implicit written
description support under 35 U.S.C. § 112, first paragraph, for the claimed
"one data transmission."
30
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survey device to at least one remote unit upon the happening of
the triggering event via said communications link, and said
predetermined set of criteria comprises a preprogrammed
condition or set of conditions to be satisfied by a survey
respondent and a preprogrammed threshold cumulative survey
score or sub-set of scores to be achieved by a survey
respondent.
Todd col. 16, 11. 55---64 ( emphasis added).
In the Appeal Brief, Appellants allege Shoemaker is deficient with
respect to teaching or suggesting this limitation, even though the Examiner
clearly cites to Todd, as indicated above. "Shoemaker fails to disclose 'the
numerical analysis includes calculating a score,' and determining 'if at least
one subsequent follow-up action is warranted based at least in part on the
calculated score being below a threshold."' App. Br. 22.
Appellants' argument is not persuasive of Examiner error because it is
not responsive to the rejection as articulated by the Examiner. See, e.g.,
Ans. 16. Non-obviousness cannot be established by attacking references
individually where, as here, the ground of unpatentability is based upon the
teachings of a combination of references. In re Keller, 642 F.2d 413,426
(CCPA 1981).
Limitation (3) - "determining ... based . .. on at least one
numeric answer indicating a lowest level of satisfaction"
The Examiner cites Todd's disclosure of ranking questions on a scale
of 1 to 10, and then signaling a pager or computer if a response meets a
preprogrammed threshold of any satisfaction/dissatisfaction with the service
provided as teaching or suggesting this limitation. Final Act. 1 7 ( citing
Todd col. 14, 11. 55-58 and 1. 66- col. 17, 1. 28).
31
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In response, Appellants allege:
However, Todd does not specifically disclose, teach, or suggest
one specific numeric answer indicating a lowest level of
satisfaction. Further, nothing in the cited portions of Todd
describes or suggests a calculated score, only that the survey
answers meet "preprogrammed thresholds," therefore, Todd
does not disclose, teach, or suggest determining if a follow-up
action is warranted based on both "the calculated score being
below a threshold," and "one numeric answer indicating a
lowest level of satisfaction," as encompassed by claim 1.
App. Br. 23. We disagree with Appellants' contentions.
We disagree because Todd discloses,
In accordance with the instant invention, the survey
device automatically monitors survey data responses and
transmits data in real time or near real time to a remote unit,
such as, for example, a pager, a computer, or other remote unit,
in response to predetermined criteria or sets of criteria triggered
by a set of particular survey responses.
Todd col. 4, 11. 56-61. Also,
In another embodiment, the criteria for triggering transmission
of a message via a transceiver to a remote unit is a survey
respondent's fulfillment of a preprogrammed survey condition
or set of conditions. In a further embodiment, the criteria for
triggering transmission of a message via a transceiver to a
remote unit is a survey respondent's achievement of a threshold
cumulative survey score or sub-set of scores.
Todd col. 4, 1. 66-col. 5, 1. 6. We find the preprogrammed survey condition
or set of conditions or sub-set of scores could easily be related to the
customer "indicating a lowest level of satisfaction," and we find such
interpretation or reliance is not beyond the abilities of a person of ordinary
skill in the art.
32
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Appellants have not demonstrated that the Examiner's proffered
combination of references would have been "uniquely challenging or
difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Nor have Appellants
provided objective evidence of secondary considerations which our
reviewing court guides "operates as a beneficial check on hindsight."
Cheese Sys., Inc. v. Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352
(Fed. Cir. 2013).
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2, 4, 5, 7, 10-15, and 32--43 which fall
therewith. See Claim Grouping, supra.
3. § 103 Rejection R3 of Claims 1 7, 18, 21, 23, 24, 26, 28, 29, and 31
Issue 3
Appellants argue (App. Br. 29-34; Reply Br. 7-8) the Examiner's
rejection of claim 17 under 35 U.S.C. § 103(a) as being obvious over the
combination of Brinkerhoff, Shoemaker, Todd, Trauth, Seetharaman, and
Stone is in error. These contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests a "computer-implemented method for conducting an automated
survey regarding quality of a service performed by a servicer for a customer
33
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associated with a customer location," that includes, inter alia, the limitations
of
responsive to determining that a voice message was
received in response to the conducting of the automated ...
triggering an exception ... and enabling the person to perform
at least one of entering a transcript of the voice message,
entering a summary of the voice message, appending notes to
the survey result information, selecting at least one predefined
classification of customer issues, and selecting at least one
subsequent follow-up action, ( emphasis added)
as recited in claim 1 7?25
ANALYSIS
Limitation: "triggering an exception"
The Examiner cites Trauth's "Alert Routine" as teaching or
suggesting this limitation. Final Act. 33-34 ( citing Trauth Abstract, ,r,r 25-
27, 31, and 34--35).
Upon initiation, the Alert Routine prompts the customer to
explain why he or she was dissatisfied or to explain the
complaint or concern 400. The Alert Routine then records the
customer's response 402, assigns a response ID to the voice
file, and stores the voice file in the customer database 200
within the SQL server 104. It is preferred that this recording
ultimately be stored in a digital format. The recording can
initially be made in a digital format and stored on a magnetic or
optical disk. Alternatively, this recording can initially be made
in an analog format and then subsequently converted into a
digital format. When the customer has completed recording
their response, the Alert Routine asks whether or not the
customer would like to be contacted regarding their
25 We note Appellants make additional arguments identical to those
presented above in Issue 2 with respect to the § 103 Rejection R2 of claim 1.
For the same reasons, we are not persuaded the Examiner erred.
34
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dissatisfaction, complaint or concern 404. If the customer
responds "no" 406, then an electronic notification of the
customer's response (i.e. an "alert" message) is sent to the
designated representative of the company that is the subject of
the survey 408. Control is then returned to the IVR system in
order to ask any remaining survey questions 410. If the
customer indicates that he or she would like to be contacted
regarding the response, the Alert Routine prompts the customer
for his or her name and telephone number 412 which is
recorded and stored in the database 200 along with the
customer's response).
Final Act. 34. We agree with the Examiner's findings that the claimed
"triggering an exception" reads on Trauth's Alert Routine as described
above.
Under the broadest reasonable interpretation standard of claim
construction, 26 we agree with the Examiner because Appellants do not
provide an explicit definition of "exception" that would preclude the
Examiner's interpretation. For example:
In many cases, the results of a survey do not require
follow-up with the customer and these survey cases can be
closed. However, in some cases, the customer may enter certain
responses or leave a voice message that prompts the automated
survey system to begin a follow-up process to resolve any
issues that the customer may have. When the answers are
analyzed, either automatically or manually, the issues may be
identified. When these exceptions are identified, a follow-up
process is opened to ensure that the issues are treated
sensitively. The follow-up may include inquiries to gather
additional information from the customer, if needed.
26 See n.24, supra.
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Appeal2017-008543
Application 14/057 ,396
Spec. ,r 83. 27 Thus, we are not persuaded by Appellants' arguments the
Examiner erred with respect to this claim limitation.
Limitation: "enabling the person to perform . .. "
Appellants assert:
Trauth discloses that an audio file ( or voice mail) may be
attached to an electronic notification message that is sent out to
one or more company employees when a complaint is received.
Trauth describes that a "complaint" is indicated when either "a
customer indicates a satisfaction level below the threshold level
... or when the customer indicates he or she has an
additional complaint or concern." (Emphasis added) .... As
such, it is clear that Trauth wholly fails to disclose the system
determining that a voice message was "received" before
determining that an "exception" exists because Trauth triggers
the "exception" at the time the "customer indicates he or she
has an additional complaint or concern."
App. Br. 32 (citing Trauth ,r,r 32-34) (internal citations omitted).
In response, the Examiner first notes Appellants' arguments are
narrower than the claim recitation because the claim broadly recites
triggering an exception and initiating further analysis responsive to
determining that a voice message was received after completion of the
survey. Ans. 19. Further,
[I]n the claim, the exception is triggered solely based on the
determination that a voice message is received; the claim recites
that the voice message is the trigger of exception and the only
result is presenting the voice message to a person to listen and
"enabling" the person to perform actions. If the computer or
system does something in response to the voice message and
that something results in presenting the voice message to a
27 We note paragraph 83 is the only portion of the Specification that even
mentions an "exception."
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Appeal2017-008543
Application 14/057 ,396
Id.
person to listen, it [discloses] the claim (Examiner notes that
Appellant's specification merely recites that [0083] ... the
customer may enter certain responses or leave a voice message
that prompts the automated survey system to begin a follow-up
process).
"Therefore since Trauth discloses that during or after a survey, if the
customer leaves a message regarding the survey, it sends an alert and the
employee is presented for a voice message for listening, Trauth [discloses]
the broadly recited limitation." Ans. 20. We agree with the Examiner's
claim construction and related factual findings concerning this limitation.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitations of claim 1 7, nor do
we find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 17, and grouped claims 18, 21, 23, 24, 26, 28, 29, and 31 which fall
therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-9) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see
37 C.F.R. § 41.41(b)(2)), which Appellants have not shown.
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Appeal2017-008543
Application 14/057 ,396
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subjectmatterRejectionRl of claims 1, 2, 4, 5, 7, 10-15, 17, 18, 21, 23, 24,
26, 28, 29, and 31--43 under 35 U.S.C. § 101, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 1, 2, 4, 5, 7, 10-15, 17, 18, 21, 23, 24, 26,
28, 29, and 31--43 under 35 U.S.C. § 103(a) over the cited prior art
combinations of record, and we sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 4, 5, 7, 10-
15, 17, 18,21,23,24,26,28,29,and31--43.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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