Ex Parte Romano et al

Patent Trials and Appeals Board

Jun 26, 2019

14467783 - (D) (P.T.A.B. Jun. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/467,783 08/25/2014
75158 7590 06/28/2019
Verint Systems, Inc.
Meunier Carlin & Curfman, LLC
999 Peachtree Street NE
Suite 1300
Atlanta, GA 30309
FIRST NAMED INVENTOR
Roni Romano
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.
10171-419US1 3246
EXAMINER
MISHRA, RICHA
ART UNIT PAPER NUMBER
2674
NOTIFICATION DATE DELIVERY MODE
06/28/2019 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):
laaronson@mcciplaw.com
KCarroll@mcciplaw.com
docketing@mcciplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RONI ROMANO, Y AIR HORESH, and JEREMIE DREYFUSS
Appeal2018-006436
Application 14/467,783 1
Technology Center 2600
Before MAHSHID D. SAADAT, DENISE M. POTHIER, and JOHNNY A.
KUMAR, Administrative Patent Judges.
KUMAR, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-7, 11, 13-16, and 18-20. 2 App. Br.
13-16 (Claims Appendix). We have jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM. 3
1 Appellants identify VERINT SYSTEMS LTD. as the real party in interest.
App. Br. 3.
2 Claims 8-10, 12, and 17 were previously cancelled.
3 Our Decision refers to the Examiner's Answer mailed April 2, 2018
("Ans."); Appellants' Appeal Brief filed February 19, 2018 ("App. Br."); the
Final Office Action mailed September 28, 2017 ("Final Act."); and the
original Specification filed August 25, 2014 ("Spec.").
Appeal2018-006436
Application 14/467,783
STATEMENT OF THE CASE
Existing automated transcription of audio data often output the
transcription in a single text file, devoid of punctuation. Spec. ,r 2.
Appellants' Specification describes automatically zoning or segmenting a
transcription file to provide concept identification, intent, grammatical
relation, and other context. Id. at ,r 8. Appellants' Specification further
indicates zoning of the transcript allows later analytics applied to the
transcript to be less computationally demanding and produces more accurate
results. Id.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A method of zoning a transcription of a recorded call to
correlate the recorded call with a particular domain of customer
service interaction, the method comprising:
[a] separating the transcription of the recorded call into a
plurality of utterances, wherein each utterance is a sequence of
words spoken by one speaker in a conversation without
interference by another speaker or another event;
[b] identifying utterances of the plurality of utterances
that are shorter than a predetermined minimum threshold
number of words as meaning units;
[ c] selecting an utterance of the plurality of utterances
that is longer than the predetermined minimum threshold
number of words for splitting;
[ d] splitting the selected utterance into a widow that is
twice a maximum utterance threshold number of words;
[ e] calculating a probability that each word in the
window is a meaning unit boundary;
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[ fJ splitting the window into two new utterances at a
word with a maximum calculated probability;
[g] identifying at least one of the two utterances that is
shorter than a maximum utterance threshold number of words
as a meaning unit;
[h] repeating the selecting, splitting, calculating, splitting,
and identifying for other utterances of the plurality of utterances
to iteratively identify meaning units in the transcription of the
recorded call;
[i] applying speech analytics to identified meaning units
to (i) group the identified meaning units into call segments that
are related to a specific customer-service-interaction topics and
(ii) identify dialog acts related to meaning units in each group
that indicate the intention of the speaker; and
rn relating the recorded call to the particular domain of
customer service interaction according to the applied speech
analytics.
App. Br. 13-14 (Claims Appendix) (bracketed indicators added).
Rejection
Claims 1-7, 11, 13-16, and 18-20 are rejected under 35 U.S.C. § 101,
as being directed to a judicial exception, without significantly more. See
Final Act. 4--5.
Issue on Appeal
Did the Examiner err in rejecting claims 1-7, 11, 13-16, and 18-20
under 35 U.S.C. § 101, as being directed to a judicial exception, without
significantly more?
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ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. 4 We highlight and address specific findings and arguments for
emphasis in our analysis below.
Principles of Law
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 Jaws of nature, natural phenomena, and abstract
ideas"' are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (quoting Diamond v.
Diehr, 450 U.S. 175, 185 (1981)).
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. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208, 217-18
(2014) (citing Mayo, 566 U.S. at 75-77). 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)
4 Appellants argue the rejection of claims 1-7, 11, 13-16, and 18-20 under
35 U.S.C. § 101 in the Final Office action was improper because of the
withdrawal and reassertion of the§ 101 rejection. See App. Br. 7. However,
this contention is petitionable and not appealable. See MPEP § 1201.
Petitions from any action in the ex parte prosecution of an application which
is not subject to appeal must be filed within two months of the mailing date
of the action from which relief is requested. See 3 7 C.F .R. § 1.181 ( f).
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("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 ( Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding of rubber products" (Diehr, 450 U.S. at 193); "tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores"
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 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 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."). That
said, 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 (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. ( alterations in original) ( 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.
In January 2019, the USPTO published revised guidance on the
application of§ 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). 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 activities such as a fundamental economic practice, or mental
processes) (Revised Guidance, 84 Fed. Reg. at 52-54) ("Revised Step
2A- Prong 1 "); 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)) (Revised Guidance, 84 Fed.
Reg. at 53-55) ("Revised Step 2A-Prong 2").
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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, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56 ("Step 2B").
Examiner's Determination of Patent-Ineligibility
Claims 1-7, 11, 13-16, and 18-20 are rejected under 35 U.S.C. § 101
as being directed to a judicial exception without significantly more. Final
Act. 4--5. The Examiner determined that the claims are directed to an
abstract idea of recognizing, storing, and classifying data that can be
performed entirely in the human mind as a mental process. Id. at 5. The
Examiner added that the claims, when considered as a whole, fail to recite an
inventive concept sufficient to transform the claimed subject matter into a
patent eligible application. Id. The Examiner further determined the claims
fail to amount to significantly more than the abstract idea. Id. Based on
these determinations, the Examiner concluded that the claims are ineligible
under§ 101. Id.
Appellants argue that the claimed invention solves a technical
problem through an inventive concept using specific steps. App. Br. 10.
According to Appellants, the Examiner oversimplifies the claims and fails to
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account for the specific recited limitations that add significantly more to the
purported abstract idea to render the claims eligible. Id. at 10-11.
Alice Step One
To determine whether claim 1 is eligible under § 101, we determine
whether the claim as a whole is directed to a judicial exception, namely an
abstract idea. See Alice, 573 U.S. at 217. To this end, we determine (1)
whether claim 1 recites a judicial exception (Revised Step 2A - Prong 1)
and, if so, (2) whether the identified judicial exception is integrated into a
practical application (Revised Step 2A- Prong 2). See Revised Guidance,
84 Fed. Reg. at 52-55.
Revised Step 2A - Prong 1
In Revised Step 2A - Prong 1, we identify the specific limitations of
claim 1 that recite a judicial exception, and determine whether the identified
limitations fall within certain subject matter groupings, namely (a)
mathematical concepts (mathematical relationships, mathematical formulas,
and mathematical calculations); (b) certain methods of organizing human
activity ( e.g., fundamental economic principles or practices, commercial or
legal interactions, and managing personal behavior or relationships or
interactions between people); or ( c) mental processes ( e.g., concepts
performed in the human mind including an observation, evaluation,
judgment, or opinion). See Revised Guidance, 84 Fed. Reg. at 52.
We agree with the Examiner (see Final Act. 4--5) that claim 1 recites a
judicial exception. The recited judicial exception can be categorized as at
least one of certain methods of organizing human activity, mental processes,
and a mathematical concept. App. Br. 13-14 (Claims Appendix).
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Claim 1 recites a "method of zoning a transcription of a recorded call
to correlate the recorded call with a particular domain of customer service
interaction," the method comprising the following steps: "[a] separating the
transcription of the recorded call into a plurality of utterances ... "; "[b]
identifying utterances ... shorter than a predetermined minimum threshold
number of words ... "; "[c] selecting an utterance ... longer than the
predetermined minimum threshold number of words ... "; "[d] splitting the
selected utterance into a widow that is twice a maximum utterance threshold
number of words"; "[ e] calculating a probability that each word in the
window is a meaning unit boundary"; "[f] splitting the window into two new
utterances at a word with a maximum calculated probability"; "[g]
identifying at least one of the two utterances that is shorter than a maximum
utterance threshold number of words as a meaning unit"; "[h] repeating the
selecting, splitting, calculating, splitting, and identifying for other utterances
of the plurality of utterances to iteratively identify meaning units in the
transcription of the recorded call"; "[i] applying speech analytics to
identified meaning units to (i) group the identified meaning units into call
segments that are related to a specific customer-service-interaction topics
and (ii) identify dialog acts related to meaning units in each group that
indicate the intention of the speaker"; and "Li] relating the recorded call to
the particular domain of customer service interaction according to the
applied speech analytics." Id. (bracketed indicators added).
Steps [a]-Li], under their broadest reasonable interpretation, relate to
determining meaningful associations between words in a recorded call' s
transcript and analyzing the meaningful associations to relate them to
customer service topics. See id.; see also Spec. ,r,r 2, 34--35. As discussed
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infra, steps [ a ]-Li] recite steps that could alternatively be carried out as a
mental process, or by a human mind using a pen and paper.
For example, "separating the transcription of the recorded call into a
plurality of utterances, wherein each utterance is a sequence of words
spoken by one speaker in a conversation without interference by another
speaker or another event" as recited in step [a], is a process capable of being
performed entirely in the mind by a human reading a transcript of a recorded
call. For example, when reading a transcript, a person is capable of mentally
determining likely beginnings and endings of sentences using verb and
subject placement, word meaning, and transitions between words. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed.
Cir. 2011) ("[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101."); Gottschalk
v. Benson, 409 U.S. 63, 67 (1972) ("Phenomena of nature ... mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work." ( emphasis added)).
Next, steps [b ]-[ d] and [g] recite steps of counting words and
comparing the count to various word count thresholds to separate out
subsections of the transcript, well within the practical capabilities of the
human mind aided by pen and paper, for example, by marking up the
transcript with notations. See Synopsys, Inc. v. Mentor Graphics Corp., 839
F.3d 1138, 1147 (Fed. Cir. 2016) ("While the Supreme Court has altered the
§ 101 analysis since CyberSource in cases like Mayo and Alice, we continue
to 'treat[] analyzing information by steps people go through in their minds,
or by mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category."' (brackets in original) (quoting
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Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir.
2016)).
Furthermore, "calculating a probability that each word in the window
is a meaning unit boundary" and "splitting the window into two new
utterances" based on the probability as recited in steps [ e ]-[ fJ is also within
the practical capabilities of the human mind aided by pen and paper. For
example, the Specification defines a "meaning unit" as "the equivalent of a
sentence." Spec. ,r 22. The Specification further details that meaning unit
probabilities can be based on using a linguistic model to identify "particular
words" that signal a change in meaning; such as "wh" words ( e.g., who,
what, where, when), which tend to start the beginning of a sentence. See
Spec. ,r,r 26-27. The described linguistic model used to identify words can
be "generic" including a "dictionary of words combined with statistics on
the frequency of occurrences of the words in the dictionary as well as
statistics on the frequency of the words in the dictionary in relation to other
adjacent words." Spec. ,r 11. The human mind is well versed in reviewing
text and deriving meaning therefrom using definitions and typical speech
patterns such that steps [ e ]-[ fJ can also be performed entirely in the human
mind or with pen/paper assistance. Additionally, mental processes remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. CyberSource, 654 F .3d at
1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson."). Furthermore, step [h] merely repeats steps [a]-[g]
discussed supra.
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With respect to "applying speech analytics ... to (i) group ...
meaning units into call segments that are related to a specific customer-
service-interaction topics and (ii) identify dialog acts ... indicat[ing] the
intention of the speaker" (emphasis added) recited in step [i], the
Specification broadly describes actions taking place in the "speech
analytics" step noting "a variety of analyses may be performed in order to
identify context, content, or other information from the transcribed audio
data." Spec. ,r 13. Furthermore, the Specification does not provide an
algorithm or process for grouping meaning units into "call segments" or
identifying "dialog acts." Rather, the Specification merely defines these
terms using non-limiting examples wherein "dialog acts" indicate "some
intention of the speaker or denotes a function or purpose of an utterance"
and a "call segment is a set of utterances ... related to a specific topic" and
may include "customer detail verification, call reason, problem description
... ". Spec. ,r 22. Steps that broadly recite analyzing text to identify
information, determining text purpose, and associate text with a specific
topic can all be performed in the human mind with the aid of pen and paper.
In addition, the Specification indicates that final step Li] can be
performed in the mind of a customer service agent. Id. ("In some
embodiments, a category or a user defined labeled predicate is assigned to
the data file exemplarily by the customer service agent to identify a domain
of the customer service interaction."). Accordingly, steps [a]-Li] recite a
mental process that can be performed in the human mind with the aid of pen
and paper. For the above reasons, we determine claim 1 recites a mental
process, identified as an abstract idea in the Revised Guidance. See 84 Fed.
Reg. at 52.
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Revised Step 2A - Prong 2
Because claim 1 recites an abstract idea, we must determine whether
the abstract idea is integrated into a practical application, namely whether
the claim applies, relies on, or uses the abstract idea in a manner that
imposes a meaningful limit on the abstract idea, such that the claim is more
than a drafting effort designed to monopolize the abstract idea. See Revised
Guidance, 84 Fed. Reg. at 53. To this end, we (1) identify whether there any
additional, recited elements beyond the judicial exception, and (2) evaluate
those elements individually and collectively to determine whether they
integrate the exception into a practical application. See id. at 54--55.
The additional elements beyond the above-identified judicial
exceptions recited in claim 1 are a "recorded call" and a "transcription of a
recorded call." App. Br. 13-14 (Claims Appendix). When considering
these elements individually or in combination, we determine they do not
integrate the above-identified judicial exceptions into a practical application.
The identified additional elements beyond the identified mental
process in claim 1 do not reflect an improvement in a computer's
functioning or an improvement to other technology or technical field as set
forth in MPEP § 2106.05(a) and the Revised Guidance, 84 Fed. Reg. at 55.
The additional elements "recorded call" and "transcription of the recorded
call" do not themselves carry out any of the process steps [ a ]-Li] recited in
claim 1. See MPEP § 2106.05(g) ("The term 'extra-solution activity' can be
understood as activities incidental to the primary process or product that are
merely a nominal or tangential addition to the claim"). Rather, we conclude
the additional elements merely act as data input for carrying out the abstract
idea recited in steps [a]-Li] such that they constitute extra-solution activity.
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See MPEP § 2106.05(g) ("Extra-solution activity includes both pre-solution
and post-solution activity. An example of pre-solution activity is a step of
gathering data for use in a claimed process"). For example, courts have
found data gathering steps to be insignificant extra-solution activity. See,
e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane)
( characterizing data gathering steps as insignificant extra-solution activity),
aff'd sub nom., Bilski v. Kappas, 561 U.S. 593 (2010).
Appellants argue that the claimed invention constitutes patent eligible
subject matter because it is directed to an improvement in technology. See
App. Br. 9. Specifically,
the claimed invention is directed to a particular technology of
automated recording/transcription of customer service calls and
improves this technology by providing a method that enables
speech analytics to be applied to the transcription in order to
determine context and meaning. The method uses the inventive
concept of zoning that divides the transcript into meaning units
that are not too long and not too short for the speech analytics
to be effective. Accordingly, Appellant asserts that guidance
can be found in McRo, Inc. v. Bandai Namco Games America,
Inc. (i.e., McRo) to determine the subject matter eligibility of
the claimed invention.
Id. (underlining added).
We are not persuaded by Appellants' arguments (id. at 9--11) that the
claimed invention improves the additionally recited elements' functionality,
or otherwise changes the way those elements function, such as in McRO,
Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016).
The claims in McRO were directed to lip synchronization and facial
expressions of animated characters, and the computerized system in McRO
operated by rules whose implementation was not previously available
manually. See McRO, 837 F.3d at 1316. In contrast, each of the method
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steps [a]-Li] recited in claim 1 can be performed entirely as a mental process,
as discussed supra.
The proper guidance for determining patent eligibility for claims
reciting limitations that can be performed entirely as a mental process is
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150 (Fed. Cir.
2016). Like steps [ a ]-Li] of claim 1, the claims at issue in Synopsys did not
require employing a computer or any other physical device wherein the
claimed method failed to call for any form of computer implementation. See
Synopsys, 839 F.3d at 1149.
Accordingly, the court in Synopsys distinguished the claims at issue
from McRO:
Synopsys cannot rely on our decision[] in ... McRQ[J to
support the patentability of the Asserted Claims ... [i]n McRO,
we similarly held that claims that recited "a specific asserted
improvement in computer animation" were not directed to an
unpatentable abstract idea ... the Asserted Claims do not
involve the use of a computer in any way ... [ and] thus cannot
be characterized as an improvement in computer technology.
Id. at 1149-50 (citations and footnotes omitted).
Similarly, claim 1 's additional elements beyond the above-identified
judicial exceptions do not improve the computer itself, or another
technology or technical field. See Revised Guidance, 84 Fed. Reg. at 55
(citing MPEP § 2106.05(a)). Rather, steps [a]-Li] of claim I can be
performed entirely as a mental process and do not require any physical
device outside of presolution activity (i.e., "recorded call" and "transcription
of the recorded call"). See CyberSource, 654 F.3d at 1373 ("a method that
can be performed by human thought alone is merely an abstract idea and is
not patent-eligible ... [ m ]ethods which can be performed entirely in the
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human mind are unpatentable ... because computational methods which can
be performed entirely in the human mind are the types of methods that
embody the 'basic tools of scientific and technological work' that are free to
all men and reserved exclusively to none.") (quoting Benson, 409 U.S. at
67).
Nor do Appellants argue claim 1 's additional elements implement the
identified judicial exception with or use the judicial exception in conjunction
with a particular machine or a particular transformation. See MPEP
§§ 2106.0S(a), 2106.0S(c).
In addition, we are not persuaded by Appellants' conclusory assertion
that claim 1 is patent eligible because it improves upon tasks humans are
capable of performing. See App. Br. 11. We find no language in the claims
that implies any speed or accuracy constraint that a human could not attain,
necessitating the use of a computer. Furthermore, merely "[ u ]sing a
computer to accelerate an ineligible mental process does not make that
process patent-eligible." Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Canada (US.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also CLS Bank
Int'! v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en bane)
("simply appending generic computer functionality to lend speed or
efficiency to the performance of an otherwise abstract concept does not
meaningfully limit claim scope for purposes of patent eligibility."), aff'd,
573 U.S. 208 (2014).
Lastly, Appellants contend the claimed invention does not monopolize
or pre-empt the relevant technical field. See App. Br. 10. However,
"[ w ]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility" or render a
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claim any less abstract. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015); see 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.").
For the above-stated reasons, we determine the additional elements
recited in independent claim 1 beyond the judicial exceptions, whether
considered alone or in combination, do not integrate the abstract idea into a
practical application.
Alice Step Two, Step 2B
Under the Revised Guidance, if a claim: (1) recites a judicial
exception, and (2) does not integrate that exception into a practical
application, we then look to whether the claim adds a specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional" in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
See Revised Guidance, 84 Fed. Reg. at 56.
On the record before us, Appellants have not shown that the claims
add a specific limitation beyond the judicial exception that is not "well-
understood, routine, [ and] conventional" in the field (see MPEP
§ 2106.05(d)). We find no reversible error in the Examiner's determination
that additional elements, such as a recorded call, are nothing more than
generic elements using conventional concepts. See Final Act. 5; see also
Ans. 6, 1 7. In fact, the Specification supports the Examiner's finding that
additionally recited elements are at best generic computer elements
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performing generic computer functions, by providing non-limiting and
exemplary descriptions of generic computer components that are used to
carry out recording a call and transcribing a recorded call. Spec. ,r,r 9--10,
14--21. Significantly, Appellants have not asserted that the additional
elements "recorded call" and a "transcription of a recorded call" recited in
claim 1 constitute non-conventional and non-generic arrangements of
known, conventional pieces, which results in an inventive concept. See
generally App. Br.
Appellants do not argue dependent claims 2-7, 11, 13-16, and 18-20
separately with particularity, but assert the rejection of those claims should
be withdrawn for at least the same reasons as argued for independent claim
I. Id. at 12. In light of the foregoing, we conclude that each of claims 1-7,
11, 13-16, and 18-20, considered as a whole, is directed to a patent-
ineligible abstract idea that is not integrated into a practical application, and
does not include an inventive concept.
Accordingly, for the reasons discussed above, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of claims 1-7, 11, 13-16, and
18-20.5
DECISION
We affirm the Examiner's rejection of claims 1-7, 11, 13-16, and 18
20 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
5 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
18
Appeal2018-006436
Application 14/467,783
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
19