Jason P. Ouimette et al.

Patent Trials and Appeals Board

Aug 14, 2019

15459861 - (D) (P.T.A.B. Aug. 14, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/459,861 03/15/2017 Jason P. Ouimette P2017-02 9723
103720 7590 08/14/2019
Noble Systems Corporation
Attn: Karl Koster
1200 Ashwood Parkway
Suite 300
Atlanta, GA 30338-4747
EXAMINER
BEZUAYEHU, SOLOMON G
ART UNIT PAPER NUMBER
2666
NOTIFICATION DATE DELIVERY MODE
08/14/2019 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):
chaggerty@noblesys.com
kkoster@noblesystems.com
noblepatent@gmail.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JASON P. OUIMETTE, KARL H. KOSTER, and
JAMES K. NOBLE, JR.
____________

Appeal 2018-007858
Application 15/459,8611
Technology Center 2600
____________

Before KEVIN F. TURNER, ELENI MANTIS-MERCADER, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

TURNER, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from a Final Office
Action dated December 13, 2017 (hereinafter “Final Act.”), rejecting claims
1–20. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

1 According to Appellants, the real party in interest is Noble Systems
Corporation, the assignee of this application. Appeal Brief (hereinafter
“App. Br.”) 2.
Appeal 2018-007858
Application 15/459,861

2

THE CLAIMED SUBJECT MATTER
The claims are directed to improving answering machine detection for
an outbound call that originated from a contact center based on analysis of a
greeting received after the call has been answered (Specification ¶ 1).
Claims 1, 8, and 15 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter, with emphasis added:
1. A method for determining whether a greeting detected on
an answered outbound call from a contact center was provided
by an automatic voice messaging capability (AVMC) or a live
person, the method comprising:
originating the call from a call handler in the contact center
using a call record from a calling list indicating the telephone
number, wherein the call record further indicates stored
answering machine detection (“AMD”) meta-data is associated
with the telephone number; and
processing the greeting by the contact center using the
stored AMD meta-data to ascertain the greeting was provided
by the AVMC or the live person.

REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to patent-
ineligible subject matter.2

ANALYSIS
The § 101 Rejection
Appellants argue claims 1–20 together as a group. We select claim 1
as representative. Thus, claims 2–20 will stand or fall with claim 1. See
C.F.R. § 41.37(c)(1)(iv).

2 The Examiner withdrew the rejections under 35 U.S.C. § 103. See Answer
(hereinafter “Ans.”) 2.
Appeal 2018-007858
Application 15/459,861

3

Patent eligibility is assessed under 35 U.S.C. § 101, which states that
an invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court has held that this statutory provision contains an implicit
exception: “[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).
But claiming the practical application of these concepts may be deserving of
patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71 (2012). In Alice, the Supreme Court reaffirmed the framework
set forth previously in Mayo “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice, 573 U.S. at 217.
The first step in the analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. (citation
omitted). If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims “individually
and ‘as an ordered combination’” to determine whether there are additional
elements that ‘“transform the nature of the claim’ into a patent-eligible
application.” Id. (quoting Mayo, 566 U.S. at 78–79). In other words, the
second step is to “search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Id. at 217–18 (alteration in original) (quoting Mayo, 566
U.S. at 73).
The USPTO recently published revised guidance on the application of
§ 101. USPTO’s Jan. 7, 2019 Memorandum, 2019 Revised Patent Subject
Appeal 2018-007858
Application 15/459,861

4

Matter Eligibility Guidance 84 Fed. Reg. 50 (“Memorandum”). 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 activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–
(h)).
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine conventional” in the field (see
MPEP § 210605(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
Under Alice/Mayo step 1, the Examiner determines that claim 1 is
abstract because “[t]he claims are directed to the abstract idea (i.e. analyzing
greeting, comparing, determining that the greeting is by human or machine),
which is a method of idea of itself.” Final Act. 4.
Under Alice/Mayo step 2, the Examiner determines that claim 1 does
not recite elements sufficient to amount to significantly more than the
abstract idea because the additional limitations, i.e., call originator dialer or
memory, “perform generic computer functions that are well-understood,
routine, and conventional.” Id.
Appeal 2018-007858
Application 15/459,861

5

Appellants argue that the claims are directed to patent-eligible subject
matter. App. Br. 7–11. Specifically, Appellants challenge the Examiner’s
determination at Alice/Mayo step 1 because the Examiner fails to establish a
prima facie case that the claims are directed to an abstract idea. They also
argue “the Office Action makes no reference to an appropriate court decision
that supports the Office Action’s identification of the subject matter recited
in the claims as an abstract idea. Further, there is no reason provided why
the alleged steps are abstract.” App. Br. 7 (emphasis omitted). Appellants
further argue:
the whole purpose is for a machine to make this determination,
instead of a human being, alleging that the recited machine is an
idea of itself (and therefore capable of being performed in the
human mind) is a persuasive argument that the Examiner has
incorrectly characterized the claims at too high a level. The fact
that the claim steps cannot be performed in the human mind also
supports this conclusion.
Id. at 9.
The Examiner clarifies the interpretation with an example where:
a human operator, at a call switching/call center, dials David’s
cell number 571-334-3345, and the operator receives a
response/greeting from the receiving end; “Hi, you have reached
David’s desk, however, he is not available to take your call,
please leave a brief [message]”. In this case, the name “David”
is considered the [meta]-data (claimed in the rejected claim)
associated with the telephone number. Therefore, the operator
knows/determines that the call is answered by David’s answering
[apparatus]. However, if David answers the call (“hello, this is
David”) the operator knows it is David, then connects the call to
[a] third party, who want[s] to speak with David.
Ans. 4.

Appeal 2018-007858
Application 15/459,861

6

Appellants reply:
the Examiner is taking claim limitations such as those found in
claim 1, namely “originating the call from a call handler” and
“wherein the call record further indicates stored answering
machine detection meta-data” and glossing over these. Next, the
Examiner is not alleging what remain[s] can actually be done in
the human mind, but that it is “akin” to what a human could do.
Only by completing these preliminary tasks of ignoring various
claim limitations, glossing over what remains, and then finding
the remaining limitations are “akin” to a hypothetical situation
does the Examiner conclude that the claimed steps can be done
entirely in the human mind.
Reply Brief 6–7.
Appellants assert “the Examiner incorrectly performed step one of the
Alice/Mayo two-step analysis by misconstruing and misapplying the ‘mental
steps’ doctrine and as a result, erroneously arrived at the conclusion that the
claims of the present application are directed to an abstract idea.” Id. at 7.
Applying the guidance set forth in the Memorandum, we conclude
that the Examiner has erred in rejecting the claims as being directed to
patent-ineligible subject matter. The Memorandum instructs examiners to
evaluate whether a claim recites a judicial exception, e.g., an abstract idea.
Further, the Memorandum provides specific instructions on how examiners
should determine whether a claim recites an abstract idea:
To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific
limitation(s) in the claim under examination (individually or in
combination) that the examiner believes recites an abstract idea;
and (b) determine whether the identified limitation(s) falls
within the subject matter groupings of abstract ideas
enumerated in Section I of the 2019 Revised Patent Subject
Matter Eligibility Guidance.
See Memorandum 54.
Appeal 2018-007858
Application 15/459,861

7

The Examiner did not identify the specific limitations in the claims
that recite an abstract idea. The Examiner admits “Examiner’s gist of the
claim is actually a broadest reasonably interpretation of the claim.” Ans. 5.
The limitations of claim 1 are recited above. Claims 8 and 15 recite
different limitations and are not identical to claim 1. Claim 8 is directed to a
system including limitations directed to a real-time speech analytics
(“RTSA”) component configured to determine current AMD meta-data and
compare the current AMD meta-data with the stored AMD meta-data. App.
Br. 37. Claim 15 is directed to a non-transitory computer readable medium
including limitations directed to generate AMD meta-data, receive AMD
meta-data of a prior call and compare the stored AMD meta-data with the
current AMD meta-data. Id. at 39. The specific limitations must be
accounted for in making a determination regarding an abstract idea.
Therefore, we agree with Appellants that the Examiner has glossed over
claim limitations to reach an incorrect conclusion.
Assuming, arguendo, that the Examiner’s identification of claim
language is based on at least “processing the greeting by the contact center
using the stored AMD meta-data to ascertain the greeting was provided by
the AVMC or the live person” found in claim 1, the Examiner also failed to
determine whether the identified limitation(s) falls within the subject matter
groupings of abstract ideas enumerated in Section I of the Memorandum.
Under step 2A, prong 1, the Memorandum’s guidance identifies three
judicially excepted groupings: (1) mathematical concepts, (2) certain
methods of organizing human activity, and (3) mental processes. 84 Fed.
Reg. at 52.
We conclude that the specific claim limitations, under their broadest
Appeal 2018-007858
Application 15/459,861

8

reasonable interpretation, do not fall under any of the judicially excepted
groupings because the claimed method does not constitute a mental process
and cannot be performed in the human mind.
Claim 1 also recites “stored answering machine detection (“AMD”)
meta-data” and “using the stored AMD meta-data to ascertain the greeting
was provided by the AVMC or the live person.” We find the Examiner
erred by finding “the name ‘David’ is considered the [meta]-data.” Ans. 4.
The Examiner’s interpretation of the term “AMD meta data” does not appear
reasonable in light of the express definition provided in paragraph 113 of the
Specification indicating that the term “AMD meta-data” is directed to a set
of data created by a real-time speech analytics component or system to
characterize a greeting. We conclude that a properly construed claim 1 does
not fall within any of the groupings of abstract ideas enumerated in the
Memorandum because the AMD meta-data is not a generic computer
component and processing stored AMD meta-data cannot be performed in
the human mind.3
Because we determine that claim 1 is eligible under step 2A, prong 1,
we do not proceed to step 2A, prong 2, to evaluate whether the claim recites
additional elements that integrate the exception into a practical application
of the exception.
In view of the above, we are persuaded that the Examiner erred in
rejecting claim 1. For the above reasons, we do not sustain the rejection of
claim 1 under 35 U.S.C. § 101, as well as the rejection of claims 2–20.

3 We note the term “AMD meta-data” is also recited in claims 8 and 15.
Appeal 2018-007858
Application 15/459,861

9

DECISION
We reverse the Examiner’s rejection of claims 1–20.

REVERSED