Neil O'Connor et al.

Patent Trials and Appeals Board

Sep 13, 2019

13630179 - (D) (P.T.A.B. Sep. 13, 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.
13/630,179 09/28/2012 Neil O'Connor 412080-US-
NP/AVA049PA
7234
136582 7590 09/13/2019
STEVENS & SHOWALTER, LLP
Box AVAYA Inc.
7019 Corporate Way
Dayton, OH 45459-4238
EXAMINER
SADANANDA, ABHIJIT B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
09/13/2019 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):
pair_avaya@firsttofile.com
pto@sspatlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NEIL O’CONNOR, PAUL D’ARCY, and
TONY MCCORMACK
____________

Appeal 2018-001561
Application 13/630,1791
Technology Center 3600
____________

Before KEVIN F. TURNER, JOHN P. PINKERTON, and
CARL L. SILVERMAN 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 1, 2016 (“Final Act.”), rejecting claims 1–5, 7–10, and 15–23. Claims
6, and 11–14 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 According to Appellants, the real party in interest is Avaya, Inc., the assignee of
this application. Appeal Brief 2 (“App. Br.”).
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STATEMENT OF THE CASE

The Claimed Invention
According to the Specification, supervisors at contact centers are responsible
for monitoring Key Performance Indicators (“KPIs”) to ensure that the contact
center operates to meet its business goals. Spec. ¶ 5. In certain situations, the
supervisors may have to make certain operational changes in order to bring
deviating KPIs back within their target range. Id. However, in making these
changes, the supervisor may inadvertently affect other KPIs, which may have
negative effects on the performance of the contact center. Id. Accordingly, the
claimed invention takes into account the interdependencies between the various
performance measures by comparing an estimated performance to a reference
baseline, and from this comparison providing a recommendation on changes to the
operation of the contact center. Id. at ¶ 9.
Claims 1 and 15 are independent. Claim 1, reproduced below, is illustrative
of the claimed subject matter:
1. A computer-implemented method to facilitate decision
making in a contact center, the method comprising:
receiving, by a processor of the contact center, a first
set of data representing predefined optimal performance factors
of the contact center;
generating, by the processor of the contact center, a
performance baseline of the contact center based on an
aggregate of the optimal performance factors;
receiving, in real-time by the processor of the contact
center, a second set of data representing a respective
performance measure initiated by each of a plurality of entities
in a contact center;
calculating, by the processor of the contact center, a
potential contact center performance based on analyzing an
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impact of the initiated respective performance measures on a
current contact center performance;
comparing, by the processor of the contact center, the
potential contact center performance with the generated
performance baseline of the contact center; and
providing, by the processor of the contact center, a
recommendation on implementing the initiated respective
performance measures in the contact center based on the
comparison.
Amended Appeal Br. 2 (Claims Appendix) (emphasis added).

The Rejections on Appeal
Claims 1–5, 7–10, and 15–23 are rejected under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. Final Act. 12–14, Ans. 4–7;
Claims 1–2, 5, 7–9, 15–18, and 20–23 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Mengshoel et al. (U.S. Patent App. Pub. No.
2003/0081757 A1, pub. May 1, 2003) (“Mengshoel”). Final Ac. 14–24. Ans. 7–8;
Claims 3–4 are rejected under 35 U.S.C. § 103(a) as being unpatentable over
Mengshoel in view of Teran et al. (U.S. Patent No. 5,521,814, iss. May 28, 1996)
(“Teran”). Final Act. 24–26. Ans. 8; and
Claims 10 and 19 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Mengshoel in view of Admitted Prior Art. Final Act. 26–27,
Ans. 8.

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ANALYSIS

We have reviewed the Examiner’s rejections in light of the Appellants’
arguments. For the reasons set forth below, we sustain the Examiner’s § 101
rejection, but we reverse the Examiner’s § 103 rejections.

Principles of Law with Respect to § 101 Eligibility
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 U.S. Supreme Court
has held that this statutory provision contains an important implicit exception: laws
of nature, natural phenomena, and abstract ideas are not patentable. E.g., Alice
Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014). But claiming the practical
application of these concepts may be deserving of patent protection. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (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, 134 S. Ct. at 2355.
The first step in the analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. 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, 132 S. Ct. at 1298, 1297). 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
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practice amounts to significantly more than a patent upon the [ineligible concept]
itself.’” Id. (alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
The USPTO recently published revised guidance on the application of § 101.
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance (“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 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
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level
of generality, to the judicial exception.
See Guidance.
Discussion
The § 101 rejection
Appellants argue that the Examiner erred in determining the claims are
directed to an abstract idea, and therefore constitute patent-ineligible subject
matter. App. Br. 18–24, Reply Br. 2–4.2 Specifically, Appellants argue that the

2 Appellants argue claims 1–5, 7–10, and 15–23 as a group. We select claim 1 as
representative. Thus, claims 2–5, 7–10, and 15–23 will stand or fall with claim 1.
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claims are not directed to the abstract idea of “new and stored information using
rules to identify options and organizing information using correlations,” as the
Examiner concludes. App. Br. 18–19, Reply Br. 2–4. Rather, Appellants argue,
the claims are directed to a “computer-implemented method evaluating in real-time
potential effects of performance measures on the operation of a contact center and
providing a recommendation on implementing those performance measures.” App.
Br. 21–23, Reply Br. 3–4. And even if the claims are directed to an abstract idea,
Appellants argue that the claims recite additional limitations that “add significantly
more to that abstract idea,” and thus are patent-eligible. App. Br. 23–24.
For the reasons set forth below, we determine that: (1) the claims are
directed to a judicial exception; (2) the claims do not recite additional elements that
integrate the judicial exception into a practical application; and (3) the claims do
not amount to an inventive concept, and for all of these reasons are patent-
ineligible.
We begin with Step 2A Prong 1 of the Revised Guidance, which requires
that we determine whether the claim recites any judicial exceptions. Guidance 53.
Claim 1 recites the following method to facilitate decision making in a contact
center:
[1] receiving . . . a first set of data . . . ; [2] generating . . . a
performance baseline . . . ; [3] receiving . . . a second set of
data . . . ; [4] calculating . . . a potential contact center performance
. . . ; [5] comparing . . . the potential contact center performance
with the generated performance of the contact center; and [6]
providing . . . a recommendation on implementing the initiated
respective performance measures in the contact center based on the
comparison.
Amended Appeal Br. 2 (Claims Appendix) (emphasis added).

See 37 C.F.R. § 41.37(c)(1)(iv).
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We agree with the Examiner’s determination that the claims are directed to
“comparing new information to stored information and using rules to identify
options.” Final Act. 12–13, Ans. 5–6. Specifically, under the Guidance, we
determine that “comparing new information to stored information and using rules
to identify options” falls within the mental processes category because under its
broadest reasonable interpretation claim 1 could be performed in a person’s mind
or by pen and paper. For example, the claim’s scope is not limited to any
particular method of receiving a first data set; generating a performance baseline;
receiving a second data set; calculating a potential contact center performance;
comparing the potential contact center performance with the generated
performance baseline; or providing a recommendation on implementing the
respective performance measures. Thus, the claim’s scope would include simple
data sets that would permit claim 1 to be performed in a person’s mind or with a
pen and paper. Additionally, even if the data sets are complex enough to require a
computer to perform some aspect of claim 1, that would not be enough to make the
claim, otherwise directed to a mental process, patent-eligible. CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1376 (Fed. Cir. 2011).
Accordingly, we determine that claims 1–5, 7–10, and 15–23 are directed to
the mental processes judicial exception.
Because we determine that claim 1 is directed to a judicial exception, we
turn to Step 2A Prong 2 to determine if the judicial exception is integrated into a
practical application. Guidance 54. A practical application is one where the claim
“will apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” Id. at 54. For
example, one instance when a judicial exception is integrated into a practical
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application is when those additional elements result in an improvement in the
functioning of a computer, other technology, or technical field. Id. at 55.
We agree with the Examiner’s determination that the claims do not improve
the functioning of a computer. Ans. 6–7 (explaining that the claims are not
directed to improvements in the functioning of a computer, but “apply existing
arrangements” to “perform routine functions in an expected manner”). Further, the
Specification fails to describe how the claimed invention is an improvement to the
field of business management systems. See generally Spec. Although the
Specification states that the prior art fails to consider the interdependencies
between various performance measures—presumably this is the improvement the
claimed invention is directed to—we are not persuaded that this represents an
improvement to the field because the limitations in claim 1 are intrinsic to any type
of simulation modeling program.
Accordingly, we determine that the additional elements in claims 1–5, 7–10,
and 15–23 do not integrate the judicial exception into a practical application.
Because we determine that claim 1 is directed to a judicial exception under
Step 2A, we turn to Step 2B to determine whether the claim provides an inventive
concept that would make it patent-eligible. Guidance 56. An inventive concept
may be present if the claim “[a]dds a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the field.”
Id. at 56.
Evaluating the additional elements both individually and in combination, we
agree with the Examiner’s determination that the claims are directed to “generic
computing technology performing generic computing functions.” Ans. 6.
Specifically, we agree that the claims recite well-understood and conventional
components that would not make the claims more than the abstract idea. Ans. 7
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(explaining that the claimed method just requires “conventional computer,
network, and display technology for gathering processing sending and presenting
the desired information”). See also Spec. at ¶¶ 32–33 (describing the computer
system and data source but at a high level of generality). Additionally, we agree
with the Examiner’s determination that the claims lack a technical description
explaining how the information is collected, processed, and displayed, other than
by describing methods that are well-known in the art. Ans. 7. Given that there is
no explanation describing how to implement the method to facilitate decision
making in a contact center, each step in the claim must be well-understood,
routine, and conventional. Cf., e.g., Hybritech Inc. v. Monocolonal Antibodies,
Inc. 802 F.2d 1367, 1384 (Fed. Cir. 1986) (“a patent need not teach, and preferably
omits, what is well known in the art”).
Accordingly, we determine that the additional elements in claims 1–5, 7–10,
and 15–23 do not do not provide an inventive concept.
For the foregoing reasons, we are not persuaded that the Examiner erred in
determining that the claims are directed to patent-ineligible subject matter.
Accordingly, we sustain the rejection of claims 1–5, 7–10, and 15–23 under
35 U.S.C. § 101.
The §103(a) rejections
Appellants argue that the Examiner erred in determining the claims are
obvious in view of the combined combination of references because Mengshoel
fails to teach or suggest every limitation in claim 1.3 App. Br. 25–29, Reply Br.

3 Appellants argue claims 1–5, 7–10, and 15–23 as a group. See App. Br. 27
(explaining that independent claims 1 and 15 have substantially similar limitations,
and arguing that the reversal of the dependent claims should be tied to the reversal
of the independent claims). We select claim 1 as representative. Thus, claims 2–5,
7–10, and 15–23 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
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4–6. Specifically, Appellants argue that Mengshoel does not teach or suggest a
performance baseline as claimed in claim 1:
[1] generating, by the processor of the contact center a performance
baseline of the contact center based on an aggregate of the optimal
performance factors; [2] comparing, by the processor of the contact
center, the potential contact center performance with the generated
performance baseline of the contact center.4
Amended Appeal Br. 2 (Claims Appendix) (emphases added).
For the reasons set forth below, we determine that Mengshoel does not teach
or suggest the performance baseline in the comparing limitation, and therefore
claim 1 is not obvious in view of the combination of references cited by the
Examiner. We take Appellants’ arguments in order.
First, regarding the generating limitation, the Examiner finds that
Mengshoel, paragraphs 72–74, teaches or suggests generating a performance
baseline. Final Act. 15, Ans. 7–8. Appellants’ argue that the autopilot objective
function is not a performance baseline because the autopilot objective function is
“unrelated to an aggregate of the optimal performance factors.” Reply Br. 4–5.
We do not agree.
Specifically, we agree with the Examiner’s determination that the autopilot
objective function, as disclosed in Mengshoel, teaches or suggests generating a
performance baseline because the autopilot objective function is a (1) reference
metric and that (2) it is based on an aggregate of optimal performance factors.
In particular, the Specification describes the performance baseline as “a set
of reference metrics derived from an aggregate of the predefined optimal
performance factors.” Spec. ¶ 22. In Mengshoel, the autopilot objective function

4 Limitation 1 will be referred to as the “generating limitation.” Limitation 2 will
be referred to as the “comparing limitation.”
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is defined as a reference metric for comparing agent reallocation scenarios. See
Mengshoel ¶ 72 (describing the autopilot objective function as a parameter for
evaluating agent allocation scenarios); id. at ¶ 74 (describing that the autopilot
objective function is used to evaluate new agent reallocation scenarios to other
agent reallocation scenarios). Thus, Mengshoel teaches that the autopilot objective
function is being used as a reference metric.
The Specification also describes aggregating the optimal performance
factors as splitting an optimal performance factor into its corresponding KPIs.
Spec. ¶ 22. KPIs are performance metrics used for measuring a performance of the
business operation, such as: average talk time, after call work, average handling
time, calls per hour, call abandon rate, first call resolution, customer satisfaction
rating, and attrition. Id. at ¶ 20. In Mengshoel, the autopilot objective function is
calculated by determining how well the call center meets its objectives, which are
based upon its service parameters or a weighted combination of its service
parameters—average speed of answer, service level, abandonment rate, etc.
Mengshoel ¶ 74. Thus, Mengshoel teaches that the autopilot objective function is
based upon a combination of service parameters, which are equivalent to KPIs.
Because Mengshoel describes the autopilot objective function as a performance
baseline that is an aggregate of the optimal performance factors, as the claim
requires, we are not persuaded by Appellants’ argument.
Second, regarding the comparing limitation, the Examiner finds that
Mengshoel, paragraphs 88–89, teaches or suggests comparing the potential contact
center performance with the generated performance baseline of the contact center.
Final Act. 16–17, Ans. 8. Specifically, the Examiner finds that the combined
utility of the proposed target matrix compared to a threshold value, as described in
paragraph 89, teaches or suggests the comparing limitation. Ans. 8. The Examiner
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does not provide further explanation. Appellants argue that the Examiner
inconsistently treated the performance baseline in both the generating limitation
and the comparing limitation. Reply Br. 5 (explaining that to maintain consistency
with the generating limitation, the [combined utility of the proposed target matrix]
would have to be compared with the autopilot objective function (performance
baseline)). Reply Br. 5. We agree.
In relevant part, Mengshoel’s paragraph 89 states:
In the autopilot engine 56, the combined utility of the proposed
target matrix may be compared 114 with a threshold value within a
comparator to determine whether to place the proposed target
matrix into production.
Mengshoel ¶ 89 (emphasis added). Thus, in Mengshoel, the combined utility of
the proposed target matrix is compared to a threshold value, and not to the
autopilot objective function as the Examiner determined. Further, the Examiner
fails to clearly describe the relationship (if any) between the threshold value and
the autopilot objective function. Without knowing whether the threshold value is
the autopilot objective function, or a value equivalent to the autopilot objective
function, we cannot determine whether Mengshoel teaches or suggests the
comparing limitation.
Accordingly, we determine that Mengshoel does not teach or suggest every
limitation of claim 1, based on the rejection of claim 1 before us.
For the foregoing reasons, we are persuaded that the Examiner erred in
determining that claim 1 is obvious in view Mengshoel as cited by the Examiner.
The remaining prior art references do not cure the deficiency of Mengshoel, and
thus we determine that the additional rejections also fall. Accordingly, based on
the record before us, we do not sustain the rejections of claims 1–5, 7–10, and 15–
23 under 35 U.S.C. § 103(a).
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DECISION

The Examiner’s rejection of claims 1–5, 7–10, and 15–23 under 35 U.S.C.
§ 101 is sustained. The Examiner’s rejections of claims 1–5, 7–10, and 15–23
under 35 U.S.C. § 103(a) are reversed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)
AFFIRMED