NICE-SYSTEMS LTD.

Patent Trials and Appeals Board

Aug 3, 2020

2019003832 (P.T.A.B. Aug. 3, 2020)

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.
14/184,728 02/20/2014 David GEFFEN P-77723-US 5201
49443 7590 08/03/2020
Pearl Cohen Zedek Latzer Baratz LLP
1500 Broadway
12th Floor
New York, NY 10036
EXAMINER
ULLAH, ARIF
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
Arch-USPTO@PearlCohen.com
USPTO@PearlCohen.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID GEFFEN, YIZHAR RONEN, HOVAV LAPIDOT,
OHAD POLLAK, and NADAV DORON
____________

Appeal 2019-003832
Application 14/184,7281
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
NINA L. MEDLOCK, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s non-final rejection of claims 1, 2, 4–17, 19, and 20. We have
jurisdiction under 35 U.S.C. § 6(b).
A hearing was held on July 1, 2020.

1 Appellant identifies Nice Ltd. as the real party in interest. Appeal Br. 1.
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42.
Appeal 2019-003832
Application 14/184,728

2

SUMMARY OF DECISION
We affirm.
THE INVENTION
Appellant states: “The present invention relates to a system and
method guidance for agents at a contact center that incorporates real-time
feedback.” Spec. ¶ 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method for providing guidance to agents of a contact
center, the method comprising:
providing by a server of an agent guidance system a list
of key selling points to a plurality of workstations, each of the
workstations associated with an agent of the agents of the
contact center, each key selling point of the list being associated
with an effectiveness status;
displaying, by a display of each of the workstations, the
provided list of key selling points in an order that is based on
feedback from the agents;
receiving by the server from a workstation of said
plurality of workstations feedback related to an effectiveness of
a key selling point of the list, wherein the feedback is based on
whether the agents have found the key selling point to be useful
or not useful in promoting a product to a customer;
analyzing by the server the feedback to determine
whether or not a change in effectiveness status is required for
an identified key selling point of the list, wherein a change in
effectiveness status is required when at least one of a threshold
change in an effectiveness score is exceeded, and when the
feedback causes a priority of the key selling point to overtake or
be overtaken by a priority of another key selling point on the
list;
automatically modifying the effectiveness status of the
identified key selling point of the list in accordance with the
received feedback and the analysis;
Appeal 2019-003832
Application 14/184,728

3

providing by the server to said plurality of workstations a
modified list that incorporates the modified effectiveness status;
wherein providing the modified list comprises updating
the list in real time; and
wherein a change in effectiveness status comprises a
determination of at least one of a new effectiveness score and a
new priority for the identified key selling point of the list; and
displaying, by a display of each of the workstations, the
list of key selling points in an order that is based on the new
effectiveness score and the new priority.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Name Reference Date
Marks et al. (Marks) US 2001/0051911 Al Dec. 13, 2001
Trauring US 6,513,033 Bl Jan. 28, 2003
Lane et al. (Lane) US 2004/0103089 Al May 27, 2004
David US 2004/0249665 Al Dec. 9, 2004
Lawrence et al.
(Lawrence)
US 2007/0162542 Al July 12, 2007
The following rejections are before us for review.
Claims 1, 2, 4–17, 19, and 20 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1, 5–8, 11, 12, 15–17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a)(1) as being unpatentable over Lawrence, in view of Lane and
Trauring.
Claims 2, 4, 13, and 14 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lawrence in view of Lane, Trauring, and Marks.
Claims 9 and 10 are rejected under 35 U.S.C. § 103 as being
unpatentable over Lawrence in view of Lane, Trauring, and David.

Appeal 2019-003832
Application 14/184,728

4

FINDINGS OF FACT
We adopt the Examiner’s findings as set forth on pages 2–8, 10–17 in
the Non-Final Office Action3 and on pages 3–15 in the Examiner’s Answer,
concerning only the 35 U.S.C. § 101 rejection.
ANALYSIS
35 U.S.C. § 103(a) REJECTION
Each of independent claims 1, 12 and 16 recites in one form or
another:
wherein a change in effectiveness status is required when at
least one of a threshold change in an effectiveness score is
exceeded, . . . wherein a change in effectiveness status
comprises a determination of at least one of a new effectiveness
score and a new priority for the identified key selling point of
the list . . . .”
The Examiner found concerning this limitation that Lane discloses it
at paragraphs 39–42 finding that
data is then evaluated by the system to rank all solutions.
displaying the top ten solutions in the top solutions box 270
shown in FIG. 2. Therefore, the listing reflects those solutions
of most recent interest to the users and/or of most frequent
interest to the users . . . ranking of the solutions is calculated
each night. In another embodiment. the list is refreshed every
hour. The list can even be re-ranked each time a solution is
accessed.
(Non–Final Act. 22 (emphasis omitted)).
Appellant argue,
although the solutions in Lane can be ranked, there is nothing in
Lane that suggests they are displayed in the order they are

3 All references to the Non-Final Office Action refer to the Non-Final Office
Action mailed on Sept. 17, 2018.
Appeal 2019-003832
Application 14/184,728

5

ranked, as required by Appellant's claim. Moreover, the
solutions in Lane are ranked [based] on frequency, recency,
and/or an admin, not based on feedback from an agent, as
required by Appellant's claims. Accordingly, Lane does not
satisfy these new claim elements.
(Appeal Br. 9–10).
We agree with Appellant. Claims 1, 12 and 16 each requires “at least
one of a threshold change in an effectiveness score is exceeded.” Relative
rankings do not require a threshold change because a ranking process is an
ordering process which is not threshold based. It is not apparent and the
Examiner does not explain how the evaluated solutions in Lane, which are
ranked based on frequency, recency, etc., are an obvious variant of “at least
one of a threshold change in an effectiveness score is exceeded.”
Because claims 2, 4–11, 13–15, 17, 19, and 20 depend from one of
claims 1, 12 and 16 and because we cannot sustain the rejection of claims 1,
12 and 16, the rejection of claims 2, 4–11, 13–15, 17, 19, and 20 likewise
cannot be sustained. Concerning claims 2, 4, 13, and 14, the additional
reference to Marks does not remedy the shortfalls of the disclosure in Lane.
Likewise concerning the rejection of claims 9 and 10, the additional
reference to David does not remedy the shortfalls of the disclosure in Lane.
35 U.S.C. § 101 REJECTION
We will affirm the rejection of claims 1, 2, 4–17, 19, and 20 under
35 U.S.C. § 101.
The Appellant argues, and we select, claim 1 as the representative
claim for this group (Appeal Br. 11), and so the remaining claims stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv) (2015).
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
Appeal 2019-003832
Application 14/184,728

6

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) (citation omitted).
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, 573 U.S. 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 id. 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. Kappos, 561 U.S. 593, 611 (2010)
(“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 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))).
Appeal 2019-003832
Application 14/184,728

7

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 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
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn 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 (quoting Mayo, 566 U.S. at 71).
“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 U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Appeal 2019-003832
Application 14/184,728

8

Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).4 “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” Id. at 51; see also October
2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th
ed. Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, 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 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See Guidance - Section III(A)(2), 84 Fed. Reg. at 54–
55.
Appeal 2019-003832
Application 14/184,728

9

(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
Guidance, 84 Fed. Reg. at 52–56. The U.S. Court of Appeals for the Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the [S]pecification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See Enfish,
822 F.3d at 1335–36.
In so doing, as indicated above, we apply a “directed to” two prong
test: 1) evaluate whether the claim recites a judicial exception, and 2) if the
claim recites a judicial exception, evaluate whether the claim “appl[ies],
rel[ies] on, or use[s] 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.” Guidance,
84 Fed. Reg. at 53; see also MPEP § 2106.05(a)–(c), (e)–(h).
The Specification states:
Customer service representatives or agents at a contact
center of a company are typically humans (but automated
processes exist) tasked with providing services to callers,
typically via telephone but also via computer chat, texting, e-
mail, or other methods. For example, the services may involve
tasks involving a high level of expertise, such as
troubleshooting a device or computer application that is
provided or maintained by the company, or simpler tasks, such
as assisting a customer in completing a form. Agents may also
Appeal 2019-003832
Application 14/184,728

10

be tasked with utilizing the interaction with the customer to
generate additional business for the company.
Spec. ¶ 2.
Agents typically are trained in technical aspects of the
company's products or services. Agents may not be trained or
experienced in sales, marketing, or other business aspects of the
company. Thus, when tasked with generating additional
business for the company, they may benefit from real-time
assistance with these tasks. For example, a desk or workstation
that is manned by the agent may be provided with a guidance
application that is configured to offer such assistance.
Spec. ¶ 3.
The Examiner found the claims
are analogous to collecting information, analyzing it, and
displaying certain results of the collection and analysis, where
feedback regarding the key selling points are gathered and then
analyzed to determine a change in effectiveness (collecting and
analyzing information), and then providing a modified list to
the workstations (displaying certain results of the collection and
analysis).
(Final Act. 13).
Claim 1 recites in pertinent part,
providing . . .a list of key selling points to a plurality of
workstations, each of the workstations associated with an
agent . . . , each key selling point of the list being associated
with an effectiveness status; displaying, . . . the provided list of
key selling points in an order that is based on feedback from the
agents; receiving . . . feedback related to an effectiveness of a
key selling point of the list, wherein the feedback is based on
whether the agents have found the key selling point to be useful
or not useful in promoting a product to a customer;
analyzing . . . the feedback to determine whether or not a
change in effectiveness status is required for an identified key
selling point of the list, wherein a change in effectiveness status
is required when at least one of a threshold change in an
effectiveness score is exceeded, and when the feedback causes a
Appeal 2019-003832
Application 14/184,728

11

priority of the key selling point to overtake or be overtaken by a
priority of another key selling point on the list; automatically
modifying the effectiveness status of the identified key selling
point of the list in accordance with the received feedback and
the analysis; providing . . . a modified list that incorporates the
modified effectiveness status; wherein providing the modified
list comprises updating the list in real time; and wherein a
change in effectiveness status comprises a determination of at
least one of a new effectiveness score and a new priority for the
identified key selling point of the list; and displaying, . . . the
list of key selling points in an order that is based on the new
effectiveness score and the new priority.
Accordingly, we find claim 1 recites a method for providing guidance
to agents of a contact center using feedback related to the effectiveness of a
key selling point that the agents have found to be useful or not useful in
promoting a product to a customer. We, thus, agree with the Examiner that
claim 1 recites collecting information, analyzing it, and displaying certain
results of the collection and analysis because claim 1 recites, for example,
analyzing by the server the feedback to determine whether or
not a change in effectiveness status is required for an identified
key selling point of the list, wherein a change in effectiveness
status is required when at least one of a threshold change in an
effectiveness score is exceeded, and when the feedback causes a
priority of the key selling point to overtake or be overtaken by a
priority of another key selling point on the list.
This is a form of evaluation that is a mental process, a concept performed in
the human mind, which is a judicial exception. Guidance, 84 Fed. Reg.
at 52.
In addition, claim 1 recites, for example,
receiving …feedback related to an effectiveness of a key selling
point of the list, wherein the feedback is based on whether the
agents have found the key selling point to be useful or not
useful in promoting a product to a customer.
Appeal 2019-003832
Application 14/184,728

12

Thus, claim 1 also recites rating a personal interaction i.e., a sales attempt,
which is a form of managing personal behavior or relationships or
interactions between people, which is one of certain methods of organizing
human activity that are judicial exceptions. Guidance, 84 Fed. Reg. at 52.
Turning to the second prong of the “directed to” test, claim 1 only
generically requires “a server,” “a plurality of workstations,” and “a
display.” These components are described in the Specification at a high
level of generality. See Spec. ¶¶ 31, 63–76, Fig. 1. We fail to see how the
generic recitations of these most basic computer components and/or of a
system so integrates the judicial exception as to “impose[] a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” Guidance 84 Fed.
Reg. at 53. We find no indication in the Specification, nor does Appellant
direct us to any indication, that the operations recited in independent claim 1
invoke any assertedly inventive programming, require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, or that the claimed invention is implemented using other
than generic computer components to perform generic computer functions.
See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (“[A]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.”). Because no more than a generic computer is required, the claim
also does not define, or rely on, a “particular machine.” MPEP
§ 2106.05(b).
Appeal 2019-003832
Application 14/184,728

13

Thus, we find that claim 1 recites the judicial exceptions of a mental
process and a certain method of organizing human activity that are not
integrated into a practical application.
That claim 1 does not preempt all forms of the abstraction or may be
limited to contact center guidance, does not make it any less abstract. See
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir.
2015) (“And that 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.”).
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to abstract ideas/judicial exceptions, the claim must
include an “inventive concept” in order to be patent eligible, i.e., there must
be an element or combination of elements sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative Servs., 566 U.S.
at 72–73).
Concerning this step, the Examiner found the following:

independent claims 1, 12, and 16 are generic computing
elements performing generic computing functions and, as a
result, do not amount to significantly more. The claims do not
recite ‘significantly more’ because the claim is not either:
improvements to another technology or technical field;
improvements to the functioning of the computer itself;
applying the judicial exception with, or by use of, a particular
machine; effecting a transformation or reduction of a particular
article to a different state or thing; or other meaningful
limitations beyond generally linking the use of the judicial
exception to a particular technological environment,
Appeal 2019-003832
Application 14/184,728

14

Non–Final Act. 14. We agree with the Examiner. “[T]he relevant question
is whether the claims here do more than simply instruct the practitioner to
implement the abstract idea . . . on a generic computer. They do not.” Alice,
573 U.S. at 225.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, analyze, modify, display and apply decision criteria to
data as a result amounts to electronic data query and retrieval—one of the
most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354
(Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming”). In short, each step does no more than require a generic
computer to perform generic computer functions. Claim 1 does not, for
example, purport to improve the functioning of the computer itself. In
addition, as we stated above, the claim does not effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of information access under different scenarios (see,
e.g., Spec. ¶¶ 31, 63–76, Fig. 1). Thus, claim 1 amounts to nothing
significantly more than instructions to apply the abstract idea using some
unspecified, generic computer. Under our precedents, that is not enough to
Appeal 2019-003832
Application 14/184,728

15

transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225–226.
Considered as an ordered combination, the computer components of
Appellant’s claim 1 adds nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis (receive,
analyze, modify, display) and storing is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (holding that sequence of data retrieval,
analysis, modification, generation, display, and transmission was abstract),
Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329,
1339 (Fed. Cir. 2017) (holding sequence of processing, routing, controlling,
and monitoring was abstract). The ordering of the steps is, therefore,
ordinary and conventional.
We have reviewed all the arguments Appellant has submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. (Appeal Br. 10–20, Reply Br. 3–9). We find that
our analysis above substantially covers the substance of all the arguments,
which have been made. But, for purposes of completeness, we will address
various arguments in order to make individual rebuttals of same.
Appellant argues, “the Examiner has failed to provide any evidence
whatsoever of the allegations made that the claims are well-understood,
routine, and conventional.” (Appeal Br. 11(citing Berkheimer v. HP Inc.,
881F.3d 1360 (Fed. Cir. 2018)); see also id. at 15–16).
Appeal 2019-003832
Application 14/184,728

16

We disagree with Appellant. The court in Berkheimer held that “[t]he
patent eligibility inquiry may contain underlying issues of fact.”
Berkheimer, 881 F.3d at 1365 (citing Mortg. Grader, Inc. v. First Choice
Loan Servs. Inc., 811 F.3d 1314, 1325 (Fed. Cir. 2016) (“The § 101 inquiry
‘may contain underlying factual issues.”’ Id. at 1325.)). But, the court also
held that “[w]hen there is no genuine issue of material fact regarding
whether the claim element or claimed combination is well-understood,
routine, [and] conventional to a skilled artisan in the relevant field, this issue
can be decided on summary judgment as a matter of law.” Berkheimer,
881 F.3d at 1368 (emphasis added). The Federal Circuit made clear that
“not every § 101 determination contains genuine disputes over the
underlying facts material to the § 101 inquiry.” Id. In fact, the Federal
Circuit in Berkheimer did not require evidentiary support for independent
claim 1 because “[t]he limitations [of claim 1] amount to no more than
performing the abstract idea of parsing and comparing data with
conventional computer components.” Id. at 1370. Here, the Specification
indisputably shows the claimed “a server,” “plurality of workstations,” and
“a display” are described in the Specification at a high level of generality.
See Spec. ¶¶ 31, 63–76, Fig. 1. There is nothing in the Specification that
shows these elements were non–conventional at the time of filing.
Accordingly, we find no evidence other than the well-understood, routine, or
conventional nature of the components as claimed.
Appellant argues:
claimed ordered combination of operations amounts to
significantly more than the alleged abstract idea at least because
it improves computer technology and the technical field of
agent guidance systems, e.g., real-time data coordination across
Appeal 2019-003832
Application 14/184,728

17

a plurality of workstations. Appellant submits that, as
described in the last office action response and the Declaration
of Inventor David Geffen, Appellant’s claimed invention
provides an improvement to computing technology. See Geffen
Declaration, para. 5.
(Appeal Br. 12).
We are unpersuaded because the alleged improvement lies in the
abstract idea itself, not in any technological improvement. See BSG Tech
LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287–88 (Fed. Cir. 2018).
Although the claims purport to improve “computer processing speed
and memory availability” (Geffen Affidavit ¶ 5) by using a server to provide
“effectiveness status and update the list in real time, without requiring that
each workstation execute individually, thus dramatically decreasing required
processing power (id. ¶ 8), our reviewing court has held that speed and
accuracy increases stemming from the ordinary capabilities of a general
purpose computer “do[] not materially alter the patent eligibility of the
claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Although a “server”
to communicate with plural workstations is in some sense technological, its
use in operating system functionality can be said to be so notoriously settled
that merely invoking it is no more than abstract conceptual advice to use
well known technology for its intended purpose. See In re TLI Commc’ns
LLC Patent Litig., 823 F.3d 607, 612–613 (Fed. Cir. 2016). (Using a
generic telephone for its intended purpose was a well–established “basic
concept”).
Even if the advance over the prior art is to “analyz[e]… feedback to
determine whether a change of effectiveness of a key selling point being
provided is required for a key selling point on the list, automatically
Appeal 2019-003832
Application 14/184,728

18

modifying the effectives status of the identified key selling point in the list in
accordance with the received feedback” (Geffen Affidavit ¶ 7), that
purported advance is still an abstract idea itself, i.e., a certain method of
organizing human activity. It is similar to hedging against financial risk in
Bilksi v. Kappos, 561 U.S. 593, 609 (2010), and collecting and analyzing
investment data in SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161,
1167–68 (Fed. Cir. 2018). The alleged improvement lies in the abstract idea
itself, not in any technological improvement. See BSG Tech, 899 F.3d
at 1287–88. Claim 1 does not solve any purported technological problem.
Claim 1 is not focused on any technical improvement, but rather on a
scheme for providing guidance to agents of a contact center using feedback
related to the effectiveness of a key selling point that the agents have found
to be useful or not useful in promoting a product to a customer.
On balance, claim 1 is directed to providing guidance to agents of a
contact center using feedback related to the effectiveness of a key selling
point that the agents have found to be useful or not useful in promoting a
product to a customer. As found supra, claim 1 only includes the following
generically recited device limitations: “a server,” “plurality of
workstations,” and “a display.” What remains in the claim after disregarding
these device limitations, are abstractions, i.e., “analyzing …the feedback to
determine whether or not a change in effectiveness status is required for an
identified key selling point of the list.” Claim 1; see Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (citing Mayo,
566 U.S. at 90).
On page 13 of the Appeal Brief, Appellant lists items 1–3 in support
of the asserted improved processing features of the system of claim 1.
Appeal 2019-003832
Application 14/184,728

19

However, these items identify mental steps, e.g., “analyzing the feedback to
determine whether or not a change in effectiveness status is required for an
identified key selling point of the list.” It is well settled that the asserted
improvement is, at best, an improvement to the abstract idea. But “[n]o
matter how much of an advance in the . . . field the claims recite, the
advance lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm.” SAP, 898 F.3d at 1163.
Concerning Appellant’s assertion in item 4 on page 13, that the real
time aspect to of the claims also effects the asserted improved processing
features of the system of claim 1, we note that it is well settled that a
computer acts in “real time” and that such a feature is the result of invoking
the use of well known technology for its intended purpose. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d at 612–613.
.Claim 1 simply recites functional results to be achieved by any
means. See, e.g., Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). Further, the
purported solution requires the use of a server, plurality of workstations, and
a display only operating in their ordinary and conventional capacities. See
supra; see also Alice, 573 U.S. at 224–26. The Appellant does not, and
cannot, claim to have invented the use of these devices. The “focus” of the
claim is not “on the specific asserted improvement in computer capabilities”
(Enfish, 822 F.3d at 1335), but rather on using the server, plurality of
workstations, and display as tools to implement the abstract idea in the
particular field of contact center guidance. See Affinity Labs of Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016) (“The Supreme Court
and [the Federal Circuit] have repeatedly made clear that merely limiting the
Appeal 2019-003832
Application 14/184,728

20

field of use of the abstract idea to a particular existing technological
environment does not render the claims any less abstract.”).
Appellant argues, “the systems and methods according to
embodiments of the claimed invention provide at least two clear
improvements to the computer technology, particularly improving the
computer processing speed and memory availability. (Appeal Br. 13).
We are not persuaded by Appellant because merely using a computer
to perform more efficiently what could otherwise be accomplished manually
does not confer patent-eligibility. See Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Can., 687 F.3d 1266, 1279 (Fed. Cir. 2012) (“Using a
computer to accelerate an ineligible mental process does not make that
process patent-eligible.”); MySpace, Inc. v. GraphOn Corp., 672 F.3d 1250,
1267 (Fed. Cir. 2012) (“While running a particular process on a computer
undeniably improves efficiency and accuracy, cloaking an otherwise abstract
idea in the guise of a computer-implemented claim is insufficient to bring it
within section 101.”).
Appellant argues, “the presently pending claims represent a patent-
eligible technical solution which, in the end, is more complex than any
alleged ‘mental process.’” (Appeal Br. 14).
We disagree with Appellant because as early as Parker v. Flook, the
Supreme Court held that calculations, while “primarily useful for
computerized calculations producing automatic adjustments in alarm
settings,” “can [still] be made by pencil and paper calculations.” Flook, 437
U.S. at 586. As such, the Court did not deem the alleged primacy of
computer implementation to be persuasive in its 35 U.S.C. § 101 analysis.
Appeal 2019-003832
Application 14/184,728

21

Appellant here has not produced evidence showing that the claimed
computations cannot be made by human interaction using a pen and paper.
Appellant respectfully asserts that the Examiner has “unnecessarily
oversimplif[ied] the claims.” (Appeal Br. 14).
We disagree with Appellant. That the claims include more words than
the phrase the Examiner used to articulate the abstract idea, and that the
Examiner, thus, articulates the abstract idea at a higher level of abstraction
than would Appellant is, accordingly, an insufficient basis to persuasively
argue that the claim language has been mischaracterized or that the
Examiner has failed to consider the claims as a whole. Although Appellant
and the Examiner describe, at different levels of abstraction, to what the
claims are directed, it is recognized 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.” See id. at 1241.
Appellant’s argument that the claims add specific “limitations other
than what is well-understood, routine, and conventional in the field” (Appeal
Br. 15) is similarly unpersuasive at least because the features that Appellant
identifies as unconventional, i.e., receiving by the server, analyzing by the
server, providing by the server to said plurality of workstations (Appeal Br.
16–17), are, as found above, a sequence of data reception-analysis (receive,
analyze, modify, display) which are generic and conventional or otherwise
held to be abstract. See e.g., Ultramercial, 772 F.3d 715. As found above,
there is nothing in the Specification that shows these elements were non–
conventional at the time of filing.
Appeal 2019-003832
Application 14/184,728

22

Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-
related guidance issued prior to the Ninth Edition, R–08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”))).
For the reasons identified above, we determine there are no
deficiencies in the Examiner’s prima facie case of patent ineligibility of the
rejected claims. Therefore, we will sustain the Examiner’s § 101 rejection
of claims 1, 2, 4–17, 19, and 20.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 2, 4–17,
19, and 20 under 35 U.S.C. § 101.
We conclude the Examiner erred in rejecting claims 1, 2, 4–17, 19,
and 20 under 35 U.S.C. § 103.
DECISION
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed.
See 37 C.F.R. § 41.50(a)(1).
Appeal 2019-003832
Application 14/184,728

23

In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 2, 4–17,
19, 20
101 Eligibility 1, 2, 4–17,
19, 20

1, 5–8, 11,
12, 15–17,
19, 20
103 Lawrence, Lane,
Trauring
1, 5–8, 11,
12, 15–17,
19, 20
2, 3, 4, 13,
14
103 Lawrence, Lane,
Trauring, Marks
2, 3, 4, 13,
14
9, 10 103 Lawrence, Lane,
Trauring, David
9, 10
Overall
Outcome
1, 2, 4–17,
19, 20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED