Ex Parte Graupner et al

Patent Trial and Appeal Board

Jun 19, 2017

13415814 (P.T.A.B. Jun. 19, 2017)

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.
13/415,814 03/08/2012 Sven Graupner 82892271 1077
56436 7590 06/21/2017
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
ELKASSABGI, ZAHRA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/21/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SVEN GRAUPNER, CLAUDIO BARTOLINI, and
HAMID REZA MOTAHARINEZHAD
Appeal 2016-002157
Application 13/415,814
Technology Center 3600
Before JEAN R. HOMERE, JASON V. MORGAN,
KARA L. SZPONDOWSKI, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—9, which constitute all claims pending in this application. We have
jurisdiction under 35 U.S.C. § 6(b).1
We affirm.
1 Appellants identify the real party in interest as Hewlett Packard
Development Company, LP. Appeal Br. 2.
Appeal 2016-002157
Application 13/415,814
Introduction
Appellants’ invention relates to a service/sales feedback collection
system for aggregating and evaluating feedback obtained from customers via
email. Spec. 3:18—30. In particular, upon receiving survey results from
customers (24), case feedback extraction system (CFES 60) extracts
character strings therefrom as a way to cluster the emails into sets correlated
by the character strings. CFES (60) subsequently evaluates information
contained in the emails to answer one or more questions, and to produce
aggregate evaluation results into a feedback report. Spec. 7:21—31, Fig. 1.
Representative Claim
Independent claim 1 is representative, and reads as follows:
A system comprising:
one or more processors; and
memory that stores computer-executable instructions that
control the one or more processors to:
receive emails including character strings;
clustering the emails into sets of emails by correlating
emails based on the character strings, each set of emails
corresponds to a case;
process each set of emails to produce information related
to each set of emails;
evaluate the information related to each set of emails to
answer one or more questions and produce evaluation results;
and
aggregate the evaluation results into a feedback report.
Rejections on Appeal
Claims 1—9 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 3.
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Claims 1—3 and 9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kannan and McCormick. Final Act.
4—6.
Claims 4—6 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kannan, McCormick, and
Miloslavsky. Final Act. 6—9.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Kannnan, Miloslavsky, and Official
Notice. Final Act. 9—11.
ANALYSIS
We consider Appellants’ arguments seriatim, as they are presented in
the Appeal Brief, pages 4—13, and the Reply Brief, pages 4—11.2 We are
unpersuaded by Appellants’ contentions. Except as otherwise indicated
hereinbelow, we adopt as our own the findings and reasons set forth in the
Final Action, and the Examiner’s Answer in response to Appellants’ Appeal
Brief. Final Act. 3—10, Ans. 2—17. However, we highlight and address
specific arguments and findings for emphasis as follows.
Non-Statutory Subject Matter Rejection
Appellants argue the Examiner erred in concluding that claims 1—9 are
directed to the abstract idea of processing emails to produce business
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed July 13, 2015), the Reply Brief (filed
December 7, 2015), and the Answer (mailed November 18, 2015) (“Ans.”)
for the respective details. We have considered in this Decision only those
arguments Appellants actually raised in the Briefs. Any other arguments
Appellants could have made but chose not to make in the Briefs are deemed
to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2014).
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Application 13/415,814
information, which the Examiner finds is a fundamental practice. Appeal
Br. 8. In particular, Appellants state the following:
[T]he “fundamental economic practice long prevalent in our
system of commerce” for businesses to collect information from such
sales/customer communications is for the sale personnel to manually
enter information from customer interactions into an information
system. Such manual information entry puts a burden on the sales
personnel, results in only are partial information being entered, and in
time delays between the occurrence of the interaction and the
information being entered into the system.
In contrast.. .according to the instant application... the system
clusters emails into sets by correlating emails based on character
strings within emails and process the sets of emails to produce
information related to each set of emails. As such, the system of
claim 1 is not directed to a judicial exception, but is, instead distinct
from the “fundamental economic practice long prevalent in our
system of commerce” of manual entry of information from customer
interactions by sales personnel.
Appeal Br. 7 (citing Spec. 2:31—4:8).
According to Appellants, the claimed invention “does not seek to tie
up the abstract idea of processing emails for information so that others
cannot practice it.” Id. at 8. Instead, it seeks “[to] prevent others only from
clustering emails into cases by correlating emails into sets based on certain
characteristics strings within the emails.” Id. Appellants contend that the
claimed invention recite limitations that are “beyond what is well
understood, routine and conventional in the field of business information
gathering.” Id. at 9, Reply Br. 2-4. Consequently, Appellants submit
because the claimed invention includes additional elements amounting to
“significantly more than the judicial exception [by adding] improvements to
another technology or technical field”, it is directed to patent eligible subject
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matter. Id. (citing Alice Corp. Pty Ltd. v. CLSBankInt’l, 134 S. Ct2347,
2354 (2014), Diamond v. Diehr, 450 U.S. 175, 177-178 (1981)). These
arguments are not persuasive.
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
§ 101. See Alice, 134 S.Ct. at 2355. In the first step, we determine whether
the claims are directed to one or more judicial exceptions (i.e., law of nature,
natural phenomenon, and abstract ideas) to the four statutory categories of
invention. Id. (citations omitted) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97 (2012))(“Miayo’’). In the
second step, we “consider the elements of each claim both individually and
‘as an ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id.
(citing Mayo, 132 S.Ct. at 1297—98). 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.
(citing Mayo, 132 S.Ct. at 1294).
We agree with the Examiner that under step 1 of the Alice analysis,
claim 1 is directed to the abstract idea of processing emails to produce
business information, which is a fundamental business process performed on
a generic computer. Ans. 3. We further agree with the Examiner that the
recited steps of receiving, clustering, processing, and aggregating the emails
are tantamount to the abstract concepts of organizing, storing, and
transmitting information. Id. at 13—14; see, e.g., Elec. Power Grp. LLC v.
Alstom, 830 F.3d 1350 (Fed. Cir. 2016) (characterizing collecting
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information, analyzing information by steps people go through in their
minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas); Content Extraction & Transmission v. Wells Fargo
Bank, 776 F.3d 1343 (Fed. Cir. 2014) (characterizing collecting data,
recognizing certain data within the collected data set, and storing the
recognized data in memory as drawn to an abstract idea). Appellants’
preemption argument does not change our analysis. “Where a patent’s
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework . . . preemption concerns are fully addressed and made
moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (“While complete preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”)
With regard to step 2 of the Alice analysis, we do not agree with
Appellants that the cited steps add any meaningful limitations beyond
generally linking the abstract idea to the particular technological
environment of automatically clustering emails to collect business
information therefrom. Appeal Br. 5.3
3 Considerations for determining whether a claim with additional elements
amounts to “significantly more” than the judicial exception itself include
improvements to another technology or technical field (Alice, 134 S. Ct. at
2359 (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981 ))); adding a
specific limitation other than what is well-understood, routine
and conventional in the field, or adding unconventional steps that confine
the claim to a particular useful application (Mayo, 132 S. Ct. at 1299, 1302);
or other meaningful limitations beyond generally linking the use of the
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Independent claim 1 recites “processors” and “memory.” The
Specification supports the view that these elements encompass what was
generic and common in the field at the time of invention. E.g., Spec. 6:10—
7:10. Moreover, the functions performed in claim 1, i.e., receiving,
clustering, processing, evaluating, and aggregating, are routine,
conventional, and well-known functions, and require nothing more than a
generic computer performing generic computer functions. According to
Appellants, the conventional technique “is for the sales personnel to
manually enter information [which, inter alia] puts a burden on sales
personnel. . . [whereas] “the system in claim 1 provides a systematic
collection of information resulting in more complete and timely information,
as well as reducing effort required for sales personnel to enter information.”
Appeal Br. 9. Ho wever, “relying on a computer to perform routine tasks
more quickly or more accurately is insufficient to render a claim patent
eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015), cert, denied, 136 S. Ct. 701 (2015) (citing Alice, 134 S. Ct. at
2359 (“use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions” is not an inventive
concept)). When viewed as a whole, claim 1 is nothing more than
performing conventional processing functions that courts have routinely
found insignificant to transform an abstract idea into a patent-eligible
invention. As such, claim 1 amounts to nothing significantly more than an
instruction to implement the abstract idea on a generic computer — which is
judicial exception to a particular technological environment (Alice, 134 S.
Ct. at 2360).
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not enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2358-2360.
We agree, therefore, with the Examiner that the steps recited in claim
1 do not amount to “significantly more” than the abstract idea under part 2
of Alice. Ans. 13—14. Accordingly, we sustain the Examiner’s non-statutory
subject matter rejection of claim 1, as well as claims 2—9 not separately
argued.
Prior Art Rejections
Appellants argue that because the teachings of McCormick would
render Kannan’s system unsatisfactory for its intended purpose, the
proposed combination of Kannan and McCormick is not supported by
sufficient motivation, and is thereby improper to render claim 1
unpatentable. Appeal Br. 10-12. In particular, Appellants argue that
McCormick’s disclosure of filtering emails into a junk mailbox or an inbox
based on character strings extracted from the emails would eliminate the
ability of Kannan’s system to “individually process and separately respond
to each customer email with an accurate and individualized wait time.”
Appeal Br. 11. This argument is not persuasive.
The argument that a proposed combination of references would
render one of the references unsuitable for its intended purpose, or would
change its principle of operation, is a teaching away argument. In re
Gordon, 733 F.2d 900, 902 (Fed. Cir. 1984) (The court concluded that in
effect, “French teaches away from the board's proposed modification”
because “if the French apparatus were turned upside down, it would be
rendered inoperable for its intended purpose”). The Federal Circuit has held
“[a] reference may be said to teach away when a person of ordinary skill,
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upon reading the reference, would be discouraged from following the path
set out in the reference, or would be led in a direction divergent from the
path that was taken by the applicant.” In re Kahn, 441 F.3d 977, 990 (Fed.
Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed.Cir.1994)).4 We
agree with the Examiner’s finding that McCormick’s technique of clustering
emails based on character strings would enhance (as opposed to change)
Kannan’s technique of contacting management via email. Ans. 15. In
particular, the proposed combination would predictably result in customers
who have submitted similar email requests (i.e. similar character strings or
syntax) to the merchant addresses being clustered together such that they
would have the same individual wait/response time. Further, Appellants
have not proffered any portion of McCormick that discourages, criticizes or
otherwise discredits clustering users’ emails based on the commonality of
their request, as proposed by the Examiner. For at least the aforementioned
reasons, we are not persuaded or error in the Examiner’s rejection of claim
1.
For these reasons, we sustain the Examiner’s 35 U.S.C. § 103(a)
rejection of claims 1. Because Appellants do not make separate arguments
4 “If references taken in combination would produce a ‘seemingly
inoperative device, ’ . . . such references teach away from the combination
and thus cannot serve as predicates for a prima facie case of obviousness.”
McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1354 (Fed. Cir. 2001)
(citation omitted); see also In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1382 (Fed. Cir. 2007) (“a reference teaches away from a combination
when using it in that combination would produce an inoperative result,” but
the obviousness analysis must account for “modifications that one skilled in
the art would make to a device borrowed from the prior art”).
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for the patentability of claims 2—9, we sustain the 35 U.S.C. § 103(a)
rejections of those claims as well. See id.; 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the above reasons, we affirm the Examiner’s rejections of claims
1-9.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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