Ex Parte Abraham et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201813280904 (P.T.A.B. Feb. 28, 2018) Copy Citation 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. 13/280,904 10/25/2011 SUBILM. ABRAHAM CHA920110017USl_8134-0060 5371 73109 7590 03/02/2018 Cuenot, Forsythe & Kim, LLC 20283 State Road 7 Ste. 300 Boca Raton, EL 33498 EXAMINER CIV AN, ETHAN D ART UNIT PAPER NUMBER 3684 NOTIFICATION DATE DELIVERY MODE 03/02/2018 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): ibmptomail@iplawpro.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SUBIL M. ABRAHAM, RAJARAMAN HARIHARAN, RAMAKRISHNAN KANNAN, and MATHEWS THOMAS Appeal 2016-006262 Application 13/280,904 Technology Center 3600 Before: CAROLYN D. THOMAS, HUNG H. BUI, and JOSEPH P. LENTIVECH, Administrative Patent Judges. LENTIVECH, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1—25, which constitute all the claims pending in the application on appeal. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We affirm. 1 According to Appellants, the real party in interest is IBM Corporation. App. Br. 1. Appeal 2016-006262 Application 13/280,904 STATEMENT OF THE CASE Appellants ’ Invention Appellants’ invention generally relates to “an intelligent shopping assistant.” Spec. 13. Responsive to logging a customer into a computerized shopping system when the customer is at a store, a shopping list associated with the customer is recalled and a route through the store is automatically generated. Spec. 14. Claims 1 and 14, which are illustrative, read as follows: 1. A method of on-premise customer support, the method comprising: responsive to logging a customer into a computerized shopping system on-premises of a store, recalling a shopping list associated with the customer; and automatically generating, using a processor, a route through the store according to at least one item on the shopping list. 14. A method of collaborative shopping, the method comprising: associating a shopping list with each of a plurality of customers; determining that at least one of the plurality of customers has selected an item for purchase from the shopping list; and using a processor, synchronizing the shopping list among the plurality of customers associated with the shopping list. References The Examiner relies on the following prior art in rejecting the claims: Hoblit US 2005/0177446 A1 Aug. 11,2005 Tuchman US 2007/0138268 A1 June 21,2007 2 Appeal 2016-006262 Application 13/280,904 Gounares et al. US 2008/0154720 A1 June 26, 2008 “Gounares” Vaughn US 2009/0048767 Al Feb. 19,2009 Rejections Claims 1—25 stand rejected under 35U.S.C. § 101 as directed to non- statutory subject matter. Final Act. 2—3. Claim 14 stands rejected under 35 U.S.C. § 102(b) as being anticipated by Hoblit. Final Act. 4. Claims 1—3, 5, 6, 8, 13, and 15—23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hoblit and Gounares. Final Act. 4—7. Claim 4 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hoblit, Gounares, and Vaughn. Final Act. 7—8. Claims 7, 9-12, 24, and 25 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Hoblit, Gounares, and Tuchman. Final Act. 8—10. ANALYSIS Rejections under 35 U.S.C. § 101 Claims 1-25 Under 35 U.S.C. § 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, 3 Appeal 2016-006262 Application 13/280,904 natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 134 S.Ct. 2347, 2354 (2014) (quoting Association for Molecular Pathology v. Myriad Genetics, Inc., 133 S.Ct. 2107, 2116 (2013)). The Supreme Court in Alice reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S.Ct. at 2355. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts,” such as an abstract idea. Id. The inquiry often is whether the claims are directed to “a specific means or method” for improving technology or whether they are simply directed to an abstract end-result. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1311, 1314 (Fed. Circ. 2016). If the claims are not directed to a patent-ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds to the second step, where the elements of the claims are considered “individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S.Ct. at 2355 (quoting Mayo, 132 S.Ct. at 1298, 1297). We, therefore, look to whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). 4 Appeal 2016-006262 Application 13/280,904 The Examiner finds: The claims are directed to the abstract idea of generating routes relating to shopping lists. The additional elements or combination of elements in the claims other than the abstract idea per se amounts to no more than: (i) mere instructions to implement the idea on a computer, and/or (ii) recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry. Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Final Act. 3. Initially, Appellants contend the claims are not directed to an abstract idea. App. Br. 14—16; Reply Br. 4—6. Appellants argue: Notwithstanding that the Examiner’s characterization of the invention is an oversimplification, the Examiner has not identified anything within the claims as being an abstract idea consistent with the case law. Generating routes is neither an “idea” nor is it “abstract.” Generating routes relating to shopping is an action performed, using a computer, on a computer data structure. It is not an abstract idea. Moreover “generating routes relating to shopping lists” is not a fundamental economic practice, a certain method of organizing human activities, an idea ‘of itself,’ or a mathematical relationships/ formula. App. Br. 15. Appellants further argue the claims are not directed to an abstract idea because “there is no risk that the alleged abstract idea will be tied up and no risk that others will be preempted from using this alleged abstract idea.” App. Br. 16. Appellants further contend the Examiner failed to show that the claims do not recite “significantly more” than the abstract idea because “the Examiner does not identify, in the rejection, the additional 5 Appeal 2016-006262 Application 13/280,904 elements” recited in the claims and “has not explained why the additional elements do not add significantly more to the alleged exception.” App. Br. 17. Appellants argue the Examiner, instead, merely presents a conclusory statement. Id. We are not persuaded by Appellants’ arguments. Claim 1 recites a method comprising (1) recalling a shopping list associated with a customer, and (2) automatically generating a route through a store according to at least one item on the shopping list. Independent claims 14, 18, and 20 recite similar limitations. These claims recite an abstract idea of shopping via a shopping list and generating a route relating to the shopping list, which is both a method of organizing human activity and a fundamental economic practice. Such activities are squarely within the realm of abstract ideas such as risk hedging in Bilski {see Bilski v. Kappos, 561 U.S. 593 (2010)), the intermediated settlement in Alice {see Alice, 134 S.Ct. at 2356—57), verifying credit card transactions in CyberSource {see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)), collecting and analyzing information to detect and notify of misuses in FairWarning {see FairWarningIP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir. 2016)), and guaranteeing transactions {see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)). Shopping via a shopping list is also a building block of a market economy. Thus, shopping via a shopping list, like risk hedging and intermediated settlement, is an “abstract idea” beyond the scope of § 101. See Alice 134 S.Ct. at 2356. We are not persuaded by Appellants’ argument that the pending claims are not directed to an abstract idea because “there is no risk that the alleged abstract idea will be tied up and no risk that others will be preempted 6 Appeal 2016-006262 Application 13/280,904 from using this alleged abstract idea.” App. Br. 16 (emphasis omitted). Although the Supreme Court has described “the concern that drives this exclusionary principle [i.e., the exclusion of abstract ideas from patent eligible subject matter] as one of pre-emption,” {see Alice, 134 S.Ct. at 2354), characterizing pre-emption as a driving concern for patent eligibility is not the same as characterizing pre-emption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S.Ct. at 2354). Although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. We are also not persuaded by Appellants’ argument that “both of the claimed steps are intimately connected with a computer.” Reply Br. 5. With respect to computer-enabled claimed subject matter, it can be helpful to determine whether “the claims at issue . . . can readily be understood as simply adding conventional computer components to well-known business practices.” Enfish, LLC, 822 F.3d at 1335. In Enfish, for example, the court noted that “[sjoftware can make non-abstract improvements to computer technology just as hardware improvements can.” Id. However, the focus is whether the claims are “on [a] specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, 822 F.3d at 1335—1336. In Enfish, the court found that the “plain focus of the claims” there was on “an improvement to computer functionality itself, not on 7 Appeal 2016-006262 Application 13/280,904 economic or other tasks for which a computer is used in its ordinary capacity.” Enfish, 822 F.3d at 1336. In this case, the claims as a whole are focused on recalling a shopping list and automatically generating a route through a store according to at least one item on the shopping list. As such, the claims are focused on tasks for which a computer is used in its ordinary capacity and not on an improvement to computer functionality itself. Cf. In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016) (The focus of the claims “was not on an improved telephone unit or an improved server.”). Turning to the second step of the Alice inquiry, we find nothing in Appellants’ claims that add anything “significantly more” to transform the abstract concept of collecting, storing, and analyzing information into a patent-eligible application. Alice, 134 S.Ct. at 2357. None of Appellants’ steps recited, whether individually or in an ordered combination, shows any inventive concept. Limiting such an abstract concept of “recalling a shopping list associated with a customer, and automatically generating a route through a store according to at least one item on the shopping list” to a general purpose computer having generic components such as “a processor” and “a computer readable storage medium” recited in Appellants’ claims does not make the abstract concept patent-eligible under 35 U.S.C. § 101. As recognized by the Supreme Court, “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent- eligible invention.” See Alice, 134 S.Ct. at 2358 (Concluding claims “simply instructing] the practitioner to implement the abstract idea of intermediated settlement on a generic computer” not patent eligible.); see also Accenture Global Services, GmbHv. Guidewire Software, Inc., 728 8 Appeal 2016-006262 Application 13/280,904 F.3d 1336, 1344-45 (Fed. Cir. 2013) (Claims reciting “generalized software components arranged to implement an abstract concept [of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer” not patent eligible.); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible.”) (citation omitted). Because Appellants’ claims are directed to a patent-ineligible abstract concept and do not recite something “significantly more” under the second prong of the Alice analysis, we affirm the Examiner’s rejection claims 1—25 under 35 U.S.C. § 101 as being directed to non-statutory subject matter in light of Alice and its progeny. Claims 18 and 19 Claims 18 and 19 additionally stand rejected under 35 U.S.C. § 101 as being directed to non-patentable subject matter—i.e., software. Final Act. 2—3; Ans. 9—11. In particular, the Examiner finds the claimed “processor” “is the only element that is even arguably hardware or possessing structure.” Ans. 9—10. The Examiner further finds because the claims are silent as to whether the processor is a hardware or a software processor and the Specification provides that aspects of the invention may take the form of an entirely software embodiment, the claimed processor may be configured entirely in software (“software processor”) and, therefore, claims 18 and 19 are directed to non-patentable subject matter under 35 U.S.C. § 101. Ans. 10-11. 9 Appeal 2016-006262 Application 13/280,904 Appellants contend the Examiner erred in construing “processor” to include a software processor. App. Br. 9-13; Reply Br. 2-4. Appellants argue “[t]he Examiner’s attempt to distinguish between a hardware processor and software processor is misplaced” because “[a] configurable ‘software’ processor does not exist outside of hardware.” App. Br. 9. Appellants acknowledge that the term “processor” can be used to connote software, but argue this connotation of the term “is limited to only very specific types of software” such as assemblers and compilers. App. Br. 11— 12. Appellants argue, therefore, “one skilled in the art would not have interpreted the claimed ‘processor’ as referring to this specific type of software” but, instead, “would have recognized, consistent with paragraph [0045] of Appellants’ [Specification, that a processor refers to hardware — not software.” App. Br. 12. Claims under examination are given their broadest reasonable interpretation consistent with the Specification. In re Am. Acad, of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). In determining the broadest reasonable interpretation, “we look to the [Specification to see if it provides a definition for claim terms, but otherwise apply a broad interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). “Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage.” Amer. Acad, of Sci. Tech Center, 367 F.3d at 1364. As found by the Examiner (Ans. 10-11), Appellants’ Specification provides “aspects of the present invention may take the form of an entirely hardware embodiment, an entirely software embodiment (including firmware, resident software, micro-code, etc.) or an embodiment combining 10 Appeal 2016-006262 Application 13/280,904 software and hardware aspects that may all generally be referred to herein as a ‘circuit,’ ‘module’ or ‘system.’” Spec. 115. As such, the broadest reasonable interpretation, consistent with the Specification, of the term “processor” includes an entirely software embodiment. Accordingly, we are not persuaded the Examiner erred. Rejection of Claim 4 under 35 U.S.C. § 102 Holbit relates to a system and method “for supporting coordination and collaboration of multiple users, such as shoppers, in an activity.” Holbit, Abstract. Holbit discloses “[individual lists are organized, each list associated with a different participating user and including multiple entries promoting efficiency in the activity, each entry describing an item to be located and/or obtained by the user.” Holbit, Abstract. Holbit discloses that the individual lists are generated from a master list by dividing entries on the master list amongst the individual lists. Holbit 124. The Examiner finds because Holbit discloses that a shopper is able to make changes to the master list as well as the individual list, Holbit discloses that the master list and the individual lists are both associated with each shopper and, therefore, discloses “associating a shopping list with each of a plurality of customers,” as recited in claim 14. Ans. 16 (citing Hoblit || 29, 35). Appellants contend the Examiner erred by finding Hoblit discloses the claimed associating. App. Br. 19-22; Reply Br. 8. According to Appellants, “[cjlaim 14 requires that a shopping list is associated with each of a plurality of customers.” Reply Br. 8 (citing Hoblit 129); see also App. Br. 20. Appellants argue Hoblit’s teaching regarding a shopper being able to make 11 Appeal 2016-006262 Application 13/280,904 changes to the master list “does not establish that a single shopping list (i.e., allegedly disclosed by the master list of Hoblit) is necessarily (i.e., inherently) associated with each of a plurality of customers.” Id. We do not find Appellants’ argument persuasive. Appellants’ argument regarding Hoblit failing to disclose associating a single shopping list with each of a plurality of customers is not commensurate with the scope of claim 14. Claim 14 does not recite associating a single shopping list with each of a plurality of customers. Instead, claim 14 recites “associating a shopping list with each of a plurality of customers.” (Emphasis added). The general rule established by our reviewing court is that “an indefinite article ‘a’ or ‘an’ in patent parlance carries the meaning of ‘one or more’ in open- ended claims containing the transitional phrase ‘comprising.’” Baldwin Graphic Systems, Inc. v. Siebert, Inc., 512 F.3d 1338, 1342-43 (Fed. Cir. 2008) (quoting KJC Corp. v. Kinetic Concepts, Inc., 223 F.3d 1351, 1356 (Fed. Cir. 2000)). “The exceptions to this rule are extremely limited: a patentee must ‘evince[] a clear intent’ to limit ‘a’ or ‘an’ to ‘one’” which we do not find to be the case here. Id. As discussed supra, Holbit discloses associating each individual list with one of the shoppers and, therefore, discloses “associating a shopping list with each of a plurality of customers,” as recited in claim 14. Appellants further argue “[t]he Examiner’s assertion that ‘each individual shopping list is created base[d] on the master list’ does not identically disclose the claimed ‘associating a shopping list with each of a plurality of customers.’ No association is created between the individual shoppers and the master list.” App. Br. 21. 12 Appeal 2016-006262 Application 13/280,904 We disagree. Regarding associating a shopping list with each of a plurality of customers, Appellants’ Specification provides “the SAS [Shopping Assistance System] can receive a request to associate the shopping list with one or more additional customers. For example, one or more persons accompanying the customer can log into the SAS, obtain SAS clients, and become associated with the shopping list that was retrieved via the SAS master.” Spec. 174. The Specification further provides “the SAS master can generate an optimized route, e.g., a different route, for each of the customers associated with the shopping list” and “the items from the shopping list can be apportioned to the various routes so that the shopping list is completed by the cumulative effort of each customer associated with the shopping list.” Spec. 175. Additionally, the Specification provides “each customer can be presented with only the subset of items for the shopping list for which that customer is responsible through the respective SAS clients.” Spec. 176. Similarly, Hoblit discloses that entries input by one or more shoppers “collectively form a master list” (Hoblit 117); that “multiple optimized ‘individual lists’ are generated from the master list” (Hoblit 124); that “a different optimized list is distributed to the electronic device of each participating shopper” (Hoblit 125); and that “each participating shopper’s electronic device can also receive (or generate locally, once the individual list is received) an optimized route through the store to obtain the items corresponding to entries on the individual list.” Holbit 126. Appellants have not explained persuasively why these portions of Holbit do not disclose “associating a shopping list with each of a plurality of customers.” App. Br. 19. Appellants provide insufficient evidence 13 Appeal 2016-006262 Application 13/280,904 persuasively showing that the Specification or claims limit the claimed associating in a way that is not encompassed by the disclosure of Holbit. Accordingly, we are not persuaded that the Examiner erred by finding Holbit discloses associating both the master list and the individual list with each of a plurality of customers. For the foregoing reasons, we sustain the Examiner’s anticipation rejection of claim 14 under 35 U.S.C. § 102(b). Rejections under 35 U.S.C. § 103(a) Claim 1 Appellants contend the combination of Hoblit and Gounares fails to teach or suggest “automatically generating, using a processor, a route through the store according to at least one item on the shopping list,” as recited in claim 1. App. Br. 21—25. We have reviewed Appellants’ arguments and find them unpersuasive for the reasons that follow. The Examiner relies upon paragraphs 19 and 25 of Hoblit for teaching “responsive to logging a customer into a computerized shopping system on premises of a store, recalling a shopping list associated with the customer.” Final Act. 5. These paragraphs describe steps 16 and 18 of the method depicted in the flow chart of Figure 1. See Holbit, Fig. 1; || 19, 25. Paragraph 26 continues the description of step 18 and discloses “in step 18 each participating shopper’s electronic device can also receive (or generate locally, once the individual list is received) an optimized route through the store to obtain the items corresponding to entries on the individual list in an efficient manner.” Holbit || 26, 31. As such, the combination of Hoblit and Gounares teaches or suggests the disputed limitation. 14 Appeal 2016-006262 Application 13/280,904 Accordingly, we are not persuaded the Examiner erred in rejecting claim 1 and claims 2—4, 7—22, 24, and 25 which are not separately argued with particularity. See App. Br. 22, 27, 28. Claim 5 Appellants contend the combination of Hoblit and Gounares fails to teach or suggest “wherein the at least one route update condition comprises a condition within the store,” as recited in claim 5. See App. Br. 25—27; Reply Br. 9-10. Appellants argue Gounares is “silent as to traffic or congestion] within the store” (e.g., a condition within the store) and “[t]he traffic and congestion described by Gounares refers to traffic (i.e., vehicular traffic) outside the store.” App. Br. 25. Appellants further argue Gounares’ updated “route” is a route between stores and not a route within a store, as required by claim 5. App. Br. 26; Reply Br. 10. We do not find Appellants’ arguments persuasive. Appellants’ Specification provides “[a] route update condition can include or specify any of a variety of different situations responsive to which the SAS master updates or modifies the route of a customer.” Spec. 1 64. Holbit teaches “any shopper is able to add entries to the master list during the shopping activity” and “[t]he added entries can then be immediately placed on appropriate individual list(s).” Holbit 131. Holbit further teaches “[t]he location(s) of added entries in the store can be determined immediately and any optimized route through the store can be updated to include the added entries.” Id. As such, Holbit teaches or suggests a route update condition that comprises a condition within a store (e.g., a shopper adding an entry to the master list during the shopping activity), as required by claim 5. 15 Appeal 2016-006262 Application 13/280,904 Accordingly, we are not persuaded the Examiner erred in rejecting claim 5. Claim 23 recites limitations similar to the limitations recited in claim 5 and claim 6 depends from claim 5. Appellants do not argue claims 6 and 23 separately but, instead, state that these claims stand or fall with claim 5. App. Br. 22. Accordingly, we are not persuaded the Examiner erred in rejecting claims 6 and 23 for the reasons discussed supra with respect to claim 5. DECISION We affirm the Examiner’s rejections of claims 1—25 under 35 U.S.C. §§ 101, 102(b), and 103(a). 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 16 Copy with citationCopy as parenthetical citation