Ex Parte Averbuch

Patent Trial and Appeal Board

May 16, 2017

12643311 (P.T.A.B. May. 16, 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.
12/643,311 12/21/2009 Rod Nimrode Averbuch Averbuch 001 4256
93483 7590
Rod Averbuch
1160 S. Michigan Avenue
Apt. 3904
Chicago, IL 60605
05/18/2017 EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/18/2017 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):
rod. averbuch @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROD NIMRODE AVERBUCH
Appeal 2017-006066
Application 12/643,3111
Technology Center 3600
Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
This is a decision on rehearing in Appeal No. 2017-006066. We have
jurisdiction under 35 U.S.C. § 6(b).
Requests for Rehearing are limited to matters misapprehended or
overlooked by the Board in rendering the original decision, or to responses
to a new ground of rejection designated pursuant to § 41.50(b). 37 C.F.R.
§41.52.
1 According to Appellant, the real party in interest is Rod N. Averbuch.
(Appeal Br. 2.)
Appeal 2017-006066
Application 12/643,311
ISSUE ON REHEARING
Appellant requests reconsideration of our Decision on Appeal entered
April 24, 2017, in which we affirmed the Examiner’s rejection of claims 34,
36—53, and 55—662 under 35 U.S.C. § 101.
Appellant argues that we erred “in the position taken in the Board’s
Decision, specifically, the overlooking of Claim 34 directed concept.” (Req.
Reh’g 3, emphasis omitted.)
ANALYSIS
As we stated in our prior decision, in 2014, the Supreme Court
decided Alice Corp. Pty. Ltd. v. CLS BankInt’l, 134 S. Ct. 2347 (2014).
Alice applies a two-part framework, earlier set out in Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), “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.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, e.g., an abstract
idea, then the second part of the framework is applied to determine if “the
elements of the claim . . . contain[] an ‘inventive concept’ sufficient to
‘transform’ the claimed abstract idea into a patent-eligible application.” Id.
at 2357 (citing Mayo, 132 S. Ct. at 1294, 1298).
2 Claim 35 was cancelled subsequent to the mailing of the Final Action.
(See Advisory Action mailed Oct. 5, 2016.)
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Application 12/643,311
With regard to the first step in the Alice framework, the Examiner
determined that “[t]he claims are directed to the idea of providing discounts
and allocating a plurality of cycled discounts labels to product type based on
products approaching their expiration date, which is an abstract idea.”
(Answer 2.) More specifically, the Examiner determined:
Claim 1 recites, in part, a system/medium for performing
or method consisting of the steps of receiving information for a
first lot associated with cycled discount label, [determining a
promotion or remaining lifetime, and providing a promotion or
remaining lifetime and the CDL type indication. These steps
described the concept identified above, which corresponds to
concepts identified as abstract ideas by the courts ....
(Final Action 2, emphasis omitted.)
Appellant argues that we erred in determining to what the claims are
directed. (Req. Reh’g 6.) Specifically, Appellant argues our
analysis is wrong because it overlooked at least 3 essential
elements of Claim 34 directed concept.
1. The dynamic lot based promotion determination and
communication element....
2. The statically affixed first CDL type on perishable products
form a specific lot... .
3. The explicitly specified perishable product as the target for
Claim 34 directed concept....
{Id., emphasis omitted.) Properly considered, Appellant argues, “[t]he entire
Claim 34 is directed to dynamic lot based promotion communication to
consumers utilizing static visual label affixed, (one-time only), on perishable
products from a specific lot thus, eliminating the perishable products re­
labeling.” {Id. at 7, emphasis omitted.)
We are not persuaded of error. Under the first step of the Alice
framework, we “look at the ‘focus of the claimed advance over the prior art’
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Application 12/643,311
to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Texas, LLC v. DirectTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (quoting Electric Power Grp., LLCv. Alstom
S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Thus, while we consider the
claim as a whole, the “directed to” inquiry focuses on the claim’s “character
as a whole.”
For example, in Versata Dev. Group, Inc. v. SAP America, Inc., 793
F.3d 1306, 1333 (Fed. Cir. 2015), representative claim 17 recites:
A method for determining a price of a product offered to a
purchasing organization comprising: arranging a hierarchy of
organizational groups comprising a plurality of branches such
that an organizational group below a higher organizational group
in each of the branches is a subset of the higher organizational
group; arranging a hierarchy of product groups comprising a
plurality of branches such that a product group below a higher
product group in each of the branches in a subset of the higher
product group; storing pricing information in a data source,
wherein the pricing information is associated, with (i) a pricing
type, (ii) the organizational groups, and (iii) the product groups;
retrieving applicable pricing information corresponding to the
product, the purchasing organization, each product group above
the product group in each branch of the hierarchy of product
groups in which the product is a member, and each
organizational group above the purchasing organization in each
branch of the hierarchy of organizational groups in which the
purchasing organization is a member; sorting the pricing
information according to the pricing types, the product, the
purchasing organization, the hierarchy of product groups, and the
hierarchy of organizational groups; eliminating any of the pricing
information that is less restrictive; and determining the product
price using the sorted pricing information.
Id. at 1312—13. Considering the claim’s character as a whole, the court
determined that the claim was directed to, i.e., the focus of the claim as a
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Application 12/643,311
whole, was to “determining a price, using organizational and product group
hierarchies.” Id. at 1333. The court determined this to be an abstract idea.
Id.
In this case, the focus of claim 34 as a whole is “directed to the idea of
providing discounts [i.e., determining pricing] and allocating a plurality of
cycled discounts labels to product type based on products approaching their
expiration date [using labels to organize product group hierarchies].”
(Answer 2.) This is in accord with the disclosure in the Specification that
the “invention is a method of price promotion.” (Spec. 3,1. 21.) That a
price can vary over time with respect to a cycled discount label does not
change our analysis.
Therefore, and particularly in view of Versata, we are not persuaded
that we erred in determining to what the claims are directed or in
determining that the claims are directed to an abstract idea.
With regard to the second step in the Alice framework, Appellant
argues “that the promotion server roles and functions in Claim 34 are not
generic because they are specifically tailored to perform active non-generic
functions in order to enable [the] Claim 34 directed concept.” (Req. Reh’g
8, emphasis omitted.) In particular, Appellant argues that the non-generic
functions performed by the promotion server are: “1. The association of the
first-lot’s information from the entity with the first CDL type indication” and
“2. The combination of the dynamic lot-based promotion results for the
specific perishable lot with the first-lot’s static first CDL type indication.”
{Id., emphasis omitted.)
These steps could be performed manually. However, the
Specification suggests that a generic computer is programmed to automate
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the steps. For example, the Specification discloses that “[t]his invention is a
method of price promotion” (Spec. 2,1. 21) and that “[i]n this invention, a
computer identifies items that are candidates for promotion” (Spec. 1,11. 44—
45). Appellant does not indicate where in either the written description or
the claims anything other than a generic computer programmed to perform
the steps of the invention is required. The claims “do not require an
arguably inventive set of components or methods, such as measurement
devices or techniques.” Electric Power Grp., 830 F.3d at 1355. The
introduction of a generic computer to implement the claimed steps does not
alter the analysis at the second step. In other words, “the claims at issue
amount to ‘nothing significantly more’ than an instruction to apply the
abstract idea . . . using some unspecified, generic computer.” See Alice, 134
S. Ct. at 2360 (citation omitted). This “is not ‘enough’ to transform an
abstract idea into a patent-eligible invention.” See id. (citation omitted).
CONCLUSION
Nothing in Appellant’s request has convinced us that we erred as
argued by Appellant. Accordingly, we deny the request.
REHEARING DENIED
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