Ex Parte AverbuchDownload PDFPatent Trial and Appeal BoardMay 16, 201712643311 (P.T.A.B. May. 16, 2017) 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. 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.) 2 Appeal 2017-006066 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’ 3 Appeal 2017-006066 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 4 Appeal 2017-006066 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 5 Appeal 2017-006066 Application 12/643,311 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 6 Copy with citationCopy as parenthetical citation