Ex Parte Basak et al

Patent Trial and Appeal Board

Jul 25, 2018

12053686 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/053,686 03/24/2008 Jayanta Basak
29154 7590 07/27/2018
FREDERICK W. GIBB, III
GIBB & RILEY, LLC
844 West Street
Suite 300
Annapolis, MD 21401
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
JP920030064US2 4764
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
support@gibbiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JA YANTA BASAK and RAJENDRA SUREKA
Appeal2017-005104
Application 12/053,686 1
Technology Center 3600
Before BRUCE R. WINSOR, HUNG H. BUI, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-7 and 9-25, which are all the claims
pending in the application. Claim 8 is canceled. Claims App 'x. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 3.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed March
24, 2016; Corrected Appeal Brief ("Corrected App. Br.") filed July 20,
2016; Reply Brief ("Reply Br.") filed February 6, 2017; Examiner's Answer
("Ans.") mailed December 16, 2016; Final Office Action ("Final Act.")
Appeal2017-005104
Application 12/053,686
STATEMENT OF THE CASE
Appellants' invention relates to "a method, system and computer
program product for designing a catalog for a list of items with optimized
placement of items on the catalog [based on past user transactions] in order
to maximize the interest of the merchant, which can be in terms of revenues,
sales or number of clicks." Spec. ,r,r 2, 14; Abstract.
Claims 1, 7, 13, and 19 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below:
1. A method comprising:
deploying, by a computing device, a plurality of initial
catalogs, different ones of said plurality of initial catalogs having
the same item placed in different locations in said initial catalogs;
obtaining, by said computing device, user responses for
said plurality of initial catalogs;
evaluating, by said computing device, said user responses
and transaction history based on a user viewing items in one of
said plurality of initial catalogs;
estimating, by said computing device, relationships
between the location of said items in said one of said plurality of
initial catalogs and corresponding user responses;
determining, by said computing device, an optimized
position for each item to be located in a final catalog using said
relationships; and
forming, by said computing device, said final catalog with
each said item being placed at said optimized position,
said estimating further comprising computing, by said
computing device, search costs from said user responses by
determining an effect that relative positions of said item have on
said user responses.
Corrected App. Br. 2 (Claims App'x).
mailed October 21, 2015; and original Specification ("Spec.") filed March
24, 2008.
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Application 12/053,686
EXAMINER'S REJECTION
Claims 1-7 and 9-25 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter. Final
Act. 4.
DISCUSSION
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 79 (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. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). 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
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Application 12/053,686
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. ( citing Mayo, 566 U.S. at 72-73).
In rejecting claims 1-7 and 9-25 under 35 U.S.C. § 101, the Examiner
determines (1) these claims are directed to an abstract idea of "designing a
catalog [based on user response and transaction history]," which is both a
fundamental economic practice and a "method[] of organizing human
activity," and (2) the additional elements in the claims, whether taken
separately or in an ordered combination, do not amount to significantly more
than the abstract idea, because (i) "the claims do not recite an improvement
to another technology or technical field, nor do they recite an improvement
to the functioning of the computer itself' and (ii) the claims require no more
than "a generic computer to perform generic computer functions that are
well-understood, routine, and conventional activities previously known to
the industry." Final Act. 4; Ans. 2. The Examiner also determines these
claims are directed to an abstract idea because the steps recited in these
claims, including, for example, "evaluating ... said user responses and
transaction[ s] history based on a user viewing items in one of said plurality
of initial catalogs"; "estimating ... relationships between location of said
items ... and corresponding user responses"; and "determining ... an
optimized position for each item to be located in a final catalog using said
relationships" can also be performed manually by a human with pen and
pencil. Final Act. 3; see also CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366 (Fed. Cir. 2011).
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue claims
1-7 and 9-25 are not directed to an "abstract idea" because:
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Application 12/053,686
(1) similar to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014), "Appellant's claims confine the abstract
idea to a particular useful application by using the computer
device to estimate the relationships between locations of items
within a catalog and the user responses, and then determine an
optimized position for items within the catalog using such
relationships" (App. Br. 11-13);
(2) "Appellant's claims ... solve a problem with a claimed
solution that is necessarily rooted in computer technology and
more specifically, the claims solve the problem of providing
customized catalogs" (App. Br. 13-14);
(3) "[t]he present invention differs from other claims found by the
courts to recite abstract ideas in that it does not 'merely recite
the performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks.' ... The
claims do not recite a mathematical algorithm; nor recite a
fundamental economic or longstanding commercial practice.
The claim addresses a business challenge ( designing an
electronic catalog with optimized placement of items) that is
particular to the Internet" (App. Br. 16).
App. Br. 11-19.
Appellants' arguments are not persuasive. Appellants' Specification
is directed to "designing a catalog for a list of items with optimized
placement of items on the catalog [based on past user transactions] in order
to maximize the interest of the merchant, which can be in terms of revenues,
sales or number of clicks." Spec. ,r,r 2, 14; Abstract. Embodiments of
Appellants' Specification describe a process of designing a catalog with
items placed at determined positions (Figure 2) and a process of dynamically
optimizing placement of items in a catalog (Figure 5). Based on Appellants'
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Application 12/053,686
Specification, we agree with the Examiner that the claims are directed to an
abstract idea of "designing a catalog" [based on user response and
transaction history] which is both a fundamental economic practice and a
"method[] of organizing human activity." Ans. 2, 5.
Such activities are squarely within the realm of abstract ideas.
Designing a catalog with optimized placement of items in order to maximize
the interest of the merchant in terms of revenues, sales or number of clicks is
a fundamental business practice, like (1) risk hedging in Bilski; (2)
intermediated settlement in Alice, 134 S.Ct. at 2356-57; (3) verifying credit
card transactions in CyberSource, 654 F.3d at 1370; (4) guaranteeing
transactions in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed.
Cir. 2014); (5) distributing products over the Internet in Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); (6) determining a price of a
product offered to a purchasing organization in Versata Dev. Grp., Inc. v.
SAP Am., Inc. 793 F.3d 1306 (Fed. Cir. 2015); (7) pricing a product for sale
in OIP Techs, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015); and
(8) collecting and analyzing information to detect and notify of misuses in
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Designing a catalog to maximize the merchant's interest is also a
building block of a market economy. Thus, designing a catalog to maximize
the merchant's interest, like risk hedging, intermediated settlement, and
verifying credit card transactions, is an "abstract idea" beyond the scope of §
101. See Alice, 134 S. Ct. at 2356.
Moreover, all the steps recited in Appellants' claims 1, 13, and 19
( similarly system claim 7) including, for example, ( 1) "evaluating ... said
user responses and transactions history based on a user viewing items in one
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of said plurality of initial catalogs"; (2) "estimating ... relationships
between location of said items ... and corresponding user responses"; and
(3) "determining ... an optimized position for each item to be located in a
final catalog using said relationships" are abstract processes of collecting,
storing, and analyzing information of a specific content, i.e., catalog content.
Information, as such, is intangible, and data analysis, comparisons, and
algorithms are abstract ideas. See, e.g., Microsoft Corp. v. AT & T Corp.,
550 U.S. 437, 451 n.12 (2007); Alice, 134 S. Ct. at 2355; Parker v. Flook,
437 U.S. 584, 589, 594--95 (1978); Gottschalkv. Benson, 409 U.S. 63, 71-
72 (1972). Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015);
Digitech, 758 F.3d at 1351; CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1370 (Fed. Cir. 2011). That is, "[w]ithout additional limitations,
a process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible."
Digitech, 758 F.3d at 1350-51 ("Data in its ethereal, non-physical form is
simply information that does not fall under any of the categories of eligible
subject matter under section 101 ").
As also recognized by the Examiner (Final Act. 3), designing a
catalog to maximize the merchant's interest can also be performed manually
using a pen and paper. See CyberSource, 654 F.3d at 1372-73 ("[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under§ 101."); see also In re Comiskey, 554 F.3d 967,
979 (Fed. Cir. 2009) ("[M]ental processes-or processes of human thinking-
standing alone are not patentable even if they have practical application.");
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Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("Phenomena of nature ... ,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work" ( emphasis
added)). Additionally, mental processes remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. CyberSource, 654 F.3d at 1375 ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
Contrary to Appellants' arguments, all the steps/functions recited in
Appellants' claims 1, 13, and 19 ( similarly system claim 7) including, for
example, (1) "evaluating ... said user responses and transactions history
based on a user viewing items in one of said plurality of initial catalogs"; (2)
"estimating ... relationships between location of said items ... and
corresponding user responses"; and (3) "determining ... an optimized
position for each item to be located in a final catalog using said
relationships" can also be performed manually using pen and paper. Final
Act. 3; Ans. 6.
Separately, we note Appellants' claims 1, 7, 13, and 19 do not
improve the performance of a computer or solve a problem specific to
computers or computer networks. Appellants' Specification and arguments
do not demonstrate the claims "improve the way a computer stores and
retrieves data in memory," as the claims in Enfzsh did via a "self-referential
table for a computer database." See Enfzsh, 822 F.3d at 1336, 1339.
In fact, none of the steps recited in Appellants' claims 1, 7, 13, and 19
provide, and nowhere in Appellants' Specification is there any description or
explanation as to how these data processing steps are intended to provide:
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( 1) a "solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) "a specific improvement to
the way computers operate," as explained in Enfzsh, 822 F.3d at 1336; or
(3) an "unconventional technological solution ... to a technological
problem" that "improve[ s] the performance of the system itself," as
explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1302 (Fed. Cir. 2016).
Accordingly, we agree with the Examiner that claims 1-7 and 9-25
are directed to an abstract idea of "designing a catalog [ containing a plurality
of items]," which is both a fundamental economic practice and a "method[]
of organizing human activity." The claims here are ineligible because their
innovation is an innovation in ineligible subject matter. No matter how much
of an advance in the finance 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. An advance of that nature is ineligible for
patenting. As our reviewing court has held, combining several abstract ideas
does not render the combination any less abstract. RecogniCorp, LLC v.
Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one
abstract idea ... to another abstract idea ... does not render the claim non-
abstract."); see also FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1093-94 (Fed. Cir. 2016) (patent-ineligible claims were directed to a
combination of abstract ideas).
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Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue "Claims 1-7
and 9-25 each include an 'inventive concept"' and more specifically,
"contain additional elements, which are performed within the series of steps
used to define the system and method for automatically designing a catalog
containing a plurality of items and these additional elements, when viewed
individually and/or in an ordered combination, amount to significantly more
than just data manipulation." App. Br. 17-19.
We do not agree. The Federal Circuit cases on points include (1)
DDR Holdings and (2) Amdocs (Israel) Ltd. v. Openet Telecom, Inc. 841
F.3d 1288 (Fed. Cir. 2016), both of which involve business-method
inventions and can be instructive here. In DDR and Amdocs, the Federal
Circuit opted to bypass Alice step 1 in favor of step 2. In particular, the
Federal Circuit found DDR 's claims contain an "inventive concept" under
Alice step 2 because DDR 's claims (1) do not merely recite "the
performance of some business practice known from the pre-Internet world"
previously disclosed in Bilski and Alice, but instead (2) provide a technical
solution to a technical problem unique to the Internet, i.e., a "solution ...
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." DDR, 773 F.3d at
1257. Likewise, the Federal Circuit also found Amdocs' claims contain a
sufficient "inventive concept" because like DDR, Amdocs' claims "entail[]
an unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)" and "improve the performance of the system
itself." Amdocs, 841 F.3d at 1300, 1302.
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Under current Federal Circuit precedent, an "inventive concept" under
Alice step 2 can be established by showing, for example, that the patent
claims:
(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks." (see DDR, 773 F.3d
at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC,
827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016); or
(3) "entail[] an unconventional solution ([e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([ e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1, 7, 13, 19 that contains any "inventive
concept" or adds anything "significantly more" to transform the abstract
concept (i.e., designing a catalog to maximize the merchant's interest) into a
patent-eligible application. Alice, 134 S. Ct. at 2357. Instead, we agree with
the Examiner that added computer elements such as a processor cannot
transform the abstract idea into a patent eligible invention. As our reviewing
court has observed, "after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
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patent-eligible." DDR Holdings, 773 F.3d at 1256 (citing Alice Corp., 134
S. Ct. at 2358)).
Because Appellants' claims 1, 7, 13, and 19 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
under the second prong of the Alice analysis, we sustain the Examiner's
rejection of claims 1-7 and 9-25 under 35 U.S.C. § 101.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-7 and 9-25 under
35 U.S.C. § 101.
DECISION
As such, we AFFIRM the Examiner's rejection of claims 1-7 and 9-
25 under 35 U.S.C. § 101.
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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