Ex Parte CHECHUY

Patent Trial and Appeal Board

Jul 12, 2018

13651955 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/651,955 10/15/2012
128144 7590
Rimon, P.C.
One Embarcadero Center
Suite 400
San Francisco, CA 94111
07/16/2018
FIRST NAMED INVENTOR
Dmitry CHECHUY
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.
14-30234-US 4552
EXAMINER
PALA VECINO, KATHLEEN GAGE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/16/2018 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):
uspto@rimonlaw.com
eofficeaction@appcoll.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DMITRY CHECHUY
Appeal2017-003504
Application 13/651,955 1
Technology Center 3600
Before BIBHU R. MOHANTY, MEREDITH C. PETRA VICK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-10 and 27--46. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM, designating the affirmance of the rejection under 35
U.S.C. § 101 as a NEW GROUND OF REJECTION, and also impose a
NEW GROUND OF REJECTION under 35 U.S.C. § l 12(b ).
1 The Appellant identifies CBS Interactive Inc. as the real party in interest.
Appeal Br. 1.
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Application 13/651,955
ILLUSTRATIVE CLAIM
1. A method executed by one or more computing devices
for managing a product catalog, the method comprising:
determining, by at least one of the one or more computing
devices, whether two or more product listings have different
unique product identifiers, wherein the two or more product
listings comprise at least a portion of the product catalog;
analyzing, by at least one of the one or more computing
devices, at least a portion of the two or more product listings
based at least in part on a determination that the two or [sic]
product listings have different unique product identifiers to
determine whether the two or more product listings refer to an
identical product; and
de-duplicating, by at least one of the one or more
computing devices, the two more or product listings based at
least in part on a determination that the two or more product
listings refer to an identical product.
REJECTIONS
I. Claims 1-10 and 27--46 are rejected under 35 U.S.C. § 101 as
ineligible subject matter.
II. Claims 1, 2, 8-10, 27, 28, 34--38, and 44--46 are rejected under
35 U.S.C. § I02(e) as anticipated by Tromble (US 8,655,737 Bl, iss. Feb.
18, 2014).
III. Claims 3-5, 7, 29-31, 33, 39--41, and 43 are rejected under 35
U.S.C. § I03(a) as unpatentable over Tromble and Tenorio et al. (US
2008/0059335 Al, pub. Mar. 6, 2008) ("Tenorio").
IV. Claims 6, 32, and 42 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Tromble, Tenorio, and Mock et al. (US 2008/0232885 Al,
pub. Sept. 25, 2008) ("Mock").
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Application 13/651,955
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
(New Ground of Rejection)
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 589 (2013). Of course, "[a]t some level, 'all inventions ...
embody, use, reflect, rest upon, or apply"' these basic tools of scientific and
technological work. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014). Accordingly, ascertaining ineligible subject matter
involves a two-step framework for "distinguish[ing] between patents that
claim the buildin[g] block[ s] of human ingenuity and those that integrate the
building blocks into something more, thereby transform[ing] them into a
patent-eligible invention." Id. (internal quotation marks and citation
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether there are any "additional elements" recited
in the claim that ( either individually or as an "ordered combination") amount
to "significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
The "directed to" inquiry of the first Alice step "applies a stage-one
filter to claims, considered in light of the specification, based on whether
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Application 13/651,955
'their character as a whole is directed to excluded subject matter."' Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Notably, in
such an inquiry, a claim may be characterized properly, in various ways,
because "[ a ]n abstract idea can generally be described at different levels of
abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). Because the first step is consequential- among other things,
framing the terms for what may ( or may not) constitute meaningful claim
elements, for the second Alice step - it must strike an appropriate balance
between opposing concerns. Describing a claim in broad and vague terms
might make it appear, by comparison, that insignificant claim elements
should be sufficient to establish patent eligibility, under the second Alice
step. By contrast, hewing too closely to the recited details might undermine
any sense that the claim really threatens to cover a "basic tool[] of scientific
and technological work," Gottschalk v. Benson, 409 U.S. 63, 67 (1972), that
would merit the exclusion from patenting.
We determine that independent claims 1, 27, and 37 are directed to the
abstract idea of correlating two or more different identifiers for the same
item. This abstract idea is consistent with the focus of the claims. For
example, claim 1 recites steps of determining whether product listings have
different unique product identifiers, analyzing whether the product listing
refer to an identical product, and de-duplicating (e.g., removing product
listings that refer to an identical product. This focus is consistent with the
Specification's description of the purpose of the invention as "reduction in
duplication and redundancy amongst product listings or a product catalog."
Spec. ,r 8.
In regard to the second Alice step, the claimed elements that the
Appellant proposes as constituting "significantly more" than the abstract
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Application 13/651,955
idea (see Appeal Br. 9-14, Reply Br. 5-8) are simply features that result
from applying the abstract idea to the technological context of an online
product catalog, or that amount to post-solution activity, neither of which
cannot give rise to patent-eligibility. See Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) ("[T]he prohibition against patenting abstract ideas 'cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity"')
(quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
For example, other than the abstract idea itself (i.e., correlating items
having two or more identifiers for the same item) claim 1 recites only the
features of "execut[ion] by one or more computing devices," a "product
catalog" having "product listings" and "unique product identifiers" that refer
to "product[ s ]" ( some of which may be "identical"), and "de-duplicating ...
the ... product listings." The claimed features of "computing devices" and
a "product catalog" having "product listings" and "product identifiers" do no
more than provide a particular technological context - an online product
catalog- for implementing the abstract idea. See Alice, 134 S. Ct. at 2358
("[L ]imiting the use of an abstract idea to a particular technological
environment" is "not enough for patent eligibility.") (internal citations and
quotation omitted); Bilski, 561 U.S. at 610-11; Elec. Power Grp., LLC v.
Alstom, SA, 830 F.3d 1350, 1354 (Fed Cir. 2016) ("[L]imiting the claims to
the particular technological environment of power-grid monitoring is,
without more, insufficient to transform them into patent-eligible applications
of the abstract idea at their core."); Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709, 716 (Fed. Cir. 2014) ("Narrowing the abstract idea of using
advertising as a cuffency to the Inten1et is an 'attempt[] to limit the use' of
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Application 13/651,955
the abstract idea 'to a particular technological environment,' which is
insufficient to save a claim.") (quoting Alice, 134 S. Ct. at 2358).
The claimed step of "de-duplicating, by at least one of the one or more
computing devices, the two more or product listings" may be accomplished,
for example, by "linking or consolidating product listings," "removing some
product listings," or "flagging some product listings for removal." Spec.
,r 28. The "de-duplicating" step also amounts to no more than the
application of the abstract idea in a computer-based catalog environment
and, furthermore, this step may be regarded as a post-solution activity (i.e.,
after determining that "the two or more product listings refer to an identical
product," as claimed) that cannot confer patent eligibility to claim 1. See
Bilski, 561 U.S. at 610-11; Intellectual Ventures I LLC v. Erie Indem. Co.,
850 F.3d 1315, 1328-29 (Fed. Cir. 2017) ("While limiting the index to XML
tags certainly narrows the scope of the claims, in this instance, it is simply
akin to limiting an abstract idea to one field of use or adding token post
solution components that do not convert the otherwise ineligible concept
into an inventive concept.")
Moreover, the "BACKGROUND" portion of the Specification
indicates that the features other than the abstract idea itself- i.e., the
elements particular to the implementation of an online computer-based
product catalog- are conventional, well-understood, and generic: "Online
commerce sites often utilize online product catalogs that list products from
numerous manufacturers and providers. The online catalogs typically
include product listings for individual products." Spec. ,r 2. Because these
features - not only individually, but also their ordered combination, as
practiced - are generic and conventional, they cannot amount to
significantly more than the identified abstract idea, such that claim 1 is not
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patent-eligible. See Alice, 134 S. Ct. at 2358 ("[W]holly generic computer
implementation is not generally the sort of 'additional featur[e]' that
provides any 'practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself"') (quoting lvfayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)).
Accordingly, for the reasons discussed above we sustain the rejection
of claims 1-10 and 27--46 under 35 U.S.C. § 101. Although we sustain this
rejection, because we depart from the Examiner's reasoning, we designate
this aspect of the Decision as a new ground of rejection, under 37 C.F.R.
§ 4I.50(b).
Anticipation
The Appellant contends that claims 1, 2, 8-10, 27, 28, 34--38, and 44--
46 were rejected incorrectly, as being anticipated, because Tromble does not
teach the requirement of independent claims 1, 27, and 37 to analyze "at
least a portion of the two or more product listings based at least in part on a
determination that the two or [sic] product listings have different unique
product identifiers to determine whether the two or more product listings
refer to an identical product." See Appeal Br. 8-10.
The proper construction of the claimed expression "unique product
identifiers," which the Specification defines, resolves this issue. The
Specification states:
Numerous examples provided herein refer to a "manufacturer
part number" or "MPN," which are examples of unique
product identifiers. Other examples of unique product
identifiers include Universal Product Code ("UPC"),
International Standard Book Number ("ISBN"), European
Article Number ("EAN") or Japanese Article Number ("JAN").
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Id. ,r 17 ( emphasis added). This sense - i.e., that the claimed "unique
product identifiers" are any of a number codes that explicitly identify a
particular product in commercial contexts - is reinforced by, e.g.,
dependent claim 10, which recites:
10. The method of claim 1, wherein the unique product
identifiers of the two or more product listings comprise one of
manufacturer part number (["]MPN["]), Universal Product
Code ("UPC"), International Standard Book Number ("ISBN"),
European Article Number ("EAN") or Japanese Article Number
("JAN").
Thus a particular "product listing[]," as claimed, may have a plurality of
"different unique product identifiers" ( e.g., an ISBN and a JAN) that refer to
the same product.
The portion of Tromble identified in the rejection, as purportedly
disclosing the determination of whether two product offers relate to the same
product (see Answer 7), does not specify that such a product must have a
plurality of "different unique product identifiers," as claimed:
For each pair of product offers that include an acceptable brand
pair, the analysis module 125 evaluates other attributes of the
pair of product offers to determine whether the pair of product
offers relate to the same product. For example, the analysis
module 125 may evaluate titles for the products of the two
product offers, model numbers and other product identifiers,
product description, price, and/or any other information
associated with the two product offers.
Tromble col. 5, 11. 26-34.
Therefore, we are persuaded of error in the anticipation rejection, such
that we do not sustain the rejection of claims 1, 2, 8-10, 27, 28, 34--38, and
44--46 under 35 U.S.C. § 102(e).
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Obviousness
The obviousness rejections rely upon the findings set forth in the
anticipation rejection, regarding the teachings of Tromble. See Final Action
9, 10. Accordingly, for the same reason set forth above, we do not sustain
the rejection of claims 3-7, 29-33, and 39--43 under 35 U.S.C. § 103(a).
Indefiniteness
(New Ground of Rejection)
Each of independent claims 1, 2 7, and 3 7 requires the analysis of "at
least a portion of the two or more product listings based at least in part on a
determination that the two or [sic] product listings have different unique
product identifiers to determine whether the two or more product listings
refer to an identical product."
The identified limitations appear to be missing a word or words ( such
as the word "more") that renders the meaning of the limitation unclear.
Accordingly, pursuant to 37 C.F.R. § 4I.50(b), we issue a new ground of
rejection for independent claims 1, 27, and 37, as well as their dependent
claims 2-10, 28-36, and 38--46, under 35 U.S.C. § 112(b), for failing to
point out and distinctly claiming the subject matter that the Appellant
regards as the invention.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-10 and 27-
46 under 35 U.S.C. § 101, designating this affirmance as a NEW GROUND
OF REJECTION under 37 C.F.R. § 4I.50(b).
We REVERSE the Examiner's decision rejecting claims 1, 2, 8-10,
27, 28, 34--38, and 44--46 under 35 U.S.C. § 102(e).
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We REVERSE the Examiner's decision rejecting claims 3-7, 29-33,
and 39--43 under 35 U.S.C. § 103(a).
Pursuant to 37 C.F.R. § 4I.50(b), we add a NEW GROUND OF
REJECTION for claims 1-10 and 27--46 under 35 U.S.C. § 112(b).
This Decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 4I.50(b). Section 4I.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
( 1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in MPEP § 1214.01.
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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; 37 C.F.R. § 4I.50(b)
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