Ex Parte Drew et al

Patent Trial and Appeal Board

Jul 17, 2018

13634772 (P.T.A.B. Jul. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/634,772 09/13/2012 Julie Ward Drew
145169 7590 07/19/2018
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP (DXC)
379 Lytton Avenue
Palo Alto, CA 94301
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.
36MK-255181 5284
EXAMINER
KAUFMANN, MATTHEW J
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
07/19/2018 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):
svpatents@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE WARD DREW,
FILIPPO BALESTRIERI,
ENIS KAYIS,
SHY AM SUNDAR RAJARAM,
and SHAILENDRA K. JAIN
Appeal2017---000668
Application 13/634,772
Technology Center 3600 1
Before ANTON W. PETTING, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Hewlett Packard
Enterprise Development LP. Appeal Br. 1.
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Application 13/634,772
STATEMENT OF THE CASE2
Julie Ward Drew, Filippo Balestrieri, Enis Kayis, Shyam Sundar
Rajaram, and Shailendra K. Jain (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1--4 and 7-15, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way to permit a retailer to select which
products to offer for sale to consumers, such as where there are a limited
number of slots that can be populated with products. Specification 2:21-23.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[ 1] assigning, by a computing device,
each product of a plurality of products
to one of a plurality of popularity tiers,
the popularity tiers ordered from a most popular tier to a
least popular tier,
the popularity tiers indicating how popular the products
are expected to be among consumers;
[2] assigning, by the computing device,
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed March 25, 2016) and Reply Brief ("Reply Br.," filed October 11,
2016), and the Examiner's Answer ("Ans.," mailed August 11, 2016), and
Final Action ("Final Act.," mailed October 23, 2015).
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each product
to one of a plurality of margin tiers,
the margin tiers ordered from a highest margin tier to a
lowest margin tier,
the margin tiers indicating how much money a retailer
makes in selling the products to the consumers
on a web page having a predetermined number of
slots that are visible on displays viewed by the
consumers without the consumers having to scroll;
[3] selecting, by the computing device,
which of the products
and
to offer for sale by the retailer to the consumers
by applying a plurality of decision rules
to the products that have been assigned to the
popularity tiers and to the margin tiers
to fill the slots that are each to be populated with one of
the products,
each slot being an empty slot before the one of the
products has been assigned thereto and a filled slot
after the one of the products has been assigned
thereto;
[ 4] displaying the web page, by the computing device,
to the consumers on the displays,
in which the slots of the web page have been populated
with the products assigned thereto,
wherein each decision rule comprises a parameter
selected from:
a first value indicating that the products that are
present in both the given popularity tier and the
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given margin tier are to be selected for offering for
sale to the consumers;
one or more second values indicating that the
products that are present in both the given
popularity tier and the given margin may be
selected for offering for sale to the consumers;
and
a third value indicating that the products that are
present in both the given popularity tier and the
given margin tier are not to be selected for offering
for sale to the consumers.
Claims 1--4 and 7-15 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
Method claim 1 recites assigning each product to a popularity tier and
a margin tier, selecting which products to sell using decision rules, and
displaying products in display slots. Thus, claim 1 recites storing data in
data structures, applying decision criteria to the data, and displaying the data
according to the decision outcomes. None of the limitations recite
implementation details for any of these steps, but instead recite functional
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results to be achieved by any and all possible means. Data reception,
analysis and modification, and display are all generic, conventional data
processing operations to the point they are themselves concepts awaiting
implementation details. The sequence of data reception-analysis-display is
equally generic and conventional. The ordering of the steps is therefore
ordinary and conventional. The remaining claims merely describe
parameters for decision criteria or grouping products for sale, with no
implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an "'inventive concept'"-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S.Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to "selling products, which is considered to be an abstract idea
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inasmuch as such activity is considered both a fundamental economic
practice and a method of organizing human activity." Final Act. 3--4.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in displaying a web page of products, some of which
may be offered for sale. The Specification at 2 :21-23 recites that the
invention relates to permitting a retailer to select which products to off er for
sale to consumers, such as where there are a limited number of slots that can
be populated with products. Thus, all this evidence shows that claim 1 is
directed to selecting products for sale, i.e. sales. This is consistent with the
Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of sales is a
fundamental economic practice long prevalent in our system of commerce.
The use of sales is also a building block of ingenuity in any market
exonomy. Thus, sales, like hedging, is an "abstract idea" beyond the scope
of §101. See Alice Corp. Pty. Ltd. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
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recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of sales at
issue here. Both are squarely within the realm of "abstract ideas" as the
Court has used that term. See Alice Corp. Pty. Ltd. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and display
and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314--15 (Fed. Cir. 2016) (finding claims not abstract because they "focused
on a specific asserted improvement in computer animation."). As such,
claim 1 is directed to the abstract idea of receiving, analyzing, and
displaying data.
The remaining claims merely describe parameters for decision criteria or
grouping products for sale. We conclude that the claims at issue are directed
to a patent-ineligible concept.
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The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
[t]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it'" is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t ]" an abstract idea
"on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly 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."
Alice Corp. Pty. Ltd., 134 S.Ct. at 2358 ( citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S.Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to store data in a structure, apply decision criteria, and display the
data according to the results of those decisions amounts to electronic data
query and retrieval----one of the most basic functions of a computer. All of
these computer functions are well-understood, routine, conventional
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activities previously known to the industry. See Elec. Power Grp. v. Alstom
S.A., supra. Also see In re Katz Interactive Call Processing Patent
Litigation, 639 F.3d 1303, 1316 (Fed.Cir. 201 l)("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,'
. . . those functions can be achieved by any general purpose computer
without special programming"). In short, each step does no more than
require a generic computer to perform generic computer functions. As to the
data operated upon, "even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
SAP America Inc. v. InvestPic LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-display
is equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
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Viewed as a whole, Appellants' method claims simply recite the concept
of sales as performed by a generic computer. To be sure, the claims recite
doing so by advising one to assign products to various tiers and decide
which products to sell based on rules applied to those tiers. But this is no
more than abstract conceptual advice on the parameters for such sales
decisions and the generic computer processes necessary to process those
parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 19 pages of Specification do
not bulge with disclosure, but only spell out different generic equipment3
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
sales under different scenarios. They do not describe any particular
improvement in the manner a computer functions. Instead, the claims at
issue amount to nothing significantly more than an instruction to apply the
abstract idea of sales using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
3 Specification 18: 10-19 describing generic computer equipment.
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computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art. '"
Alice Corp. Pty. Ltd. at 2360.
We adopt the Examiner's determinations from Final Action 3--4 and
Answer 4--12 and reach similar legal conclusions. We tum now to the Reply
Brief arguments.
We are not persuaded by Appellants' argument that the claims are
directed to more than selling products. Appellants contend that independent
claim 1 "recites specific, detailed steps for selecting which products from a
plurality of products to fill a predetermined number of slots on display on a
webpage." Reply Br. 6. The steps in claim 1 are specific only in the sense
they are specified using words. The steps are the most generalized data
processing operations of storing data in data structures, applying decision
criteria to the data, and displaying the data according to the decision
outcomes.
Affinity also objects to the magistrate judge's conclusion that
the claims merely set forth "routine and generic processing
and storing capabilities of computers generally." Yet the
claim terms to which the magistrate judge referred, such as
a "network based media management system" and a
"graphical user interface," are simply generic descriptions of
well-known computer components. . .. Affinity makes no
claim that it invented any of those components or their basic
functions, nor does it suggest that those components, at that
level of generality, were unknown in the art as of the priority
date of the '085 patent.
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Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1270
(2016)
We are not persuaded by Appellants' argument that the claims are
analogous to those inEnfzsh, 822 F.3d 1327 (Fed. Cir. 2016). Reply Br. 6-
7. In Enfzsh, the claims were "specifically directed to a self-referential
table for a computer database." Id. at 1337. The claims thus were
"directed to a specific improvement to the way computers operate" rather
than an abstract idea implemented on a computer. Id. at 1336. Here, by
contrast, the claims are not directed to an improvement in the way
computers operate. Though the claims purport to accelerate the process
of selecting products for sale, our reviewing court has held that speed and
accuracy increases stemming from the ordinary capabilities of a general
purpose computer "do[] not materially alter the patent eligibility of the
claimed subject matter." Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims
are more analogous to those in FairWarning, wherein claims reciting "a
few possible rules to analyze audit log data" were found directed to an
abstract idea because they asked "the same questions ( though perhaps
phrased with different words) that humans in analogous situations
detecting fraud have asked for decades." Fairwarning, 839 F.3d at 1094,
1095.
Appellants also attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. 7-8. In McRO, the court held that, although the
processes were previously performed by humans, "the traditional process
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and newly claimed method ... produced ... results in fundamentally
different ways." FairWarning, 839 F.3d at 1094 (differentiating the
claims at issue from those in McRO). In McRO, "it was the incorporation
of the claimed rules for the process of creating animation, not the use of the
computer, that improved the existing technology process," because the
prior process performed by humans "was driven by subjective
determinations rather than specific, limited mathematical rules." 837 F .3d
at 1314 (internal quotation marks, citation, and alterations omitted). In
contrast, the claims of the instant application merely implement an old
practice of using decision criteria in making sales decisions in a new
environment. Appellants have not argued that the claimed processes of
selecting products apply rules of selection in a manner technologically
different from those which humans used, albeit with less efficiency, before
the invention was claimed. Merely pigeon holing the objects of decision
making in tiers to aid decision making is both old and itself abstract.
We are not persuaded by Appellants' argument that "the claims in the
present application use computer technology to provide improvements to
another technology or technical field of online retail systems." See Reply
Br. 9-10. The test is not whether there is an improvement to a technical
field, but whether there is a technological improvement. The use of
computer technology per se is insufficient to convert an abstract idea into
something non-abstract.
We conclude that the limitations of the '545 claims do not
transform the abstract idea that they recite into patent-eligible
subject matter because the claims simply instruct the
practitioner to implement the abstract idea with routine,
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conventional activity .... Adding routine additional steps such
as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use
of the Internet does not transform an otherwise abstract idea
into patent-eligible subject matter. Instead, the claimed
sequence of steps comprises only "conventional steps, specified
at a high level of generality," which is insufficient to supply an
"inventive concept."
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (2014).
CONCLUSIONS OF LAW
The rejection of claims 1--4 and 7-15 under 35 U.S.C. § 101 as directed
to non-statutory subject matter is proper.
DECISION
The rejection of claims 1--4 and 7-15 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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