Ex Parte Fox

Patent Trial and Appeal Board

Aug 8, 2018

11139875 (P.T.A.B. Aug. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/139,875 05/27/2005 Billy Shane Fox
86548 7590 08/10/2018
Garlick & Markison (IH)
106 E. 6th Street, Suite 900
Austin, TX 78701
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.
l 78-LAN-05-2005 3782
EXAMINER
REFAI, RAMSEY
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
08/10/2018 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):
MMurdock@TEXASPATENTS.COM
bpierotti@texaspatents.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BILLY SHANE FOX
Appeal2017-002710
Application 11/139,875
Technology Center 3600
Before MURRIEL E. CRAWFORD, MEREDITH C. PETRA VICK, and
AMEE A. SHAH, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 34--37. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ). We affirm.
BACKGROUND
Appellant's invention is directed to an integrated inventory
management system. Spec. 1.
Appeal2017-002710
Application 11/139,875
Claim 34 is illustrative:
34. A method of multi-member station inventory
management for an enterprise that includes a plurality of
member stations communicatively coupled via a data
network, wherein each of the plurality of member stations is
a media property having a name and associated market area
or geographic region in which the media property delivers
media programming to consumers, and has associated
advertising inventory for sale, the method being
implemented by a computer including a processor and a
memory, the computer configured to maintain a multi-
member station inventory management system usable by the
plurality of member stations through remote access via the
data network, the method comprising:
receiving available inventory for the associated advertising
inventory for sale from the each of the plurality of the
member stations to effect consistent revenue management of
the available inventory across the plurality of the member
stations;
mirroring the available inventory in a master database for the
each of the plurality of the member stations;
calculating, under control of a yield management system,
advertising inventory pricing information relating to the
associated advertising inventory across the plurality of
member stations in accordance with a demand curve based
pricing logic to effect a consolidation;
transmitting the advertising inventory pricing information to
a price forecasting system included in the inventory
management system, wherein the advertising inventory
pricing information includes prices to be quoted to a
customer;
receiving initial advertising order information, including a
firm order, from the customer;
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Application 11/139,875
entering the initial advertising order information into both a
traffic billing system and a yield management system;
first recalculating, based on the initial advertising order
information, by yield management program logic of the
yield management system the advertising inventory pricing
information in accordance with the demand curve based
pricing logic and price changes due to a reduction in the
available inventory across the plurality of member stations
for remaining availabilities to produce first recalculated
advertising inventory pricing information;
receiving booked data at the traffic billing system, wherein
the booked data includes data that changes the initial
advertising order information;
exporting the booked data from the traffic billing system
back to the yield management system;
making a change to the initial advertising order information
affecting inventory levels stored by traffic billing program
logic of the traffic billing system; and
second recalculating, based on the change to the advertising
order information, by the yield management program logic
the first recalculated advertising inventory pncmg
information in accordance with the pricing logic and the
price change to produce a second recalculated advertising
inventory pricing information; and
providing the available inventory and the second
recalculated advertising inventory pricing information to the
each of the plurality of member stations such that when at
least one of the plurality of member stations is not
communicatively coupled via the data network, the at least
one of the plurality of member stations further functioning to
sell the associated advertising inventory for that respective
member station of the plurality of member stations.
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Appeal2017-002710
Application 11/139,875
Claims 34--37 stand rejected under 35 U.S.C. § 101.
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. E.g.,Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Alice, 134 S. Ct. at 2355
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct.
1289, 1296-97 (2012)). In accordance with that framework, we first
determine whether the claim is "directed to" a patent-ineligible abstract idea.
See Alice, 134 S. Ct. at 2356 ("On their face, the claims before us are drawn
to the concept of intermediated settlement, i.e., the use of a third party to
mitigate settlement risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010)
("Claims 1 and 4 in petitioners' application explain the basic concept of
hedging, or protecting against risk."); Diamond v. Diehr, 450 U.S. 175, 184
( 1981) ("Analyzing respondents' claims according to the above statements
from our cases, we think that a physical and chemical process for molding
precision synthetic rubber products falls within the § 101 categories of
possibly patentable subject matter."); Parker v. Flook, 437 U.S. 584, 594--
595 (1978) ("Respondent's application simply provides a new and
presumably better method for calculating alarm limit values."); Gottschalk v.
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Application 11/139,875
Benson, 409 U.S. 63, 64 (1972) ("They claimed a method for converting
binary-coded decimal (BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
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
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Application 11/139,875
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).
ANALYSIS
The Examiner holds that claim 34 is directed to an abstract idea
because the claims are directed to management of inventory and handling
placement of orders based on price forecasting. Final Act. 2. The Examiner
holds that the steps of claim 34 could be done by a human by hand or merely
thinking and thus is a method of organizing human activity. Id. at 2--4. The
Examiner also holds that claim 34 is directed to a fundamental economic
practice because the concept of management of inventory and handling
placement of orders based on price forecasting is a well-known and
conventional step in the field of business finance. Id. at 3. The Examiner
further holds that the claims are directed to a series of mathematical steps,
which is an abstract idea. Id. at 4. We agree and further hold that claim 34
is also directed to the collection, analysis, storage, and transmission of data
and thus is directed to an abstract idea on that basis as well.
The Examiner finds that the other elements of claim 34 in addition to
the abstract idea 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. Id. at 2. The Examiner finds
that the recitation of a yield management system, a price forecasting system,
and an inventory management system are merely general purpose computer
components that require a processor and memory for performing basic
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Application 11/139,875
computer functions of retrieving, storing, manipulating and processing data.
Ans. 3. We agree.
Appellant argues on page 11 of the Appeal Brief that claim 34 is not
directed to management of inventory and handling placements of orders.
Rather according to Appellant, claim 34 is directed to a particular method
that improves managing inventory in a networked, enterprise environment
involving multiple geographically dispersed member stations and produces a
synergistic result. This argument is not persuasive because the Appellant
does not explain what are these improvements. We note that Appellant's
specification states on page 4 that the invention is directed to improving
price accuracy so that the effect of each order on pricing is taken into
account before the next order is placed. This alleged improvement does not
concern an improvement to computer capabilities but instead relates to an
alleged improvement in accurate pricing for which a computer is used as a
tool in its ordinary capacity.
Appellant also argues on page 12 of the Appeal Brief that although
claim 34 may involve a series of mathematical steps, these calculations are
not the focus of the claim. This argument is also unpersuasive because as
we discussed above, even if the Appellant is correct that the calculation steps
are not the focus of the claim 34, the steps of the claim are directed to the
collection, analysis, storage, and transmission of data and are thus directed
to an abstract idea on that basis.
The Appellant's argument on page 14 of the Appeal Brief that the
claim is not directed to a method of organizing human activities, because the
recitation of a computer precludes performance of the method elements by a
human is also not persuasive, because the recitation of a computer in the
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Application 11/139,875
claims is considered in the second Alice step, not in the first step. As such,
the Examiner considers the recitation of a computer and the various software
modules in the finding that the claim does not include significantly more
than the abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellant's argument on page 14 of the Appeal Brief, that all of the
recitations of claim 34 are not part of an abstract idea articulated by the
Examiner, i.e., management of inventory and handling placement of orders
based on price forecasting. This argument is directed to a level of
abstraction used by the Examiner to characterize the claims. See Apple, Inc.
v. Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed. Cir. 2016) ("An abstract
idea can generally be described at different levels of abstraction. As the
Board has done, the claimed abstract idea could be described as generating
menus on a computer, or generating a second menu from a first menu and
sending the second menu to another location. It could be described in other
ways, including, as indicated in the specification, taking orders from
restaurant customers on a computer."). \,Vhile the claimed invention can be
articulated at a lower level than the level used by the Examiner, the abstract
nature remains the same.
We are not persuaded of error on the part of the Examiner by
Appellant's argument on page 11 of the Brief that the claims do not attempt
to preempt the entire concept. \\lhile preernption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015), cert, denied,
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Application 11/139,875
136 S. Ct. 701, 193 (2015) ("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract."). And, "[ w]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
1-iayo framework, as they are in this case, preemption concerns are fully
addressed and made moot" Ariosa, 788 F.3d at 1379.
We are not persuaded of error on the part of the Examiner by
Appellant's argument in the Reply Brief on page 3 that the claims are like
the claims in McRO, Inc. dba Planet Blue v. Bandai Namco Games America
Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appellant contends that as in lvicRO,
the instant claims do not simply automate conventional activity already
performed by humans but recite specific interactions between various special
purpose systems.
We do not agree with Appellant that the claimed invention is
analogous to the claimed invention in 1'1cRO. The clairns in AfcRO were
directed to a specific asserted improvement in computer animation, i.e., the
automatic use of rules of a particular type. AicRO, 837 F.3d at 1313. By
contrast, the independent claims under appeal recite only collection and
analysis of data. In addition, there is no recitation of a special purpose
system but rather merely a generic computer including a processor and
memory.
\Ve find untimely Appe11anf s arguments in the Reply Brief that the
claims include technological implementation like the claims in DDR
Holdings, LLC v. Hotels.cmn LP., 773 F.3d 1245 (Fed. Cir. 2014) and that
the claims do not simply automate conventional activity but rather include
specific interactions between various special purpose systems. (Reply Br.
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Application 11/139,875
6.). \Ve note that these new arguments were raised by Appellant for the first
tirne in the Reply Brie( and they are not in response to a new issue brought
up by the Examiner in the Answer .. Appellant is reminded that
[T]he purpose of a reply brief is to ensure the Appellant the
opportunity to have the last word on an issue raised by the
Examiner. The reply brief enables the Appellant to address any
new grounds of rejection the Examiner may have raised in the
answer, or to address changes or developments in the law that
may have occuned after the principal brief was filed. The reply
brief is not an opportunity to make arguments that could have
been made during prosecution, but were not. Nor is the reply
brief an oppmiunity to make arguments that could have been
made in the principal brief on appeal to rebut the Examiner's
rejections, but were not Giving cognizance to belated
arguments in a reply would vitiate the force of the requirement
in Board Rule 3 7 ( c)( l )(vii) that "[a]ny arguments or authorities
not included in the brief ... will be refused consideration by the
Board, unless good cause is shown." The reference in that
section to the "reply brief filed pursuant to § 41 A I'' does not
create a right for the Appellant to raise an argument in the reply
brief that could have been raised in the principal brief but was
not. Rather, that reference merely puts Appellants on notice that
arguments that could be made in the reply briet but are not, are
waived.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010). \Ve, therefore,
consider Appellant's arguments improperly raised in the Reply Brief to be
waived.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 34. We will also sustain the Examiner's rejection of claims 35-37
because the Examiner has not argued the separate patent eligibility of these
claims.
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DECISION
We affirm the Examiner's§ 101 rejection.
TIME PERIOD
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).
AFFIRMED
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