Ex Parte Gammon

Patent Trials and Appeals Board

May 10, 2019

11947233 - (D) (P.T.A.B. May. 10, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/947,233 11/29/2007
27752 7590 05/14/2019
THE PROCTER & GAMBLE COMPANY
Global IP Services
Central Building, C9
One Procter and Gamble Plaza
CINCINNATI, OH 45202
FIRST NAMED INVENTOR
Mark Andrew Gammon
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.
10849M 1537
EXAMINER
BOSWELL, BETH V
ART UNIT PAPER NUMBER
3600
NOTIFICATION DATE DELIVERY MODE
05/14/2019 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):
centraldocket.im @pg.com
pair_pg@firsttofile.com
mayer.jk@pg.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ANDREW GAMMON
Appeal2018-000252
Application 11/947,233 1
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
Mark Andrew Gammon (Appellant) seeks review under
35 U.S.C. § 134 of a final rejection of claims 1-20, the only claims pending
in the application on appeal. This is the second time this Application has
come before us on appeal. In our Decision mailed December 9, 2015
(Appeal 2013-003970), we reversed the rejections over obviousness. In this
1 According to Appellant, the real party in interest is The Procter & Gamble
Company (Br. 1 ).
2 Our Decision will make reference to the Appellant's Appeal Brief ("Br.,"
filed April 28, 2017) and the Examiner's Answer ("Ans.," mailed July 12,
2017), and Final Office Action ("Final Act.," mailed November 28, 2016).
Appeal2018-000252
Application 11/947,233
appeal, the newly-raised, sole issue is that of eligible subject matter. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented a way of forecasting the volume impact of a
target promotion. Spec. 1 :8-9.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (some paragraphing added).
1. A method of forecasting target volume of a target
product of a target promotion in a store comprising the steps:
(a) defining target promotion attributes of the target
promotion, wherein the target promotion attributes comprise the
target product, a target product promotion price, a target
promotion time period, or combinations thereof;
(b) assessing purchase data of a store, wherein the
purchase data comprises data about a historical promotion,
wherein the historical promotion comprises historical promotion
attributes; wherein the historical promotion attributes comprise:
a historical product, a historical product promotion price,
a historical promotion time period, and combinations thereof;
( c) identifying one or more historical promotion( s) from
the assessed purchase data that matches the target promotion
based on the respective target promotion attributes and historical
promotion attributes;
( d) identifying a single highest selling historical promotion
from the one or more identified historical promotion(s);
( e) determining a historical volume of the historical
product of the identified single highest selling historical
promotion; and
(f) forecasting the target volume of the target product of
the target promotion based upon the determined volume of the
historical product.
2
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Application 11/947,233
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. 3
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
STEP 11
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
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
3 A 35 U.S.C. § 112 written description rejection (Final Act. 8-9) was
withdrawn. Ans. 7.
4 For continuity of analysis, we adopt the steps nomenclature from 2019
REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50
(Jan. 7, 2019) ("2019 Revised Guidance").
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Application 11/947,233
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 Banklnt'l, 573 U.S. 208, 217-18 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine what the claims are directed to.
This begins by determining whether the claims recite one of the judicial
exceptions (a law of nature, a natural phenomenon, or an abstract idea).
Then, if claims recite a judicial exception, determining whether the claims at
issue are directed to the recited judicial exception, or whether the recited
judicial exception is integrated into a practical application of that exception,
i.e., that the claims "apply, rely on, or use the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception." 2019 Guidance, 84 Fed. Reg. at 54. If the claims are directed to
a judicial exception, then finally determining whether the claims provide an
inventive concept because the additional elements recited in the claims
provide significantly more than the recited judicial exception.
STEP 2A, Prong 1
Method claim 1 recites defining target promotion attributes; assessing
purchase data of a store; identifying one or more historical promotions;
identifying a single highest selling historical promotion; determining a
historical volume; and forecasting the target volume. Thus, claim 1 recites
receiving, selecting, and analyzing data. None of the limitations recite
technological implementation details for any of these steps, but instead recite
only results desired by any and all possible means.
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From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the 2019 Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts5, (2) certain methods of organizing
human activity6, and (3) mental processes 7. Among those certain methods
of organizing human activity listed in the 2019 Revised Guidance are
commercial or legal interactions. Like those concepts, claim 1 recites the
concept of marketing promotion. Specifically, claim 1 recites operations
that would ordinarily take place in advising one to forecasting target volume
for a promotion that was devised from target attributes, store data, and
historical data. The advice to forecast target volume for a promotion that
was devised from target attributes, store data, and historical data involves
promoting commerce, which is an economic act, and planning for such
promotion, which is an act ordinarily performed in the stream of commerce.
For example, claim 1 recites "a target promotion in a store," which is an
5 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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activity that would take place whenever one is promoting commerce with
marketing promotions. Similarly, claim 1 recites "assessing purchase data
of a store" and "identifying one or more historical promotion(s)," which are
also characteristics of planning for promotions.
The Examiner determines the claims to be directed to forecasting
of/for a target product for a financial transaction. Final Act. 5.
The preamble to claim 1 recites that it is a method of forecasting
target volume of a target product of a target promotion in a store. The steps
in claim 1 result in forecasting the target volume of the target product of the
target promotion absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations a---e recite insignificant
receiving, selecting, and analyzing of promotion, store, and historical data,
which advise one to apply generic functions to get to these results.
Limitation f is the only step associated with performing what the claim
produces and recites performing a forecast, which is simply making an
estimate of future data. The limitations, thus, recite advice for forecasting
target volume for a promotion that was devised from target attributes, store
data, and historical data. To advocate forecasting target volume for a
promotion that was devised from target attributes, store data, and historical
data is conceptual advice for results desired and not technological
operations.
The Specification at page 1, lines 8-9 describes the invention as
relating to forecasting the volume impact of a target promotion. Thus, all
this intrinsic evidence shows that claim 1 is directed to forecasting the
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volume impact of a target promotion, i.e., marketing promotion. This is
consistent with the Examiner's determination.
This in tum is an example of commercial or legal interactions as a
certain method of organizing human activity because marketing promotions
are ways that organization marketing efforts drive customers to make
purchases. The concept of marketing promotion as advised to be done by
forecasting target volume for a promotion that was devised from target
attributes, store data, and historical data is an idea for developing a
promotion and making forecasts for it to elicit more customers and sales.
The steps recited in claim 1 are part of using this idea.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Ultramercial, 772 F .3d at 715
( advertising).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, selecting, and
analyzing data mimic human thought processes of observation, evaluation,
judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See 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 reception, selection, and
analysis 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").
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As such, claim 1 is directed to receiving, selecting, and analyzing data, and
not a technological implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 is directed
to marketing promotion by forecasting target volume for a promotion that
was devised from target attributes, store data, and historical data.
STEP 2A, Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application. 8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law .... At
some level, "all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas."
... Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept .... "[A]pplication[s]"
of such concepts " 'to a new and useful end,' " we have said,
remain eligible for patent protection. . . . Accordingly, in
applying the § 101 exception, we must distinguish between
patents that claim the " 'buildin[g] block[ s]' " of human
ingenuity and those that integrate the building blocks into
something more.
Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not generally 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
8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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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, 573 U.S. at 223-24 (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, 573 U.S. at 225. They do not.
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps a---e are pure data gathering steps.
Limitations describing the nature of the data do not alter this. Step f recites
generic computer processing expressed in terms of results desired by any
and all possible means and so present no more than conceptual advice. All
purported inventive aspects reside in how the data is interpreted and the
results desired, and not in how the process physically enforces such a data
interpretation or in how the processing technologically achieves those
results.
Viewed as a whole, Appellant's claim 1 simply recites the concept of
marketing promotion by forecasting target volume for a promotion that was
devised from target attributes, store data, and historical data as performed by
a generic computer. This is no more than conceptual advice on the
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parameters for this concept and the generic computer processes necessary to
process those parameters, and do not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 7 pages of Specification do not bulge
with disclosure, but only spell out different generic equipment9 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
marketing promotion by forecasting target volume for a promotion that was
devised from target attributes, store data, and historical data under different
scenarios. They do not describe any particular improvement in the manner a
computer functions. Instead, claim 1 at issue amounts to nothing
significantly more than an instruction to apply marketing promotion by
forecasting target volume for a promotion that was devised from target
attributes, store data, and historical data using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
9 The Specification describes a computer as being described in U.S.
2006/0010027 Al, paragraph 78. Spec. 7:4--5. This published application
paragraph describes a general purpose computer.
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particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of
marketing promotion by advising one to forecasting target volume for a
promotion that was devised from target attributes, store data, and historical
data as distinguished from a technological improvement for achieving or
applying that result. This amounts to commercial or legal interactions,
which fall within certain methods of organizing human activity that
constitute abstract ideas. The claim does not integrate the judicial exception
into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, selecting,
and analyzing data amounts to electronic data query and retrieval----one of
the most basic functions of a computer. All of these computer functions are
generic, routine, conventional computer activities that are performed only
for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). Also, see In re Katz, 639 F.3d 1303, 1316
(Fed. Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
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by any general purpose computer without special programming"). None of
these activities are used in some unconventional manner, nor do any produce
some unexpected result. Appellant does not contend they invented any of
these activities. 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 Am., 898 F.3d at 1168.
Considered as an ordered combination, the computer components of
Appellant's claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-selection-analysis
is equally generic and conventional. See Ultramercial, 772 F.3d at 715
( sequence of receiving, selecting, offering for exchange, displaying,
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 Commc 'ns, 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.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The other independent method claims 10
and 14 are substantially similar at least as regards this analysis. Claim 14 is
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slightly different in that it results in optimizing a mix of products for the
promotion and shipping the products to the store. These steps are still part
of a marketing promotion, which is again a commercial interaction, and not
a technological improvement. These steps are, therefore, conceptual advice
to optimize and ship parts. The remaining method claims merely describe
process parameters. We conclude that the method claims at issue are
directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
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
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, 573 U.S. at 226 (internal citations omitted). As a corollary, the claims
are not directed to any particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by marketing
promotion by advising one to forecast target volume for a promotion that
was devised from target attributes, store data, and historical data, without
significantly more.
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APPELLANT'S ARGUMENTS
As to Appellant's Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from the Final Office Action at pages 5-8 and
Answer at pages 8-12 and reach similar legal conclusions. In particular, we
note the following.
We are not persuaded by Appellant's argument that
Applicant submits that the claims are directed to machines
and processes associated with forecasting market promotion
effectiveness in terms of sales volume, not the broad abstractions
of organizing human activities. Applicant submits that the acts
of optimizing a mix of products which are to be sold, forecasting
the combination of a mix of products across multiple stores,
determining a historical volume of each product of the target
promotion and forecasting a target volume for each product of
the target promotion, cannot properly be characterized as
abstractions as each can be clearly defined in terms of tangible
activities and concrete outputs.
Br. 4--5. The Specification describes the machines as general purpose
computers. See supra. The argument that the steps cannot be characterized
as abstractions is conclusory. The activities described are data processing
activities and the outputs are data. Such activities and outputs are concepts
interpretable only by the human mind. See supra.
We are not persuaded by Appellant's argument that the claims do not
preempt the ideas. Br. 6. "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo[/Alice] framework,
as they are in this case, preemption concerns are fully addressed and made
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moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
CONCLUSIONS OF LAW
The rejection of claims 1-20 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
DECISION
The rejection of claims 1-20 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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