Ex Parte Geffert et al

Patent Trial and Appeal Board

Sep 15, 2017

14212211 (P.T.A.B. Sep. 15, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/212,211 03/14/2014 William Geffert 097016-0453 3116
1923 7590 09/19/2017
MCDERMOTT, WILL & EMERY LLP
The McDermott Building
500 North Capitol Street, N.W.
Washington, DC 20001
EXAMINER
GART, MATTHEW S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/19/2017 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):
mweipdocket @ mwe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM GEFFERT, AUBREY CHEUNG,
and SATISH GOPALAKRISHNAN
Appeal 2016-0033321
Application 14/212,2112
Technology Center 3600
Before NINA L. MEDLOCK, AMEE A. SHAH, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
September 18, 2015) and Reply Brief (“Reply Br.,” filed February 11,
2016), and the Examiner’s Answer (“Ans.,” mailed December 11, 2015),
and Non-Final Office Action (“Non-Final Act.,” mailed February 18, 2015).
2 Appellants identify Carolina Marketing Corporation as the real party in
interest. App. Br. 2.
Appeal 2016-003332
Application 14/212,211
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—5, 7—18, 20-26, and 32—36. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellants’ claimed invention “relates to systems and methods of
selective auditing of mobile commerce baskets based on real-time behavior,
profile information, event information, and/or other information in self-scan
and other self-serve retail systems” (Spec. 12).
Claims 1 and 14 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computer-implemented method of selectively
auditing baskets in a self-scan system, the method being
implemented on a computer system having one or more
physical processors programmed with computer program
instructions that, when executed by the one or more physical
processors, cause the computer system to perform the method,
the method comprising:
[(a)] receiving, by the computer system, a customer
identification that identifies a customer associated with a
current shopping trip;
[(b)] obtaining, by the computer system, customer
profile information associated with the customer identified by
the customer identification, wherein the customer profile
information includes an indication of at least a first item that
was previously purchased by the customer;
[(c)] determining, by the computer system, that the first
item has not been scanned during the current shopping trip;
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[(d)] determining, by the computer system, a first level
of risk associated with the customer based on the determination
that the first item has not been scanned during the current
shopping trip;
[(e)] receiving, by the computer system, scan
information comprising an item identification that identifies a
second item that was scanned during the current shopping trip;
[(f)] obtaining, by the computer system, item profile
information associated with the item identification, wherein the
item profile information includes an indication that the second
item is packaged in a manner that is used to conceal other
items;
[(g)] determining, by the computer system, a second
level of risk associated with the second item based on the
indication that the second item is packaged in a manner that is
used to conceal other items [ ]; and
[(h)] causing, by the computer system, an audit to occur
based on the first level of risk and the second level of risk.
REJECTION
Claims 1—5, 7—18, 20-26, and 32—36 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
ANALYSIS
Under 35 U.S.C. § 101, 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 an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
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Laboratories, Inc., 132 S. Ct. 1289, 1300 (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 Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., to an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “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 Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct.
at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
We are not persuaded, as an initial matter, by Appellants’ argument
that the claims are patent-eligible under the Bilski machine-or-
transformation test. Appellants argue that independent claims 1 and 14 are
tied to a particular machine and, therefore, satisfy the machine-or-
transformation test (App. Br. 7—10). In fact, the pending claims are not tied
to any particular machine or apparatus at all. Not only is there no indication
in the Specification that the claims require any specialized computer
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hardware or inventive computer components, but Appellants admit that the
claimed method is implemented by programming a general purpose
computer to perform the method steps (see, e.g., id. at 9 (“As recited in
claims 1 and 14, a computer is programmed to selectively audit baskets in a
self-scanning system.”)).
Although the Supreme Court noted in Bilski v. Kappos, 130 S. Ct.
3218 (2010) that the machine-or-transformation test is a “useful and
important clue” for determining patent eligibility, id. at 3227, the Court, in
Mayo emphasized that satisfying the machine-or-transformation test, by
itself, is not sufficient to render a claim patent-eligible, as not all
transformations or machine implementations infuse an otherwise ineligible
claim with an “inventive concept.” See Mayo, 132 S. Ct. at 1301 (“[SJimply
implementing a mathematical principle on a physical machine, namely a
computer, [i]s not a patentable application of that principle.”) (describing
Gottschalkv. Benson, 409 U.S. 63, 64 (1972)). And, as the Supreme Court
made clear in Alice, “the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.”
See Alice Corp., 134 S. Ct. at 2359 (claims that “simply instruct the
practitioner to implement the abstract idea of intermediated settlement on a
generic computer” are not patent-eligible).
We also are not persuaded of Examiner error by Appellants’ argument
that the features of independent claims 1 and 14 limit the claims’ practical
application and do not seek to tie up determining when to audit, based on
risk, customer shopping baskets such that others cannot practice the alleged
abstract idea (App. Br. 10-12). The Supreme Court has described “the
concern that drives this exclusionary principle [i.e., the exclusion of abstract
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ideas from patent eligible subject matter] as one of pre-emption.” See Alice
Corp., 134 S. Ct. at 2354. But characterizing pre-emption as a driving
concern for patent eligibility is not the same as characterizing pre-emption as
the sole test for patent eligibility. “The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
“[Preemption may signal patent ineligible subject matter [but], the absence
of complete preemption does not demonstrate patent eligibility.” Id.
Appellants next argue that the § 101 rejection cannot be sustained,
even with the full Mayo/Alice analysis is applied, because the Examiner “has
neither explained how the claims allegedly recite an abstract idea, nor
pointed to evidence in the record to support the opinion that the claims recite
an abstract idea” (App. Br. 13). That argument is likewise unpersuasive.
We are aware of no controlling authority that requires the Office to
provide factual evidence to support a finding that a claim is directed to an
abstract idea. Nor, contrary to Appellants’ suggestion (see id.), did this
Board hold, in Ex parte Renald Poisson, Appeal 2012-011084 (PTAB
2015), that there is any such requirement.3 Instead, the Federal Circuit has
repeatedly noted that “the prima facie case is merely a procedural device that
enables an appropriate shift of the burden of production.” Hyatt v. Dudas,
492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443,
1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its
3 We would not be bound, in any event, by a non-precedential decision of a
different panel of the Board.
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procedural burden of establishing a prima facie case when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011).
Thus, ah that is required of the Office is that it set forth the statutory basis of
the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of § 132. Id.', see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when the rejection is
so uninformative that it prevents the applicant from recognizing and seeking
to counter the grounds for rejection.”).
Here, in rejecting the pending claims under § 101, the Examiner
analyzed the claims using the Mayo/Alice two-step framework. Specifically,
the Examiner notified Appellants that claims 1—5, 7—18, 20-26, and 32—36
are directed to “determining when to audit, based on risk, customer shopping
baskets,” i.e., to an abstract idea; and that there are no meaningful
limitations that transform the claims into something significantly more than
the abstract idea itself (Non-Final Act. 4—7). The Examiner, thus, set forth a
proper rejection under § 101 such that the burden shifted to Appellants to
explain why the claims are patent-eligible.
Appellants further argue that the claims are patent-eligible because
they “recite a technical solution to a technical problem that is particular to
self-scanning systems” (App. Br. 14). Pointing to paragraphs 4 and 5 of the
Specification,4 Appellants assert that independent claims 1 and 14 recite a
4 Paragraph 4 describes that self-scanning systems can be prone to scan
errors, including unintentional errors, e.g., forgetting to scan an item or
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technical solution in which “a computer system analyzes both a level of risk
associated with a customer and a level of risk associated with a self-scanned
item to determine whether to cause an audit to occur” {id.), and that the
claims are directed to subject matter that is “inextricably tied to computer
technology and therefore do not recite an abstract idea” {id. at 14—15). We
cannot agree.
Appellants liken the present claims to those at issue in DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (App. Br. 14). But
we find no parallel between the present claims and those at issue in DDR
Holdings.
The claims at issue in DDR Holdings were directed to retaining
website visitors, and in particular to a system that modified the conventional
web browsing experience by directing a user of a host website, who clicks
an advertisement, to a “store within a store” on the host website, rather than
to the advertiser’s third-party website. DDR Holdings, 773 F.3d at 1257—
1258. The court determined, “the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet.”
Id. at 1257. The court also determined that the invention was “necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks,” and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
scanning an incorrect number of items, and deliberate theft, both of which
ultimately result in lost profits. Paragraph 5 details the risks of over-auditing
(i.e., alienating loyal customers who rarely commit scan errors) and under­
auditing (i.e., failing to identify customers who commit scan errors more
often) associated with conducting random audits of customer shopping
baskets.
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Rather, there was a change to the routine, conventional functioning of
Internet hyperlink protocol. Id.
Here, determining, based on levels of risk, when to audit customer
shopping baskets is not a challenge particular to computer networks. Nor is
it necessarily rooted in computer technology.
Rather than being similar to the claims in DDR Holdings, the claims
here are akin to the claims in Electric Power Group, LLC v. Alstom,
830 F.3d 1350 (Fed. Cir. 2016), which were directed to performing real-time
performance monitoring of an electric power grid by collecting data from
multiple data sources, analyzing the data, and displaying the results.
Elec. Power Grp., 830 F.3d at 1351—52. There, the Federal Circuit held that
the claims were directed to an abstract idea because “[t]he advance they
purport to make is a process of gathering and analyzing information of a
specified content, then displaying the results, and not any particular
assertedly inventive technology for performing those functions.” Id.
at 1354. Similarly here, the claims are directed to collecting and analyzing
information to detect potential fraud, and initiating an audit when potential
fraud is detected — activities squarely within the realm of abstract ideas.
See id. at 1353—54 (characterizing collecting information, analyzing
information by steps people go through in their minds, or by mathematical
algorithms, and presenting the results of collecting and analyzing
information, without more, as matters within the realm of abstract ideas); see
also FairWarningIP, LLVc. Iatric Systems, Inc., 839 F.3d 1089, 1093—95
(Fed. Cir. 2016) (collecting and analyzing information to detect misuse and
notifying a user when misuse is detected in a computer environment is an
abstract idea).
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Turning to the second step of the Mayo/Alice analysis, Appellants
argue that even if the claims recite an abstract idea, the claims are
nonetheless patent-eligible because they amount to more than the alleged
abstract idea itself (App. Br. 15—16). Quoting the claim language,
Appellants summarily assert that the quoted method steps are significantly
more than the alleged abstract idea of determining, based on risk, when to
audit customer shopping baskets “at least because they are not required for
the foregoing alleged abstract idea” {id. at 16). But the claimed method
steps are part of the abstract idea itself. The only element recited in claims 1
and 14, beyond the abstract idea, is the “computer system having one or
more physical processors,” i.e., generic computer components, which is not
enough for patent-eligibility. See, e.g., DDR Holdings., 773 F.3d at 1256
(“[AJfter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
Ostensibly relying on In reAlappat, 33 F.3d 1526, 1543 (Fed. Cir.
1994), Appellants maintain that claims 1 and 14 do not merely recite a
general purpose computer but instead recite “a special purpose computer
(i.e., the processor programmed with instructions in such a way to transform
the general purpose computer into a special purpose computer, as clearly set
forth in the specification)” (App. Br. 17). However, the Federal Circuit, in
Eon Corp. v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015),
explicitly noted that “Alappat has been superseded by Bilski, 561 U.S.
at 605—06, 130 S. Ct. 3218, and Alice Corp. v. CLS Bank Int’l,----- U.S.------ ,
134 S. Ct. 2347, 189 L.Ed.2d 296 (2014).” And it is clear from the Supreme
Court decision in Alice that merely implementing an abstract idea on a
general purpose computer is not patent-eligible.
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We also are not persuaded of Examiner error by Appellants’ argument
that independent claims 1 and 14 do not recite computer functions that are
“well-understood, routine, conventional activities previously known in the
industry” (App. Br. 19—21). Appellants quote steps (b) through (h) of
independent claim 1, and Appellants argue that these features, which are
similarly recited in independent claim 14, are not well understood and
routine computer functions (id. at 20-21). But Appellants do not adequately
show how the claims are technically performed such that they are not
routine, conventional functions of a generic computer; nor do Appellants
provide any technical reasoning to explain why the claims are not routine
and conventional functions of a generic computer. There is no indication in
the record that the particular operations recited in the claims require any
specialized computer hardware or other inventive computer components or
that the claimed invention is implemented using other than generic computer
components. And, as described above, the mere recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible.
Finally, Appellants argue that the Examiner has improperly failed to
perform a claim-by-claim analysis of the dependent claims under § 101 and,
therefore, has failed to set forth a prima facie case of subject matter
ineligibility (App. Br. 21—22). Responding to Appellants’ argument, the
Examiner explains in the Answer that each and every claim and claim
limitation was considered “as part of the Subject Matter Eligibility
guidelines and examples” and that none of the dependent claims was found
to recite additional elements that amount to significantly more than the
abstract idea (Ans. 9). The Examiner also provides a further discussion,
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specifically addressing dependent claims 5, 7, 18, and 20, and explaining
why these claims, which the Examiner treats as exemplary, are considered to
be directed to an abstract idea (id. at 10).
We cannot agree that the Examiner has failed to set forth a prima facie
case of subject matter ineligibility with respect to the dependent claims
where, as here, there is no indication that Appellants were not put on notice
of the Examiner’s rejection or that the rejection otherwise failed to satisfy
the requirements of 35 U.S.C. § 132. We also decline to find error in the
Examiner’s decision not to recite each dependent claim limitation and
address its patent-eligibility separately.
The Examiner’s discussion in the Non-Final Office Action appears
under the heading “Claims 1—5, 7—18, 20-26, and 32—36 are rejected under
35 U.S.C. 101 because the claimed invention is directed to non-statutory
subject matter, an abstract idea” (Non-Final Act. 4), and the Examiner finds
that the claimed subject matter, generally, is directed to the abstract idea of
“determining when to audit, based on risk, customer shopping baskets” (see,
e.g., id. at 6 (referring to “the claims at issue”); 7 (referencing “the currently
pending claims”)). Each of the dependent claims is directed to determining
when to audit, based on risk, customer shopping baskets, and merely further
specifies how the levels of risk are determined. We are not persuaded that
the dependent claims are patent-eligible because, like independent claims 1
and 14, they add nothing meaningful to the abstract idea.
Indeed, aside from arguing in the Appeal Brief that the dependent
claims were not addressed (App. Br. 21—22), and arguing in the Reply Brief
that the Examiner merely alleges in the Answer that the features recited in
claims 5, 7, 18, and 20 are old and well-known and recite abstract ideas
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(Reply Br. 9), Appellants present no persuasive argument or technical
reasoning to demonstrate that the dependent claims are patent-eligible.
We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting claims 1—5, 7—18, 20-26, and 32—36 under
35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1—28 under 35 U.S.C. § 101 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)(l)(iv).
AFFIRMED
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