Ex Parte Hathaway et al

Patent Trial and Appeal Board

Nov 19, 2018

13452471 (P.T.A.B. Nov. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/452,471 04/20/2012
10782 7590 11/21/2018
Target Brands Inc.
1000 Nicollet Mall, TPS-3165
Minneapolis, MN 55403
FIRST NAMED INVENTOR
Pat Hathaway
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.
201200481 1485
EXAMINER
AN,IGTAI
ART UNIT PAPER NUMBER
4112
NOTIFICATION DATE DELIVERY MODE
11/21/2018 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.Mail@target.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PAT HATHAWAY, DEREK JOHNSON,
RA VISHANKAR JAGADEESHW ARA,
HONG SINGHANIA, GARY SANKARY,
ERIC BIBELNIEKS, SHAM KASHYAP, and CINDY JUDGE
Appeal2017-004717
Application 13/452,471
Technology Center 3600
Before BRADLEY W. BAUMEISTER, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 2, and 4--20, constituting all claims pending in
the current application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
Appellants' invention is directed to automating aspects of organizing
product placement in retail stores, and more specifically, to automated
1 According to Appellants, the real party in interest is Target Brands, Inc.
App. Br. 3.
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Application 13/452,471
mapping of product adjacency groups with merchandising persistence logic.
Spec. ,r,r 1, 4, 5. Claim 1, reproduced below, is representative of the claimed
subject matter:
1. A method for generating a product subgroup map for a
product adjacency group with a computing system, the method
compnsmg:
providing, by the computing system, a user interface
presenting data on a plurality of product subgroups for the
product adjacency group, each of the product subgroups
comprising one or more products;
receiving, by the computing system, via the user
interface, one or more user inputs indicating one or more user-
selected product subgroups from among the plurality of product
subgroups;
for each respective user-selected product subgroup of the
one or more user-selected product subgroups:
configuring, by the computing system, the
user interface with user-selectable options for
editing user-editable mapping criteria of the
respective user-selected product subgroup and for
assigning a respective priority value to each
respective one of the user-editable mapping criteria
for the respective user-selected product subgroup,
wherein the user-editable mapping criteria for the
respective user-selected product subgroup include
a respective ideal minimum area, a respective ideal
area, and a respective ideal maximum area for a
respective area of a display for the respective user-
selected product subgroup; and
receiving, by the computing system, one or
more user inputs for each of the user-editable
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mapping criteria for the respective user-selected
product subgroup;
generating, by the computing system, based in part on a
score for a persistence criterion, the product subgroup map,
wherein:
the computing system generates the product
subgroup map based on the one or more user
inputs for each of the user-editable mapping
criteria for the one or more user-selected product
subgroups, the priority values assigned to the user-
editable mapping criteria for the one or more user-
selected product subgroups, priority values
assigned to one or more non-user-editable mapping
criteria, and data indicating a physical layout of a
store,
the one or more non-user-editable mapping
criteria comprise the persistence criterion, wherein
the priority value assigned to the persistence
criterion places a priority on persisting product
subgroup mapping positions from a previous
product subgroup map, the score for the
persistence criterion being calculated as a
percentage of merchandising sections or area that
are persisted without lack of persistence being
necessitated by a change in area for the product
subgroup, and
the product subgroup map comprises a map
of the product subgroups of the product adjacency
group within the physical layout of the store; and
providing, by the computing system, a
graphical output of the product subgroup map.
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REJECTION
Claims 1, 2, and 4--20 stand rejected under 35 U.S.C. § 101 because
the Examiner determines that the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.
PRINCIPLES OF LAW
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court reiterated the analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (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, 134 S. Ct. at
2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. If the claims are directed to eligible subject matter, the
inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1349 (Fed. Cir.
2017); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). In
other words, the second step is to "search for an 'inventive concept'-i.e., an
element or combination of elements that is 'sufficient to ensure that the
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patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. ( citing Mayo, 566 U.S. at 72-73).
ANALYSIS
The Examiner determines "the claims are directed to the abstract idea
of organizing the product layout of a retail store," and are similar to the
claims in Parker v. Flook, 437 U.S. 584 (1978). Final Act. 4. The Examiner
further determines the claims do not include additional elements alone or in
combination that are sufficient to amount to sufficiently more than the
abstract idea, but rather, are mere instructions to implement the idea on a
computer, and recite generic computer structure that serves to perform
generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry. Final
Act. 5.
Appellants argue claim 1 is similar to the claims in Ex parte Wegman
III, Appeal No. 2013-008168 (PTAB Sept. 22, 2015). App. Br. 13.
Specifically, Appellants argue claim 1 "is much more specific than the broad
abstract idea stated by the Office Action." App. Br. 14. According to
Appellants, "the features of Appellant[s'] claim 1 are sufficiently concrete as
to set them outside the broad definition of abstract idea as set forth in Alice."
App. Br. 15. Appellants further argue claim 1 is not similar to the claims in
Flook because the claims are not directed to an abstract idea in the first
place, so there is nothing ( e.g., a mathematical algorithm) to be assumed to
be in the prior art. App. Br. 15-16. In addition, Appellants argue claim 1 is
similar to the claims in McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016). Reply Br. 6-8.
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Appellants' arguments are unpersuasive. Initially, we note Ex parte
Wegman II is a non-precedential decision of the Board and, thus, is not
binding precedent. Moreover, Appellants have not persuasively explained
why claim 1 is not directed to the abstract idea of "organizing the product
layout of a retail store."
Appellants focus on the claim limitation, "the score for the persistence
criterion being calculated as a percentage of merchandising sections or area
that are persisted without lack of persistence being necessitated by a change
in area for the product subgroup" (App. Br. 14), which recites a calculation,
or mathematical algorithm. As the Examiner notes, this step "appears to
carry out a calculation based on a series of inputs," similar to the claims in
Flook. Ans. 7.
It is well established that data analysis and algorithms are abstract
ideas. See, e.g., Alice, 134 S. Ct. at 2355; Flook, 437 U.S. at
594--95 (1978); Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972). Claim 1
is directed to an abstract idea because it is focused on collecting information
( e.g., user inputs), processing the information, including by mathematical
algorithm ( e.g. generating the product subgroup map based on the user
inputs, priority values, and data indicating a physical layout), and presenting
the results ( e.g., providing a graphical output of the product subgroup map).
See Elec. Power Grp., LLC 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"); Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) (claims
directed to "collecting, displaying, and manipulating data" are abstract).
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Moreover, as a whole, the recited steps in claim 1 involve no more
than abstract concepts that could be performed in the human mind, or by a
human using a pen and paper, without the need of any computer or other
machine. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372-73 (Fed. Cir. 2011); see also Benson, 409 U.S. at 67. Such mental
processes remain unpatentable even when automated to reduce the burden
on the user of what once could have been done with pen and paper.
CyberSource, 654 F.3d at 1375; see Fair Warning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing Bancorp Serv., L.L.C. v.
Sun Life Assurance Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
("[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.")). Indeed, Appellants' Specification extensively
describes using various data, rules, strategies, and goals as input to automate
merchandise presentation. E.g., Spec. ,r,r 1-5, 106-108.
Appellants' reliance on McRO is also not persuasive. In McRO, the
claims were "focused on a specific asserted improvement in computer
animation" that "allow[ ed] computers to produce 'accurate and realistic lip
synchronization and facial expressions in animated characters' that
previously could only be produced by human animators ... through 'the use
of rules, rather than artists, to set the morph weights and transitions between
phonemes."' 837 F.3d at 1313-14 (internal citation omitted). The claims in
McRO were defined a specific way to solve the problem, automating tasks
that previously were not automated because they were driven by subjective
determinations, rather than specific mathematical rules. Id. at 1314.
Moreover, the existing technological process was improved by the
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incorporation of the claimed rules ( e.g., evaluating sub-sequences,
generating transition parameters, and applying transition parameters to
create a final morph weight set) to allow automation of further tasks. Id.
Appellants contend the "automated mapping of product subgroups in
adjacency groups" is the alleged improvement, and claim 1 includes features
analogous to the "rules" in McRO, such as involving priority values assigned
to various criteria, including user-editable criteria, non-user-editable criteria,
and a persistence criterion. Reply Br. 8. We disagree the claims are like
those in McRO.
Claim 1 does not recite a specific improvement to computers or recite
the technical details that describe the alleged improvement of the technical
process, such as incorporating the specific features of the "rules." See
McRO, 837 F.3d at 1313. For example, although claim 1 recites generating
the product subgroup map based on (1) the user inputs for each of the user-
editable mapping criteria, (2) the priority values assigned to the user-editable
mapping criteria, (3) the priority values assigned to the non-user-editable
mapping criteria (persistence criterion), and (4) data indicating the physical
layout of the store, claim 1 does not recite technical details as to how the
product subgroup should be generated based upon these four different
inputs. Instead, claim 1 merely recites collecting, analyzing, and displaying
information along with generic computer elements (e.g., "a computing
system").
Appellants further argue "[ n ]othing in these steps may be considered
necessary, routine, or conventional in terms of the fundamental abstraction
set forth by the Office Action" because "[t]he Office Action itself noted that
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the emphasized portion of the feature cited above 'is not obvious in view of
the prior art of record or any combination thereof."' App. Br. 14.
Appellants improperly conflate the requirements for patent-eligible
subject matter (under§ 101) with the independent requirements of novelty
(under§ 102) and non-obviousness (under§ 103). "The 'novelty' of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981); see also Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, "under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature ( or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility").
With respect to the second step in the Alice analysis, Appellants argue
claim 1 "does not 'seek to tie up any judicial exception such that others
cannot practice it."' App. Br. 16 (internal citation omitted). Appellants
further argue "claim 1 recites more than well-understood, routine and
conventional elements and, instead, recites a specific technique that confines
the claim to a particular application without seeking to pre-empt all
techniques for 'organizing the product layout of a retail store."' App. Br. 17.
Appellants further argue claim 1 describes a "new and automated way of
generating [the] interface." Reply Br. 10.
Appellants' arguments are not persuasive. Rather, we agree with the
Examiner that claim 1 amounts to no more than instructions to implement
the abstract idea on a computer. See Final Act. 5. Appellants have not
directed our attention to anything in the record that shows, nor can we find,
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any specialized computer hardware or other "inventive" computer
components are required.
Rather than reciting additional elements that amount to "significantly
more" than the abstract idea, the pending claims, at best, add only a generic
"computing system," "processor," "storage device," and "user interface"
(see Spec. ,r,r 49, 52-54, 60-68, 72-92, Figs. 1--4), which does not satisfy
the inventive concept. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point.") (internal
quotation marks and citation omitted). As recognized by the Supreme Court,
"the mere recitation of a generic computer cannot transform a patent-
ineligible abstract idea into a patent-eligible invention." See Alice, 134 S. Ct.
at 2358-59 ( concluding claims "simply instruct[ing] the practitioner to
implement the abstract idea of intermediated settlement on a generic
computer" not patent eligible); Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims
reciting "generalized software components arranged to implement an
abstract concept ... [ of generating insurance-policy-related tasks based on
rules to be completed upon the occurrence of an event] on a computer" not
patent eligible).
Appellants' preemption argument does not alter our § 101 analysis.
This argument is adequately addressed by the remainder of the Alice
analysis. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) ("Where a patent's claims are deemed only to disclose
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patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot."); see
also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed.
Cir. 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.").
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claim 1 under 35 U.S.C. § 101, so we, therefore, sustain the
rejection. For the same reasons, we sustain the Examiner's 35 U.S.C. § 101
rejection of dependent claims 2 and 4--12, which are not separately argued
(App. Br. 18), as well as independent claims 13 and 17 and their respective
dependent claims 14--16, and 18-20, for which Appellants presented the
same arguments (App. Br. 20-21 ).
DECISION
We affirm the Examiner's 35 U.S.C. § 101 rejection of claims 1, 2,
and 14--20.
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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