Ex Parte How et al

Patent Trial and Appeal Board

Mar 7, 2018

12573519 (P.T.A.B. Mar. 7, 2018)

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.
12/573,519 10/05/2009 Adrian Envin How 12587-0176001/ 6307
OP2040/U3
26212 7590 03/09/2018
FISH & RICHARDSON P.C. (ACCENTURE)
P.O. BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/09/2018 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADRIAN ENVIN HOW, JASMINE MEI PING KUA,
KIN YIP LAU, and MING HON WONG
Appeal 2016-003209
Application 12/573,519
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L MEDLOCK, and
PHILIP J. HOFFMAN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 21-26, 29-35, 38, and 39. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b). Appellants appeared for
oral hearing on January 30, 2018.
Appeal 2016-003209
Application 12/573,519
BACKGROUND
Appellants’ invention is directed to a system and method of
generating data relating to products and/or services. The invention is
particularly useful for generating configuration data relating to new tariff
and/or billing plans for products for a telecommunication service provider.
Spec. 1
Claim 21 is illustrative:
21. A computer-implemented method comprising:
providing, by one or more computers, a user interface
which displays representations of hierarchically arranged
packages that each represent a service that is available for
inclusion in a proposed configuration of a billing plan for
services to be offered to customers, wherein (i) each package is
associated with one or more products, (ii) each product is
associated with one or more components, (iii) each component
has one or more attributes, and (iv) each attribute has a label,
and a value, and wherein the proposed configuration of the
billing plan for services to be offered to customers is not yet
available to customers, and is proposed for testing as a
candidate billing plan for services to be offered to customers;
receiving, by the one or more computers through the user
interface, a user selection of a particular package for inclusion
by a service provider in a proposed configuration of a billing
plan for services to be offered to customers;
in response to receiving the user selection of the
particular package, determining that a category of customer for
which the configuration of the billing plan is proposed is
consistent with a category of customer corresponding to the
particular package;
in response to determining that the category of customer
for which the configuration of the billing plan is proposed is
consistent with the category of customer corresponding to the
particular package, providing, by the one or more computers,
for display in the user interface a hierarchically arranged
representation of one or more products associated with the
particular package, one or more components associated with
2
Appeal 2016-003209
Application 12/573,519
each of the one or more products for display in the user
interface, and an indication that the category of customer for
which the configuration of the billing plan is proposed is
consistent with the category of customer corresponding to the
particular package;
in response to providing for display in the user interface
the hierarchically arranged representation of one or more
products associated with the particular package, the one or more
components associated with each of the one or more products
for display in the user interface, and the indication that the
category of customer for which the configuration of the billing
plan is proposed is consistent with the category of customer
corresponding to the particular package,
receiving, by the one or more computers through the user
interface, a user selection of a particular component associated
with a particular product;
receiving, by the one or more computers through the user
interface, a user-input value for a particular attribute of the
particular component associated with the particular product;
updating, by the one or more computers, the proposed
configuration of the billing plan for services to be offered to
customers based on the user-input value for the particular
attribute of the particular component associated with the
particular product;
receiving, by the one or more computers through the user
interface, a user input that causes the service provider to
commit the proposed configuration of the billing plan for
deployment as a test configuration for the billing plan for
services to be offered to customers, wherein the billing plan of
the test configuration is not yet available to customers; and
testing, by the one or more computers, the test
configuration for the billing plan for services to be offered to
customers before offering the billing plan to one or more
customers in a production environment.
The Examiner relies on the following prior art references as evidence
of unpatentability:
3
Appeal 2016-003209
Application 12/573,519
Hanagan US 2004/0133487 A1 July 8, 2004
Walker US 2006/0014535 A1 Jan. 19,2006
Appellants appeal the following rejections:
Claims 21-26, 29-35, 38, and 39 under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 21-26, 29-35, 38, and 39 under 35 U.S.C. § 103(a) as unpatentable
over Hanagan and Walker.
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: “[ljaws 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. Id. 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
4
Appeal 2016-003209
Application 12/573,519
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, 594-95 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. 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 182 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
5
Appeal 2016-003209
Application 12/573,519
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.”).
ANALYSIS
Rejection under 35 U.S.C. § 101
The Examiner held that the claims are directed to generating tariff
and/or billing plans for telecommunications providers, which is a
fundamental economic practice, and, therefore, are directed to an abstract
idea. Final. Act. 2. The Examiner further determined that generating billing
plans for consumers is an intrinsic part of fundamental economic activity in
utilities and telecommunications business, and that displaying hierarchical
subscription packages on a graphical user interface and receiving user
selections are methods of organizing human activities. Ans. 2.
The Examiner found that the additional elements or combination of
elements in the claims, other than the abstract idea, does not amount to more
than mere instructions to implement the idea on a computer and/or
recitations of 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. 3. The
Examiner found that when viewed as a whole, these additional claim
elements do not provide meaningful limitations to transform the abstract
idea into patent eligible subject matter. Final. Act. 3. The Examiner further
found that the technological environment recited in the claims invokes or
contains no more than purely functional, routine and generic components for
6
Appeal 2016-003209
Application 12/573,519
providing interfaces, receiving user selections, determining associations
between products and packages, updating, testing, etc. without any
meaningful limitations. Ans. 3.
Appellants argue that the claims include one or more elements or a
combination of elements that is sufficient to ensure that the claims amount to
significantly more than any alleged abstract idea. App. Br. 6-7. This
argument is not persuasive because the Appellants do not state what these
elements or combination of elements is or explain how they are significantly
more. In addition, we agree with the Examiner that the claims include no
more than routine and generic components and steps such as providing
interfaces, receiving user selections, determining associations between
products and packages, updating, and testing, and, therefore, do not amount
to significantly more than the abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims do not attempt to preempt all uses of
the alleged abstract idea. App. Br. 7. “While preemption 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) (“[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, “[wjhere a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa,
788 F.3d at 1379.
7
Appeal 2016-003209
Application 12/573,519
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims require a graphical user interface to
overcome particular technological problems (App. Br. 7), because the
Appellants do not explain what these technological problems are and how
the graphical user interface overcomes these problems. In addition, we
agree with the Examiner’s response to this argument found on pages 2-3 of
the Answer and adopt it as our own. Appellants argue in the Reply Brief
that the claim limitations improve the functioning of the basic display
function of the computer itself and are necessarily rooted in computer
technology. Reply Br. 2. We find these arguments untimely. We note that
these new arguments were raised by Appellants for the first time in the
Reply Brief and they are not in response to a new issue brought up by the
Examiner in the Answer. Appellants are reminded that:
[T]he purpose of a reply brief is to ensure the Appellan t the
opportuni ty 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 occurred 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 opportunity 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 37(c)(])(vii) that
8
Appeal 2016-003209
Application 12/573,519
“[ajny 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 § 41.41” 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 brief, but are not, are waived.
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010), We, therefore,
consider Appellants’ argument raised in the Reply Brief to be waived.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 21. We will sustain the rejection as it is directed to the remaining
claims because the Appellants do not argue the separate patent eligibility of
these claims.
Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the applied prior art does not describe or
suggest providing a graphical user interface for display of an indication that
the category of customer for which the configuration of the billing plan is
proposed is consistent with the category of customer corresponding to the
particular package. App. Br. 8. We agree.
It is not clear from the Final Rejection what reference is relied on for
teaching this step of claim 21. The Examiner relies on Walker for teaching
displaying and modifying subscription packages but is not clear if Walker is
also relied on for disclosing providing an indication on the user’s graphical
9
Appeal 2016-003209
Application 12/573,519
user interface that the billing plan is consistent with the category of customer
corresponding to the package. Final. Act. 11.
In response to Appellants’ argument in the Appeal Brief that this
subject matter is not disclosed in the prior art, the Examiner explains that
Hanagan teaches different categories of customers, such as wireline and
wireless customers, and that the wireless products may have different
graphics beside them to denote a wireless product. Ans. 5. The Examiner
concludes that it would have been obvious to have different graphics for
residential and business customers in order to distinguish them from each
other and, thus, it would have been possible to determine whether a
customer is a residential or business user and whether a billing package is
consistent with the category. Ans. 5.
The problem with the Examiner’s analysis is that although it may be
true that it is possible in the Hanagan system to use different graphics for
residential and business customers, the Examiner has not established that
Hanagan discloses doing so. In addition, the Examiner has not established
that Hanagan or the other applied prior art teaches providing an indication of
whether a customer is residential or business in response to determining the
category of customer as required by claim 21.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 21, and claims 22-26 and 29 dependent therefrom. We
will not sustain the rejection as it is directed to the remaining claims for the
same reason.
DECISION
We affirm the Examiner’s § 101 rejection.
10
Appeal 2016-003209
Application 12/573,519
We do not affirm the Examiner’s § 103 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)(iv) (2009).
ORDER
AFFIRMED
11