Ex Parte Jayaraman et al

Patent Trial and Appeal Board

Sep 19, 2017

12870437 (P.T.A.B. Sep. 19, 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.
12/870,437 08/27/2010 Praveen K. Jayaraman 2043.852US1 9817
49845 7590 09/21/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PRAVEEN K. JAYARAMAN,
SHAILESH SHILWANT,
DONALD JAMES PERCIFUL, and
DWAYNE ANDERSON
Appeal 2015-000573
Application 12/870,4371
Technology Center 3600
Before HUBERT C. LORIN, AMEE A. SHAH and
ROBERT J. SILVERMAN, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Praveen K. Jayaraman, et al., (Appellants) seek our review under
35 U.S.C. § 134 of the final rejection of claims 1—10, 12—18, and 21. We
have jurisdiction under 35 U.S.C. § 6(b) (2002).
SUMMARY OF DECISION
We AFFIRM but denominate the affirmance as a NEW GROUND OF
REJECTION.
1 The Appellants identify eBay Inc., as the real party in interest. App. Br. 2.
Appeal 2015-000573
Application 12/870,437
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
1. A method comprising:
identifying an item for disposal;
selecting, automatically using one or more processors, a
category representative of the item identified for disposal;
determining, using one or more processors, a disposal option
for the item from a plurality of available disposal options based at
least in part on the category selected as representative of the item, the
disposal options including resale, donation, and recycling;
determining, using one or more processors, a value associated
with the item, the determining the value including calculating an
average selling price and a current demand for the item within a
selected sales channel;
determining, using one or more processors, an incentive for the
disposal option, the incentive including at least one of: the average
selling price and a non-monetary incentive associated with the item;
and
presenting the disposal option and the incentive to a user.
The Examiner relies upon the following as evidence of
unpatentability:
appeal.
THE REJECTIONS
Silverbrook
Roseman
Gonen
Bowles
US 2008/0270259 A1
US 7,472,077 B2
US 2009/0024479 A1
US 2010/0088192 A1
Oct. 30, 2008
Dec. 30, 2008
Jan. 22, 2009
Apr. 8, 2010
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Application 12/870,437
“[OJfficial notice is taken that when plurality of options are provided,
it is well known to display all the options to the user for selection.”
Final Act. 8. [Official Notice]
The following rejections2 are before us for review:
1. Claims 1—10, 12—18, and 21 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
2. Claims 1—10, 12—18, and 21 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description
requirement.
3. Claims 1—10, 12—18, and 21 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Bowles, Official Notice, Gonen, Roseman,
and Silverbrook
ISSUES
Did the Examiner err in rejecting claims 1—10, 12—18, and 21 under
35 U.S.C. § 101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 1—10, 12—18, and 21 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement?
Did the Examiner err in rejecting claims 1—10, 12—18, and 21 under
35 U.S.C. § 103(a) as being unpatentable over Bowles, Official Notice,
Gonen, Roseman, and Silverbrook?
2 Claim 11 was canceled. See Final Rejection 2. The Answer and Reply
Brief present statements of rejections that inadvertently include claim 11.
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Application 12/870,437
FINDINGS OF FACT
We rely on the Examiner’s factual findings stated in the Answer.
Additional findings of fact may appear in the Analysis below.
ANALYSIS
The rejection of claims 1—10, 12—18, and 21 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
The Appellants argued these claims as a group. See Reply Br. 2—9.
We select claim 1 as the representative claim for this group, and the
remaining claims 2—10, 12—18, and 21 stand or fall with claim 1. 37 C.F.R.
§41.37(c)(l)(iv).
We will affirm the rejection, but our reasoning differs from that of the
Examiner and, accordingly, we denominate the affirmance as a new ground
of rejection.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that "[t]he claims are directed
to the abstract idea of a fundamental economic practice and /or a
mathematical relationship." Ans. 15—16.
The Appellants argue that the Examiner has failed to adequately
explain what abstract idea the claims are directed to. See Reply Br. 3 ("the
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abstract ideal must actually be identified, which the Examiner fails to do in
this new ground of rejection"). We agree.
35U.S.C. § 132 sets forth a more general notice requirement whereby
the applicant is notified of the reasons for a rejection together with such
information as may be useful in judging the propriety of continuing with
prosecution of the application. See, e.g., In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011); see also July 2015 Update 6 (setting forth a general notice
requirement whereby the Examiner should “clearly articulat[e] the reason(s)
why the claimed invention is not eligible” when rejecting on under
35 U.S.C. § 101); May 2016 Memorandum 2 (“the rejection . . . must
provide an explanation . . . which [is] sufficiently clear and specific to
provide applicant sufficient notice of the reasons for ineligibility.”)
Adherence to the general notice requirement pursuant to 35 U.S.C. § 132 is
ensured if the foundation for determining whether claimed subject matter is
judicially-excepted from patent-eligibility is clearly articulated — which
would include performing, as a first step, an inquiry into what the claims are
directed to.
Taking claim 1 as representative of the claims on appeal, the claimed
method comprises conducting six steps: (a) "identifying an item for
disposal"; (b) "selecting ... a category" for said identified item"; (c)
"determining ... a disposal option ... based [on said] category ... the disposal
options including resale, donation, and recycling"; (d) "determining ... [a]
value associated with [said] item ... the value including calculating an
average selling price and a current demand for the item within a selected
sales channel"; (e) "determining ... an incentive for [said] disposal option ...
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the incentive including at least one of: the average selling price and a non­
monetary incentive associated with the item"; and, (f) "presenting the
disposal option and the incentive to a user."
A plain reading of the claim leads one to view the claimed invention
as being directed to, at a high level of abstraction, option determining or, at a
lower level of abstraction, item disposal option determining based on
category, value, and incentive.
Evidence, by way of the Specification, supports this view. The
Specification indicates that the "application relates ... more specifically to
methods and systems to determine options for disposal of various items
available within network-based publication systems or commerce facilities."
Para. 2. In the "BACKGROUND," the Specification explains the problem
this way: "[ojptions for disposal of old items have grown significantly with
the advent of Internet based market places ... and online classifieds .... In
addition to re-sale opportunities, recycling and charitable donation
opportunities have also grown in popularity, especially with people wishing
to make earth friendly disposal decisions. However, with the growth in
options available for disposing of old items comes a much more complex
process of determining the most beneficial option for any particular item."
Para. 3. The solution, according to the Specification, is to provide "systems
and methods to determine item disposal options, [and] in some example
embodiments, [to] provide a user with one or more options for disposing of
an item, such as re-selling it, donating it to charity, or recycling." Para. 18.
See also para. 19:
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In accordance with an example embodiment, the system
can guide a user towards appropriate disposal options for a
particular item based on various factors including, average
selling price, demand, shipping costs, and available recycling
options. In certain examples, the disposal options can be
affected by the availability of non-monetary incentives (e.g.,
rewards) for recycling or donation of certain items. The non­
monetary incentives can be provided by an organization
operating the network-based publication or commerce system.
The “directed to” inquiry of the Alice step one determination asks
whether, “considered in light of the [patent’s] specification,” the “character”
of the claims at issue is directed “as a whole ... to [patent-ineligible] subject
matter.” Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016). We must ask whether the “focus of the claimed advance over the
prior art” is directed to patent-ineligible subject matter. Affinity Labs of
Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016). In that
regard, the Specification supports finding the focus of the claimed advance
over the prior art as being on, generally-speaking, option determining or, as
claim 1 more specifically calls for, item disposal option determining based
on category, value, and incentive.
Option determining is an age-old conventional business practice. One
commonly weighs the pros and cons before choosing among available
options. A good case can be made that option determining is an abstract
idea. “[Fundamental economic and conventional business practices are
often found to be abstract ideas, even if performed on a computer.” Enfish,
822 F.3d at 1335 (citing OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362—63 (Fed. Cir. 2015)). Yet it is “sufficient to compare claims at
issue to those claims already found to be directed to an abstract idea in
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previous cases.” Enfish, 822 F.3d at 1334. In that regard, as one example,
see claim 50 of US 7,714,705 at issue in Concaten, Inc. v. Ameritrak Fleet
Solutions, LLC, 131 F. Supp. 3d 1166 (D. Colo. 2015), affd, 2016 WL
5899749 (Mem.) (Fed. Cir. 2016), cert, denied, 2017 WL 1001313 (2017),
which is similarly a method of option determining found to be unpatentably
drawn to an abstract idea. Also cf. SmartGene, Inc. v. Advanced Biological
Laboratories, SA, 555 Fed. App’x 950 (Fed. Cir. 2014), cert, denied, 135
S. Ct. 58 (2014) ("the mental steps of comparing new and stored information
and using rules to identify medical options").
As to the less abstract item disposal option determining, it too is a
conventional business practice — as the “BACKGROUND” of the
Specification makes clear. In choosing among conventional options for
disposing of an item, its category and value, and whatever incentive there
might be, are generally taken into consideration. Thus, a good case could be
made that item disposal option determining based on category, value, and
incentive, too, is a conventional business practice and, accordingly, an
abstract idea.
On pages 2—6 of the Reply Brief, the Appellants argue that
[claim 1 ] is not directed to a law of nature, natural phenomena,
or an abstract idea, as the claim is manifestly not directed to a
law of nature or a natural phenomena, which leaves only an
abstract idea. The claims are not directed to an abstract idea;
because [... ] this claim is not directed to the subject matter of
any of the only three types of claims that the Court has
positively identified as being within the implicit exception to
subject matter eligibility: (1) an idea or algorithm of itself, (2) a
mathematical formula, or a (3) a fundamental economic
practice [(Reply Br. 4),]
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and then contends for each of these types of abstract idea, respectively, that
(1) "a patent on independent claim 1 would not be a patent on an algorithm
itself' (Reply Br. 5), (2) "[a]t best, a portion of independent claim 1 applies a
mathematical formula for calculating an average in calculating an average
selling price, but this is merely a small portion of the claim and does not
preempt all (or even most) uses of calculating an average" (Reply Br. 5), and
(3)
independent claim 1 is not directed to a fundamental economic
practice long prevalent in our system of commerce, such as risk
hedging or intermediated settlement. Instead, independent claim 1 is
directed to a method to determine a disposal option for an item
selected from resale, donation or recycling based on factors such as
average selling price and current demand. Further, claim 1 also
includes factoring in any available incentives for selecting a particular
disposal option
(Reply Br. 6).
The difficulty with the argument is that the category of abstract ideas
to which claims may be directed to is not limited to (1) an idea or algorithm
of itself, (2) a mathematical formula, or a (3) a fundamental economic
practice. “[I]n applying the §101 exception [Laws of nature, natural
phenomena, and abstract ideas], 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 [Mayo], thereby “transform[ing]”
them into a patent-eligible invention [Mayo].” Alice, 134 S. Ct. at 2355.
(Emphasis added.) The former ‘would risk disproportionately tying up the
use of the underlying’ ideas, *2355 id., at------- , 132 S.Ct., at 1294, and are
therefore ineligible for patent protection.” Alice, 134 S. Ct. at 2354—2355.
Thus, the abstract idea category of judicially-excepted subject matter
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broadly covers building blocks of human ingenuity. Like fundamental
economic practices, determining one's options is such a building block.
Whether option determining is or is not a "fundamental economic practice,"
it is nevertheless a concept fairly characterized as a building block of human
ingenuity. Option determining is a fundamental practice of human behavior
that, for example, is commonly resorted to as one tries to reach the best
outcome. Therefore, like fundamental economic practices, option
determining is an abstract idea.
The claimed method focuses on the common business of disposing
items (via resale, donation or recycling) while taking into consideration
conventional "factors such as average selling price and current demand"
(Reply Br. 6). But this does not make it any less abstract because it does no
more then limit the option determining concept to a particular known
environment; that is, item disposal. Cf. Return Mail, Inc. v. United States
Postal Service, United States, 2017 WL 3687450, *13 (Fed. Cir. 2017)
(“‘[L]imit[ing] the abstract idea to a particular environment,’ here a mail
processing system with generic computing technology, ‘does not make the
claims any less abstract for the step 1 analysis’”) {quoting In re TLI
Commc'ns LLCPatent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)).
Step two is “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, 134 S. Ct. at 2355 (alteration in original) {quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). (Emphasis added.)
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We do not see an element or a combination of elements included in
claim 1 that is sufficient to add significantly more to the option determining
concept. Only four of the six steps are tied to a device and the recited device
is a "processor." The determining steps call for "using one or more
processors" and the selecting step calls for "automatically using one or more
processors." In light of the Specification, "processor" is reasonably broadly
construed to cover generic computers. See paras. 22—27.
The Appellants argue that claim 1 "recites more than a generic
computer" and "recites a computer system that is specially-configured to
perform particular operations". Reply Br. 7 and 8, respectively. But claim 1
does not include any limitation to the recited "processor" so as to exclude
"generic" computers from its scope, let alone limit it to be "specially-
configured." All that claim 1 asks for is to "us[e] one or more processors."
Moreover, in light of the Specification, "processor" reads on a generic
computer as that claim term is reasonably broadly construed.
Finally, and similarly, the Appellants argue that "[g]iven the
particularities of the ways in which each operation is performed and the
particularities of the actors performing the operations, independent claim 1
cannot and does not preempt the making, using, and selling of basic tools of
scientific and technological work." Reply Br. 8. We disagree. We do not
see the claim 1 includes particularities — i.e., an element or combination of
elements — sufficient to ensure that the claim in practice amounts to
significantly more than to be upon the option determining concept itself.
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For the foregoing reasons, we affirm the rejection. Our reasons depart
from those of the Examiner. Accordingly, albeit affirmed, we denominate
the rejection as a new ground.
The rejection of claims 1—10, 12—18, and 21 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
The issue concerns the step of "selecting, automatically using one or
more processors, a category representative of the item identified for
disposal" (claim 1).
According to the Examiner,
Applicant specification publication (figure 4 (element 430), and
par. 0040 indicates "At 430, the method 320 can continue with
the /OR application 132 determining a category for the
identified item. For example, if the item is a used sofa, the
category selected can include household furnishings. The
category selected can depend upon the disposal options being
considered. For example, ebay.com maintains an extensive
catalog of categories for classifying goods and services sold
online. In certain examples, the /OR application 132 can use a
pre-defined set of categories, such as that provided by a
network-based publication/commerce site like ebay.com. In
some examples, the /OR application 132 can use some industry
standard set of categories to classify the identified item".
Final Rej. 3.
Said highlighted passage reproduced from the Specification appears to
disclose, at the very least, selecting a category (e.g., household furnishings)
representative of the item identified for disposal (e.g., sofa). This would
appear to provide adequate written descriptive support for said claim
limitation at issue.
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The Examiner disagrees, arguing that
it does not give enough the information or clearly explain of
showing how the IDR application 132 classify the item. In the
other words, what algorithm does the IDR use to do the
classification? As a result, Applicant does not have full clear,
concise, and exact terms to show what Applicant has possession
in the amended language "selecting, automatically using one or
more processors, a category representative of the item identified
for disposal "at the time of the filing of the application See
MPEP 2163 II 3(a)(i).
Final Rej. 3.
But the Examiner does not persuade us that more (such as disclosure
of an algorithm) is needed to show possession of the invention as claimed.
To satisfy this requirement, the specification must describe the invention in
sufficient detail so “that one skilled in the art can clearly conclude that the
inventor invented the claimed invention as of the filing date sought.”
Lockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997). “‘[I]t
is unnecessary to spell out every detail of the invention in the specification;
only enough must be included to convince a person of skill in the art that the
inventor possessed the invention.’ LizardTech[, Inc. v. Earth Resource
Mapping, Inc.], 424 F.3d [1336,] 1345 [(Fed. Cir. 2005)].” In re Alonso,
545 F.3d 1015, 1019 fn. 3 (Fed. Cir. 2008). Said step of "selecting,
automatically using one or more processors, a category representative of the
item identified for disposal" (claim 1) calls for doing little more than to use a
generic computer to select a category representing an item, a common
computer operation. Given the express disclosure of selecting a category
(e.g., household furnishings) representative of the item identified for
disposal (e.g., sofa) in the context of using a generic computer, we find that
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the Specification provides adequate written descriptive support for the claim
limitation at issue.
The rejection is not sustained.
The rejection of claims 1—10, 12—18, and 21 under 35 U.S.C. § 103(a) as
being unpatentable over Bowles, Official Notice, Gonen, Roseman, and
Silverbrook.
The issue concerns the step of "selecting, automatically using one or
more processors, a category representative of the item identified for
disposal" (claim 1).
The Examiner finds that Silverbrook discloses said claim limitation.
[T]he category representative of the item identified for
disposal as taught in BOWLES is not explicitly selected or
determined automatically using one or more processor.
SILVERBROOK discloses the known teachings of a
category or class of a product is automatically determined using
the processor e.g. Silverbrook pars. 0007, 0033 when the UPC
barcode of the product is scanned at the check- out,
item/product class is automatically identified.
Final Rej. 11. Paras. 7 and 33 are reproduced below:
[0007] For the purposes of automatic identification, a product
item is commonly identified by a 12-digit Universal Product
Code (UPC), encoded machine-readably in the form of a
printed bar code. The most common UPC numbering system
incorporates a 5-digit manufacturer number and a 5-digit item
number. Because of its limited precision, a UPC is used to
identify a class of product rather than an individual product
item. The Uniform Code Council and EAN International define
and administer the UPC and related codes as subsets of the 14-
digit Global Trade Item Number (GTIN).
[0033] At the checkout, the unique EPC of the item prevents it
from being recorded as a sale more than once. This allows the
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checkout to be partially or fully automated. Automatic scanning
of a traditional UPC bar code, which only identifies item class,
is problematic because multiple scans of the same item are
difficult to avoid and impossible to detect from the bar code
alone. In an automatic checkout the EPC of an item is typically
read many times to ensure that the EPC is read at all, but is only
recorded as a sale once. The unique EPC also prevents the
checkout operator from multi-scanning a single item to account
for a number of similar items, a common time-saving practice
which can lead to inventory inaccuracy and thereby undermine
automatic reordering and replenishment.
We do not see in these passages disclosure of"selecting ...a category
representative of the item identified for disposal" (claim 1).
Although the finding that "SILVERBROOK discloses the known
teachings of a category or class of a product is automatically determined
using the processor" (Final Rej. 11) is an accurate one given what
Silverbrook in fact discloses, Silverbrook does not disclose what is further
claimed; that is, to " select[ ] ... a category representative of the item
identified for disposal" (claim 1). Automatic scanning of a traditional UPC
bar code that only identifies (and thus determines) an item's class does not
involve a step of selecting a class as the claim requires. Scanning involves
reading, not "selecting" information.
For the foregoing reasons, a prima facie case of obviousness has not
been made out in the first instance by a preponderance of the evidence.
The rejection is not sustained.
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CONCLUSIONS
The rejection of claims 1—10, 12—18, and 21 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is affirmed but denominated as
a new ground of rejection.
The rejection of claims 1—10, 12—18, and 21 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description requirement
is reversed.
The rejection of claims 1—10, 12—18, and 21 under 35 U.S.C. § 103(a)
as being unpatentable over Bowles, Official Notice, Gonen, Roseman, and
Silverbrook is reversed.
DECISION
The decision of the Examiner to reject claims 1—10, 12—18, and 21 is
affirmed but the affirmed rejection of claims 1—10, 12—18, and 21 under
35 U.S.C. § 101 as being directed to non-statutory subject matter is
denominated as a new ground of rejection.
NEW GROUND OF REJECTION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to
the examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same record. . . .
AFFIRMED
37 C.F.R, $ 41.50(b)
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