Ex Parte Liu et al

Patent Trial and Appeal Board

Aug 29, 2018

13841629 (P.T.A.B. Aug. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/841,629 03/15/2013 XingchuLiu
34018 7590 08/31/2018
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
072031.97US2 2416
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/31/2018 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):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte XINGCHU LIU and LUKAS BOUVRIE
Appeal2017-006743
Application 13/841,629 1
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and MICHAEL J. ENGLE,
Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-12 and 19-22, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "pricing retail products and particularly to
revenue management, price sensitivity analysis and price optimization of
retail products in an online environment." Spec. ,r 2.
1 According to Appellants, the real parties in interest are Home Depot
Product Authority, LLC and The Home Depot, Inc. App. Br. 3.
Appeal2017-006743
Application 13/841,629
Illustrative Claim
Claim 1 is illustrative and reproduced below:
1. A computer-implemented method for optimizing product
price, the method comprising:
generating a control set, using a processor of a system that
is coupled to the internet, based on input by a customer via a user
interface running on a client device associated with the customer,
the control set comprising at least one product;
generating a test set, using the processor, based on input
by the customer via the user interface, the test set comprising at
least one product of the same type as the at least one product in
the product set;
changing, using the processor, a feature of the at least one
product in the test set, the feature being visible on a web page of
the customer via the internet, while maintaining the feature of the
at least one product in the control set, and measuring competitor
responses to the changing, the feature comprising price and the
changing comprises making multiple price changes separated by
increments, where at least one later increment is larger than an
earlier increment;
collecting internet data comprising at least one of unique
visitors to the web page, visitor time spent on the web page, or
visitor time from first visit to the web page to purchase of the at
least one product in the test set; and
generating a recommendation, using the processor, with
respect to the feature of the at least one product in the test set
based on the measured responses and on the collected internet
data.
Rejection
Claims 1-12 and 19-22 stand rejected under 35 U.S.C. § 101 as being
directed to ineligible subject matter without significantly more. Final Act.
4---6.2
2 The Examiner withdrew the rejections under 35 U.S.C. § 103. Ans. 3.
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Appeal2017-006743
Application 13/841,629
ANALYSIS
Section 101 defines patentable subject matter: "Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
( quotation omitted). To determine patentable subject matter, the Supreme
Court has set forth a two-part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
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Application 13/841,629
In the second step, we "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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has "described step two of this 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." Id. (quotation omitted).
Here, the Examiner determines that claim 1 is
directed to the abstract idea of optimizing product price by
generating a control set, generating a test set, changing a feature
of a product in the test set while maintain[ing] the feature of the
product in the control set and measuring a competitors responses
to the changing, and generating a recommendation with respect[]
to the feature based on the measured response and collected
internet data.
Final Act. 5. The Examiner further determines (Final Act. 5) that
"[ o Jptimizing product price can be considered an example of a fundamental
economic practice," and analogizes to computing the pricing of a fixed
income asset (i.e., property) in Federal Home Loan Mortgage Corp. v.
GrafflRoss Holdings, LLP, 604 F. App'x 930 (Fed. Cir. 2015) (affirming
§ 101 ineligibility under Rule 36).
For Alice step one, Appellants argue that the Examiner's abstract idea
is "complex" and lacks the "simplicity" of the abstract idea examples in the
PTO's guidance on subject matter eligibility. App. Br. 8-9; Reply Br. 2-3.
However, Appellants do not sufficiently challenge the Examiner's
determination that optimizing product price is a "fundamental economic
practice long prevalent in our system of commerce." Alice Corp. v. CLS
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Appeal2017-006743
Application 13/841,629
Bankint'l, 134 S. Ct. 2347, 2356 (2014) (quoting Bilski v. Kappas, 561 U.S.
593, 611 (2010)). To the contrary, as the Examiner notes (Ans. 5), the
Specification explains that "[ c ]ompetitive intelligence as it relates to pricing
has been an important aspect of the retail business for decades." Spec. ,r 3.
For Alice step two, Appellants argue that the claims, "when
considered as an ordered combination, recite a technology-based solution to
an Internet-centric problem of how to optimize prices based on website
activity." App. Br. 10. Appellants also point to "specific steps" in the
claims that (1) "include significantly more than the alleged abstract idea"
and (2) "ensure that the claims do not preempt the use of the alleged abstract
idea." Id. at 9. However, Appellants' "specific steps" fall into three
categories, none of which are persuasive.
First, Appellants rely on limitations such as "using a processor of a
system that is coupled to the internet." App. Br. 9--10. However, the
Federal Circuit has "repeatedly held that such invocations of computers and
networks that are not even arguably inventive are insufficient to pass the test
of an inventive concept in the application of an abstract idea." Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (quotation
omitted); see also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) ("That a computer receives and sends the information over a
network-with no further specification-is not even arguably inventive.").
Similarly, Appellants' reliance on the product's price "being visible on a
web page" is insufficient because the Federal Circuit has held that "the
practices of collecting, analyzing, and displaying data, with nothing more,
are practices whose implicit exclusion from § 101 undergirds the
information-based category of abstract ideas." Fair Warning IP, LLC v.
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Application 13/841,629
Iatric Sys., Inc., 839 F.3d 1089, 1097-98 (Fed. Cir. 2016) (quotation
omitted).
Second, Appellants point to certain limitations, such as the control set
and the test set "comprising at least one product of the same type," to
establish that that claims "include significantly more than the alleged
abstract idea." App. Br. 9-10. However, these limitations are part of the
abstract idea of optimizing product pricing. "It has been clear since Alice
that a claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
more' than that ineligible concept." BSG Tech LLC v. Buyseasons, Inc., No.
2017-1980,_F.3d_, 2018 WL 3862646, at *7 (Fed. Cir. Aug. 15, 2018).
Third, Appellants point to "collecting internet data" comprising "at
least one of [(A)] unique visitors to the web page, [(B)] visitor time spent on
the web page, or [(C)] visitor time from first visit to the web page to
purchase of the at least one product in the test set." App. Br. 9-10. As
discussed above, we agree with the Examiner (Ans. 4--5) that "the practices
of collecting ... data, with nothing more, are practices whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas." FairWarning, 839 F.3d at 1097-98 (quotation omitted). At best,
this merely puts the abstract idea into a field of use of the Internet, yet "[t]he
Supreme Court and this court [i.e., the Federal Circuit] have repeatedly
made clear that merely limiting the field of use of the abstract idea to a
particular existing technological environment does not render the claims any
less abstract." Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 F.3d 1253,
1259 (Fed. Cir. 2016); Alice, 134 S. Ct. at 2358.
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Application 13/841,629
Finally, we agree with the Examiner that "preemption is not a
standalone test." Ans. 4--5. "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). "Where 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."
Id.
Accordingly, we sustain the Examiner's rejection of independent
claims 1 and 7, and their dependent claims 2---6, 8-12, and 19-22, which
Appellants do not substantively argue separately. See App. Br. 7-10; 37
C.F.R. § 4I.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-12 and 19-22.
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.
§ 41.50(±).
AFFIRMED
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