Ex Parte Liu et alDownload PDFPatent Trial and Appeal BoardAug 29, 201813841629 (P.T.A.B. Aug. 29, 2018) Copy Citation 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. 2 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). 3 Appeal2017-006743 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 4 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. 5 Appeal2017-006743 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. 6 Appeal2017-006743 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 7 Copy with citationCopy as parenthetical citation