Ex Parte Lu et al

Patent Trial and Appeal Board

Aug 10, 2017

13192576 (P.T.A.B. Aug. 10, 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.
13/192,576 07/28/2011 Zhidong Lu T0647.70001US01 6307
23628 7590 08/14/2017
WOLF GREENFIELD & SACKS, P.C.
600 ATLANTIC AVENUE
BOSTON, MA 02210-2206
EXAMINER
HAQ, NAEEM U
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
08/14/2017 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):
Patents_eOfficeAction@WolfGreenfield.com
W GS_eOffice Action @ W olfGreenfield .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZHIDONG LU and JOHN STAUFFER
Appeal 2016-000753
Application 13/192,576
Technology Center 3600
Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants1 appeal under 35U.S.C. § 134 from the Examiner’s
Final Rejection of claims 1, 2, and 5—20. We have jurisdiction over this
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 “The real party in interest in this appeal is True Fit Corporation.” (Appeal
Br. 4.)
Appeal 2016-000753
Application 13/192,576
STATEMENT OF THE CASE
According to the Appellants, “[t]his invention relates to determining a
likelihood that an item, such as an item of apparel or shoes, will suit a
consumer based at least in part on the consumer's previous experiences with
one or more other items.” (Spec. 1.)
Illustrative Claim
1. A method, for use in a computer system comprising at
least one computer processor, of determining a likelihood that a
subject item will suit a subject consumer, the method comprising:
(A) receiving data describing a plurality of previous
experiences by the subject consumer with a plurality of items,
each of the plurality of items and the subject item being
susceptible to characterization along a plurality of dimensions,
the plurality of dimensions comprising a first dimension and a
second dimension, the first dimension comprising a size, the
second dimension comprising one of a target age range and an
ease of fit, each of the plurality of dimensions having a plurality
of possible values;
(B) receiving data indicating a value for the first
dimension and the second dimension for each of the plurality of
items;
(C) based at least in part on the data received in (A) and
(B), determining, using the at least one computer processor,
whether an item is likely to suit the subject consumer along each
of the plurality of dimensions, the determining comprising
ascribing greater importance to one of the plurality of previous
experiences by the subject consumer with one of the plurality of
items than to another of the plurality of previous experiences by
the subject consumer with another of the plurality of items; and
(D) based at least in part on the determination in (C),
determining, using the at least one computer processor, whether
the subject item is likely to suit the subject consumer.
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Application 13/192,576
Rejection
The Examiner rejects claims 1, 2, and 5—20 under 35 U.S.C. § 101 as
failing to recite patent-eligible subject matter. (Final Action 2.)
ANALYSIS
Independent claim 1 recites “[a] method, for use in a computer system
comprising at least one computer processor.” (Appeal Br., Claims App.)
The claimed method requires four steps: a data-receiving step (A), another
data-receiving step (B), a determining step (C), and another determining
step (D) that resolves “whether [a] subject item is likely to suit [a] subject
consumer.” (Id.) According to the Appellants, the “meaningful limitations”
in independent claim 1 “relate to receiving particular types of information,
and analyzing that information in particular ways to determine whether an
item is likely to suit a consumer.” (Id. at 16—17.)
The Examiner determines that independent claim 1 is directed to
“assisted shopping” which is a “fundamental economic practice” and, thus, an
“abstract idea.” (Final Action 2.) The Examiner also determines that the
additional elements recited in independent claim 1 amount to “generic
computer components” that “perform their basic functions of receiving,
storing, processing, and displaying data.” (Id. at 3.) More succinctly, the
Examiner determines that independent claim 1 does not pass muster under the
Alice test.
With the Alice test, there are two steps for distinguishing between an
“abstract idea[]” and a “patent-eligible application^” of an abstract idea.
Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014). The
first step of the Alice test is to consider whether the claims at issue are
“directed to” an abstract idea. Id. If so, the inquiry proceeds to the second
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Application 13/192,576
step of the Alice test where the elements of the claims are considered
“individually and ‘as an ordered combination”’ to evaluate whether there are
additional elements that ‘“transform the nature of the claim’ into a patent-
eligible application.” Id.
With respect to first step of the Alice test, the Appellants argue that
fundamental economic practices are confined to “financial markets,
producing or distributing income or wealth, or the organization or
administration of economic system,” and something as simple as “assisted
shopping” does not qualify as a fundamental economic practice. (Reply
Br. 3 ; see also Appeal Br. 11—15.)
We are not persuaded by this argument because it is contrary to
Federal Circuit precedent reflecting that less sophisticated financial concepts
can also constitute fundamental economic practices. In In re Smith 815
F.3d. 816 (Fed. Cir. 2016), for example, the claims on appeal recited a
method of conducting a wagering game utilizing a deck of playing cards. Id.
at 817—18. The Federal Circuit held that the claimed wagering game
“compare[d] to other ‘fundamental economic practice[s]”’ and was “drawn
to an abstract idea much like Alice’s method of exchanging financial
obligations and Bilski’s method of hedging risk.” Id. at 818—19.
Moreover, as indicated above, the ostensibly meaningful limitations in
independent claim 1 are information centric as they relate only to the content
of the data received and the analysis thereof. (See Appeal Br. 17.) Even
absent an economic aspect, a claim that focuses on gathering information of
a particular content and analyzing this information in particular ways still
falls squarely under the abstract-idea umbrella. In Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), for example, “a large
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Application 13/192,576
portion of the lengthy claims [was] devoted to enumerating types of
information and information sources available within the power-grid
environment,” but the Federal Circuit still held that the claims were
“directed to an abstract idea.” Id. at 1354—55. Hence, the limitations listed
in independent claim 1 regarding particulars of the received data, and/or
details about the analysis/output thereof, do not elevate the claimed method
above an abstract idea.
As for the second step of the Alice test, the Appellants argue that
independent claim 1 contains meaningful limitations that “go far beyond
mere instruction to implement” an abstract idea “on a generic computer
system.” (Appeal Br. 17.)
We are not persuaded by this argument because, as discussed above,
these allegedly meaningful limitations relate only to the content of the
information received and the analysis thereof. Federal Circuit precedent
establishes that merely selecting information (by content or source) for
collection, analysis, and/or display does nothing significant to differentiate a
process from the information-based category of abstract ideas. In Electric
Power Group, for example, the Federal Circuit held that “limiting the claims
to the particular technical environment of power-grid monitoring” was
“insufficient to transform them into patent-eligible applications of the
abstract idea at their core.” Id. at 1354.
The Appellants also advance arguments premised upon the claimed
method providing a rooted-in-computer-technology solution to a problem
that arises in the realm of computer networks and only in the digital age.
(See Appeal Br. 17—19; see also Reply Br. 6—7.) According to the
Appellants, the claimed method “overrides the routine and conventional
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sequence . . . triggered by an online purchase transaction” when “a consumer
clicks a hyperlink to purchase an item from an online merchant.” (Appeal
Br. 18.) Also, according to the Appellants, “[t]he sheer number of
consumers seeking to make online purchases” necessitates “the use of
comput[er] technology.” (Id. at 19.)
Without even looking at § 101 implications, we are unpersuaded by
these arguments because they are not commensurate with the scope of
independent claim 1. Independent claim 1 is not restricted to online
purchase transactions, does not mention hyperlinking, and does not specify
computer components capable of serving a high volume of consumers. (See
Appeal Br., Claims App.) Claim 1 simply requires certain steps to be
performed using “at least one computer processor.” (Id.)2
As for the Appellants’ arguments premised upon the principle of
preemption (see Appeal Br. 15—16; see also Reply Br. 4—6), preemption
concerns are fully addressed and made moot when, as here, a claim is shown
to recite only patent ineligible subject matter under the Alice test. “While
preemption may signal patent ineligible 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).
Thus, we sustain the Examiner’s rejection of independent claim 1
under 35 U.S.C. § 101.
2 For this reason alone, independent claim 1 is immediately distinguishable
from those at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014) which recited a “web browser,” a “source page,” a
“first web page,” an “active link,” an “associated link,” and an automatic
generation/transmission of a “second web page” to the web browser. Id. at
1249-50.
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Independent claims 10 and 16 recite data-receiving and determining
limitations akin to those recited in independent claim 1. (See Appeal Br.,
Claims App.) The Appellants argue only that “[f]or reasons similar to those
discussed above with reference to claim 1,” the Examiner’s rejection of
independent claims 10 and 16 is also improper. (Id. at 23—24, 27—28.) As
we agree with the Examiner that independent claim 1 does not pass muster
under the Alice test, we are unpersuaded by these arguments.
Thus, we sustain the Examiner’s rejection of independent claims 10
and 16 under 35 U.S.C. § 101.
The rest of the claims on appeal (i.e., claims 2, 5—9, 11—15, and 17—20)
depend directly or indirectly from one of the above-discussed independent
claims. (See Appeal Br., Claims App.) The Examiner determines that the
dependent claims are “directed to an abstract idea without adding
significantly more to the idea itself.” (Answer 6.) Although the Appellants
discuss the dependent claims under separate subheadings, they do not advance
any substantive arguments beyond those addressed above in our analysis of
independent claim 1. (See Appeal Br. 20-30.)3
Thus, we sustain the Examiner’s rejection of dependent claims 2, 5—9,
11-15, and 17-20 under 35 U.S.C. § 101.
3 The Appellants allude to possibility that the dependent claims recite
additional elements that would alter the outcome of the Alice test, but they
do not direct our attention to these supposedly significant limitations. (See
Appeal Br. 20—30.) Moreover, our review of the dependent claims reveals
that the recited additional limitations pertain only to particulars of the
received data (e.g., claims 5, 6, 8, 11, 12, 15, 18, 19) and/or details about the
analysis/ output thereof (e.g., claims 2, 7, 9, 13, 14, 17, 20). (See id., Claims
App.) As discussed above, such limitations do little to elevate the status of
an abstract idea and/or transform it into a patent-eligible application.
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DECISION
We AFFIRM the Examiner’s rejection of claims 1, 2, and 5—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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