Ex Parte Mayer

Patent Trial and Appeal Board

May 24, 2017

11928222 (P.T.A.B. May. 24, 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.
11/928,222 10/30/2007 Yaron Mayer P-BBM-7367-US 7056
91924 7590
NAOMI ASSIA
32 Habarzel Street
Tel-Aviv, 6971048
ISRAEL
05/26/2017 EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
05/26/2017 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):
naomih@computer-law.co.il
adi@computer-law.co.il
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YARON MAYER
Appeal 2015-003502
Application 11/928,2221
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 43, 44, 47, 49, 52—54, 58—72, and 74—82. We have
jurisdiction under 35 U.S.C. § 6(b). Claims 45, 46, 48, 50, 51, 55-57, and 73
are cancelled
SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Appellant identifies Batya Barhon as the real party in interest. (Br. 1.)
Appeal 2015-003502
Application 11/928,222
THE INVENTION
Appellant’s claims relate to a system and method for automatically
suggesting, in a price-comparison site, a division of a multi-product order
among various vendors, preferably based at least on product prices and
shipping costs. (Spec. 3.)
Claim 43, reproduced below, is representative of the subject matter on
appeal.
43. A system for automatic optimization of orders of
multiple desired items from multiple vendor websites, which
takes into account at least the item prices and the shipping
prices, and generates at least one acceptable offer, comprising a
computer or server running thereon software executing the steps
of:
searching multiple vendor websites for prices and
shipping charges of the desired items, and obtaining the results
from said searching;
executing computations to determine a theoretical
optimal offer based on a lowest price available for each item
and the shipment price if all of the items were available from
the vendor with the lowest shipment prices;
executing computations to finding said at least one
acceptable offer defined by being within an acceptable
maximum deviation from said theoretical optimal offer;
determining if multiple orders can be aggregated to a
single vendor and obtaining an reduction in item price, shipping
charge or both as a result of said aggregation; and
displaying said at least one acceptable offer to a user;
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Application 11/928,222
wherein rules for automatically changing the maximum
allowed deviation are applied according to the results after one
or more time checkpoints.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Yoda US 5,515,268 May 7, 1996
Loveland US 2001/0027404 A1 Oct. 4, 2001
Abdou US 2002/0107773 A1 Aug. 8, 2002
Alexander US 2002/0178014 A1 Nov. 28, 2002
Joshi US 2003/0023537 A1 Jan. 30, 2003
Thompson US 2003/0061146 A1 Mar. 27, 2003
The following rejections are before us for review.
Claims 43, 44, 47, 49, 52, 58—64, 67—69, 71, and 75—822 are rejected
under 35 U.S.C. § 103 as obvious over Alexander and Joshi.
Claims 53, 54, 72 are rejected under 35 U.S.C. § 103 as obvious over
Alexander in view of Official Notice.
Claim 65 is rejected under 35 U.S.C. § 103 as obvious over
Alexander, Joshi, and Abdou.
2 The Examiner indicates that claim 82 is rejected, but does not identify the
grounds for the rejection. Compare Final Act. 1 with id. at 2—15. We
consider this discrepancy to be an inadvertent error on the part of the
Examiner. We thus group claim 82 with the next upward dependent claim
which is claim 81. Claim 62, which is addressed in the rejection (Answer 8),
is substantially identical to claim 82, and our grouping them together with
claim 81 is thus proper.
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Application 11/928,222
Claim 66 is rejected under 35 U.S.C. § 103 as obvious over
Alexander, Joshi, and Yoda.
Claim 70 is rejected under 35 U.S.C. § 103 as obvious over
Alexander, Joshi, and Loveland.
Claim 74 is rejected under 35 U.S.C. § 103 as obvious over
Alexander, Joshi, and Thompson.
ANALYSIS
35 U.S.C. § 103 REJECTION
Concerning each of independent claims 43 and 63, the sole
independent claims before us on appeal, Appellant argues,
The Office Action provides no way of understanding the
rationale of the PTO from merely a citation of a figure and a
large block of text as applicable to multiple claim concepts.
For example, Alexander's paragraph [0019] recites “optimal
shopping order,” but the Office Action provides no indication
of whether that is supposedly the “acceptable offer” or the
“theoretical optimal offer” of the claims (or even if it is relied
upon to teach any component of the claims). If Alexander's
“optimal shopping order” is relied upon as teaching the claimed
“theoretical optimal offer,” there is no further developed
“acceptable offer[”] in the cited portions of Alexander. If
instead[,] Alexander's “optimal shopping order” is relied upon
as teaching the claimed “acceptable offer,” there is no earlier
present quantity identified that could be the “theoretical optimal
offer[,]” as used in the claims.
(Br. 7).
The Examiner, however, found,
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Alexander teaches a system and method for optimized shopping
taking into account prices and shipment prices (e.g. Abstract)
whereby the system automatically generates a single purchase
order for all items on a shopping list that satisfies optimization
criteria, including a lower boundary of cost, set by the user and
system (e.g. 10010). The system compiles a list of specific
items the user wishes to purchase (e.g. 10016) and identifies the
user’s preferred optimization/shopping criteria, such as lowest
total cost including shipping and taxes, preferred vendors[,] and
preferred shipping methods [] to be used in determining an
optimal shopping order (e.g. 10017). The system uses existing
optimization programs to search vendor websites and databases
for prices and shipping and execute computations based on
lowest price for each item if available from a single vendor and
other criteria to determine a first optimal shopping order, i.e. a
theoretical optimal offer (e.g. H0004, 0005, 0010, 0015 and
0019). The system can also execute computations to find at
least one acceptable offer from modifications made to the
theoretical optimum offer being within an acceptable maximum
deviation of the new criteria from the theoretical optimum offer
as the offer and display such offer (e.g. 10019-0021). When
optimizing, the system also determines if multiple orders can be
aggregated to a single vendor to obtain a lower cost, i.e. a
reduction in price, shipping or both (e.g. H0019-0022).
(Answer 3).
First, we disagree with Appellant that “[t]he Office Action provides
no way of understanding the rationale of the PTO” (Appeal Br. 7), because
the Answer makes it clear as to which claim items the Examiner maps.
We do not, however, agree with the Examiner’s finding (Answer 3)
that Alexander discloses the claimed “at least one acceptable offer” at
paragraphs 19-21. This is because the claims require “executing
computations to finding [sic] said at least one acceptable offer defined by
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being within an acceptable maximum deviation from said theoretical optimal
offer.”3 * * 6Thus, our interpretation of this limitation is that a “theoretical
optimal offer” must be established before “the at least one acceptable offer”
can be computed in order that an acceptable maximum deviation can be
applied against an ascertainable value, namely, the “theoretical optimal
offer.” At page 3 of the Answer, the Examiner maps “the at least one
acceptable offer” to paragraphs 19-22 of Alexander, which disclose, in part,
“repeating the optimization process of Step S4 periodically until a successful
optimization occurs” (Alexander 120). The Examiner reasons that the
process of Step S4 equates to “execut[ing] computations to find at least one
acceptable offer from modifications made to the theoretical optimum
offer...” (Answer 3). But, the claimed “acceptable offer” is defined by
being within an acceptable maximum deviation of the theoretical optima
offer. Thus, a theoretical optima offer must be determined before an at least
one acceptable offer can be computed. But, “repeating the optimization
process of Step S4 periodically until a successful optimization occurs,” as
described by Alexander, cannot be “within an acceptable maximum
deviation from said theoretical optimal offer,” as required by claims 43 and
63, because Alexander’s Step S4 only occurs if “the system is not able to
generate an optimal shopping order.” Alexander 120 (emphasis added).
Thus, the optimization process of Step 4 is done in lieu of, and not as a
3 According to the claims, the “theoretical optimal offer [is] based on a
lowest price available for each item and the shipment price if all of the items
were available from the vendor with the lowest shipment prices.
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continuation of, a process that uses the theoretical optimal offer value to
measure an acceptable maximum deviation.
Because claims 44, 47, 49, 52—54, 58—62, and 64—82 depend from
claims 43 and 63, respectively, and because we cannot sustain the rejection
of claims 43 and 63, the rejection of claims 44, 47, 49, 52, 53, 54, 58, 59, 60,
61, 62; and 64—82 likewise cannot be sustained.
New Ground of Rejection
Rejection under 35 U.S.C. §101 as Reciting an Abstract Idea
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a new
grounds of rejection against claims 43, 44, 47, 49, 52—54, 58—72, and 74—82.
Independent claims 43 and 63 recite the steps of:
searching multiple vendor sites for prices and
other relevant data;
executing computations to determine a theoretical
optimal offer based on a lowest price available for
each item;
executing computations needed for finding said at
least one acceptable offer defined by being within
an acceptable maximum deviation from said
theoretical optimal offer;
determining if multiple orders can be aggregated
to a single vendor and obtaining an reduction in
item price, shipping charge or both as a result of
said aggregation.
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The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, we
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
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. [The Court] 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.”
Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The two steps in claims 43 and 63 result in, “determining if multiple
orders can be aggregated to a single vendor and obtaining an [sic] reduction
in item price, shipping charge or both as a result of said aggregation.” (Br.,
Claims App’x. (Claim 43)). This finding is consistent with the Specification
which states, “allowing users to search for one or more acceptable or near-
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optimal item combinations when buying multiple items from multiple
vendors at the same time, instead of trying to find an optimal combination.”
(Spec. 6.) The Specification also describes
[c]learly it would be desirable that a good optimization would
check also such possibilities preferably automatically, based on
various criteria, otherwise the user might get a “best offer”
based on a given list of shops which perhaps charge too much
anyway, when a much better deal could be achieved by buying
directly for example from the manufacturers or from the
distributors that sell to these shops.
(Id.) Thus, all this evidence shows that claims 43 and 63 are directed to a
method of optimizing orders from plural vendors.
It follows from prior Supreme Court cases, and Gottschalk v. Benson,
409 U.S. 63 (1972) in particular, that the claims at issue here are directed to
an abstract idea. Determining a theoretical optimal offer based on a lowest
price available for each item and the shipment price is a fundamental
economic practice long prevalent in our system of commerce. Securing the
best deal for the purchaser’s money for one, or in this case, plural items, is a
fundamental building block of the economy because competition in the
marketplace should determine the best price driven by competition. Alice,
134 S. Ct. at 2357. Like the algorithm in Gottschalk, determining a
theoretical optimal offer based on a lowest price available for each item to
be purchased and associated shipment price and then computing at least one
acceptable offer defined as being within an acceptable maximum deviation
from said theoretical optimal offer is a mathematical algorithm that preempts
all implementations and uses. Thus, determining a theoretical optimal offer
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is an “abstract idea” beyond the scope of § 101. See Alice, 134 S. Ct. at
2356.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
performing a mathematical algorithm in Gottschalk and the concept of
determining a theoretical optimal offer based on a lowest price available for
each item and the shipment price and computing at least one acceptable offer
defined by being within an acceptable maximum deviation from the
theoretical optimal offer, at issue here. Both are squarely within the realm of
“abstract ideas” as the Court has used that term. See Alice, 134 S. Ct.
at 2357. That the claims do not preempt all forms of the abstraction or may
be limited to the abstract idea in the setting where vendors use shipping does
not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1360-1361 (Fed. Cir. 2015). Perhaps more to the point,
claim 43 does no more than determine the best possible price for plural items
aggregated to a single vendor, which is the epitome of abstraction.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
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deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement^]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea ... on a generic
computer.” (Id. at 2359.) They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data from various sources and compute a result from
such sources to make a determination amounts to electronic data query,
retrieval, and computation—some of the most basic functions of a computer.
All of these computer functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. Viewed as a whole, Appellant’s claims simply recite
the concept of determining a theoretical optimal offer based on a lowest
price available for each item and the shipment, and computing at least one
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acceptable offer defined by being within an acceptable maximum deviation
from said theoretical optimal offer, as performed by a generic computer.
The method claims do not, for example, purport to improve the functioning
of the computer itself. Nor do they effect an improvement in any other
technology or technical field. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of
determining a theoretical optimal offer based on a lowest price available for
each item and shipping, as performed by a generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
We find nothing in the dependent claims that advances them out of patent
ineligibility. As to the system claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
(Id. (alterations in original).)
CONCLUSIONS OF LAW
We conclude the Examiner did err in rejecting claims 43, 44, 47, 49,
52-54, 58-72, and 7^U82 under 35 U.S.C. § 103.
DECISION
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The decision of the Examiner to reject claims 43, 44, 47, 49, 52—54,
58—72, and 74—82 is reversed.
Pursuant to 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF
REJECTION of claims 43, 44, 47, 49, 52-54, 58-72, and 7^U82 under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)).
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 CFR § 41.50(b) also provides that the Appellant, 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:
• (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 proceeding 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 ....
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).
REVERSED: 37 C.F.R, $ 41.50(b)
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