Ex Parte MayerDownload PDFPatent Trial and Appeal BoardMay 24, 201711928222 (P.T.A.B. May. 24, 2017) Copy Citation 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; 2 Appeal 2015-003502 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. 3 Appeal 2015-003502 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, 4 Appeal 2015-003502 Application 11/928,222 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 5 Appeal 2015-003502 Application 11/928,222 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. 6 Appeal 2015-003502 Application 11/928,222 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. 7 Appeal 2015-003502 Application 11/928,222 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- 8 Appeal 2015-003502 Application 11/928,222 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 9 Appeal 2015-003502 Application 11/928,222 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 10 Appeal 2015-003502 Application 11/928,222 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 11 Appeal 2015-003502 Application 11/928,222 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 12 Appeal 2015-003502 Application 11/928,222 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) 13 Copy with citationCopy as parenthetical citation