Ex Parte Millar et al

Patent Trial and Appeal Board

Sep 11, 2018

12481185 (P.T.A.B. Sep. 11, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/481,185 06/09/2009 Karl Millar
106784 7590 09/13/2018
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
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.
RSW920125139US1/0968.0003 4752
EXAMINER
GURSKI, AMANDA KAREN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
09/13/2018 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KARL MILLAR, P ARITOSH DESAI, and
WILLIAM BARROWS PEALE
Appeal2016-007136
Application 12/481,185 1
Technology Center 3600
Before MEREDITH C. PETRA VICK, JAMES A. TARTAL,
and PHILIP J. HOFFMANN, Administrative Patent Judges.
PETRA VICK, Administrative Patent Judge.
DECISION ON APPEAL
1 The Appellants identify International Business Machines Corporation as
the real-party-in-interest. Br. 2.
Appeal 2016-007136
Application 12/481,185
STATEMENT OF THE CASE
Karl Millar et al. (Appellants) seek our review under 35 U.S.C. § 134
of the final rejection of claims 1, 2, 4---6, 8, 9, 11, 12, 14--16, 18, 19, 21-27,
and 29-31. Claims 3, 7, 13, and 17 were canceled prior to the Final Office
Action, and claims 10, 20, and 28 were canceled after the Final Office
Action. See App. Br. 13.
We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM. 2
THE INVENTION
Claims 1, 11, and 21 are independent and recite corresponding,
methods, systems, and articles. Claim 1, reproduced below, is illustrative of
the subject matter on appeal.
1. A method for tuning demand coefficients for a first
product category, useful in association with a pricing
optimization system, the method comprising:
receiving data from at least one store, wherein the data
includes transactions associated with at least one product
category;
analyzing, using a processor, the received data to identify
a first product category with a deficient pricing history that is
deficient with respect to generation of demand coefficients;
2 Our decision references the Appellants' Appeal Brief ("App. Br.," filed
Oct. 28, 2015), the Appellants' Reply Brief ("Reply Br.," filed June 29,
2016), the Examiner's Answer ("Ans.," mailed Apr. 29, 2016), and the Final
Office Action ("Final Act.," mailed Apr. 28, 2015).
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Application 12/481,185
selecting price elasticity and uncertainty values for the
first product category from at least one other product category
designated as a comparable product category;
estimating, using a processor, tuning parameters for the
first product category, wherein the tuning parameters include
price elasticity mean and price elasticity standard deviation, and
wherein estimating the tuning parameters uses the selected price
elasticity and uncertainty values from the at least one other
product category;
generating, using a processor, a modified likelihood
function by applying a normally distributed price elasticity term,
generating, using a processor, tuned demand coefficients
by applying the estimated tuning parameters to the modified
likelihood function and maximizing the modified likelihood
function;
exporting defined groups of products and attributes within
the data to a file and processing the file by separate processing to
enhance a processing speed of at least one said processor,
reformatting the data by aggregating elements of the data
and processing the aggregated elements together as a single
element to reduce a processing time of at least one said
processor; and
outputting the generated tuned demand coefficients to the
pricing optimization system for product price setting.
EVIDENCE
The Examiner relies upon the following as evidence of
unpatentability:
Ramesh
Ouimet
us 5,884,299
us 6,078,893
3
Mar. 16, 1999
June 20, 2000
Appeal 2016-007136
Application 12/481,185
Arnold Zellner, An Efficient Method of Estimating Seemingly
Unrelated Regressions and Tests for Aggregation Bias, Am. Stat. Ass'n J.
348 (1982) ("Zellner").
Stephen J. Hoch et al., Determinants of Store-Level Price Elasticity
32 J. of Marketing Res. 17 (1995) ("Hoch").
The Examiner took official notice, and Appellants did not traverse
adequately, that "[i]t is old and well known to iterate or repeat steps with
new information or to further refine a mathematical answer." Final
Act. 7-8 ("AP A").
REJECTIONS
The Examiner rejected the claims as follows:
claims 1, 2, 4---6, 8, 9, 11, 12, 14--16, 18, 19, 21-27, 29 and 313 under
35 U.S.C. § 101 as being directed to non-statutory subject matter;
claims 1, 2, 6, 11, 12, 16, 21, 22, and 25 under pre-AIA 35 U.S.C.
§ 103(a) over Ouimet, Zellner, and Ramesh; 4
3 The statement of the rejection on page 2 of the Examiner's Answer
includes claim 10. We consider this to be a typographical error as claim 10
has been canceled. See Reply Br. 3.
4 In the Final Action, the Examiner rejected claims 1-2, 6, 11-12, 16, 21-22,
and 25 over a combination of Ouimet and Zellner and rejected claims 10, 20,
and 28 over Ouimet, Zellner, and Ramesh. See Final Act. 10-12, 21-22.
The Examiner entered an After-Final Amendment canceling claims 10, 20,
and 28 and incorporating the elements recited in claims 10, 20, and 28 into
independent claims 1, 11, and 21. See Reply Br. 2; Advisory Action (mailed
Aug. 20, 2015). Thus, the rejection before us is claims 1-2, 6, 11-12, 16,
21-22, and 25 under pre-AIA 35 U.S.C. § 103(a) over Ouimet, Zellner, and
Ramesh. Ans. 2; App. Br. 13, 16; Reply Br. 2. Likewise, the other prior art
based rejection of dependent claims additionally include Ramesh.
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Application 12/481,185
claims 4, 5, 8, 14, 15, 18, 23, 24, 26, 29 and 31 underpre-AIA
35 U.S.C. § 103(a) over Ouimet, Zellner, Ramesh, and Hoch; and
claims 9, 19, and 27 under pre-AIA 35 U.S.C. § 103(a) over Ouimet,
Zellner, Ramesh, and AP A.
ANALYSIS
Non-Statutory Subject Matter
The Examiner rejected claims 1, 2, 4--6, 8, 9, 11, 12, 14--16, 18, 19,
21-27, 29 and 31 under 35 U.S.C. § 101 as being directed to patent
ineligible subject matter. Final Act. 8-9; Ans. 2.
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
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combination"' to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, 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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312 (Fed.
Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)).
Appellants rely upon the same argument regarding the patent
eligibility of independent claims 1, 11, and 21 to challenge this rejection and
make no separate arguments concerning the patent eligibility of the
dependent claims. See App. Br. 33-37. We select independent claim 1 as
representative. Thus, the remainder of the claims stand or fall with claim 1.
See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determined that:
[The claims] are directed to receiving data, analyzing the data,
selecting price elasticity and uncertainty values, estimating
tuning parameters, generating a function, generating demand
coefficients, and outputting those coefficients. These elements
essentially amount to determining demand coefficients for
product categories through mathematical means and is a practice
similar to those found by the courts to be abstract.
Final Act. 8; see Parker v. Flook, 437 U.S. 584, 595 (1978) ("If a claim is
directed essentially to a method of calculating, using a mathematical
formula, even if the solution is for a specific purpose, the claimed method is
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Application 12/481,185
nonstatutmy."); Intellectual Ventures I LLC v. Capital One Financial Corp.,
850 F .3d 1332, 1340 (Fed. Cir. 2017) ("[A Jn invention directed to
collection, manipulation, and display of data [is J an abstract process.").
Appellants do not dispute the Examiner's determination that the
claims are directed to an abstract idea but argue:
However, even if one or more of the features are
considered to be an abstract idea (i.e., mathematical
relationship/formula), the independent claims expressly recite
manners of reducing processing time of a processor which adds
significantly more than any alleged abstract idea to render the
claims statutory. . . .
App. Br. 34.
Applying step two of the Alice analysis, we "determine whether the
claims do significantly more than simply describe [the] abstract method" and
thus transform the abstract idea into patentable subject matter. Ultramercial,
772 F.3d at 715. We look to see whether there are any "additional features"
in the claims that constitute an "inventive concept," thereby rendering the
claims eligible for patenting even if they are directed to an abstract idea.
Alice, 134 S. Ct. at 2357. Those "additional features" must be more than
"well-understood, routine, conventional activity." Mayo, 132 S. Ct. at 1298.
Appellants argue that the following claim elements add significantly
more because they expressly recite manners of reducing processing time of a
processer itself. App. Br. 34--37; Reply Br. 13-18. The claim elements are:
exporting defined groups of products and attributes within
the data to a file and processing the file by separate processing to
enhance a processing speed of at least one said processor,
reformatting the data by aggregating elements of the data
and processing the aggregated elements together as a single
element to reduce a processing time of at least one said processor.
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Application 12/481,185
The Appellants state, "[i]n fact, the specification reveals that by maintaining
the file 'a more streamlined (abbreviated) dataset may be used in processing,
thereby effectively speeding up processing time."' Spec. ,r 7 5.
The Examiner disagrees and finds that the claim elements describe
"the removal of the load from one processor to put it on another" and that
"the computer carrying out the method is performing in a well-understood,
routine, and conventional way, and that further supports that the claims do
not include additional elements that are sufficient to amount to significantly
more than the judicial exception." Ans. 9--10. Appellants disagree because
separate processing is not a function listed in the Update of July 2015 to the
Interim Guidance ("Update") 5 as a well-understood, routine, conventional
activity. Reply Br. 17-18.
We are not persuaded by Appellants' argument the claim elements
recite additional features that are more than well-understood, routine, and
conventional activity. The list of computer functions references by
Appellants are merely examples and not an exhaustive list. See Update, 7.
Indeed, the Update states, "examiners should rely on what the courts have
recognized, or those in the art would recognize, as elements that are well-
understood, routine and conventional." Id. "Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination." Berkheimer v. HP Inc., 881 F.3d 1360,
5 available at https://www.uspto.gov/sites/default/files/documents/ieg-july-
2015-update. pdf.
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13 69 (Fed. Cir. 2018); See also Changes in Examination Procedure
Pertaining to Subject Matter Eligibility. 6
Separate processing to enhance processing speed is well-understood,
routine, conventional activity. See Appistry, Inc. v. Amazon.com Inc., 2015
WL 4210890, at *4--5 (W.D. Wash July 9, 2015)7 ("That computers are
capable of dividing a task between two or more linked computers in order to
complete the task more quickly or more efficiently is similarly basic."); see
also Coho Licensing, LLC v. Glam Media, Inc., 2017 WL 6210882, at *5-6
(N.D. Cal. Jan. 23, 2017) 8 (determining that a claim for distributed
processing of data to be an abstract idea without a limiting concept); see also
Final Act. 21 (quoting Ramesh 8:25-34). Reformatting the data by
aggregating elements of the data and processing the aggregated elements
together as a single element to reduce a processing time of the processor is
well-understood, routine, conventional activity. For example Ramesh states:
The performance of aggregate or grouping functions is a
key factor in any database system's performance as measured by
the Transaction Processing Council D (TPCD) industry
benchmark. Aggregation and grouping is a key operation in
decision support systems and data warehouse workloads. In
many applications, more than 70% of the queries perform
aggregation or group. Thus, improvements in the performance
of aggregation or grouping lead directly to significant
improvements in application workloads.
6 available at https ://www. uspto. gov/ sites/ default/files/ documents/memo-
berkheimer-20180419 .PDF.
7 affirmed inAppistry, Inc. v. Amazon.com, Inc., 676 Fed. Appx. 1007 (Fed.
Cir. 2017).
8 affirmed in Coho Licensing LLC, v. Oath, Inc., 710 Fed. Appx. 892 (Fed.
Cir. 2018).
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Ramesh, 3:30-39; see Final Act. 21-22 (quoting Ramesh, 3:30-39).
Evaluating these claimed elements either individually or as an ordered
combination with remaining claimed elements, we conclude that the claims .__., ,
recite no more than the use of generic computer components and
conventional computer data processing activities. Accordingly, we sustain
the rejection of claims 1, 2, 4---6, 8, 9, 11, 12, 14--16, 18, 19, 21-27, 29 and
31 under 35 U.S.C. § 101 as being directed to patent ineligible subject
matter is affirmed.
Obviousness
Over Ouimet, Zellner, and Ramesh
The Examiner rejected claims 1, 2, 6, 11, 12, 16, 21, 22, and 25 under
pre-AIA 35 U.S.C. § 103(a) over Ouimet, Zellner, and Ramesh. See Final
Act. 10-12, 21-22.
Independent claim 1 recites, "selecting price elasticity and uncertainty
values for the first product category from at least one other product category
designated as a comparable product category." Independent claims 11 and
21 recite similar limitations. Appellants argue that none of the combinations
of the cited references teach or disclose this limitation. App. Br. 16-22;
Reply Br. 3-8. Appellants' argument is persuasive.
The Examiner relies upon Ouimet and Zellner, individually, as
disclosing the limitation and provides no sufficient explanation or rationale
as to how a combination of Ouimet and Zellner discloses the limitation. See
Final Act. 5, 11. First, the Examiner cites column 6, lines 1-26 and column
11, lines 26-33 of Ouimet as disclosing this limitation. Final Act. 5, 11. As
Appellants argue, however, the cited portions of Ouimet discloses
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correlation between operational variables of different items, as opposed to
using the price elasticity and uncertainty values from one or more
comparable product categories to determine tuning parameters. App. Br.
18-20; Reply Br. 6. Second, the Examiner cites to Zellner to teach that
analysis can occur between different items or categories. Final Act. 5,
( citing Zellner 363); Ans. 6 (repeating the Final Action). The Examiner
cites page 363 of Zellner and states that Zellner discloses that "different
micro-units are characterized by the same regression coefficients." As
Appellants again argue, the cited portion of Zellner does not teach using the
price elasticity and uncertainty values from one or more comparable product
categories to determine tuning parameters. App. Br. 19-20; Reply Br. 6-8;
see also Final Act. 15-16 (Zellner "does not explicitly teach that the
calculation of price elasticity takes into account other product categories.").
Accordingly, we do not sustain the rejection of claims 1, 11, and 21,
and claims 2, 6, 12, 16, 22, and 25, dependent thereon, under pre-AIA
35 U.S.C. § 103(a) over Ouimet, Zellner, and Ramesh.
Obviousness over Ouimet, Zellner, Ramesh, and Hoch and
Obviousness over Ouimet, Zellner, Ramesh, and AP A
The Examiner rejected claims 4, 5, 8, 14, 15, 18, 23, 24, 26, 29,
and 31 under pre-AIA 35 U.S.C. § 103(a) over Ouimet, Zellner, Ramesh,
and Hoch, and claims 9, 19, and 27 under pre-AIA 35 U.S.C. § 103(a) over
Ouimet, Zellner, Ramesh, and APA. Final Act. 14--20. Claims 4, 5, 8, 9,
14, 15, 18, 19, 23, 24, 26, 27, 29, and 31 depend directly or indirectly from
either claim 1, 11, or 21. For the same reasons, we also do not sustain these
rejections of dependent claims 4, 5, 8, 9, 14, 15, 18, 19, 23, 24, 26, 27, 29,
and 31. See In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent
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claims are nonobvious if the independent claims from which they depend are
nonobvious. ").
DECISION
The decision of the Examiner to reject claims 1, 2, 4--6, 8, 9, 11, 12,
14--16, 18, 19, 21-27, 29 and 31 is affirmed.
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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