Ex Parte Ryks et al

Patent Trial and Appeal Board

Nov 14, 2017

13719981 (P.T.A.B. Nov. 14, 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.
13/719,981 12/19/2012 Daniel Lee Ryks 201201456 3190
10782 7590
Target Brands Inc.
1000 Nicollet Mall, TPS-3165
Minneapolis, MN 55403
11/16/2017 EXAMINER
KASSIM, HAFIZ A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
11/16/2017 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):
USPTO.Mail@target.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL LEE RYKS and RUSS MICHAEL HEILBRUN
(Applicant: Target Brands, Inc.)
Appeal 2016-008751
Application 13/719,981
Technology Center 3600
Before HUNG H. BUI, JOSEPH P. LENTIVECH, and
AARON W. MOORE, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 1, 2, and 4—21. Claim 3 has been canceled.
See App. Br. 22 (Claims App’x). We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
Appeal 2016-008751
Application 13/719,981
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention generally relates to “predicting] whether an
item should continue to be stocked in a retailer’s inventory to maintain or
improve sales.” Spec. 13. Claim 1, which is illustrative of the claimed
invention, reads as follows:
1. A method of operating an inventory management system,
the method comprising:
determining, by a computing device, a repeatability value
of an item in a product category in an inventory at a retailer,
wherein the repeatability value indicates how frequently a
customer purchases the item out of a plurality of items in the
product category, the repeatability value being determined based
on sales data from a subset of identifiable customers, the sales
data including customer name, number of items purchased, and
frequency of sales;
determining, by the computing device, an exclusivity
value of the item, wherein the exclusivity value indicates how
frequently the customer purchases the item instead of an
alternative item out of the plurality of items in the product
category, the exclusivity value being determined based on sales
data from a subset of identifiable customers, the sales data
including customer name, number of items purchased, and
frequency of sales;
generating a report related to the inventory of the retailer
that is at least partially based upon the repeatability value and the
exclusivity value of the item; and
determining a risk of lost customers as a result of
removing the item from the inventory based at least in part on the
repeatability value and the exclusivity value, and determining
whether to remove the item from the inventory based on the risk
of lost customers, wherein the report is further based on the risk
of lost customers, thereby expanding an inventory management
capability of the inventory management system.
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Application 13/719,981
Rejections
Claims 1,2, and 4—21 stand rejected under 35U.S.C. § 101 as
directed to non-statutory subject matter. Non-Final Act. 9—13.
Claims 1, 2, and 4—14 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
Non-Final Act. 14—15.
ANALYSIS
Rejection under 35 U.S.C. § 101
In Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 566
U.S. 66, 77—78 (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, 134 S. Ct. at 2355. The first step in
the analysis is to “determine whether the claims at issue are directed to one
of those patent-ineligible concepts,” such as an abstract idea. Id. If the
claims are directed to a patent-ineligible concept, the second step in the
analysis is to consider the elements of the claims “individually and ‘as an
ordered combination’” to determine whether there are additional elements
that “‘transform the nature of the claim’ into a patent-eligible application.”
Id. (citing Mayo, 566 U.S. at 78—79). In other words, the second step is to
“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.
(citing Mayo, 566 U.S. at 72—73).
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Application 13/719,981
In rejecting independent claims 1,15, and 18 and dependent claims 2,
4—14, 16, 17, and 19-21, under 35 U.S.C. § 101, the Examiner finds these
claims are directed to “comparing data to determine a risk level.. .and
applying a mathematical relationship. Non-Final Act. 10; Ans. 4. In
addition, the Examiner finds additional elements recited in these claims are
insufficient to amount to significantly more than the judicial exception
because these elements “amount to no more than mere instructions to
implement the idea on a computer and/or a recitation of generic computer
structure that serves to perform generic computer functions that are well-
understood, routine and conventional activities previously known to the
pertinent industry.” Non-Final Act. 12—13; Ans. 7—8.
As to the first step of the Alice inquiry, Appellants contend the claims
are not directed to an abstract idea because (1) “the features listed by the
Examiner with a physical or concrete existence include, among other things,
sales data, reports, conclusions with respect to removing items from
inventory, the walker grid, the inventory in quadrant (4) of the walker grid,
defining the inventory of a retailer, etc.”; (2) the Examiner fails to utilize
authoritative documentation as evidence; (3) “the claims define a specific
application of mathematical relationships to improve an inventory
management system”; and (4) “claim 1 includes a step of determining a risk
of lost customers . . . thereby expanding an inventory management capability
of the inventory management system”; “claim 15 defines an improvement to
a computer management system”; “[cjlaim 18 applies the walker grid to
inventory definitions”; and “[t]he dependent claims expand on the
improvements to the management system.” App. Br. 16—18.
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Application 13/719,981
As to the second step of the Alice inquiry, Appellants argue the claims
“define specific data for determining such a risk level” and “these specific
limitations amount to ‘significantly more’ than any alleged abstract idea.”
App. Br. 18.
We are not persuaded by Appellants’ arguments. Under Alice, an
applicant may not circumvent the prohibition on the patenting of abstract
ideas simply by drafting claims to include generic computer hardware. See
Alice, 134 S. Ct. at 2359 (explaining that allowing claims to a computer
system configured to implement an abstract idea “would make the
determination of patent eligibility ‘depend simply on the draftsman’s art,’
thereby eviscerating the rule that ‘[l]aws of nature, natural phenomena, and
abstract ideas are not patentable’”) (citations omitted).
Appellants’ claims 1, 2, and 4—21, when considered in light of the
Specification, are directed to the abstract processes of collecting, storing,
retrieving, and analyzing information of a specific content. Information as
such is intangible, see Microsoft Corp. v. AT&T Corp., 127 S. Ct. 1746,
1756 n.12 (2007), and information collection and analysis, including when
limited to particular content, is within the realm of abstract ideas. See, e.g.,
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed.
Cir. 2015); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011).
Turning now to the second step of the Alice inquiry, we find nothing
in these claims that adds “significantly more” to transform the abstract
concept of collecting, storing, and analyzing information into a patent-
eligible application. Alice, 134 S. Ct. at 2357. Appellants’ independent
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Application 13/719,981
claims 1,15, and 18 simply incorporate a general-purpose computer and
generic components such as “a computing device,” “one or more computer-
readable storage media,” and “one or more processors” to perform the
abstract concepts of collecting, storing, and analyzing information.
As recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 134 S. Ct. at 2358—59 (concluding claims “simply
instructing] the practitioner to implement the abstract idea of intermediated
settlement on a generic computer” are not patent eligible); see also
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16 (Fed. Cir. 2014)
(concluding claims merely reciting the abstract idea of using advertising as
currency as applied to particular technological environment of the Internet
are not patent eligible); Accenture Glob. Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir. 2013) (concluding claims
reciting “generalized software components arranged to implement an
abstract concept [of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer” are not
patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—34 (Fed.
Cir. 2012) (“[s]imply adding a ‘computer aided’ limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible”).
Because Appellants’ claims 1, 2, and 4—21 are directed to a patent-
ineligible abstract concept, and do not recite something “significantly more”
under the second prong of the Alice analysis, we sustain the Examiner’s
rejection of these claims under 35 U.S.C. § 101 as being directed to non-
statutory subject matter in light of Alice and its progeny.
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Application 13/719,981
Rejection under 35 U.S.C. § 112, first paragraph
The Examiner finds Appellants’ Specification lacks adequate written
description for
determining a risk of lost customers as a result of
removing the item from the inventory based at least in part on the
repeatability value and the exclusivity value, and determining
whether to remove the item from the inventory based on the risk
of lost customers, wherein the report is further based on the risk
of lost customers, thereby expanding an inventory management
capability of the inventory management system,
as recited in claim 1. Ans. 8—11. In particular, the Examiner finds that
while the Specification “mentions in passing how determining a risk of lost
customers might be performed scattered in several paragraphs” it “fails to
provide a concise written description that shows the inventor possessed the
invention as recited in claim 1.” Ans. 9. The Examiner further finds:
While there may be lots of ways that a person of ordinary
skill in the art could perform determining a risk of lost customers,
the specific way that these are developed and applied to solve the
stated problem is central to the novelty of the invention. Without
details of how these are applied, a patent granted on the instant
application would provide protection without the public benefit
of a technical disclosure that contributes to the art.
Ans. 9—10. The Examiner reasons that because the Specification fails to
disclose how the risk of lost customers is determined, “the instant
application fails to meet its burden for providing the technical knowledge
necessary to be able to be patented.” Ans. 10.
Appellants contend claim 1 satisfies the written description
requirement. App. Br. 19-20. Appellants argue:
[Paragraph [0019] describes that a walker report can be
used to make a drop decision between two items. In paragraph
[0020], customer behavior is measured at a retailer over a time
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period to determine whether a customer repeatedly purchases
particular items. The specification refers to linking shopping
trips together of a particular customer. Paragraph [0021 ] refers
to using repeatability and exclusivity to make informed decisions
regarding inventory. A detailed discussion of determining
exclusivity and repeatability are provided in paragraphs [0030]
and [0031], respectively. In paragraph [0032], the specification
provides a specific formula for defining an index value that is
representative of a likelihood that an item is a walker item. The
walker report is described in paragraph [0042], and the walker
grid is described in detail in paragraphs [0065]-[0067].
Paragraph [0069] describes an analysis of the walker grid for
managing inventory. Paragraph [0073] refers to determination
of a walker value, which is also indicative of lost customer
predictions (i.e., lost customer risk). Still further, paragraph
[0074] refers to the retailer using the walker grid/report to make
decisions with regard to inventory.
Moreover, paragraph [0038] describes the type of sales
information for an item that is recorded in a database. The
specification describes that the sales information includes which
customer purchased the item, how many total number of the
items were purchased, dates and times of sales, frequency of
sales, purchase price, discounts applied to the item during sales,
or other information. The specification describes that “inventory
management system 10 uses this information to determine
repeatability values and exclusivity values for merchandise of the
retailer.” Paragraphs [0065]-[0072] describe the details of a
walker grid 200 shown in Fig. 4. In paragraph [0068], the
specification refers to an exclusivity scale shown in Fig. 4 from
low exclusivity with an index score of 0-40 to high exclusivity
with an index score of 160-200. These ranges provide specific
thresholds for exclusivity values relating to the risk of losing a
customer (i.e., whether the product is a walker product). Still
further, paragraph [0073] provides a specific equation for
determining the walker value of a particular product, where a
walker value is the total number of customers times the category
spent per customer. Those of ordinary skill in the art would
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similarly be readily able to determine the walker value based on
known sales data. Paragraph [0082] refers to Fig. 6 and describes
threshold values relating to potential walker items. Paragraphs
[0085] and [0091] similarly reference threshold values that
would enable those of ordinary skill in the art to make and use
the invention.
App. Br. 19-20. We agree.
To satisfy the written description requirement, the disclosure must
reasonably convey to skilled artisans that Appellants possessed the claimed
invention as of the filing date. SeeAriad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010) (enbanc). Specifically, the
description must “clearly allow persons of ordinary skill in the art to
recognize that [the inventor] invented what is claimed” and
the test requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in
the art. Based on that inquiry, the specification must describe an
invention understandable to that skilled artisan and show that the
inventor actually invented the invention claimed.
Ariad, 598 F.3d at 1351. The claimed invention need not be recited in haec
verba in the original specification in order to satisfy the written description
requirement. Id. at 1352.
We agree with Appellants that the Specification reasonably conveys
to skilled artisans that Appellants possessed the claimed invention as of the
filing date. See Spec., Fig. 4; H 18—21, 30-32, 38, 65—74, 85, and 91. In
particular, the Specification provides “[Repeatability of an item is a measure
of how often a customer purchases the particular item” and “[exclusivity of
an item is a measure of the particular item not being substitutable for another
item in a category.” Spec. 121. The Specification explains that an item is
not substitutable for another item when, if dropped from the inventory,
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Application 13/719,981
customers will go elsewhere to find the item, thereby causing the retailer to
potentially lose a trip to the store being made by the customer or losing the
customer entirely. Spec. 18—19. The Specification further provides:
Within a product category, sales information for an item is
recorded in database 18 or data source 16. The sales information
includes which customer purchased the item, how many total
number of the items were purchased, dates and times of sales,
frequency of sales, purchase price, discounts applied to the item
during sales, or other information. Inventory management
system 10 uses this information to determine repeatability values
and exclusivity values for merchandise of the retailer.
Spec. 138. The Specification describes plotting items onto a Walker grid
having four quadrants based on the exclusivity and repeatability values
determined for the item. Spec., Fig. 4; H 65—72. The Specification
provides “[w]hen items in quadrant IV also have a higher exclusivity ... the
item could be a walker item” and “the retailer will lose sales or visits from a
customer who nearly solely purchase[s] that item in the product category.”
As such, we agree with Appellants that the Specification provides adequate
written description support for the claimed “determining a risk of lost
customers.”
Accordingly, we do not sustain the Examiner’s rejection under 35
U.S.C. § 112, first paragraph, of independent claim 1 and claims 2 and 4—14,
which depend from claim 1.
DECISION
We affirm the Examiner’s rejection of claims 1, 2, and 4—21 under 35
U.S.C. § 101.
We reverse the Examiner’s rejection of claims 1, 2, and 4—14 under 35
U.S.C. § 112, first paragraph.
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Since at least one rejection encompassing all claims on appeal is
affirmed, the decision of the Examiner 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)(l)(iv).
AFFIRMED
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