Ex Parte Shan

Patent Trial and Appeal Board

Jul 18, 2017

12242646 (P.T.A.B. Jul. 18, 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.
12/242,646 09/30/2008 Jerry Z. Shan 82238699 9005
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
GART, MATTHEW S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/20/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JERRY Z. SHAN
Appeal 2016-003625
Application 12/242,646
Technology Center 3600
Before BRUCE R. WINSOR, HUNG H. BUI, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—4 and 6—23. Claim 5 has been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-003625
Application 12/242,646
STATEMENT OF THE CASE
Appellant’s invention is directed to a forecasting to provide a dynamic
or updatable forecast for dynamic multi-period-ahead forecasts for a given
time period. Spec. 1 8. Claim 1, reproduced below, is representative of the
claimed subject matter:
1. A method, comprising:
applying a first forecasting algorithm, with a processor, to
historical data from completed past time periods to generate a static
forecast for an incomplete current time period n, wherein n is a time
period measured in a selected granularity , and wherein the static
forecast includes a confidence interval having an upper bound and a
lower bound; and
applying a second forecasting algorithm, with the processor, to
input data in the incomplete current time period n to generate a
dynamic forecast for the incomplete current time period n, wherein
input data into the second forecasting algorithm is updated at intervals
during the time period n, wherein the second intervals are measured in
a granularity lower than the selected granularity, wherein the dynamic
forecast is updated when input data is updated, and wherein dynamic
forecasts greater than the confidence interval are set to the upper
bound and dynamic forecasts less than the confidence interval are set
to the lower bound with the processor.
REJECTION
Claims 1^4 and 6—23 stand rejected under 35 U.S.C. § 101 as directed
to nonstatutory subject matter.
ANALYSIS
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
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Application 12/242,646
subject matter is judicially-excepted from patent eligibility under 35 U.S.C.
§ 101. In the first step, “[w]e must first determine whether the claims at
issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355.
The Examiner concludes the claims are directed to the abstract idea of
forecasting. Final Act. 6; Ans. 4. Appellant argues “claim 1 is directed to
making a ‘dynamic’ forecast with a ‘partial data from an incomplete time
period’ as opposed to conventional forecasting techniques which generate a
‘static’ forecast using ‘complete data from already completed past time
periods.’” App. Br. 7. According to Appellant, “the method of claim 1 . . .
is distinct from the ‘fundamental economic practice long prevalent in our
system of commerce’ of using static forecast techniques.” Id. at 8.
Appellant further argues “claim 1 clearly does not seek to tie up the abstract
idea of forecasting so that others cannot practice it.” Id.', see Reply Br. 4—5.
Appellant has not adequately shown the claims are not directed to an
abstract idea. We agree with the Examiner that claims 1—4 and 6—23 are
directed to the abstract idea of “forecasting,” a mathematical algorithm for
organizing human activity and a fundamental economic practice. See Final
Act. 5—7; Ans. 4. Here, the claims involve nothing more than generating
forecast data using algorithms, activities that fit squarely within the realm of
abstract ideas. See Parker v. Flook, 437 U.S. 584 (1978) (mathematical
algorithm used for adjusting an alarm limit); Elec. Power Grp. LLC v.
Alstom, 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (collecting information and
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category.”); In re Meyer, 688 F.2d 789, 795-6
(CCPA 1982) (identifying probable locations of malfunctions is a
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Application 12/242,646
“mathematical algorithm representing a mental process that has not been
applied to physical elements or process steps”); Bilski v. Kappos, 561 U.S.
593, 611 (2010) (method by which commodities buyers and sellers could
hedge, or protect, against risk of price changes); Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015), cert, denied, 136 S. Ct.
2510, 195 L. Ed. 2d 841 (2016) (using organizational and product group
hierarchies to determine a price).
Appellant’s preemption argument is likewise unpersuasive of
Examiner error. We find that this argument is adequately addressed by the
remainder of the Alice analysis. See Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“Where a patent's claims are
deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot.”); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362—63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”).
In the second step of Alice, 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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297—
98). 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. (quoting Mayo, 132 S. Ct. at 1294).
Appellant argues:
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Application 12/242,646
[T] he elements of generating a dynamic forecast for an
incomplete current time period using dynamically changing up-
to-date data, and constraining the dynamic forecast for the
incomplete time period to the upper and lower bounds of a
confidence interval generated from static data from previously
completed and closed out time periods are not taught or
suggested by the prior art and clearly represent limitations that
are beyond what is well-understood, routine and conventional
in the field of business information forecasting.
App. Br. 10; see Reply Br. 5—7. Appellant also “points out that the
Examiner has failed to identify any prior art that anticipates and/or renders
obvious the method recited by claim 1. As such, in addition to representing
patent-eligible subject matter under 35 U.S.C. § 101, Appellant submits that
the method of claim 1 is neither taught nor suggested by prior art.” App. Br.
10.; see Reply Br. 3—7.
We are not persuaded by Appellant’s arguments and agree with the
Examiner. See Final Act. 6—7; Ans. 3-4. Although the second step in the
Alice/Mayo framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “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, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304; seeFlook, 437 U.S. at 588—595.
Rather than reciting additional elements that amount to “significantly
more” than the abstract idea, the pending claims, at best, add only a
“computer,” “processor,” and/or “memory,” i.e., generic components (see
Spec. Iff 24, 25, Fig. 3), which do not satisfy the inventive concept. See,
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Application 12/242,646
e.g., DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed.
Cir. 2014) (internal quotation marks omitted) (“[Ajfter Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible. The bare fact that a computer
exists in the physical rather than purely conceptual realm is beside the
point.”) “[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. Stating an
abstract idea is not
eligibility.” Alice, 134 S. Ct. 2358 (citation omitted). The claims when
viewed as whole are nothing more than performing conventional processing
functions that courts have routinely found insignificant to transform an
abstract idea into a patent-eligible invention. As such, the claims amount to
nothing significantly more than an instruction to implement the abstract idea
on a generic computer, which is not enough to transform an abstract idea
into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
Appellant does not separately argue claims 2-4 and claims 6-23.
App. Br. 10. Accordingly, we are not persuaded the Examiner erred, and
wq, therefore, sustain the Examiner’s 35 IJ.S.C, § 101 rejection of claims 1—
4 and 6-23.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—4 and
6—23 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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