Ex Parte Vakhutinsky

Patent Trial and Appeal Board

Aug 10, 2018

13101539 (P.T.A.B. Aug. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/101,539 05/05/2011
74739 7590 08/14/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
Andrew V akhutinsky
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.
20 ll -0278USO 1 5210
EXAMINER
AUSTIN, JAMIE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
08/14/2018 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW V AKHUTINSKY
Appeal2016-007207 1
Application 13/101,5392
Technology Center 3600
Before MURRIEL E. CRAWFORD, BRADLEY B. BAY AT, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1--4, 6-11, 13-15, 17, and 18. We have
jurisdiction under § 6(b ). We AFFIRM.
1 Our Decision references Appellant's Specification ("Spec.," filed May 5,
2011 ), Appeal Brief ("Appeal Br.," filed Nov. 30, 2015), and Reply Brief
("Reply Br.," filed July 19, 2016), as well as the Examiner's Answer
("Ans.," mailed May 19, 2016) and Final Office Action ("Final Act.,"
mailed May 26, 2015).
2 Appellant identifies Oracle International Corporation as the real party in
interest. Appeal Br. 2.
Appeal2016-007207
Application 13/101,539
SUBJECT MATTER ON APPEAL
The invention is directed to a retail pre-pack optimization system.
Spec., Title. Claims 1, 8, and 15 are the independent claims on appeal.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A non-transitory computer readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to determine an optimized pre-pack solution
for a plurality of stores, the determining the optimized solution
compnsmg:
(a) receive demand data and constraints;
(b) initialize a current pre-pack configuration comprising
a current pre-pack design that comprises a plurality of pre-pack
types, each pre-pack type comprising one or more different
products, wherein each product comprises a different stock
keeping unit (SKU) representing a unique item;
( c) optimize a pre-pack allocation based on the current pre-
pack configuration;
( d) determine an objective function value improvement
comprising, for each product in each pre-pack type, change a
level of the product by one unit and determine if the objective
function value has improved;
( e) if the objective function value has improved, generate
a new pre-pack design based on the changed level of the product;
(f) assign the new pre-pack design as the current pre-pack
design;
(g) repeat ( c) - (f), until the objective function value has
not improved at ( e );
(h) output an optimized pre-pack configuration;
wherein the optimized pre-pack configuration comprises a
specification of a set of unique pre-pack types used as shipment
units to the stores, and each unique pre-pack type comprises one
or more SKU s and a quantity for each of the SKU s;
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Application 13/101,539
wherein a change of the objective function value when a
product apq is increased by one unit comprises:
D
grad;q = L ( c1 max(xpj - Yj~, 0) - c2 min(xpj, Yj~))
j=l
and wherein the change of the objective function value when the
product apq is decreased by one unit comprises:
D
gradpq = L(c2 max(xpj-Yj~,O) - c1 min(xpj,Yj~))
j=l
wherein an SKU set comprises q = 1, ... , Q; a pack type
comprises p = 1, ... , P; wherein a pack type p includes apq
items of SKU q; a store comprises j = 1, ... , D; Yj~ comprises
an amount of per-store-per-SKU misallocation for under-
allocation, Yj~ comprises an amount of per-store-per-SKU
misallocation for over-allocation; and c1 comprises a cost of one
unit of under-allocation of any SKU at a store, and c2 comprises
a cost of one unit of over-allocation of any SKU at a store.
REJECTION
The Examiner rejects claims 1--4, 6-11, 13-15, 1 7, and 18 under
35 U.S.C. § 101 as directed to non-statutory subject matter.
ANALYSIS
Appellant argues claims 1--4, 6-11, 13-15, 17, and 18 as a group.
Appeal Br. 3----9; Reply Br. 2----4. \Ve select independent claim 1 as
representative. The remaining claims of the group stand or fall with
independent claim 1. 37 C.F.R. § 4I.37(c)(l)(iv).
An invention is patent eligible if it is a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
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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 'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)).
To "distinguish[] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts," the Supreme Court has provided a two-step
framework. Alice, 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66 (2012)). The first step considers
whether a claim is directed to a patent-ineligible concept, e.g., an abstract
idea. Id. (citing Mayo, 566 U.S. at 77). Ifso, the second step then considers
whether the claim recites an inventive concept-an element or combination
of elements sufficient to ensure the claim amounts to significantly more than
the abstract idea and transform the nature of the claim into a patent-eligible
application. Id. (citing Mayo, 566 U.S. at 72-73, 78, 79).
In rejecting independent claim 1 under 35 U.S.C. § 101, the Examiner
analyzes the claim using this two-step framework. Final Act. 6; Ans. 3-9.
Pursuant to the first step, the Examiner determines the claim is directed to
the abstract idea of "determining a pre-pack configuration for items that are
sold in stores." Final Act. 6. According to the Examiner, "determining a
pre-pack configuration for items that are sold in stores" is similar to other
concepts involving the use of mathematical formulas or algorithms that the
courts have held to be abstract ideas, such as a mathematical procedure for
converting one form of a numerical representation to another in Gottschalk
v. Benson, 409 U.S. 63 (1972) and an algorithm for calculating parameters
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Application 13/101,539
indicating an abnormal condition in In re Grams, 888 F.2d 835
(Fed. Cir. 1989). Ans. 3--4.
Under the second step, the Examiner determines the claim does not
recite significantly more than the abstract idea because the additional
elements of the claim, considered alone and in combination, amount to no
more than mere instructions to implement the abstract idea on a computer
that allows a user to manipulate data to output an answer. Final Act. 6. The
Examiner further determines that the claimed invention simply requires a
generic processor for performing the steps, and does not improve the
functioning of the computer itself. Ans. 7 ( citing Spec. ,r 15).
Appellant argues that independent claim 1 is not directed to an
abstract idea pursuant to the first step of the Alice analysis because the
concept of "determining a pre-pack configuration for items that are sold in
stores" is not similar to an abstract idea identified by a court. Appeal Br. 4;
Reply Br. 2-3. Appellant's argument is not convincing.
As set forth above, the Examiner explains that the concept of
"determining a pre-pack configuration for items that are sold in stores" is
similar to other concepts the courts have held to be abstract ideas. Ans. 3--4.
Moreover, independent claim 1 relies on a mathematical algorithm for
"determining a pre-pack configuration for items that are sold in stores." As
the Supreme Court has explained, "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 nonstatutory." Parker v.
Flook, 437 U.S. 584, 595 (1978) (quoting In re Richman, 563 F.2d 1026,
1030 (1977)).
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Seeing no error in the Examiner's determination that independent
claim 1 is directed to an abstract idea pursuant to the first step of the Alice
analysis, we tum to Appellant's arguments under the second step. Appellant
argues that the Examiner did not consider the elements of independent
claim 1 in combination, as the Alice analysis requires. Appeal Br. 8-9. We
disagree. As set forth above, the Examiner determines the additional
elements of the claim, considered alone and in combination, amount to no
more than mere instructions to implement the abstract idea on a computer
that allows a user to manipulate data to output an answer. Final Act. 6. The
Examiner also explains that "[l]ooking at the elements as a combination does
not add anything more than the elements analyzed individually." Ans. 8.
Appellant additionally contends that, like the claims in Bascom
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016), independent claim 1 recites an inventive concept in the
non-conventional and non-generic arrangement of known conventional
pieces. Reply Br. 4. According to Appellant, "the Final Office Action
indicates that all claims are allowable over the prior art, meaning all of the
pending claims now recite an inventive concept per Bascom." Id.
Appellant's argument is not persuasive of error.
At the outset, we note that Appellant does not explain what the
alleged non-conventional and non-generic arrangement is or how it provides
an inventive concept. Rather, Appellant simply relies on the alleged novelty
of the claimed invention as the inventive concept.
Although the second step of the Alice analysis is termed a search for
an "inventive concept," the analysis is not an evaluation of novelty or
nonobviousness, but rather, a consideration of "the elements of each claim
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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 (emphasis added) (quoting Mayo,
566 U.S. 79, 78). The question in the second step, therefore, is whether the
implementation of the abstract idea involves "more than performance of
'well-understood, routine, [and] conventional activities previously known to
the industry."' Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice,
134 S. Ct. at 2359).
As the Examiner explains, independent claim 1 requires that a
processor performs the recited steps. Ans. 6. The Examiner further explains
that Appellant's Specification describes "[p ]rocessor 22 may be any type of
general or specific purpose processor capable of processing multiple
instructions in parallel." Id. at 7 ( quoting Spec. ,r 15 ( emphasis omitted)).
This description of a general purpose processor supports the Examiner's
finding that the computer implementation of the recited steps involves
computer functions that are well-understood, routine, and conventional.
Moreover, independent claim 1 recites the steps of: (a) receiving
demand data and constraints; (b) initializing a current pre-pack
configuration; ( c) optimizing a pre-pack allocation; ( d) determining an
objective function value improvement; ( e) if the objective function value has
improved, generating a new pre-pack design; (f) assigning the new pre-pack
design as the current pre-pack design; (g) repeating steps ( c }-( f) until the
objective function value has not improved; and (h) outputting an optimized
pre-pack configuration. We agree with the Examiner that the computer
implementation of the recited steps merely requires the generic computer
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functions of receiving, manipulating, and outputting data. Ans. 9; see also
In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316
(Fed. Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming.").
Appellant similarly argues independent claim 1 does not merely recite
conventional functionality. Appeal Br. 5---6. In particular, Appellant asserts
that determining changes in objective function values, as recited in the
claim, elevates independent claim 1 well beyond the mere concept of
retrieving and combining data using a computer. Id. at 6. Appellant's
argument does not apprise us of error because Appellant conflates the
conventionality of the steps being performed by a processor and the
conventionality of the computer functions required to implement the steps.
As set forth above, the implementation of the recited steps, including the
step of determining changes in objective function values, simply involves
computer functions that are well-understood, routine, and conventional,
namely the generic computer functions of receiving, manipulating, and
outputting data.
Appellant also asserts that
the use of a computer to determine changes in objective function
values is clearly a technical solution to the problem of
determining "an optimized pre-pack solution for a plurality of
stores", and is not a solution that can be performed manually or
using routine computer data storage and mathematical
operations.
Appeal Br. 6. Appellant's argument is not persuasive of error. Even if the
claimed invention requires the use of a computer, the computer
implementation of the recited steps requires nothing more than a generic
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processor performing the generic computer functions of receiving,
manipulating, and outputting data. As the Supreme Court has explained,
"[g]iven 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 (alteration in original) (internal citation omitted) (quoting Mayo, 566
U.S. at 77).
Appellant additionally argues the claimed invention provides
improvement to the functioning of the computer. Appeal Br. 7-8.
According to Appellant, the claimed invention improves optimization
outcome and reduces the need for computer resources, which leads to a
better result. Id. at 8 (citing Spec. ,r,r 48--49). Appellant's argument is not
convincing. Appellant's Specification explains that the invention improves
a pre-pack configuration by decreasing the total cost of product demand
mismatching at each store in a chain, while reducing the total shipping and
handling costs. Spec. ,r 48. The Specification also explains the invention
solves problems associated with business optimization. Id. ,r 49. The
Specification, therefore, describes improvements to pre-pack configuration
and business optimization, not an improvement to the functioning of the
computer.
Appellant further asserts that independent claim 1 does not preempt
the abstract idea. Appeal Br. 7. Appellant's argument is not persuasive of
error. Although preemption may be the basis for excluding abstract ideas
from eligible subject matter, it is not the test for determining whether a claim
is patent eligible. Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
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1371, 1379 (Fed. Cir. 2015) ("The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability. For this reason, questions on preemption are inherent in and
resolved by the§ 101 analysis." (citation omitted)).
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that independent claim 1 is patent-ineligible.
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 101, with claims 2--4, 6-11, 13-15, 17, and 18 falling therewith.
DECISION
The Examiner's decision to reject claims 1--4, 6-11, 13-15, 17, and
18 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). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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