Ex Parte Vakhutinsky et al

Patent Trial and Appeal Board

Apr 17, 2018

13303235 (P.T.A.B. Apr. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/303,235 11/23/2011 Andrew V AKHUTINSKY
74739 7590 04/19/2018
Potomac Law Group, PLLC (Oracle International)
c/o P3 Solutions
1451 Dolley Madison Blvd.
Suite 310
McLean, VA 22101
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.
201 l-0212US01 4095
EXAMINER
CHOY, PANG
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/19/2018 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 and
NGAI-HANG ZACHARY LEUNG
Appeal 2016-008699
Application 13/303,235
Technology Center 3600
Before ST. JOHN COURTENAY III, JOHN A. EVANS, and
NORMAN H. BEAMER, Administrative Patent Judges.
COURTENAY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3-8, 10-15, and 17-21, which are all the claims pending in this
application. Claims 2, 9, and 16 are cancelled. We have jurisdiction over
the pending claims under 35 U.S.C. § 6(b ).
We affirm.
STATEMENT OF THE CASE
Introduction
Appellants' invention is "directed generally to a computer system, and
in particular to a computer system that optimizes product pricing." (Spec.
ii 1 ).
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Application I3/303,235
Representative Claim
Claim I is representative of the invention and reads as follows:
I. A non-transitory computer readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to determine product pricing for a product
category, the determine product pricing comprising:
receiving a non-linear problem for the product category,
wherein the non-linear problem comprises a demand model;
for a pair of products in the product category, determining
coefficients for a change in demand of a first product of the pair
when a price of a second product of the pair is changed to one
or more different price levels on a second product price ladder,
and repeating the determining coefficients for at least all related
pair of products in the product category;
generating binary decision variables that indicate whether price
variables were assigned to a price on a corresponding price
ladder;
[LI] generating an approximate Mixed Integer Linear
Programming (MILP) problem wherein a change of demand for
each product is based on a sum of the determined coefficients;
solving the MILP problem using the binary decision variables
to obtain a MILP solution; and
[L2] converting the MILP solution into the product pricing,
wherein the price for each product is set to a corresponding
generated binary decision variable.
(Contested limitations LI and L2 emphasized).
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Rejections
A. Claims 1, 3-8, 10-15, and 17-21 are rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. (Final Act. 10).
B. Claims 1, 3-8, 10-15, and 17-21 are rejected under pre-AIA 35
U.S.C. § 103(a) as being obvious over Solanki et al. (US 7,996,331
Bl; Aug. 9, 2011), (hereinafter "Solanki"), in view ofNeal et al. (US
7,877,286 Bl; Jan. 25, 2011), (hereinafter "Neal"). (Final Act. 14).
Issues on Appeal
Did the Examiner err in rejecting claims 1, 3-8, 10-15, and 17-21
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1, 3-8, 10-15, and 17-21
under pre-AIA 35 U.S.C. § 103(a) as being obvious over the cited
combination of references?
ANALYSIS
We have considered all of Appellants' arguments and any evidence
presented. To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv). We highlight and address specific findings
and arguments for emphasis in our analysis below.
Mayo/Alice Analysis under 35 US.C. § 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
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Ltd. v. CLSBankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013) ). 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, 82-84 (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 that analysis is to determine whether the claims at
issue are directed to one of those patent-ineligible concepts, such as an
abstract idea. Abstract ideas may include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355-57.
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017).
Otherwise, the inquiry proceeds to the second step in which the
elements of the claims are considered "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, 566 U.S. at 79, 78). We consider the question of
whether the claims are directed to a specific improvement in the capabilities
of the computing devices, or, instead, "a process that qualifies as an 'abstract
idea' for which computers are invoked merely as a tool." Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
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We, therefore, decide under step two whether the claims: (a) set forth
an inventive concept that provides a specific means or method that improves
the relevant technology, or (b) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
The Examiner's Rejection A under 35 USC§ 101
Regarding the first part of the Alice/ Mayo analysis, the Examiner
concludes claims 1, 3-8, 10-15, and 17-21 are directed to the abstract idea
of:
applying the product information to a non-linear equation for
generating a product price ladder, which is an example of
fundamental economic practices and mathematical
relationships, while solving the MILP problem and converting
the MILP solution into the product pricing may be interpreted
as the application of algorithms to achieve a new set of data,
these mathematical relationships and formulas embody a
common example of an abstract idea. Even the steps may be
implemented to a computer; however, the steps are
nothing more than a generic, well-understood and routine
computer function, and thus an abstract idea.
(Final Act. 11-12) (emphasis added). 1
Regarding the second step of the Mayol Alice analysis, the Examiner
finds the claims do not: 2
1 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340 (Fed. Cir.
2013).
2 The patent eligibility inquiry may contain underlying issues of fact. Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811F.3d1314, 1325 (Fed.
Cir. 2016). In particular, "[ t ]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
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amount to significantly more than the abstract idea itself.
This is because the claim[ s] do[] not effect an improvement to
another technology or technical field; the claim[s] do[] not
amount to an improvement to the functioning of a computer
itself; and the claim does not move beyond a general link of the
use of an abstract idea to a particular technological
environment.
(Final Act. 12)
The Examiner further finds: "The recited processor is nothing more
than a generic computer, for performing generic, well-understood and
routine computer functions, would be required to implement the
aforementioned abstract idea." (Final Act. 12). See n.2, supra. Thus, the
Examiner concludes that all claims 1, 3-8, 10-15, and 17-21 on appeal are
not patent-eligible under 35 U.S.C. § 101.
Mayo/Alice Analysis -Step 1
In response, and regarding Alice Step 1, Appellants contend, inter
alia, that "a comparison of the multiple abstract ideas alleged by the
Examiner to the abstract ideas identified by the courts shows that there are
no similarities." (App. Br. 4).
We note Appellants' independent claim 1 is directed to, inter alia:
generating and solving a Mixed Integer Linear Programming (MILP)
problem, and using generated binary decision variables to obtain a MILP
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881F.3d1360, 1368 (Fed. Cir. 2018).
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solution, that is converted into product pricing. Remaining independent
claims 8 and 15 recite similar language of commensurate scope. 3
Our reviewing court guides that claimed fundamental economic and
conventional business practices are often abstract ideas, even if performed
on a computer. See, e.g., OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362---63 (Fed. Cir. 2015); Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) ("Each of the claims is directed
to the abstract idea of processing an application for financing a purchase.").
Thus, under a broad but reasonable interpretation, we conclude each
of Appellants' claims on appeal is directed to an economic or business
practice, i.e., to the result of "converting the MILP solution into the product
pricing, wherein the price for each product is set to a corresponding
generated binary decision variable." (Claim 1; see similar language of
commensurate scope, as recited in independent claims 8 and 15). (Claims
App.). However, our reviewing court guides "[t]he abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (2016) (quoting 0 'Reilly v. Morse, 56
U.S. 62, 113 (1854)) (emphasis added).
Moreover, but for the recitation of a generic processor or computer
(claims 1, 8, and 15), we find the recited steps or functions which implement
a mathematical algorithm could be performed as mental steps, or with the
aid of pen and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654
3 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
In the Reply Brief (2), Appellants further rebut the Examiner's
conclusion the claims are directed to an abstract idea, and the Examiner's
finding that the claimed steps can be entirely performed by a human using
pen and paper. Appellants (id.) cite to McRO as an intervening case and
urge "the present claims, as argued in the Appeal Brief, should be allowable
over the prior art, [because] there is no evidence that the claimed process
was previously used either manually, or using a computer." (Emphasis
added).
However, we find the claims here are directed to afundamental
economic practice (product pricing), and are thus distinguished from the
McRo claims that automate lip synchronization using rules. In McRo, the
court emphasized that the claimed automated lip synchronization was
patent-eligible because "the automation goes beyond merely 'organizing
[existing] information into a new form' or carrying out afundamental
economic practice." McRO, 837 F.3d at 1314 (internal citation omitted)
(emphasis added).
This guidance is applicable here. Therefore, on this record, we are not
persuaded of error regarding the Examiner's legal conclusion that all claims
on appeal are directed to the abstract ideas of: (i) a fundamental economic
practice" and (ii) a mathematical algorithm. (Final Act. 11-12). We
particularly note the literal mathematical terms and expressions expressly
recited in dependent claims 4--7, 11-14, and 18-21.
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Mayo/Alice Analysis-Step 2
Because the claims are directed to an abstract idea, we tum to the
second part of the Alice/ Mayo analysis. We analyze the claims to determine
if there are additional limitations that individually, or as an ordered
combination, ensure the claims amount to "significantly more" than the
abstract idea. Alice, 134 S. Ct. at 2357.
Regarding Alice Step 2, Appellants urge: "Even if the claims are
considered to be directed to an abstract idea (not admitted by Applicants),
the claims can include an 'inventive concept' or additional elements so
that the abstract idea is transformed into a patent-eligible application. Alice,
134 S. Ct. at 2357." (App. Br. 5).
In support, Appellants merely recite the claim language, and assert:
Generating a MILP problem, solving the problem and
converting the solution to generate product pricing elevates the
present claims well "beyond the mere concept of simply
retrieving and combining data using a computer." Further, the
use of a computer to generate and solve a MILP problem is
clearly a technical solution to the problem of determining
product pricing and is not a solution that can be performed
manually or using routine computer data storage and
mathematical operations.
(App. Br. 6).
Appellants' arguments do not persuade us the Examiner erred,
because Appellants essentially recite the claim limitations without any
persuasive explanation of how the limitations either individually, or as an
ordered combination, amount to an inventive concept that converts the
abstract idea (i.e., the fundamental economic practice of determining
product pricing) into patent-eligible subject matter.
Appellants urge: "The recited functionality of the claims improves the
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functioning of the computer." (App. Br. 7) (emphasis omitted). However,
to the extent that Appellants' recited steps or acts (or functions) may be
performed faster or more efficiently using a computer, our reviewing court
provides applicable guidance:
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See
Bancorp Servs., L.L. C. v. Sun Life Assurance Co. of Can.
(US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that
the required calculations could be performed more efficiently
via a computer does not materially alter the patent eligibility of
the claimed subject matter.").
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (emphases added).
Further regarding the use of a generic processor, see Alice, 134 S. Ct.
at 2358, holding that "the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention;"
Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1348 (Fed. Cir. 2016) ("An abstract idea on 'an Internet computer network'
or on a generic computer is still an abstract idea."); Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (quotation omitted);
("We have repeatedly held that such invocations of computers and networks
that are not even arguably inventive are 'insufficient to pass the test of an
inventive concept in the application' of an abstract idea.") (quotations
omitted); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1341 (Fed. Cir. 2017) ("Rather, the claims recite both a generic
computer element-a processor-and a series of generic computer
'components' that merely restate their individual functions .... That is to
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say, they merely describe the functions of the abstract idea itself, without
particularity. This is simply not enough under step two.").
Appellants further urge: "As is clear from the cited prior art, there are
many known techniques for determining product pricing for a product
category. Therefore, the alleged abstract idea as recited in the present claims
will not preempt the entire field of product pricing." (App. Br. 7)
(emphasis added).
Our reviewing court provides applicable guidance: "while preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1372 (Fed. Cir. 2015). Therefore, we are
not persuaded by Appellants' argument regarding the absence of complete
preemption.
Appellants summarize their arguments under Alice, step two:
In particular, the claims, in combination, recite, inter alia, a first
element of "generating an approximate Mixed Integer Linear
Programming (MILP) problem ... based on a sum of the
determined coefficients", a second element of "solving the
MILP problem using the binary decision variables to obtain a
MILP solution", and a third element of "converting the MILP
solution into the product pricing, wherein the price for
each product is set to a corresponding generated binary decision
variable". Therefore, each element works with other elements,
and in combination amounts to significantly more.
(App. Br. 9).
However, the category of abstract ideas embraces "fundamental
economic practice[s] long prevalent in our system of commerce." Alice, 134
S. Ct. at 2356. Here, it is our view that merchants have long determined
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product pricing using various modeling algorithms that take into account
demand and changes in demand with respect to offerings of other competing
products, which may be substitutes. This practice is a common fundamental
economic and business practice (e.g., applying the common economic
principles of price elasticity of demand, and considering elastic demand
versus inelastic demand). Furthermore, "simply appending conventional
steps, specified at a high level of generality, to laws of nature, natural
phenomena, and abstract ideas cannot make those laws, phenomena, and
ideas patentable." Mayo, 566 U.S. at 82.
Nor do we find Appellants' claims similar to the claimed solution the
court held to be patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). Here, we conclude Appellants' claimed
solution is not rooted in computer technology, such that the invention on
appeal overcomes a problem specifically arising in the realm of computers,
including computer networks, as was the case with the type of claim the
court concluded was patent-eligible in DDR Holdings. 4 (Id. at 1257).
We further conclude that independent claims 1, 8, and 15 are not
related to the type of patent-eligible database claim considered by the court
in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). We note
all claims 1, 3-8, 10-15, and 17-21 on appeal are silent regarding any
mention of a database. Therefore, none of Appellants' claims is directed to a
"self-referential table for a computer database" of the type considered in
Enfish, 822 F.3d at 1336.
4 We note Appellants' claims on appeal are silent regarding any mention of a
computer "network."
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In the Reply Brief (3), Appellants additionally cite to BASCOM
Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed.
Cir. 2016), as a second intervening case. However, the court guides in
Bascom, 827 F.3d at 1348, that implementing "[a]n abstract idea on 'an
Internet computer network' or on a generic computer is still an abstract
idea."
We find nothing in the claims on appeal that focuses on a specific
means or method that improves the recited "processor" or "computer."
(Independent claims 1, 8, and 15). In particular, we find the claims on
appeal are silent regarding specific limitations directed to an improved
computer system, processor, memory, network, database, or Internet.
Our reviewing court provides guidance regarding the use of such
generic computers and/or computer/network components. Elec. Power
Grp., 830 F.3d at 1355 ("We have repeatedly held that such invocations of
computers and networks that are not even arguably inventive are
'insufficient to pass the test of an inventive concept in the application' of an
abstract idea.") (Citation omitted)); Intellectual Ventures I, 850 F.3d at 1341
("Rather, the claims recite both a generic computer element-a processor-
and a series of generic computer 'components' that merely restate their
individual functions .... That is to say, they merely describe the functions
of the abstract idea itself, without particularity. This is simply not enough
under step two.").
We emphasize that our review for patent-eligible subject matter under
35 U.S.C. § 101 is independent from our review of the second ground of
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rejection presented in this appeal, which is based upon obviousness (and
addressed infra). 5
Because none of Appellants' claims on appeal is directed to an
improvement in a processor, database, or other computer/network
component, we conclude that none of the claim limitations, viewed "both
individually and as an ordered combination," amounts to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355
(internal quotations omitted) (quoting Mayo, 566 U.S. at 79).
Applying the aforementioned guidance from our reviewing courts to
the claims before us on appeal, we conclude, in our Mayo/Alice analysis, that
each of Appellants' claims 1, 3-8, 10-15, and 17-21, considered as a whole,
is directed to (under step one), a patent-ineligible abstract idea, and under
step two, does not recite something "significantly more" to transform the
nature of the claim into a patent-eligible application.
Therefore, we conclude the additional elements recited in the claims
of a processor or a computer, and the inclusion of certain steps, acts, or
functions that may be performed without a computer as mental steps
5 The Supreme Court emphasizes: "[t]he 'novelty' of any element or steps in
a process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981) (emphasis added). Our reviewing court further guides that
"[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd. v.
Comcast Cable Comm., LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed.
Cir. 2016) (holding that "[ e ]ven assuming" that a particular claimed feature
was novel does not "avoid the problem of abstractness").
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(although more slowly than a computer using pen and paper), do not provide
an inventive concept, without more. Accordingly, for at least the reasons
discussed above, we sustain the Examiner's rejection under 35 U.S.C. § IOI
of claims I, 3-8, IO-I5, and I7-2I, as being directed to patent-ineligible
subject matter in light of Alice and its progeny. 6
Rejection B of Claims 1, 3---8, 10-15, and 17-21under§103(a)
Regarding the obviousness rejection, Appellants contend, inter alia:
in Solanki, the input to the MILP problem is a non-linear or
linear optimization program, in contrast to embodiments of the
present invention in which the input is the coefficients as
claimed and the decision variables. There is no suggestion
in Solanki to generate an approximate Mixed Integer Linear
Programming ("MILP") problem that includes a change of
demand based on a sum of the determined coefficients from
pairs of products. Further, Solanki fails to disclose "converting
the MILP solution into the product pricing, wherein the price
for each product is set to a corresponding generated binary
decision variable."
(App. Br. IO-I I).
Issue: Under pre-AIA 35 U.S.C. § I03(a), did the Examiner err by
finding Solanki and Neal collectively teach or suggest contested limitations
LI and L2:
[LI] generating an approximate Mixed Integer Linear
Programming (MILP) problem wherein a change of demand for
each product is based on a sum of the determined coefficients;
[and]
6 To the extent Appellants have not advanced separate, substantive
arguments for particular claims, or other issues, such arguments are waived.
See 37 C.F.R. § 41.37(c)(l)(iv).
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[L2] converting the MILP solution into the product pricing,
wherein the price for each product is set to a corresponding
generated binary decision variable[,]
within the meaning of representative claim 1? See n.3, supra. (Emphasis
added).
Based upon our review of the record, we find consideration of
Appellants' arguments pertaining to limitation L 1 ("wherein a change of
demand for each product is based on a sum of the determined coefficients")
is dispositive to the obviousness rejection B before us on appeal. (Emphasis
added).
The Examiner finds Solanki teaches or suggests contested limitation
LI at col. 5, lines 9--57; col. 6, line 19 to col. 7, line 24. (Final Act. 14). 7
In the Answer (10-11), the Examiner further explains the basis for the
rejection:
Solanki discloses a coefficient (effect, weight) can be used to
indicate the change in the demand for an item at a location by
its own price and the price of other (second) items that have
cross effect on the demand (see col. 6, lines 19-67). Obviously
Solanki has calculated the coefficient, and the coefficient is
used to indicate the demand change relationship between the
first item and the second item.
(Emphasis added).
7 The Examiner finds Neal teaches or suggests contested limitation L2:
"converting the MILP solution into the product pricing (see col. 50, line 62
to col. 52, line 67), wherein the price for each product is set to a
corresponding generated binary (0, 1) decision variable (see col. 22, line 37
to col. 23, line 19 and col. 48, line 38 to col. 49, line 16)." (Final Act. 16).
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Regarding contested limitation L 1, we note Appellants admit that
"[t]he primary reference, Solanki,peiforms price optimization and uses a
MILP problem." (App. Br. 10) (emphasis added).
However, Appellants urge that Solanki "otherwise functions
differently than the present invention." (App. Br. 10). Appellants
specifically contend "in Solanki, the input to the MILP problem is a non-
linear or linear optimization program, in contrast to embodiments of the
present invention in which the input is the coefficients as claimed and the
decision variables." (App. Br. 10). Appellants emphasize: "There is no
suggestion in Solanki to generate an approximate Mixed Integer Linear
Programming ("MILP") problem that includes a change of demand based on
a sum of the determined coefficients from pairs of products." (App. Br. 10-
11) (emphasis added and omitted).
We note Solanki expressly refers to use of "[a] mixed integer linear
programming problem [that] is solved to snap prices to grid points."
(Abstract; see also col. 3, 11. 3 7--41: "mixed integer linear optimization
program 58 optimizes the solutions produced by the non-linear optimization
program 44 or linear optimization program 46 for the sub-problems 54.").
The Examiner states that even assuming Solanki does not explicitly
disclose determining coefficients for a change in demand of a first product
when a price of a second product is changed, the Examiner finds:
Neal discloses determining coefficients for a change in demand
of a first product when a price of a second product is changed to
one or more different price levels on a second product price
ladder (see col. 26, line 9: the cross-elasticity variable is to
quantify the effects of sales of one (first) demand group upon
the sales of another (second) demand group; See example on
column 23, Tables A and B, when examining a first demand
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group, the sales of other demand groups within the same
category are treated as variables which affect the sales of the
first demand group; The coefficient estimator uses these
imputed variables and data to estimate coefficients, which may
be used in an equation to predict demand. The sales for a
demand group (S) is calculated and a market share (F) for a
particular product is calculated. So that demand (D) for a
particular product is estimated by D=SF.A demand group is
defined as a collection of highly substitutable product; col. 48,
lines 20-60; and col. 50, lines 41-67), and repeating the
determining coefficients for at least all related pair of products
in the product category (see col. 45, lines 46-54 and col. 62,
lines 26-36: repeat solving the related problem involving all the
linear constraints).
(Ans. 11) (emphasis added).
We note Neal further describes: "[t]he coefficient estimator 308 uses
the imputed variables demand groups and data to estimate coefficients,
which may be used in an equation to predict demand." (Col. 25, 11. 21-23 ).
Although we have reviewed the various coefficients described in Neal, we
find the Examiner has not fully developed the record to clearly establish
"wherein a change of demand for each product is based on a sum of the
determined coefficients" (Claim 1) (emphasis added). Nor do we find
Solanki overcomes the deficiency of Neal.
At best, we find Solanki teaches "representing the weighted sum of
margin penalties" (col. 10, 1. 44), "representing the weighted sum of
competition penalties" (col. 10, 1. 53), and "representing the weighted sum
of item relationship penalties (col. 10, 1. 63)," which we find bear little
relationship to: "[L 1] generating an approximate Mixed Integer Linear
Programming (MILP) problem wherein a change of demand for each
product is based on a sum of the determined coefficients;" as recited in
claim 1.
18
Appeal 2016-008699
Application I3/303,235
Therefore, on this record, we find a preponderance of the evidence
supports the Appellants' contention that the Examiner has not shown how
either Solanki or Neal teach or suggest at least contested limitation LI. See
App. Br. IO-I3.
Accordingly, we reverse§ I03(a) rejection B of independent claim 1.
For the same reasons, we reverse rejection B of independent claims 8 and
I 5, which recite contested limitation LI using similar language of
commensurate scope. The remaining dependent claims rejected under
rejection B stand with their respective independent claim (1, 8, or I 5).
CONCLUSIONS
The Examiner did not err in rejecting claims I, 3-8, IO-I5, and
I 7-2I, under 35 U.S.C. § IOI, as being directed to patent-ineligible subject
matter.
The Examiner erred in rejecting claims I , 3-8, I 0-I 5, and I 7-2 I ,
under pre-AIA 35 U.S.C. § I03(a), as being obvious over the combined
teachings and suggestions of the cited references.
I9
Appeal 2016-008699
Application 13/303,235
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-8, 10-15,
and 17-21, under 35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1, 3-8, 10-15,
and 17-21, under pre-AIA 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See 37
C.F.R. § 41.50(a)(l).
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). See 37
C.F.R. § 41.50(±).
AFFIRMED
20