Ex Parte Walker et al

Patent Trial and Appeal Board

Aug 30, 2017

11926769 (P.T.A.B. Aug. 30, 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.
11/926,769 10/29/2007 Jay S. Walker 058407/426802 4999
826 7590 09/01/2017
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
BROWN, LUIS A
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
09/01/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY S. WALKER, JOSE A. SUAREZ,
T. SCOTT CASE, MICHIKO KOBAYASHI, and
ANDREW P. GOLDEN
Appeal 2016-005177
Application 11/926,769
Technology Center 3600
Before JOSEPH L. DIXON, JOHN A. JEFFERY, and LARRY J. HUME,
Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-005177
Application 11/926,769
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a rejection of
claims 1—4, 30, 35—39, 42, and 43. Claims 5—29, 31—34, 40, and 41 have
been canceled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
The claims are directed to a system for utilizing redemption
information. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A method for computerized determination of whether to
accept an offer, the method comprising:
receiving, at a processor, a first offer from a customer
including a first offer price for a product;
receiving, at the processor, a location associated with the
customer;
receiving retail price information of the product from a
plurality of merchants offering the product in a geographic area
that is associated with the location;
identifying a plurality of merchant tiers for the geographic
area based on the retail prices received from the plurality of
merchants;
determining a lowest acceptable price for each merchant
tier;
accessing, by the processor, product information that is
stored in a storage device that identifies the lowest acceptable
prices of the product at retail locations in each merchant tier for
the geographical area, wherein the lowest acceptable prices are
different from the first offer price; and
determining, by the processor, whether to accept the first
offer based on a comparison between the first offer price and the
lowest acceptable prices of the product in each of the merchant
tiers for the geographical area.
1 Appellants indicate the real party in interest in this appeal is Groupon, Inc.,
the assignee. (App. Br. 2).
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REFERENCES
No prior art is relied upon by the Examiner in rejecting the claims on
appeal.
REJECTION2
The Examiner made the following rejection:
Claims 1—4, 30, 35—39, 42, and 43 stand rejected under 35 U.S.C.
§101 because the claimed invention is directed to patent-ineligible subject
matter. (Final Act. 3).
ANALYSIS
35 U.S.C. § 101
Claims 1—4, 30, 35—39, 42, and 43
Appellants argued these claims as a group. See App. Br. 4—19; Reply
Br. 2—10. We select claim 1 as the representative claim for this group, and
the remaining claims 2-4, 30, 35—39, 42, and 43 stand or fall with
representative claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
Appellants generally present arguments to the two-step Alice
framework reciting the specific abstract idea the Examiner had identified in
the claims prior to after final amendment. Appellants generally contend that
the two limitations from dependent claims 40 and 41 added to independent
claims 1 and 30, to overcome the prior art rejection, are significantly more
than the proffered abstract idea alone. (App. Br. 5—19). We note Appellants
present arguments to the abstract idea as set forth in the Final Office Action,
but the claims were subsequently amended. Both Appellants and the
2 The Examiner withdrew the obviousness rejection under 35 U.S.C. § 103
in the Advisory Action, dated July 13, 2015, after Appellants’ amended
independent claims 1 and 30 to include the limitations in dependent claims
40 and 41, which had been objected to by the Examiner.
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Examiner continue to argue the limited abstract idea as set forth in the Final
Office Action.
The Examiner maintains:
Using 1) stored location-based pricing data for a product in a
given area and 2) current received data for a product in a given
area that include an offer price to accept or reject the offer for the
product is a fundamental economic practice [in] the commerce
arts, and thus the claims include an abstract idea. Specifically,
the basic idea of comparing a submitted offer for a product at a
location, such as a customer putting in an offer for a television at
a local store, to stored data for local prices can easily be
performed by a human merchant when keeping in mind local
prices in their pricing and sales schemes. Price competition
between local vendors is fundamental to the commerce arts.
Computation of an average retail price is a simple mathematical
computation that is taken in the mathematical arts for thousands
of applications.
(Ans. 2). We find the additional steps added by amendment after the Final
Office Action additionally form part of the abstract idea.
With regards to step 1 of the Alice framework, Appellants further
proffer the Final Office Action failed to provide substantial evidence for the
factual findings that the identified concept was fundamental and long
prevalent. (App. Br. 6).
The Examiner relies upon the 2015 Guidelines which proffer that no
extrinsic evidence is necessarily required for the Alice analysis and finding
of an abstract idea.3 (Ans. 5—6). Additionally, the Examiner identifies the
old and well-known use of “flea market” and a “local pawnshop” as clear
examples by comparison of the fundamental economic practice of offer and
3 See, e.g., “July 2015 Update: Subject Matter Eligibility” to the “2014
Interim Guidance on Subject Matter Eligibility (2014 IEG) published on
Dec. 16, 2014 (79 Fed. Reg. 74618)”
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acceptance in commerce determining a price for a product based on price
comparison from other merchants in a geographic area. (Id. at 5).
While claim 1 covers a novel—and seemingly advantageous—method
for determination of whether to accept an offer, that does not suffice to
confer patent eligibility. “[U]nder the Mayo!Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial
L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). “[A] claim for a new abstract
idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1151 (Fed. Cir. 2016). “The search for a § 101 inventive
concept is thus distinct from demonstrating § 102 novelty.” Id.
Appellants disagree with the Examiner’s reliance upon a “flea
market” and a “local pawnshop” are well-known economic events.
Appellants address the Examiner’s theoretical examples of the flea
market and local pawnshop and proffer that they are based upon conjecture
and lack factual findings. (Reply Br. 3). We disagree. We find storing
price data was well-known and a fundamental economic practice, i.e., it has
been long prevalent to know the relevant price data and competitors’
relevant price data at different locations/tiers.
Appellants argue the Administrative Procedures Act requires
substantial evidence to support the factual findings of the administrative
agency and that documentary evidence is required, but the Examiner has
provided none. (App. Br. 6—8). Appellants additionally identify “Ex Parte
Poisson, Appeal 2012-011084, page 5, stating ‘the Examiner merely
expresses an opinion that “a set of rules qualifies as an abstract idea.” Yet,
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absent supporting evidence in the record — of which there is none, the
Examiner’s opinion is an inadequate finding of fact on which to base the
Alice analysis.’” (App. Br. 7—8). We note that this opinion is non-
precedential and, therefore, not binding on the Board. We further find the
factual situation in Ex Parte Poisson, Appeal 2012-011084—a non-
precedential opinion—to be distinguishable from the present factual
situation and not applicable to the current analysis.
The Examiner maintains:
Regarding the appellant's assertion that the rejection is
improper because "the final rejection failed to provide
substantial evidence required to support the factual findings that
the identified concept is "fundamental" and "longprevalent, the
examiner responds as follows:
1. First of all, the USPTO July 2015 Updated Guidelines for
Subject Matter Eligibility give clear articulation on page 3 that
"when identifying abstract ideas, examiners should keep in mind
that judicial exceptions need not be old or long-prevalent, and
that even newly discovered judicial exceptions are still
exceptions, despite their novelty." Also, on page 6, "courts do
not rely on evidence that a claimed concept is a judicial exception
and in most cases resolve the ultimate legal conclusion on
eligibility without making any factual findings." Specifically, it
is cited that A lice Corp., Myriad, Mayo, Bilski, Diehr, Flook, and
Benson relied solely on comparison to determine the claims
included a judicial exception, and not evidence. Further, Alice
Corp., Bilski, Diehr, Flook, and Benson did not rely on evidence
to show that the claims were not "significantly more."
(Ans. 4—5).
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has altered the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue to “treat[] analyzing information by steps people go
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through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354). As the
Specification itself observes, “[t]he storage device 260 also stores i) a
retailer database 800, ii) a customer database 900, iii) a retailer tier database
1000, iv) a redemption tracking database 1100, v) a redemption transaction
database 1200, vi) a retail price database 1300, and vii) a market share
database 1400.” (Spec. 13; see also id. at 17, 19). Consequently, the retailer
tiers are merely a representation of prices grouped in memory.
We find this type of activity, i.e., grouping of priced items includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 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”). Cybersource further guides that “a method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.” Id. at 1373.
Additionally, we find both buySAFE, Inc. v. Google, Inc., 765 F.3d
1350 (Fed. Cir. 2014) and OIP Technologies, Inc. v. Amazon.com, Inc., 788
F.3d 1359 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701 (2015) pertain to
offer and acceptance in commercial transactions using a computer, but were
found to be directed to patent ineligible subject matter.
The Examiner further maintains:
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The examiner gave a clear example by comparison of the
fundamental economic practice of determining a price for a
product based on price comparison from other merchants in a
geographic area. This could even be done in a flea market setting
1,000 years ago, in which a seller would receive an offer for a
price, compare the offer to the prices of other vendors selling a
similar product, and then making a determination to accept or
reject the offer based on the pricing information. Further, the
examiner gave the more modem example of customer putting in
an offer for a television at a local pawn shop, the human
owner/seller accessing data for local prices online, such as Sony
D-950 Television, $25.00, and Zip Code 23456, and then the
seller making a determination of acceptance or rejection of the
offer based on average retail price in the local area.
(Ans. 5). We agree with the Examiner, as discussed above, that knowledge
and use of competitors’ prices was long prevalent and known in the
commercial field.
Yet, patent eligibility is a legal question. Additionally, we note the
background of the invention generally identifies the well-known use of
online shopping (Spec. 2) which further evidences the fundamental
economic practice long prevalent in our system of commerce of offer and
acceptance in a commercial transactions.
Appellants further contend the identified concept is not fundamental
or long prevalent in our system of commerce, but provide no support for the
conclusion. (App. Br. 9).
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
The “directed to” inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether “their character as
a whole is directed to excluded subject matter.” Internet Patents Corp. v.
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Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016)
(inquiring into “the focus of the claimed advance over the prior art”); see
also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
“The ‘abstract idea’ step of the inquiry calls upon us to look at the ‘focus of
the claimed advance over the prior art’ to determine if the claim’s ‘character
as a whole’ is directed to excluded subject matter.” Affinity Labs of Texas v.
DIRECTTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). “In
determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
Claim 1 sets out 7 steps such that (1) receiving, at a processor, a first
offer; (2) receiving, at the processor, a location; (3) receiving retail price
information; (4) identifying a plurality of merchant tiers; (5) determining a
lowest acceptable price; (6) accessing, by the processor, product
information; and (7) determining, by the processor, whether to accept.
Claim 1 as whole, as the Examiner fairly determined, is directed to offer and
acceptance of a price. (See generally Final Act. 3; Ans. 2—3).
Appellants generally contend that “[i]n contrast, the idea of ‘[u]sing 1)
stored location-based pricing data for a product in a given area and 2)
current received data for a product in a given area that include an offer price
to accept or reject the offer for the product’ is certainly not a ‘basic tool of
scientific and technological work’ or a building block of the modem
economy.” (App. Br. 9). We disagree with Appellants, as discussed above,
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and find that Appellants are merely using stored price data for offer and
acceptance of a price.
Accordingly, we see no error with the Examiner’s conclusion that
claim 1 is directed to offer and acceptance of a price. Nor do we see any
error in characterizing offer and acceptance of a price as an abstract idea.
We now proceed to the second step. Step two is “a 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.’” Alice, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). In that regard, we agree with the
Examiner that “[t]he limitations are merely instructions to implement the
abstract idea on a computer and require no more than a generic computer to
perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.” (Ans. 4).
Appellant’s arguments to the contrary are unpersuasive because they
focus on a lack of evidence presented by the Examiner rather than
limitations in the claims and how they amount to more than simply taking
the abstract idea and adding the words “apply it,” or “apply it with a
computer.”
Appellants further contend:
features recited in pending claims do not simply apply the idea
of “[u]sing 1) stored location-based pricing data for a product in
a given area and 2) current received data for a product in a given
area that include an offer price to accept or reject the offer for the
product.” Instead, the features recited in these claims recite an
“inventive concept” under Step 2 of the Two-Step Framework
that, while involving this concept, integrates the concept into a
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practical application that steers clear of any pre-emption risk. As
a result, Appellant respectfully submits that the pending claims
necessarily include “significantly more” than the idea of “[u]sing
1) stored location-based pricing data for a product in a given area
and 2) current received data for a product in a given area that
include an offer price to accept or reject the offer for the product”
itself.
(App. Br. 14—15). We disagree with Appellants and find Appellants’
argument is based upon merely “using” stored economic data. We find
using stored data is not “significantly more,” but merely conventional use of
different data in the offer and acceptance commercial transaction.
Appellants maintain that the Examiner’s rationale under Step 2 is
insufficient and generally contends that the Examiner has not addressed all
of the additional elements in the conclusion that the additional elements do
not add significantly more than the exception. (App. Br. 15—19). Appellants
generally contend “Appellant reiterates that claims are patentable unless the
Patent Office can demonstrate why they are not” and the Examiner has not
met his burden. (Id. at 16).
We find Appellants’ arguments to generally proffer that the
Examiner’s statements are insufficient or conclusory, but Appellants
similarly present conclusory arguments and do not specifically identify
anything that is “significantly more” than implementing the use of the stored
information to determine whether to accept the offer. We find Appellants’
argument to be unpersuasive to evidence that independent claim 1 is directed
to patent eligible subject matter.
Reply Brief
In the Reply Brief, Appellants contend that the Examiner has not
provided substantial evidence for the factual findings and underpinnings in
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the Final Office Action’s conclusion of ineligibility. (Reply Br. 2-4).
Appellants contend the 2015 Guidelines is not a shield to prevent the
application of substantive law, and with respect to the Examiner’s examples
of flea market and pawnshop, “[t]hese hypothetical situations, even if taken
as fact, do not compel the conclusion that the supposedly abstract concept -
which eliminates the need to perform this legwork in real time — would be
considered fundamental as of its effective filing date.” (Reply Br. 3).
Appellants further contend the Examiner’s Answer fails to provide any
reasoning for concluding the claims are “geared to” those “certain” abstract
methods of organizing human activity, and thus fails to establish the claims
are directed to an abstract idea. Appellants further contend the Examiner
improperly evaluates the additional elements in independent claim 1
regarding Step 2B in the analysis. (Reply Br. 4).
Appellants further argue:
First, the Alice Court reiterated that “‘[s]imply appending
conventional steps, specified at a high level of generality,’ was
not 'enough' to supply an ‘“inventive concept.’”” Id. Here,
however, the steps of “identifying a plurality of merchant tiers
for the geographic area based on the retail prices received from
the plurality of merchants” and “determining a lowest acceptable
price for each merchant tier” are not specified at a high level of
generality. Indeed, it is only when boiled-down by the
Examiner's Answer itself to “accessing of stored data” and “a
look-up value on a data structure in a database” that such is the
case. And as actually-recited, these claims are not drawn
broadly to accessing of any type of data or use of any look-up
table; they are specific steps for achieving a focused goal:
identifying lowest acceptable prices for each of a plurality of
merchant tiers.
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(Reply Br. 5). Finally, Appellants argue:
Alice makes clear that what is enough according to the Supreme
Court, is the addition of claim elements that demonstrate that
“the claims ... improve[] an existing technological process”
rather than merely illustrate that the existing technological
process is “implemented on a computer.” Id. at 2358. The
existing process is alleged to be the idea of “[u]sing 1) stored
location-based pricing data for a product in a given area and 2)
current received data for a product in a given area that include an
offer price to accept or reject the offer for the product.” Given
this formulation, the additional use of “merchant tiers” as recited
in the claims improves this existing process by enabling more
granular and accurate minimal acceptable price determinations,
thus allowing better-optimized negotiations between customers
and merchants than would be possible with the much rougher
filter of pricing that is based merely on “location-based pricing
data for a product.”
(Reply Br. 6). Appellants further dispute the Examiner’s reliance upon
SmartGene v. Advanced Biologic Laboratories for a meaningful comparison
of patent and eligible subject matter. (Reply Br. 9—10). Appellants contend
that SmartGene decision is non-precedential, decided before Alice decision,
and there is no meaningful factual similarity.
We find Appellants’ general contentions to be unavailing because
Appellants do not identify any meaningful difference in the court’s
reasoning as applied to a set of facts. We find each of the separate claimed
steps is not meaningfully interrelated with the other steps so as to be more
than what merchants can do and perform in their heads or with paper and
pencil.
Accordingly, we sustain the Examiner’s rejection of claims 1—4, 30,
35—39, 42, and 43 under 35 U.S.C. § 101.
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Appellants do not set forth separate arguments for patentability of any
of the dependent claims. Consequently, the remaining claims stand or fall
with representative independent claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
The Examiner did not err in rejecting claims 1—4, 30, 35—39, 42, and
43 based upon a lack of patent-eligible subject matter.
DECISION
For the above reasons, we sustain the Examiner’s rejection of claims
1^1, 30,35-39, 42, and 43.
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(f).
AFFIRMED
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