SAP SEDownload PDFPatent Trials and Appeals BoardJul 6, 20212020005614 (P.T.A.B. Jul. 6, 2021) Copy Citation 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. 15/383,133 12/19/2016 Volodymyr Vasyutynskyy 2058.B41US1 3430 50400 7590 07/06/2021 SCHWEGMAN LUNDBERG & WOESSNER/SAP P.O. BOX 2938 MINNEAPOLIS, MN 55402 EXAMINER LOFTIS, JOHNNA RONEE ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 07/06/2021 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): SLW@blackhillsip.com uspto@slwip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte VOLODYMYR VASYUTYNSKYY Appeal 2020-005614 Application 15/383,133 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the Examiner’s decision rejecting claims 1–5, 7–13, and 15–19. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. The Appellant identifies the real party in interest as SAP SE. Appeal Br. 2. Appeal 2020-005614 Application 15/383,133 2 ILLUSTRATIVE CLAIM 1. A computerized method for efficiently storing cost data and determining a product cost, the method comprising: receiving, by a first extractor, a first data source describing changes in the product cost over time; generating, by the first extractor, a first price trend model indicative of the product cost over time, the first price trend model comprising an indication of a model type of the first price trend model and an indication of at least one model coefficient of the first price trend model; storing the first price trend model at a price trend model repository of a database; receiving, by a second extractor, a second data source describing changes in the product cost over time; generating, by the second extractor, a second price trend model indicative of the product cost over time, the second price trend model comprising an indication of a model type of the second price trend model and an indication of at least one model coefficient of the second price trend model; storing the second price trend model at the price trend model repository; obtaining a cost structure for a product from the database, the cost structure describing one or more items affecting a cost of the product; selecting the first price trend model from the price trend model repository; obtaining the first price trend model from the price trend model repository of the database; computing, using a hardware processor, an item cost for each of the one or more items of the cost structure using the first price trend model; and computing, using the hardware processor, a cost of the product based on the item costs. Appeal 2020-005614 Application 15/383,133 3 REJECTION Claims 1–5, 7–13, and 15–19 are rejected under 35 U.S.C. § 101 as ineligible subject matter. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory categories may, nevertheless, be ineligible for patenting. The Supreme Court has interpreted 35 U.S.C. § 101 to exclude laws of nature, natural phenomena, and abstract ideas, because they are regarded as the basic tools of scientific and technological work, such that including them within the domain of patent protection would risk inhibiting future innovation premised upon them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013). Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply’” these basic tools of scientific and technological work. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly, evaluating ineligible subject matter, under these judicial exclusions, involves a two-step framework for “distinguish[ing] between patents that claim the buildin[g] block[s] of human ingenuity and those that integrate the building blocks into something more, thereby transform[ing] them into a patent- eligible invention.” Id. (alterations in original) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 88–89 (2012) (internal Appeal 2020-005614 Application 15/383,133 4 citation and quotation marks omitted)). The first step determines whether the claim is directed to judicially excluded subject matter (such as a so- called “abstract idea”); the second step determines whether there are any “additional elements” recited in the claim that (either individually or as an “ordered combination”) amount to “significantly more” than the identified judicially excepted subject matter itself. Id. at 217–18. In 2019, the USPTO published revised guidance on the application of § 101, in accordance with judicial precedent. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (“2019 Revised Guidance”).2 Under the 2019 Revised Guidance, a claim is “directed to” an abstract idea, only if the claim recites any of (1) mathematical concepts, (2) certain methods of organizing human activity, and (3) mental processes — without integrating such abstract idea into a “practical application,” i.e., without “apply[ing], rely[ing] on, or us[ing] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Id. at 52–55. The considerations articulated in MPEP § 2106.05(a)–(c) and (e)–(h) bear upon whether a claim element (or combination of elements) integrates an abstract idea into a practical application. Id. at 55 (referring to MPEP 9th ed. Rev. 08.2017, rev. Jan. 2018). A claim that is “directed to” an abstract idea constitutes 2 In response to received public comments, the Office issued further guidance on October 17, 2019, clarifying the 2019 Revised Guidance. USPTO, October 2019 Update: Subject Matter Eligibility (the “October 2019 Update”) (available at https://www.uspto.gov/sites/default/files/ documents/peg_oct_2019_update.pdf). The Manual of Patent Examining Procedure (“MPEP”) incorporates the revised guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2020-005614 Application 15/383,133 5 ineligible subject matter, unless the claim recites an additional element (or combination of elements) amounting to significantly more than the abstract idea. Id. at 56. Although created “[i]n accordance with judicial precedent,” the 2019 Revised Guidance enumerates the analytical steps differently than the Supreme Court’s Alice opinion. 2019 Revised Guidance, 84 Fed. Reg. at 52. Step 1 of the 2019 Revised Guidance addresses whether the claimed subject matter falls within any of the statutory categories of 35 U.S.C. § 101. Id. at 53–54. Step 2A, Prong One, concerns whether the claim at issue recites ineligible subject matter; if an abstract idea is recited, Step 2A, Prong Two, addresses whether the recited abstract idea is integrated into a practical application. Id. at 54–55. Unless such integration exists, the analysis proceeds to Step 2B, in order to determine whether any additional element (or combination of elements) amounts to significantly more than the identified abstract idea, which would render a claim patent-eligible, even though it is directed to judicially excepted subject matter. Id. at 56. The Appellant argues all claims as a group, using independent claim 1 as exemplary. See Appeal Br. 8–14. Per 37 C.F.R. § 41.37(c)(1)(iv), we select claim 1 for analysis herein. With regard to Step 1 of the 2019 Revised Guidance, the Examiner does not dispute that claim 1 belongs to an eligible category of invention, under § 101. Final Act. 3. As to Step 2A, Prong One, the Examiner determines that claim 1 recites “certain methods of organizing human activity, a type of abstract idea.” Final Act. 3–4. “More specifically,” the Examiner continues, Appeal 2020-005614 Application 15/383,133 6 the steps of receiving data describing changes in the product cost over time; generating a first and second price trend model; storing the first and second price trend models; obtaining a cost structure; obtaining a price trend model; computing an item cost and computing a cost of the product based on item costs is a process that, under its broadest reasonable interpretation, covers concepts relating to business relations as the cost information may be used for making production planning decisions, etc. Id. at 4. Disputing claim 1’s categorization as such a “certain method[ ] of organizing human activity” (Final Act. 3–4), the Appellant points out that reports generated by the claims involved in SRI Int’l, Inc. v. Cisco Systems, Inc., 918 F.3d 1368 (Fed. Cir. 2019), may likewise “be used for making planning decisions, and even conceivably production planning decisions.” Appeal Br. 10. Because the Federal Circuit, in SRI, determined that the claims in that case are patent-eligible, the same must be true for the claims in the present Appeal. Id. This argument is unpersuasive, because it misapplies the reasoning of SRI. The critical determination in SRI is that those claims were not directed to a judicial exception, because the claims employed “a specific technique — using a plurality of network monitors that analyze specific types of data on the network and integrating reports from the monitors — to solve a technological problem arising in computer networks: identifying hackers or potential intruders into the network.” SRI, 918 F.3d at 1375. In other words, the Federal Circuit did not base its decision, in SRI, on any bare determination that claim language includes judicial exception. Rather, SRI looked to the types of issues that the 2019 Revised Guidance addresses in Step 2A, Prong Two, to which we now turn. Appeal 2020-005614 Application 15/383,133 7 According to Step 2A, Prong Two, unless a claim that recites a judicial exception (such as an abstract idea) “integrates the recited judicial exception into a practical application of that exception,” the claim is “directed to” the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 53. The analysis of such an “integration into a practical application” involves “[i]dentifying . . . any additional elements recited in the claim beyond the judicial exception(s)” and “evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application.” Id. at 54–55. Among the considerations “indicative that an additional element (or combination of elements) may have integrated the exception into a practical application” is whether “[a]n additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field.” Id. at 55 (footnote omitted). “[W]hether an additional element or combination of elements integrate[s] the exception into a practical application should be evaluated on the claim as a whole.” Id. at 55 n.24. The Appellant raises matters relating to Step 2A, Prong Two, asserting that the claims accomplish a “technical solution to a technical problem” (Appeal Br. 9), “solv[e] a particular technology problem arising from computer technology” (id. at 11–12), and achieve a “practical application” (id. at 12–13), based upon a purported reduction in computer memory resources. The Appellant attributes the purported improvement to the claimed use of “extractor[s]” to receive “data source[s],” in order to generate “price trend model[s],” which are used to “comput[e]” item and product “cost[s].” See id. Appeal 2020-005614 Application 15/383,133 8 As an initial matter, the Appellant does not identify “additional elements” (see 2019 Revised Guidance, 84 Fed. Reg. at 54–55) — i.e., claim limitations that are not included within the identified judicial exception — as allegedly accomplishing the proposed technological improvement. Moreover, as the Examiner explains, the Appellant’s proposed improvement amounts to “storing a price trend model in place of historical price data”; thus, “[a]ny improvement to the memory footprint is based on storing less data” — that is, “[t]he computer is not improved.” Answer 3. Indeed, the Specification points out that “[c]onventionally, cost estimates are generated from databases of historical price information.” Spec. ¶ 2. By contrast, in the disclosed approach, as reflected in claim 1, “price trend model[s]” are created, based upon data in external sources — such as an ERP (enterprise resource planning) system, a website, or a third- party service provider — via “extractors.” Id. ¶¶ 22–28. The “price trend model[s]” are then used to predict product pricing. Hence, the proposed improvement: Since each price trend model may be characterized by just a few parameters, the memory footprint for the price trend model remains relatively small (in comparison, for example, to a memory footprint that contains the entire history of prices for an item). Id. ¶ 29. Rather than accomplishing a more efficient technique for storing the same information, these features of claim 1 simply “stor[e] less data,” as the Examiner explains. Answer 3. Therefore, we are not persuaded of error, in regard to the Appellant’s arguments corresponding to Step 2A, Prong Two. Appeal 2020-005614 Application 15/383,133 9 Proceeding to Step 2B of the 2019 Revised Guidance, 84 Fed. Reg. at 56, a claim that recites a judicial exception (such as an abstract idea) might, nevertheless, be patent-eligible, if the claim contains “additional elements amount[ing] to significantly more than the exception itself” — i.e., “a specific limitation or combination of limitations that [is] not well- understood, routine, conventional activity in the field, which is indicative that an inventive concept may be present.” See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer cannot transform a patent- ineligible abstract idea into a patent-eligible invention.”) Although the Appellant employs terminology associated with Step 2B — e.g., the proposed “unconventional arrangement” of elements (Appeal Br. 11) and the accomplishment of “an inventive concept that is substantially more than the abstract idea” (id. at 13) — the Appellant’s related arguments, in the Appeal Brief, assert the same position addressed above (regarding Step 2A, Prong Two). That is, the Appellant again argues that “claim 1 recites a specific arrangement for finding the cost of a product using a hardware processor in a manner that minimizes the usage of memory resources.” Id. See also id. at 11 (“[C]laim 1 recites an unconventional arrangement utilizing extractors and price trend models in the recited manner to generate a product cost in a way that minimizes memory usage.”) As addressed above, these arguments do not persuade us of Examiner error. Accordingly, per 37 C.F.R. § 41.37(c)(1)(iv), we sustain the rejection of claim 1 and claims 2–5, 7–13, and 15–19 under 35 U.S.C. § 101. Appeal 2020-005614 Application 15/383,133 10 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–5, 7–13, 15–19 101 Eligibility 1–5, 7–13, 15–19 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). 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