Ex Parte Brereton et al

Patent Trial and Appeal Board

Dec 21, 2018

15018274 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
15/018,274 02/08/2016
48233 7590 12/26/2018
SCULLY, SCOTT, MURPHY & PRESSER, P.C.
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
JoAnn P. Brereton
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.
YOR920150304US 1
(31964)
CONFIRMATION NO.
3912
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
IBMPAIRENotify@ssmp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
ExparteJOANNP. BRERETON, AJAY A. DESHPANDE, HONGLIAN
PEI, ARUN HAMP APUR, MIAO HE, KIMBERLY D. HENDRIX, STEVE
IGREJAS, ALAN J. KING, YINGJIE LI, XUAN LIU, CHRISTOPHER S.
MILITE, JAE-EUN PARK, VADIRAJA S. RAMAMURTHY, JOLINE
ANN V. UICHANCO, SONGHUA XING, and XIAO BO ZHENG
Appeal 2017-011258
Application 15/018,274
Technology Center 3600
Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and
SCOTT E. BAIN, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the final rejection
of claims 1-22. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify International Business Machines Corporation as the
real party in interest. App. Br. 1.
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Application 15/018,274
STATEMENT OF THE CASE
Introduction
Appellants' Specification describes "a system and method for
optimizing source selections of an online order" that "minimizes the
fulfillment cost of an order by considering multiple types of parameters,
including shipping costs, backlog costs and markdown savings of the order
to optimize the source selections." Spec. ,r 15.
Exemplary Claim
Claim 1 is illustrative of the invention and reads as follows.
1. A computer implemented method for optimizing
selections for sourcing an online order for a plurality of items,
compnsmg:
obtaining an order for a plurality of items from an
internet on-line order retrieval subsystem of an order
management system (OMS) of a merchant;
automatically selecting a plurality of candidate sources
from the OMS;
automatically retrieving data of the selected candidate
sources, including retrieving inventory data obtained from a
merchant inventory subsystem, backlog data obtained from a
source shipping subsystem for each candidate source and
markdown availability data obtained from the merchant
inventory subsystem, the markdown availability data including
unit price, unit cost and markdown rate for each item;
automatically calculating cost parameters and saving
parameters of each of the selected candidate sources by
utilizing the retrieved data, the cost parameters and saving
parameters comprising shipping costs, markdown savings, cost
per backlog day and backlog days, including calculating the
markdown savings based on the markdown availability data;
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automatically identifying a plurality of sourcing
selections of the order from the selected candidate sources, each
sourcing selection comprising one or more candidate source;
automatically calculating a fulfillment cost for each
sourcing selection of the order by adding the shipping costs
with the backlog costs, and subtracting the markdown savings
of all candidate sources in each sourcing selection;
automatically applying constraints to the fulfillment cost
calculation based on order handling capacity data and safety
stock data obtained from the source shipping subsystem for
each sourcing selection;
automatically generating a sourcing selection of the order
with the lowest fulfillment cost based on the applied
constraints;
automatically providing the sourcing selection with the
lowest fulfillment cost based on the applied constraints to the
OMS for order execution.
The Examiner's Rejection
Claims 1-22 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. Final Act. 7-9.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments (Appeal Brief and Reply Brief) that the Examiner has erred. We
are unpersuaded by Appellants' contentions and agree with and adopt the
Examiner's findings and conclusions in (i) the action from which this appeal
is taken (Final Act. 7-9) and (ii) the Answer (Ans. 3-13) to the extent they
are consistent with our analysis below.
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Principles of Law
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. v.
CLS Bankint'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, 79 (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. Otherwise, the inquiry proceeds
to the second step where 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, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or instead are directed to a
result or effect that itself is the abstract idea and merely invoke generic
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processes and machinery. See Enfish, LLC v. Microsoft Corp., 822 F .3d
1327, 1336 (Fed. Cir. 2016).
The Examiner's Determinations
Considering the first part of the Alice/ Mayo analysis, the Examiner
determines:
Claims 1-22 are directed to the abstract idea of "selecting
sourcing for an online order based on fulfillment cost" as
shown by the steps of obtaining an order for a plurality of
items; selecting a plurality of candidate sources; retrieving data
of the selected candidate sources calculating cost parameters
and saving parameters of each the selected candidate sources;
identifying a plurality of sourcing selections of the order from
the selected candidate sources; calculating a fulfillment cost for
each sourcing selection; identifying the sourcing selection of
the order with the lowest fulfillment cost; applying constraints
to the fulfillment cost calculation based on order handling
capacity data and safety stock data; generating a sourcing
selection of the order with the lowest fulfillment cost based on
the applied constraints; and providing the sourcing selection
with the lowest fulfillment cost.
Final Act. 7-8. The Examiner further finds the recited concept "corresponds
to concepts identified as abstract ideas by the courts, such as Mathematical
relationships/formulas and/or An idea 'of itself."' Final Act. 8. The
Examiner further determines "[t]he claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to significantly
more than the abstract idea." Id.
Additionally, with respect to the second part of the Alice/Mayo
analysis, the Examiner determines the recited components "would be routine
in any computer implementation of the abstract idea" and "the 'obtaining'
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and 'retrieving' steps appear to be extra-solution data gathering- also, a
well-known and routine computer function." Id. Lastly, the Examiner finds
"[t]here is no indication that the combination of elements improves the
functioning of a computer or improves any other technology." Final Act. 9.
Appellants ' Contentions
Appellants contend the Examiner erred. See App. Br. 6-16. Without
disputing the Examiner's determination that "claims 1-22 are directed to the
abstract idea of 'selecting sourcing for an online order based on fulfillment
cost,"' Appellants argue that "the claims do include additional elements that
are sufficient to amount to significantly more than the abstract idea." App.
Br. 6-7. Appellants assert "the 'automatically calculating cost parameters
and saving parameters' step and 'the automatically calculating a fulfillment
cost' step, do amount to significantly more individually, as neither were
found individually to be taught or suggested in the prior art." App. Br. 8.
Appellants further argue the claims are directed to an inventive
concept that is similar to the claims in DDR Holdings, LLC v. Hotels.com
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014). See App. Br. 9-12. Next,
Appellants characterize their claims as the concept claimed in Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
and assert their claimed elements "are an advancement over the prior art as
noted above, which solves a technological problem of optimizing sourcing
selections for orders made from an on-line order retrieval subsystem of a
computerized order management system, by automatically providing the
sourcing selection with the lowest fulfillment cost based on applied
constraints." App. Br. 12-13. Further, citing McRO, Inc. v. Bandai Namco
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Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), Appellants contend the
recited steps in their claims
of automatically calculating cost and saving parameters,
calculating the fulfillment cost and applying the specify
constraints, renders information into a specific format that is
then used and applied to create desired results: optimizing
selections for sourcing an online order by automatically
generating a sourcing selection of the order with the lowest
fulfillment cost.
App. Br. 13-15.
Discussion
We are not persuaded by Appellants' argument that claims 1, 9, and
16 are similar to the claims in DDR Holdings. See App. Br. 9-12. In DDR
Holdings, the disputed claims solved an Internet-specific problem with an
Internet-based solution that was "necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks." DDR Holdings, 773 F.3d at 1257-58. In DDR Holdings, the
Federal Circuit determined that the claims addressed the problem of
retaining website visitors who, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be transported instantly
away from a host's website after clicking on an advertisement and activating
a hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal Circuit, thus,
held that the claims were directed to statutory subject matter because they
claim a solution "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
Id. The court cautioned that "not all claims purporting to address Internet-
centric challenges are eligible for patent." Id. at 1258.
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That is not the case here. Instead, consistent with the Examiner's
findings, the problem of"' selecting sourcing for an online order based on
fulfillment cost' is not 'necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
networks."' See Ans. 7.
Also, as stated by the Examiner (Ans. 8-9), our reviewing court has
found similar methods to be abstract ideas. "[W]e have treated collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas."
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
( citations omitted). "In a similar vein, we have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Id. at 1354. "And we have recognized that merely
presenting the results of abstract processes of collecting and analyzing
information, without more ( such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis."
Id.
Appellants have not persuasively argued, nor provided sufficient
evidence why the claim recitations regarding "automatically calculating cost
parameters" and "automatically calculating a fulfillment cost" are not
routine computer functions that produce more data. Reply Br. 6-7. See,
e.g., 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.") ( quotations omitted); BASCOM Glob.
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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."); Alice, 134 S. Ct. at 2358 ("[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.").
We also agree with the Examiner that the claimed subject matter has
provided no actual improvement to the machine or technology itself, or
solved a technological problem. Ans. 10. As stated by the Examiner, at
best, the claims provide "an improvement to a business/pricing functionality,
not an improvement to the overall data processing system." Id. See Amdocs
(Israel) Ltd., 841 F.3d at 1294 (explaining that, in determining whether
claims are patent-eligible under § 101, "the decisional mechanism courts
now apply is to examine earlier cases in which a similar or parallel
descriptive nature can be seen-what prior cases were about, and which way
they were decided").
We are also unpersuaded by Appellants' argument that the Examiner
improperly characterizes the claims as reciting "well[ -]understood, routine
and conventional functions," citing McRO, Inc., 837 F.3d 1299. See App.
Br. 13-15. McRO 's holding does not extend to all improvements of a
computer-implemented function. As the court explains at length, McRO's
invention is patent-eligible because it unconventionally automates a
function. 837 F.3d at 1313-15. In Alice's terminology, McRO's invention
thus improved the "technological process" of automating a function-not
(merely) the function. Alice, 134 S. Ct. at 2358. Appellants' claim 1, in
contrast, at best adds a new function-i.e., "automatically calculating cost
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parameters" and "automatically calculating a fulfillment cost," as opposed to
unconventionally automating the calculation of those parameters.
In addressing the Examiner's citation of the holding in Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015), Appellants do
not direct attention to, and we do not see, where their Specification provides
that the computer system processing device acts in an abnormal manner or
outside of its ordinary capacity. Rather, the claims recite an invention that
merely implements the abstract idea through the routine or conventional use
of generic computer components. See Versata, 793 F.3d at 1334--35 (use of
general purpose computer to implement abstract idea of using organizational
and group hierarchies to determine a price was not rooted in computer
technology to solve a problem specifically arising in computer technology).
See also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1097 (Fed.
Cir. 2016) and DDR Holdings, 773 F.3d at 1258-59.
In sum, Appellants' claims are "directed to nothing more than the
performance of an abstract business practice ... using a conventional
computer. Such claims are not patent-eligible." DDR Holdings, F.3d at
1256. That is to say, they merely describe the functions of the abstract idea
itself, without particularity. This is simply not enough under step two.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (Fed. Cir. 2015) ("[T]he 'interactive interface' simply describes a
generic web server with attendant software, tasked with providing web pages
to and communicating with the user's computer."). We, therefore, sustain
the Examiner's rejection of claims 1-22 under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner's decision to reject claims 1-22.
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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