Ex Parte Cohen et al

Patent Trial and Appeal Board

Jul 31, 2018

14030287 (P.T.A.B. Jul. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/030,287 09/18/2013
74739 7590 08/02/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
Maxime Cohen
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.
2011-0044US01 6045
EXAMINER
KASSIM, HAFIZ A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/02/2018 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
Exparte MAXIME COHEN, KIRAN VENKATAPANCHAMGAM,
NGAI-HANG ZACHARY LEUNG, and GEORGIA PERAKIS 1
Appeal2017-004783
Application 14/030,287
Technology Center 3600
Before CAROLYN D. THOMAS, BRADLEY W. BAUMEISTER, and
MICHAEL J. ENGLE, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 1-5, 7-12, 14--17, 19, 20, and 24--26,
all the pending claims in the present application. Claims 6, 13, 18, and 21-
23 are canceled. See Claims Appendix. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The Appellants name Oracle International Corporation as the real party in
interest (App. Br. 2).
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Application 14/030,287
The present invention relates generally to determining promotional
pricing for a product. See Abstract.
Claim 8 is illustrative:
8. A method of determining promotional pricing for a
product and for an objective function, the method comprising:
receiving a non-linear time-dependent optimization
problem for the product, wherein the non-linear problem comprises a
demand model and a plurality of constraints, wherein the constraints
comprise a price ladder that comprises a plurality of time periods and
a non-promotional price for the product at each time period;
for each of the time periods, determining a change in the
objective function, wherein for each time period the price comprises a
promotional price and all other prices on the price ladder are set to the
non-promotional price to generate coefficients, wherein the objective
function is approximated by summing the products of each of the
coefficients with decision variables a\ wherein tis time and k is an
element on the price ladder;
determining a maximum value of the coefficients at each
time period;
generating an approximate Mixed Integer Programming
(MIP) problem based on the coefficients;
determining a Linear Programming (LP) relaxation of the
MIP problem comprising modifying the constraints; and
solving the LP relaxation to generate a vector of
promotional prices for the product at each time period along the price
ladder;
wherein modifying the constraints comprises modifying
a\ E:{0,1} to O :Sa\ :S 1 (Vt E: T; Vk E: {0,1, ... K} ).
Appellants appeal the following rejection: 2
Claims 1-5, 7-12, 14--17, 19, 20, and 24--26 are rejected under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
2 The Examiner withdraws the rejections under 35 U.S.C. § 112(a) and§ 103
(see Advisory Action dated Aug. 5, 2016, page 2).
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subject matter (Final Act. 16-18). 3
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010)
(precedential).
ANALYSIS
Rejection under§ 1 OJ
Issue: Did the Examiner err in determining that the claims are
directed to non-statutory subject matter?
In this regard, with respect to independent method claim 8, and
similarly, non-transitory computer-readable medium claim 1 and system
claim 15, the Examiner determines that the claims are directed to (1) "An
[Abstract] Idea of Itself ... Certain Methods of Organizing Human Activity
... and Mathematical Relationships/Formulas" (Final Act. 16-17). The
Examiner adds that "the limitations of these claims do not do significantly
more than recite the abstract idea implemented using generic computer
technology" (id. at 18). We agree with the Examiner for at least the reasons
infra.
3 The Examiner also objected to claims L 7, 8, 14, 15, and 17 (see Final
.Act 15). However, the propriety of the Examiner's objection relates to a
petitionable matter and not to an appealable matter. Objections to the claims
are petitionable matters under 3 7 C.F .R. § 181 to the Director of the US PTO.
See MPEP § 706.01. "[T]he Board will not hear or decide issues pertaining
to objections and fonnal matters which are not properly before the Board."
Id. Accordingly, we win not decide the objection.
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A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable. Alice Corp. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67
(1972) ("Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work."). Notwithstanding that a law of
nature or an abstract idea, by itself, is not patentable, the application of these
concepts may be deserving of patent protection. Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 70-73 (2012). In Mayo, the Court
stated that "to transform an unpatentable law of nature into a patent eligible
application of such a law, one must do more than simply state the law of
nature while adding the words 'apply it."' Id. at 72 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in
Mayo "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of these concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 79, 78).
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In other words, the second step is to "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."' Id. (brackets in original) ( quoting
Mayo, 566 U.S. at 73). The prohibition against patenting an abstract idea
"cannot be circumvented by attempting to limit the use of the formula to a
particular technological environment or adding insignificant post-solution
activity." Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation and
internal quotation marks omitted). The Court in Alice noted that "' [ s ]imply
appending conventional steps, specified at a high level of generality,' was
not 'enough' [in Mayo] to supply an 'inventive concept."' Alice, 134 S. Ct.
at 2357 (quoting Mayo, 566 U.S. at 82, 77, 72).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Appellants contend that "the Examiner fails to cite to ANY cases that
considered a similar concept to be abstract" (App. Br. 4), the Examiner is
"generalizing the alleged abstract idea at such a high level ... that it no
longer has ANY relationship to the recited limitations" (id. at 5); and "ANY
reasonable summary of the claims would not be considered an abstract idea
... in view of the allowance over the prior art" (id. at 5---6).
In response, the Examiner notes, and we agree, that "[t]he courts
consider the determination of whether a claim is eligible ... to be a question
of law ... and in most cases resolve the ultimate legal conclusion on
eligibility without making any factual findings" (Ans. 3). See, e.g., para. IV
"July 2015 Update: Subject Matter Eligibility" to 2014 Interim Guidance on
Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014)
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("The courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Accordingly, 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" (emphasis added) (footnote omitted)). Evidence may be
helpful in certain situations where, for instance, facts are in genuine dispute.
But it is not always necessary.
In any case, the Examiner highlighted some of the abstract concepts,
i.e., "collecting and comparing known information and [ o ]rganizing
information through mathematical correlations" and "Organizing Human
Activity" (see Final Act. 4 and 16-17). We determine that the Examiner's
cogent analysis relying on judicial examples (id.), albeit not always
expressly citing the specific cases, shows the Examiner provided adequate
basis for making the rejection.
Information collection and analysis, including when limited to
particular content, is within the realm of abstract ideas. See, e.g., Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(holding that "collecting information, analyzing it, and displaying certain
results of the collection and analysis" are "a familiar class of claims
'directed to' a patent-ineligible concept"); Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016); Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015); Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1370 (Fed. Cir. 2011).
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Courts have similarly determined that various methods of organizing
human activity fall "squarely within the realm of 'abstract ideas."' Alice,
13 4 S. Ct. at 23 5 7 ( discussing methods for risk hedging and intermediated
settlement as non-limiting examples of organizing human activity). Among
others, recent cases from the Federal Circuit also have "applied the 'abstract
idea' exception to encompass inventions pertaining to methods of organizing
human activity." In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 613
(Fed. Cir. 2016).
We determine the Examiner properly and reasonably found that
representative claim 8 is directed to an abstract idea, albeit at a higher level
of abstraction.
"An abstract idea can generally be described at different levels
of abstraction. As the Board has done, the claimed abstract idea
could be described as generating menus on a computer, or
generating a second menu from a first menu and sending the
second menu to another location. It could be described in other
ways, including, as indicated in the specification, taking orders
from restaurant customers on a computer."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016).
Regarding Appellants' argument about the Examiner's allowance of
the claims over prior art, we shall address this argument infra under the
second step of Alice.
Thus, we agree with the Examiner that representative claim 8 is
directed to an abstract idea.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
The Examiner should next identify all of the additional elements in
each claim and explain why these elements, individually or collectively, do
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not add significantly more than the abstract idea. Here, the Examiner
determines that "the limitations of these claims do not do significantly more
than recite the abstract idea implemented using generic computer
technology" (Final Act. 18). Again, we agree with the Examiner.
Appellants contend that "the present claims recite functionality that
goes well beyond the mere concepts of simply retrieving, comparing and
combining data using a computer" and "labeling the claim elements as 'well-
understood, routine and conventional activities' is in complete contrast to the
indication by the Examiner that the elements, in combination, are allowable
over the prior art" (App. Br. 7). In essence, Appellants are highlighting the
Examiner's lack of any pending prior art rejection as evidence of
significantly more in the claims. The Examiner determines, and we agree,
that "nonobviousness or novelty is not an indicia of eligibility - it is not an
indicia that limitations provide 'something more"' (Ans. 4). See Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016).
Indeed, "[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); see also
Mayo, 566 U.S. at 91 (rejecting "the Government's invitation to substitute
§§ 102, 103, and 112 inquiries for the better established inquiry under
§ 101 "). Here, the general finding that the particular prior art references do
not disclose all the limitations of or render obvious the asserted claims does
not resolve the question of whether the claims embody an inventive concept
at the second step of Mayo/Alice.
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The Examiner's determination here of "well-understood, routine[,]
and conventional" is directed to the technological environment of the claims
(Final Act. 7), which determination we find proper. That is, the Examiner
provides a rational basis for that conclusion stating:
The additional elements or combination of elements in the claims
other than the abstract idea per se amount to no more than mere
instructions to implement the idea on a computer and/or a recitation of
generic computer structure that serves to perform generic computer
functions that are well-understood, routine[,] and conventional
activities previously known to the pertinent industry.
Id.; see also Ans. 5 ( citing Spec. ,r 10 as evidence that the claimed
mathematical calculations are carried out on a generic computer); Ans. 7
( citing Spec. ,r,r 1, 2, 15, 17, 21, 26, 28, FI Gs 2, 3a, 3b, 4a, 4b as evidence
that the invention is directed to the abstract idea of employing business rules
to optimize prices on a generic computer structure performing generic
functions that are well-understood, routine and conventional activities).
Such an analysis is a factual determination. See Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018) ("Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the patent is a
factual determination."). We find the Examiner's noting the generic nature
of the component parts recited in the claims, supported by recent case law,
provides sufficient evidence of a generic computer system used to
implement the abstraction. See Credit Acceptance Corp. v. Westlake Servs.,
859 F.3d 1044, 1057 (Fed. Cir. 2017) ("Significantly, the claims do not
provide details as to any non-conventional software for enhancing the
financing process."); Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1342 (Fed. Cir. 2017) (explaining that "[o]ur law demands
more" than claim language that "provides only a result-oriented solution,
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with insufficient detail for how a computer accomplishes it"). Appellants
fail to persuasively demonstrate otherwise.
Appellants further contend that "[t]he present claims do not preempt
all systems and methods for performing the alleged abstract idea" (App.
Br. 8). Although pre-emption "'might tend to impede innovation more than
it would tend to promote it,' thereby thwarting the primary object of the
patent laws" (Alice, 134 S. Ct. at 2354 (citing Mayo, 566 U.S. at 71)), "the
absence of complete preemption does not demonstrate patent eligibility"
(Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015)). Moreover, because we determine the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. "Where a patent's claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [] preemption concerns
are fully addressed and made moot." Ariosa Diagnostics, 788 F.3d at 1379.
Appellants also contend that the claims "do improve the functioning
of the computer" because "a better result and improved computer
performance is achieved" (App. Br. 8-9). The Examiner determines, and we
agree, that "improving the efficiency ... does not improve the functioning of
the computer" (Ans. 9).
Appellants are reminded that "relying on a cornputer to perform
routine tasks more quickly or more accurately is insufficient to render a
claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359 ("use of a computer to
create electronic records, track multiple transactions, and issue simultaneous
instructions" is not an inventive concept)).
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Furthermore, as recognized by the Supreme Court, "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358 (concluding
claims "simply instruct[ing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer" not patent eligible); see
also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16 (Fed. Cir. 2014)
( claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet not patent
eligible); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims reciting "generalized software
components arranged to implement an abstract concept [ of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer" not patent eligible); and
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012)
("[s]imply adding a 'computer aided' limitation to a claim covering an
abstract concept, without more, is insufficient to render [a] claim patent
eligible" (internal citation omitted)).
Because Appellants' independent claims 1, 8, and 154 are directed to a
patent-ineligible abstract concept and do not recite something "significantly
more" under the second prong of the Alice analysis, we sustain the
Examiner's rejection of these claims as well as the respective dependent
claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
4 Alice also confirmed that if a patent's systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360. The same was true of the Alice patent's media claims. Id.
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For the foregoing reasons, Appellants' contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's § 101 rejection.
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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