Ex Parte Lahmar et al

Patent Trials and Appeals Board

Jul 8, 2019

14057461 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/057,461 10/18/2013
10782 7590 07/10/2019
Target Brands Inc.
1000 Nicollet Mall, TPS-3165
Minneapolis, MN 55403
FIRST NAMED INVENTOR
Maher Lahmar
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.
201204603 1924
EXAMINER
ULLAH,ARIF
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
USPTO.Mail@target.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAHER LAHMAR,
DIPTESH BASAK,
SOMSUBHRA SIKDAR,
and ABHISHEK SINGH VERMA
Appeal2018-001506
Application 14/057 ,461 1
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
AMEE A. SHAH, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Target Brands, Inc.
(App. Br. 3).
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Application 14/057,461
STATEMENT OF THE CASE2
Maher Lahmar, Diptesh Basak, Somsubhra Sikdar, and Abhishek
Singh Verma (Appellants) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1, 3, 9-11, 13, 15-17, 19, and 20, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of optimizing product assortments.
Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[ 1] receiving, by a computing device, past sales data associated
with a plurality of stores;
[2] identifying, by the computing device, a reference assortment
including a first plurality of items;
[3] identifying, by the computing device, one or more
additional items that are not included in the first plurality of
items;
[ 4] determining, by the computing device, average sales for the
reference assortment over a predetermined period of time based
on the past sales data;
[5] determining, by the computing device, average sales for
each of one or more new assortments over the predetermined
period of time based on the past sales data, each new assortment
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed June 7, 2017) and Reply Brief ("Reply Br.," filed November 27,
2017), and the Examiner's Answer ("Ans.," mailed September 28, 2017),
and Final Action ("Final Act.," mailed February 8, 2017).
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including the first plurality of items and one or more of the
additional items;
[ 6] estimating, by the computing device, an incremental sales
volume increase associated with each of the one or more new
assortments, each estimation based on the average sales for the
reference assortment and the average sales for the associated
new assortment;
[7] testing, by the computing device, the estimated incremental
sales volume increase associated with each of the one or more
new assortments against one or more incremental sales volume
rules, wherein the one or more incremental sales volume rules
includes:
[7 .1] a first rule that tests whether adding a first item to a
first assortment results in a larger incremental sales
volume increase than adding the first item to a second
assortment having a greater number of items than the first
assortment,
[7 .2] a second rule that tests whether adding a first group
of items to a first assortment results in a larger
incremental sales volume increase than adding a second
group of items to the first assortment if the second set of
items is included within the first set of items,
[7 .3] a third rule that tests whether the incremental sales
volume increase associated with simultaneously adding a
plurality of items to a first assortment is less than a sum
of the incremental sales volume increases associated with
adding each of the plurality of items to the first
assortment,
and
[7.4] a fourth rule that tests whether the incremental sales
volume increase associated with simultaneously adding
multiple items to an assortment is equal to the
incremental sales volume increase associated with adding
each of the multiple items separately to the same
assortment, determining, by the computing device,
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whether any of the one or more new assortments violate
the one or more incremental sales volume rules;
[8] adjusting, by the computing device, the incremental sales
volume increase of any of the one or more new assortments that
violate the one or more incremental sales volume rules;
[9] identifying, by the computing device and after the
incremental sales volume increase of any of the one or more
new assortments that violate the one or more incremental sales
volume rules have been adjusted, which of the one or more new
assortments results in the largest incremental sales volume
mcrease;
and
[ 10] generating, by the computing device, one or more reports
indicative of the identified new assortment that results in the
largest incremental sales volume increase.
The Examiner relies upon the following prior art:
Schoenmeyr US 2005/0114196 Al
Desai
Connolly
Bottom
US 2008/0077459 Al
US 2008/0243588 Al
US 2011/0238459 Al
May 26, 2005
Mar. 27, 2008
Oct. 2, 2008
Sept. 29, 2011
Claims 1, 3, 9-11, 13, 15-17, 19, and 20 stand rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claims 1, 3, 10, 11, 13, 16, 17, 19, and 20 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Schoenmeyr, Desai, and Bottom.
Claims 9 and 15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Schoenmeyr, Desai, Bottom, and Connolly.
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ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of obviousness tum primarily on whether the references
describe "adjusting, by the computing device, the incremental sales volume
increase of any of the one or more new assortments that violate the one or
more incremental sales volume rules." Claim 1.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Schoenmeyr
01. Schoenmeyr is directed to optimizing a retail product
assortment beyond the point of exchanging poor products for
better selling varieties. Schoenmeyr para. 9.
Desai
02. Desai is directed to providing markdown prices. Desai para. 1.
Bottom
03. Bottom is directed to an assortment planning system. Bottom
para. 11.
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ANALYSIS
Claims 1, 3, 9-11, 13, 15-17, 19, and20rejectedunder35 U.S.C. § 101 as
directed to a judicial exception without significantly more
STEP 12
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[w]hat else
is there in the claims before us? To answer that question, ...
consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as 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 Corp. v. CLS Bank Intl, 573 U.S. 208, 217-18 (2014) (citations
omitted) ( citing Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine
what the claims are directed to. This begins by determining whether the
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019).
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claims recite one of the judicial exceptions ( a law of nature, a natural
phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims "apply, rely on,
or use 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." 2019 Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
Method claim 1 recites receiving sales data, identifying item data,
determining average sales data, estimating incremental sales data, applying
rules to test whether adding items meet various criteria, adjusting the sales
data, and generating a report. Identifying data is simply data retrieval and
analysis. Determining averages and applying rules using criteria are
rudimentary forms of analysis. Adjusting data is modifying data based on
analysis. Generating a report is displaying data. Thus, claim 1 recites
receiving, analyzing, modifying, and displaying data. None of the
limitations recite technological implementation details for any of these steps,
but instead recite only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
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Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts, 4 (2) certain methods of organizing
human activity, 5 and (3) mental processes. 6 Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of
managing product planning and distribution. Specifically, claim 1 recites
operations that would ordinarily take place in advising one to generate a list
describing an optimal product mix by applying decision criteria rules to
incremental sales estimates based on average sales calculations for different
mixes. The advice to generate a list describing an optimal product mix by
applying decision criteria rules to incremental sales estimates based on
average sales calculations for different mixes involves generating a product
mix for sale, which is an economic act, and using sales estimates to plan a
product mix, which is an act ordinarily performed in the stream of
commerce. For example, claim 1 recites "determining ... average sales,"
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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which is an activity that would take place whenever one is performing
commercial organizational planning. Similarly, claim 1 recites "estimating
... an incremental sales volume" and "generating ... one or more reports
indicative of the identified new assortment," which are also characteristics of
commercial organization planning for future transactions.
The Examiner determines the claims to be directed to collecting sales
data for product assortment, which is analogous to organizing information
through mathematical correlations. Final Act. 14.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in generating a report describing some assortment
absent any technological mechanism other than a conventional computer for
doing so.
As to the specific limitations, limitation 1 recites data retrieval.
Limitations 2---6 recite insignificant receiving, analyzing, and modifying, of
sales and item data, which advise one to apply generic functions to get to
these results. Of these, limitations 4---6 recite doing so using conventional
arithmetic averaging operations and somehow making an estimate based on
their results. Limitation 9 recites insignificant post solution display activity.
Limitations 7 and 8 are the only steps associated with performing what the
claim produces; they recite performing using rules to apply decision criteria
to test whether various item assortments meet those criteria and adjusting
sales data if any assortments violate the rules, which is simply adjusting data
based on the results of applying decision criteria. To advocate generating a
list describing an optimal product mix by applying decision criteria rules to
incremental sales estimates based on average sales calculations for different
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mixes is conceptual advice for results desired and not technological
operations.
The Specification at paragraph 1 describes the invention as relating to
optimizing product assortments. Thus, all this intrinsic evidence shows that
claim 1 is directed to generating a list describing an optimal product
assortment, i.e., managing product planning and distribution. This is
consistent with the Examiner's determination.
Managing product planning and distribution is a major activity in
coordinating the production activities of business members. The concept of
managing product planning and distribution, as advised to be done by
generating a list describing an optimal product mix by applying decision
criteria rules to incremental sales estimates based on average sales
calculations for different mixes, is an idea for how to identify of mix of
items for production and distribution. The steps recited in claim 1 are part of
the concept for how this idea might proceed.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Digitech Image Technologies, LLC
v. Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014)
(process of taking plural data sets and combining them into a single data
set);_Content Extraction & Transmission LLC v. Wells Fargo Bank, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (data collection, recognition, and storage); OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir.
2015) ( data optimization).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
modifying, and displaying data mimic human thought processes of
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observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data reception, analysis,
modification, and display and does not recite an improvement to a particular
computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract
because they "focused on a specific asserted improvement in computer
animation"). As such, claim 1 is directed to the abstract idea of receiving,
analyzing, modifying, and displaying data, and not a technological
implementation or application of that idea.
This is also an example of a mathematical concept because the steps
of computing averages, estimating sales, and applying quantitative criteria
perform mathematical algorithms. The remaining steps are mere data
gathering and incidental post processing steps.
From this we conclude that at least to this degree, claim 1 is directed
to managing product planning and distribution by generating a list
describing an optimal product mix by applying decision criteria rules to
incremental sales estimates based on average sales calculations for different
mixes.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to, this concept itself or whether it is instead directed to
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some technological implementation or application of, or improvement to,
this concept i.e., integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[A]pplication[s]" of such
concepts " 'to a new and useful end,' " we have said, remain
eligible for patent protection.
Accordingly, in applying the § 101 exception, we must
distinguish between patents that claim the " 'buildin[g]
block[ s]' " of human ingenuity and those that integrate the
building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 (citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Step 1 is a pure data gathering step. Steps 2-3 go
little further and simply identify data. Limitations describing the nature of
the data do not alter this. Step 9 is insignificant post solution activity, such
as displaying the results. Steps 4--8 recite generic computer processing
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. All purported inventive aspects
reside in how the data are interpreted and the results desired, and not in how
the process physically enforces such a data interpretation or in how the
processing technologically achieves those results.
Viewed as a whole, Appellants' claim 1 simply recites the concept of
managing product planning and distribution by generating a list describing
an optimal product mix by applying decision criteria rules to incremental
sales estimates based on average sales calculations for different mixes as
performed by a generic computer. This is no more than conceptual advice
on the parameters for this concept and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
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technology or technical field. The 14+ pages of Specification spell out
different generic equipment8 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of managing product planning and distribution by
generating a list describing an optimal product mix by applying decision
criteria rules to incremental sales estimates based on average sales
calculations for different mixes under different scenarios. They do not
describe any particular improvement in the manner a computer functions.
Instead, claim 1 at issue amounts to nothing significantly more than an
instruction to apply managing product planning and distribution by
generating a list describing an optimal product mix by applying decision
criteria rules to incremental sales estimates based on average sales
calculations for different mixes using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
8 The Specification describes processors, servers, tablets, desktop
computers, mainframes, cloud-based servers, virtual machines, or any
other computing device. Spec. para. 25.
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the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of
managing product planning and distribution by advising one to generate a
list describing an optimal product mix by applying decision criteria rules to
incremental sales estimates based on average sales calculations for different
mixes as distinguished from a technological improvement for achieving or
applying that result. This amounts to commercial or legal interactions,
which fall within certain methods of organizing human activity that
constitute abstract ideas. The claim does not integrate the judicial exception
into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, analyzing,
modifying, and displaying data amounts to electronic data query and
retrieval----one of the most basic functions of a computer. All of these
computer functions are generic, routine, conventional computer activities
that are performed only for their conventional uses. See Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011) ("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' ... those functions can be achieved by any
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general purpose computer without special programming"). None of these
activities are used in some unconventional manner nor do any produce some
unexpected result. Appellants do not contend they invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, "even
if a process of collecting and analyzing information is 'limited to particular
content' or a particular 'source,' that limitation does not make the collection
and analysis other than abstract." SAP Am., 898 F.3d at 1168.
Considered as an ordered combination, the computer components of
Appellants' claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-display is equally generic and conventional. See Ultramercial,
772 F.3d at 715 (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (sequence of data retrieval, analysis, modification,
generation, display, and transmission), Two-Way Media Ltd. v. Comcast
Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of
processing, routing, controlling, and monitoring). The ordering of the steps
is therefore ordinary and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
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are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '"
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by managing product
planning and distribution by advising one to generating a list describing an
optimal product mix by applying decision criteria rules to incremental sales
estimates based on average sales calculations for different mixes, without
significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 14--20 and Answer 4--11 and
reach similar legal conclusions (the Reply Brief does not further argue this
rejection). In addition, we make the following determinations.
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Appellants attempt to analogize the claims to those involved in
McRO. App. Br. 14--17. In McRO, the court held that, although the
processes were previously performed by humans, "the traditional process
and newly claimed method ... produced ... results in fundamentally
different ways." FairWarning, 839 F.3d at 1094 (differentiating the
claims at issue from those in McRO). In McRO, "[i]t is the incorporation
of the claimed rules, not the use of the computer, that improved the
existing technology process," because the prior process performed by
humans "was driven by subjective determinations rather than specific,
limited mathematical rules." 837 F.3d at 1314 (internal quotation marks,
citation, and alterations omitted). In contrast, the claims of the instant
application merely implement an old practice of using decision criteria in
making sales decisions in a new environment. Appellants have not argued
that the claimed processes of selecting products apply rules of selection in
a manner technologically different from those which humans used, albeit
with less efficiency, before the invention was claimed.
The claims in McRO were not directed to an abstract
idea, but instead were directed to "a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type." We explained that "the claimed
improvement [was] allowing computers to produce 'accurate
and realistic lip synchronization and facial expressions in
animated characters' that previously could only be produced by
human animators." The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
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We are not persuaded by Appellants' argument that "the recited claim
elements are not conventional steps that those in the field would have
routinely practiced, in that application of the recited claim limitations was
not widely prevalent at the time the application was filed." App. Br. 17. We
determine supra that the recited elements are no more than receiving,
analyzing, modifying, and displaying data. These are generic and
conventional operations that every general purpose computer performs.
That part of the analysis includes computing average quantitative numbers
does not alter this, as averaging is itself a mathematical computation.
Nothing "transforms" the abstract idea of encoding and
decoding into patent-eligible subject matter. Nor does the
presence of a mathematical formula dictate otherwise. Claims
that are directed to a non-abstract idea are not rendered abstract
simply because they use a mathematical formula. But the
converse is also true: A claim directed to an abstract idea does
not automatically become eligible merely by adding a
mathematical formula.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328 (Fed. Cir. 2017).
At bottom, the claims recite a series of mental operations that can be
performed with paper and pencil in a non-automated context. The Federal
Circuit has held that if a method can be performed by human thought alone,
or by a human using pen and paper, it is not patent-eligible under § 101.
CyberSource, 654 F.3d at 1373 ("[A] method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101."). Additionally, mental processes generally remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. Id. at 1375 ("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.").
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Simply reciting the claim in a computer implemented context does not alter
this. "The Supreme Court and this court have repeatedly made clear that
merely limiting the field of use of the abstract idea to a particular existing
technological environment does not render the claims any less abstract."
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016).
Claims 1, 3, 10, 11, 13, 16, 17, 19, and20rejectedunder35 U.S.C. § 103(a)
as unpatentable over Schoenmeyr, Desai, and Bottom
We are persuaded by Appellants' argument that
Desai teaches the relaxation of one or more lower priority rules
to ensure compliance with higher priority rules rather than
"adjusting ... the incremental sales volume increase of any of
the one or more new assortments that violate the one or more
incremental sales volume rules" as recited in independent claim
1. In other words, Desai teaches adjustment of lower priority
rules, whereas in Appellant's independent claim 1, the rules
themselves are not adjusted, but rather, "adjusting . . . the
incremental sales volume increase associated with each of the
one or more new assortments."
App. Br. 21-22 ( emphasis omitted). See also Reply Br. 2--4. The Examiner
in response cites portions of Desai that describe precisely what Appellants
contend and do not describe "adjusting, by the computing device, the
incremental sales volume increase of any of the one or more new
assortments that violate the one or more incremental sales volume rules."
Claim 1; Ans. 12-16.
Claims 9 and 15 rejected under 35 U.S.C. § 103(a) as unpatentable over
Schoenmeyr, Desai, Bottom, and Connolly
These are dependent claims and so the arguments are equally
persuasive here.
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Application 14/057,461
CONCLUSIONS OF LAW
The rejection of claims 1, 3, 9-11, 13, 15-17, 19, and 20 under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more 1s proper.
The rejection of claims 1, 3, 10, 11, 13, 16, 17, 19, and20under
35 U.S.C. § 103(a) as unpatentable over Schoenmeyr, Desai, and Bottom is
improper.
The rejection of claims 9 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Schoenmeyr, Desai, Bottom, and Connolly is improper.
DECISION
The rejection of claims 1, 3, 9-11, 13, 15-17, 19, and 20 is affirmed.
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)(l)(iv) (2011).
AFFIRMED
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