Ex Parte Musgrove et al

Patent Trials and Appeals Board

Jan 31, 2019

14869399 - (D) (P.T.A.B. Jan. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/869,399 09/29/2015
128144
RimonPC
7590
One Embarcadero Center
Suite 400
San Francisco, CA 94111
02/04/2019
FIRST NAMED INVENTOR
Timothy Allen Musgrove
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.
10-350-US-CS 8473
EXAMINER
SYED,FARHANM
ART UNIT PAPER NUMBER
2165
NOTIFICATION DATE DELIVERY MODE
02/04/2019 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):
eofficeaction@appcoll.com
docketing.rimonlaw@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY ALLEN MUSGROVE and ROBIN HIROKO WALSH
Appeal2018-004127
Application No. 14/869,399 1
Technology Center 2100
Before MARC S. HOFF, JOHN D. HAMANN, and SCOTT E. BAIN,
Administrative Patent Judges.
HOFF, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
Appellants' invention is a method and computer system for
determining allied product information for products corresponding to
product records stored in a computer-readable catalog data structure. App.
Br. 2. The invention determines whether a first product record and a second
product record correspond to allied products, based on the number of
1 The real party in interest is CBS Interactive Inc. App. Br. 2
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Application No. 14/869,399
product record attributes found to be in common. Upon such a
determination, the catalog data structure is modified by adding allied product
data to indicate that at least one product in a first category is allied with at
least one product in a second category, and allied product data is saved in the
catalog data structure. App. Br. 3--4.
Claim 1 is reproduced below:
1. A method executed by one or more computing
devices for determining allied product information for products
corresponding to product records stored in a computer-readable
catalog data structure including categories, the product records
having attributes associated therewith, the method comprising:
identifying, by at least one of the one or more computing
devices, at least one first attribute of at least one first product
record in a first category;
identifying, by at least one of the one or more computing
devices, at least one second attribute of at least one second
product record in a second category;
determining, by at least one of the one or more
computing devices, a number of the at least one first attribute
and the at least one second attribute that are common;
resolving, by at least one of the one or more computing
devices, a relationship in the catalog data structure between the
at least one first product record and the at least one second
product record; and
determining, by at least one of the one or more
computing devices, whether the at least one first product record
and the at least one second product record correspond to allied
products based on the number of the at least one first attribute
and the at least one second attribute that are common and said
resolving step;
transforming, by at least one of the one or more
computing devices, the catalog data structure by adding allied
product data to set at least one product corresponding to the at
least one first product record in the first category as allied with
at least one product corresponding to the at least one second
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Application No. 14/869,399
product record in the second category based at least in part on
the results of the comparing step; and
saving, by at least one of the one or more computing
devices, allied product data in the catalog data structure.
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Musgrove et al. US 9,177,059 B2 Nov. 3, 2015
Musgrove et al. US 7,082,426 B2 July 25, 2006
Musgrove et al. US 6,714,933 B2 Mar. 30, 2004
Musgrove et al. US 6,535,880 Bl Mar. 18, 2003
Blutinger et al. us 5,231,566 July 27, 1993
Joseph us 5,878,401 Mar. 2, 1999
Claims 1-8 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Blutinger and Joseph.
Claim 1-8 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. 2
Claims 1-8 stand rejected on the grounds of nonstatutory double
patenting as being unpatentable over claims 1-12 of U.S. Patent No.
9,177,059.
Claims 1-8 are rejected on the grounds ofnonstatutory double
patenting as being unpatentable over claims 32-51 of U.S. Patent 7,082,426.
2 The Examiner made this rejection and designated it as a new ground in the
Answer. Ans. 3.
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Claims 1--4 are rejected on the grounds of nonstatutory double
patenting as being unpatentable over claims 23-25 of U.S. Patent 6,714,933.
4. Claims 1-8 are rejected on the grounds of nonstatutory double
patenting as being unpatentable over claims 1-24 of U.S. Patent 6,535,880.
Throughout this decision, we make reference to the Appeal Brief filed
Aug. 1, 2017 ("App. Br."), the Reply Brief filed Mar. 5, 2018 ("Reply Br."),
and the Examiner's Answer mailed Feb. 16, 2018 ("Ans."), for their
respective details.
ISSUES
1. Is the claimed invention directed to a judicial exception?
2. Is the judicial exception integrated into a practical application?
3. Does the combination of Blutinger and Joseph disclose or fairly
suggest determining whether at least one first product record and at least one
second product record correspond to allied products?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. v. CLS Bank Int 'l,
573 U.S. 208,216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category,
we are guided by the Supreme Court's two-step framework, described in
Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with
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that framework, we first determine what concept the claim is "directed
to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are
drawn to the concept of intermediated settlement, i.e., the use of a third
party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S.
593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978));
and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as "molding rubber products" (Diamond v. Diehr, 450
U.S. 175, 192 (1981)); "tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning
v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour
(Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 at 176; see also id. at 191 ("We view
respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.").
Having said that, the Supreme Court also indicated that a claim "seeking
patent protection for that formula in the abstract ... is not accorded the
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protection of our patent laws ... and this principle cannot be circumvented
by attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure
'that the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely
requir[ing] generic computer implementation[] fail[ s] to transform that
abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h) 9th ed.
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2018).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field
(seeMPEP § 2106.0S(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Memorandum.
ANALYSIS
SECTION 101 REJECTION
Independent claim 1 is directed to a method for determining allied
product information. Independent claim 5 is directed to a computer system
for determining allied product information. Both independent claims are
directed to the abstract ideas of identifying at least one first attribute of at
least one first product record; identifying at least one second attribute of at
least one second product record; resolving a relationship in a catalog data
structure between the first product record and the second product record;
determining whether the at least one first product record and the at least one
second product record correspond to allied products, based upon the number
of attributes that are common and the resolved relationship; and
"transforming" the catalog data structure by adding allied product data based
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on the above determination; and saving allied product data in the catalog
data structure.
We conclude that independent claims 1 and 5 are directed to the
abstract idea of a mental process. The recited steps of determining whether
two product records should be considered allied products, by making a
numerical determination of (i.e., counting), common attributes, correspond
to concepts that may be performed manually or in the human mind. If a
claim, under its broadest reasonable interpretation, covers performance in
the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind. See Intellectual Ventures I LLC v. Symantec Corp.,
838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the exception of generic
computer implemented steps, there is nothing in the claims themselves that
foreclose them from being performed by a human, mentally or with pen and
paper.''). Appellants' claims merely seek to implement this abstract idea on
a generic computer.
We agree with the Examiner that the claim limitations correspond to
the collection, analysis, and display of information at issue in Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). The claims
under appeal recite identifying respective attributes of respective product
records in respective categories, which is analogous to "collecting
information" in Elec. Power Grp. The claimed invention then recites
determining common attributes, resolving a relationship between product
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records, and determining a number of attributes that are common, which is
analogous to "analyzing information" in Elec. Power Grp.
We determine that identified abstract idea is not integrated into a
practical application. The claimed invention does not constitute an
improvement to the functioning of a computer; rather, it merely constitutes
the adaptation of an abstract idea, previously performed mentally or
manually, to execution as steps performed by a computer. MPEP
2106.0S(a). The claimed invention is not applied with, or by use of, a
particular machine. MPEP 2106.0S(b). Appellants' invention does not
effect the transformation or reduction of a particular article to a different
state or thing. MPEP 2106.0S(c). We determine, rather, that Appellants'
invention constitutes mere instructions to implement an abstract idea on a
computer. MPEP 2106.0S(f). We consider that the claimed "transforming"
of the catalog data structure by adding allied product data to at least one
product, and subsequent saving of allied product data in the catalog data
structure, amounts to insignificant extra-solution activity, i.e., the mere
storage of the result of the claimed determination of allied product status.
See MPEP 2106.0S(g).
Appellants argue that the claims recite the "creation of a data structure
that allows the computer to efficiently determine allied products, e.g.
products that are used together," and that the present invention is directed to
"overcoming inefficiencies associated [sic] determining allied products in an
online computer database." Reply Br. 5, 7. Appellants have not explained
what feature( s) of the claimed invention overcome such inefficiencies.
Appellants have not explained what advantage flows from performing the
steps of the claimed method on a computer, rather than mentally or
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manually. Appellants have not persuasively explained why the claims are
necessarily rooted in computer technology.
WELL-UNDERSTOOD, ROUTINE, CONVENTIONAL
Having determined that the claims recite a judicial exception, and do
not integrate that exception into a practical application, we consider whether
the claim adds a specific limitation beyond the judicial exception that is not
"well understood, routine, [and] conventional" in the field. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 56
(January 7, 2019) ("Revised Guidance").
Appellants recite a method executed by one or more computing
devices, and a computer system, for determining allied product information.
Appellants disclose that the term "computer" used in the Specification
"refers to any type of computing device or data terminal, such as a personal
computer , a portable computer, a dumb terminal, a thin client, a hand held
device, a wireless phone, or any combination of such devices." Spec. ,r,r 3 7,
151.
Appellants' claims recite a computer-readable catalog data structure
that is "transformed" upon the determination that product records are
determined to be allied products. Appellants' Specification mentions
"product catalog" 26, which can be in the form of a database, which can
store information in the form of a taxonomy. Spec. ,r,r 22, 38-39.
Appellants disclose further detail concerning the information contained in
product catalog 26 (e.g., Spec. ,r 23). Notably, however, Appellants'
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Specification is devoid of technical description of the claimed "catalog data
structure."
As Appellants have not disclosed any features of the claimed
computing device, computer system, or catalog data structure that would be
considered as other than "well-understood, routine, [and] conventional" (See
Revised Guidance), these claim limitations fail to indicate the presence of an
inventive concept. We further find that Appellants' disclosures of the
computing device and catalog data structure, discussed supra, are specified
at a high level of generality.
We conclude that none of the claim limitations, viewed "both
individually and as an ordered combination," amount to significantly more
than the judicial exception in order to sufficiently transform the nature of the
claims into patent-eligible subject matter. See Alice, 573 U.S. at 217
(internal quotations omitted) (quoting Mayo, 132 S. Ct. at 1297).
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of claims
1-8.
SECTION 103 REJECTION
Independent claims 1 and 5 recite determining whether a first product
record and a second product record correspond to allied products based on
the number of the at least one first attribute and the at least second attribute
that are common.
Appellants' Specification defines "allied product" as "a product that
integrates functionally with another product - e.g. an accessory ( envelope
feeder for a printer), part (replacement screen for a PDA), supply (paper or
printer cartridge), or maintenance equipment ( tape head cleaner)." Spec.
,r 155. Appellants' Specification gives an example of "allied products" as
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"such as accessories, parts, connectors, etc., and the bundles or kits that can
be comprised of a set of allied products." Spec. ,r 70. This example is
consistent with Appellants' argument that allied products "are products that
complement one another and can be used together," and with Appellants'
contention that "[a]lternative items in a catalog are not 'allied products."'
Reply Br. 11.
The Examiner finds that Joseph teaches the claimed determination
whether a first product record and second product record correspond to
allied products. The Examiner finds that "men's running shoes" and
"women's running shoes" constitute "allied products." Ans. 14; Joseph col.
4:55---65 and col. 5:50---6:37. We do not agree with the Examiner's finding,
because it is inconsistent with the definitional example of "allied products"
provided in Appellants' Specification. Women's shoes are not
"accessories," "parts," "connectors," or any other sort of product usable in
conjunction with "men's shoes." Women's shoes are not a product that
"integrates functionally" with men's shoes. We agree with Appellants that
men's shoes and women's shoes are alternative products, which a person
does not use together. Reply Br. 11.
We therefore find that the combination ofBlutinger and Joseph fails
to disclose all the limitations of independent claims 1 and 5, or of claims 2--4
and 6-8 dependent therefrom. We do not sustain the Examiner's§ 103(a)
rejection.
DOUBLE PATENTING REJECTIONS
Claims 1-8 stand rejected on four grounds of nonstatutory
obviousness-type double patenting over four distinct U.S. Patents.
Appellants' only remarks concerning the double patenting rejections in the
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Appeal Brief allege that the Examiner failed to establish a prima facie case
of obviousness-type double patenting and that the claims on appeal recite an
invention that is distinct from the cited patent claims. App. Br. 5. In the
Reply Brief, Appellants characterize the Examiner's rejection as "nothing
more than a bald assertion" (Reply Br. 8), but again do not make specific
arguments why the double patenting rejections are in error.
In the absence of specific arguments from Appellants attempting to
point out the error in the Examiner's rejections, we sustain the Examiner's
rejections of claims 1-8 on obviousness-type double patenting grounds.
CONCLUSIONS
1. The claimed invention is directed to a judicial exception.
2. The judicial exception is not integrated into a practical application.
3. The combination of Blutinger and Joseph does not disclose or fairly
suggest determining whether at least one first product record and at least one
second product record correspond to allied products.
ORDER
The Examiner's decision to reject claims 1-8 is affirmed.
No time for taking subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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