Ex Parte RICHTER

Patent Trial and Appeal Board

Jul 18, 2018

13961614 (P.T.A.B. Jul. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/961,614 08/07/2013
51206 7590 07/20/2018
Kilpatrick Townsend & Stockton LLP/Oracle
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
FIRST NAMED INVENTOR
JAMES NEAL RICHTER
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.
88325-883769(125840US) 9006
EXAMINER
YOUNG, ASHLEY YA-SHEH
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/20/2018 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):
ipefiling@kilpatricktownsend.com
oraclepatentmail@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ORACLE OTC SUBSIDIARY LLC 1
Appeal2017-000689
Application 13/961,614
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 James Neal Richter is listed as the inventor.
Appeal2017-000689
Application 13/961,614
STATEMENT OF THE CASE2
Oracle OTC Subsidiary LLC (Appellant) seeks review under
35 U.S.C. § 134 of a final rejection of claims 1-18, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellant invented a way of tracking and storing sales data for
performance prediction. 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] using real sales data to build, using a computer system,
a learned model of a strategy-pipeline,
wherein the learned model is built using machine
learning;
[2] receiving, at the computer system,
an ideal model of the strategy-pipeline;
[3] assigning a weight to the learned model, using the computer
system,
based on a comparison of the learned model and a sales
transaction;
[ 4] assigning a weight to the idealized model, using the
computer system,
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed April 25, 2016) and Reply Brief ("Reply Br.," filed October 12,
2016), and the Examiner's Answer ("Ans.," mailed August 17, 2016), and
Final Action ("Final Act.," mailed November 23, 2015).
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Application 13/961,614
based on a comparison of the ideal model and the sales
transaction;
[ 5] generating an aggregate model
and
based on the idealized model, the learned model, and the
assigned weights;
[ 6] predicting pipeline throughput
for at least one person or group of persons
based on the aggregate model.
Claims 1-18 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
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.
ANALYSIS
Method claim 1 recites building a model using machine learning,
receiving an ideal model, assigning weights to the models, generating an
aggregate model, and predicting sales pipeline throughput. Thus, claim 1
recites receiving, analyzing, and creating modeling data. None of the
limitations recite implementation details for any of these steps, but instead
recite functional results to be achieved by any and all possible means. Data
reception, analysis and modification, and forecasting are all generic,
conventional data processing operations to the point they are themselves
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concepts awaiting implementation details. The sequence of data reception-
analysis-forecast is equally generic and conventional. The ordering of the
steps is therefore ordinary and conventional. The remaining claims merely
describe forecasting parameters, with no implementation details.
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. Pty. Ltd. v CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014)
( citations omitted) ( quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66 (2012)).
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Application 13/961,614
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner determines the
claims directed to "predicting (sales) throughput for a (sales) pipeline for a
sales person or group of sales person[ s] comprising wholly generic
computers." Final Act. 7.
Although the Court in Alice made a determination as to what the claims
are directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in predicting sales pipeline throughput. The
Specification at paragraph 1 describes the invention as relating to tracking
and storing sales data for performance prediction. Thus, all this evidence
shows that claim 1 is directed to predicting sales data, i.e. financial
forecasting. This is consistent with the Examiner's determination.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of financial
forecasting is a fundamental economic practice long prevalent in our system
of commerce. The use of financial forecasting is also a building block of
ingenuity in sales management. Thus, financial forecasting, like hedging, is
an "abstract idea" beyond the scope of§ 101. See Alice Corp. Pty. Ltd., 134
S. Ct. at 2356.
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As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of financial
forecasting at issue here. Both are squarely within the realm of "abstract
ideas" as the Court has used that term. See id. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. 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"); see also
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 retrieval, analysis, and
forecasting 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) (determininging 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, and forecasting data, much as was done with paper, pencil and
adding machines prior to computers.
The remaining claims merely describe forecasting parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
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The introduction of a computer into the claims does not 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 pre-emption
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
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (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." Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, analyze, generate, and forecast data amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. The limitation of "wherein the learned model is built using
machine learning" is not a step, but a recitation of what should be used to
build a model, viz. machine learning, which is prescriptive rather than
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descriptive, as no particular implementation of machine learning is recited.
All of these computer functions are well-understood, routine, conventional
activities previously known to the industry. See Elec. Power Grp., LLC v.
Alstom S.A., supra. 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 general purpose computer without special
programming."). 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. Inc. v. InvestPic
LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-forecast
is equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(holding that the 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.
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Viewed as a whole, Appellant's method claims simply recite the concept
of financial forecasting as performed by a generic computer. To be sure, the
claims recite doing so by advising one to forecast sales using two weighted
models where one of the models is built using some unspecified form of
machine learning. But this is no more than abstract conceptual advice on the
parameters for such financial forecasting and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of financial forecasting under different scenarios. It
does not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of financial forecasting using
some unspecified, generic computer. Under our precedents, that is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
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
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ways that make patent eligibility 'depend simply on the
draftsman's art."'
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
We adopt the Examiner's determinations from Final Action 5-9 and
Answer 2-12 and reach similar legal conclusions. We now respond to the
Reply Brief arguments.
We are not persuaded by Appellant's argument that the claims recite
significantly more than the alleged abstract idea. Reply Br. 2-3. Appellant
initially recites various claim limitations and alleges each is significantly
more. This contention is conclusory and, so, unpersuasive. Appellant then
contends that performing machine learning, by definition, simply cannot be
performed in the human mind or via pen and paper. Perhaps so, but what the
machine learning actually is recited as doing, viz. building a model, can be
performed in the human mind or via pen and paper. The claims recite no
particular implementation for machine learning nor how machine learning
accomplishes model construction. As such, the recitation of using machine
learning is abstract conceptual advice to use generic equipment to perform
its known function. "When claims like the Asserted Claims are directed to
an abstract idea and merely require generic computer implementation, they
do not move into section 101 eligibility territory." Smart Sys. Innovations,
LLC v. Chicago Transit Auth., 873 F.3d 1364, 1374 (2017) (citations and
internal quotations omitted).
Appellant's reliance on Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016) and Bascom Global Internet v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016) are unhelpful. Reply Br. 3.
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The claims differ from those found patent eligible in Enfzsh, where the
claims were "specifically directed to a self-referential table for a computer
database." Id. at 13 3 7. The claims thus were "directed to a specific
improvement to the way computers operate" rather than an abstract idea
implemented on a computer. Id. at 1336. Here, by contrast, the claims
are not directed to an improvement in the way computers operate.
Though the claims purport to accelerate and make more accurate the
process of forecasting sales, our reviewing court has held that speed and
accuracy increases stemming from the ordinary capabilities of a general
purpose computer "do[] not materially alter the patent eligibility of the
claimed subject matter." Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims
are more analogous to those in FairWarning, 839 F.3d 1089 (Fed. Cir.
2016), wherein claims reciting "a few possible rules to analyze the audit
log data" were found directed to an abstract idea because they asked
"the same questions ( though perhaps phrased with different words) that
humans in analogous situations detecting fraud have asked for decades."
Id. at 1095.
As to Bascom, that decision was in the posture of deciding an appeal
from the grant of a (12)(b )( 6) motion of failure to state a claim for which
relief may be granted, in which all factual questions had to be decided in the
non-movant's favor. Appellant does not show sufficient facts that the
manner the claimed invention is organized is inventive. In fact, Appellant
does not even rely on Bascom to support the claims, but only for the
unsurprising holding that failure to include special computers is not a
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requirement for patent eligibility under § 101. The analysis is far more
complex and is laid out supra.
Appellant returns to Bascom later at Reply Brief 4, contending that the
claims "recite a specific, discrete implementation of the abstract idea." Id.
(citing Bascom, 827 F.3d at 1350). But as we determined supra, the claims
recite no technological implementation, but only a series of advisory results
to be achieved using conventional computer operations.
We are not persuaded by Appellant's argument that the claims do not
preempt the alleged abstract idea. Reply Br. 3-5. "Where a patent's claims
are deemed only to disclose patent ineligible subject matter under the Mayo
[/Alice] framework, as they are in this case, preemption concerns are fully
addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015).
Appellant goes on to contend the claims are a novel invention that
utilizes steps in a specific ordered way utilizing specific information to
better predict throughput of sales persons and manage a sales force including
allocating sales territories and sales quotas, which is not the type of basic
tool of scientific and technological work described in Mayo, Myriad, or
Flook.
As to novelty, "a claim for a new abstract idea is still an abstract idea.
The search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty." Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016). As to specificity, the claims offer this only in the
sense that they specify the limitations using words. The steps the words
describe are generic computer procedures.
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We are not persuaded by Appellant's argument that there has been no
prima facie showing. Reply Br. 5. The Examiner presented a prima facie
showing at Final Action 7-9.
CONCLUSIONS OF LAW
The rejection of claims 1-18 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
DECISION
The rejection of claims 1-18 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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