Ex Parte Averbuch

Patent Trial and Appeal Board

Apr 20, 2017

12643311 (P.T.A.B. Apr. 20, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/643,311 12/21/2009 Rod Nimrode Averbuch Averbuch 001 4256
93483 7590
Rod Averbuch
1160 S. Michigan Avenue
Apt. 3904
Chicago, IL 60605
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
04/24/2017 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):
rod. averbuch @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROD NIMRODE AVERBUCH
Appeal 2017-006066
Application 12/643,3111
Technology Center 3600
Before MICHAEL C. ASTORINO, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 34, 36—53, and 55—66.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is Rod N. Averbuch.
(Appeal Br. 2.)
2 Claim 35 was cancelled subsequent to the mailing of the Final Action.
(See Advisory Action mailed Sept. 8, 2016.)
Appeal 2017-006066
Application 12/643,311
CLAIMED SUBJECT MATTER
Appellant’s claimed “invention is a method of price promotion ....
The invention proposes a new cycling labeling scheme .... A display
device provides the linkage between the cycled discount labels on the
product members and the product member dynamic pricing.” (Spec. 3,
1.21-4,1.5.)
Claims 34 and 49 are the independent claims on appeal. Claim 34 is
representative. It is reproduced below:
34. A method for product promotion performed by a
promotion server, the method comprising:
receiving information by the promotion server, from an
entity, for a first lot associated with first cycled discount label
(CDL) type, wherein the first lot includes product type members
(PTM)s of a first product type (PT), from one or more
consecutive batches affixed with the first (CDL) type, wherein
the first (CDL) type is displayed on a display device together
with at least one promotion or remaining lifetime for the PTMs
of the first PT from the first lot, wherein the first PT consisting
of: produce or other orally consumed products with a limited
lifetime;
determining by the promotion server, from at least the
information for the first lot associated with the first CDL type,
the at least one of the promotion or remaining lifetime,
comprising different values at different times, for the PTMs of
the first PT from the first lot; and
providing, by the promotion server to the display device
the at least one of the promotion or remaining lifetime, and the
first CDL type indication.
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REJECTION
Claims 34, 36—53, and 55—66 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter because the claimed invention is
directed to a judicial exception without significantly more.
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 132 S. Ct. at 1294, 1298).
The Examiner determines that the claims on appeal “are directed to
the abstract idea of providing discounts [by] allocating a plurality of cycled
discount labels to [a] product type based on expiration dates.” (Final
Action 2.) In particular, the Examiner determines that claim 343 is directed
to
3 Because claim 1 is not on appeal, we consider the Examiner’s reference to
claim 1 in the Final Action to be a typographical error. (See Final Action 2.)
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Application 12/643,311
a system/medium for performing or method consisting of the
steps of receiving information for a first lot associated with
cycled discount label, [determining a promotion or remaining
lifetime, and providing a promotion or remaining lifetime and the
CDL type indication. These steps described the concept
identified above, which corresponds to concepts identified as
abstract ideas by the courts, such as:
Financial: intermediate settlement in Alice, risk hedging in
[Bilski v. Kappos, 561 U.S. 593 (2010)] or tax-free investing in
[Fort Properties, Inc. v. American Master Lease LLC, 671 F.3d
1317 (Fed. Cir. 2012)]. All of these concepts relate to economic
practices in which monetary transactions between people are
managed. The concept described in the claims is not
meaningfully different than those economic concepts found by
the courts to be abstract ideas.
(Id.)
Appellant argues that
the examiner failed to comply with the requirements of the first
step of the two-step framework, as identified by [Mayo] and
required by [USPTO Memorandums]: The rejection must
identify the specific claim limitations of each claim and the
rejection must explain why those claim limitations set forth a
judicial exception (e.g., an abstract idea).
(Appeal Br. 20-21, brackets in original, emphasis omitted.)4
The May 4, 2016, USPTO Memorandum titled “Formulating a
Subject Matter Eligibility Rejection and Evaluating the Applicant’s
Response to a Subject Matter Eligibility Rejection” (hereinafter “May 4
Memo”) states that
4 Appellant indicates that the term “USPTO Memorandums” refers to
“June 25 2014 USPTO Memorandum for Preliminary Examination
Instruction in the view of the Supreme Court Decision in Alice Corp. Pty.”
and “May 4 2016 USPTO Memorandum for Formulating a Subject Matter
Eligibility Rejection.” (Appeal Br. 18.)
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Application 12/643,311
when an examiner determines that a claim is directed to an
abstract idea (Step 2A), the rejection should identify the abstract
idea as it is recited (i.e., set forth or described) in the claim and
explain why it corresponds to a concept that the courts have
identified as an abstract idea.
(May 4 Memo at 1.) Additionally, the May 4 Memo provides the following
as a sample explanation: “The claim recites the steps of sorting information
by X, which is an abstract idea similar to the concepts that have been
identified as abstract by the courts, such as organizing information through
mathematical correlations in Digitech or data recognition and storage in
Content Extraction.” {Id. at 3.)
As discussed above, in the Final Rejection, the Examiner identifies the
abstract idea to which the claim is directed (“a system/medium for
performing or method consisting of the steps of receiving information for a
first lot associated with cycled discount label, [determining a promotion or
remaining lifetime, and providing a promotion or remaining lifetime and the
CDL type indication”) and explains why it corresponds to “those economic
concepts [i.e., concepts in Alice, Bilski, and Fort Properties] found by the
courts to be abstract ideas.” (Final Action 2—3; see OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (discussing “the
fundamental economic concept of offer-based price optimization through the
use of generic-computer functions); see also Versata Dev. Group, Inc. v.
SAP America, Inc., 793 F.3d 1306, 1333 (Fed. Cir. 1015) (discussing “the
abstract idea of determining a price, using organizational and product group
hierarchies”).)
Moreover, in the Answer, the Examiner further explains that
[t]he claims are directed to the idea of providing discounts and
allocating a plurality of cycled discounts labels to product type
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Application 12/643,311
based on products approaching their expiration date, which is an
abstract idea. All of these concepts, for e.g. receiving
information associated with a cycled discount label, determining
a promotion or remaining lifetime, and providing the promotion
or the lifetime to be displayed on the display device, are
considered an idea of itself, which is merely an abstract idea.
(Answer 2.)
The May 4 Memo requires nothing more with regard to the first step
in the Alice framework. See also In re Jung, 637 F.3d 1356, 1362 (Fed. Cir.
2011) (the PTO “satisfies its initial burden of production by ‘adequately
explaining] the shortcomings it perceives so that the applicant is properly
notified and able to respond.’ Hyatt [v. Dudas, 492 F.3d 1365, 1370 (Fed.
Cir 2007)]”). And although Appellant refers to “CDL claim limitations that
were not identified by the examiner” in the rejection (see Appeal Br. 21—22),
Appellant does not persuasively argue why those referenced limitations
would change the Examiner’s determination that the claims are directed to
an abstract idea, i.e., “a system/medium for performing or method consisting
of the steps of receiving information for a first lot associated with cycled
discount label, [determining a promotion or remaining lifetime, and
providing a promotion or remaining lifetime and the CDL type indication.”
(See Final Action 2.) For example, Appellant does not indicate that the
referenced limitations would improve the way the computers operate. See,
e.g., Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
With respect to the second step in the Alice framework, the Examiner
determines that
[t]he claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception
because the additional elements when considered both
individually and as an ordered combination do not amount to
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significantly more than the abstract idea. These limitations are
recited at a high level of generality and are recited as performing
generic computer functions routinely used in computer
applications.
(Final Action 3.) The Examiner also determines that “taken alone, the
additional elements do not amount to significantly more than the above-
identified judicial exception (the abstract idea). Looking at the limitations as
an ordered combination adds nothing that is not already present when
looking at the elements taken individually.” (Id.)
Appellant argues that
the Examiner failed to comply with the second step of the two-
step framework, as identified by [Mayo] and required by
[USPTO Memorandums]: Examiner must identify any
additional elements (features/limitations/steps) recited in each
claim beyond the judicial exception and explain why they do not
add significantly more to the exception. The explanation should
address the additional elements both individually and as a
combination.
(Appeal Br. 25, brackets in original, emphasis omitted.)
In the Answer, the Examiner further explains that the claim
limitations “simply describe the abstract idea” and “do[] not add
significantly more to the abstract idea.” (Answer 2.) Additionally, the
Examiner explains that “[t]he recitations to ‘promotion server’ and ‘display
device’ are generically recited computer structure” and that “[u]sing a
general purpose computer to perform the limitations is not sufficient to
transform a judicial exception into a patentable invention.” (Id. at 3.)
The May 4 Memo states that the Examiner should
identity any additional elements (features/limitations/steps)
recited in the claim beyond the judicial exception and explain
why they do not add significantly more to the exception. The
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explanation should address the additional elements both
individually and as a combination when determining whether the
claim as [a] whole recites eligible subject matter.
(May 4 Memo at 3.)
The Examiner identifies in particular the additional elements of the
promotion server and the display device, and determines that they are
generic computer structures that do not transform the claims into patent-
eligible subject matter. (See Answer 3.) Moreover, the Examiner
considered the additional elements both individually and as an ordered
combination. (See Final Action 3.)
Appellant does not persuasively argue which other limitations recited
in the claims recite additional elements “beyond the judicial exception” or
why such other limitations would transform the claims into patent-eligible
subject matter.
Therefore, we are not persuaded that the Examiner erred in rejecting
the appealed claims under § 101.
DECISION
The Examiner’s rejection of claims 34, 36—53, and 55—66 under
35U.S.C. § 101 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)(l)(iv).
AFFIRMED
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