Ex Parte Averbuch

Patent Trial and Appeal Board

Apr 30, 2018

13344483 (P.T.A.B. Apr. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/344,483 01/05/2012
93483 7590 05/02/2018
Rod A verbuch
1160 S. Michigan A venue
Apt. 3904
Chicago, IL 60605
FIRST NAMED INVENTOR
Rod N. Averbuch
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.
Averbuch04 1311
EXAMINER
CROSS, MICHAEL J
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/02/2018 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):
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 N. A VERBUCH
Appeal2018-003343
Application 13/344,483 1
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 39-42 and 51---60. We have jurisdiction
under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant's claimed invention relates to promotions presented on a
display device for products that have a "remaining shelf life [that] matches
[a] family's typical consumption pattern." (Spec., Abstract.)
1 According to Appellant, the real party in interest is Rod N. Averbuch.
(Appeal Br. 1.)
Appeal2018-003343
Application 13/344,483
Claims 39 and 51 are the independent claims on appeal. Claim 39 is
illustrative. It recites (emphasis added):
39. A promotion method of a product from a specific lot, the
method comprising:
querying a server by a processor based display device, for
at least a promotion or a shelf-life information associated with a
first product from at least a first lot;
identifj;ing by the display device a promotion information
of the first product from the first lot that its remaining shelf life
matches a first consumption pattern of the first product by a first
consumer, wherein the first consumption pattern indicates a first
consumption time of the first product by the first consumer
calculated by a processor by utilizing at least a first presence
indication of the first product purchased by the first consumer;
displaying by the display device at least the promotion
information of the first product from the first lot or the first lot
indication or the remaining shelf-life of the first product from the
first lot.
REJECTIONS
Claims 39--42 and 51---60 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 39--41, 51, 54, and 57---60 are rejected under 35 U.S.C.
§ 103(a) as unpatentable in view of Borom (US 2009/0240518 Al, pub.
Sept. 24, 2009) and Hipsher (US 2010/0049616 Al, pub. Feb. 25, 2010).
Claims 42 and 56 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Borom, Hipsher, Scrivano (US 2010/0274633 Al,
pub. Oct. 28, 2010), and Altman (US 2012/0220314 Al, pub.
Aug. 30, 2012).
Claim 52 is rejected under 35 U.S.C. § 103(a) as unpatentable in view
of Borom, Hipsher, and Siegel (US 2002/0082931 Al, pub. June 27, 2002).
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Claims 53 and 55 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Borom, Hipsher, and Scrivano.
ANALYSIS
The § 101 rejection
"Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title." 35 U.S.C. § 101. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(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-step 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
step 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, 566 U.S. at 72-73, 79).
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With regard to step one of the Alice framework, the Examiner
determines that the claims "include an abstract idea," specifically a "method
of organizing human activity that falls under sales, advertising, and
marketing activity[,] rather than a technical one." (Non-Final Action 6.)
Appellant disagrees and "argues that the Examiner's selective partial
analyses of Claim 39, which is based only on one step of Claim 39 ...
distorts the actual idea" to which the claim is directed. (Appeal Br. 11,
emphasis omitted.) Specifically, Appellant argues that "[t]he U.S. Supreme
Court in 'Alice' and 'Bilski' unmistakably requires that an identified idea in
a claim must be one idea, which the entire claim is directed to, not one or
more ideas merely included, contained or involved in the claim." (Id.,
emphasis omitted.)
We do not find these arguments persuasive of error. Under step one
of the Alice framework, we "look at the 'focus of the claimed advance over
the prior art' to determine if the claim's 'character as a whole' is directed to
excluded subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC,
838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
to promotions presented on a display device for products that have a
"remaining shelf life [that] matches [a] family's typical consumption
pattern." (Spec., Abstract.) Claim 39 recites "[a] promotion method of a
product ... , the method comprising: querying a server ... for at least a
promotion ... associated with a first product," "identifying ... a promotion
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information of the first product," and "displaying ... at least the promotion
information of the first product."
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241. In short, we agree with the Examiner that the claims are directed
to an abstract idea; in this case, a method of organizing human activity in the
form of "sales, advertising, and marketing activity." (See Non-Final
Action 6.)
With regard to Appellant's argument that the claims must be directed
to one, "not one or more ideas," (see Appeal Br. 11, emphasis omitted), we
do not find this argument persuasive of error. The focus of the analysis is on
the claim as a whole. RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1327 (Fed. Cir. 2017). A claim may incorporate multiple abstract ideas but
that "does not render the claim non-abstract." Id.
Appellant further argues that the Examiner has not presented a prima
facie case of unpatentability under the first step of the Alice framework.
(Appeal Br. 12-13.) We disagree.
[T]he PTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies 35 U.S.C. § 132, in
"notify[ ing] the applicant . . . [by] stating the reasons for [its]
rejection, or objection or requirement, together with such
information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application."
35 U.S.C. § 132. That section "is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and
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seeking to counter the grounds for rejection." Chester v. Miller,
906 F.2d 1574, 1578 (Fed.Cir.1990).
In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Here, the Examiner
analyzed the claims using the Alice framework and articulated why the
claims are directed to an abstract idea. (See Non-Final Action 5-7; see also
Answer 4.) Moreover, that Appellant was able to respond to the rejection is
evidence that the rejection was sufficiently informative for the Appellant to
recognize and provide counter-arguments to the grounds for rejection.
In view of the above, we are not persuaded that the Examiner erred in
determining that the claims are directed to an abstract idea.
We now look to step two of the Alice framework. Step two of the
Alice framework has been described "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, 134 S. Ct. at 2355 (citing Mayo,
566 U.S. at 72-73).
The Examiner finds that "the steps of claims 39 and 51 do not
improve another technology or technical field, do not improve the
functioning of the computer itself, and are not enough to qualify as
'significantly more'." (Non-Final Action 7.) The Examiner also finds that
"the abstract idea claimed ... requires no more than [a] conventional
computer to perform generic computer functions." (Answer 4.)
Appellant disagrees and argues that the claimed "method is directed to
[a] much more meaningful and limited method" than that found by the
Examiner. (Appeal Br. 13-14, emphasis omitted.) We understand this to be
an argument that the claims are patent-eligible because they do not preempt
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every application of the abstract idea. We do not find this argument
persuasive of error. Preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
"significantly more" to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73].
CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), aff'd, 134 S. Ct. 2347 (2014). Moreover,
"[ w ]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo 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).
In other words, "preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility." Id.
Appellant further argues that the claimed invention provides
"technology improvement ... over the conventional lot-based product
promotion method." (Appeal Br. 14, emphasis omitted.) In particular,
Appellant argues that it is "not the use of the computer" that provides the
improved method but that "[t]he incorporation of the claimed steps enables
the non-generic and unconventional method that identifies and displays a
promotion information of a product ... that its remaining shelf-life matches
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the consumption pattern of this product by a 'specific consumer."' (Id.
at 15, emphasis omitted.) In other words, Appellant argues that the claims
are directed to a particular business practice.
We are not persuaded of reversible error. "These claims in substance
[are] directed to nothing more than the performance of an abstract business
practice ... using a conventional computer. Such claims are not patent-
eligible." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256
(Fed. Cir. 2014).
Moreover, taking the claim elements separately, the function
performed by the computer at each step is purely conventional. Querying,
identifying, and displaying results are basic computer functions.
Additionally, the Specification discloses that the invention can be
implemented using generic computer components. (See, e.g., Spec. 8-10.)
In short, each step does no more than require a generic computer to perform
routine computer functions.
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 claims do not, for example, purport to
improve the functioning of the display device or server. Nor do they effect
an improvement in any other technology or technical field. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea. That is not enough to transform an abstract idea into
a patent-eligible invention. Alice, 134 S. Ct. at 2360.
In view of the above, we are not persuaded that the Examiner erred in
rejecting independent claims 3 9 and 51 under § 101. Dependent claims 40-
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42 and 52-60 are not separately argued and fall with claims 39 and 51. See
37 C.F.R. § 41.37(c)(l)(iv).
The § 103 (a) rejection
The Examiner finds that Borom discloses "provid[ing] incentive[ s] to
customers" and "utiliz[ing] a customer's normal buying patterns and
frequencies to establish a baseline pattern." (Non-Final Action 9, citing
Borom i-fi-f l 7, 5 8, emphasis omitted.)
The Examiner acknowledges that "Borom does not explicitly disclose:
that its remaining shelf life matches a first consumption pattern of the first
product by a first consumer." (Id. at 10.) The Examiner, however, finds that
Hipsher teaches: remaining shelf life of a product ... matching
the consumer consumption pattern . . . [where a point of sale]
device function[ s] to collect sales information regarding
perishable goods of interest; in this case, prior sales information
of the consumer is used as a proxy for consumption information
(the store in this scenario is the consumer)).
(Id., emphasis omitted) From this, the Examiner determines that
it would have been obvious to one of ordinary skill at the time of
the invention for Borom to explicitly provide for identifying
promotion information to customers whose consumption
patterns match the remaining shelf life of a product thus
providing incentive to consumers to buy products at discount, the
motivation being avoiding waste of perishable goods. Rationale
for combining in this manner is that while it is directed to
adjusting/determining consumption patterns of a customer,
Hipsher is directed at determining remaining shelf life of a
product and offering incentives to customers based on the
remaining shelf life of the product.
(Id. at 10-11.)
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Appellant argues that the Examiner finds, inconsistently, that the
consumer in Borom is a purchaser and consumer of a product, and that the
consumer in Hipsher is a store. (Appeal Br. 17, citing Non-Final Action 10.)
Thus, "Appellant respectfully disagrees with the rational[ e] behind
combining two different definitions of the same 'consumer' term during the
same claim step analysis." (Id. at 18, emphasis omitted.) And, Appellant
argues, the Examiner failed to "identify a reason that would have prompted a
person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does."' (Id., emphasis omitted, citing KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
We are persuaded of reversible error. Borom discloses "[a Jn
enhanced shopping system for facilitating grocery shopping and in-store
advertising." (Borom, Abstract.) In particular, Borom discloses a portable
scanner such that, "[f]rom a shopper's perspective, groceries to be purchased
are scanned at home after the items are consumed to form a shopping list
that facilitates shopping." (Id. i-f 17 .) Additionally,
[ s ]ince each item on the consumer's list is uniquely identified,
the retailer can provide manufacturers with product specific
"virtual merchandising" opportunities which may include (i)
"protecting" a manufacturer's product on the shopping list by
displaying the specific brand ... , (ii) allowing a manufacturer to
provide substitutes and coupons ... ; (iii) allowing a
manufacturer to add suggested products (specific & branded) to
a consumer's list ... , and/or (iv) tracking consumer purchasing
patterns and suggesting when a product might have been left off
of the list.
(Id.; see also id. i-f 58.)
Hipsher discloses "[a] system and method for controlling the
inventory of perishable goods." (Hipsher, Abstract.) In particular, Hipsher
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discloses using a point of sale device, typically "found in retail checkout
areas," to perform their "customary tasks" and "to collect sales information
regarding perishable goods of interest." (Id. i-f 20.) This "sales information
is shared with the inventory management software application ... and price
optimization software." (Id.) Hipsher also discloses "the use of advanced
weighing scales [that identify the product being weighed (id. i-f 25)] as a
portal for accessing and using perishable goods inventory management and
price optimization information." (Id. i-f 12.) "[T]he inventory management
software ... and price optimization software ... use the data received from
the POS device(s) ... and weighing scale(s) ... to assist the retailer with
planning and managing its inventory of perishable goods and to determine
and recommend the optimum price for a given perishable good." (Id. i-f 27.)
In short, Hipsher discloses how a store can collect and use its sales
and inventory information to optimize prices for a perishable good. And
Borom discloses creating a consumer shopping list. Although the Examiner
indicates that "avoiding waste of perishable goods" would have provided
one of skill in the art with a motivation to combine Borom and Hipsher
(Non-Final Action 10), the Examiner does not indicate how one would have
combined Borom and Hipsher to achieve this goal. Specifically, the
Examiner does not "identify a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does." See KSR Int'!, 550 U.S. at 418 (emphasis
added). Thus, the Examiner has not provided sufficient articulated
reasoning with rational underpinning to support the conclusion of
obviousness. See id. Therefore, we are persuaded that the Examiner erred
in rejecting claim 39 under§ 103(a). For the same reasons, we are
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persuaded that the Examiner erred in rejecting dependent claims 40-42
and 59. The additional reference relied on in rejecting dependent claim 42
does not cure the above noted deficiencies.
Independent claim 51 contains language similar to that of claim 39,
and is rejected for the same reason. For the reasons discussed above, we are
persuaded that the Examiner erred in rejecting claim 51. For the same
reasons, we are persuaded that the Examiner erred in rejecting dependent
claims 52-58 and 60. The additional references relied on in rejecting
dependent claims 52, 53, 55, and 56 do not cure the above noted
deficiencies.
DECISION
The Examiner's rejection of claims 39--42 and 51-60 under 35 U.S.C.
§ 101 is affirmed.
The Examiner's rejections of claims 39--42 and 51---60 under
35 U.S.C. § 103(a) are reversed.
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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