Ex Parte Aydin et al

Patent Trial and Appeal Board

Dec 19, 2018

14083815 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/083,815 11/19/2013
23446 7590 12/21/2018
MCANDREWS HELD & MALLOY, LTD
500 WEST MADISON STREET
SUITE 3400
CHICAGO, IL 60661
FIRST NAMED INVENTOR
Burcu Aydin
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.
27709US01 9306
EXAMINER
REFAI,SAMM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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):
mhmpto@mcandrews-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BURCU AYDIN and MICHAEL TAMIR
(Applicant: Sears Brands, LLC)
Appeal2017-010250
Application 14/083,815
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C § 134(a) of the
Examiner's Final Rejection of claims 1-5, 8-11, 14--17, and 20-23, which
constitute all claims currently pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2017-010250
Application 14/083,815
STATEMENT OF THE CASE
Appellants' invention relates to "electronic commerce (e-commerce),
and more particularly, to classifying customers in an e-commerce
environment." Spec. ,r 1. Claim 1, reproduced below, is illustrative of the
claimed subject matter:
1. A computer-implemented method, comprising:
collecting purchase history data for a plurality of
customers;
collecting demographic data for the plurality of customers;
splitting the plurality of customers into a first customer
group comprising customers who have purchase transactions,
within a time period of interest, greater than a predetermined
number of purchase transactions and a second customer group
comprising customers who have purchase transactions, within
the time period of interest, not greater than the predetermined
number of purchase transactions;
generating, based on the purchase history data of the first
customer group, a matrix that relates a customer to purchased
products to obtain a transaction space for the first customer
group;
applying principal component analysis to the matrix to
obtain a reduced matrix having a reduced transaction space for
the first customer group;
generating in accordance with a clustering large
applications (CLARA) a plurality of sample sets of the reduced
matrix;
applying a partitioning around medoids (PAM) clustering
algorithm to each of the plurality of sample sets to obtain a
plurality of medoid sets comprising a medoid set per sample set;
clustering customers of the first customer group into a
plurality of clusters based upon a medoid set of the plurality of
medoid sets;
2
Appeal2017-010250
Application 14/083,815
placing each customer of the second customer group into
a cluster of the plurality of clusters that comprises a plurality of
customers from the first customer group based on the collected
demographic data for the customer and the collected
demographic data for the plurality of customers from the first
customer group placed in the respective cluster; and
tailoring services provided to a customer based on the
cluster in which the customer resides.
REJECTION
Claims 1-5, 8-11, 14--17, and 20-23 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to a judicial exception
without significantly more. Final Act. 2.
ANALYSIS
To determine whether a claim is eligible under 35 U.S.C. § 101, "[w]e
must first determine whether the claims at issue are directed to a patent-
ineligible concept." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 234 7,
2355 (2014). "[T]he claims are considered in their entirety to ascertain
whether their character as a whole is directed to excluded subject matter."
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed.
Cir. 2015). "If the claims are not directed to an abstract idea [ or other
patent-ineligible concept], the inquiry ends. If the claims are 'directed to' an
abstract idea, then the inquiry proceeds to the second step of the Alice
framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016).
In the second step, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
3
Appeal2017-010250
Application 14/083,815
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 78-79 (2012)). In
other words, the second step is to "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."' Id. (alteration in original) (quoting Mayo, 566
U.S. at 72-73).
The Examiner determines the claimed invention is directed to the
abstract idea of placing customers in a cluster based on demographic data in
order to tailor services, which is an idea of itself, mathematical
relationships/formulas, and a fundamental economic practice. Final Act. 2-
3, 5; Ans. 3---6. The Examiner determines the claims are similar to the
claims in SmartGene because they "compare[] the demographic data of a
plurality of customers in the second group to demographic data of a plurality
of customers in the first group and us[ e] rules to determine a cluster in which
a customer resides in order to target services." Final Act. 4 (citing
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed.
Cir. 2014)). The Examiner further determines the claimed invention is
"directed towards the abstract idea of using mathematical correlations in
placing customers in a cluster based on demographic data in order to tailor
services" and that "the claimed invention here can be performed in the
human mind or by a human using pen and paper." Ans. 6 ( emphases
omitted). According to the Examiner, the claimed invention is also directed
to the "abstract idea of collecting information, analyzing it and displaying
certain results of the collection and analysis," and more specifically to
4
Appeal2017-010250
Application 14/083,815
"collecting and analyzing demographic data to detect a cluster a customer
belongs in order to tailor services provided to a customer based on the
cluster in which the customer resides." Ans. 6;see also Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); Fair Warning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016).
The Examiner further finds the additional claim elements do not
amount to significantly more than the abstract idea. Final Act. 4---6.
Specifically, the Examiner determines the claimed invention, unlike in DDR,
is not necessarily rooted in computer technology to overcome a problem
specifically arising in the realm of computer networks. Final Act. 4; see also
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
According to the Examiner, unlike in Enfzsh "in which the claimed invention
achieved other benefits over conventional databases ... that improved the
functioning of the computer, here the claimed invention amount(s) to no
more than ... recitation of generic computer structure that serves to perform
generic computer functions recited at a high level of generality." Ans. 4
(emphasis omitted); see also Enfzsh LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016).
Appellants argue the claimed invention is "directed to a particular
embodiment or implementation that overcomes a technical problem." App.
Br. 15 (citing Enfzsh, 822 F.3d 1327). Appellants argue the claimed
invention "is not only directed to clustering customers, but is also directed to
a particular clustering process that provides a solution to a technical
problem, namely reducing the memory storage required by the clustering
process." App. Br. 17. According to Appellants, the "process set forth in
the claims ... results in smaller memory requirements," which, like in
5
Appeal2017-010250
Application 14/083,815
Enfish, are "technological improvements [that] were deemed to flow from
the structures set forth in the claims." Reply Br. 7-8 (citing Enfish, 822 F.3d
1327).
We agree with Appellants that the present claimed invention is more
similar to the patent-eligible claims in Enfish than to the claims in the
various cases cited by the Examiner. See Ans. 3-7. At step one of the Alice
analysis, "it is not enough to merely identify a patent-ineligible concept
underlying the claim; we must dete1mine whether that patent-ineligible
concept is what the claim is 'directed to."' Rapid Litigation Management
Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016). We analyze
"whether the focus of the claims is on the specific asserted improvement in
computer capabilities ... or, instead, on a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool." Enfish,
822 F.3d at 1335-36.
"Software can make non-abstract improvements to computer
technology." Enfish, 822 F.3d at 1335. In Enfish, the Federal Circuit
highlighted "that the improvement is not defined by reference to 'physical'
components does not doom the claims," because "improvements to software
that, by their very nature, may not be defined by particular physical features
but rather by logical structures and processes." Enfish, 822 F.3d at 1339.
The Federal Circuit found that the "self-referential table recited in the claims
on appeal is a specific type of data structure designed to improve the way a
computer stores and retrieves data in memory." Id.
As Appellants point out, (App. Br. 16, 22), Appellants' Specification
describes that the "PAM clustering algorithm may be preferable to other
clustering algorithms," but that "for very large data sets, the memory
6
Appeal2017-010250
Application 14/083,815
requirements of the PAM clustering algorithm may become prohibitive,"
and "[t]o overcome the potential memory requirement issue, the classifier 33
further utilizes the CLARA clustering algorithm" such that each resulting
sample "is of a size that the PAM clustering algorithm can handle with
reasonable memory requirements." Spec. ,r 51. In other words, Appellants'
Specification identifies a technical problem (i.e., prohibitive memory
requirement issues using the preferable PAM clustering algorithm) as well
as the claimed solution (i.e., resolve memory requirement issues with
reasonable memory requirements by combining the CLARA clustering
algorithm and the PAM clustering algorithm).
Here, like in Enfzsh, the claimed invention, in light of Appellants'
Specification, is focused on "an improvement to computer functionality
itself, not on economic or other tasks for which a computer is used in its
ordinary capacity." Enfish, 822 F.3d at 1336. Specifically, the present
claimed invention is directed to utilizing both the CLARA clustering
algorithm and the PAM clustering algorithm (i.e., specific improvement in
operation) in order to reduce the clustering memory requirements from
prohibitive to reasonable (i.e., operation of the computer itself). See Spec.
,r 51. In other words, "the claims are directed to a specific implementation
of a solution to a problem in the software arts." Enfzsh, 822 F.3d at 1339.
Therefore, Appellants have persuasively established that the claimed
invention is directed to a specific improvement in the operation of the
computer itself and is not abstract.
Accordingly, we do not sustain the Examiner's 35 U.S.C. § 101
rejection of claims 1-5, 8-11, 14--17, and 20-23.
7
Appeal2017-010250
Application 14/083,815
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1-5, 8-11, 14--
17, and 20-23 is reversed.
REVERSED
8