Ex Parte Balent

Patent Trial and Appeal Board

Dec 3, 2018

12835595 (P.T.A.B. Dec. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/835,595 07/13/2010
23623 7590 12/05/2018
AMIN, TUROCY & WATSON, LLP
200 Park A venue
Suite 300
Beachwood, OH 44122
FIRST NAMED INVENTOR
Bruce Balent
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.
VBRUPlOlUSB 1574
EXAMINER
ZARE, SCOTT A
ART UNIT PAPER NUMBER
3649
NOTIFICATION DATE DELIVERY MODE
12/05/2018 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):
hmckee@thepatentattomeys.com
rveri@thepatentattomeys.com
docket@thepatentattomeys.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRUCE BALENT
Appeal2017---004037
Application 12/835,595
Technology Center 3600
Before ANTON W. PETTING, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Bruce Balent (Appellant)2 seeks review under 35 U.S.C. § 134 of a
final rejection of claims 34--43 and 45-54, the only claims pending in the
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed July 11, 2016) and Reply Brief ("Reply Br.," filed January 4,
2017), and the Examiner's Answer ("Ans.," mailed November 4, 2016), and
Final Action ("Final Act.," mailed February 11, 2016).
2 The Appellant states III Holdings 3, LLC is the real party in interest. App.
Br. 3.
Appeal2017-004037
Application 12/835,595
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b ).
The Appellant invented a personal automation and shopping system
for automating or improving personal or business productivity, efficiency
and goal attainment, and buying and selling of goods and services. Spec.,
para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 34, which is reproduced below (bracketed matter and some
paragraphing added).
34. A method, comprising:
[ 1] receiving, by a system comprising at least one processor
from a server device associated with a store via a wireless
communication channel, store layout information defining a
layout of the store;
[2] categorizing, by the system and based on the store layout
information, shopping list items identified by stored shopping
list data according to aisles of the store in which the shopping
list items are located to yield a categorized list;
[3] facilitating, by the system, a display of the categorized list;
[ 4] for respective items of the shopping list items, receiving, by
the system via an optical scan performed by a keyless data entry
device, selection data indicating that the respective items have
been acquired;
[5] generating, by the system and based on an order in which
the selection data for the respective items is received, route
information identifying a route through the store;
[ 6] storing, by the system, the route information in association
with the shopping list data;
[7] in response to selection of the shopping list data subsequent
to the storing the route information, sorting, by the system, the
shopping list items based on the route information to yield
sorted shopping list data;
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[8] generating a device-readable composite barcode for an item
of the shopping list items, wherein the composite device-
readable barcode represents a product code for the item
aggregated with a numeric prefix that identifies the sorted
shopping list data;
and
[9] facilitating, by the system, a printing of the sorted shopping
list data, wherein the facilitating comprises printing a descriptor
for the item and the composite device-readable barcode.
Claims 34--43 and 45-54 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
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 34 recites receiving store layout data, categorizing
shopping list items, facilitating a display of the list, receiving optical scan
selection data, generating and storing route information, and sorting and
printing the shopping list data with device-readable composite barcode data.
Thus, claim 34 recites receiving, analyzing, modifying, displaying, and
printing 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 retrieval, analysis, modification, display, and
printing are all generic, conventional data processing operations to the point
they are themselves concepts awaiting implementation details. The
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sequence of data retrieval-analysis-modification-display-printing is equally
generic and conventional. The ordering of the steps is therefore ordinary
and conventional. The remaining claims merely describe process
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 Intl, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
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 to be directed to organizing a shopping list according to the aisle
layout in a store and then sorting the list based on the actual route a shopper
takes when shopping at the store. This is considered to be an abstract idea
because it is amounts to nothing more than a method of organizing human
activity because it relates to how a person organizes his or her shopping list.
Final Act. 4--5.
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Although the Court in Alice made a determination as to what the
claims were 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 34 does not recite what it is directed to, but the
steps in claim 34 result in printing a sorted shopping list having device-
readable composite barcodes, absent any technological mechanism other
than a conventional computer for doing so. The Specification at paragraph 1
recites that the invention relates to a personal automation and shopping
system for automating or improving personal or business productivity,
efficiency and goal attainment, and buying and selling of goods and services.
Thus, all this evidence shows that claim 34 is directed to creating a sorted
shopping list with barcodes, i.e., creating a list of what one wants to do.
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
creating a list of what one wants to do is a fundamental business practice
long prevalent in our system of commerce. The use of creating a list of what
one wants to do is also a building block of ingenuity in project management.
Thus, creating a list of what one wants to do, like hedging, is an "abstract
idea" beyond the scope of§ 101. See Alice Corp. Pty. Ltd., 134 S. Ct.
at 2356.
As in Alice, 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
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risk hedging in Bilski and the concept of creating a list of what one wants to
do at issue here. Both are squarely within the realm of "abstract ideas" as
the Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. 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 34, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis,
modification, display, and printing 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) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 34 is directed to the abstract idea of
receiving, analyzing, modifying, displaying, and printing data.
The remaining claims merely describe process parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
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
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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 "implement[t ]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of "additional feature[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." Alice Corp. Pty. Ltd., 134 S. Ct. 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 for receiving, analyzing, modifying, displaying, and printing data
amounts to electronic data query and retrieval----one of the most basic
functions of a computer. The limitation of receiving data via optical scan
recites what has been a generic form of data entry for a long time. The
limitation of generating a device-readable composite barcode for an item
that represents a product code for the item aggregated with a numeric prefix
that identifies the sorted shopping list data is no more than generating some
form of data, as no particular implementation for how the data is generated
or how it is formatted is recited. Indeed, generating such data by simply
reading the data and copying it would be within the scope of the limitation,
as copying data generates data. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp. v. Alstom S.A., supra. Also see In re Katz
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Interactive Call Processing Patent Litigation, 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 America Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (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 retrieval-analysis-
modification-display-printing 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) (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 Communications, 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.
Viewed as a whole, Appellant's method claims simply recite the
concept of creating a list of what one wants to do as performed by a generic
computer. To be sure, the claims recite doing so by advising one to enter
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store layout and product selection data and generate a list that includes
barcodes sorted based on the layout. But this is no more than abstract
conceptual advice on the parameters for such creating a list of what one
wants to do 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 equipment3 and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of creating a list of what one wants to do under
different scenarios. They do 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 creating a
list of what one wants to do 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 ways that
make patent eligibility 'depend simply on the draftsman's art."'
3 The Specification describes using programmable, general or special
purpose computing devices and optical character recognition via an image
scanner, camera, or optical device. Spec. para. 155.
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Id.
As to Appellant's Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2---6 and Answer 2---6 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellant's argument that claim 34
differs from the claims at issue in Accenture Global Servs.,
GmbH4 at least by inclusion of the substantive limitations of
generating a device-readable composite barcode for an item of
the shopping list items, wherein the composite device-readable
barcode represents a product code for the item aggregated with a
numeric prefix that identifies the sorted shopping list data; and
facilitating, by the system, a printing of the sorted shopping list
data, wherein the facilitating comprises printing a descriptor for
the item and the composite device-readable barcode. Such
meaningful limitations, when read with the other claim
limitations as a while, tie down the claim in a manner that
mitigates coverage of the alleged full abstract idea itself by
restricting the alleged abstract idea to a practical application,
wherein the practical application involves generation of a device-
readable barcode representing a product code for an item
aggregated with a numeric prefix that identifies sorted shopping
list data. This device-readable barcode is not recited generically
in claim 3 4. Instead, claim 3 4 ( and similarly claims 4 3 and 51)
recites that this device-readable barcode has a specific
construction designed for use with the claimed electronic
shopping system and methods.
Reply Br. 4--5. As we determined supra, the limitation of generating
a device-readable composite barcode for an item that represents a product
code for the item aggregated with a numeric prefix that identifies the sorted
4 Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d
1336 (Fed.Cir.2013).
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shopping list data is no more than generating some form of data, as no
particular implementation for how the data is generated or how it is
formatted is recited. Indeed, generating such data by simply reading the data
and copying it would be within the scope of the limitation, as copying data
generates data. To say this is a practical application is to say that most
abstract ideas are practical applications to the extent they have practical
benefits. But this is not a practical application in the sense of a concrete
embodiment reciting and integrating specific technological implementation
details.
At that level of generality, the claims do no more than describe
a desired function or outcome, without providing any limiting
detail that confines the claim to a particular solution to an
identified problem. The purely functional nature of the claim
confirms that it is directed to an abstract idea, not to a concrete
embodiment of that idea.
Affinity Labs of Texas, LLC v. Amazon.com Inc., 838 F.3d 1266, 1269
(2016).
Appellant goes on to compare these same limitations with several
other cases, but the comparisons are unpersuasive for similar reasons. Reply
Br. 5-9. At bottom, Appellant claims only the idea of printing such
barcodes on a sorted list, and not the technological manner for doing so.
This is the type of functional claiming without providing any limiting detail
that confines the claim to a particular solution to an identified problem that
the Affinity Labs Court described.
CONCLUSIONS OF LAW
The rejection of claims 34--43 and 45-54 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
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DECISION
The rejection of claims 34--43 and 45-54 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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