Ex Parte Black et al

Patent Trial and Appeal Board

Oct 19, 2017

12732742 (P.T.A.B. Oct. 19, 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.
12/732,742 03/26/2010 Dale Black 056182/386399 3756
I45744 7590 10/23/2017
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EXAMINER
Bank of America Plaza ALLEN, AKIBA KANELLE
101 South Tryon Street, Suite 4000
Charlotte, NC 28280-4000 ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
10/23/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DALE BLACK and GARY CLEMENTS
Appeal 2016-002630
Application 12/732,7421
Technology Center 3600
Before JEAN R. HOMERE, HUNG H. BUI, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s rejection of claims 46, 47, 50, 52, 56, 57, 67—69, 71, and 73—76.
Claims 1—45, 48, 49, 51, 53—55, 58—66, 70, and 72 have been canceled. See
App. Br. 17—21 (Claims App’x). We have jurisdiction over the pending
claims under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is United Parcel Service
of America, Inc. App. Br. 2.
Appeal 2016-002630
Application 12/732,742
STATEMENT OF THE CASE
Appellants ’ Invention
Appellants’ invention generally relates to “a system using data of past
shipments involving certain commodities between exporters and importers
to facilitate determination of duties, fees, and taxes for current shipments
involving the same types of goods concerning one or both of the same
parties.” Spec. 115. Claim 46, which is illustrative, reads as follows:
46. A method for calculating tariffs, the method comprising:
receiving, via one or more processors, shipment data
pertaining to at least one item, the shipment data comprising an
item quantity, a value for the item, and at least one of an item
description or an item code;
identifying, via the one or more processors, a rating profile
based at least in part on at least one of the item description or the
item code, wherein the rating profile comprises (a) at least one
of a product description or a product code and (b) a tariff code;
determining, via the one or more processors, a confidence
level of the rating profile based at least in part on a weighted
correlation with at least one of the (a) item description and the
product description or (b) the item code and the product code;
determining, via the one or more processors, whether the
confidence level exceeds a confidence threshold level;
after determining that the confidence level exceeds the
confidence threshold level, selecting, via the one or more
processors, the tariff code associated with the rating profile to
determine a tariff amount for the item; and
determining, via the one or more processors, the tariff
amount for the item, the tariff amount determined based at least
in part on a tariff rate associated with the tariff code and the value
of the item.
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Application 12/732,742
Examiner’s Rejections & References
Claims 46, 47, 50, 52, 56, 57, 67—69, 71, and 73—76 stand rejected
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Ans. 2—3.
Claims 46, 47, 50, 52, 56, 57, 67—69, 71, and 73—76 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Kamman (WO 2001/024096 Al; published Apr. 5, 2001), Sundel (US
2002/0116273 Al; published Aug. 22, 2002), Jaro (US 6,938,053 B2; issued
Aug. 30, 2005), and Esposito-Ross et al. (US 2007/0050236 Al; published
Mar. 1, 2007) (“Esposito-Ross”). Non-Final Act. 3—10.
Issues on Appeal
(1) Did the Examiner err in concluding that claims 46, 47, 50, 52,
56, 57, 67—69, 71, and 73—76 are directed to nonstatutory subject matter
under 35 U.S.C. § 101?
(2) Did the Examiner err in finding that the combination of
Kamman, Sundel, Jaro, and Esposito-Ross teaches or suggests
identifying, via the one or more processors, a rating profile
based at least in part on at least one of the item description or the
item code, wherein the rating profile comprises (a) at least one
of a product description or a product code and (b) a tariff code;
[and]
determining, via the one or more processors, a confidence
level of the rating profile based at least in part on a weighted
correlation with at least one of the (a) item description and the
product description or (b) the item code and the product code,
as recited in claim 46?
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Appeal 2016-002630
Application 12/732,742
ANALYSIS
Rejection under 35 U.S.C. § 101
Section 101 of the Patent Act permits the patenting of “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” 35 U.S.C. § 101. Despite the breadth of
this language, the Supreme Court has “long held that this provision contains
an important implicit exception: [l]aws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Banklnt’l,
134 S. Ct. 2347, 2354 (2014) (internal citations omitted).
The Supreme Court has set forth a two-part test “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. The first step in the analysis is to “determine whether the
claims at issue are directed to one of those patent-ineligible concepts.” Id.
For example, abstract ideas include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea itself,
and mathematical formulas or relationships. Id. at 2355—57.
If the claims are directed to a patent-ineligible concept, the second
step is to consider the elements of the claims “individually and ‘as an
ordered combination’ to determine whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Id. at
2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1297—98 (2012)). In other words, the second step is to “search for
an ‘inventive concept,”’ namely “an element or combination of elements that
is ‘sufficient to ensure that the patent in practice amounts to significantly
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Application 12/732,742
more than a patent upon the [ineligible concept] itself.”’ Id. (quoting Mayo,
132 S. Ct. at 1294; brackets in original)).
The Examiner finds that the claims are directed to the abstract idea of
“calculating tariffs for a shipment.” Ans. 2. The Examiner finds the claims
do not include additional elements that are sufficient to amount to
significantly more than the abstract idea because “the recitation of
‘receiving. . . shipment data’, is merely insignificant data gathering, and the
recitation of ‘identifying ... a rating profile’, is merely an action that is
routine and conventional in a computer implementation.” Ans. 3.
Appellants contend the claims are not directed to an abstract idea.
Reply Br. 2—9. Appellants argue the claims are not directed solely to a
mathematical relationship or mathematical formula but, instead, “are
directed to computer implemented methods for automatically calculating
tariffs while ensuring that the ultimate tariff calculation retains at least a
minimum degree of confidence such that the automatic tariff calculations
may be relied upon for providing estimated importation costs for
shipments.” Reply Br. 7.
We do not find Appellants’ contentions persuasive. Claim 46 recites
(a) “receiving . . . shipment data pertaining to at least one item;” (b)
“identifying ... a rating profile;” (c) “determining ... a confidence level of
the rating profile;” (d) “determining . . . whether the confidence level
exceeds a confidence threshold level;” (e) “selecting ... the tariff code
associated with the rating profile to determine a tariff amount for the item;”
and (f) “determining . . . the tariff amount for the item.” Receiving,
comparing, and generating data are abstract ideas. See, e.g., Elec. Power
Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (claims directed
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Application 12/732,742
to collection, manipulation, and display of data); Intellectual Ventures ILLC
v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(customizing information and presenting it to users based on particular
characteristics); Content Extraction and Transmission LLC v. Wells Fargo
Bank, National Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting
data,. . . recognizing certain data within the collected data set, and . . .
storing that recognized data in a memory”). That these claims are directed
to an abstract idea is confirmed by the fact that the claimed method of
calculating tariffs is of the type that could be performed manually. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir.
2011) (“[A] method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under § 101.”).
Regarding the “inventive step” portion of the Mayo!Alice analysis,
Appellants argue that the claims (1) “add specific limitations other than what
is well-understood, routine and conventional in the field, or add
unconventional steps that confine the claim to a particular useful
application;” (2) “include meaningful limitations beyond generally linking
the use of an abstract idea to a particular technological environment;” and
(3) “provide a new and useful application of ineligible subject matter in the
physical realm.” ReplyBr.il. We do not agree. Individually, the elements
are nothing more than conventional steps of receiving, comparing, and
generating data, and the ordered combination is simply a computerized
system in which those conventional steps implement the abstract idea.
Claims such as these, which recite a business process executed on a
conventional computer for speed or convenience, are not eligible for
patenting under current law. See, e.g., Intellectual Ventures ILLC v. Capital
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Application 12/732,742
One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[Mjerely adding
computer functionality to increase the speed or efficiency of the process
does not confer patent eligibility on an otherwise abstract idea.”).
Because we agree that Appellants claim an “abstract idea” under the
first step of Alice and that “abstract idea” is not saved by an “inventive
concept,” under the second step of Alice, we sustain the rejection of claims
46, 47, 50, 52, 56, 57, 67-69, 71, and 73-76 under 35 U.S.C. § 101.
Rejection under 35 U.S.C. § 103(a)
Appellants do not substantively argue the claims separately, but
instead rely on the same arguments for all claims. See App. Br. 8. We
select claim 46 as representative. Accordingly, claims 47, 50, 52, 56, 57,
67—69, 71, and 73—76 stand or fall with claim 46. 37 C.F.R.
§ 41.37(c)(l)(iv).
We consider Appellants’ arguments seriatim as they are presented in
the Appeal Brief, pages 8—15, and the Reply Brief, pages 14—20.
“Identifying... a Rating Profile ...”
In rejecting claim 46, the Examiner finds Kamman teaches
identifying, via the one or more processors, a rating profile based at least in
part on at least one of the item description or the item code, wherein the
rating profile comprises (a) at least one of a product description or a product
code and (b) a tariff code. Non-Final Act. 3 (citing Kamman 6, 8, 12—15).
According to Appellants
Kamman is generally directed to a system for navigating a
Harmonic Tariff Schedule (“HTS”) to determine an appropriate
Harmonized Code (“HC”) for a particular item by comparing key
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Application 12/732,742
words selected from an item description directly against defined
words used in the HTS. Kamman extensively uses an example
of identifying an appropriate HC for a sweatshirt. In describing
this example, Kamman states that a “rule base 1544 then operates
on the item description in the prescribed language (e.g., English),
using a dictionary to filter out words which do not appear in the
HTS and a translator to convert words in an item description into
a similar word defined in the HTS (e.g., “sweatshirt” can be
converted to “jersey”).”
App. Br. 11 (citing Kamman, p. 13,1. 28—p. 14,1. 9).
Appellants argue Kamman fails to teach or suggest the disputed
limitation because “Kamman provides no indication of how the noted
translator operates” and “Kamman provides no details regarding how the
language used in the item description is used to select a particular HC from
the HTS in instances in which the terms used in the original item description
are not themselves used in the HTS.” App. Br. 11. Appellants further argue
“[although Kamman provides the example of converting the word
‘sweatshirt’ into the word ‘jersey,’ Kamman provides no description of the
systems and/or algorithms necessary to complete this conversion process.”
App. Br. 11; see also App. Br. 12 (citing Kamman 6, 8, 12—15); Reply
Br. 15.
Additionally, Appellants argue “even assuming arguendo that
Kamman did provide additional detail regarding how the ‘translation’
process selects appropriate translated terms for various terms in the item
description, identifying a specific search phrase to be used in navigating the
HTS provides no suggestion for identifying a rating profile for an item,” as
required by claim 46. App. Br. 12. Appellants argue instead of teaching the
claimed “identifying,” Kamman, therefore, teaches “a system configured to
directly select an appropriate HC from an HTS after translating certain key
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Application 12/732,742
words of an item description into words that are utilized in the HTS.” App.
Br. 13. Appellants further argue Kamman’s limited description regarding
the translation process “provides no teaching or suggestion for utilizing a
‘rating profile,’” as required by claim 46. Reply Br. 16. According to
Appellants, Kamman, instead, teaches utilizing identified correlations
between a translated product description and terminology used in the HTS to
identify an appropriate tariff amount for an item. Reply Br. 16—17.
We do not find Appellants’ arguments persuasive. Kamman teaches
A test is made at step 1520 to determine whether the harmonized
code for the selected item is known to the system either with the
item description or through a uniform product code (UPC) which
is correlable to the Harmonized Codes. The harmonized code
can be provided by the Web site 1630, but more typically only
will be known to tariff server if the duty owing on that same item
previously had been determined and is available to be provided
from a data store.
Kamman 13. Because Kamman teaches using the item description or
product code to identify stored information relating to a previous determined
duty for the same item (e.g., a rating profile), Kamman teaches or suggests
that the stored information includes the item description or product code and
the Harmonized Code (e.g., a tariff code). As such, Kamman teaches or
suggests the disputed limitation.
“Determining... a Confidence Level of the Rating Profile ...”
Appellants contend the combination of Kamman, Sundel, Jaro, and
Esposito-Ross fails to teach or suggest
determining, via the one or more processors, a confidence
level of the rating profile based at least in part on a weighted
correlation with at least one of the (a) item description and the
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Application 12/732,742
product description or (b) the item code and the product code;
[and]
determining, via the one or more processors, whether the
confidence level exceeds a confidence threshold level,
as recited in claim 46. App. Br. 13—15; Reply Br. 17—19. According to
Appellants, Jaro teaches “an apparatus that suggests or assigns a category
(e.g., ‘Prepared foods’) to an item added to a database by grouping similar
items together using key descriptive terms and determining whether there
are any shared words between the descriptions of the multiple items.” App.
Br. 13. Appellants argue “comparing a description of one item against the
description of another item does not suggest comparing the description of an
item against that of a rating profile, which itself includes a description.”
App. Br. 13.
We do not find Appellants’ arguments persuasive. Non-obviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The Examiner
finds Kamman teaches or suggests “identifying ... a rating profile based at
least in part on at least one of the item description or the item code, wherein
the rating profile comprises (a) at least one of a product description or a
product code and (b) a tariff code.” The Examiner finds Jaro teaches “the
establishment of a confidence level by calculating a weight for an item in a
training set, deciding if items exceed thresholds by incorporating a
comparator to determine which item’s variables exceed a threshold, and then
assigning them to categories based on this information, and determining a
confidence level for the combination of thresholds.” Ans. 5 (citing Jaro
2:54—3:6). Based on these findings, the Examiner finds the combined
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teachings of Kamman and Jaro teach or suggest the disputed limitation.
Non-Final Act. 6. Appellants’ arguments fail to address the combined
teachings of the references and, therefore, are unpersuasive of error.
Appellants further contend the combined teachings of Kamman and
Jaro fail to teach or suggest the claimed “determining” because Kamman
teaching “identifying] an appropriate HC for an item based on identifying the
presence of a particular word or phrase in the HTS” and, therefore,
“incorporating a confidence rating system into Kamman would have no
impact, as the determined ‘confidence level’ would always be at a maximum
level, because the translated words used in Kamman are selected because
they are used in the HTS.” App. Br. 14; see also Reply Br. 18.
We do not find Appellants’ contention persuasive. The Examiner
finds
ft would have been obvious to one of ordinary skill in the art at
the time of applicant’s invention to modify the system of
Kamman and include a field-by-field comparison of data to
determine a confidence level as taught by Jaro, with the
motivation of providing better accuracy matching when
matching the product being purchased and the tariff code.
Final Act. 6. Appellants’ contention fails to address the articulated
reasoning provided by the Examiner and, therefore, is unpersuasive of error.
For the foregoing reasons, we sustain the Examiner’s rejection under
35 U.S.C. § 103(a) of claim 46 and claims 47, 50, 52, 56, 57, 67—69, 71, and
73—76, which fall therewith.
DECISION
We affirm the Examiner’s rejection of claims 46, 47, 50, 52, 56, 57,
67-69, 71, and 73-76 under 35 U.S.C. § 101.
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We affirm the Examiner’s rejection of claims 46, 47, 50, 52, 56, 57,
67-69, 71, and 73-76 under 35 U.S.C. § 103(a).
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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