Ex Parte Carvalho

Patent Trial and Appeal Board

Feb 22, 2019

13841487 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/841,487 03/15/2013 Rodrigo Pierzchalski Carvalho
34018 7590 02/26/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
072031.96US2 9959
EXAMINER
KNIGHT, LETORIA G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODRIGO PIERZCHALSKI CARV ALH0 1
Appeal2018-001225
Application 13/841,487
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN
Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 4 through 8, 11 through 15, 18 through 22, and 25
through 36.
We AFFIRM.
INVENTION
The invention is directed to a system to provide competitive
intelligence related to classifying competitors for a retailer. Specification 7.
Claim 1 is illustrative of the invention and is reproduced below:
1 According to Appellant, the real party in interest is Home Depot Product
Authority, LLC. App. Br. 1.
Appeal2018-001225
Application 13/841,487
1. A system for classifying competitors of a user of the
system, the system comprising:
a competitor classifier that runs on a processor, the
competitor classifier operable to:
determine respective relevancy scores of a plurality of
potential competitors to at least one product in a product set by
assigning a value to a first variable, the first variable
comprising at least one of:
an absolute number of products common to the
user's website and the potential competitor's website, or
a percentage of products common to the user's
website and the potential competitor's website;
the competitor classifier operable to determine the
respective relevancy scores further by assigning a value to a
second variable, the second variable comprising at least one of:
unique visitors to the potential competitor's
website;
reviews on the potential competitor's website;
ratings on the potential competitor's website; or
number of products offered by the potential
competitor that comprise the product set;
determine, for each potential competitor, if the computed
relevancy score is greater than a threshold value; and
add each competitor having a computed relevancy score
greater than the threshold value to a competitor set;
a user interface coupled to the competitor classifier, the
processor operable to cause the user interface to display product
set information and competitor set information to a user;
wherein the product set information comprises, for the at
least one product in the set, at least one of:
product SKU;
product category; or
product brand;
and the competitor set information comprises, for each
competitor in the competitor set, the first variable and the
second variable.
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Application 13/841,487
REJECTIONS AT ISSUE
The Examiner rejected claims 1, 4 through 8, 11 through 15, 18
through 22, and 25 through 36 under 35 U.S.C. § 101 for being directed to
patent-ineligible subject matter. Final Act. 10-16. 2
The Examiner rejected claims 1, 4 through 6, 8, 11 through 13, 29,
and 31 under 35 U.S.C. § I03(a) as being unpatentable over Wanker (US
8,126,779, issued Feb. 28, 2019), Staib (US 2007/0299743 Al, published
Dec. 27, 2007), Odom (US 7,899,701 Bl, issued Mar. 1, 2011), and Adair
(US 2010/0161566 Al, published Jun. 24, 2010). Final Act. 17--41.
The Examiner rejected claims 7, 14, 30, and 32 under 35 U.S.C.
§ I03(a) as being unpatentable over Wanker, Staib, Odom, Adair, and Mayer
(US 2008/0189279 Al, published Aug. 7, 2008). Final Act. 41--47.
The Examiner rejected claims 15, 18 through 20, 22, 25 through 27,
33, and 35 under 35 U.S.C. § I03(a) as being unpatentable over Wanker,
Staib, Odom, Adair, and Staib (US 2007/0130090 Al, published Jun. 7,
2007). Final Act 48---69.
The Examiner rejected claims 21, 28, 34, and 36 under 35 U.S.C.
§ I03(a) as being unpatentable over Wanker, Staib, Odom, Adair, Staib (US
2007/00130090), and Mayer. 3 Final Act. 69-75.
2 Throughout this Opinion, we refer to the Appeal Brief, filed July 3, 2017
("App. Br."), the Reply Brief, filed November 16, 2017 ("Reply Br."), the
Examiner's Answer, mailed September 21, 2017 ("Answer"), and the Final
Office Action, mailed February 3, 2016 ("Final Act.").
3 The statement of the rejection, on page 69 of the Final Act. does not
identify Staib (US 2007 /00130090) as part of the rejection, however the
rationale supporting the rejection does identify the reference as included in
the rejection.
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Appeal2018-001225
Application 13/841,487
Rejection under 35 U.S.C. § 101
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS
Banklnt'l, 573 U.S. 208,216 (2014); Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 70 (2012).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Alice, 573 U.S. at 217-18 (citing Mayo, 566 U.S. 66, 75-77
(2012)). In accordance with that framework, we first determine what
concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their
face, the claims before us are drawn to the concept of intermediated
settlement, i.e., the use of a third party to mitigate settlement risk."); see also
Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners'
application explain the basic concept of hedging, or protecting against
risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
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Application 13/841,487
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (internal quotation marks
omitted). "A claim that recites an abstract idea must include 'additional
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features' to ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that guidance, we first look to whether the claim
is directed to a judicial exception because:
(1) the claim recites a judicial exception, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice,
or mental processes); and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.05(a}-(c), (e}-(h)).
Only if a claim ( 1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
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Abstract Idea.
ANALYSIS
The Examiner finds that the claims are not patent eligible as they are
directed to a judicial exception without reciting significantly more. Final
Act. 10-16. Specifically, the Examiner finds that the claims are directed to
an abstract idea stating "[ t ]he claimed limitations recite collecting,
generating, and combining data for classifying a competitor based on known
data and using mathematical correlations and algorithms to compile a list of
competitors and are thus considered to be directed to an abstract idea." Final
Act. 11. Further, the Examiner finds that the abstract idea is similar to
concepts found abstract in the courts. Final Act. 11-12 (citing Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011),
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344 (Fed.
Cir. 2014), Gottschalk v. Benson, 409 U.S. 63, 67 (1972 and Alice).
Appellant has not challenged the Examiner's conclusion that the
claims are directed to an abstract idea. App. Br. 9-10. Accordingly, there is
no dispute that the claims are directed to an abstract concept and we proceed
to the second step of the Alice and Mayo framework.
Practical Application/Significantly more than Abstract Idea
Appellant argues that the claims recite a solution to an "Intemet-
centric" problem of classifying competitors in e-commerce. App Br. 10.
Thus, Appellant asserts the claims rooted in computer technology and patent
eligible. App Br. 10-11 (citing DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1258 (Fed. Cir. 2014)), Reply Br. 2-3. Appellant argues:
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Application 13/841,487
the instant claims provide a means by which potential
competitors may be identified, analyzed, and classified
automatically so that the user may review information
respective of actual competitors without needing to waste
energy and resources in review of potential competitors of
limited scope, size, or importance. That solution to an Internet-
centric problem provides "significantly more" than the alleged
abstract idea.
App. Br. 11.
The Examiner responds, stating that the instant claims are unlike the
claims in DDR and do not solve a problem specifically arising in computer
technology. Answer 4. Further, the Examiner states:
data gathering and analysis steps claimed result in merely a
report that requires user interpretation and further application.
The limitations for generating, storing, and presenting a report
represent insignificant post- solution activity and non-
functional descriptive material and is therefore given little
patentable weight.
Answer 4. The Examiner finds that the claims simply apply the abstract idea
on a general purpose computer and recite the use of well-known and
conventional components. Answer 4--5.
We concur with the Examiner that the representative claim is unlike
the claims in DDR. Unlike DDR, the claims do not overcome a problem
specifically arising in the realm of computer networks. Rather, the recitation
of "products common to the users web site and potential competitors
website" and are not reciting using the Internet or a problem unique to using
the Internet, but rather recite the internet as the source of sales data (i.e. the
sales marketplace). We note that the claims do not recite any specific
manner of gathering the information. Our reviewing court has said "we have
treated collecting information, including when limited to particular content
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(which does not change its character as information), as within the realm of
abstract ideas." Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). Further the court stated "limiting the claims to the
particular technological environment ... is, without more, insufficient to
transform them into patent-eligible applications of the abstract idea at their
core." Id at 1354. Thus, we are unpersuaded of error by Appellant's
arguments that the claims are rooted in computer technology and we concur
with the Examiner's finding that the claims merely require the abstract idea
to be applied on a general purpose computer having well-known and
conventional computer components.
Appellant additionally argues that the steps of the claims improve the
field of competitive analysis and as such are patent eligible when considered
in light of the decision in McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016) and BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). App. Br. 11-12.
Reply Br. 4.
The Examiner provided a detailed response to these arguments on
pages 5 through 7 of the Answer. The Examiner states:
The claims herein [are] unlike those of McRO because they do
not use limited rules in a process specifically designed to
achieve an improved technological result. Appellants' inventive
concept is directed to improving the determination of relevant
competitors through the claimed data gathering, analysis, and
reporting steps - not the improvement of any conventional
technology used to achieve the intended result.
Answer 6. The Examiner, identifies that Appellant's arguments do not
explain how the claims are similar to those in Bascom and the Examiner
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provides an analysis of why the Appellant's claims differ from those at issue
in Bascom.
We concur with the Examiner and are not persuaded that the
Examiner erred in finding that the claims are not directed to an improvement
in the operating of the computer or a technological process. The court in
McRO stated "[i]t is the incorporation of the claimed rules, not the use of the
computer that 'improved the existing technological process."' McRO, 837
F.3d at 1314 (citing Alice). Here the claimed steps of determining relevancy
scores and using the relevancy scores are to determine to display data, the
steps are not being used to improve the operation of the computer.
We additionally note that the claimed steps of determining relevancy
rankings and display of data do not result in the transformation of the data;
rather it just results in the data being displayed.
In summary, Appellant's arguments have not persuaded us of error in
the Examiner's determination that the claims are directed to an abstract idea,
using mathematical correlations and algorithms. Further, Appellant's
arguments have not persuaded us that the Examiner erred in finding that the
claims are not: directed to an improvement in the functioning of the
computer or to other technology or other technical field; directed to a
particular machine; directed to performing or affecting a transformation of
an article to a different state or thing; directed to using a judicial exception
in some meaningful way beyond linking the exception to a particular
technological environment such that the claim as a whole is more than a
drafting effort to monopolize the judicial exception. Nor have Appellant's
arguments persuaded us the Examiner erred in finding the additional
limitations of the claims provide more than generic computer components
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having well-known and conventional computer components such that the
claims amount to significantly more than the abstract idea itself.
Accordingly, we sustain the Examiner's rejection of claims 1, 4 through 8,
11 through 15, 18 through 22, and 25 through 36 under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter.
Rejections under 35 U.S.C. § 103
Appellant argues that the Examiner's rejection of independent claims
1, and 8 is in error as the Examiner has not shown that the combination of
the references teach determining relevancy scores as claimed. App. Br. 13-
17, Reply Br. 5-7. Specifically, Appellant argues the Examiner erred in
finding that Staib (US 2007 /0299743) teaches the limitation directed to
assigning a value to a variable where the variable is an absolute number of
products common to the user and potential competitor's website or a
percentage of products common to the user and potential competitor's
website. App. Br. 14--17.
The Examiner finds that Wanker teaches assigning a value to a first
variable and that Staib discloses the variable is either an absolute number of
products or percentage of products in common as recited in independent
claims 1 and 8. Answer 10-11. The Examiner states:
Both Wanker and Staib et al. disclose systems for competitive
comparisons of merchant product offerings using a value
assigned to a variable. While Wanker discloses the comparison
based on a customer specific query, and Staib et al. discloses
the comparison based on a percentage or absolute product
offering in common to competitor merchants. The type of data
compared does not change the function of each system.
Furthermore, based on the broadest reasonable interpretation of
an "absolute number of products common," any whole number
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product offering comparison, including the comparison of only
one product in common, is equivalent to the claimed limitation.
Answer 12.
We disagree with the Examiner's findings concerning the teachings of
Staib (US 2007 /0299743). We have reviewed the cited teaching of Staib
(US 2007 /0299743) and do not find a discussion of assigning a number that
is an absolute number ( or percentage) of products in common between two
merchants. As argued by Appellant, comparing the performance of specific
products, as in Staib (US 2007 /0299743) is not the same as determining
which products are common between merchants as claimed. Reply Br. 5.
Accordingly, we do not sustain the Examiner's obviousness rejection of
independent claims 1, 8 and dependent claims 4 through 6, 11 through 13,
29, and 31 similarly rejected.
Appellant asserts the rejection of independent claims 15 and 22 is in
error for the same reasons as claim 1. The Examiner's rejection of these
claims similarly rely upon Staib (US 2007 /02997 43) to teach the claim 15
and 22 limitations directed to assigning a number that is an absolute number
( or percentage) of products in common between two merchants. Final Act.
15. Thus, we do not sustain the Examiner's obviousness rejection of
independent claims 15, 22 and dependent claims 18 through 20, 25 through
27, 33, and 35 similarly rejected.
The Examiner has not shown that the additional teaching of Mayer,
used in the rejections of dependent claims 7, 14, 21, 28, 30, 32, 34, and 36
remedies the deficiency noted above in the rejections of the independent
claims. Accordingly, we similarly do not sustain the Examiner's rejections
of claims 7, 14, 21, 28, 30, 32, 34, and 36.
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DECISION
We affirm the Examiner's rejection of 1, 4 through 8, 11 through 15,
18 through 22, and 25 through 36 under 35 U.S.C. § 101.
We reverse the Examiner's rejections of 1, 4 through 8, 11 through
15, 18 through 22, and 25 through 36 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's reasons to reject claims 1, 4 through 8,
11 through 15, 18 through 22, and 25 through 36 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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