Ex Parte Desai et al

Patent Trials and Appeals Board

Mar 12, 2019

12626666 - (D) (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/626,666 11/26/2009 Paritosh Desai
106784 7590 03/14/2019
Edell Shapiro & Finnan LLC
9801 Washingtonian Blvd.
Suite 750
Gaithersburg, MD 20878
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.
RSW920125141US1 2595
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
03/14/2019 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):
epatent@usiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte P ARITOSH DESAI and KAMAL GAJENDRAN
Appeal2017-006329
Application 12/626,666
Technology Center 3600
Before JAMES A. TARTAL, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MURPHY, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-7, 11-17, 21-25, and 31-35 under 35 U.S.C. § 101.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 "The real party in interest includes International Business Machines
Corporation, an assignee of record." (Appeal Br. 2.)
Appeal2017-006329
Application 12/626,666
BACKGROUND
The Appellants' invention relates to a "business product decision
system" for "generating pricing and assortment decisions in a retail setting
for the realization of a given business goal." (Spec. ,r 2.) According to the
Appellants, "most current price modeling systems generate pricing for a
known set of products which have existing historical transaction data." (Id.
,r 9.) Thus, according to the Appellants, "[ c ]urrent systems have difficulty
modeling new products," and "are virtually useless in generating models for
hypothetical product assortments." (Id.)
The Appellants' system involves "model[ing] consumer purchasing
decisions as a tree structure," with "individual products at each leaf." (Spec.
,r 13). In this manner, the product decision tree "may model any number of
products," including "fictitious products" that are "not yet available within a
given market." (Id.) Product decisions can be made "by identifying the
distance" between products (i.e., leaf nodes) in the decision tree. (Id. ,r 213.)
For example, "a new product may cannibalize products 'close' to it in the
decision tree," while "products filling a 'void' in the tree may be particularly
well received without much cannibalism of sales for other products." (Id.)
ILLUSTRATIVE CLAIM
1. A computerized method for generating a business
plan, useful in association with at least one store, the
computerized method comprising:
receiving modeling data, wherein the modeling data
includes product data, customer data, constraints, and
transaction data, and receiving the modeling data comprises:
reformatting the modeling data by aggregating
elements of the modeling data and processing the aggregated
elements together as a single element to reduce a processing
time of a processor;
2
Appeal2017-006329
Application 12/626,666
dividing customers into a plurality of customer segments;
generating, by the processor, a product decision tree
using the modeling data, wherein the product decision tree
models prototypical consumer purchasing decisions for at least
one of the customer segments as a tree structure, and wherein
leaf nodes of the product decision tree correspond to products;
computing, by the processor, the distance between leaf
nodes of the product decision tree corresponding to at least two
products to determine cannibalization effects between the at
least two products;
generating, by the processor, at least one business plan,
wherein the at least one business plan is based upon the
computed distance between leaf nodes and includes at least one
of a product assortment plan, an everyday pricing plan, a
promotional plan, and a markdown plan; and
providing the at least one business plan to the at least one
store for implementation.
REJECTION
The Examiner rejects claims 1-7, 11-17, 21-25, and 31-35 under
35 U.S.C. § 101 as "directed to" a judicial exception "without significantly
more." (Final Action 5.)
JUDICIAL EXCEPTIONS
The Patent Act defines subject matter eligible for patent protection as
"any new and useful process, machine, manufacture, or composition of
matter, or any new and useful improvement thereof." 35 U.S.C. § 101. But
the Supreme Court has "long held" that this provision contains an important
implicit exception: "Laws of nature, natural phenomena, and abstract ideas
are not patentable." Ass 'nfor Molecular Pathology v. Myriad Genetics,
Inc., 569 U. S. 576, 589 (2013). These three listed categories are 'judicially
created exceptions to § 101," or more concisely, 'judicial exceptions."
AfcRO, Inc. v. Bandai Nwnco Games Am. Inc., 837 F.3d 1299, 1311 (Fed.
3
Appeal2017-006329
Application 12/626,666
Cir. 2016). Thus, an "abstract idea" is considered a judicial exception to
35 U.S.C. § 101.
THE ALICE TEST
In Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208 (2014), the Supreme
Court provided a two-step test to guard against an attempt to patent an
abstract idea, as opposed to a "patent-eligible application" involving an
abstract idea. (ld. at 217----18.) In Alice step one, a determination is made as
to whether the claim at issue is "directed to" an abstract idea. (Id. at 218.) If
not, it can be concluded that no attempt is being made to patent an abstract
idea, and the Alice Test is complete. If the claim at issue is "directed to" an
abstract idea, Alice step two must be performed. (Id.) In this second step of
the Alice Test, consideration is given to the additional elements in the claim
(both individuaUy and as an ordered combination) to determine whether they
transform the nature of the claim into something that "amounts to
significantly more" than the abstract idea itself. (id.)
2019 GUIDANCE
'The recentlv published 2019 Revised Patent Sub1ect JV1atter Eligfoilitv °" J ~, .,/
Guidance ("2019 Guidance") sets forth a revised procedure for determining
whether a claim is "directed to" an abstract idea under Alice step one. (See
Federal Register VoL 84. No. 4, 50-57.) The 2019 Guidance lists three - / . .
groupings of abstract ideas: "[rn]athematical concepts,'' "[m Jental processest
and"[ c ]ertain methods of organizing human activity.'' (Id. at 52.) If a c1aim
does not recite a limitation that fa11s within one of these three enumerated
groupings, the claim is not "directed to" an abstract idea under Alice step one.
U d at 54). If a claim does recite a feature falling into one of these
4
Appeal2017-006329
Application 12/626,666
enumerated groupings, the claim is still not "directed to" an abstract idea,
under Alice step one, unless the claim, as a whole, fails to integrate the
abstract idea into a practical application. (Id.)
ANALYSIS
The Examiner determines that the claims on appeal satisfy Alice step
one because they "are directed to the abstract idea of 'generating a business
plan based on a product decision tree modeling prototypical consumer
purchasing decisions."' (Final Action 5.) We are persuaded by the
Appellants' position that this determination is not supported sufficiently by
the record. (See Appeal Br. 10-17; see also Reply Br. 2-9.)
Insofar as the Examiner is saying that simply generating a business
plan is an abstract idea, we do not necessarily disagree. Indeed, the purpose
of the Appellants' business plan, or any business plan for that matter, is "the
realization of a given business goal." (Spec. ,r 3.) In a "retail setting," a
business goal is "to increase revenue," and this can be accomplished by
providing "a desirable set of products." (Id. ,r,r 3, 4, 5.) Thus, the record
reasonably supports a stance that the general concept of generating a
business plan fits under the abstract-idea umbrella of advertising and
marketing (i.e., a certain method of organizing human activity). 2
But, as intimated in the wording of the Examiner's Alice-first-step
determination, the claims do not simply require the generation of a business
plan. Rather, they require the generation of a business plan based on a
2 "[C]ommercial or legal interactions," including "advertising, marketing, or
sales activities or behaviors," are listed under the grouping of"[ c ]ertain
methods of organizing human activity" in the 2019 Guidance. (Federal
Register Vol. 84, No. 4 at 52.)
5
Appeal2017-006329
Application 12/626,666
product decision tree modeling prototypical consumer purchasing decisions.
A decision tree, and particularly a product decision tree modeling
prototypical consumer purchasing decisions, is not a prerequisite of a
business plan. And no assertion has been made that such a product decision
tree, in and of itself, is a mathematical concept, a mental process, or a
method of organizing human activity. As such, this requirement (i.e., that
the business plan be based on a product decision tree modeling prototypical
consumer purchasing decisions) could plausibly create an additional element
that integrates the alleged abstract idea (i.e., generating a business plan) into
a practical application. But the record does not reflect that this possibility
was taken into consideration during the Alice-step-one determination.
Additionally, the claims do not just require the decision tree to model
prototypical consumer purchasing decisions, as they set forth specific
features used in this modeling. For example, "leaf nodes" of the decision
tree must correspond to "products," so that "the distance between the leaf
nodes" can be used to determine the "cannibalization effects" of products
residing on relevant leaf nodes. (Appeal Br., Claims App.) The record does
not reflect that these claimed details of the decision tree were taken into
consideration during the Alice-step-one determination.
The claims on appeal additionally require "reformatting the modeling
data by aggregating elements of the modeling data and processing the
aggregated elements together as a single element to reduce a processing time
of a processor." (Appeal Br., Claims App.) The record reflects an attempt
by the Examiner to explain why such reformatting, individually, is not
enough to establish an integration of an abstract idea into a practical
application. (See Final Action 2-5; see also Answer 3-7.) However, the
6
Appeal2017-006329
Application 12/626,666
record does not reflect that this reformatting requirement ( and the specified
aggregating and processing) was considered in combination with the above-
discussed, and plausibly non-abstract, limitations, when evaluating whether
each claim on appeal, as a whole, integrates an abstract idea into a practical
application.
The Examiner seems to almost imply that "[ c ]omparing new and
stored information and using rules to identify options," via a computer,
inevitably equates to patent ineligibility. (See Final Action 3, see also
Answer 4.) Yet, as argued by the Appellants, this is not always the case.
(See Appeal Br. 14--15; see also Reply Br. 3). And the record does not
contain an explanation as to how, in the context of the claims on appeal,
these computer-implemented functions align with mathematical concepts,
certain methods of organizing human activity, or mental processes.
Consequently, we are persuaded by the Appellants' position that the
Examiner does not establish sufficiently that the claims on appeal satisfy
Alice step one. As such, we need not proceed to Alice step two in order to
conclude that, on the record before us, it has not been established
sufficiently that the claims on appeal fail the Alice Test for patent eligibility.
DECISION
We REVERSE the Examiner's rejection of claims 1-7, 11-17, 21-25,
and 31-35 under 35 U.S.C. § 101.
REVERSED
7