Ex Parte DRYE et al

Patent Trials and Appeals Board

Mar 29, 2019

13949652 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/949,652 07/24/2013
74739 7590 04/02/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
Stephen DRYE
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.
2011-001 lUSO 1 1392
EXAMINER
BARGEON, BRITTANY E
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN DRYE, SEAN KAUFFMAN, and
MATTHEW LANDAU
Appeal2017-008382
Application 13/949,652
Technology Center 3600
Before JOSEPH L. DIXON, JENNIFER L. McKEOWN, and
MATTHEW J. McNEILL, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 According to Appellants, the real party in interest is Oracle International
Corporation. App. Br. 2.
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Application 13/949,652
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention "is directed generally to
an electronic catalog system, and in particular to an electronic catalog
system that defines values for different contexts." Spec. ,r 2.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A non-transitory computer readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to retrieve product information from a
product selected from an ecommerce web site, the retrieving
compnsmg:
receiving a first request from a first web site store for first
item data for the product from an Extensible Markup Language
(XML) file that comprises an electronic product catalog, the first
request including a first context for providing the first item data
and is in response to a selection of a first link corresponding to
the product;
receiving a second request from a second web site store
that is different than the first web site store for second item data
for the product from the XML file, the second request including
a second context for providing the second item data that is
different than the first context and is in response to a selection of
a second link corresponding to the product;
wherein the XML file comprises for the product, a
plurality of common item attribute values, at least one first
context item attribute value for the first context and at least one
second context item attribute value for the second context;
parsing the XML file in response to the first request and
replacing at least one of the common item attribute values with
the first context item attribute value, wherein the parsing and
replacing forms the first item data;
parsing the XML file in response to the second request and
replacing at least one of the common item attribute values with
the second context item attribute value, wherein the parsing and
replacing forms the second item data; and
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providing the first item data to the first web site store and
the second item data to the second web site store, wherein the
first item data is different than the second item data.
THE REJECTIONS
The Examiner rejected claims 1-21 under 35 U.S.C. § 101 as directed
to patent ineligible subject matter. Final Act. 2-3, 6; Non-Final Act., dated
2/8/2016, 4--5.
The Examiner rejected claims 1, 4, 8, 11, 15, and 18 under 35 U.S.C.
§ 103 as unpatentable over Peyrelevade et al. (US 2003/0120550 Al,
published June 26, 2003) ("Peyrelevade"), and Gopal et al. (US
2008/0222011 Al, published Sept. 11, 2008) ("Gopal"). Final Act. 7-9.
The Examiner rejected claims 2, 3, 6, 7, 9, 10, 13, 14, 16, 17, 20, and
21 under 35 U.S.C. § 103 as unpatentable over Peyrelevade, Gopal, and Iida
et al. (US 8,452,785 Bl, issued May 28, 2013) ("Iida"). Final Act. 9-11.
The Examiner rejected claims 5, 12, and 19 under 35 U.S.C. § 103 as
unpatentable over Peyrelevade, Gopal, and Angel et al. (US 2005/0193055
Al, published Sept. 1, 2005) ("Angel"). Final Act. 11-12.
ANALYSIS
THE§ 101 REJECTION
Claims 1-21
Based on the record before us, we are persuaded that the Examiner
erred in rejecting claims 1-21 as directed to patent ineligible subject matter.
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
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ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216
(2014).
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. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 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 (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
(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
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mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("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 ( citation omitted). "A claim
that recites an abstract idea must include 'additional 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
section 101. USPTO's 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 recites:
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( 1) any judicial exceptions, 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) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
("MPEP") § 2106.05(a)-(c), (e)-(h) (9th ed. 2018)).
See Memorandum 52, 55-56. 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 56.
Examiner's Findings and Conclusion
Under step one of the Alice test, the Examiner determines that the
claims are directed to "providing item data which is a fundamental economic
practice and/or a method of organizing human activity and thus an abstract
idea." Non-Final Act. 4; Ans. 2. The Examiner equates the steps of
receiving requests, parsing stored data, and providing item data with
receiving data, retrieving stored data, and forwarding reply data. Id. The
Examiner explains that this claimed concept is similar to the abstract idea
receiving data from one source, selectively forwarding the data and
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forwarding reply data to the first source, which was found to be ineligible in
Dealertrack Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012); see also
Final Act. 2-3; Ans. 2. The Examiner also relies on Cyberfone Systems,
LLC v. CNN Interactive Group, Inc., 558 F. App'x 988 (Fed. Cir. 2014),
which "held that the well-known concept of categorical data storage, i.e. the
idea of collecting information in classified form, then separating and
transmitting that information according its classification, is an abstract idea."
Id.; see also Ans. 2.
Appellants ' Contentions
Appellants argue that the Examiner's alleged abstract idea, namely
providing idea data, "ignores essentially all of the claim limitations." App.
Br. 5. Appellants contend that the claims "at the highest level, are directed
to a centralized electronic product catalog that can be used for multiple
different web sites." App. Br. 6. Appellants explain that "[i]n response to a
selection of a link corresponding to a product. .. different information for
the same product is received depending on which web site store was
displaying the link." Id. ( emphasis omitted). According to Appellants, this
allows different information for the same product to be displayed on
different websites and, like in DDR, this addresses a problem that
"specifically arises in the realm of computer networks, and specifically for
e-commerce web sites." Id. Appellants additionally explain that the claimed
invention provides technical advances over the prior art by "provid[ing]
specific rules/functionality that allow a centralized XML file to provide
product information to different web sites, where the product information
may differ for the same product." App. Br. 9.
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Analysis - Revised Step 1
In step one we consider whether the claimed subject matter falls
within the four statutory categories of patentable subject matter identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
The claimed invention here recites a process including a number of a steps.
Accordingly, the claimed invention falls within the process category.
Analysis - Revised Step 2A
Under the Memorandum, in prong one of step 2A we look to whether
the claims recite a judicial exception. The claims include (1) first and
second requests for first and second item data from first and second web site
stores, respectively, for a product from an XML file containing an electronic
product catalog, each of the first and second request including a first context
for providing first item data and second context for providing second item
data that is different from the first context; (2) an XML file comprising a
plurality of common item attribute values for the product as well as at least
one context item attribute value for the first context and at least one second
context item attribute value for the second context; (3) parsing the XML file
in response to each request and replacing a common item attribute value
with either a first or second context item attribute value wherein the parsing
and replacing forms the first or second item data; and (4) providing the first
and second item data to each of the first and second web site store. As
Appellants summarize, at a high level, the claims recite using a centralized
electronic product catalog that can be used to provide different product
information for the same product to different web sites based on the request
context. We determine that this providing product information to web site
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stores are sales activities, which are a commercial or legal interaction that
falls into the category of certain methods of organizing human activity
identified in the Memorandum.
Under prong two of revised step 2A, though, we determine that the
recited judicial exception is integrated into a practical application. Namely,
the claimed invention provides a technological improvement to the prior art
process. The Specification explains that web site retailers may at times wish
to customize an item's attribute for a particular context. In prior art systems,
When retailer web sites need to present different data associated
with an item depending on the context in which the item is
presented, typically an item either needs to be entered into an
electronic catalog system multiple times, one for each context, or
complex coding must be implemented in the display presentation
software to choose the appropriate data to display for the context.
Spec. ,r 4; see also Spec. ,r 19. The claimed invention addresses this
problem by using requests that identify a context that is then used to parse a
single XML file and replace common data with context specific data based
on the request. As such, the claimed invention is directed to a technological
improvement. See MPEP § 2106.0S(a); see also McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1313-14 (Fed. Cir. 2016).
We further disagree with the Examiner's reliance on Dealertrack.
The Federal Circuit, in Dealertrack, found ineligible claims that "'explain
the basic concept' of processing information through a clearinghouse."
Dealertrack, 674 F.3d at 1333. The Court further finds that the claims did
"not specify how the computer hardware and database are 'specially
programmed' to perform the steps claimed in the patent" (Id.), and that "the
claims [] recite only that the method is 'computer aided' without specifying
any level of involvement or detail." Id. at 1334.
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The claims here are not the mere automation of a manual process.
Instead, the claims are more analogous to DDR Holdings, LLC v.
Hotels.com, 113 USPQ2d 1097 (Fed. Cir. 2014) in that the claims provide a
technological solution to a challenge particular to the Internet. Namely, the
claims recite specific steps to use a single XML file to replace common data
with first or second item data for the same product based on the context of a
request from different web site stores. As such, based on the record before
us, we agree with Appellants that the Examiner erred in finding that the
claimed invention is directed to an abstract idea.
Accordingly, we reverse the Examiner's decision to reject claims
1-21 as directed to patent ineligible subject matter.
THE§ 103 REJECTION BASED ON PEYRELEVADE AND GOPAL
Claims 1, 4, 8, 11, 15, and 18
Based on the record before us, we are persuaded that the Examiner
erred in finding that claims 1, 4, 8, 11, 15, and 18 are unpatentable over
Peyrelevade and Gopal.
Appellants contend that Peyrelevade does not disclose the claimed
parsing and replacing. App. Br. 13. For example, Appellants assert that
Peyrelevade "fails to disclose an XML file that functions as a centralized
product catalog ... that is parsed and has values replaced to provide
'customized' information for a product." App. Br. 13; see also id. (asserting
that "there simply is no disclosure in these paragraphs of 'parsing' and
'replacing' or any equivalent functionality.").
Both the claimed invention and Peyrelevade' s system are directed to
using data stored in a single location to provide customized product
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information to different websites or resellers based on the request received
from each website. See, e.g., Peyrelevade ,r,r 49-51. Peyrelevade includes a
database that stores defined modules and its associated descriptions that are
used in constructing websites of multiple resellers. Peyrelevade ,r,r 70-71.
The modules may include common information as well as information
unique to each website. Abstract. In an exemplary embodiment,
Peyrelevade explains
The reseller website 2500a may make a request to the supplier
website 2700 for lipstick product information. The computing
platform 3300 may process the request to determine an
appropriate module for providing the information requested by
the reseller website 2500a. For example, the computing platform
3300 may determine the appropriate module by searching
module descriptions for "lipstick." In this example, the module
4100 may include the phrase "lipstick" in its description.
Peyrelevade ,r 7 4. As such, Peyrelevade discloses parsing a database to
determine the appropriate module. Peyrelevade ,r 7 4. The module
description and associated rules are then used to construct the website.
Peyrelevade ,r,r 7 5-7 6. The claims here, however, require replacing a
common attribute value with a first context item attribute value and
replacing a common attribute value with a second context item attribute
value. Peyrelevade does not disclose a common attribute value or
equivalent, such as initial or default values. Instead, Peyrelevade uses an
already defined module and associated description in combination with rules
to construct the website. The Examiner fails to sufficiently explain how the
Peyrelevade replaces a common value with the first or second context
attribute value. Based on the record before us, then, we are persuaded of
Examiner error.
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Accordingly, we reverse the Examiner's decision to reject claims 1, 4,
8, 11, 15, and 18 as unpatentable over Peyrelevade and Gopal.
THE REMAINING § 103 REJECTIONS
Claims 2, 3, 5-7, 9, 10, 12-14, 16, 17, and 19-21
Based on the record before us, we are persuaded that the Examiner
erred in rejecting the remaining claims are unpatentable over the cited
combinations of prior art. As discussed above, the cited combination of
Peyrelevade and Gopal fails to teach or suggest the limitations of
independent claims 1, 8, and 15. The additional cited prior art fails to cure
the deficiencies of the combination of Peyrelevade and Gopal. As such, we
are similarly persuaded that the Examiner erred in rejecting dependent
claims 2, 3, 5-7, 9, 10, 12-14, 16, 17, and 19-21.
Accordingly, we reverse the Examiner's decision to reject claims 2, 3,
5-7, 9, 10, 12-14, 16, 17, and 19-21 as unpatentable over the cited
combinations of prior art.
DECISION
We reverse the Examiner's decision to reject claims 1-21.
REVERSED
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