Ex Parte Dube et al

Patent Trial and Appeal Board

Oct 18, 2018

12147252 (P.T.A.B. Oct. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/147,252 06/26/2008 Parijat Dube
21254 7590 10/18/2018
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
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.
YOR920070561 US 1 6607
EXAMINER
NGUYEN, TAND
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
10/18/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PARIJAT DUBE, KARTHIK SUBBIAN,
and LAURA WYNTER
Appeal2017-004442
Application 12/147,252 1
Technology Center 3600
Before ERIC B. CHEN, HUNG H. BUI, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's decision finally rejecting claims 1-3, 5-14, and 16-22, which
are all the claims pending in the application. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify International Business Machines Corporation as the
real party in interest. See Appeal Br. 1.
2 Claims 4 and 15 are cancelled. See Appeal Br. 3, 5.
Appeal2017-004442
Application 12/147,252
STATEMENT OF THE CASE
Invention
Appellants' invention "relates to the formation of coalitions,
particularly in e-commerce, among buyers and sellers. More specifically, a
feedback mechanism permits initially-proposed constraints to be selectively
relaxed to formulate a coalition that is more optimal in at least one aspect."
Spec. ,r 1.
Exemplary Claims
Claims 1 and 13 are independent. Claims 1 and 11 are exemplary and
are reproduced below with limitation at issue emphasized.
1. A method for assisting in expediting a coalition
formation, said method comprising:
storing, in a memory unit, data for one or more coalitional
and/or service constraints from potential members of a possible
coalition, each said coalitional constraint including at least one
parameter that quantitatively defines a characteristic of the
proposed coalition considered as important by at least one said
potential member and each said service constraint including at
least one parameter that quantitatively defines a characteristic of
a service considered as important by at least one said potential
member;
retrieving one or more of said coalitional and/or service
constraints from said memory unit;
executing a sensitivity analysis on a processor of a
computer, to calculate marginal benefits of one or more
constraints of a current coalition or a currently-proposed
coalition;
determining which marginal changes would be optimal to
perform; and
reporting said determined optimal marginal changes,
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said performing of the sensitivity analysis and reporting of
optimal marginal changes thereby providing a feedback
mechanism assisting in expediting said coalition formation.
11. A non-transitory, computer-readable storage
medium tangibly embodying a sequence of machine-readable
instructions executable by a digital processing apparatus to
execute the method defined by claim 1.
Appeal Br. 42, 44.
REFERENCES
The Examiner relies upon the following prior art in rejecting the
claims on appeal:
Weiss
Chen et al. ("Chen")
Elad et al. ("Elad")
US 6,681,156 Bl
US 2007 /0299705 Al
US 7,512,558 Bl
REJECTIONS
Jan. 20, 2004
Dec. 27, 2007
Mar. 31, 2009
Claims 1-3, 5-14, and 16-22 stand rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter. Final Act. 4--20.
Claims 1-3, 5-14, and 16-22 stand rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite. Final Act. 20-21.
Claims 11 and 12 stand rejected under 35 U.S.C. § 112, fourth
paragraph, as being of improper dependent form for failing to further limit
the subject matter of a previous claim. Final Act. 21-22.
Claims 1-3, 5-14, and 16-22 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over the combination of Weiss, Elad, and Chen. Final
Act. 22-37.
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Application 12/147,252
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellants. Arguments not made are waived. See
MANUAL OF PATENTING EXAMINING PROCEDURE (MPEP) § 1205.02 (9th Ed.,
Rev. 08.2017; Jan. 2018); 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l)
(2013).
ANALYSIS
Rejection Under§ 101
Issue: Does the Examiner properly reject the claims under
35 U.S.C. § 101 as being directed to non-patentable subject matter?
Appellants argue the claims as a group. See Appeal Br. 9. We select
independent claim 1 as exemplary of Appellants' arguments for claims 2, 3,
5-14, and 16-22. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner determines claim 1 is directed to a fundamental
economic practice as well as a method of organizing human activities, and,
thus, recites an abstract idea. See Final Act. 9, 13. The Examiner also
determines the claim does not include "any element or combination of
elements ... sufficient to ensure that the claim amounts to significantly
more than the abstract idea itself." Final Act. 5.
Appellants present several arguments against the § 101 rejection. We
do not find Appellants' arguments persuasive. The Examiner has provided a
comprehensive response to Appellants' arguments supported by a
preponderance of evidence. See Ans. 2---6. Thus, we adopt the Examiner's
findings and conclusions. See Final Act. 4--20; Ans. 2---6.
Section 101 provides that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
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new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. The
provision, however, "contains an important implicit exception: 'Laws of
nature, natural phenomena, and abstract ideas"' are not patentable. Alice
Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting
Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107,
2116 (2013) (bracketed alteration omitted)). The "abstract ideas" category
embodies the longstanding rule that an idea, by itself, is not patentable.
Alice, 134 S. Ct. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67
(1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)). The first step in the
analysis is to "determine whether the claims at issue are directed to one of
those patent-ineligible concepts," such as an abstract idea. Alice, 134 S. Ct.
at 2355.
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 566 U.S. at 79, 78). In other words, the
second step is to "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
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concept] itself."' Alice, 134 S. Ct. at 2355 (brackets in original) (quoting
Mayo, 566 U.S. at 72-73). The prohibition against patenting an abstract
idea '"cannot be circumvented by attempting to limit the use of the ...
[abstract idea] to a particular technological environment' or adding
'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-
11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
Initially, the Examiner determines and we agree that independent
claim 1 is "directed to a process." Final Act. 8. As such, we agree with the
Examiner that claim 1 is directed to a statutory class of invention within
35 U.S.C. § 101. Id.
Alice Step 1: Abstract Idea
Turning to the first step of the Alice inquiry, we must determine
whether claim 1, being directed to a statutory class of invention, nonetheless,
falls within a judicial exception. The Examiner determines that "the
concept of forming a business coalition" is an abstract idea because it is
both a fundamental economic activity as well as a method of organizing
human activities. Final Act. 12; see Final Act. 13. Appellants, in tum, do
not rebut the Examiner's determination that claim 1 is directed to a
fundamental economic activity or a method of organizing human activities,
or both. See Appeal Br. 9-13 ("even if 'forming a business coalition ... is
[a] fundamental economic practice ... ' such observation is irrelevant since
the claimed invention provides a specific, concrete mechanism that can only
be implemented on a computer, to improve conventional computerized
methods of assisting in coalition formation") ( emphasis omitted).
We agree with the Examiner that claim 1 is directed to a fundamental
economic activity and a method of organizing human activities, and such
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activities fit "squarely within the realm of abstract ideas." Final Act. 12.
Forming a business coalition of buyers or sellers is a method of organizing
human economic activity and a fundamental economic activity long
prevalent in our system of commerce, like the risk hedging in Bilski (see
Bilski, 561 U.S. at 593), the intermediated settlement in Alice (see Alice, 134
S. Ct. at 2356-57), the verifying of credit card transactions in CyberSource
(see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed.
Cir. 2011) ), the collecting and analyzing of information to detect and notify
of misuses in FairWarning (see FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093-94 (Fed. Cir. 2016)), and the guaranteeing of
transactions in buySAFE (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1354 (Fed. Cir. 2014)). Forming a business coalition is also a building block
of a market economy. Thus, we agree with the Examiner that claim 1, like
the fundamental economic activities identified supra, is directed to an
"abstract idea" beyond the realm of patent-eligible subject matter under
§ 101. See Alice, 134 S. Ct. at 2356.
Alice Step 2: Inventive Concept
Turning to the second step of the Alice inquiry, the Examiner
determines, and we agree, that the claimed structural elements (e.g., a
processor of a computer and a memory unit), when taken in combination
with the respective functional elements of "executing a sensitivity analysis,"
"determining which marginal changes ... to perform," and storing data,
together do not offer significantly more than the abstract idea itself. Final
Act. 16; see Final Act. 17-20. The Examiner also correctly finds that the
Specification discloses mere general purpose computing equipment for
performing the steps of the invention. Final Act. 17 ( citing Spec. ,r,r 102---08,
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Fig. 7). Thus, the elements of claim 1 simply recite an abstract idea
executed using generic computer technology, such as "a processor of a
computer" and a "memory unit." See Appeal Br. 42.
Appellants argue that an inventive concept arises from "the
unconventional use of marginal analysis of coalition constraints to determine
and identify which marginal changes would benefit the coalition formation"
in claim 1. Appeal Br. 21.
We are not persuaded. Claim 1 recites the basic steps of storing and
retrieving data from a memory, performing calculations, and reporting the
results of the calculations. This is a classic case of implementing an abstract
idea on a computer, which is not eligible under Alice. See Alice, 134 S. Ct.
at 2358. The Federal Circuit rejected a similar argument in Electric Power
Group, finding that "[ m ]erely requiring the selection and manipulation of
information-to provide a 'humanly comprehensible' amount of information
useful for users ... by itself does not transform the otherwise-abstract
processes of information collection and analysis." Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (internal citation
omitted) ("merely selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes, whose implicit exclusion from § 101 undergirds
the information-based category of abstract ideas"). Nor, as the Examiner
correctly determines, do the pre-processing or post-processing limitations in
the claim add anything sufficient to make the claims eligible. Rather, these
limitations are directed to using a computer to perform routine computer
activity. See Final Act. 16.
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Nor are we persuaded by Appellants' various preemption arguments.
Rather than preemption, the Federal Circuit instructs that the Alice two-step
analysis is the test for whether claims are statutory. "While preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo framework, as they are in this case, preemption concerns are fully
addressed and made moot." Id.
Because Appellants' exemplary claim 1 is directed to a patent-
ineligible abstract concept and does not recite something "significantly
more" under the second prong of the Alice analysis, we sustain the
Examiner's rejection of claim 1 under 35 U.S.C. § 101 as being directed to
non-patentable subject matter in light of Alice and its progeny. The rejection
of claims 2, 3, 5-14, and 16-22, which are not argued separately, or are only
nominally argued separately, is sustained for the same reasons. See Appeal
Br. 26-28.
Rejection Under§ 112, second paragraph
Issue: Does the Examiner err in finding exemplary claim 1 is
indefinite?
The Examiner determines claim 1 is indefinite under 35 U.S.C. § 112,
second paragraph, finding "last step [6] is vague because it's not clear what
'coalition formation' it refers, 'possible coalition' of [1], or 'current
coalition' or '[]a currently-proposed coalition' of [3]." Final Act. 21.
Appellants argue the language is clear:
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The language of the claimed invention involves wording that
has clear meaning based on their plain meaning in the English
language and there would be no need to attempt to interconnect
possible different coalition formation stages identified in the
claims, as long as this plain meaning is understood by one having
ordinary skill in the art.
Appeal Br. 11.
We are not persuaded by Appellants' argument. As recently reiterated
in Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5
(PT AB Aug. 25, 2017) (precedential), we assess indefiniteness under the
approach approved by the Federal Circuit in In re Packard, 751 F.3d 1307,
1310 (Fed. Cir. 2014), i.e., "[a] claim is indefinite when it contains words or
phrases whose meaning is unclear" (internal quotations and citation
omitted). This approach is consistent with the broadest reasonable
interpretation standard used by the PTO when interpreting proposed patent
claims to ensure that they are "clear, unambiguous, and drafted as precisely
as the art allows." McAward, 2017 WL 3669566, at *3. When a broadest
reasonable interpretation reveals ambiguity in the claim language "the
applicant may 'amend his claims to obtain protection commensurate with his
actual contribution to the art."' Id. (quoting In re Yamamoto, 740 F.2d 1569,
1571 (Fed. Cir. 1984)). The Federal Circuit acknowledged the desirability
of resolving questions of compliance with § 112 during prosecution in
Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir.
2008) (cited with approval in Nautilus, Inc. v. Biosig Instruments, Inc., 134
S. Ct. 2120, 2129 (2014)).
Here, we agree with the Examiner that in claim 1, it is unclear
whether "said coalition formation" ( claim 1, line 16) refers to "a current
coalition or a currently-proposed coalition," or to both (claim 1, line 12).
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See Final Act. 21. Moreover, in the event of further prosecution, the
Examiner should also determine whether there are other antecedent basis
issues in the claim such as whether the limitation "said performing of the
sensitivity analysis" ( claim 1, line 15, emphasis added) has sufficient
antecedent basis.
Appellants further request "the Board remand this application with an
order that the Examiner work more constructively with Appellants'
representative to get any outstanding issue(s) resolved quickly." Reply
Br. 11. The Examiner's alleged lack of diligence, however, is not an
appealable matter. Appropriate recourse for addressing this issue would be
to either: ( 1) request the Examiner's Supervisory Patent Examiner (SPE) to
exercise supervisory oversight, or (2) file a petition to the Director to invoke
supervisory authority under 37 C.F.R. § 181(a)(3).
Accordingly, we affirm the Examiner's decision to reject claims 1-3,
5-14, and 16-22 under 35 U.S.C. § 112, second paragraph, as indefinite.
Rejection Under§ 112, fourth paragraph
Issue: Does the Examiner err in finding claims 11 and 12 are of
improper dependent form for failing to further limit the subject matter of
claim 1?
In rejecting claims 11 and 12, the Examiner states "[t]he test as to
whether a claim is a proper dependent claim is that it shall include every
limitation of the claim from which it depends or in other words that it shall
not conceivably be infringed by anything which would not also infringe the
basic claim." Final Act. 21 (citing MPEP § 608.0l(n) Section III)). More
particularly, the Examiner finds "[t]he 'article' of claims 11-12 do not
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further limit the features of the method steps of claim 1" and "[ a ]s a result
claims 11-12 are in improper dependent form." Final Act. 21-22.
Appellants argue that the Examiner erred in determining that
dependent claims 11 and 12 are in "improper dependent form" because
storage medium claims 11 and 12 are each dependent on method claim 1
and, thus, directed to a different statutory class of invention compared to the
claims from which they depend and such a difference in statutory class
"does not, in itself render the ... [claim] improper." Reply Br. 13 ( citing
MPEP § 608.0l(n) (emphasis omitted)).
We are persuaded by this argument because the statute requires that "a
claim in dependent form" shall "specify a further limitation of the subject
matter claimed" (see 35 U.S.C. § 112, fourth paragraph) and the Examiner
does not sufficiently explain why dependent claims 11 and 12 do not
properly specify "further limitation[ s ]" (id.) of the method recited in
independent claim 1.
Accordingly, we do not sustain the Examiner's rejection of dependent
claims 11 and 12 under 35 U.S.C. § 112, fourth paragraph.
Rejection Under§ 103(a)
Issue: Does the Examiner err in finding the combination of Weiss,
Elad, and Chen teaches or suggests "executing a sensitivity analysis on a
processor of a computer, to calculate marginal benefits of one or more
constraints of a current coalition or a currently-proposed coalition," as
recited in claim 1?
Appellants dispute the Examiner's factual findings, arguing "[ n Jone of
the cited references teaches or suggests using sensitive/marginal analysis of
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coalitional and service constraints for purpose of assisting in expediting
coalition formation." Appeal Br. 35.
Appellants' argument is not commensurate with the scope of the
claim, which does not recite using "sensitive/marginal analysis," and, thus,
we are unpersuaded of Examiner error.
Appellants further argue "Appellants can find no discussion in Weiss
of any attempt to perform any marginal/sensitive analysis on any of the
proprietary information in Weiss's database." Appeal Br. 35-36. Here also,
the claim does not recite performing "marginal/sensitive analysis," and,
therefore, Appellants' argument is not commensurate with the scope of
claim 1. In addition, Appellants argue Weiss alone, even though the
Examiner relies on the combination of Weiss, Elad, and Chen to teach
"executing a sensitivity analysis ... to calculate marginal benefits," as
recited in claim 1. See Final Act. 27-37. We, thus, are not persuaded of
error because we agree with the Examiner's findings regarding Weiss, Elad,
and Chen and because Appellants' argument is not responsive to these
findings.
Appellants argue "[ t ]here is no suggestion in Elad to perform a
marginal evaluation if the input data were to be marginally changed.
Tertiary reference Chen does not even seem related to the claimed invention
except possibly when a few words are taken out-of-context." Appeal Br. 36.
Such conclusory statements, however, amounting to little more than a
paraphrasing of the claim language and a general denial, are unpersuasive to
rebut the prima facie case produced by the Examiner. Cf 37 C.F.R.
§ 4I.37(c)(l)(iv) ("A statement which merely points out what a claim recites
will not be considered an argument for separate patentability of the claim");
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see also In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that
the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
a naked assertion that the corresponding elements were not found in the
prior art").
Appellants next argue none of the references suggest systematic
modification of input data:
as clearly explained in paragraph [0170] of the originally-filed
specification, the "sensitivity analysis" of the present invention
would take the "optimized energy service package" that was
formed in Weiss and then systematically varies the input data by
one unit and calculates the effect of the modification using one
of several alternative strategies initially selected by the user.
None of the cited references makes any suggestion of such
systematic modification of input data, let alone input data
representing coalition constraints.
Appeal Br. 36.
Appellants' argument that Weiss does not teach "systematically varies
the input data by one unit and calculates the effect of the modification" is
not commensurate with the scope of the claim. In addition, Appellants argue
Weiss alone, although the rejection relies on the combination of Weiss, Elad,
and Chen. Accordingly, we find Appellants' argument unpersuasive.
Appellants have not shown error in the Examiner's factual findings or
conclusion of obviousness. We, thus, sustain the Examiner's 35 U.S.C.
§ 103(a) rejection of independent claim 1. Independent claim 13 and
dependent claims 2, 3, 5-12, 14, and 16-22 are not argued separately and so
the rejections of these claims are sustained for the same reasons given for
independent claim 1. See Appeal Br. 38.
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DECISION
We affirm the Examiner's rejection of claims 1-3, 5-14, and 16-22
under 35 U.S.C. § 101.
We affirm the Examiner's rejection of claims 1-3, 5-14, and 16-22
under 35 U.S.C. § 112, second paragraph.
We reverse the Examiner's rejection of claims 11 and 12 under
35 U.S.C. § 112, fourth paragraph.
We affirm the Examiner's rejection of claims 1-3, 5-14, and 16-22
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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