Ex Parte Dubey et al

Patent Trial and Appeal Board

Nov 21, 2018

14960412 (P.T.A.B. Nov. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/960,412 12/06/2015
10291 7590 11/26/2018
FISHMAN STEW ART PLLC
39533 WOODWARD A VENUE
SUITE 140
BLOOMFIELD HILLS, MI 48304-0610
FIRST NAMED INVENTOR
DilipDubey
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.
67548-0001 9572
EXAMINER
DUNHAM, JASON B
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
11/26/2018 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):
docketing@fishstewip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DILIP DUBEY and DINESHCHANDRA HARIKISAN RA THI
Appeal2017-009672
Application 14/960,412
Technology Center 3600
Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
JOHN P. PINKERTON, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-8, 10-15, and 17-21. Claims 2, 9, and 16
were cancelled. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is Xeeva, Inc. App.
Br. 3.
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Application 14/960,412
STATEMENT OF THE CASE
Appellants' invention relates to procurement of products and/or
services (Spec. ,r 1 ). Exemplary claim 8 under appeal reads as follows:
8. A process comprising:
generating on a graphical user interface of a
computing device a catalog of a plurality of products and
services from which at least one desired product or service
to procure is selectable;
receiving from the computing device identification
of the at least one desired product or service by one of:
if the at least one desired product or service
is not available in the catalog, generating on a
graphical user interface of the computing device at
least one entry field in which the at least one desired
product or service is entered, and at least one other
entry field in which a unit price for the at least one
desired product or service is entered; or
if the at least one desired product or service
is in the catalog, receiving a selection of the at least
one desired product or service;
generating an RFx for the at least one desired
product or service;
determining at least one of:
at least one recommended buyer to procure
the desired at least one product or service, and
at least one recommended supplier of the
desired at least one product or service; and
generating on a graphical user interface of the
computing device at least one of a list of the at least one
recommended buyer, and a list of the at least one
recommended supplier.
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Application 14/960,412
REFERENCES and REJECTIONS
Claims 1, 3-8, 10-15, and 17-21 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. See Ans. 2--4.
Claims 1, 3, 6, 8, 10, 13, 15, 17, and 20 stand rejected under
35 U.S.C. § 103 as being unpatentable over Psota (US 2015/0073929 Al;
published Mar. 12, 2015), Peterson (US 2002/0082956 Al; published June
27, 2002), and DollarDays, Wholesale Food- Wholesale Food Supplier-
Wholesale Bulk Food,
http://web.archive.org/web/20131209104152/http://www.dollardays.com/wh
olesale-food-pantry.html ("NPL Reference U"). See Ans. 5-12.
Claims 4, 11, 18, and 21 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Psota, Peterson, NPL Reference U, and Snell
(US 2012/0197699 Al; published Aug. 2, 2012). See Ans. 13-14.
Claims 7 and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Psota, Peterson, NPL Reference U, and Pai
(US 2010/0274682 Al; published Oct. 28, 2010). See Ans. 15-16.
Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Psota, Peterson, NPL Reference U, Snell, and Pai. See
Final Act. 17-18.
PRINCIPLES OF LAW
Patent-Eligible Subject Matter
The Supreme Court has set forth "a framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts." Alice
Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo
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Collaborative Services v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012)). According to this framework, a determination is made to consider
whether the claims at issue are directed to one of those concepts (i.e., laws
of nature, natural phenomena, and abstract ideas). See id. If so, a further
determination must be made to consider the elements of each claim both
individually and "as an ordered combination" to determine whether the
additional elements "transform the nature of the claim" into a patent-eligible
application. Id. "The question of whether a claim element or combination
of elements is well-understood, routine and conventional to a skilled artisan
in the relevant field is a question of fact." Berkheimer v. HP Inc.,
881 F.3d 1360, 1368 (Fed. Cir. 2018).
Obviousness
The mere existence of differences between the prior art and the claim
does not establish non-obviousness. See Dann v. Johnston, 425 U.S. 219,
230 (1976). Instead, the relevant question is "whether the difference
between the prior art and the subject matter in question is a [difference]
sufficient to render the claimed subject matter unobvious to one skilled in
the applicable art." Dann, 425 U.S. at 228 (internal quotations and citations
omitted). Indeed, the Supreme Court made clear that when considering
obviousness, "the analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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ANALYSIS
Rejection Under 35 US.C. § 101
Independent claims 1, 8 and 15 recite a system and a process and are,
therefore, directed to one of the four statutory categories of patentability
enumerated by 35 U.S.C. § 101 (process, machine, manufacture, or
composition of matter). Applying the first part of the Alice analysis, the
Examiner finds the claims are directed to procurement recommendation,
which the Examiner further finds is an abstract idea. See Ans. 2, 19. As
further found by the Examiner, procurement recommendation corresponds to
concepts identified as abstract by courts, such as collecting information (i.e.,
receiving from a computing device identification of a desired product or
service), analyzing it (i.e., determining a recommended buyer or supplier),
and displaying certain results of the collection and analysis (i.e., generating
an "RFx" and list of recommended buyers/suppliers for the desired
product/service). See Ans. 3, 20 (citing Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). Applying the second part of
the Alice analysis, the Examiner finds the claims do not include additional
elements that are sufficient to amount to significantly more than the abstract
idea because the additional elements, which are recited at a high level of
generality, provide conventional computer functions that do not add
meaningful limits to practicing the abstract idea. See Ans. 2, 25-26. 2
2 Although the Examiner's findings are explicitly directed to independent
claim 8, the Examiner further finds: (a) independent claims 1 and 15 contain
the identified abstract idea, where the additional elements of each respective
claim are not significantly more for the reasons provided regarding claim 8;
and (b) dependent claims 3-7, 10-14, and 17-21 contain the identified
abstract idea and no additional elements, when considered individually or in
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Beginning with the first step of the Alice analysis, we must determine
"whether the claims at issue are directed to one of those patent-ineligible
concepts," including abstract ideas. Alice, 134 S. Ct. at 2355. In performing
this determination, we ask whether the focus of the claims is on a specific
asserted improvement in computer capabilities or, instead, on a process that
qualifies as an "abstract idea" for which computers are invoked merely as a
tool. Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36
(Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2358-59).
Appellants argue claim 8 is not directed to an abstract idea involving
comparing new and stored information, as claim 8 does not recite comparing
new and stored information (i.e., a received product/service and
products/services in a catalog). See App. Br. 13-14. Appellants also argue
claim 8 is not directed to an abstract idea involving using rules to identify
options, as the rules recited in claim 8 are not used to identify options, but
rather to achieve an improved technological result in conventional industry
practice. See App. Br. 14. Appellants further disagree with the Examiner's
characterization that the elements of claim 8 have "no concrete or tangible
form," arguing that claim 8 recites generating useful, concrete, and tangible
items such as "an RFx and lists of recommended suppliers and/or buyers."
Id. Appellants also disagree with the Examiner's characterization that the
recited elements of claim 8 "represent functions performable by a human
user," arguing that a human user is incapable of generating anything on a
graphical user interface, as recited by claim 8. App. Br. 14--15. Appellants
further argue claim 8 is similar to the claims at issue in McRO, Inc. v.
combination, that are significantly more for the reasons provided regarding
claim 8. See Ans. 4, 23-27.
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Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), as
claim 8 recites a distinct process that automates a task previously performed
by humans. See App. Br. 15. In addition to the arguments regarding claim
8, Appellants argue independent claims 1 and 15 recite additional elements
not considered by the Examiner, and further argue dependent claims
dependent claims 3-7, 10-14, and 17-21 are patent-eligible based on their
dependence on one of claims 1, 8, and 15. See App. Br. 15-19.
We are not persuaded by Appellants' arguments. Considering the
recited elements of the claims in light of Appellants' Specification, we agree
with the Examiner's determinations that the claims are directed to
procurement recommendation (i.e. receiving an identification of a desired
product/service, generating an "RFx" (e.g., purchase order) for the identified
product/service, determining recommended buyer(s) and seller(s), and
generating a display of a list of the recommended buyer(s) and seller(s)),
which is an idea of itself and which is similar to abstract ideas previously
identified by courts. See Electric Power Group, 830 F.3d at 1353-54
( claims focus on the abstract idea of collecting information, analyzing it, and
displaying certain results of the collection and analysis); see also Intellectual
Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332, 1327
(Fed. Cir. 2017) (affirming that the invention is drawn to the abstract idea of
"creating an index and using that index to search for and retrieve data").
Appellants' argument that claim 8 recites rules that achieve an
improved technological result in conventional practice is not persuasive.
Instead, we agree with the Examiner that claim 8 recites an improvement to
the underlying abstract idea (i.e., procurement recommendation), rather than
a technological improvement. See Ans. 20-21; see also Spec. ,r 2 ("there
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exists a need for a procurement recommendation system by which a
requester can have some level of control throughout the procurement process
... while also streamlining the process to reduce any latency issues.").
Appellants' argument that claim 8 recites concrete or tangible items (i.e.,
"an RFx and lists of recommended suppliers and/or buyers") is also not
persuasive, as the aforementioned elements merely comprise data and are
not required to be represented in a concrete or tangible format.
Appellants' argument that claim 8 does not recite elements that
represent functions performable by a human user because a human user
is incapable of generating anything on a graphical user interface is also
not persuasive. Instead, we agree with the Examiner that the recited
generation of a catalog of products and services, an entry field, and a list
of recommended buyers and suppliers on a graphical user interface merely
limit the abstract idea of procurement recommendation to a particular
technical environment. See Ans. 22. We further agree with the Examiner
that the remaining recited elements of claim 8 (i.e., identifying a
product/service, generating an inquiry for the product/service, determining
recommended buyers and recommend sellers of the product/service, and
displaying the recommendations as a list) represent functions performable by
a human user. See id. A claim implemented on a computer does not elevate
an otherwise ineligible claim into a patent-eligible improvement. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015).
Further, Appellants' argument that claim 8 is similar to the claims at
issue in McRO is also not persuasive. Contrary to Appellants' argument, the
Federal Circuit did not hold that the claims at issue in McRO were patent-
eligible merely because they automated a task previously performed by
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humans. Instead, the Federal Circuit held that the claims were patent-
eligible because the claims were directed to a technological improvement
that distinguished the claims from existing manual processes (i.e., allowing
computer to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators). See McRO, 837 F.3d at 1313, 1316. As previously
described, claim 8 recites an improvement to the underlying abstract idea,
rather than a technological improvement. We further agree with the
Examiner that the additional elements recited in independent claims 1 and 15
and dependent claims 3-7, 10-14, and 17-21 do not change the analysis
previously provided for claim 8. See Ans. 23-25.
Because we conclude that the claims are directed to an abstract idea,
we tum to the next step of the Alice analysis. In step two, as previously
discussed, we 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."
Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78).
Appellants argue claim 8 amounts to significantly more than an
abstract idea because claim 8 describes specific interactions between a
computing device and a server, and, similar to the claims at issue in McRO,
is directed to rules that provide a technological improvement over existing
techniques for determining and recommending a procurement portfolio. See
App. Br. 22-23. In addition to the arguments regarding claim 8, Appellants
also argue independent claims 1 and 15 recite additional elements not
considered by the Examiner, and further argue dependent claims dependent
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claims 3-7, 10-14, and 17-21 are patent-eligible based on their dependence
on one of claims 1, 8, and 15. See App. Br. 19-20, 23, and 25.
Considering the recited elements of the claims in light of Appellants'
Specification, we agree with the Examiner's findings that the additional
elements are not significantly more than the abstract idea, as the additional
elements of "graphical user interface" and "computing device" are recited at
a high level of generality and are recited as performing generic computer
functions that are well-understood, routine, and conventional. See Ans. 3--4,
and 25-26. In particular, as described above, we agree with the Examiner
that the recited generation of a catalog of products and services, an entry
field, and a list of recommended buyers and suppliers on a graphical user
interface, although technical, merely limit the abstract idea of procurement
recommendation to a particular technical environment. See Ans. 22.
Evidence supporting the Examiner's finding that the recited generation of
information on a graphical user interface is well-understood, routine, and
conventional can be found in Appellants' Specification, which describes that
a graphical user interface can be displayed using various web browsers
installed on the computing device, including well-known web browsers (e.g.,
Microsoft® Internet Explorer™, Opera®, Firefox®, K-Meleon™, Google®
Chrome™, and Apple® Safari® web browsers). See Spec. ,r 13).
Therefore, considering the elements of the claims both individually and in
combination, we conclude there are no additional elements that transform
the nature of the claims into a patent-eligible application. See Alice,
134 S. Ct. at 2355.
Contrary to Appellants' argument that the elements of claim 8
describe specific interactions between a computing device and a server, we
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agree with the Examiner that the functions performed by the elements of
claim 8 fall within the type of computer functions the courts have deemed to
be well-understood, routine, and conventional. See Ans. 25-26. Further,
Appellants' argument that claim 8 is similar to the claims at issue in McRO
is also not persuasive for the reasons previously described with respect to
step one of the Alice analysis. We further agree with the Examiner that the
analysis for claim 8 equally applies to independent claims 1 and 15 and
dependent claims 3-7, 10-14, and 17-21. See Ans. 27.
Therefore, we are not persuaded the Examiner erred in finding claims
1, 3-8, 10-15, and 17-21 reciting patent-ineligible subject matter.
Accordingly, we sustain the rejection of claims 1, 3-8, 10-15, and 17-21
under 35 U.S.C. § 101 as being directed to a judicial exception without
significantly more.
Rejection Under 35 US.C. § 103
Appellants contend the combination of cited references fails to teach
or suggest "provide to the computing device a catalog of a plurality of
products and services from which at least one desired product or service to
procure is selectable," as recited in claim 1, and similarly recited in claims 8
and 15. See App. Br. 25-30. As argued by Appellants, Psota describes how
a buyer selects a supplier, not a desired product or service as recited in claim
1. See App. Br. 26. Appellants additionally argue a supplier is not searched
based on a particular product or service, but instead is searched based on a
product category, material used to make a product, or technique used to
make the product. See id.
We are not persuaded by Appellants' contention. We agree with the
Examiner that claim 1 recites that the desired product or service "is
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selectable," rather than selected. See Ans. 28. Consistent with the
Examiner's findings, Psota teaches a search interface that allows a buyer to
query a database of supplier information in order to find suppliers who
provide products in a selected category. See id (citing Psota ,r 275). More
specifically, Psota teaches that a user indicates a category for a desired
product, material used to make the desired product, or technique used to
make the desired product, and further teaches the user selects a supplier
based on the indicated information. See Psota ,r 275. Thus, we agree with
the Examiner that Psota teaches the claimed "[selectable] product or
service."
Appellants also contend the combination of cited references fails to
teach or suggest "if the at least one desired product or service is in the
catalog, receiving a selection of the at least one desired product or service,"
as recited in claim 1. See App. Br. 26-31. As argued by Appellants,
Peterson teaches search results generated from specific information input by
a user and not a catalog from which a desired product or service is selected,
as recited in claim 1, and similarly recited in claims 8 and 15. See App.
Br. 26. Appellants also argue the Final Office Action failed to provide any
reasoning as to why it would have been obvious to combine Peterson's
search system with the system disclosed in Psota. See App. Br. 27.
We are not persuaded by this contention either. We agree with the
Examiner that Psota does teach receiving a selection of a desired product or
service provided by a supplier. See Ans. 28-29 ( citing Psota ,r 278). We
further agree with the Examiner that Peterson also teaches an electronic
commerce page displayed on an interface that allows a user to initiate a
search of a database by entering a search criteria for a desired item. See
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Ans. 29 (citing Peterson ,r,r 152-156). Thus, we agree with the Examiner
that the combination of Psota and Peterson teaches or suggests the claimed
"receiving a selection of [at] least one desired product or service [if the at
least one desired product or service is in a catalog]." We further agree that
the Examiner has provided a sufficient rationale for combining Psota and
Peterson. See Ans. 29.
Appellants further contend the combination of cited references fails
to teach or suggest "receiving, from the computing device, a selection of
at least a subset of a plurality of parameters, and a rank of the selected
parameters," as recited in claim 6, and similarly recited in claims 13 and 20.
See App. Br. 31-33. As argued by Appellants, Psota only describes selecting
the parameters, but does not disclose ranking the selected parameters. See
App. Br. 32. In response to the Examiner's finding that "by selecting a
parameter ... the user ranks that parameter higher than a non-selected
parameter" (Ans. 30), Appellants argue claims 6, 13, and 20 require that the
selected parameters are ranked against each other, and not against non-
selected parameters. See Reply Br. 10.
Additionally, consistent with the Examiner's findings, Psota discloses
the selection of parameters which factor into an entity score by a user. See
Ans. 30 (citing Psota ,r 142). Contrary to Appellants' argument, claim 6
merely requires a rank of a selected parameter and does not require the
claimed "rank" to be a rank of the selected parameter against another
selected parameter. Thus, we agree with the Examiner that Psota's
disclosure of the selection of certain parameters also teaches or suggests the
ranking of the selected parameters, where the selected parameters are ranked
higher than the non-selected parameters.
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No separate arguments are presented for the remaining dependent
claims. See App. Br. 31, and 33-34. Therefore, we are not persuaded that
the Examiner erred in finding claims 1, 3-8, 10-15, and 1 7-21 unpatentable
in light of the cited prior art references. Accordingly, we sustain the
rejection of claims 1, 3-8, 10-15, and 17-21 under 35 U.S.C. § 103.
DECISION
We affirm the Examiner's rejection of claims 1, 3-8, 10-15, and 17-
21 under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter.
We affirm the Examiner's rejection of claims 1, 3-8, 10-15, and 17-
2 lunder 35 U.S.C. § 103.
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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