Ex Parte Goldberg et al

Patent Trial and Appeal Board

Jul 28, 2017

13019528 (P.T.A.B. Jul. 28, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/019,528 02/02/2011 William D. Goldberg RSW920040016US2 1639
43168 7590 08/01/2017
LAW OFFICE OF MARCIA L. DOUBET, P. L.
PO BOX 1087
Lake Placid, EL 33862
EXAMINER
ANDERSON, FOLASHADE
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
mid @ mindspring, com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM D. GOLDBERG, WILLIAM E. HUTSON,
and CHRISTOPHER H. WICHER
Appeal 2015-006930
Application 13/019,528
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE1
Appellants seek our review under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 4—6, 9—11, and 14—18.
We affirm.
1 The Appellants identify International Business Machines Corp. the real
party in interest. Appeal Br. 4.
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Application 13/019,528
THE CLAIMED INVENTION
Appellants’ claims are generally directed to “making resource
placement decisions in an objective manner.” Spec. para. 3.
Claim 1 is illustrative of the claimed subject matter:
1. A method of validating placement of product resources in a
selected location, comprising:
using computer-readable program code executed by a
computer to programmatically create a product profile for the
product resources, the product profile specifying an importance
value assigned to each of a first plurality of assessment criteria
and to each of a second plurality of the assessment criteria, the
assessment criteria usable for assessing placement of product
resources for a product in an arbitrary location, as if the selected
location had not been selected, the first plurality pertaining to
locally-available skills for the product and the second plurality
pertaining to a marketplace of the product;
using computer-readable program code executed by the
computer to programmatically create a geography profile for the
selected location, the geography profile specifying a score
assigned to each of the first plurality of the assessment criteria
and to each of the second plurality of the assessment criteria,
each score in the geography profile assigned to indicate how well
the selected location meets the assessment criterion to which the
score is assigned;
using computer-readable program code executed by the
computer to programmatically compute a skills gap score for the
selected location, further comprising:
computing a plurality of skills gap values for the
selected location by subtracting, for each of the first plurality of
the assessment criteria, the score assigned to the assessment
criterion in the geography profile from the importance value
assigned to the assessment criterion in the product profile, and
setting any negative differences of the computed skills gap
values to zero; and
summing each of the computed skills gap values to
yield the skills gap score;
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Application 13/019,528
using computer-readable program code executed by the
computer to programmatically compute an opportunity gap score
for the selected location, further comprising:
computing a plurality of opportunity gap values for
the selected location by subtracting, for each of the second
plurality of the assessment criteria, the importance value
assigned to the assessment criterion in the product profile from
the score assigned to the assessment criterion in the geography
profile, and setting any negative differences of the computed
opportunity gap values to zero; and
summing each of the computed opportunity gap
values to yield the opportunity gap score;
comparing the programmatically-computed skills gap
score to a benchmark skills gap score in previously-determined
benchmark values and the programmatically-computed
opportunity gap score to a benchmark opportunity gap score in
the previously-determined benchmark values; and
generating a recommendation to place the product
resources in the selected location if the comparing determines
that the previously-determined benchmark values are met.
REJECTION
The following rejection is before us for review. The Examiner
rejected claims 1, 4—6, 9-11, and 14—18 under 35U.S.C. § 101 as reciting
ineligible subject matter in the form of an abstract idea.
FINDINGS OF FACT
We find the following facts by a preponderance of the evidence.
1. The Specification describes “a set of assessment criteria are
determined.” (Spec. para. 43).
2. The Specification describes the “relative importance to the product
under evaluation, or the relative significance or strength, of appropriate
ones of the criteria is preferably determined (Block 305), and a numeric
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value is preferably assigned accordingly, thereby forming what is
referred to herein as a ‘product profile’.” {Id. para. 45).
3. The Specification describes “objective measurements for each criterion
are determined” and that “the set of values assigned to each candidate
location are referred to herein as a ‘geography profile’.” {Id. para. 46).
4. The Specification describes “a set of skill gap numbers is computed by
subtracting each geography profile value from the corresponding
product profile value for each criteria that pertains to local skills.” (Id.
para. 69).
5. The Specification describes that “a set of opportunity gap numbers is
computed by subtracting a product profile value from the corresponding
geography profile value for each criteria that pertains to the
marketplace.” {Id. para. 78).
6. The Specification describes that “a single location may be compared
against benchmark values that represent (for example) a hypothetical
location or a location in which resources for this product have already
been placed.” {Id. para. 91).
7. The Specification describes that “each block of the flowchart
illustrations and/or block diagrams, and combinations of blocks in the
flowchart illustrations and/or block diagrams, can be implemented by
computer program instructions. These computer program instructions
may be provided to a processor of a general purpose computer.” {Id.
para. 95).
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Application 13/019,528
ANALYSIS
The Examiner finds the claims “are directed to the abstract idea of a
method of organizing human activities (decisions regarding resource
placement) around a fundamental economic practice (market expansion)
using a mathematical relationship or formula (skills and opportunity gaps).”
Final Act. 3.
Appellants argue the “claims do not recite a mathematical relationship
or formula, nor do they recite a fundamental or long-standing commercial or
economic practice,” but instead recite a “detailed and specific way of
solving a specific problem,” and “the Office Action fails to demonstrate that
the[ ] claimed invention, as recited in the independent claims, was in any
way considered Tong-prevalent’.” (Appeal Br. 21—24, emphasis omitted).
Appellants also argue the claims are not a method of organizing human
activities, because “the Office Action fails to cite any source establishing
that it was known for humans to perform these specific subtractions, sums,
comparisons, and generation of recommendations recited in Appellants'
independent claims.” {Id. 23).
We are not persuaded by Appellants’ arguments.
Exemplary claim 1 recites “method of validating placement of product
resources.” That method involves a number of steps, such as creating
product and geography profiles, computing and summing skills gaps for
particular locations, comparing the computed value to a benchmark value,
and generating a recommendation if the benchmark values are met by the
computed value.2
2 These limitations are also recited in independent claims 6 and 11 in one
form or another.
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Appellants argue claim 1 is directed to:
validating placement of product resources in a selected location
by analyzing assessment criteria information stored in a product
profile and in a geography profile, computing gaps in skills and
opportunity, and recommending to place the resources in the
location only if the computed gaps meet respective
predetermined benchmark values.
Id. 20.
In both cases, the claims involve directing a particular analysis that
may lead to making a recommendation based on the analysis, which we are
persuaded is a method of organizing human activities, as asserted by the
Examiner.
In addition, except for the recitation of “using computer-readable
program code executed by the computer to programmatically” execute each
step in the method, each step could otherwise be performed entirely through
mental thought. Specifically, each of the steps of determining (FF 1—3),
computing using subtraction and addition (FF 4, 5), and comparing (FF 6)
that are described in the Specification, and recited in the claims, involve no
more than basic mental steps.
The Federal Circuit has held that if a method can be performed by
human thought alone, or by a human using pen and paper, it is merely an
abstract idea and is not patent-eligible under § 101. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method
that can be performed by human thought alone is merely an abstract idea and
is not patent-eligible under § 101.”). Additionally, mental processes, e.g.,
computing a score, as recited in claim 1, remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. Id. at 1375 (“That purely mental processes can be
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unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson, [409 U.S. 63
(1972)].”)-
Notwithstanding, claim 1 results in “generating a recommendation to
place the product resources in the selected location if the comparing
determines that the previously-determined benchmark values are met.” We
are persuaded that successful allocation of product resources is a
fundamental economic practice, because it is based on the sound business
practice of insuring a successful value chain. See Alice Corp., Pty. Ltd. v
CLS Bank Inti, 134 S.Ct. 2355-57 (2014).
We, thus, are persuaded that claim 1 is directed to an abstract idea.
Turning to the second step of the Alice analysis, because we find that
claim 1 is directed to an abstract idea, the claim must include an “inventive
concept” in order to be patent-eligible, i.e., there must be an element or
combination of elements that is sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself.
Appellants argue the claim recites “significantly more” than an
abstract idea because it recites specific, unconventional steps, and how to
perform them, beyond what the claim is allegedly directed to, and “provide
an improvement to validating resource placement which can now use
specific computations.” Appeal Br. 25—31.
Other than the steps of claim 1, each of which could be performed by
mental thought, the claim merely recites that the steps be performed “using
computer-readable program code executed by the computer to
programmatically.” The Specification, however, describes that each step in
the method could be performed using a generic computer. (FF 7). However,
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“after Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible. The
bare fact that a computer exists in the physical rather than purely conceptual
realm is beside the point. ” DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations and quotation marks
omitted).
Nothing in claims 1—10 purports to improve computer functioning or
“effect an improvement in any other technology or technical field.” Alice,
134 S. Ct. at 2359. Nor do claims solve a problem unique to the Internet.
See DDR Holdings, 773 F.3d at 1257. The claims also are not adequately
tied to “a particular machine or apparatus.” Bilski v. Kappos, 561 U.S. 593,
601 (2010).
Because claim 1 is directed to an abstract idea, and nothing in the
claim adds an inventive concept, we are persuaded that the claim is not
patent-eligible under § 101. Therefore, we sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 101. In addition, because dependent claims 4,
5, and 16—18 do not alter the analysis, we sustain the rejection of these
dependent claims under 35 U.S.C. § 101 as well.
We find no meaningful distinction between independent method claim
1, and either independent system claim 6 or independent medium claim 13.
The claims all are directed to the same underlying invention. Therefore, we
also sustain the rejection of independent claims 6 and 13 under § 101. As
the Federal Circuit has made clear, “the basic character of a process claim
drawn to an abstract idea is not changed by claiming only its performance by
computers, or by claiming the process embodied in program instructions on
a computer readable medium.” See CyberSource, 654 F.3d at 1375-76
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(citing In reAbele, 684 F.2d 902 (CCPA 1982)). Because we find that
dependent claims 9, 10, 14, and 15 lack additional elements that would
render the claims patent-eligible, we also sustain the rejection under § 101 of
these dependent claims on the same basis as the independent claims from
which they depend.
CONCLUSIONS OF LAW
The Examiner did not err in rejecting claims 1, 4—6, 9—11, and 14—18
under 35U.S.C. § 101 as reciting ineligible subject matter.
DECISION
For the above reasons, the Examiner’s rejection of claims 1, 4—6, 9—
11, and 14-18 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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