Ex Parte Hutchinson et al

Patent Trial and Appeal Board

Jan 24, 2018

13309109 (P.T.A.B. Jan. 24, 2018)

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.
13/309,109 12/01/2011 John HUTCHINSON 0118101.0634689 5799
138211 7590 01/26/2018
Vora Ventures c/o Frost Brown Todd LLC
3300 Great American Tower
301 East Fourth Street
Cincinnati, OH 45202
EXAMINER
ZURITA, JAMES H
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
patents @ fbtlaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN HUTCHINSON, VENKATESWARAN KRISHNAN,
and SENTHILKUMAR VADIVEL
Appeal 2016-007167
Application 13/309,1091
Technology Center 3600
Before HUNG H. BUI, MICHAEL J. ENGLE, and PHILLIP A. BENNETT,
Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 21-29, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Technology
The application relates to “electronic procurement tools ... for
auditing purchases and pricing to determine compliance with supplier
contracts.” Spec. ^ 2. Claim 21 is illustrative and reproduced below:
1 Appellants state the real party in interest is Vinimaya, Inc. App. Br. 3.
Appeal 2016-007167
Application 13/309,109
21. A system for auditing purchases in an electronic
marketplace, comprising a processor and a memory coupled to
the processor, the memory storing instructions to direct the
processor to perform operations comprising:
• presenting a purchasing organization with a procurement
audit interface to define a set of audit parameters wherein said
procurement audit interface is configured to permit an
administrative end-user to:
o select a set of items from a server-side electronic
supplier catalog wherein said interface enables said
purchasing organization to set a part number and a
baseline price to be associated with each of said set of
items;
o define a tolerance value for said baseline price
comprising an acceptable price deviation from said
baseline price; and
o schedule one or more times to launch an audit on said
set of items selected from the server-side electronic
supplier catalog;
• launching said audit, according to said schedule, on said set
of items originally baselined from the server-side electronic
supplier catalog against an external client-side search of at
least one electronic supplier catalog;
• comparing a real-time price, determined by said external
search, for at least one item against said baseline price for that
item;
• generating an analysis for a set of purchases, made by one or
more purchasing end-users, through the electronic
marketplace for defined period of time which identifies any
suppliers whose prices match said baseline price for that item;
any price differences, between said real-time price and said
baseline price, for each of said items audited; and whether
said real-time price is within the tolerance value of said
baseline price.
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Application 13/309,109
Rejection
Claims 21-29 stand rejected under 35 U.S.C. § 101 as being directed
to ineligible subject matter. Final Act. 6-10.2
ISSUE
Did the Examiner err in concluding that claim 21 is directed to patent-
ineligible subject matter?
ANALYSIS
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any 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 Supreme Court, however, has “long held that
this provision contains an important implicit exception” that “[ljaws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Issues of patent-eligible subject matter are questions
of law.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1369
(Fed. Cir. 2011). To determine patentable subject matter, the Supreme Court
has set forth a two part test.
“First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
2 Appellants amended the claims after the Final Action, and the Examiner
subsequently withdrew the rejections under 35 U.S.C. §§ 103 and 112, first
and second paragraphs. See Advisory Act. 2 (June 26, 2015); Ans. 2.
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Application 13/309,109
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that “all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas” {Mayo, 566 U.S. at 71), and “describing the
claims at... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule.”
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In the second step, we “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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has “described step two of this analysis as a 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 concept itself.” Id. (quotation omitted).
For computer-related technology, the Federal Circuit has held that a claim
may pass the second step if “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer [technology].” DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) (e.g., “a challenge particular to
the Internet”).
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Application 13/309,109
Here, the Examiner determines “the claims are rooted in the
fundamental economic practice of comparing prices” and “managing human
mental activity.” Ans. 3. “The claims address the challenge of comparing
prices and adherence to contract price agreements in procurement
environments, an abstraction in a method of doing business.” Id. at 5.
Appellants argue “the Examiner has completely ignored the fact that
this claim is necessarily rooted in computer technology in order to overcome
a problem specifically arising in the world of e-procurement that does not
exist in a paper-catalog or traditional brick and mortar storefront.” App.
Br. 9 (bolding omitted).
Specifically, in the world of automated e-procurement, the
obtaining of descriptive material . . . necessarily presents the
challenge of coordinating ... a variety of encoded attributes . . .
generally invisible to the human eye since they would be encoded
in the source code of the electronic supplier catalogs . . . that are
retrieved from “an external client-side search” (Claim 21) against
the “items originally baselined from the server-side electronic
supplier catalog” (Claim 21) .... This correlates to DDR’s
technological innovation . . . because it deals with a problem
engendered by the unique nature of electronic catalogs accessed
through multiple platforms (e.g., a server-side e-catalog and an
external search initiated by a client).
App. Br. 9-10 (quotation and footnote omitted). In the Reply Brief,
Appellants also rely on a slightly different problem in arguing “the pending
claims deal with a problem (loss of organizational control) caused by the
move to a specific technical environment (e-procurement).” Reply Br. 3
(citing Spec. ^ 3).
However, we agree with the Examiner that “the claims at hand
address a business challenge that is not particular to the Internet.” Ans. 5.
Appellants have not sufficiently persuaded us that comparing and auditing
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Application 13/309,109
prices is unique to “e-procurement,” nor that the claimed solution precludes
a manual process. We note that the “encoded attributes . . . invisible to the
human eye” relied on by Appellants are not recited in the claims. Thus,
Appellants’ argument is not commensurate with the scope of the claims as
presently written. Moreover, even if the mere mention of “an external
client-side search” and a “server-side electronic supplier catalog” did imply
such invisible encoded attributes (App. Br. 9-10), we agree with the
Examiner that “the claims at issue fail to specify how interactions with the
machine are manipulated to achieve the claimed functions,” instead “merely
describing the effect or result.” Ans. 6 (emphasis added). Thus, even if
Appellants’ alleged problem existed, “[t]he claims, defining a desirable
information-based result and not limited to inventive means of achieving the
result, fail under § 101.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1351 (Fed. Cir. 2016). We therefore agree with the Examiner that the
claims are directed to an abstract idea.
Appellants also argue the claims do not “tie up” the art because “[i]f
via exhaustive searching for prior art. . ., Appellant has claimed an
innovation that cannot be rejected as obvious, it simply does not logically
follow that the Pending Claims would ‘tie up’ the exception.” App. Br. 10-
11. However, we agree with the Examiner that preemption is not the
appropriate test under § 101. “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
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Application 13/309,109
moot.” Id. We further agree with the Examiner (Ans. 7) that “§ 101
subject-matter eligibility is a requirement separate from other patentability
inquiries,” including obviousness. Return Mail, Inc. v. U.S. Postal Service,
868 F.3d 1350, 1370 (Fed. Cir. 2017); see also Mayo, 566 U.S. at 91
(“These considerations lead us to decline the . . . invitation to substitute
§§ 102, 103, and 112 inquiries for the better established inquiry under
§ 101.”); Genetic Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1376 (Fed.
Cir. 2016) (“under the Mayo/Alice framework, a claim directed to a newly
discovered . . . abstract idea . . . cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility”). Moreover, the
Supreme Court has instructed that “limiting the use of an abstract idea to a
particular technological environment” cannot transform a patent-ineligible
abstract idea into a patent-eligible invention. Alice, 134 S. Ct. at 2358
(quotation omitted).
Appellants further contend the claims as a whole amount to
“significantly more” than the abstract idea because
[djetermining a real-time price via an external search, launched
from the client-side of an electronic supplier catalog, for an item
matching one that was originally baselined, in order to compare
it to a predetermined tolerance level both “effects a
transformation or reduction of a particular article to a different
state or thing” and “adds unconventional steps that confine the
claim to a particular useful application” by providing cross­
platform (server-side e-catalog versus an external client-side
search of an e-catalog) coordination of the inhuman data
attributes (i.e., attributes encoded in said e-catalogs) necessary to
resolve the various audit goals of the Pending Claims.
App. Br. 12-13. We are not persuaded of error, however, because
Appellants apply the wrong test and do not sufficiently explain their
arguments. “[I]n Mayo, the Supreme Court emphasized that satisfying the
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Application 13/309,109
machine-or-transformation test, by itself, is not sufficient to render a claim
patent-eligible, as not all transformations or machine implementations infuse
an otherwise ineligible claim with an ‘inventive concept.’” DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). Moreover,
even under a transformation test, we agree with the Examiner that
Appellants have not identified what article they believe has been
transformed to a different state. Ans. 8. We likewise agree with the
Examiner that Appellants have not identified what specific steps they
believe are “unconventional,” as “the claims require no more than generic
computer devices that perform generic functions.” Id. And as noted above,
Appellants’ “attributes encoded in said e-catalogs” do not appear in the
claims as presently written, nor does a particular technical way of addressing
such attributes.
Accordingly, we sustain the Examiner’s rejection of claim 21, and
claims 22-29, which Appellants do not argue separately. See App. Br. 7-13;
37C.F.R. §41.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the Examiner’s decision rejecting
claims 21-29.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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