Ex Parte Irby et al

Patent Trial and Appeal Board

Jun 27, 2018

11226653 (P.T.A.B. Jun. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111226,653 09/13/2005
98995 7590 06/29/2018
Zilka-Ko tab, PC - AMDC
1155 N. 1st St.
Suite 105
San Jose, CA 95112
FIRST NAMED INVENTOR
Cindy Irby
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.
AMDCP252 6621
EXAMINER
CAMPBELL, SHANNON S
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
06/29/2018 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):
zk-uspto@zilkakotab.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CINDY IRBY, MAXINE CAMPBELL, GREG VEREGO, and
SHANNON CHA VIS-SMITH
Appeal2016-008533
Application 11/226,653 1
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI and
MICHAEL C. ASTORINO, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Cindy Irby, et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 49, 57 and 65. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify AMDOCS SOFTWARE SYSTEMS LIMITED as
the real party in interest. Br. 2.
Appeal2016-008533
Application 11/226,653
THE INVENTION
Claim 49, reproduced below, is illustrative of the subject matter on
appeal.
49. A method, comprising:
creating by a system within a hardware database of the system a
plurality of reusable definitions applicable to a plurality of products,
the reusable definitions including:
a plurality of product definitions including descriptions
of a unique identifier of a product, an alphanumeric descriptor
of the product, a date and time from when a customer request
for the product can be taken, an indication as to whether a
customer may purchase multiple units of the product, and a
period of time after the product expires during which the
customer may continue to have the product,
a plurality of price definitions including descriptions of a
type of applicable currency, an indication as to whether a price
for the product is a recurring or one-time price, and a duration
during which the price is available for the product,
a plurality of discount definitions including descriptions
of a discount that applies to a price of the product, a discount
that is applied to a price of a type of product, and a discount
that applies to a price of a total bill of the customer, and
a plurality of commitment definitions including
descriptions of an agreement to return the product within a
specified timeframe once one or more of a disconnection and
termination event have occurred, and an agreement to keep the
product for a specified timeframe;
identifying by the system a selection of definitions, the
selection of definitions comprising one definition from each of the
plurality of product definitions, the plurality of price definitions, the
plurality of discount definitions, and the plurality of commitment
definitions; and
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assembling by the system in an association table of the system a
definition for a specific product by adding an identifier of each of the
selected definitions to the association table of the system.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Reuhl et al. us 5,873,069 Feb. 16, 1999
The following rejections are before us for review:
1. Claims 49, 57, and 65 are rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
2. Claims 49, 57, and 65 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Reuhl.
ISSUES
Did the Examiner err in rejecting claims 49, 57, and 65 under 35
U.S.C. § 101 as being directed to non-statutory subject matter?
Did the Examiner err in rejecting claims 49, 57, and 65 under 35
U.S.C. § 103(a) as being unpatentable over Reuhl?
ANALYSIS
The rejection of claims 49, 57 and 65 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
The Appellants argued these claims as a group. See Br. 8-9. We select
claim 49 as the representative claim for this group, and the remaining claims
57 and 65 stand or fall with claim 49. 37 C.F.R. § 41.37(c)(l)(iv).
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Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
2347 (2014) identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under 35
U.S.C. § 101.
According to Alice step one, "[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that the claims:
are directed to creating a plurality of reusable definitions applicable to
a plurality of products, identifying a selection of definitions, and
assembling a definition for a specific product by adding an identifier
of each of the selected definitions to a data table, which, when viewed
individually and in combination, constitute an abstract idea of a
certain method of organizing human activities.
Final Act. 4.
The Appellants do not challenge the Examiner's Alice step one
determination.
Step two is "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."' Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 US 66, 73 (2012)).
In that regard, the Examiner determined:
the claims do not include additional elements that are sufficient
to amount to significantly more than the judicial exception,
because the claims do not include improvements to another
technology or another technical field, improvements to the
functioning of the computer itself, or meaningful limitations
beyond generally linking the use of an abstract idea to a
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particular technological environment. Rather, claims 49, 57,
and 65 require no more than a performing of generic computer
functions (e.g. creating, identifying a selection of data, and
assembling data into a table) that are well-understood, routine
and conventional activities previously known to the industry.
Final Act. 4.
Br. 9.
The Appellants argue:
In this case, appellant notes that appellant specifically claims
"creating by a system within a hardware database of the system a
plurality of reusable [product, price, discount, and commitment]
definitions" and "assembling by the system in an association table of
the system a definition for a specific product by adding an identifier of
each of [a plurality of] selected definitions to the association table of
the system" (emphasis added).
Therefore, appellant specifically claims creation and use of reusable
modular definitions that are referenced instead of using hardcoded
processing steps to assemble specific product definitions over a
network. This constitutes an improvement to the technical field of
product definition implementation, and also includes a specific
limitation other than what is well-understood, routine and
conventional in the field, and is therefore significantly more than an
abstract idea.
Furthermore, by referencing dynamic definitions instead of hard-
coding definitions for each individual instance, less data is stored by
the computing device, which improves the functioning of the
computing device itself, and such language therefore constitutes an
"inventive concept," as claimed.
A major difficulty with this argument is that the Appellants have not
challenged the Examiner's characterization of the concept to which claim 49
is directed to and the Examiner's determination that the concept the
Examiner has characterized claim 49 as being directed to is an abstract idea.
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Given that the currently-unchallenged abstract idea to which claim 49 is
directed to is:
creating a plurality of reusable definitions applicable to a plurality of
products, identifying a selection of definitions, and assembling a
definition for a specific product by adding an identifier of each of the
selected definitions to a data table,
there is little in terms of additional claims limitations to consider in now
determining whether an element or combination of elements present in claim
49 is sufficient to ensure that the subject matter claimed in practice amounts
to significantly more than to be on said abstract idea itself. All that is left to
consider are details about various "definitions" "creat[ed]", "identif[ied]",
and "assembl[ ed]" via the claimed process. For example, claim 49 calls for
"creating by a system within a hardware database of the system a plurality of
reusable definitions applicable to a plurality of products, the reusable
definitions including" "a plurality of discount definitions" which further
"includ[ e] descriptions of a discount that applies to a price of the product, a
discount that is applied to a price of a type of product, and a discount that
applies to a price of a total bill of the customer." Claim 49. But such details
about various "definitions" "definitions" "creat[ed]", "identif[ied]", and
"assembl[ ed]" via the claimed process go to the particular content of the
information the claimed process uses. Describing the content of the
information being processed in greater detail does not change the character
of the abstract idea. Cf SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016,
1022 (Fed. Cir. 2018) ("Contrary to InvestPic's suggestion, it does not
matter to this conclusion whether the information here is information about
real investments. As many cases make clear, even if a process of collecting
and analyzing information is "limited to particular content" or a particular
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"source," that limitation does not make the collection and analysis other than
abstract." (Quoting Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (citing cases).).
Be that as it may, if we understand the Appellants correctly, the
Appellants are arguing that the claim as a whole defines an unconventional
technical improvement. The difficulty with this argument is that the claim is
not so limited.
The Appellants argue that claim 49 provides for the "creation and use
of reusable modular definitions that are referenced instead of using
hardcoded processing steps to assemble specific product definitions over a
network." Br. 9.
But claim 49 does not mention referencing reusable modular
definitions to assemble specific product definitions, let alone over a network.
Accordingly, claim 49 does not describe the argued technical improvement
over the use of hardcoded processing steps.
It is true that the Specification describes a system that overcomes
"[p ]ast approaches to determining what products are available [whereby] a
customer relied upon inflexible hardcoded processing steps, databases, and
other data structures" (Spec., para. 3) via, inter alia, a "product definition
program" (Spec. para. 21 ). But claim 49 is not limited to the described
system for accomplishing that goal. "The § 101 inquiry must focus on the
language of the Asserted Claims themselves." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016). See Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345
(Fed. Cir. 2013) (admonishing that "the important inquiry for a§ 101
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analysis is to look to the claim"); see also Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1346
(Fed. Cir. 2014) ("We focus here on whether the claims of the asserted
patents fall within the excluded category of abstract ideas.").
Rather, the method of claim 49 reasonably broadly covers creating
information A ("a plurality of reusable definitions") in a common database,
using said database to identify information B ("a selection of definitions")
and using said database to assemble information C ("a definition for a
specific Product") in an association table. Other than specifying a particular
content for the information being processed, no technical details are
provided for the "creating," "identifying," and "assembling" steps, without
which they read on activities commonly associated with the use of generic
databases. Because of the missing technical detail, claim 49 does not reflect
the improvement the Appellants are arguing over. Cf Credit Acceptance
Corp. v. Westlake Services, LLC, 859 F.3d 1044, 1057 (Fed. Cir. 2017):
Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process.
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1342 (Fed. Cir. 2017) (explaining that "[o]ur law demands more" than
claim language that "provides only a result-oriented solution, with
insufficient detail for how a computer accomplishes it"); Elec. Power
Grp., 830 F.3d at 1354 [Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016)]; (explaining that claims are directed
to an abstract idea where they do not recite "any particular assertedly
inventive technology for performing [conventional] functions").
Accordingly, the argument is unpersuasive in showing claim 49
presents an "inventive concept."
We have considered all of the Appellants' remaining arguments and
have found them unpersuasive. Accordingly, because representative claim
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49, and claims 57 and 65 which stand or fall with claim 49, are directed to
an abstract idea and do not present an "inventive concept," we sustain the
Examiner's determination that they are directed to ineligible subject matter
under 35 U.S.C. § 101. Cf LendingTree, LLC v. Zillow, Inc., 656 Fed.Appx.
991, 997 (Fed. Cir. 2016)("We have considered all ofLendingTree's
remaining arguments and have found them unpersuasive. Accordingly,
because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an "inventive concept," we hold that they are
directed to ineligible subject matter under 35 U.S.C. § 101.").
The rejection of claims 49, 57, and 65 under 35U.S.C.§103(a) as being
unpatentable over Reuhl.
The Appellants argue that Ruehl discloses storing information, but not
the "creating," "identifying," and "assembling" steps as claimed. "Reuhl
only generally teaches product data such as category, style, description, and
cost of the product that are stored in relationship with a SKU. This does not
teach 'creating ... a plurality of reusable definitions applicable to a plurality
of products' (emphasis added), much less [the entire method recited in claim
49]." Br. 13.
We agree with the Examiner that differences over the prior art simply
with respect to the content of the information being claimed are not
patentably consequential. Final Act. 6. This is so because "[c]laim
limitations directed to the content of information and lacking a requisite
functional relationship are not entitled to patentable weight because such
information is not patent eligible subject matter under 35 U.S.C. § 101."
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Praxair Distribution, Inc. v. Mallinckrodt Hospital Products IP Ltd., 890
F.3d 1024, 1032 (Fed. Cir. 2018).
However, that does not pertain the actual steps of "creating,"
"identifying," and "assembling" recited in the claims.
In that regard, the Examiner cites the disclosures at col. 18, 11. 6-17
and col 8, 11. 36-45 of Reuhl (reproduced below) as evidence that said claim
subject matter was disclosed in the prior art at the time of filing. Final
Act. 6.
Col. 8, 11. 36-45:
The ITEM table contains a row for every product in the
system user's inventory, and establishes the relationship
between item and SKU. The ITEM table stores for each item, a
SKU, a product description, a vendor and vendor's model
number, as seen in FIG. 4. The ITEM PRICE table stores prices
for each item based on market and price type (i.e., REG, ADV,
SALE, etc. price) and includes fields that hold the SKU,
market, price, price effective date, price end date, company,
company location and price type.
Col. 18, 11. 6-17:
As seen in FIG. 35, the Item Master Maintenance screen
(IMMCM) 1038 is used to query and/or update existing SKUs
or to create new SKUs. IMMCM 1038 is selected from the
GMEN 402. If the query mode is desired, the user then enters
the SKU and executes query. The screen displays SKU, minor
code, category code, style code, family code, vendor code,
vendor name, vendor stock number, item type code,
description, delivery volume, freight factor, last receiving date,
retail price change last date, last active price, invoice cost, retail
price, replacement cost, advertised price, commission code,
warrantability.
While it arguable that storing information in a database necessarily
creates a database with that information and thereby Ruehl meets the
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"creating" step of claim 49, Ruehl does not disclose an identifying and
assembling steps as claimed in said cited passages. Given no other evidence
disclosing or suggesting said claim steps that would lead one of ordinary
skill in the art to the claimed method as a whole, we find that a prima facie
case of obviousness for the claimed subject matter has not been made in the
first instance and the rejection is accordingly not sustained.
CONCLUSIONS
The rejection of claims 49, 57, and 65 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter is affirmed.
The rejection of claims 49, 57, and 65 under 35 U.S.C. § 103(a) as
being unpatentable over Reuhl is reversed.
DECISION
The decision of the Examiner to reject claims 49, 57, and 65 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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