Ex Parte Kasravi

Patent Trial and Appeal Board

Jan 17, 2018

11019144 (P.T.A.B. Jan. 17, 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.
11/019,144 12/21/2004 Kas Kasravi 36MK-255126 1675
145169 7590 01/19/2018
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP (DXC)
379 Lytton Avenue
Palo Alto, CA 94301
EXAMINER
BRANDENBURG, WILLIAM A
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
01/19/2018 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):
svpatents @ sheppardmullin.com
S heppardMullin_Pair @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KAS KASRAVI
Appeal 2016-001011
Application 11/019,144
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and BIBHU R.
MOHANTY, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellant seeks our review under 35 U.S.C. § 134 of the final
rejection of claims 12, 14, 16, 17, 29, 31, 33, 34, 46, 48, and 50-67 which
are all the claims pending in the application. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2016-001011
Application 11/019,144
THE INVENTION
The Appellant’s claimed invention is directed to capturing and
analyzing consumer product preferences in order to predict future product
and service requirements (Spec. 3, lines 7-10). Claim 12, reproduced below,
is representative of the subject matter on appeal.
12. A method at a data processing system for predictive product
requirements analysis and predicting future requirements, the method
comprising:
analyzing, via the data processing system, trends in changes of
consumer preferences over time, the consumer preferences including
consumer identified ideal characteristics of a product not yet created,
the analyzing trends including monitoring the changes of consumers
preferences over a period of time, extrapolating a future state of the
preferences based on historical data collected, and summarizing the
results;
mapping, via the data processing system, sets of consumer
preferences into predicted future product requirements;
calculating, via the data processing system, confidence factors
for the predicted future product requirements; and
reporting, via the data processing system, the predicted future
product requirements.
THE REJECTION
The following rejection is before us for review:
Claims 12, 14, 16, 17, 29, 31, 33, 34, 46, 48, and 50-67 are rejected
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
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Application 11/019,144
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
The Appellant argues that the rejection of claim 12 is improper
because the claim is not directed to an abstract idea in being a fundamental
economic practice or series or mathematical relationships or formulations
(App. Br. 7, 8, Reply Br. 2, 3). The Appellant also argues that the claim
recites limitations that are “significantly more” than an abstract idea (App.
Br. 9, 10, Reply Br. 3-5).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Rej. 5-10, Ans. 2-12).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: “[ljaws of
nature, natural phenomena, and abstract ideas” are not patentable. See, e.g.,
Alice Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 12 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2016-001011
Application 11/019,144
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an “inventive concept” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”. Id at 2358.
Here, we determine that the claim is directed to the concept of
analyzing trends in consumer preferences to predict future product
requirements. This is a fundamental economic practice long prevalent in our
system of commerce, and is an abstract idea beyond the scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
Here, the claims are not rooted in technology but rather in the abstract
idea of analyzing trends in consumer preferences to predict future product
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Appeal 2016-001011
Application 11/019,144
requirements and the claim limitations fail to transform the abstract nature of
the claim. For this reason the rejection of claim 12 is sustained. The
Appellant has provided the same argument for independent claim 29 and the
rejection of that claim, which is drawn to similar subject matter, is sustained
as well.
With regard to claim 61 the Appellant argues that the claim limitation
for “developing the product based on the predicted future product
requirements” removes the claim from being in the realm of an abstract idea
(App. Br. 11). We disagree with this contention. Here, claim 61 is similar
to claim 12 in that it is also directed to the abstract idea of analyzing trends
in consumer preferences to predict future product requirements and the
claim limitations fail to transform the abstract nature of the claim and the
rejection of this claim is sustained.
We reach the same conclusion as to independent system claim 46.
Here, as in Alice, “the system claims are no different in substance from the
method claims. The method claims recite the abstract idea implemented on a
generic computer; the system claims recite a handful of generic computer
components configured to implement the same idea.” Alice 134 S. Ct. at
2351. “[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention. Stating an
abstract idea ‘while adding the words ‘apply it’ is not enough for patent
eligibility.” Id. at 2358 (quoting Mayo, 132 S. Ct. at 1294).
With regard to the dependent claims 14, 31, 48, and 63 the Appellant
argues that specific limitation that the “consumer preferences are
extrapolated to define a future state of the product's features and these
features are set as the requirements for that product at a future point in time”
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Application 11/019,144
remove the claim from the realm of being an abstract idea. We have
considered but reject those arguments. Here, the argued limitation fails to
remove the claim from the realm of being an abstract idea and instead
remain directed to the concept of analyzing trends in consumer preferences
to predict future product requirements which is a fundamental economic
practice long prevalent in our system of commerce, and is an abstract idea
beyond the scope of § 101.
The Appellant presents similar arguments for claim limitations in
dependent claims 16, 33, 50, 54, 57, 60, and 64 (App. Br. 12, 13); claims 17,
34, 51, and 67 (App. Br. 13); claims 52, 53 55, 58, and 65 (App. Br. 13, 14;
claims 53, 56, 59, and 66 (App. Br. 14, 15) based on specific “confidence
factors” and “future requirements” in the process; and claim 62 based on
producing the product (App. Br. 15). As above, the recited claim limitation
for each of these respective claims fails to remove the claim from being an
abstract idea and also fail to transform the abstract nature of the claim.
For these reasons the rejection of claims under 35 U.S.C. § 101 as
being directed to non-statutory subject matter is sustained.
CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims under 35 U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 12, 14, 16, 17, 29, 31, 33, 34, 46,
48, and 50 is sustained.
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Appeal 2016-001011
Application 11/019,144
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. §
1.136(a)(l)(iv).
AFFIRMED
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