Ex Parte Lakshminarayanan et al

Patent Trial and Appeal Board

Oct 18, 2017

13623697 (P.T.A.B. Oct. 18, 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.
13/623,697 09/20/2012 Arun Lakshminarayanan 2043.A81US1 6566
49845 7590 10/20/2017
SCHWEGMAN LUNDBERG & WOESSNER/EBAY
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/20/2017 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):
USPTO@SLWIP.COM
SLW @blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARUN LAKSHMINARAYANAN,
GURUDATTA HORANTUR SHIVASWAMY,
and JEAN-DAVID RUVINI
Appeal 2016-007760
Application 13/623,697
Technology Center 3600
Before JOHN A. EVANS, KARA L. SZPONDOWSKI, and
JOYCE CRAIG, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’
Final Rejection of claims 1—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2016-007760
Application 13/623,697
STATEMENT OF THE CASE
Appellants’ invention is directed to determining and using brand
information in electronic commerce. Spec. 11. Title. Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A method comprising:
converting a product identification number for a product into a
normalized global trade item number (GTIN);
generating a plurality of GTIN prefixes from the normalized
GTIN, each of the plurality of GTIN prefixes associated with the
product identification number, respective GTIN prefixes of the
plurality of GTIN prefixes being of different textual lengths;
identifying, by a processor, for each of the plurality of GTIN
prefixes, brand names and counts of each of the brand names using
product information stored in a product catalog;
determining a probability distribution of the brand names in
accordance with the brand names and the counts of the brand names
for the plurality of the GTIN prefixes; and
identifying a predicted brand name for the product from among
the brand names for the plurality of the GTIN prefixes, the predicted
brand name having a highest probability score in the probability
distribution of the brand names.
REJECTION
Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to
nonstatutory subject matter.
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ANALYSIS
After consideration of each of Appellants’ arguments, we agree with
the Examiner. We refer to and adopt the Examiner’s findings and
conclusions as set forth in the Examiner’s Answer and in the action from
which this appeal was taken. Ans. 2—11; Final Act. 2—7. Our discussions
here will be limited to the following points of emphasis.
Issue 1: Did the Examiner err by failing to establish a prima facie
case that the claims are directed to patent-ineligible subject matter?
Appellants present various arguments that the Examiner has not
adequately presented a prima facie case of patent-ineligibility for claims 1—
20. See App. Br. 8—14. First, Appellants argue “the Examiner has chosen
not to base the § 101 rejection on substantial evidence, but rather chosen to
rely on conclusory statements and form paragraphs that can be used to reject
the claims of any application without reference to the actual elements of the
claims.” Id. at 10-11. Appellants further argue “the alleged abstract idea of
‘brand name detection and identification’ is an examiner-written phrase that
does not actually appear in any of the rejected claims . . . [and] omits
numerous other limitations.” Id. at 11. In addition, Appellants argue “[t]he
Office Action provided no reasonable comparison of this alleged abstract
idea to any other concept, much less to any concept that the courts have
already found to be abstract.” Id. at 13. Finally, Appellants argue “[t]he
Examiner failed to consider the dependent claim elements separately and has
not established a prima facie case against the dependent claims.” Id.
(emphasis omitted).
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We are not persuaded. The Federal Circuit has repeatedly noted “the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The Federal Circuit has, thus, held the USPTO carries its procedural burden
of establishing a prima facie case when its rejection satisfies the
requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for
rejection, “together with such information and references as may be useful in
judging of the propriety of continuing the prosecution of [the] application.”
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all that is
required is that the Office set forth the statutory basis of the rejection in a
sufficiently articulate and informati ve manner so as to meet the notice
requirement of § 132. Id.
Here, in rejecting claims 1—20 under 35 U.S.C. § 101, the Examiner
analyzes the claims using the Mayo/Alice two-step framework, consistent
with the guidance set forth in the USPTO’s “2014 Interim Guidance on
Patent Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014), in
effect at the time the rejection was made on June 3, 2015. See Final Act. 3.
The Examiner clearly articulates the reasons why the claims are not patent-
eligible under § 101. See Final Act. 2—6; Ans. 2—11. Specifically, the
Examiner notifies Appellants that the claims are directed to the abstract idea
of “brand name detection and identification,” a “mathematical procedure for
converting one form of numerical representation to another . . . and
comparing new and stored information and using rules to identify options.”
Final Act. 3—6; see also Ans. 3—8. The Examiner further finds the claims do
not amount to significantly more than the abstract idea because the “claims
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recite additional elements such as a processor, a memory, a computer
readable medium and converting product identification number for a product
into a normalized global trade item number (GTIN), however these are
merely recitations of instructions to implement the idea on a computer, and
recitation of generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry.” Final Act. 4—6; see also Ans.
8—11. Although it may be useful in some circumstances to compare the
claims at issue with those in earlier cases in which a similar issue of patent-
eligibility has been decided, such a comparison, contrary to Appellants’
argument (App. Br. at 13), is not required for a prima facie showing.
Moreover, contrary to Appellants’ arguments, the Examiner expressly
addressed the dependent claims in the Answer. Ans. 6—7. The Examiner,
thus, performed a proper § 101 analysis such that the burden shifted to
Appellants to explain why the claims are patent-eligible.
Issue 2\ Did the Examiner err in rejecting the claims under 35
U.S.C. § 101 because the claims are directed to an abstract idea?
Alice Corp. Pty. 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. In the first step, “[w]e must first determine whether the claims at
issue are directed to a patent-ineligible concept.” Alice, 134 S. Ct. at 2355.
The Examiner concludes the claims are directed to “brand name
determination/identification.” Final Act. 2. Specifically, “[t]he claims are
drawn towards mathematical procedure for converting one form of
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numerical representation to another . . . and comparing new and stored
information and using rules to identify options.” Final Act. 3—4, 6; see also
Ans. 2—7.
Appellants argue the claims are not directed to “an idea of itself’ and
“are not performed by a human mind or using a pen and paper,” but instead
“these elements are performed by machines and not by humans.” App. Br.
16. Appellants further argue “[w]hile the claims may [allude] to
mathematical calculations or formulas, the claims are not directed to such.
Instead, the claims use such calculations or formulas to accomplish other
goals such as predicting a brand name.” Id. Appellants argue the claims are
“more like the rubber curing process of Diehr, than conversion of numerical
information of Benson.” Id. As such, “Appellants assert that claim 1 does
not explicitly recite a mathematical relationship.” Id. at 17.
We are not persuaded by Appellants’ arguments and agree with the
Examiner’s conclusions. See Final Act. 5—6; Ans. 4—8. We agree with the
Examiner that the claims are directed to, inter alia, a mathematical formula
or procedure for converting one form of numerical representation to another
(converting a product identification number for a product into a normalized
GTIN) and comparing new and stored information (determining a
probability distribution of the brand names in accordance with the brand
names and counts of the brand names) and using rules to identify options
(identifying a predicted brand name, which is the predicted brand name
having a highest probability score). Thus, the claims are directed to an
abstract idea because they are focused on collecting information, processing
the information by mathematical algorithms, and identifying the results. See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
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Cir. 2016) (“The advance they purport to make is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions,”); Digitech Image Techs. LLC v. Elecs. For Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014) (“ Without additional limitations, a process
that employs mathematical algorithms to manipulate existing information to
generate additional information is not patent eligible.”); SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 Fed. Appx. 950, 955 (Fed. Cir. 2014)
(“comparing new and stored information and using rules to identify medical
options” is an abstract idea).
Contrary to Appellants’ arguments, the claims differ significantly
from the process claimed in Diamond v. Diehr, which uses a mold for
precisely shaping uncured synthetic rubber under heat and pressure and then
curing the rubber in the mold so that the product will retain its shape and be
functionally operative after the molding is completed. 101 S. Ct. 1048, 1052
(1981). The Court in Diehr held
That respondents’ claims involve the transformation of an
article, in this case raw, uncured synthetic rubber, into a
different state or thing cannot be disputed. The respondents’
claims describe in detail a step-by-step method for
accomplishing such, beginning with the loading of a mold with
raw, uncured rubber and ending with the eventual opening of
the press at the conclusion of the cure. Industrial processes
such as this are the types which have historically been eligible
to receive the protection of our patent laws,
101 S. Ct. at 1055. The Court held the claims in Diehr to be patent eligible
despite the fact that several steps of the process used a mathematical
equation, not because of it. Id. Appellants’ claims describe no such
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transformation of an article into a state or
process. Rather, contrary' to Appellants’ arguments, the claims are more
similar to those in Gottschalk v, Benson, 409 U.S. 63 (1972). See Bils'ki v.
Kappos 561 U.S. 593, 610 (2010) (describing that in Benson, “a patent
application for an algorithm to convert binary-coded decimal numerals into
pure binary code” was directed to an abstract idea (citing Benson, 409 U.S.
at 64 67)),
Further, the steps in Appellants’ claims can all be performed by
human thought alone or by a human using a pen and paper. 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.”); Elec. Power Grp., 830 F.3d at
1353-54 (collecting information and “analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more,
[are] essentially mental processes within the abstract-idea category.”). The
mere mention of certain claimed computer hardware components (e.g. “a
processor,” “a module,” and “a memory”) does not impose sufficiently
meaningful limitations on claim scope beyond these mental steps.
CyberSource, 654 F.3d at 1372-73, 1375 (“That purely mental processes can
be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gotts chalk v. Benson”).
Appellants have not adequately shown the claims are not directed to
an abstract idea. Although the claim language includes more words than the
phrase the Examiner used to articulate the abstract idea, this is an
insufficient reason to persuasively argue the claims are not directed to an
abstract idea. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41
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(Fed. Cir. 2016) (“An abstract idea can generally be described at different
levels of abstraction. As the Board has done, the claimed abstract idea could
be described as generating menus on a computer, or generating a second
menu from a first menu and sending the second menu to another location. It
could be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”) The Examiner has
provided a reasoned rationale that identifies the judicial exception recited in
the claims, i.e., abstract idea, and explained why it is an exception. See Ans.
2—7; Final Act. 3, 4, 6. Appellants have not provided persuasive rebuttal
evidence showing the claims are not directed to an abstract idea.
Issue 3: Did the Examiner err in rejecting the claims under 35 U.S.C.
§101 because the claims recite something significantly more than the
abstract idea?
In the second step of Alice, 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 Collaborative Servs.
v. Prometheus Labs., Inc., 132 S.Ct. 1289, 1297—98 (2012)). In other words,
the second step is to “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. (quotingMayo, 132 S. Ct. at 1294).
With respect to the second step of the Alice analysis, the Examiner
concludes “Applicant’s claims recite additional elements such as a
processor, a memory, a computer readable medium and converting product
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identification number for a product into a normalized global trade item
number (GTIN), however these are merely recitations of instructions to
implement the idea on a computer, and recitation of generic computer
structure that serves to perform generic computer functions that are well-
understood, routine, and conventional activities previously known to the
industry” which “do not provide meaningful limitations to transform the
abstract idea into a patent eligible application of the abstract idea such that
the claims amount to significantly more.” Final Act. 4, 6; see also Ans. 8—
11.
Appellants argue “the operations recited in the claims at issue are at a
lower-level of generality than the operations recited in the claims at issue in
Bilski and Alice” which “indicates that the claims of the present application
are more than simply an abstract idea.” App. Br. 18—19. Appellants further
argue the first four limitations of claim 1 “are not explicitly directed to
‘brand name detection and identification.’” App. Br. 19.
We are not persuaded. Appellants have not directed our attention to,
nor can we find, anything in the record that shows any specialized computer
hardware or other “inventive” computer components are required. See Spec.
H 84—89, Fig. 12. Rather than reciting additional elements that amount to
“significantly more” than the abstract idea, the pending claims, at best, add
only a “processor,” “device,” “module,” and/or “memory,” i.e., a generic
component (see Spec. Tflf 70-74, Fig. 10), which does not satisfy the
inventive concept. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245, 1256 (Fed. Cir. 2014) (internal quotation marks omitted)
(“[AJfter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible. The
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bare fact that a computer exists in the physical rather than purely conceptual
realm is beside the point.”) “[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.” Alice, 134 S. Ct. 2358 (citation omitted).
Appellants further argue “the claims constitute a claim to an
improvement of the functioning of the computer since more accurate brand
name prediction that may reduce various errors and thereby conserve system
resources that would otherwise be consumed to compensate for inaccurate
brand name predictions.” App. Br. 20.
We are not persuaded. Appellants do not identify any actual
“improvement of the functioning of the computer.” Rather, Appellants’
identification of a predicted brand name is done by determining a probability
distribution (i.e., the information is run through a mathematical procedure
using a generic processor). See Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he
fact that the required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the claimed
subject matter.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015) (relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent-eligible).
Appellants further argue “the claim clearly does not seek to tie up any
judicial exception so that others cannot practice it.” App. Br. 20.
We are not persuaded by this argument. “[Wjhile preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” FairWarning IP, LLC, v. Iatric Sys.,
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Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir. 2015),
cert, denied, 136 S. Ct. 701, 193 (2015) (“[T]hat the claims do not preempt
all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract.”). Further,
“[wjhere 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 moot.” Ariosa, 788 F.3d
at 1379.
The claims, when viewed as whole, recite nothing more than
performing conventional processing functions that courts have routinely
found insignificant to transform an abstract idea into a patent-eligible
invention. As such, the claims amount to nothing significantly more than an
instruction to implement the abstract idea on a generic computer—which is
not enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2360.
DECISION
For the above reasons, the Examiner’s rejection of claims 1—20 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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