Ex Parte Lee et al

Patent Trials and Appeals Board

Feb 6, 2019

13796573 - (D) (P.T.A.B. Feb. 6, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/796,573 03/12/2013
62095 7590 02/06/2019
FAY SHARPE I XEROX - ROCHESTER
1228 EUCLID A VENUE, 5TH FLOOR
THE HALLE BUILDING
CLEVELAND, OH 44115
FIRST NAMED INVENTOR
HaengjuLee
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.
20110300USNP-XER2825US01 3816
EXAMINER
HAQ,NAEEMU
ART UNIT PAPER NUMBER
3625
MAIL DATE DELIVERY MODE
02/06/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HAENGJU LEE and YU-AN SUN
Appeal2017-011051
Application 13/796,573
Technology Center 3600
Before: ST. JOHN COURTENAY III, BETH Z. SHAW, and
JOYCE CRAIG, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-011051
Application 13/796,573
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-14. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
The claims are directed to fault tolerant combinatorial auctions for
tasks having time and precedence constraints with bonuses and penalties.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1 A method for assigning tasks to one or more suppliers
compnsmg:
maintaining a database on a data storage device, said
database having therein one or more ratings for one or more
suppliers, each rating representing the probability of its
corresponding supplier successfully completing assigned sub-
tasks, wherein each rating is based on the supplier's past
performance with respect to previously assigned sub-tasks;
providing at least one buyer's terminal used by a buy to
enter a task into the system;
providing at least one supplier's terminal used by a
supplier to enter one or more bids into the system;
providing a data processor, said data processor being:
(i) operatively connected to the at least one buy's terminal
to receive tasks therefrom;
(ii) operatively connected to the at least one supplier's
terminal to receive bids therefrom; and
(iii) operatively connected to the data storage device to
selectively obtain ratings therefrom;
receiving at said data processor a task and a valuation
therefor submitted by a buyer via the at least one buyer's
terminal, said task being defined by a plurality of sub-tasks, a set
of precedence relationships specified between the sub-tasks, and
a designated start time for the task and a designated end time for
the task corresponding to an interval in which the task is to be
completed;
receiving at said data processor one or more bids
associated with the task from one or more suppliers via the at
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2.
least one supplier's terminal, each supplier submitting one or
more of the bids and each bid identifying (i) a set of the sub-tasks
for which the bid is being submitted, (ii) a proposed price for
each individual sub-task in the identified set thereof and (iii) for
each particular sub-task in the identified set, a schedule including
a proposed start time range in which the supplier submitting the
bid proposes to begin the particular sub-task in the identified set
and a duration in which the supplier submitting the bid proposes
to complete the particular sub-task;
accessing the database with the data processor to obtain
ratings therefrom for those suppliers submitting bids in order to
determine a probability of each supplier successfully completing
each sub-task for which they submitted a bid;
analyze with said data processor, the received task and
valuation therefore, received bids associated with the task and
the obtained ratings from the database in order to identify one or
more winning bids from the obtained bids based on the proposed
prices of the bids, the determined success probabilities and the
proposed schedules of the bids, said winning bids satisfying
constraints of the task;
communicating the one or more winning bids from the
data processor back to the buyer's terminal; and
outputting the one or more winning bids on the buyer's
terminal.
REJECTIONS
The Examiner rejected claims 1-14 under 35 U.S.C. 101. Final Act.
CONTENTIONS AND ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
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ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
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( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
The Examiner concludes claims 1-14 are directed to assigning tasks
to one or more suppliers, an abstract idea because the assignment of tasks to
one or more suppliers is a way of organizing human activities. Final Act. 2.
The Examiner also concludes that a bid that includes a price and schedule is
an abstract idea because it is similar to the fundamental economic practice at
issue in Bilski and Alice. Id. at 3.
We agree that the assignment of tasks to one or more suppliers is a
way of organizing human activities and that a bid that includes a price and
schedule is an abstract idea because it is similar to the fundamental
economic practice at issue in Bilski and Alice. In particular,
"communicating the one or more winning bids from the data processor back
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to the buyer's terminal; and outputting the one or more winning bids on the
buyer's terminal," is a way of organizing human activities. Additionally, the
limitation "receiving at said data processor one or more bids associated with
the task from one or more suppliers ... " is similar to the fundamental
economic practice at issue in Bilski and Alice.
We next determine if there are there additional element( s) or a
combination of elements in the claim that integrate the judicial exception
into a practical application. See MPEP § 2106.0S(a}-(c), (e}-(h);
Memorandum. To the extent Appellants advance arguments with respect to
these elements, we address them below. Appellants argue:
[T]he technology is improved insomuch as the analysis which
determines what supplier to assign sub-tasks to takes into
account not only the constrains of the task and the bids of the
suppliers but also factors in ratings which reflect the historical
record of successful task completion by the respective
suppliers. Furthermore, as the supplier ratings are maintained
in a separate dedicated database, the supplier is relived of the
burden of having to re-transmit their historical performance
record with each bid. Hence, data flow between the suppliers'
terminals and the data processor conducting the evaluation is
reduced thereby permitting the data processor to retrieve bid
data faster and/or more efficiently such that the functionality of
the data processor is improved. Furthermore, when negotiating
a transaction, the anonymity of a supplier with respect to a
given task requestor may inhibit that task requestor from
accepting an otherwise viable bid from a reputable supplier.
Supplier anonymity is further exacerbated in on-line
negotiations, where parties are not meeting face-to-face.
App. Br. 9.
We are not persuaded by these arguments that the combination of the
additional recited claim elements integrate the abstract idea into a practical
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application, such that the technology itself is improved. Rather, Appellants
argue the speed and efficiency of data flow is improved.
Thus, we are not persuaded that the abstract ideas are integrated into a
practical application and, therefore, the claims are directed to a judicial
exception.
Turning to Step 2B of the analysis, we evaluate the additional
elements, individually and as a combination, to determine whether the
claims provide an inventive concept. The Examiner determines:
Claims 1 and 8 recite the additional limitations of a database, a
storage device, a processor, a buyer terminal, and a supplier
terminal. These limitations are generic computer components
that are claimed to perform their basic functions of processing,
storing, receiving, transmitting, and displaying data through a
program that implements the abstract idea. These limitations
are routine and conventional.
Ans. 4 ( emphasis added). The Examiner also determines a processor, data
store, and data entry terminals "are routine and conventional computer
components." Id. at 5; see Final Act. at 3--4.
We conclude the Examiner has not established, on this record, that
these elements, considered individually and as an ordered combination, were
well-understood, routine, and conventional. Regarding a determination that
"additional" claim elements are merely routine and conventional, the Federal
Circuit has explained that:
Whether something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a
factual determination. Whether a particular technology is
well-understood, routine, and conventional goes beyond what
was simply known in the prior art. The mere fact that
something is disclosed in a piece of prior art, for example, does
not mean it was well-understood, routine, and conventional.
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Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018).
To find an element to be well understood, routine, or conventional, the
Examiner must support the rejection with one of the following:
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that demonstrates
the well-understood, routine, conventional nature of the additional
element( s ).
2. A citation to one or more of the court decisions discussed in MPEP
§ 2106.05( d)(II) as noting the well-understood, routine, conventional
nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood,
routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-
understood, routine, conventional nature of the additional element(s).
Berkheimer Memo. 1
The Examiner does not support the rejection with one of these
statements or citations. For these reasons, we find the rejection
insufficiently supported on the record before us. Accordingly, we do not
sustain the rejection of claims 1-14 under 35 U.S.C. 101.
DECISION
For the above reasons, the Examiner's rejection of claims 1-14 is
reversed.
REVERSED
1 Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (Apr. 19, 2018) available at:
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419 .PDF
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