Ex Parte Lore et al

Patent Trial and Appeal Board

Dec 19, 2018

13213150 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/213, 150 08/19/2011 Marc Lore
500 7590 12/21/2018
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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.
120137.676Cl 7718
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
12/21/2018 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC LORE and WEIHU YAN
Appeal2017-006060
Application 13/213, 150 1
Technology Center 3600
Before HUBERT C. LORIN, J. JOHN LEE, and
SHEILA F. McSHANE, Administrative Patent Judges.
McSHANE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision to reject claims 2-21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM the Examiner's prior rejection. We enter NEW
GROUNDS OF REJECTION to the extent that our rationale differs from
that of the Examiner for the rejections of claims 2-21 under 35 U.S.C.
§ 101, pursuant to our authority under 37 C.F.R. § 41.50(b).
1 According to Appellants, the real party in interest is Quidsi, Inc., a
subsidiary of Amazon.com, Inc. Appeal Brief filed August 17, 2016,
hereafter "App. Br.," 2.
Appeal2017-006060
Application 13/213, 150
BACKGROUND
The invention is directed to presenting upselling products that
consider incremental packing and shipping costs. Specification, hereafter
"Spec.," ,r,r 11-12.
Claims 2, 11, and 19 are the independent claims on appeal.
Illustrative claim 2 is reproduced from pages 30 and 31 of the Claims
Appendix of the Appeal Brief (Claims App.) as follows:
2. A computer-implemented method, comprising:
storing, by one or more configured computing
devices of a merchant, a weight and dimensions of each
of a plurality of products available from the merchant;
receiving, by the one or more configured
computing devices via one or more first electronic
communications sent over one or more computer
networks, an indication of an order by a customer for one
or more first products from the plurality of products;
determining, by the one or more configured
computing devices, a box for use in shipping the one or
more first products to the customer based on box sizes
available and on the weight and dimensions of each of
the one or more first products;
analyzing, by the one or more configured
computing devices, an amount of room and an amount of
weight that will be available in the box once the one or
more first products are inside;
generating, by the one or more configured
computing devices, a packing solution for one or more
second products of the plurality based on a comparison of
the weight and dimensions of the one or more second
products with the amount of room and the amount of
weight available in the box;
determining, by the one or more configured
computing devices, an incremental shipping and
2
Appeal2017-006060
Application 13/213, 150
packaging cost associated with including the one or more
second products in the box based on the generated
packing solution;
selecting, by the one or more configured
computing devices, one or more candidate products from
the one or more second products to propose to the
customer to include in the box with the one or more first
products based at least in part on the determined
incremental shipping and packaging cost;
providing, by the one or more configured
computing devices via one or more second electronic
communications sent over the one or more computer
networks, an indication to the customer of the selected
one or more candidate products; and
initiating, by the one or more configured
computing devices via one or more third electronic
communications and based at least in part on a selection
by the customer of at least one candidate product from
the selected one or more candidate products in response
to the provided indication, shipping of the at least one
candidate product in the box with the one or more first
products to the customer.
The Examiner rejects claims 2-21 under 35 U.S.C. § 101 as reciting a
judicial exception without significantly more. Final Action mailed April 6,
2016, hereafter "Final Act.," 10-11; see also Examiner's Answer mailed
January 10, 2017, hereinafter "Ans.," 3.
DISCUSSION
Appellants argue the § 101 rejection on all the claims on similar
bases, and we will use claim 2 as representative. See App. Br. 12-29; Reply
Brief mailed February 27, 2017, hereafter "Reply Br.," 4--15.
The Examiner determines that the claims, and more specifically,
representative claim 2, are directed to non-statutory subject matter because
3
Appeal2017-006060
Application 13/213, 150
they are directed to the abstract idea of "determining an incremental
shipping and packaging cost and profit associated with upselling a second
product," which is similar to abstract ideas held by the courts to be judicial
exceptions. Final Act. 10 ( emphasis omitted). The Examiner compares the
claims to cases where claims were directed to similar subject matter that was
deemed to be an abstract idea. Id. The Examiner finds that there are similar
cases to the instant claims, which are directed to "[ c ]omparing new and
stored information and using rules to identify options," "[ c ]reating a
contractual relationship," and "[ m ]anaging relationships or transactions
between people." Id. (emphasis omitted) (citing buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350 (Fed. Cir. 2014); SmartGene, Inc. v. Advanced
Biological Labs., 555 Fed. App'x 950 (Fed. Cir. 2014)). The Examiner
finds that the claims "are similar to the concepts identified by the courts as
economic practices in which monetary transactions between people are
managed and the obtaining, comparing, and processing of data," which are
not meaningfully different from those concepts found by the courts to be
abstract ideas. Ans. 8. The Examiner further finds that the claims are
"directed to 'an idea[] of itself,' (i.e., an idea standing alone such as an
uninstantiated concept, plan or scheme, as well as a mental process
(thinking)[)] that 'can be performed in the human mind, or by a human using
a pen and paper."' Final Act. 5. The Examiner determines the claims do not
include limitations that are significantly more than the judicial exception
because the steps use generic computers performing generic computer
functions that are well-understood, routine, and conventional activities. Id.
at 11.
4
Appeal2017-006060
Application 13/213, 150
Appellants argue that the rejection of claim 2 is flawed because the
claims are not directed to an abstract idea. App. Br. 13-18. Appellants
argue that the claims are not abstract for similar reasons to the claims in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)
("DDR"). Id. at 9. Appellants allege that, like DDR, the claim is to a
solution to a problem "necessarily rooted in computer technology" and
"recite an invention that is not merely the routine or conventional use of the
Internet." Id. at 13. Appellants also refer to Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016) ("Enfish"), where claims directed to a
specific implementation of a solution to a problem in the software arts were
determined not to be an abstract idea. Id. Appellants further refer to
Trading Technologies International, Inc. v. CQG, Inc., No. 05-cv-4811,
2015 WL 774655 (N.D. Ill. Feb. 24, 2015), and its display of trading-related
information that was held to recite statutory subject matter. Id. at 14. In the
Reply Brief, Appellants also refer to McRO, Inc. v. Bandai Namco Games
America Inc., 837 F.3d 1299 (Fed. Cir. 2016) ("McRO"), and Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016), and
allege that these cases reiterate that performing automated activities to
improve technological processes is statutory subject matter. Reply Br. 5-7.
Appellants argue that, similar to Enfzsh, DDR, and Trading Technologies,
the subject matter of claim 2, which "specifies how interactions in the
computer environment occur to yield a desired result and to provide
resulting benefits to the computing systems themselves and to the operations
of physically shipping products in boxes," is directed to specific
implementation of a solution in the software arts and does not recite an
abstract idea. App. Br. 14--15; see also Reply Br. 8-9. Appellants argue
5
Appeal2017-006060
Application 13/213, 150
that the claimed automated operations use information and weights and
dimensions of physical products and boxes, as well as improve operations
and efficiency of a warehouse using analysis of the physical characteristics
of products and boxes. Final Act. 15-17. On this basis, Appellants assert
that the claims are therefore not directed to an abstract idea. Id.
Appellants allege that the Final Office Action fails to cite a case
where an abstract idea has been found that has analogous subject matter to
the present claims as a whole, and Appellants allege they are not aware of
such a case. Final Act. 17. Appellants refer to the cases relied upon by the
Examiner in the rejection, and argue that none of the cases relate to using
physical measurements of physical products and shipping boxes to improve
the physical transportation of such products. Id. at 17-18. Appellants argue
that claim 2 has already been found to be allowable over prior art, which
confirms that the subject matter of the claim is not conventional. Id. at 18.
Appellants further assert that the rejection effectively requires that "only
automated operations which improve an individual computer system's
operation are statutory subject matter," and "any improvement to business
functionality is directed to not patentable subject matter," but that such a
view of the case law is too limited. Reply Br. 5, 9.
Appellants also argue that, even if claim 2 is directed to an abstract
idea, the claim recites significantly more than the abstract idea. App. Br.
18-21. Appellants aver similarities to BASCOM Global Internet Services v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) ("BASCOM'), arguing
that the independent claims recite a combination of features, that is "specific
operations in particular manners" that are comparable to BASCOM. Reply
Br. 3. Appellants contend that the Examiner fails to cite a case where the
6
Appeal2017-006060
Application 13/213, 150
additional elements of this claim have been found to be well-understood and
conventional, and Appellants are unaware of any cases that have involved
using physical measurements of physical products and boxes to perform
transportation of such physical products and boxes. Id. at 20. Appellants
further argue that claim 2 includes meaningful limitations that would not
preempt the use of the abstract idea. Id. at 21. Appellants assert that the
"claim elements provide detailed computing functions that perform
specialized actions and manipulate and transform data in a way that is not
well-understood, routine and conventional in the field." Reply Br. 13.
Appellants also contend that when the claim elements are considered in their
totality, they amount to more than generic computer functions claimed in a
generic manner. Id. at 14.
To provide context, 35 U.S.C. § 101 provides that a new and useful
"process, machine, manufacture, or composition of matter" is eligible for
patent protection. The Supreme Court has made clear that the test for patent
eligibility under Section 101 is not amenable to bright-line categorical rules.
See Bilski v. Kappas, 561 U.S. 593, 609 (2010). There are, however, three
limited, judicially created exceptions to the broad categories of patent-
eligible subject matter in § 101: "[L Jaws of nature; natural phenomena, and
abstract ideas." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 70 (2012).
In Alice Corporation Pty, Ltd. v. CLS Bank International, 134 S. Ct.
234 7 (2014 ), the Supreme Court reiterated the framework set forth
previously in Mayo, "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355 (citation omitted).
7
Appeal2017-006060
Application 13/213, 150
Under Alice, the first step of such analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts." Id.
( citation omitted). If it is determined that the claims are directed to a patent-
ineligible concept, the second step in the analysis is to consider the elements
of the claims "individually and 'as an ordered combination'" to "determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 U.S. at 78, 79). 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. (alteration in original) ( quoting Mayo,
566 U.S. at 72-73).
After considering Appellants' arguments and the evidence presented
in this Appeal for the§ 101 rejections, we are not persuaded that Appellants
identify reversible error in the Examiner's rejection. We add the following
for emphasis.
In the first step of the analysis, the Examiner finds that the claims are
directed to "determining an incremental shipping and packaging cost and
profit associated with upselling a second product." Final Act. 10 ( emphasis
omitted). We are not persuaded by Appellants' arguments that the claims
are not directed to an abstract idea because they use information regarding
physical products and boxes, and improve operations and efficiency of a
warehouse using analysis of the physical characteristics of products and
boxes. Appellants' arguments suggest that the steps directly involve
physical items and physical improvement, which take the claims out of the
abstract. The claimed steps, however, are limited to those performed on data
8
Appeal2017-006060
Application 13/213, 150
only by a computer, and there are no steps that include non-data (physical)
actions: data for the weight and dimensions of products are stored, an order
is received, a box is identified for shipping using box size data, there is an
analysis to determine available remaining space and whether a second
product would fit in the box and its weight, the incremental shipping and
packaging cost of the second item is determined, with selection of candidate
products, the selection of the candidate product is provided to a customer,
and shipping is initiated upon customer selection. Figure 2, reproduced
below, generally depicts the steps of claim 2.
Consistent with Figure 2 above, we find no error with the Examiner's
articulation that these steps are directed to "determining an incremental
9
Appeal2017-006060
Application 13/213, 150
shipping and packaging cost and profit associated with upselling a second
product." See Final Act. 10. We also find no error with the Examiner's
finding that all these steps could be performed by the human mind or by a
human using a pen and paper. The steps involve obtaining and processing of
data for transactions between people. The Federal Circuit has held that if a
method can be performed by human thought alone, or by a human using pen
and paper, it is merely an abstract idea and is not patent-eligible under § 101.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (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."). Mental
processes remain unpatentable even when automated to reduce the burden
on the user of what once could have been done with pen and paper.
CyberSource, 654 F.3d at 1375 ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson."). Here, the claims
could have been performed by a human obtaining and analyzing data related
to the transaction. We treat "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). We
also discern no error in the Examiner's reliance on buySAFE, which
involved an abstract idea involved in a transaction, or SmartGene. See Final
Act. 10 (citing buySAFE, 765 F.3d 1350 (Fed. Cir. 2014); SmartGene, Inc.,
555 Fed. App'x 950 (Fed. Cir. 2014)). In SmartGene, the Federal Circuit
concluded that the claims were patent ineligible because they did "no more
than call on a 'computing device,' with basic functionality for comparing
10
Appeal2017-006060
Application 13/213, 150
stored and input data and rules, to do what doctors do routinely."
SmartGene, 555 F. App'x at 954. In the instant case, the recited steps are
nothing more than analyzing data in an algorithm process using a computer
processor to calculate cost and profit associated with upselling a product.
We also do not find Appellants' arguments based on DDR to be
persuasive. In DDR the invention did not merely use the Internet but rather
changed how interactions on the Internet operated and thereby claimed a
solution "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." DDR, 773
F.3d at 1257. Further, alleged similarities to Enfzsh fail to persuade because
its claims were deemed to be patent eligible because they were directed to
improvements in the way computers and networks carry out their basic
functions. See Enfish, 822 F.3d at 1335-36 ("[T]he first step in the Alice
inquiry ... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool."). In an appeal of Trading Technologies, the Federal Circuit found that
the claims required "a specific, structured graphical user interface paired
with a prescribed functionality directly related to the graphical user
interface's structure that is addressed to and resolves a specifically identified
problem in the prior state of the art," which is an improvement to
technology. Trading Techs. Int'!, Inc. v. CQG, Inc., 675 F. App'x 1001,
1004 (Fed. Cir. 2017). InMcRO, the claims "focused on a specific asserted
improvement in computer animation." McRO, 837 F.3d at 1314.
Additionally, in Amdocs, "claim 1 solves a technological problem (massive
data flows requiring huge databases)" and "is a technical improvement over
11
Appeal2017-006060
Application 13/213, 150
prior art technologies and served to improve the performance of the system
itself." Amdocs, 841 F.3d at 1302. Here, the claims are not directed to
improved computer operations or functions, but rather are directed to data
analysis for cost analysis for upselling a product-an abstract idea.
We also do not find that Appellants' arguments identify error in the
Examiner's findings on the claimed steps under the second step of Alice. As
discussed in BSG Tech LLC v. Buyseasons, Inc. ("BSG"), "[i]f a claim's only
'inventive concept' is the application of an abstract idea using conventional
and well-understood techniques, the claim has not been transformed into a
patent-eligible application of an abstract idea." 899 F.3d 1281, 1290-1291
(Fed. Cir. 2018) (citing Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed.
Cir. 2018) (holding claims lacked an inventive concept because they
"amount to no more than performing the abstract idea of parsing and
comparing data with conventional computer components")). Here, the
Examiner's findings are that the abstract idea is performed by
implementation of the steps of the claims using generic computers
performing generic computer functions that are well-understood, routine,
and conventional activities, and the computer implementation is not
significantly more than the judicial exception. We find no error with the
Examiner's finding that the claims are directed to implementation of the
abstract idea by generic processes. Instructing one to "apply" an abstract
idea and reciting no more than generic computer elements performing
generic computer tasks does not make an abstract idea patent eligible. See
Alice, 134 S. Ct. at 2359---60 (2014). The Specification describes the
computing systems used as "well known." Spec. ,r 17. Appellants fail to
identify any evidence that the steps are implemented by anything but a
12
Appeal2017-006060
Application 13/213, 150
generic computer system. See App. Br. 18-21; Reply Br. 10-16. Merely
arguing that there is a factual dispute, absent justification, is insufficient to
demonstrate Examiner error. Aatrix Software, Inc. v. Green Shades
Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018). Further, we do not
find justification for Appellants' arguments that the claim elements provide
detailed computing functions that perform specialized actions and
manipulate and transform data in a way that is not well-understood, routine
and conventional. See Reply Br. 13. Appellants provide no evidentiary
support for that assertion 2 and although the Specification identifies a
"computer algorithm" for preferred packing for upselling products, the
Specification states that the invention may use different optimization
methods. See Spec. ,r 35.
Moreover, it is well established that the conventional use of a generic
computer using generic steps to implement an abstract idea does not make
an abstract idea patent eligible. See BSG, 899 F.3d at 1290-91; Electric
Power, 830 F.3d at 1353, 1355 (Fed. Cir. 2016) ("We have repeatedly held
that invocations of computers and networks that are not even arguably
inventive are 'insufficient to pass the test of an inventive concept in the
application of an abstract idea."') (quoting buySAFE, 765 F.3d at 1355);
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055-56 (Fed.
Cir. 2017); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F .3d
2 Appellants argue that if the computing functions were well known, that the
Patent Office should have been able to find prior art with this functionality.
Reply Br. 13. However, allowability over prior art relates to whether a
claim is novel or non-obvious, not whether the claim is significantly more
than the judicial exception. See Two-Way Media Ltd. v. Comcast Cable
Commc 'ns., 874 F.3d 1329, 1339-40 (Fed. Cir. 2017) ("Eligibility and
novelty are separate inquiries.").
13
Appeal2017-006060
Application 13/213, 150
1364, 1374--75 (Fed. Cir. 2017); Secured Mail Solutions LLC v. Universal
Wilde, Inc., 873 F.3d 905, 911 (Fed. Cir. 2017); DDR, 773 F. 3d at 1256
(Fed. Cir. 2014) ("[A]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible.").
Even if we were to consider issues beyond the findings on the
implementation of the abstract idea on a generic computer, we are not
persuaded by Appellants' arguments. As to Appellants' contention that the
"specific operations in particular manners" of claim 2 are comparable to
BASCOM, we do not find that the Appellants have identified reversible error
in the Examiner's findings. App. Br. 18-19. Appellants merely reiterate the
steps of the claim, and argue that the claim language goes "far beyond
merely determining an incremental shipping and packaging cost." Id. at 19.
Appellants represent the claim as a case of "automated operations of
computing systems involving using physical measurements of physical
products and boxes to perform transportation of such physical products and
boxes in a more efficient manner." Id. at 20. In BASCOM, the Federal
Circuit agreed that the evidence presented for the claims at issue in that case
supported that an ordered combination of the claim elements provided a
specific way to filter content on the Internet to overcome existing technology
problems with other Internet-filtering systems, and improved the filtering
performance of the computer system itself, which represented significantly
more than each of the conventional elements. BASCOM, 827 F.3d at 1351.
Here, there is no technology improvement identified by Appellants in the
claims.
14
Appeal2017-006060
Application 13/213, 150
We also do not find Appellants' arguments concerning the use of
physical measurements and "perform[ing] transportation of such physical
products" to be an accurate representation of the claims to the extent that the
argument suggests improvements to any physical processes-as discussed
above, the steps are limited to data processes. App. Br. 20. The "specific
automated operations" being performed are steps limited to those performed
on data only. See id. at 19.
And although it may be true that the claims recite specific steps for
determining preferred packing for upselling that do not wholly preempt a
fundamental concept, that issue is not dispositive as to whether the claims
are patent eligible. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
13 71, 13 77 (Fed. Cir. 2015) ("While preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.").
We therefore sustain the Examiner's rejection of claims 2-21 under
§ 101. To the extent that our rationale differs from that of the Examiner, we
designate the rejection of claims 2-21 under 35 U.S.C. § 101 as a new
ground of rejection pursuant to 37 C.F.R. § 4I.50(b).
SUMMARY
We affirm the Examiner's rejection of claims 2-21 under 35 U.S.C.
§ 101. To the extent our rationale differs from that set forth by the Examiner,
we designate the rejection as a NEW GROUND OF REJECTION.
Section 4I.50(b) provides that "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Thus,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION,
15
Appeal2017-006060
Application 13/213, 150
Appellants must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as to the
rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the Examiner, in which event the
proceeding will be remanded to the Examiner; or
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED; 37 C.F.R. § 4I.50(b)
16