Ex Parte McCaffrey

Patent Trial and Appeal Board

Jul 25, 2018

13028543 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/028,543 02/16/2011
23409 7590 07/27/2018
MICHAEL BEST & FRIEDRICH LLP (Mke)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
David McCaffrey
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.
063511-9169-00 8997
EXAMINER
SWARTZ, STEPHENS
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
mkeipdocket@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID McCAFFREY
Appeal2017-003882
Application 13/028,543
Technology Center 3600
Before JOHN A. EV ANS, JOYCE CRAIG, and JASON M. REPKO,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1 and 3-13, which are all of the claims
pending in this application. 2 We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Kalibrate Technologies
PLC. Br. 2.
2 Claims 2 and 14--21 have been canceled. Non-Final Act. 2.
Appeal2017-003882
Application 13/028,543
INVENTION
Appellant's invention relates to fuel price data generation. Abstract.
Claim 1 is illustrative and reads as follows:
1. A computer-implemented method of generating fuel
prices for each of a plurality of associated retail fuel sites, the
method being implemented in a computer comprising a
memory in communication with a processor, the method
compnsmg:
receiving, as input to the processor, a total volume fuel
sales target for said plurality of associated retail fuel sites, said
total volume fuel sales target for said plurality of associated
retail fuel sites providing a constraint for total fuel sales across
the plurality of associated retail fuel sites;
processing, by the processor, said total volume fuel sales
target for said plurality of associated retail fuel sites to generate
respective volume fuel sales targets for each of said plurality of
associated retail fuel sites, said respective volume fuel sales
targets providing a respective constraint for each of the plurality
of associated retail fuel sites, said processing comprising:
performing, by the processor, a first optimization
process, the first optimization process taking as input said
total volume fuel sales target and generating a first fuel
price for each of said plurality of associated retail fuel
sites, and
processing, by the processor, said generated first
fuel prices for said plurality of associated retail fuel sites
to generate said volume fuel sales targets for each of said
plurality of associated retail fuel sites;
performing, by the processor, a second optimization
process, the second optimization process taking as input said
volume fuel sales targets for each of said plurality of associated
retail fuel sites and generating second fuel prices for each of
said plurality of associated retail fuel site; and
updating fuel prices at an associated retail fuel site based
upon the generated second fuel prices.
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Appeal2017-003882
Application 13/028,543
REJECTION
Claims 1 and 3-13 stand rejected under 35 U.S.C. § 101 as directed to
patent ineligible subject matter. Non-Final Act. 6.
ANALYSIS
We have reviewed the rejections of claims 1 and 3-13 in light of
Appellant's arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made, but chose not to make, in the
Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv). Appellant's arguments
are not persuasive of error. We agree with and adopt as our own the
Examiner's findings of facts and conclusions as set forth in the Answer
(Ans. 2-12) and in the Action (Non-Final Act. 6-10) from which this appeal
was taken. We provide the following explanation for emphasis.
In rejecting method claim 1, the Examiner concluded the claim is
directed to an abstract idea of "updating fuel prices at a retail fuel site," a
concept involving human activity related to commercial practices. Non-
Final Act. 8. The Examiner also concluded additional elements recited in
claim 1 do not amount to significantly more than the abstract idea itself. Id.
at 8-10; see also Ans. 6-10.
Appellant argues the Examiner's analysis should have been
"streamlined" because the claims do not preempt every application of the
invention. Br. 7. Appellant also argues that claim 1 does not preempt all
ways of updating fuel prices at a retail fuel site. Id. at 8. Appellant contends
claim 1 is not directed to an abstract idea because claim 1 is similar to the
claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
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Application 13/028,543
(Fed. Cir. 2014). Id. at 11-12, 14. Appellant further argues the Examiner
provided insufficient evidence that claiml is directed to an abstract idea. Id.
at 12. Appellant also argues that, because claim 1 has not been rejected over
the prior art, it does not merely recite routine, conventional, or well-
understood functionality. Id. at 9.
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75-78 (2012)). The first step in the analysis is to "determine
whether the claims at issue are directed to one of those patent-ineligible
concepts," such as an abstract idea. Id. If 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 there are additional elements that "'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S. at 79,
77). 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. (brackets in original) (quoting
Mayo, 566 U.S. at 71-72). The prohibition against patenting an abstract
idea "'cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment' or adding 'insignificant
postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010)
( citation omitted).
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Appeal2017-003882
Application 13/028,543
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellant's method claim 1 is directed to an abstract idea of
"updating fuel prices at a retail fuel site." Non-Final Act. 8.
We are not persuaded by Appellant's argument that the claims should
be subject to streamlined analysis because they do not "tie up" all ways of
"'updating fuel prices at a retail fuel site."' Br. 7. Section 1 (B)(3) of the
2014 Interim Guidance on Patent Subject Matter Eligibility3 is available to
the Examiner as a discretionary streamlined§ 101 Mayo/Alice analysis.
Section 1 (B)(3) is explicit that "if there is doubt as to whether the applicant
is effectively seeking coverage for a judicial exception itself, the full
analysis should be conducted." The Examiner choosing to perform a full
§ 101 Mayo/Alice analysis is not an error.
Appellant's argument that the claims do not preempt all ways of
performing such updating is also not persuasive. See Br. 8. Preemption is
not the sole test for patent eligibility, and any questions on preemption in the
instant case have been resolved by the Examiner's Mayo/Alice analysis. As
our reviewing court has explained: "questions on preemption are inherent in
and resolved by the § 101 analysis," and, although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); cf OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
3 2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
74618, 74625 (Dec. 16, 2014); see also MPEP § 2106.06 [R-08.2017].
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Appeal2017-003882
Application 13/028,543
optimization in the e-commerce setting do not make them any less
abstract.").
We are also not persuaded by Appellant's argument that the Examiner
erred by not articulating "the reasons the Examiner believes that the claims
are directed to an abstract idea." See Br. 12. Appellant cites Ex parte
Poisson, Appeal 2012-011084 (PTAB Feb. 27, 2015), in support of the
contention that the Examiner was required to provide supporting evidence
for the conclusion that claim 1 is directed to an abstract idea. Br. 12.
Here, the Examiner made adequate findings of fact that the claims
here simply substitute generic, well-known computer components for a
human in performing price optimization and updating. See Ans. 6-8 ( citing
Fig. 3; Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1333 (Fed.
Cir. 2015)). A plain reading of the rejection and response to arguments in
the Answer shows the Examiner reviewed claim 1 as a whole with all its
limitations. See Non-Final Act. 8; Ans. 4--8. Appellant did not file a Reply
Brief, and has not persuasively rebutted the Examiner's findings in the
Answer. Moreover, we note that Poisson has not been designated as
precedential by the Board and, therefore, we are not bound by it. See Patent
Trial and Appeal Board, SOP 2 (rev. 9): Publication of opinions and
designation of opinions as precedential, informative, representative, and
routine, p. 4 (Sept. 22, 2014),
https://www.uspto.gov/sites/default/files/documents/sop2-revision-9-dated-
9-22-2014.pdf ("Every Board opinion is, by default, a routine opinion until it
is designated as precedential or informative ... A routine opinion is not
binding authority."). Nevertheless, we have reviewed Poisson but do not
consider it to be pertinent to the issue in this appeal.
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Application 13/028,543
We agree with the Examiner that the claims here, unlike those in DDR
Holdings, do not recite limitations that are "necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." DDR Holdings, 773 F.3d at 1257. The
Specification makes clear that the recited physical components merely
provide a generic environment in which the computer executable
instructions that carry out the described processes and methods. Ans. 6;
Spec. 5:26-30, 12:23-13:9, Fig. 3. "[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR Holdings, 773 F.3d at 1256.
Continuing with the second step of the Alice inquiry, we find nothing
in claim 1 that adds anything "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 134 S. Ct. at 2357.
Appellant contends that some inventive concept arises from the
ordered combination of steps because "the claims recite determining prices
using two optimization processes to generate two sets of prices, where one
set of prices is used as input to generate the other set of prices." Br. 14.
Appellant, however, has not persuasively explained why those are not
ordinary steps in data processing, or why they are not recited in an ordinary
order. We are similarly unpersuaded by Appellant's argument that claim 1
is like the claims in DDR Holdings because claim 1 specifies "how
particular inputs are used to generate prices and how intermediate prices are
used to generate final prices." See id. No technological advance is evident
in the present invention, and Appellant does not identify any problem
particular to computer networks or the Internet that claim 1 allegedly
overcomes. To the contrary, rather than address a technical problem, the
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Application 13/028,543
method of claim 1 is used only to solve the business problem of optimizing
and updating retail fuel site prices. See Ans. 8, 10-11.
We also disagree that the absence of a prior art rejection is indicative
of error in the Examiner's§ 101 analysis. See Br. 9. Here, the Examiner
made explicit factual findings with regard to generic computer elements and
well-understood, routine, and conventional computer functionality recited in
the claims. See Ans. 6-8.
Because claim 1 is directed to a patent-ineligible abstract concept and
does not recite something "significantly more" under the second prong of the
Alice analysis, we sustain the Examiner's 35 U.S.C. § 101 rejection of claim
1, as well as the 35 U.S.C. § 101 rejection of grouped claims 3-13, not
argued separately. See Br. 14.
DECISION
We affirm the decision of the Examiner rejecting claims 1 and 3-13.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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