Ex Parte Musgrove et al

Patent Trials and Appeals Board

Jul 8, 2019

11702662 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/702,662 02/06/2007
128144
RimonPC
7590
One Embarcadero Center
Suite 400
San Francisco, CA 94111
07/10/2019
FIRST NAMED INVENTOR
Tim Musgrove
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.
10-372-US 8487
EXAMINER
MILLER, ALAN S
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
eofficeaction@appcoll.com
docketing.rimonlaw@clarivate.com
patentdocketing@rimonlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIM MUSGROVE, STEVE KRAUSE, HOW ARD BURROWS,
and ROBIN HIROKO WALSH
Appeal2017-011189
Application 11/702,662 1
Technology Center 3600
Before JUSTIN BUSCH, LINZY T. McCARTNEY, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-3, 6, 9-32, 35, 38-58, and 61-63, which
constitute all claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 Appellants identify CBS Interactive Inc. as the real party in interest. App.
Br. 2.
Appeal2017-011189
Application 11/702,662
BACKGROUND
The Claimed Invention
The invention relates to e-commerce, and in particular, "cross-sell
merchandising." Spec. ,r 3. According to the Specification, "[ c ]ross-selling
involves encouraging customers to buy additional, complementary, or
related accessories or products during or just after their purchase of a
primary, or 'main,' product." Id. Cross-selling is particularly important in
e-commerce (i.e., online) because, according to the Specification, online
shopping provides customers with immediate price-comparison tools which
"drive[s] prices down to near-zero profit margins for the main product." Id.
Retailers, therefore, "must then attempt to make profit ... on the cross-sell
items." Id. The present invention, accordingly, is directed to "the
processing of product-related data[] and ... automated selection of, and
generation of data for, products that are associated with a main product." Id.
Claims 1, 30, and 63 are independent. Claim 1, reproduced below, is
illustrative of the invention and the subject matter in dispute:
1. A method executed by one or more computing devices
for processing product data, the method comprising:
identifying, by at least one of the one or more computing
devices, a usage scenario associated with a main product,
wherein the usage scenario comprises information describing at
least one of a purpose of the main product and an intended use
of the main product;
receiving, by at least one of the one or more computing
devices, identifiers for a plurality of allied product records
corresponding to allied products of the main product, wherein
each allied product record in the plurality of allied product
records has one or more attributes and wherein the plurality of
allied product records are stored in memory;
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Application 11/702,662
applying, by at least one of the one or more computing
devices, a comparison function comparing individual attributes
of each allied product record in the plurality of allied product
records stored in memory and the information describing at
least one of the purpose of the main product and the intended
use of the main product, wherein the comparison function flags
any allied product records which have an attribute that is
incompatible with the information describing at least one of the
purpose of the main product and the intended use of the main
product for removal from memory and wherein the comparison
function further stores in memory a point value assigned to
each compared attribute of each of the allied product records
which have not been flagged, each point value being stored in
association with a corresponding allied product record;
removing, by at least one of the one or more computing
devices, the flagged allied product records from the plurality of
allied product records stored in memory to generate a filtered
set of allied product records;
computing, by at least one of the one or more computing
devices, a scalar score for each allied product record in the
filtered set of allied product records by summing each point
value stored in association with that allied product record and
assigned to each attribute of that allied product record;
ranking, by at least one of the one or more computing
devices, in a ranked list of allied products, allied products
corresponding to the filtered set of allied product records based
at least in part on the scalar score of each allied product record;
and
determining, by at least one of the one or more
computing devices, an optimized list of allied products by
applying at least one rule to the ranked list of allied products.
App. Br. 2-3 (Claims Appendix) ( emphases added).
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Application 11/702,662
The Rejection on Appeal
Claims 1-3, 6, 9-32, 35, 38-58, and 61-63 are rejected under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act.
7-11.
DISCUSSION
We have reviewed the Examiner's rejection in light of Appellants'
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Briefs are deemed to be waived. See 37 C.F.R.
§ 41.37(c)(l)(iv). On the record before us, we are not persuaded the
Examiner has erred. We adopt as our own the findings and reasons set forth
in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following for highlighting and emphasis.
The Examiner determined that the claims constitute ineligible subject
matter because they are directed to the abstract idea of "cross-selling
products" and "do not include additional elements that are sufficient to
amount to significantly more than the judicial exception." Final Act. 7-8
(citing Alice Corp. v. CLS Bank lnt'l, 573 U.S. 208,217 (2014), which sets
forth the two-step framework "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts"). The Examiner further noted that
the computer elements of the claims "are recited at a high level of generality
[and] provide conventional computer functions," and that the information-
gathering and analysis recited in the claims did not "change [the
information's] character as information." Final Act. 7-8 (emphasis added).
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Appellants argue the Examiner erred because the Examiner has not
"identified any ... abstract idea" and that the rejection's "paraphrasing
overlooks many of the recited claim features." App. Br. 6-7. Specifically,
Appellants highlight the "comparison function" recited in claim 1, which
requires "( 1) comparing attributes of allied products with usage scenarios of
the main product, (2) flagging allied products with incompatible attributes
for removal, and (3) assigning a point value to each compared attribute of
each of the allied products which have not been flagged." Id. at 7.
Appellants further argue that, even if claim 1 includes an abstract idea, it
recites limitations that are "significantly more than the [ alleged] abstract
idea," reflected in a variety of advantages (namely, automation and
scalability) realized from the invention. Id. at 14--20.
After the briefs were filed and Answer mailed in this case, the USPTO
published "Revised Subject Matter Eligibility Guidance" synthesizing case
law and providing agency instruction on the application of§ 101. USPTO 's
January 7, 2019, 2019 Revised Patent Subject Matter Eligibility Guidance
84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "Guidance"). Under the
Guidance, we must look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) ("Step 2A, Prong One")2; and
2 The Guidance refers to "Step One" as determining whether the claimed
subject matter falls within the four statutory categories identified by 35
U.S.C. § 101: process, machine, manufacture, or composition of matter.
This step is not at issue in this appeal.
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(2) additional elements that integrate the judicial exception into
a practical application (see MPEP §§ 2106.05(a}-(c), (e}-(h))
("Step 2A, Prong Two").
See 84 Fed. Reg. at 54--55.
Only if a claim recites a judicial exception and 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 § 2106.05(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 id. at 56 ( collectively "Step 2B").
We begin our de nova review with Appellants' claim 1. We agree
with the Examiner's determination that claim 1 recites an abstract idea,
namely, a fundamental economic practice. See Guidance at Section III
( describing Step 2A, Prong One). Claim 1 recites a fundamental economic
practice because each of the recited steps describes a basic aspect of cross-
selling or cross-marketing related products to a consumer. The first steps in
cross-selling related products are determining characteristics of both the
main product and "allied" product, and claim 1 begins by reciting these steps
(i.e., "identifying ... information describing ... a purpose ... and .. .
intended use of the main product," and receiving "identifier[] for ... allied
product[ s] [ describing their] attributes"). App. Br. 2. The next step in cross-
selling is to determine, among all of the possible allied products to
recommend to sell with the main product, which one(s) constitute(s) the best
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match. Claim 1 recites this in its "applying," "removing ... to generate a
filtered set," "computing ... a scalar score," "ranking," and "determining
... an optimized list" steps. Id. Essentially, these steps establish a ranked
list of products to cross-sell based upon a comparison of product attributes.
See supra.
Like the concept of hedging in Bilski v. Kappas, 561 U.S. 593 (2010)
and the concept of intermediated settlement in Alice, the concept of cross-
selling or cross-marketing related products is a practice long prevalent in our
system of commerce. See, e.g., Alice, 573 U.S. at 216; cf Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (finding that
tailoring content provided to a user based on other information, e.g.,
"present[ing] a commercial for children's toys during early morning cartoon
programs but beer during an evening sporting event," was long-prevalent).
Accordingly, we conclude that claim 1 recites a fundamental economic
practice, which is one of certain methods of organizing human activity
identified in the Guidance, and thus an abstract idea.
We tum next to Step 2A, Prong 2 of the Guidance, which instructs
that if the claim "as a whole" integrates the abstract idea into a "practical
application," it is patent eligible. Improving the functioning of a computer
can reflect integration of an idea into a "practical application." Guidance
Sect. III. Appellants argue that, like the claims in McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016), Appellants'
claim 1 is "directed to a combined order of specifically recited operations to
provide improved operation of a computer." Reply Br. 4. Similarly,
Appellants argue that claim 1 includes the "manipulation of data structures
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... to allow the computing system to solve a problem." Id. at 5 (citing
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016)).
Appellants do not explain, however, and we do not discern, how the
present invention is like the one in McRO or how it manipulates data
structures as in Amdocs. 3 The claims in M cR O recited a "specific ...
improvement in computer animation" using "unconventional rules that
relate[d] sub-sequences of phonemes, timings, and morph weight sets."
McRO, 837 F.3d at 1302---03, 1307---08, 1314--15. In McRO, "the
incorporation of the claimed rules, not the use of the computer," improved
an existing technological process. Id. at 1314. In contrast to the claims in
McRO, Appellants' claim 1 does not improve an existing technological
process. See Alice, 573 U.S. at 223 (explaining that "the claims in Diehr
were patent eligible because they improved an existing technological
process"). Instead, claim 1 concerns a method for "processing product data"
resulting in a list of "allied products" for cross-marketing. App. Br. 2-3;
Abstract.
Appellants also do not direct us to any evidence that any of the
claimed steps correspond to unconventional rules, transform or reduce an
element to a different state or thing, or otherwise integrate the idea into a
practical application. See App. Br. 9-10; Reply Br. 5. Rather, claim 1
recites a series of steps in which product data (both "main product" and
"allied product") is "process[ ed]" to generate an optimized list of product
pairings or recommendations. App. Br. 2-3. Reciting a result-oriented
solution that lacks any details as to how the computer performed the
3 Appellants' argument on this point consists of little more than a rote
recitation of case holdings. Reply Br. 4--5.
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modifications is the equivalent of the words "apply it." Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341--42 (Fed. Cir. 2017)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1356 (Fed.
Cir. 2016) ( cautioning against claims "so result focused, so functional, as to
effectively cover any solution to an identified problem")); see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011) (mere data gathering does not make a claim patent-eligible). The data
gathering and "processing" steps in claim 1 do not add meaningfully to the
recited fundamental economic practice.
Finally, under Step 2B of the Guidance we must evaluate whether
claim 1 recites any additional limitation that is not well-understood, routine
[or] conventional. We discern none. Claim 1 recites a series of data
gathering, processing and output steps, all of which are part of the
fundamental economic practice of online cross-selling. See supra. To the
extent any of the recited steps could be considered "additional" to the
abstract idea, all such steps are executed in a manner routinely and
conventionally expected of these elements (specifically, generic computing
elements performing in an expected manner). Spec. ,r 32 ("[d]ue to the
automated aspects of the present invention, embodiments may be
implemented on a computer system or other programmable processing
system capable of making repeated calculations or evaluations"); id. ,r 34
("the data ... may be stored on any type of storage device that enables
access to information, particularly by a computer system").
Moreover, any "automation" or any increase in processing speed in
the claimed method ( as compared to without using computers) comes from
the capabilities of the generic computer components, and not the recited
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process itself. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1095 (Fed. Cir. 2016) (citing Bancorp Servs., L.L.C. v. Sun Life Assurance
Co. of Can. (US.), 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.")); see also Intellectual Ventures I LLC v. Erie Indemnity Co., 711
F.App'x 1012, 1017 (Fed. Cir. 2017) (unpublished) ("Though the claims
purport to accelerate the process of finding errant files and to reduce error,
we have held that speed and accuracy increases stemming from the ordinary
capabilities of a general-purpose computer 'do[] not materially alter the
patent eligibility of the claimed subject matter."'). Like the claims in
FairWarning, the focus of Appellants' claim 1 is not on an improvement in
computer processors as tools, but on the abstract idea of online cross-selling
that uses generic computing components as tools to perform the abstract
idea. See FairWarning, 839 F.3d at 1095.
Accordingly, the Examiner did not err in concluding that claim 1 is
directed to ineligible subject matter. Appellants do not argue the remaining
claims separately. 37 C.F.R. § 4I.37(c)(l)(iv). We, therefore, sustain the
rejection of claims 1-3, 6, 9-32, 35, 38-58, and 61---63 under 35 U.S.C.
§ 101.
DECISION
We affirm the Examiner's decision rejecting claims 1-3, 6, 9-32, 35,
38-58, and 61---63.
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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. § 4I.50(f).
AFFIRMED
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