Ex Parte Narasimhamurthy et al

Patent Trial and Appeal Board

Jul 28, 2017

13103431 (P.T.A.B. Jul. 28, 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.
13/103,431 05/09/2011 Srinivas NARASIMHAMURTHY 11-129-US 9267
24197 7590 08/01/2017
KLARQUIST SPARKMAN, LLP
121 SW SALMON STREET
SUITE 1600
PORTLAND, OR 97204
EXAMINER
HARRINGTON, MICHAEL P
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
docketing @klarquist.com
AS CChair @klarquist. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRINIVAS NARASIMHAMURTHY,
DURGA PRASAD MUNI, and LOKENDRA SHASTRI
Appeal 2016-002923
Application 13/103,431
Technology Center 3600
Before CARL W. WHITEHEAD JR., MICHAEL M. BARRY, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-002923
Application 13/103,431
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—3, 5—9, 11—15, and 17—27, which are all of the pending claims. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
THE INVENTION
The application is directed to “methods, systems, and computer
readable code for establishing transshipment of a product between stocking
locations.” (Abstract.) Claim 1, reproduced below, exemplifies the subject
matter on appeal:
1. A computer-implemented method executed by one or more
computing devices for establishing transshipment of a product
between at least one first supplier in a plurality of first suppliers
and a second supplier, the method comprising:
transmitting, by at least one of the one or more computing
devices, a transshipment request from the second supplier to each
first supplier in the plurality of first suppliers requesting
transshipment of a product to the second supplier, the
transshipment request specifying a reward for transshipment of
the product, wherein transshipment comprises the transfer of
products between stocking or retail locations and wherein the
reward is payable from the second supplier to at least one of the
plurality of first suppliers upon transshipment of the product;
receiving, by at least one of the one or more computing
devices, a handshake request from a first supplier in the plurality
of first suppliers in response to the transshipment request,
wherein the first supplier is configured to transmit the handshake
request based at least in part on an assessment of the reward
1 Appellants identify Infosys Limited as the real party in interest. (See App.
Br. 1.)
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Application 13/103,431
amount, an inventory cost for holding the product, and a shortage
cost associated with a shortage of the product, and wherein the
handshake request includes a cost of transshipment of the
product and a quantity of product available for transshipment, the
quantity being determined based at least in part on a
transshipment willingness factor indicating the willingness of the
first supplier to transship the product;
accepting, at least one of the one or more computing devices,
the handshake request, thereby initiating transshipment of the
product from the first supplier to the second supplier and
payment of the reward and the cost of transshipment from the
second supplier to the first supplier.
THE REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Wilson et al.
Joao et al.
Rousso et al.
McBrayer et al.
Wu et al.
US 2002/0133387 Al
US 2004/0230601 Al
US 2008/0162305 Al
US 7,499,871 B1
US 2012/0054076 Al
Sept. 19, 2002
Nov. 18, 2004
July 3, 2008
Mar. 3, 2009
Mar. 1,2012
THE REJECTIONS
1. Claims 1, 7, and 13 stand rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
(See Final Act. 3—4.)
2. Claims 1—3, 5—9, 11—15, and 17—27 stand rejected under 35
U.S.C. § 101 “because the claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.” (Ans. 2—3.)
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3. Claims 1—3, 5—9, 11—15, 17, 18, 20, 22, and 24—27 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over McBrayer, Joao, and
Wu. (See Final Act. 6—14.)
4. Claims 6, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McBrayer, Joao, Wu, and Wilson. (See Final Act. 14—16.)
5. Claims 19, 21, and 23 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over McBrayer, Joao, Wu, and Rousso. (See Final Act. 16—
17.)
ANALYSIS
Section 112
The Examiner finds that the claims fail the written description
requirement due to a lack of support for two limitations: (A) “wherein the
first supplier is configured to transmit the handshake request based at least in
part on an assessment of the reward amount, an inventory cost for holding
the product, and a shortage cost associated with a shortage of the product”;
and (B) “the quantity being determined based at least in part on a
transshipment willingness factor indicating the willingness of the first
supplier to transship the product.” (Final Act. 4.)
Regarding A, the Examiner concludes that “Appellant has [only]
shown within their specification multiple embodiments for what a handshake
request is based on” (Ans. 4) such that, in the eyes of the Examiner, there is
no disclosure of a handshake request based on an assessment of all of (i) the
reward amount, (ii) an inventory cost for holding the product, and (iii) a
shortage cost associated with a shortage of the product. We do not agree.
For example, paragraph 61 describes the notation used in the description of
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Application 13/103,431
the system, including rh which is the reward; /?,, which is the inventory
holding cost; and pt which is the penalty cost per unit shortage. Example 1,
“No Fixed Cost of Replenishment,” described in paragraphs 87—95, includes
as parameters all of r„ /?,, and ph which we find sufficient to show
consideration of each in a transshipper’s assessment of the desirability of
issuing a handshake request.2
Regarding B, the Examiner finds “the Applicant has failed to provide
a written description for the handshake request including a quantity, which is
determined based on a transshipment willingness factor indicating the
willingness of the first supplier to transship the product.” (Final Act. 4.)
Appellants respond that paragraph 74 “describes the initiate handshake
request process and clearly indicates the use of the transshipment
willingness factor (twf) to determine the handshake quantity” and that
paragraph 93 states that “each individual transshipper can control their
transshipment quantity based on their risk-averseness, using the twf factor.”
(App. Br. 8—9.) We agree that this provides sufficient support for the
quantity being “determined based on a transshipment willingness factor.”
The Examiner’s finding that “the Appellant has explicitly disclosed that the
quantity is based on their risk-averseness, not directly the transshipment
willingness factor” (Ans. 5) is not consistent with the disclosure, which
2 See also Spec. 168 (“[E]ach transshipper should consider various factors
before initiating a handshake request including the opportunity of trans­
shipment to multiple parties, the reward opportunities from each, the local
inventory position/current demand/forecast, the probability of acceptance,
and other relevant information (i.e. inventory levels of all parties, forecasts
of other parties, etc.).”).
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explains that the twf factor is used to control the quantity (see Spec 193).
The risk-averseness is embodied in the twf factor.
For these reasons, we decline to sustain the Examiner’s rejections of
claims 1, 7, and 13 under 35 U.S.C. § 112.
Section 101
The Examiner rejects all of the claims under 35 U.S.C. § 101, finding
them “directed to a series of steps of transmitting a request for transshipment
to a plurality of providers from a receiver, the receiver receiving a
handshake request from providers with their response to the transmitted
request, and accepting the handshake request, by the receiver, thus creating a
contractual relationship between parties, thus an abstract idea.” (Ans. 2.)
The Examiner further finds “[t]he claims do not include additional elements
that are sufficient to amount to significantly more than the judicial exception
because the mere transmission and reception of information (transmitting
requests and receiving a handshake request) is deemed extrasolution
activity” and “the generic computer elements do not add significantly more
to the abstract idea as they would be routine and conventional in any
implementation of the abstract idea itself.” (Id. at 2—3.)
With respect to the presence of an “abstract idea” in the claims,
Appellants respond that (1) they are “unable to find any limitations in the
claim which either set forth or describe the Examiner’s alleged abstract idea
of a ‘contractual relationship between parties’”; (2) “the Examiner has not
set forth why or how the claims would preempt others from establishing a
contractual relationship”; and (3) “the recited steps cannot be performed
mentally or by a human using a pen and paper.” (Reply Br. 3.) These
arguments are not persuasive.
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First, we have little trouble finding the elements of a contractual
relationship in the claims, as they recite what amounts to a request for
proposals by a second supplier (the “transshipment request”), a proposal by
a first supplier (the “handshake request”), and acceptance of that proposal by
the second supplier (the “accepting”).
Second, 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). We are instructed that “[wjhere a patent’s claims are
deemed only to disclose patent ineligible subject matter under the
[A lice/Mayo] framework . . . , preemption concerns are fully addressed and
made moot.” Id.
Third, we do not agree with Appellants that “the recited steps cannot
be performed mentally or by a human using a pen and paper” because “[t]he
claims explicitly recite, among other tangible aspects, that ‘transshipment
comprises the transfer of products between stocking or retail locations.’”
(Reply Br. 3.) The recited steps do not include physical shipment, instead
requiring only that transshipment be “initiated.” Likewise, the claims only
require “initiating” payment.3
As we find these arguments insufficient to show error, we agree with
the Examiner that the claims are directed to an abstract idea under the first
prong of the Mayo!Alice test.
3 We take no position on whether adding such physical steps to these claims
would render them patent eligible.
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Regarding the second Mayo!Alice prong, Appellants argue their
claims contain “significantly more” than the abstract idea because
conventional systems “employ[ed] a centralized protocol that required
group-level compliance,” where their claims, considered as a whole, recite a
decentralized system. (See Reply Br. 4.) As discussed below, we do not
find the art to teach or suggest a peer-to-peer transshipment system based on
rewards, as claimed. However, it is not sufficient that Appellants may be
claiming something new. The “significantly more” inquiry is into whether
the claims cover more than the abstract concept itself, not into whether the
abstract idea is a new one. See Alice Corp. Pty. v. CLS Banklnt’l, 134 S. Ct.
2347, 2357 (2014) (“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].”) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)). Here, the claims
are directed to the abstract idea of a system for requesting transshipment
proposals using a reward, and Appellants identify nothing else that would
render them patentably concrete.
Because we agree that Appellants claim an abstract idea not saved by
an inventive concept, we sustain the rejection of claims 1—3, 5—9, 11—15, and
17-27 under 35 U.S.C. § 101.
Section 103
As noted, the claims are directed to a system in which a “second
supplier” in need of inventory makes a transshipment request, sweetened
with a “reward,” to a “first supplier,” the first supplier responds with a
handshake request offering a quantity of inventory at a transshipment cost,
and the second supplier accepts the handshake request.
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The Examiner finds the claims obvious, concluding that McBrayer
teaches the majority of the claim limitations, that Joao teaches the reward,
and that Wu teaches transshipment. (See Final Act. 6—10.)
Appellants argue, inter alia, that Joao does not teach or suggest a
reward that is specified in the request transmitted to a supplier and paid to
the supplier upon acceptance of the handshake request. (See App. Br. 12—
13.) We agree.
Joao describes a method for facilitating shipping and, in particular a
method for “bringing together clients or other individuals or entities who or
which require shipping services . . . with providers of shipping services such
as truckers, transportation services, cargo transportation services, carrier
services, and/or delivery services.” (Joao 1131.) In paragraph 283, Joao
describes how the party needing shipping services can enter information
concerning its shipping needs, including the “desired price the client is
willing to pay for the shipment or delivery.” A centralized system then
attempts to match that information to available shippers. (Id. 1285.) Thus,
the price the Examiner identifies in Joao is a price a customer would like to
pay a shipper to purchase shipping services, not a fixed reward offered to
and payable to a supplier for a transshipment of inventory.4 Moreover, we
do not agree with the Examiner that the price in Joao, even assuming it was
paid to a supplier for inventory, would be “equivalent to the reward in the
Appellant’s claimed invention” (Ans. 8—9) because if the first supplier was
receiving full payment for the inventory (Joao contemplates full payment for
4 We note that the claims separately recite the “cost of transshipment of the
product,” which is included in the handshake request, not the transshipment
request.
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the shipping services), it would be a purchase, not a reward for
transshipment.
Because we agree with Appellants that the combination does not teach
or suggest a transshipment request from second supplier to a plurality of first
suppliers that includes a reward payable upon acceptance of a handshake
request, we decline to sustain the rejection of claims 1—3, 5—9, 11—15, and
17—27 under 35 U.S.C. § 103, each of which includes such limitations.
DECISION
The rejection of claims 1, 7, and 13 under 35 U.S.C. § 112 is reversed.
The rejection of claims 1—3, 5—9, 11—15, and 17—27 under 35 U.S.C. § 101 is
affirmed. The rejections of claims 1—3, 5—9, 11—15, and 17—27 under 35
U.S.C. § 103 are reversed.
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).
AFFIRMED5
5 Because we affirm at least one ground of rejection with respect to each
claim on appeal, the Examiner’s decision rejecting claims 1—3, 5—9, 11—15,
and 17—27 is affirmed. See 37 C.F.R. § 41.50(a)(1).
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