Ex Parte Narayan et al

Patent Trials and Appeals Board

Apr 17, 2019

12852109 - (D) (P.T.A.B. Apr. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/852,109 08/06/2010 Rajesh Narayan
34018 7590 04/19/2019
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
072031.75US1 3142
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/19/2019 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):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJESH NARAYAN, HERNAN MUJICA, and
RAJESH S. VARIKAT
Appeal2018-002360 1
Application 12/852,109
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 1-10 and 34--44.
We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to a "system for providing retail store
information." Spec. ,r 1.
1 The Appellants identify Home Depot Product Authority, LLC, and
The Home Depot, Inc., as the real parties in interest. Appeal Br. 3.
Appeal2018-002360
Application 12/852,109
Independent claim 1 is illustrative:
1. A method, comprising:
scanning newly delivered products with a mobile device
that includes a scanner and that is held by a home improvement
retail store associate who is located in a home improvement retail
store that has hardware, lighting, flooring, garden, paint,
plumbing, and electrical departments;
updating, via the mobile device, inventory data based on
the newly delivered product data;
displaying a plurality of icons on the mobile device,
wherein at least one of the plurality of icons provides home
improvement retail store information if selected, wherein the
mobile device is configured to:
display the inventory data to the home improvement retail
store associate in response to the selection of at least one of the
plurality of icons, wherein the inventory data are sortable by each
of home improvement retail store, department, class, subclass,
and store-keeping unit (SKU), and are sortable by each of aisle
and bay for a single home improvement retail store, and wherein
the inventory data comprises one of the number of products
available in the home improvement retail store and the number
of products available in multiple home improvement retail
stores;
display sales data to the home improvement retail store
associate in response to the selection of at least one of the
plurality of icons, where the sales data are sortable by each of
home improvement retail store, department, class, subclass and
SKU, and are sortable by each of aisle and bay for a single home
improvement retail store, and wherein the sales data comprises
one of sales history of the home improvement retail store and
sales history of multiple home improvement retail stores;
display a graphical user interface that displays a first home
improvement retail store's net sales amount and a rank of the first
home improvement retail store's net sales amount compared to
net sales amounts of other home improvement retail stores,
wherein the graphical user interface also displays a total
inventory value for the first home improvement retail store and a
rank of the total inventory value for the first home improvement
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retail store compared to total inventory values of other home
improvement retail stores; and
receiving input from the home improvement retail store
associate to display home improvement retail store information.
The Examiner rejects claims 1-10 and 34--44 under 35 U.S.C. § 101
as directed to ineligible subject matter in the form of abstract ideas.
The Examiner rejects claims 1, 2, 4, and 10 under 35 U.S.C. § I03(a)
as unpatentable over Fowler (US 2010/0138280 Al, published June 3,
2010), Fowler Application (US 60/245,357, filed Nov. 2, 2000) ("Fowler
Provisional"), Stone et al. (US 2005/0203809 Al, published Sept. 15, 2005)
("Stone"), Melucci et al. (US 2006/0095347 Al, published May 4, 2006)
("Melucci"), and Weiler et al. (US 2008/0120206 Al, published May 22,
2008) ("Weiler").
The Examiner rejects claim 3 under 35 U.S.C. § I03(a) as
unpatentable over Fowler, Fowler Provisional, Stone, Melucci, Weiler, and
Carver (US 2005/0261975 Al, published Nov. 24, 2005).
The Examiner rejects claims 5-7 and 9 under 35 U.S.C. § I03(a) as
unpatentable over Fowler, Fowler Provisional, Stone, Melucci, Weiler, and
Storm (US 2007/0208612 Al, published Sept. 6, 2007).
The Examiner rejects claims 34, 35, 37, and 43 under 35 U.S.C.
§ I03(a) as unpatentable over Fowler, Fowler Provisional, Stone, Melucci,
Faris et al. (US 2010/0138264 Al, published June 3, 2010) ("Faris"), and
Weiler.
The Examiner rejects claim 8 under 35 U.S.C. § I03(a) as
unpatentable over Fowler, Fowler Provisional, Stone, Melucci, Weiler,
Storm, and Carver.
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Application 12/852,109
The Examiner rejects claim 36 under 35 U.S.C. § 103(a) as
unpatentable over Fowler, Fowler Provisional, Stone, Melucci, Faris,
Weiler, and Carver.
The Examiner rejects claims 38--40, 42, and 44 under 35 U.S.C.
§ 103(a) as unpatentable over Fowler, Fowler Provisional, Stone, Melucci,
Faris, Weiler, and Storm.
The Examiner rejects claim 41 under 35 U.S.C. § 103(a) as
unpatentable over Fowler, Fowler Provisional, Stone, Melucci, Faris,
Weiler, Storm, and Carver.
We AFFIRM.
ANALYSIS
Patentable subiect matter
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
ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. 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. Alice, 573 U.S. 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 id. 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
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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, 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, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n. 7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); 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
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("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
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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, 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]erelyrequir[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. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first 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); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP2 § 2106.05(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 § 2106.05(d)); or
2 Manual of Patent Examining Procedure.
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( 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 Guidance.
Independent claim 1 recites "scanning newly delivered products with
a mobile device," "updating ... inventory data," and "displaying a plurality
of icons," where the icons are configured to, if selected, "display the
inventory data ... sales data ... a graphical user interface that displays ...
net sales amount and a rank ... total inventory value ... and a rank," "and
receiving input ... to display ... information." As such, independent claim
1 recites scanning, updating, displaying, and receiving information. The
remainder of the claim language restricts who the user of the mobile device
is, and specifies the data updated and displayed.
Of the scanning, updating, displaying, and receiving information
limitations, however, in this portion of the analysis, we do not need to
consider further the "scanning," "displaying," and "receiving" limitations.
The Specification describes that "[i]nventory data may be collected using a
scanner that is part of a mobile device." Spec. ,r 20. We construe the
"scanning" step of claim 1, therefore, as a data input step. As such, it
represents insignificant extra-solution activity. This is also true of the
second "receiving" step as well. See In re Bilski, 545 F.3d 943, 963 (Fed.
Cir. 2008) (en bane), aff'd sub nom Bilski v. Kappas, 561 U.S. 593 (2010)
(characterizing data gathering steps as insignificant extra-solution activity).
Further, the displaying of information is merely insignificant post-solution
activity. See Bilski v. Kappas, 561 U.S. at 610-11 ("Flook stands for the
proposition that the prohibition against patenting abstract ideas 'cannot be
circumvented by attempting to limit the use of the formula to a particular
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technological environment' or adding 'insignificant postsolution activity."')
(quoting Diehr, at 191-92).
Thus, we are only left with limitations reciting the updating of
inventory data, with no meaningful steps outside that scope. Updating
records is a mental process, in that the recited observation ( e.g., viewing the
new data) and evaluation (e.g., replacing old data with new data) are such
that they can be practically performed in the human mind, and certainly with
pencil and paper. Additionally, updating inventory records, as recited, is an
activity or behavior associated with sales, in that any business dealing in
goods must keep an inventory record, and must update that record when
goods are bought and sold from the inventory. This is a fundamental
economic practice, in that it cannot be questioned that this is a long-
prevalent and established business practice. Accordingly, independent claim
1 recites both a mental process, and one of certain methods of organizing
human activity in the form of (a) sales activity and behavior and (b) a
fundamental economic practice.
Independent claim 5 recites a method similar to independent claim 1,
different only in the data displayed, and thus also recites an abstract idea.
Independent method claim 34 recites substantially similar steps as
claim 1, and recites an abstract idea for the same reasons as claim 1.
Dependent claims 2-8 and 3 5--41 limit the nature of the data displayed.
Dependent claims 9, 10, 42, and 43 further recite limits on where a request is
made for data, and how the data is received. These steps do not alter the
nature of the claims.
The other inquiries under the Guidance, which concern "integrating
into a practical application," do not persuade us otherwise. The method does
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not concern an improvement to a technology, because the method utilizes a
general-purpose "mobile device" for scanning and displaying data, which is
not an improvement to the technology itself. See MPEP § 2106.05(a). In
other words, the method merely implements a method to receive and display
information on general purpose computer device that is described only as
being able to send and receive and display data, which are basic computer
functions. Spec. ,r 15. This is indistinguishable from merely providing
instructions to apply the method on a general purpose computer. See MPEP
,r 2106.05(f). All the claim essentially does is tie the use of computers to a
particular environment to receive and display data. See id. § 2106.05(h).
Because the steps involve general purpose computer operations, the method
does not represent a "particular machine," or transform a physical object.
See MPEP § 2106.05(b }-( c ). The claimed method thus does not "integrate
the abstract idea into a practical application."
Given that, the next step is determining whether the claimed method
includes a step that is not well-understood, routine, or conventional. See
§ 2106.05(d). The steps of receiving data by scanning, displaying icons for
selection, and displaying data in response to a selection, are well-known,
routine, and conventional. See Mayo, 566 U.S. at 79. For example,
inventory data is collected using a mobile device's scanner (Spec. ,r 20),
stored in memory (Spec. ,r 21 ), and data is displayed on a graphical user
interface (Spec. ,r,r 23-28) after a request is sent to a server where data is
stored (Spec. ,r 29). See In re Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower
construction of the terms 'processing,' 'receiving,' and 'storing,' discussed
below, those functions can be achieved by any general purpose computer
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without special programming."). As to the data operated upon, "even if a
process of collecting and analyzing information is 'limited to particular
content' or a particular 'source,' that limitation does not make the collection
and analysis other than abstract." SAP Am. Inc. v. InvestPic LLC, No. 2017-
2081, 2018 WL 2207254, at *5 (Fed. Cir. May 15, 2018).
We thus find nothing in claims 1-10 and 34--43 which transforms the
abstract ideas into eligible subject matter.
Independent claim 44 recites a system comprising a server, point of
sale device, and mobile device that performs the same method as claim 1.
As the Federal Circuit has made clear "the basic character of a process claim
drawn to an abstract idea is not changed by claiming only its performance by
computers, or by claiming the process embodied in program instructions on
a computer readable medium." See CyberSource, 654 F.3d 1366, 1375-76
(citing In re Abele, 684 F.2d 902 (CCPA 1982)). Therefore, claim 44 is also
directed to an abstract idea.
We are not persuaded by the Appellants' argument that in claim 44
there are "specific hardware elements" that provide "significantly more" to
transform the abstract idea into eligible subject matter. Appeal Br. 16; see
also Appeal Br. 1 7. As we note above, these are general purpose computer
elements that do not significantly alter the abstract idea analysis.
The Appellants also argue the claims recite elements that "transform
aspects of the physical world into usable data, and thus provide a technical
solution to the technical problem of how to maintain up-to-date, and useful,
electronic inventory records." Appeal Br. 17. Nothing, however, is
transformed from physical to data, as no physical elements cease to exist in
the claims after any transformation to data.
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We are not persuaded by the Appellants' argument that the claims
reciting of displaying sortable data is "significantly more" that does not "tie
up" the concept of displaying information. Appeal Br. 17; see also Reply
Br. 3. The displaying of information in the claims, however, is just
insignificant output after the updating of the inventory information. Bilski,
561 U.S. at 610-11.
The Appellants have not shown error in the Examiner's rejection.
Thus, we sustain the rejection of claims under 35 U.S.C. § 101 as directed to
abstract ideas.
Obviousness Reiection of Claims 1. 2. 4. and 10
We are not persuaded by the Appellants' argument that the prior art
cited fails to disclose the use of icons to display information, at least because
of shortcomings in the disclosure of the Fowler Provisional, which allegedly
discloses icons only in the context of development of an application, not in
the application itself. Appeal Br. 18-20; see also Reply Br. 3-5. Stone
discloses the use of icons to present selectable content to display, as claimed.
Stone ,r 85.
We are not persuaded by the Appellants' argument that the prior art
cited fails to disclose the display of "sortable" data. Appeal Br. 20-21.
Fowler disclose the use of a "database" (Fowler ,r 62) and data that is sorted
(Fowler ,r 75), thus meeting the claim language.
The Appellants also argue that the Examiner articulates "motivations
for combining the Fowler Publication with each of the other four references
individually, the Office Action does not articulate any motivation, supported
by a rational underpinning, for combining all five references together in the
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combination proposed." Appeal Br. 21; see also Reply Br. 5. The
Examiner, as the Appellants noted, articulates a rationale for each
combination of references. See,for example, Final Act. 6-10. The Federal
Circuit has stated that "rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006),
(cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007)). The Examiner has thus met the burden by providing the reasoning
provided, with adequate rational underpinnings, and the Appellants do not
challenge either the reasonings or underpinnings with any particularity.
Because the Appellants have not shown error, we sustain the rejection
of claims 1, 2, 4, and 10 under 35 U.S.C. § 103(a).
Obviousness Reiections of Claims 5-8 and 38-41
Dependent claims 5 and 3 8 recite displaying forecast data, where the
sales forecast is calculated by the formula (mi/mo) x n, where n is sales data
that has been recently collected over a period of time, mo is sales data from
one year prior over the same period of time, and where m1 is sales data from
last year for the same period of time directly following m0•
The Appellants argue that Storm extrapolates recent trends into sales
predictions, which is in contrast with the claimed method of calculating a
forecast using "a year-over-year analysis, using the same month from the
prior year, and the month before that, do forecast sales for the current
month." Appeal Br. 22.
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The Examiner cites paragraphs 6 and 7 of Storm (Final Act. 13), and
argues "the technique taught by Storm -predicting sales from a derivative or
rate of change in sales over time - could be applied in any time period."
Answer 9.
Storm discloses a method of determining the end of a fad, by using
derivatives of sales to determine an immediate trend. Storm ,r,r 4--6. Storm
fails to disclose comparing sales to a period from a prior year, because
Storm is concerned only with present trends.
We thus agree with the Appellants, and as a result, we do not sustain
the rejection of dependent claim 5, nor of dependent claims 6 and 7 that
depend from dependent claim 5. We also do not sustain the rejection of
dependent claim 8, which also depends from dependent claim 5, because the
Examiner has not established on the record that Carver remedies the
deficiencies of Storm. For the same reasons, we also do not sustain the
rejections of dependent claims 3 8--41.
Obviousness Reiections of Claims 3. 9. 34-37. and 42-44
The Appellants argue the rejections of claims here only by reference
to the arguments advanced for claim 1. Appeal Br. 21-25. We sustain the
rejections, therefore, for the same reasons as claim 1, above.
DECISION
We AFFIRM the rejection of claims 1-10 and 34--44 under 35 U.S.C.
§ 101.
We AFFIRM the rejections of claims 1--4, 9, 10, 34--37, and 42--44
under 35 U.S.C. § 103(a).
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We REVERSE the rejections of claims 5-8 and 3 8--41 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a)( 1 )(iv).
AFFIRMED
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