Ex Parte POPESCU

Patent Trial and Appeal Board

Oct 17, 2018

14097468 (P.T.A.B. Oct. 17, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/097,468 12/05/2013
74739 7590 10/19/2018
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
Catalin POPESCU
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.
20 ll -03 l 9USO 1 2999
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/19/2018 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):
patents@potomaclaw.com
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CATALIN POPESCU
Appeal2017-009016
Application 14/097 ,468
Technology Center 3600
Before MAHSHID D. SAADAT, BETH Z. SHAW, and
JOHN D. HAMANN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1, 3-8, 10-15, and 17-23, which
represent all the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
INVENTION
Appellant's invention is directed to a computer system that modifies
retail sales planning curves. Spec. , 1.
1 Throughout this Decision we have considered the Appeal Brief filed
December 12, 2016 ("App. Br."), the Reply Brief filed June 6, 2017 ("Reply
Br."), the Examiner's Answer mailed April 6, 2017 ("Ans."), and the Final
Rejection mailed July 20, 2016 ("Final Act.").
Appeal2017-009016
Application 14/097 ,468
Claim 1 is illustrative of the claims at issue and is reproduced below:
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to modify an input sales planning curve
comprised of a time series, the modifying comprising:
expanding the time series from an initial length time series to
an expanded length time series, the expanded length time series
comprising one or more missing values, wherein the time series
comprises a plurality of time periods and a value corresponding to
each of the time periods;
filling in the missing values using linear interpolation;
sampling the expanded time series by selecting a subset of the
expanded length time series values; and
dropping the values not selected during the sampling to
generate an output sales planning curve;
wherein the input sales planning curve comprises M periods,
and the output sales planning curve comprises N periods, the
expanded length time series comprising a length of (M - 1) x (N - 1)
+ 1.
REJECTION
The Examiner rejected claims 1-20 under 35 U.S.C. § 101 as directed
to non-statutory subject matter. Final Act. 2-8. After the Final Rejection,
Appellant canceled claims 2, 9, and 16, amended the claims, and added new
claims 21-23. Claims 1, 3-8, 10-15, and 17-23 are currently pending. See
Advisory Action dated October 12, 2016.
In the Advisory Action, the Examiner withdrew a rejection under
35 U.S.C. § 103, maintaining the§ 101 rejection as the only pending
rejection of all the pending claims (i.e., claims 1, 3-8, 10-15, and 17-23).
See Ans. 3.
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Application 14/097 ,468
CONTENTIONS AND ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence
produced. For at least the reasons discussed below, we agree with and adopt
the Examiner's findings and conclusions in the Final Action and Answer.
The Examiner determines the pending claims are directed to an
abstract idea of a managing a sales curve (i.e., to be used in planning or
forecasting). Final Act. 3, 7; Ans. 7. The Examiner also determines
additional elements recited in these claims do not amount to significantly
more than the abstract idea itself. Final Act. 7, 8; Ans. 8-12. According to
the Examiner, the claims require no more than implementing the abstract
idea on a computer. Final Act. 7, 8.
Appellant presents several arguments against the 35 U.S.C. § 101
rejection. App. Br. 2-9; Reply Br. 2-5. Appellant contends the claims are
not directed to an abstract idea and that the claims amount to significantly
more than an abstract idea. Id.
Appellant's arguments are unpersuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellant's arguments
supported by a preponderance of evidence. Ans. 3-12; see also Final Act.
2-13. As such, we agree with and adopt the Examiner's findings and
explanations provided therein. Id.
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 598-99 (2013)). The
"'abstract ideas' category embodies 'the longstanding rule that '[a]n idea of
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Application 14/097 ,468
itself, is not patentable."' Alice, 134 S. Ct. at 2354--2355 (quoting
Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
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." Id. at 2355 (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 77-80). 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). 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).
After undertaking the first step of the Alice inquiry, we agree with the
Examiner that Appellant's claims are directed to an abstract idea, as
explained by the Examiner. Final Act. 3-7. All the steps recited in
Appellant's claims are abstract processes of modifying data. Cf Elec.
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Application 14/097 ,468
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
("collecting information, analyzing it, and displaying certain results of the
collection and analysis" is abstract); In re Salwan, 681 Fed.Appx. 938, 941
(Fed. Cir. Mar. 13, 2017) (affirming the rejection under§ 101 of claims
directed to "storing, communicating, transferring, and reporting patient
health information," noting that "while these concepts may be directed to
practical concepts, they are fundamental economic and conventional
business practices"); Cyberfone Systems, LLC v. CNN Interactive Grp, Inc.,
558 F. App'x 988, 992 (Fed. Cir. 2014) (nonprecedential) ("using categories
to organize, store, and transmit information is well-established").
Appellant argues the claims as a group. See App. Br. 3-15.
Appellant contends that the Examiner erred in rejecting the claims under
35 U.S.C. § 101 because:
In comparing the alleged abstract idea of the pending claims to a
generic category of "mathematical relationships/formulas", the
Examiner is essentially performing an abstraction of the alleged
abstract idea, and generalizing the alleged abstract idea at such a high
level (i.e., mathematical relationships/formulas) that it no longer has
ANY relationship to the recited limitations. Under this type of
impermissible analysis, ALL abstract ideas will have been considered
to be identified by a court, and the required analysis from the PTO
guidance would be rendered meaningless. Further, the extent of the
Examiner's analysis appears to be that because the claims recite
algorithms or mathematics performed by a computer, the claims are
abstract, and there is no inventive concept to make the abstract idea
patent eligible.
App. Br. 5.
We disagree. Instead, we agree with the Examiner's determination
that "modify[ing] an input sales planning curve," is a mathematical
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Application 14/097 ,468
relationship. Contrary to Appellant's position, we conclude that the claim
solves a mathematical problem.
The second step of the Alice inquiry indicates that the limitations in
Appellant's claims do not add anything "significantly more" to transform
into a patent-eligible application the abstract concept of managing a sales
curve. Final Act. 7, 8; Ans. 11; see also Alice, 134 S. Ct. at 2357. We agree
with the Examiner that the computer limitations of claim 1 are not
"significantly more" than the abstract idea. Ans. 7. As recognized by the
Supreme Court, "the mere recitation of a generic computer cannot transform
a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134
S. Ct. at 2358; see id. at 2359 (concluding claims "simply instruct[ing] the
practitioner to implement the abstract idea of intermediated settlement on a
generic computer" are not patent eligible); see also Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir.
2013) ( claims reciting "generalized software components arranged to
implement an abstract concept [ of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer" are not patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a 'computer aided'
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible" (internal citation omitted)).
Appellant cites Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (2016) (App. Br. 7), but does not persuasively
explain why that case is similar to the present case. In Bascom, the court
determined that at the pleading stage and construed in favor of the
nonmovant:
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Application 14/097 ,468
The inventive concept described and claimed . . . is the
installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to
each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter
on the ISP server. BASCOM explains that the inventive concept
rests on taking advantage of the ability of at least some ISPs to
identify individual accounts that communicate with the ISP
server, and to associate a request for Internet content with a
specific individual account.
Id. at 1350 (emphasis added).
The rejected claims are unlike the claims of Bascom because they are
not directed to an "installation of a filtering tool at a specific location,
remote from the end-users, with customizable filtering features specific to
each end user." Id. at 1350. Nor do they "give[] the filtering tool both the
benefits of a filter on a local computer and the benefits of a filter on the ISP
server." Id. In fact, the pending claims do not even recite any "ISP server."
With regard to Appellant's argument that the pending claims are
patent eligible because there are no pending obviousness or novelty
rejections of the claims, (see App. Br. 6; Reply Br. 4), Appellant improperly
conflates the requirements for eligible subject matter(§ 101) with the
independent requirements of novelty(§ 102) and non-obviousness(§ 103).
"The 'novelty' of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a claim
falls within the§ 101 categories of possibly patentable subject matter."
Diamond v. Diehr, 450 U.S. 175, 188-89 (1981); see also Genetic Techs.
Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (stating that,
"under the Mayol Alice framework, a claim directed to a newly discovered
law of nature (or natural phenomenon or abstract idea) cannot rely on the
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Application 14/097 ,468
novelty of that discovery for the inventive concept necessary for patent
eligibility").
We have also carefully considered the Appellant's arguments
regarding preemption. See App. Br. 8. However, 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). Where claims
are deemed to recite only patent ineligible subject matter under the two-step
Alice analysis, as they are here, "preemption concen1s are fully addressed
and made moot." Id.
Because Appellant's claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of these
claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
DECISION
The decision of the Examiner to reject claims 1, 3-8, 10-15, and 17-
23 is affirmed.
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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