Ex Parte Rangarajan et al

Patent Trial and Appeal Board

Dec 27, 2018

13676842 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/676,842 11/14/2012
10782 7590 12/31/2018
Target Brands Inc.
1000 Nicollet Mall, TPS-3165
Minneapolis, MN 55403
FIRST NAMED INVENTOR
Bharath Rangarajan
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.
201201204 8763
EXAMINER
GUILIANO, CHARLES A
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
12/31/2018 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):
USPTO.Mail@target.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BHARATH RANGARAJAN and LISA ANNE MILLER1
Appeal2017-006704
Application 13/676,842
Technology Center 3600
Before JASON V. MORGAN, JOSEPH P. LENTIVECH, and
MICHAEL M. BARRY, Administrative Patent Judges.
BARRY, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 2, 4, 5, 7, 9, 10, 12-14, 16-18, and 25, which are all of the pending
claims. Final Act. l; see also App. Br. 22-34 (Claims App'x). We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The Appeal Brief identifies the Applicant, Target Brands, Inc., which is a
subsidiary of Target Corp., as the real party in interest (i.e., the Appellant).
App. Br. 3.
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Introduction
Appellant's application relates to "assortment pack[s]" that a vendor
may use to ship ordered products to a retail store. Spec. ,r 1. Specifically, as
Appellant summarizes, the "disclosure relates to techniques for determining
both the contents of assortment packs and the selection of one or more retail
stores to which a particular assortment pack is delivered." Spec. ,r 3.
A first set of a plurality of assortment packs that include
a plurality of different versions of an item to be sold at a
plurality of retail stores is determined based at least in part on
forecasted sales of the item at each of the plurality of retail
stores. Each retail store is associated with an assortment pack
based at least in part on the forecasted sales of the item at the
retail store such that the plurality of retail stores is grouped into
a plurality of clusters of retail stores. The distribution of the
different versions of the item of at least one of the plurality of
assortment packs is changed based at least in part on the
forecasted sales of the item at each retail store of the cluster of
retail stores with which the at least one of the plurality of
assortment packs has been associated.
Abstract.
Claims 1, 18, and 25 are independent. Claim 1, which is
representative of the claims on appeal, is shown here with three disputed
limitations in italics:
1 [.] A method comprising:
determining, with a computing device and based on a
first set of initial conditions, a first plurality of assortment packs
that include different versions of an item to be sold at a
plurality of retail stores, wherein each of the first plurality of
assortment packs includes a different distribution of the
different versions of the item;
for each retail store of the plurality of retail stores,
associating, with the computing device, the retail store with one
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of the first plurality of assortment packs based at least in part on
a comparison of the forecasted sales of the item at the retail
store and the distribution of the different version of the item
included in the assortment packs such that the plurality of retail
stores is grouped into a first plurality of clusters, and such that
each cluster of the first plurality of clusters is associated with a
different one of the first plurality of assortment packs;
for each cluster of the first plurality of clusters, changing,
with the computing device, the distribution of the different
versions of the item within the assortment pack associated with
the cluster based at least in part on the forecasted sales of the
item at each retail store associated with the cluster so as to
determine a second plurality of assortment packs;
for each retail store of the plurality of retail stores,
associating, with the computing device, the retail store with one
of the second plurality of assortment packs based at least in part
on the forecasted sales of the item at the retail store such that
the plurality of retail stores is grouped into a second plurality of
clusters, and such that each cluster of the second plurality of
clusters is associated with a different one of the second plurality
of assortment packs;
determining, with the computing device and based on a
second set of initial conditions, a third plurality of assortment
packs that include a plurality of different versions of the item to
be sold at the plurality of retail stores, wherein each of the third
plurality of assortment packs includes a different distribution of
the different versions of the item, and wherein the third
plurality of assortment packs is different than the first plurality
of assortment packs;
for each retail store of the plurality of retail stores,
associating, with the computing device, the retail store with one
of the third the plurality of assortment packs based at least in
part on a comparison of the forecasted sales of the item at the
retail store and the distribution of the different version of the
item included in the assortment packs such that the plurality of
retail stores is grouped into a second plurality of clusters of
retail stores, and such that each cluster of the third plurality of
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clusters is associated with a different one of the third plurality
of assortment packs;
for each cluster of the third plurality of clusters,
changing, with the computing device, the distribution of the
different versions of the item within the assortment pack
associated with the cluster based at least in part on the
forecasted sales of the item at each retail store associated with
the cluster so as to determine a fourth plurality of assortment
packs;
for each retail store of the plurality of retail stores,
associating, with the computing device, the retail store with one
of the fourth plurality of assortment packs based at least in part
on the forecasted sales of the item at the retail store such that
the plurality of retail stores is grouped into a fourth plurality of
clusters, and such that each cluster of the fourth plurality of
clusters is associated with a different one of the fourth plurality
of assortment packs;
wherein values for the first set of initial conditions are
different than values for the second set of initial conditions;
comparing, with the computing device, the second
plurality of assortment packs and the fourth plurality of
assortment packs; and
selecting, with the computing device, one of the second
plurality of assortment packs and the fourth plurality of
assortment packs that best fit the forecasted sales of the
plurality of retail stores based on the comparison.
App. Br. 22-24 (Claims App'x).
Rejections & References
Claim 13 stands rejected as indefinite under 35 U.S.C. § 112, second
paragraph. Final Act. 9.
Claims 1, 2, 4, 5, 7, 9, 10, 12-14, 16-18, and 25 stand rejected under
35 U.S.C. § 101 as directed to a judicial exception, e.g., abstract ideas,
without reciting significantly more. Final Act. 10-13.
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Claims 1, 2, 4, 5, 7, 9, 10, 12-14, 18, and 25 stand rejected under 35
U.S.C. § I03(a) as unpatentable overMcMains (US 2012/ 0179505 Al; July
12, 2012) and Ramnath Vaidyanathan, Retail Demand Management:
Forecasting, Assortment planning and Pricing, Publicly Accessible Penn.
Dissertations 434 (2011 ), available at https://repository.upenn.edu/
edissertations/434/ (last accessed Dec. 21, 2018) ("Vaidyanathan"). Final
Act. 14--29, 32-38.
Claim 16 stands rejected under§ I03(a) as unpatentable over
McMains, Vaidyanathan, Pelegrin (US 2006/0149634 Al; July 6, 2006), and
Drenth (US 2010/0222916 Al; Sept. 2, 2010). Final Act. 29-31.
Claim 17 stands rejected under§ I03(a) as unpatentable over
McMains, Vaidyanathan, Pelegrin, Drenth, and SAS Institute Inc.,
SAS/STAI® 9.2 User's Guide, 2d ed., Cary, NC (Sept. 2009) (available at
http://support.sas.com/documentation/cdl/en/statug/63033/HTML/default/
viewer.htm (last accessed Dec. 21, 2018). Final Act. 31-32.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions of reversible error. 2 We disagree with Appellant's conclusions.
Instead, as consistent with our discussion below, we adopt the Examiner's
findings and reasons as set forth in the Final Office Action from which this
appeal is taken and as set forth in the Answer. We highlight the following
for emphasis.
2 Arguments not made are waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
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1. The§ 112 Rejection
Appellant does not contest the merits of the § 112 indefiniteness
rejection. See App. Br. 13-14. Accordingly, we summarily affirm that
rejection. 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
2. The§ 101 Rejection
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 234 7
(2014), the Supreme Court reiterated the analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (2012), "for distinguishing patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at
2355. 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 eligible subject matter, the
inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1349 (Fed. Cir.
2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
2016).
In considering whether a claim is directed to an abstract idea, we keep
in mind that "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Accordingly, we look to whether the claim focuses on a specific
means or method that improves the relevant technology or is instead directed
to a result or effect that itself is the abstract idea and otherwise merely
invokes generic processes and machinery. See Enfzsh, 822 F.3d at 1336.
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
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and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 79, 78). 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."' Alice, 134 S. Ct. at 2355 ( citing Mayo, 566 U.S.
at 72-73).
We note the two steps of the Alice analysis "involve overlapping
scrutiny of the content of the claims," and the Federal Circuit has described
"the first-stage inquiry" as "looking at the 'focus' of the claims, their
'character as a whole,"' and "the second-stage inquiry (where reached)" as
"looking more precisely at what the claim elements add-specifically,
whether, in the Supreme Court's terms, they identify an 'inventive concept'
in the application of the ineligible matter to which (by assumption at stage
two) the claim is directed." Electric Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (citations omitted).
Here, the Examiner determines in the first step of the Alice analysis
that claim 1 is directed to "selecting product assortments to be sold at retail
stores based on the forecasted sales of the products. The idea of selecting
product assortments to be sold at retail stores based on the forecasted sales
of the products is a fundamental economic practice." Final Act. 10-11. In
step two, the Examiner determines the "computing device" limitations in
claim 1 "amount to no more than mere instructions to implement the idea on
a computer, and recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
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conventional activities previously known to the pertinent industry." Final
Act. 11.
Appellant contends the Examiner errs in both the Alice step one and
step two determinations. App. Br. 14--17.
A. Alice Step One
Appellant argues the Examiner errs in the Alice step one analysis
because claim 1 is "not directed to a judicial exception" (i.e., an abstract
idea). App. Br. 14. Appellant's step one argument is conclusory and
unpersuasive. Appellant does not explain how or why the abstract idea
identified by the Examiner is erroneous. The only technological feature
recited in claim 1 is "a computing device." We discern no error in the
determination claim 1 is directed to "selecting product assortments to be sold
at retail stores based on the forecasted sales of the products," which is an
abstract idea because it "is a fundamental economic practice." Final Act.
10-11. Accordingly, we tum to the second step of the Alice analysis.
B. Alice Step Two
Appellant argues claim 1 "as a whole recite[ s] specific limitations
other than what is well-understood, routine, and conventional in the field (as
described in detail below with respect to the rejection under 35 US.C.
§ 103(a))." App. Br. 15 (emphasis added) (further arguing claim 1 as a
whole is confined "to a particular useful application" and is "an
improvement in another technology or technical field").
This argument is unpersuasive. The question in the second step is not
whether a claimed element is novel or non-obvious, but rather whether the
implementation of the abstract idea involves "more than performance of
'well-understood, routine, [and] conventional activities previously known to
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the industry."' Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (alteration in original)
( quoting Alice, 134 S. Ct. at 2359). Here, there is no indication that the
implementation of the claimed steps requires anything other than generic
computing components performing routine and conventional computer
functions. 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." See Alice, 134 S. Ct. at 2358-59 (concluding
claims "simply instruct[ing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer" not patent eligible).
Appellant does not identify any evidence in the record that shows any
specialized computer or other technological components are required to
implement claim 1.
Appellant further argues that "although independent claim 1 may
recite generic computer components, such as a 'computing device,' those
components are able in combination and with the specifically recited claim
limitations to peiformfunctions that are not merely generic." App. Br. 15.
This argument is unpersuasive because the identified limitations do not,
alone or in combination, provide a technological improvement. See Enfzsh,
822 F.3d at 1335. Instead, we agree with the Examiner that those limitations
serve to narrow the abstract idea, and "reciting limitations that narrow the
recited abstract idea does not make the abstract idea non-abstract." Ans. 9
( citing 79 Fed. Reg. 74631; buySAFE Inc. v. Google, Inc., 765 F.3d 1350,
1355 (2014); July 2015 Update: Subject Matter Eligibility, p. 3 (available at
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The limitations Appellant identifies may be implemented in software,
but absent claim limitations that constitute an improvement to software
technology, software implementation of recited abstract ideas alone does not
constitute an "inventive concept." See, e.g., Accenture Global Servs., GmbH
v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013)
( determining claims that recite "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" to be patent ineligible).
Appellant also argues claim 1 "does not simply recite or attempt to
pre-empt the bald idea of 'selecting product assortments to be sold at retail
stores based on the forecasted sales of the products itself."' App. Br. 16
( quoting Final Act. 7). This argument is unpersuasive. As our reviewing
court has explained: "The Supreme Court has made clear that the principle
of preemption is the basis for the judicial exceptions to patentability" and
"[ f]or this reason, questions on preemption are inherent in and resolved by
the§ 101 analysis." Ariosa Diagnostics, Inc., v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354). Thus,
although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
Id.; 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 optimization in the e-commerce setting do not make them
any less abstract.").
Appellant further argues the identified "claim limitations are similar
to the claimed features of Example 3, and of claim 4 of Example 23, claim 2
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of Example 25, and Example 27 in the July 2015 Update: Subject Matter
Eligibility" (hereafter the "July 2015 Update"). App. Br. 16. We disagree.
The claims in Example 3 of the July 2015 Update are directed to
"generating a blue noise mask," which essentially is a mathematical
algorithm that constitutes a judicial exception akin to an abstract idea. The
July 2015 Update explains that the Example 3 claims recite "steps of
comparing the blue noise mask to a gray scale image to transform the gray
scale image to a binary image array and converting the binary image array
into a halftoned image," and, those steps recite significantly more ( or an
"inventive concept") because they constitute "improvements in the
technology of digital image processing." Similarly: (a) claim 4 of Example
23 recites significantly more than the abstract idea because the combination
of limitations "improves the functioning of the basic display function of the
computer itself' (i.e., a technological improvement); (b) claim 2 of Example
25 recites steps that specifically "improve the technical field of precision
rubber molding" (i.e., a technological improvement); and (c) the claim of
Example 27 recites steps for loading a computer's BIOS (Basic Input/Output
System) software that do not even require analysis under Alice steps one and
two because it is "self-evident" that the technological aspects of the claim
"would clearly amount to significantly more thyan any potential recited
exception." See July 2015 Update. Appellant does not explain how or why
claim 1 provides an analogous technological improvement. Appellant's
claim 1 is not analogous because it does not recite steps that provide a
technological improvement.
Appellant also argues the specific ("non-generic") limitations of claim
1 are significant for the reasons described in Appellant's Specification. App.
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Br. 16 ( citing and quoting Spec. ,r 18). This is unpersuasive. The
improvement described in the cited paragraph of Appellant's Specification is
"to minimize the costs associated with unsold items and lost sales
opportunities, reduction of one or both of which may, in tum, improve sales
and profit of the retailer." Spec. ,r 18. The described improvement is to the
idea of a business method, not to technology.
Accordingly, we sustain the § 101 rejection of claim 1. We also,
therefore, sustain the§ 101 rejection of claims 2, 4, 5, 7, 9, 10, 12-14, 16-
18, and 25, for which Appellant offers no separate arguments. See App. Br.
16-17; 37 C.F.R. § 4I.37(c)(l)(iv) (2016).
The§ 103(a) Rejection
Appellant argues the Examiner errs in finding McMains teaches or
suggests three different limitations of claim 1. See App. Br. 17-20; Reply
Br. 5-8. Appellant also argues the Examiner errs in determining an
ordinarily skilled artisan would have been motivated to combine the
teachings ofMcMains and Vaidyanathan. See Reply Br. 8-10.
A. First disputed limitation-"determining . .. a third plurality of
assortment packs ... "
Appellant contends McMains does not teach or suggest
determining ... a third plurality of assortment packs that
include a plurality of different versions of the item to be sold at
the plurality of retail stores, wherein each of the third plurality
of assortment packs includes a different distribution of the
different versions of the item, and wherein the third plurality of
assortment packs is different than the first plurality of
assortment packs,
as recited in claim 1, because
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McMains merely uses its "first ideal candidate packs"
from the all the stores and then reduces the number of candidate
packs until the maximum number is reached. That is, the end
resulting set of candidate packs in McMains are merely a subset
of the group of first ideal candidate packs, rather than a third
plurality of assortment packs.
App. Br. 18.
The Examiner responds that, as McMains reduces the number of
candidate packs in an initial set of first ideal candidate packs, the recited
"first plurality of candidate packs" reads on the initial set, and the "third
plurality of candidate packs" reads on the reduced set. See Ans. 12 (citing
McMains Fig. 5); see also id. at 11 (citing McMains ,rip 1-34, 45, 48--49,
Figs. 5---6). Appellant replies that "the process described in McMains does
not determine a completely different set of assortment packs (i.e., the 'third
plurality of assortment packs' as recited in claim 1) based entirely on a
different set of initial conditions." Reply Br. 6-7.
Appellant's argument is unpersuasive because it is not commensurate
with the scope of claim 1. Claim 1 does not require the first and third
pluralities to be "completely different" or "based entirely on a different set
of initial conditions," as argued. Claim 1 recites that "the third plurality of
assortment packs is different than the first plurality of assortment packs,"
which reads on any difference and does not require the two pluralities to be
entirely different. Similarly, claim 1 only requires the recited first and
second sets of initial conditions to be different, not "entirely different."
B. Second disputed limitation-"for each cluster of the third plurality of
clusters, changing . . . the distribution of the different versions of the item
within the assortment pack associated with the cluster ... "
Appellant also contends McMains does not teach or suggest
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for each cluster of the third plurality of clusters,
changing, with the computing device, the distribution of the
different versions of the item within the assortment pack
associated with the cluster based at least in part on the
forecasted sales of the item at each retail store associated with
the cluster so as to determine a fourth plurality of assortment
packs,
as recited in claim 1, because "McMains does not describe changing the
distribution of items within an assortment pack." App. Br. 19. Instead,
Appellant contends that as McMains reduces the number of candidate packs
from its set of "first ideal candidate packs," there is no change to the
distribution of versions the item within an assortment pack, as required by
the second disputed limitation. Id.
The Examiner responds that McMains, which discloses initially
clustering stores based on initially clustered stores having identical pack
configurations (see, e.g., McMains ,r 32), teaches that when merging
clusters, "the merged cluster will have a diverse set of candidate packs to
choose from and the best will be selected." Ans. 13 ( citing Mc Mains ,r 46).
The Examiner then finds:
In McMains, the distribution of items within the ideal
assortment pack associated with at least one of the pair of
clusters of stores to be merged (i.e. at least one of the
assortment packs of the third plurality of assortment packs) will
be chan2ed when the pair of clusters of stores is merged (i.e. to
determine a [fourth] plurality of assortment packs) since the
pack configurations of distinct clusters are different and, after
merging, the best candidate pack from the diverse set of
candidate packs from the clusters to be merged is selected to be
associated with the merged cluster. Accordingly, in
McMains, when a pair of clusters of stores [is] selected to be
merged and associated with the same ideal pack, the system
has, contrary to Appellant's assertion, identified clusters to
change the distribution of items within an assortment pack.
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Ans. 13 (citing McMains ,r,r 31-32, 34, 45-50, Fig. 5); see also id. at 14--15
(noting the rejection relies on the combination of Vaidyanathan and
McMains, not McMains alone, for teaching the second disputed limitation
(citing Vaidyanathan pp. 21-23, 29-31), and repeating verbatim the
explanation given in the Final Rejection for why an ordinarily skilled artisan
would have been motivated to combine the teachings of McMains and
Vaidyanathan). Appellant replies that the disclosure of McMains relied on
by the Examiner does not "'change the distribution of items within an
assortment pack,' but rather merely chooses a subset of the originally
identified candidate packs." Reply Br. 7-8.
Appellant's argument is again unpersuasive as not commensurate with
the scope of the disputed claim limitation. According to the plain meaning
of the claim terms, changing a cluster so that a previously associated pack is
replaced with a newly associated pack that has a different distribution of
different versions of the item than the previously associated pack constitutes
"changing ... the distribution of the different versions of the item within the
assortment pack associated with the cluster," as recited. In other words,
replacing an initially associated pack with a newly associated pack
constitutes changing the associated pack. Thus, Appellant does not persuade
us of Examiner error, because in McMains, there is an initial distribution of
versions of items "within the assortment pack associated with the cluster"
and then, after the replacement, there is a different (i.e., changed)
distribution of versions of items "within the assortment pack associated with
the cluster," as recited. See Ans. 13.
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C. Third disputed limitation-"wherein values for the first set of initial
conditions are different than values for the second set of initial
conditions"
Appellant contends McMains does not teach or suggest "wherein
values for the first set of initial conditions are different than values for the
second set of initial conditions" because, in McMains, "the final set of packs
is a subset selected by reducing/merging the first ideal candidate packs from
all the stores until the maximum pack configuration constraint has been
reached." App. Br. 19-20 (quoting id. at 20).
The Examiner responds that in McMains,
the pairs of clusters of stores are selected for combining by
selecting from the clusters a pair of similar clusters based on the
difference between percentage forecast demand for each item
size across the pair of clusters, average sales per store and
[SKU] at each cluster, and the percentage overlap of
distribution centers across the clusters, which is referred to as a
distance metric in McMains (i.e. second set of initial
conditions) ([0032] & [0048]-[0049]). Then, the single pack
with the lowest mismatch cost is retained as the ideal pack for
the cluster ([0050]).
The distance metric is not considered when the system
initially creates ideal packs that are associated with each store
or cluster of stores with identical pack configurations. The
distance metric is only considered when creating ideal packs for
merged clusters. Since the ideal pack for the initial clusters are
merely formed based only on mismatch costs between the
forecast demand and the pack configuration, which are the first
set of initial conditions, and the ideal pack for the merged
clusters are determined by first selecting a pair of similar
clusters using the aforementioned distance metric and then
based on mismatch costs, which are the second set of initial
conditions, contrary to Appellant's assertion, the first set of
conditions are different from the second set of initial
conditions.
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Ans. 16.
Appellant does not contest these findings in the Answer, see Reply Br.
passim, and, therefore, Appellant does not persuade us of Examiner error
vis-a-vis the third disputed limitation.
D. Motivation to Combine McMains and Vaidyanathan
Appellant argues the Examiner errs in finding that ordinarily skilled
artisans would have been motivated to make the proposed combination of
teachings from McMains and Vaidyanathan. Reply Br. 8-10. Appellant
contends that the Examiner errs because "absent specific teachings as to why
the purported combination of elements from the references should be made,
does not render obvious the specific solution recited." Reply Br. 9.
Appellant's argument is unpersuasive.
As an initial matter, we note the Examiner's Answer reiterates,
verbatim, the findings from the Final Rejection for the motivation to
combine McMains and Vaidyanathan. Compare Ans. 14--15 with Final
Act. 19. "Any argument raised in the reply brief which was not raised in the
appeal brief, or is not responsive to an argument raised in the examiner's
answer, including any designated new ground of rejection, will not be
considered by the Board ... unless good cause is shown." 37 C.F.R.
§ 41.47(b)(2) (2016). Here, the Examiner's verbatim reiteration in the
Answer of findings from the Final Rejection does not constitute "raising an
argument"-rather, it simply is a reminder of findings Appellant failed to
challenge in the Appeal Brief. Appellant does not show good cause for not
raising this challenge to the motivation to combine in the Appeal Brief,
which would have given the Examiner an opportunity to respond. Thus,
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Appellant waived the right to challenge the motivation to combine McMains
and V aidyanathan.
Regardless, the motivation to combine McMains and Vaidyanathan
set forth by the Examiner in the Final Rejection articulates rationally
underpinned reasoning sufficient to support the legal conclusion of
obviousness in accordance with In re Kahn, 441 F.3d 977,988 (Fed. Cir.
2006) and KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
McMains and Vaidyanathan are [in] analogous fields of
invention because both discuss generating product assortments
to cluster stores based on sales forecasts. At the time the
invention was made, it would have been obvious to one of
ordinary skill in the art to include in the product assortment
systems of McMains the ability to change the distribution of
items within assortment packs associated with a cluster and
assign each store from the plurality of stores to a one of the
newly generated clusters during each iteration as taught by
Vaidyanathan since the claimed invention is merely a
combination of old elements, and in the combination each
element merely would have performed the same function as it
did separately, with the predictable results of providing an
algorithm that changes the distribution of items within
assortment packs and assigns each store from the full plurality
of stores to each plurality of clusters. Further, it would have
been obvious to one of ordinary skill in the art to have modified
McMains with the aforementioned teachings of Vaidyanathan
to select the set of assortments that maximizes revenue for each
cluster of stores.
Final Act. 19.
A reason to combine teachings from the prior art "may be found in
explicit or implicit teachings within the references themselves, from the
ordinary knowledge of those skilled in the art, or from the nature of the
problem to be solved." WMS Gaming Inc. v. Int'! Game Tech., 184 F.3d
1339, 1355 (Fed. Cir. 1999) (citing In re Rouffet, 149 F.3d 1350, 1357 (Fed.
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Cir. 1998)). "[A]n analysis of obviousness ... may include recourse to
logic, judgment, and common sense available to the person of ordinary skill
that do not necessarily require explication in any reference or expert
opinion." Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009). "Under the correct [obviousness] analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed." KSR, 550 U.S. at 420.
Appellant does not point to any evidence of record that the proposed
combination would be "uniquely challenging or difficult for one of ordinary
skill in the art" or "represented an unobvious step over the prior art."
Leapfrog Enters. Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418-19). Nor has Appellant provided
objective evidence of secondary considerations which our reviewing court
guides "operates as a beneficial check on hindsight." Cheese Sys., Inc. v.
Tetra Pak Cheese and Powder Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
The Examiner's findings are reasonable because the skilled artisan would
"be able to fit the teachings of multiple patents together like pieces of a
puzzle" because the skilled artisan is "a person of ordinary creativity, not an
automaton." KSR, 550 U.S. at 420-21. We are persuaded the claimed
subject matter exemplifies the principle that "[ t ]he combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." Id. at 416.
E. § 103 Conclusion
Thus, Appellant does not persuade us of Examiner error in the
determination that the combined disclosures of McMains and Vaidyanathan
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render claim 1 obvious. Accordingly, we sustain the§ 103(a) rejection of
claim 1 and, for the same reason, claims 2, 4, 5, 7, 9, 1 0, 12-14, 16-18, and
25, for which Appellant offers no separate arguments (see App. Br. 20).
DECISION
We affirm the rejection of claim 13 under 35 U.S.C. § 112, second
paragraph.
We affirm the rejection of claims 1, 2, 4, 5, 7, 9, 10, 12-14, 16-18,
and 25 under 35 U.S.C. § 101.
We affirm the rejection of claims 1, 2, 4, 5, 7, 9, 10, 12-14, 16-18,
and 25 under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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