Ex Parte Rapperport et al

Patent Trial and Appeal Board

Sep 19, 2018

12408862 (P.T.A.B. Sep. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/408,862 03/23/2009 Jamie Rapperport
26694 7590 09/21/2018
VENABLELLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
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.
134268.411549 1341
EXAMINER
NELSON, FREDA ANN
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
09/21/2018 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):
PTOMail@Venable.com
khauser@venable.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMIE RAPPERPORT, JEFFREY D. JOHNSON,
GIANP AOLO CALLIONI, ALLAN DAVID ROSS GRAY,
SEAN GERAGHTY, VLAD GORLOV,
and AMIT MEHRA
Appeal2017-006334
Application 12/408,862
Technology Center 3600
Before MAHSHID D. SAADAT, JENNIFER S. BISK, and
JAMES W. DEJMEK, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20, which are all the claims pending in this application. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants identify Vendavo, Inc., as the real party in interest. Br. 3.
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Application 12/408,862
STATEMENT OF THE CASE
Introduction
Appellants' Specification describes "systems and methods for
generating pricing power and risk scores for business segments in order to
facilitate the optimizing of prices in a business to business market setting
wherein an optimal price change is determined according to business
strategy and objectives." Spec. ,r 3.
Exemplary Claim
Claim 1 is illustrative of the invention and reads as follows:
1. A method for generating quantitative pricing
power and pricing risk scores, useful in association with an
integrated price management system, the method comprising:
assigning a corresponding raw pricing power score for
pricing power factors for at least one segment, wherein the
pricing factors include approval escalations, win ratios and
elasticity;
assigning a raw pricing risk score for each of at least one
pricing risk factor for each of the at least one segment;
generating a pricing power weight for each of the raw
pricing power score for each of the pricing power factors for
each of the at least one segment based upon client feedback;
generating a pricing risk weight for each of the raw
pricing risk score for each of the at least one pricing risk factor
for each of the at least one segment;
generating, by a computer, the quantitative pricing power
score for each of the at least one segment by computing a
weighted average of the raw pricing power score using the
generated pricing power weight for each of the raw pricing
power score for each of the pricing power factors;
generating, by a computer, the quantitative pricing risk
score for each of the at least one segment by computing a
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weighted average of the raw pricing risk score using the
generated pricing risk weight for each of the raw pricing risk
score for each of the at least one pricing risk factor; and
altering prices for products in the at least one segment by
plotting the quantitative pricing risk scores and the quantitative
pricing power score and applying a price change contour to
achieve a business goal.
The Examiner's Rejection
Claims 1-20 stand rejected under 35 U.S.C. § 101 for being directed
to patent-ineligible subject matter. Final Act. 4--5.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments ( Appeal Brief) that the Examiner has erred. We are unpersuaded
by Appellants' contentions and agree with and adopt the Examiner's
findings and conclusions in (i) the action from which this appeal is taken
(Final Act. 4--5) and (ii) the Answer (Ans. 2-8) to the extent they are
consistent with our analysis below.
Principles of Law
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
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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
that analysis is to determine whether the claims at issue are directed to one
of those patent-ineligible concepts, such as an abstract idea. Abstract ideas
may include, but are not limited to, fundamental economic practices,
methods of organizing human activities, an idea of itself, and mathematical
formulas or relationships. Id. at 2355-57. If the claims are not directed to a
patent-ineligible concept, the inquiry ends. Otherwise, the inquiry proceeds
to the second step where the elements of the claims are considered
"individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. 66 at 79,
78). We, therefore, look to whether the claims focus on a specific means or
method that improves the relevant technology or instead are directed to a
result or effect that itself is the abstract idea and merely invoke generic
processes and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016).
Alice Step 1
With respect to the first part of the Alice/Mayo analysis, the Examiner
finds, similar to the claims in SmartGene, Inc. v. Advanced Biological Labs.,
SA, 555 F. App'x 950 (Fed. Cir. 2014), the claims are directed to the abstract
idea of "generation of a quantitative power score and a quantitative risk
score" by reciting multiple steps of "generating" scores and weights and
"altering price ... by plotting the quantitative pricing risk scores and the
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quantitative pricing power score and applying a price change contour to
achieve a business goal." Ans. 4--5. The Examiner further finds
[H]owever, none of added limitations add meaningful
limitations to the idea of :generation of a quantitative power
score and a quantitative risk score" beyond generally linking
the system to a particular technological environment, that is,
implementation via computer (i.e. claims do not go beyond the
mere concept of simply executing, processing, generating, and
providing data using a computer). As an ordered combination,
the claims do not improve the functioning of the claimed
computer itself or reflect an improvement in another
technology.
Final Act. 5.
Appellants contend the Examiner erred. See Br. 8-11. According to
Appellants, "this altering of prices is well outside of the enumerated
'comparing' of information to 'identify options' as in this situation there is
an actual tangible effect of altering product prices in a novel and unique
way" and "the altering of prices, being a tangible change is not an
expression of a mathematical relationship, and has nothing to do with
organizing human behavior." Br. 9. Although Appellants argue the claimed
process is not like the claims in SmartGene because it is not directed to
organizing human activity, Appellants acknowledge the recited
"mathematical element (the weighted average)" and argue the claims further
include "the act of generating new data, and the assignment for raw scores
and weights, which is outside of the mere recitation of a mathematical
relationship." Id.
We agree with the Examiner that the claims are directed to "the
abstract idea of the 'generation of a quantitative power score and a
quantitative risk score,"' which correspond to "concepts identified as
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abstract ideas by the court, such as 'An idea of itself' and 'Mathematical
relationships/formulas' based on the steps/mathematical formulas as recited
in the claims and based on the steps/mathematical formulas being able to be
performed using a pen and paper." See Ans. 3. Moreover, our reviewing
court has found similar methods to be abstract ideas. "[W]e have treated
collecting information, including when limited to particular content (which
does not change its character as information), as within the realm of abstract
ideas." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). Similarly, generation of quantitative power and risk scores and
altering prices by plotting those scores are also a fundamental business
practice, like: (1) determining a price of a product offered to a purchasing
organization in Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306
(Fed. Cir. 2015); (2) pricing a product for sale in OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015); and (3) collecting and
analyzing information to detect and notify of misuses in Fair Warning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). See also
Ans. 3. Steps of identifying and engaging a potential target in a promotional
activity corresponding to a business enterprise are also a building block of a
market economy. Thus, identifying and engaging a potential target in a
promotional activity corresponding to a business enterprise, like risk
hedging, intermediated settlement, and verifying credit card transactions, is
an "abstract idea" beyond the scope of 35 U.S.C. § 101. See Alice, 134 S.
Ct. at 2356.
Alice Step 2
Because the claims are directed to an abstract idea, we tum to the
second part of the Alice/Mayo analysis. We analyze the claims to determine
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if there are additional limitations that individually, or as an ordered
combination, ensure the claims amount to "significantly more" than the
abstract idea. Alice, 134 S. Ct. at 2357.
Appellants contend that even if the claims are directed to an abstract
idea, similar to the claim language in Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981 ), the claim features discussed above further include "something
significantly more than the mere abstract concept." Br. 10. Appellants
further rely on 2014 Interim Guidelines and the 2015 Update Appendix 1 of
Examples and assert their claims are similar to those provided in those
examples. Id.
In response, the Examiner states, unlike Diehr, Appellants' claims "do
not have additional elements/steps that amount to significantly more than the
abstract ideas because when analyzed as a whole they do not transform a
particular article to a different state or thing and use the abstract idea( s) to
improve another technology/technical field." Ans. 6. The Examiner further
explains that Appellants' argument is directed to "an improvement in a
business/pricing functionality, not an improvement to the overall
performance of the data processing system or an improvement to a
technological field" whereas "[a]dding business application functionality
does not appear to be the type of computer system improvement which
renders a business method claim to be patent-eligible, under current USPTO
guidance." Ans. 7-8. Additionally, the Examiner characterizes the claimed
subject matter as "concepts identified as abstract ideas by the court, such as
'An idea of itself' and 'Mathematical relationships /formulas' based on the
steps/mathematical formulas as recited in the claims and based on the
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steps/mathematical formulas being able to be performed using a pen and
paper." Ans. 8.
We agree with the Examiner's findings. Appellants have not provided
persuasive evidence or arguments that the recited limitations of claim 1 do
anything more than recite generation of a quantitative power score and a
quantitative risk score, and plotting them, whereas such functionality is well-
understood, routine, and conventional in the field of computer systems.
Further, Appellants have not identified any portions of their Specification
that describe the corresponding structures for performing the recited
functions of claim 1 as involving technological changes or improvements.
Thus, we agree with the Examiner that the argued limitations do not add
"significantly more" to the abstract idea because they are "no more than
generic computer components executing generic computer functions." See
Alice, 134 S. Ct. at 2358 ("The mere recitation of a generic computer cannot
transform a patent in-eligible abstract idea into a patent-eligible invention.
Stating an abstract idea while adding the words 'apply it' is not enough for
patent eligibility") (quoting Mayo, 566 U.S. at 72 (internal quotation marks
omitted)); Elec. Power Grp., 830 F.3d at 1355 (quotation omitted) ("Merely
selecting information, by content or source, for collection, analysis, and
display does nothing significant to differentiate a process from ordinary
mental processes, whose implicit exclusion from § 101 undergirds the
information-based category of abstract ideas"); BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016)
("An abstract idea on 'an Internet computer network' or on a generic
computer is still an abstract idea"); Intellectual Ventures I LLC v. Capital
One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Rather, the claims
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recite both a generic computer element-a processor-and a series of
generic computer 'components' that merely restate their individual
functions-i.e., organizing, mapping, identifying, defining, detecting, and
modifying. That is to say, they merely describe the functions of the abstract
idea itself, without particularity. This is simply not enough under step
two").
In view of our analysis above, we find Appellants' claims are
"directed to nothing more than the performance of an abstract business
practice ... using a conventional computer. Such claims are not patent-
eligible." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014).
DECISION
We affirm the Examiner's decision to reject claims 1-20 under
35 U.S.C. § 101.
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).
AFFIRMED
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