Ex Parte Singhal et al

Patent Trial and Appeal Board

Jun 26, 2018

12648405 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/648,405 12/29/2009 Sharad Singhal
56436 7590 06/28/2018
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
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.
82261202 3763
EXAMINER
HAIDER,FAWAAD
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
hpe.ip.mail@hpe.com
chris.mania@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHARAD SINGHAL, and
YINPING YANG
Appeal2016-006846
Application 12/648,405 1
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection2 of claims 1, 2, 5, 8, 10, 11, 13, 14, 16-18, and 21-30. We
have jurisdiction under 35 U.S.C. § 6(b).
1 Appellants identify HEWLETT-PACKARD DEVELOPMENT
COMP ANY ("HPDC") as the real party in interest. Appeal Br. 2.
2 We herein refer to the Specification, filed Dec. 29, 2009 ("Spec."); Final
Office Action, mailed Jun. 19, 2015 ("Final Act."); Appeal Brief, filed
Oct. 19, 2015 ("Appeal Br."); Examiner's Answer, mailed Apr. 22, 2016
("Ans."); and the Reply Brief, filed June 22, 2016 ("Reply Br.").
Appeal 2016-006849
Application 12/648,405
We AFFIRM.
SUMMARY OF DECISION
THE INVENTION
Appellants claim a system and method for negotiating a sale. (Title).
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer system to negotiate a sale with a human, the computer
system comprising:
a processor; and
a memory device that stores code executable by the processor to:
make an offer to sell in a round of a negotiation with a human user as
a potential buyer;
receive a counter-offer from the human user;
determine whether to accept the counter-offer based on a target, a best
alternative to a negotiated agreement (BA TN A), and a round number of the
round of the negotiation, wherein the target comprises a target utility value
to a seller; and
reject the counter-offer in response to the counter-offer having a
utility value to the seller greater than the BA TNA and less than the target,
and if the round number of the round of negotiation is less than a maximum
number of rounds.
(Appeal Br., Claims Appendix, 29.)
THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
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NONE3
The following rejection is before us for review.
Claims 1, 2, 5, 8, 10, 11, 13, 14, 16-18, and 21-30 are rejected under
35 U.S.C. § 101.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1, 2, 5, 8, 10, 11, 13, 14, 16-
18, and 21-30 under 35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat
else is there in the claims before us?" To answer that question,
. . . consider the elements of each claim both individually and
"as an ordered combination" to determine whether the
additional elements "transform the nature of the claim" into a
patent-eligible application. [The Court] described step two of
this analysis as a 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."
3 The rejection under 35 U.S.C. § 103 (a) has been withdrawn. (See Ans. 3.)
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Alice Corp., Pty. Ltd. v CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)) [citations omitted].
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed.
The preamble of representative claim 1 states that it is for a "computer
system to negotiate a sale with a human." The steps in claim 1 result in:
[DJ etermin[ing] whether to accept the counter-offer based on a target, a
best alternative to a negotiated agreement (BATNA), and a round number of
the round of the negotiation, wherein the target comprises a target utility
value to a seller; and
[R] eject[ing] the counter-offer in response to the counter-offer having a
utility value to the seller greater than the BATNA and less than the target,
and if the round number of the round of negotiation is less than a maximum
number of rounds.
The Specification further states,
Many products and services are currently offered
to customers over electronic networks, such as the
Internet. Current models for sales are limited. For
example, one model for sales can be described as
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"take it or leave it." In other words, the seller
specifies a price, and potential buyers can buy the
item/ service at the price, or not. The take it or
leave it model may cost the seller potential sales
when the customer is able to obtain a better deal.
As such, the take it or leave it model is generally
cost-effective only for low-value items/services
involving single units of PCs, for example.
Another sales model may involve a human sales
force. In such a model, a sales agent may interact
with potential customers to customize the sale
according to the customer's needs. This model is
resource intensive, and typically may only be cost-
effective for high-value sales, such as sales of
hundreds of PCs.
For sales in the range between the high-value and
low-value, such as a sale of 30-50 PCs, the take it
or leave it model may forgo potential sales.
However, involving a human agent to negotiate
such a sale may not be cost-effective, given the
balance of resources used against the profit of such
a sale.
Spec. i-fi-f l-3. Thus, all this evidence shows that claim 1 is directed to a
method of maximizing a sales offer based at least on a target utility value to
a seller, a best alternative to a negotiated agreement (BATNA), and the
round number of the round of the negotiation. It follows from prior
Supreme Court cases, and Gottschalkv. Benson, 409 U.S. 63 (1972) in
particular, that the claims at issue here are directed to an abstract idea.
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Maximizing an offer based at least on a target utility value to a seller, a best
alternative to a negotiated agreement (BATNA), and the round number of
the round of the negotiation is a fundamental economic practice of a
transaction because it affects completion of the sale with maximum results to
seller. The patent-ineligible end of the 35 U.S.C. § 101 spectrum includes
fundamental economic practices. See Alice Corp. Pty. Ltd., 134 S. Ct. at
2355-1257. Also, we find the steps of: mak[ing] an offer to sell; receiv[ing]
a counter-offer; determin[ing] whether to accept the counter-offer based on a
target; and reject[ing] the counter-offer in response to the counter-offer,
constitute acts by a human and/or "analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). See
also buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (claims
directed to certain arrangements involving contractual relations are directed
to abstract ideas). Thus, maximizing a sales offer based at least on a target
utility value to a seller, a (BA TNA), and the round number of the round of
the negotiation is an "abstract idea" beyond the scope of § 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of maximizing an offer based at least on a target utility value to a seller, a
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best alternative to a negotiated agreement (BATNA), and the round number
of the round of the negotiation, at issue here. Both are squarely within the
realm of "abstract ideas" as the Court has used that term. That the claims do
not preempt all forms of the abstraction or may be limited to sales, does not
make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1360----61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[ t ]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted).
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"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer. They do not." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval---one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
industry. See Elec. Power Grp. v. Alstom S.A., supra. Also see In re Katz
Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316
(Fed. Cir.2011) ("Absent a possible narrower construction of the terms
"processing," "receiving," and "storing," ... those functions can be
achieved by any general purpose computer without special programming").
In short, each step does no more than require a generic computer to perform
generic computer functions. 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 America Inc. v. InvestPic LLC, No. 2017-2081,
2018 WL 2207254 (Fed. Cir. May 15, 2018) See also SAP America Inc., 890
F 3d. 1016, 1022.
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
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are considered separately. The sequence of data reception-analysis-access is
equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Viewed as a whole, Appellants' claims simply recite the concept of
maximizing an offer based at least on a target utility value to a seller, a best
alternative to a negotiated agreement (BA TNA), and the round number of
the round of the negotiation. The claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than instructions to maximize
an offer based at least on a target utility value to a seller, a best alternative to
a negotiated agreement (BA TN A), and the round number of the round of the
negotiation. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134
S. Ct. at 2360.
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The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of information access under different scenarios. They
do not describe any particular improvement in the manner a computer
functions, at least with respect to the claims in the instant application.
Instead, the claims at issue amount to nothing significantly more than an
instructions to apply the abstract idea of information access using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] . . . against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art."'
Alice Corp. Pty. Ltd., 134 S. Ct._at 2360 (alterations in original).
We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us which stand rejected
under 35 U.S.C. § 101 (Appeal Br. 8-15). We find that our analysis above
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substantially covers the substance of all the arguments which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
Appellants argue,
In the present application, the claims cannot be
reasonably characterized as only a fundamental
economic practice, as contended by the Examiner.
Instead, the claims relate to technical aspects for a
system providing for a new interaction of machine
with humans. The recited systems are inextricably
tied to computer technology and distinct from the
types of concepts found by the courts to be
abstract. The claims do not simply describe
assessment as might be performed in the mind of a
human.
(Appeal Br. 10.)
We disagree with Appellants. As we found supra, Appellants' claims
are not directed to specific new technical aspects rooted in computer
technology, but rather the claims recite an abstract idea implemented on a
generic computer. 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 2359. Even still, as we
noted above, the recitation of a practical application for an abstract idea
sufficient to transform the abstract idea into a patent-eligible invention.
Cf CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371
(Fed. Cir. 2011) ("The Court [in Parker v. Flook, 437 U.S. 584 (1978)]
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rejected the notion that the recitation of a practical application for the
calculation could alone make the invention patentable.").
Appellants argue, "Plainly, the claims do not preempt a fundamental
economic practice but instead carve out specific new technical aspects and
are necessarily rooted in computer technology." (Appeal Br. 11 ). Appellants
also argue, "The claims provide systems and technical features for
negotiation and customized offerings of products (e.g., a sale of 30-50 PCs)
made by a machine to a human customer." (Id.).
We disagree with Appellants. "[L ]imiting the field of use of the
abstract idea to a particular existing technological environment does not
render any claims less abstract." Affinity Labs of Tex., LLC v. DIRECTV,
LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016) (citing Alice, 134 St. Ct. at 2358;
Mayo, 132 S. Ct. at 1294). It also is immaterial that the claims would not
preempt use of the abstract idea of conducting "round of a negotiation with a
human user as a potential buyer". See Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.").
Appellants further argue,
even if the claims encompass an abstract idea,
claims 1, 11, 18, 21 recite features such that the
claims are significantly more than an abstract idea.
These features include at least a computer
processor and executable applications (e.g.,
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negotiation agent). These features constitute
meaningful limitations beyond a fundamental
economic practice or abstract idea. See DDR
Holdings, LLC v. Hotels.com, 113 U.S.P.Q.2d
1097 (Fed. Cir. 2014). The configuration and
practice of a computer to autonomously and
effectively negotiate a sale with a human buyer is
plainly not a fundamental economic practice or
longstanding commercial practice, and is more
than an abstract idea.
(Appeal Br. 13-14)
We disagree with Appellants. In DDR, the claims at issue involved,
inter alia, "web pages displays [with] at least one active link associated with
a commerce object associated with a buying opportunity of a selected one of
a plurality of merchants" (claim 1 of US 7 ,818,399). There is no such claim
element with this degree of detail directed to internet technology present
here before us.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 2, 5, 8,
10, 11, 13, 14, 16-18, and 21-30 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims is affirmed.
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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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