Ex Parte WANG et al

Patent Trials and Appeals Board

Apr 8, 2019

13901009 - (D) (P.T.A.B. Apr. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/901,009 05/23/2013
74739 7590 04/10/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
Z. Maria WANG
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 -0040USO 1 5343
EXAMINER
JEANTY, ROMAIN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
04/10/2019 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):
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 Z. MARIA WANG and PETER GAIDAREV
Appeal2018-001398
Application 13/901,009 1
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Appellants identify Oracle International Corporation as the real party in
interest. Appeal Br. 2.
Appeal2018-001398
Application 13/901,009
ILLUSTRATIVE CLAIM
1. A non-transitory computer-readable medium having
instructions stored thereon that, when executed by a processor,
cause the processor to predict promotional cross item (PCI)
effects for retail items for a store, the predicting comprising:
receiving historical sales data for the store;
storing the historical sales data in a panel data format that
comprises multidimensional data;
aggregating the stored sales data as a first level of
aggregation, wherein the first level of aggregation is aggregated
to the store, a product and a time period;
aggregating the first level of aggregation aggregated data
as a second level of aggregation, wherein the second level of
aggregation is based on a promotional cross effect attribute
(PCEA) and is aggregated to the store, the time period and a
PCEA level;
deriving PCI effect predictor variables from the second
level of aggregation;
for each PCEA within a retail item family, forming a
regression model, wherein each PCEA comprises a retail item
attribute; and
generating estimated model parameters for one or more
PCI effects for each PCEA from the regression models;
wherein the PCI effect predictor variables comprise a
sales shock variable that comprises a multiplier if sales are
greater than a baseline.
Appeal Br. 11 (Claims Appendix.).
REJECTION
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
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Application 13/901,009
ANALYSIS
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. 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. Id. 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 Alice, 573
U.S. 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 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, 573 U.S. 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.
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Application 13/901,009
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
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, 573 U.S. at 221 ( citation 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]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
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Appeal2018-001398
Application 13/901,009
The USPTO 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 also
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 interactions such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., that apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit
on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception
(see MPEP § 2106.0S(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 § 2106.0S(d)); or
( 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.
With regard to the first step of the Alice framework, the Examiner
states that "[t]he claims are directed towards a method for [predicting]
promotional cross item (PCI) effects for retail items for a store," which the
Examiner regards as an abstract idea. Ans. 3. As to the second step of the
Alice framework, the Examiner states that the claims do not include
additional elements amounting to significantly more than the identified
abstract idea. Final Action 9-10, Answer 3--4, 7.
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Application 13/901,009
Notwithstanding the propriety of the Examiner's characterization of
the claims, we find that the Examiner fails to adequately consider whether
the claims effect an improvement in computer technology. See Appeal
Br. 7-8, Reply Br. 2.
Appellants argue that the claimed invention provides an improvement
in the functioning of the computer itself over prior art modeling techniques.
Appeal Br. 8. Specifically, Appellants point to paragraph 48 of the
Specification, which states that model building using the present invention is
more efficient and enables more expedient software application deployment
and business execution on greater data sets. Id.; see also Reply Br. 2 ( citing
Spec. ,r,r 11 and 48).
The Examiner does not address Appellants' specific argument or the
sections of the Specification Appellants cite in support of their argument.
Nonetheless, the Examiner answers that "[t]here involves no technological
advancement" and "[t ]he computer is merely act as tools [sic] to effect the
abstract idea." Ans. 6.
Appellants' Specification indicates that prior art techniques required
solving a set of models and a large number of model variables in order to
account for promotional cross-item effects. Spec. ,r 10. For example, the
Specification indicates that one particular prior art model "cannot be scaled
computationally to account for pair-wise cross-effects for a category of a
reasonably large assortment size." Id. ,r 11. According to the Specification,
the inventors solved these problems by providing a more computationally
efficient and scalable methodology. See Spec. ,r 13 ("In contrast to known
methodologies, embodiments predict the PCI effect in a computationally
efficient, scalable, and analytically accurate manner."); Id. ,r 48 "(In contrast
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Appeal2018-001398
Application 13/901,009
to known systems, the data processing, model building and forecasting
processes in embodiments of the present invention are more efficient while
being very effective in predicting promotional cross-item ('PCI') effect.").
In view of Appellants' arguments and the evidence cited by
Appellants, the Examiner's conclusory statements in the Answer are not
sufficient to support the position that there is no improvement to computer
technology in this case. For example, the Examiner provides no analysis of
the cited portions of the Specification and no explanation as to why, e.g., the
argued improvements in computational efficiency and scalability described
in the Specification are not reflected in the claims or do not show a technical
improvement. We do not undertake this analysis in the first instance.
Accordingly, we are persuaded that the Examiner has not adequately
established that the claims on appeal are directed to judicially excluded
subject matter. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016) ("Software can make non-abstract improvements to
computer technology just as hardware improvements can, and sometimes the
improvements can be accomplished through either route."). Therefore, we
do not sustain the rejection of claims 1-20 under 35 U.S.C. § 101.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101.
REVERSED
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