Ex Parte Westphal

Patent Trial and Appeal Board

Sep 26, 2018

13796403 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/796,403 03/12/2013 Geoffry A. Westphal
34018 7590 09/28/2018
Greenberg Traurig, LLP
77 W. Wacker Drive
Suite 3100
CHICAGO, IL 60601-1732
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.
31083.26US2 3112
EXAMINER
MASUD, ROKIB
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
09/28/2018 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):
chiipmail@gtlaw.com
escobedot@gtlaw.com
j arosikg@gtlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFRY A. WESTPHAL
Appeal2017-007448
Application 13/796,403
Technology Center 3600
Before MAHSHID D. SAADAT, ST. JOHN COURTENAY III, and
ERIC S. FRAHM, Administrative Patent Judges.
SAADAT, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1---6, which constitute all the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 According to Appellant, the real party in interest is W.W. Grainger, Inc.
App. Br. 2.
Appeal2017-007448
Application 13/796,403
STATEMENT OF THE CASE
Appellant's Specification describes "a system and method for
detecting a possible error in a customer specified product order quantity
during the product ordering process." See Spec. 1, 11. 25-26. Exemplary
claim 1 under appeal reads as follows:
1. A non-transitory computer-readable media having
computer readable instructions stored thereon that, when
executed by a processor, cause the processor to perform steps
compnsmg:
receiving from a client computing device data indicative
of a keyboard entered quantity of a product that is desired to be
purchased;
comparing the keyboard entered quantity of the product
that is desired to be purchased against order quantity data
contained within a data repository wherein the order quantity
data contained within the data repository comprises at least one
of keyboard numbers that logically surround numbers
associated with one or more ordering quantities for the product
that have been placed in the past and keyboard numbers that
would be a logical result of having keystrokes associated with a
previously provided product ordering quantity repeated in error;
and
when the keyboard entered quantity of the product that is
desired to be purchased matches data contained within the data
repository causing the client computing device to present a
notification wherein the notification functions to inform a user
that the specified quantity of the product is suspected to be in
error.
Claims 1---6 stand rejected under 35 U.S.C. § 101 as not being directed
to patent-eligible subject matter. See Final Act. 2-6.
Claims 1-3 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Silver (US 7,318,043 Bl; issued Jan. 8, 2008) and Hubert (US
7,574,382 Bl, issued Aug. 11, 2009). See Final Act. 6-8.
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Application 13/796,403
Claims 4---6 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Silver, Hubert, and the Examiner's Official Notice. See Final Act. 8-9.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner erred. We are persuaded the Examiner erred in
rejecting the claims under 35 U.S.C. § 101 for not being directed to patent-
eligible subject matter. For essentially the same reasons argued by
Appellant in the Briefs, and based upon the preponderance of the evidence,
we are also persuaded the Examiner erred in rejecting claims 1---6 and under
35 U.S.C. § 103(a), as being obvious over the cited references. See Final
Act. 2-9; Ans. 2-5. We highlight and address specific findings and
arguments for emphasis as follows.
Section 1 OJ Rejection
Independent claim 1 recites steps performed by a processor
comprising "receiving ... data indicative of a keyboard entered quantity of a
product that is desired to be purchased" and "comparing the keyboard
entered quantity of the product ... against order quantity data contained
within a data repository wherein the order quantity data contained within the
data repository comprises at least one of keyboard numbers that logically
surround numbers associated with one or more ordering quantities." The
claim further requires presenting a notification when the keyboard entered
quantity matches data contained within the data repository and is, therefore,
directed to one of the four statutory categories of patentability enumerated
by 35 U.S.C. § 101 (process, machine, manufacture, or composition of
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Application 13/796,403
matter). The Examiner finds claims 1---6 "are directed to an abstract idea of
comparing entered data entry with historical data entry to find discrepancy
using rules," which "is considered to be an abstract idea and such activities
may be categorized as an idea of itself that court has determined with respect
to SmartGene." Ans. 2. The Examiner finds the "additional elements
recited are generic computer components performing functions similar to the
computer functions described in Alice Corp. as being well-understood,
routine, and conventional." Ans. 2. Also, "the computer elements (e.g., a
computing device, keyboard, computer readable media, etc.) are all recited
with a high level of generality." Ans. 3.
Appellant contends the Examiner erred in finding the claims are not
directed to patent-eligible subject matter. See App. Br. 4--5. Appellant
argues:
[W]hile the claims at issue may include limitations that
individually perform functions that are "well-understood,
routine, and conventional," the claim limitations - considered
as a whole - set forth an arrangement of known, conventional
pieces in a non-conventional and non-generic manner. More
particularly, the claims are directed to improving computer
systems by fixing a problem that arises from the use of
computer systems, e.g., the problem of a customer placing an
order for product in a quantity that is the result of a
typographical error that was made because of the use of a
computer system keyboard during the order entry process.
Because the prior art of record fails to disclose the claimed
solution to this computer-centric problem (as discussed below),
it is submitted that the claims cannot be said, as a matter of law,
to have been conventional or generic.
App. Br. 4. Appellant further argues that the claims, which "are directed to
an application of a concept," do not implement an old practice in a new
environment. App. Br. 4.
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Application 13/796,403
We are persuaded by Appellant's arguments. At the outset, we note
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 Bank
Int'!, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). "The 'abstract ideas'
category embodies 'the longstanding rule that ' [ a ]n idea, of itself, is not
patentable."' Id. at 2355 ( quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)). In determining whether a process claim recites an abstract idea, we
must examine the claim as a whole, keeping in mind that an invention is not
ineligible just because it relies upon a law of nature or mathematical
algorithm. Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758
F. 3d 1344, 1350 (Fed. Cir. 2014). As noted by the Supreme Court, "an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection." Diamond v. Diehr,
450 U.S. 17 5, 187 (1981 ). The "directed to" inquiry asks not whether "the
claims involve a patent-ineligible concept," but instead whether, "considered
in light of the specification, ... 'their character as a whole is directed to
excluded subject matter."' Enfish, LLC v. Microsoft Corp., 822 F.3d 1327,
1335 (Fed. Cir. 2016) (internal citations omitted). In that regard, we
determine whether the claims "focus on a specific means or method that
improves the relevant technology" or are "directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016).
As stated by Appellant (App. Br. 4), claim 1 is directed to "an
arrangement of known. conventional pieces" that perform functions "in a
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non-conventional and non-generic manner." We agree and determine that
the appealed claims are not directed to an abstract idea because the focus of
the claimed subject matter is on the way the arrangement of a keyboard and
key locations lead to errors in entering the quantity of a product to be
ordered. Similar to the claims in Enfish (822 F.3d at 1337), the claims in the
present Application seek to improve computer capabilities, such as a "self-
referential table for a computer database" by reciting the technical details
that describe the alleged improvement of the technical process of ordering
products and detecting the errors associated with the typographical error
based on using a keyboard during the order process and the key placement
on the keyboard. Such an "improvement" is a patentable improvement in
computer technology.
Therefore, we are persuaded the Examiner erred in concluding the
claims are directed to patent-ineligible subject matter. Accordingly, we do
not sustain the rejection of claims 1-6 under 35 U.S.C. § 101.
Section 103 Rejection
Appellant argues the combination of cited references fails to teach or
suggest:
[NJ otifying a user when it is determined that a user specified
quantity of the product matches order quantity data contained
within a data repository wherein the order quantity data
contained within the data repository comprises at least one of
keyboard numbers that logically surround numbers associated
with one or more ordering quantities for the product that have
been placed in the past and keyboard numbers that would be a
logical result of having keystrokes associated with a previously
provided product ordering quantity repeated in error as claimed.
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App. Br. 5---6. As argued by Appellant, the cited portions of Hubert in
columns 1-2 relate to monitoring orders for errors, but fail to teach or
suggest determining the order quantity contained in the data repository
comprises one of the keyboard numbers that logically surround the number
associated with the past order quantities that "would be a logical result of
having keystrokes associated with a previously provided product ordering
quantity repeated in error." See App. Br. 6; see also Reply Br. 2-3. Lastly,
Appellant asserts, absent the disclosure on page 12 of the Specification, the
Examiner has not identified anything in Hubert that would expressly or
inherently teach or suggest the Hubert's typographical errors are related to
repeating the keyboard selection of the keys surrounding the keyboard
number that is previously selected in placing a product order. App. Br. 7;
Reply Br. 3.
We have reviewed the Examiner's findings in light of Appellant's
arguments, and we are persuaded the Examiner erred. In particular, we
agree with Appellant that Hubert discloses using aggregated data about
detected orders to identify anomalies in activity levels associated with
catalog items (see Hubert, Abstract), which involves passively monitoring
orders placed by users of the catalog (Hubert, col. 1, 11. 44--49). Hubert
further discloses "the analyzer uses order volume data from prior time
periods to generate a forecasted or expected order volume for the current
time period." Hubert, col. 1, 1. 66-col. 2, 1. 1.
In light of this disclosure, we agree with Appellant that Hubert fails to
disclose a situation in which an indication of how the order quantity error
with respect to repeating a previously provided product ordering quantity is
identified. The Examiner has not identified any teachings in the other
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applied prior art to cure the above-identified deficiency of Silver and Hubert.
Accordingly, we do not sustain the Examiner's rejection of claim 1 and
claims 2---6 dependent therefrom.
DECISION
We reverse the Examiner's decision to reject claims 1---6.
REVERSED
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