Sandeep Tiwari et al.

Patent Trials and Appeals Board

Aug 2, 2019

14070871 - (D) (P.T.A.B. Aug. 2, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/070,871 11/04/2013 Sandeep TIWARI 2011-0328US01 1017
74739 7590 08/02/2019
Potomac Law Group, PLLC (Oracle International)
8229 Boone Boulevard
Suite 430
Vienna, VA 22182
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/02/2019 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):
bgoldsmith@potomaclaw.com
eofficeaction@appcoll.com
patents@potomaclaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SANDEEP TIWARI and SU-MING WU
____________

Appeal 2018-006857
Application 14/070,871
Technology Center 3600
____________

Before ERIC S. FRAHM, JENNIFER L. McKEOWN, and MICHAEL T.
CYGAN, Administrative Patent Judges.

McKEOWN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 1–5, 7–13, and 15–22. Claims 6 and 14 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is Oracle International
Corporation. App. Br. 2.
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STATEMENT OF THE CASE
Appellants’ disclosed and claimed invention relates “generally to a
computer system, and in particular to a computer system that generates item-
to-item similarities.” Spec. ¶ 1.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A non-transitory computer-readable medium having instructions
stored thereon that, when executed by a processor, cause the processor to
generate an item-to-item similarity for a category comprising a plurality of
products, the generate an item-to-item similarity comprising:
receiving attribute values for each product in the category and product-
store-week sales units for each product in the category;
estimating attribute weights, comprising for each store,
determining a Mean Absolute Deviation (MAD) between sales shares
and assortment shares;
determining a weighted average over stores of the MADs, wherein a
weight for each store is a total historical sales units in the category to generate
a deviation value; and
normalizing the weighted average over stores of the MADs;
determining the item-to-item similarity as a weighted attribute match
score; and
providing the item-to-item similarity as an input to generate a
Consumer Decision Tree (CDT), wherein the CDT provides a visual
representation of a tree for the category indicating consumer choices for the
category;
wherein the estimating attribute weights comprises:
determining a final deviation value ,
wherein j is a time period, k is a store, Dj,k is a deviation between an
assortment and sales share vectors for store k and time period j, Sk is a net
sales of the store, and Jk is a number of time periods in a given store, wherein
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the weight of a qth attribute is: , wherein Dq is a deviation for the qth
attribute.

THE REJECTION
The Examiner rejected claims 1–5, 7–13, and 15–22 under 35 U.S.C.
§ 101 as directed to patent ineligible subject matter. Final Act. 4–6.

ANALYSIS
Based on the record before us, Appellants have not persuaded us that
the Examiner erred in rejecting claims 1–5, 7–13, and 15–22 as directed to
patent ineligible subject matter.
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. 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. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
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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 (Gottschalk v. 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.
252, 267–68 (1854))); 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
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to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn 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.
The PTO recently published revised guidance on the application of
section 101. USPTO’s 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that
guidance, we first 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 activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)-(c), (e)-(h) (9th ed. 2018)).
See Memorandum 52, 55–56. 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:
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(3) adds a specific limitation beyond the judicial exception that
are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(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 Memorandum 56.
Analysis – Revised Step 1
In step one we consider whether the claimed subject matter falls
within the four statutory categories of patentable subject matter identified by
35 U.S.C. § 101: process, machine, manufacture, or composition of matter.
The claimed invention here recites a process including a number of steps.
Accordingly, the claimed invention falls within the process category.

Analysis – Revised Step 2A
Under the Memorandum, in prong one of step 2A we look to whether
the claims recite a judicial exception. The claimed invention includes
“estimating attribute weights, comprising for each store, determining a Mean
Absolute Deviation (MAD) between sales shares and assortment shares;”
“determining a weighted average over stores of the MADs, wherein a weight
for each store is a total historical sales units in the category to generate a
deviation value;” “normalizing the weighted average over stores of the
MADs;” “determining the item-to-item similarity as a weighted attribute
match score;” “providing the item-to-item similarity as an input to generate a
Consumer Decision Tree (CDT), wherein the CDT provides a visual
representation of a tree for the category indicating consumer choices for the
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category;” and “wherein the estimating attribute weights comprises:
determining a final deviation value , wherein j is a
time period, k is a store, Djk is a deviation between an assortment and J, sales
share vectors for store k and time period j, Sk is a net sales of the store, and
Jk is a number of time periods in a given store, wherein the weight of a qth
attribute is: , wherein Dq is a deviation for the qth attribute.”
The claimed invention, thus, recites a method for generating item to
item similarity through use of certain calculations that are used to generate a
consumer decision tree. See, e.g., Spec. ¶ 5. As the claimed invention
includes estimating values, determining a mean absolute deviation, and
determining weighted averages to use within the claimed formula to
determine the final deviation, the claim at least recites mathematical
relationships and mathematical formulas or equations. See Ans. 4
(identifying the claimed invention as directed to mathematical relationships).
As such, the claimed invention recites mathematical concepts, which is an
abstract idea. See also, e.g., Bancorp Services, LLC v. Sun Life Assur. Co.,
687 F.3d 1266 (Fed. Cir. 2012).
Under prong two of revised step 2A, we determine whether the recited
judicial exception is integrated into a practical application of that exception
by: (a) identifying whether there are any additional elements recited in the
claim beyond the judicial exception(s); and (b) evaluating those additional
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elements individually and in combination to determine whether they
integrate the exception into a practical application.
We determine that the claimed invention is not integrated into a
practical application. The claimed invention additionally recites a processor,
“receiving attribute values for each product in the category and product-
store-week sales units for each product in the category,” and “providing the
item-to-item similarity as an input to generate a Consumer Decision Tree
(CDT), wherein the CDT provides a visual representation of a tree for the
category indicating consumer choices for the category.” In other words, the
claimed invention additionally recites a processor, receiving values, and
using the claimed mathematical concepts to generate a visual representation
of a consumer decision tree.
Appellants’ argument that the claimed invention provides a technical
solution to a technical problem in the field of software and behavior
modeling is unpersuasive. See App. Br. 4–6. As the Examiner determines,
Here, using a computer to perform algorithms for modelling is
just applying the abstract idea with a computer. This is not a
technical solution to a technical problem.
Ans. 4. See also Spec. ¶ 12 (describing the claimed invention addresses “is
critical to many business processes.”); Spec. ¶ 13–14 (discussing that the
claimed item to item similarity may be used in various business for demand
transference and optical product pricing analysis); Spec. ¶ 67 (noting that the
similarity analysis may be used in “product sales forecasting, the generation
of CDTs, and demand transference determinations”). The Examiner also
points out “Appellant[s’] specification briefly mentions visualizing a tree in
para [0012]. It is a big stretch to say the claims are rooted in visualization
generation technology when there is no support in the specification.”).
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Moreover, the steps of receiving data, such as receiving attribute
values, and displaying processed data, such as generating the consumer
decision tree, is insignificant extra-solution activity. See, e.g., Ans. 5 (“At
best, this ‘wherein’ clause is an output of a mathematical relationship which
is common in calculus and algebra and also just extra solution activity for
the abstract idea of similarity analysis.”). The claimed invention receives,
processes, and displays data – this is merely conventional data gathering and
analysis. See MPEP § 2106.05(g); OIP Techs., Inc., v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015); Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). As such, based on the record
before us, we determine that the claimed invention is not integrated into a
practical application.
Analysis – Revised Step 2B
Under step 2B, we determine that the claimed invention does not add
significantly more to the abstract idea. In particular, Appellants argue that
the claimed invention is a “non-conventional and non-generic arrangement
of elements” (App. Br. 13) and Appellants contend that the Examiner fails to
sufficiently support the finding the additional limitations as well-understood,
routine, and conventional. App. Br. 14.
We disagree. As the Examiner explains, the claimed invention
“simply use a computer for doing algorithms for behavioral modelling
which, as applicant's own specification discussed in para [0016]-[0019], is
accomplished by generic and conventional functionality.” Ans. 6; see also
Spec. ¶¶ 15–18; Elec. Power Grp., LLC, 830 F.3d at 1355 (finding that use
of “conventional computer, network, and display technology for gathering,
sending, and presenting the desired information” does not add significantly
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more to the claimed abstract idea); Content Extraction & Transmission LLC
v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
(discussing that data collection, recognition, and storage is well-known);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir.
2011)(“[T]he incidental use of a computer to perform the [claimed process]
does not impose a sufficiently meaningful limit on the claim’s scope.”).
Therefore, based on the record before us, we are not persuaded of
error in the Examiner’s determination that the appealed claims are directed
to patent ineligible subject matter. Accordingly, we affirm the Examiner’s
decision to reject claims as directed to patent ineligible subject matter.

DECISION
We affirm the Examiner’s decision to reject claims 1–5, 7–13, and
15–22.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED