Ex Parte Adams et al

Patent Trial and Appeal Board

Jun 14, 2017

10865848 (P.T.A.B. Jun. 14, 2017)

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.
10/865,848 06/14/2004 Gary L. Adams 2004P00166US 1809
62730 7590
SAP SE
3410 HILLVIEW AVENUE
PALO ALTO, CA 94304
06/16/2017 EXAMINER
HOAR, COLLEEN A
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
06/16/2017 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):
APRIL.MENG@SAP.COM
GIPinhouse@sap.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GARY L. ADAMS and STEFFEN MOCK
Applicant: SAP AG
Appeal 2015-0013271
Application 10/865,848
Technology Center 3600
Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—48. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
June 23, 2014) and Reply Brief (“Reply Br.,” filed Nov. 7, 2014), and the
Examiner’s Answer (“Ans.,” mailed Sept. 11, 2014) and Final Office Action
(“Final Act.,” mailed Oct. 24, 2013).
Appeal 2015-001327
Application 10/865,848
CLAIMED INVENTION
Appellants’ claimed invention relates to “methods and systems for
integrating trade promotion planning with execution of those promotions.”
Spec. 12.
Claims 1, 14, 15, 28, 29, and 42 44 are the independent claims on
appeal. Claim 1, reproduced below with added bracketed notations, is
representative of the claimed subject matter:
1. A computer-implemented method for integrating
promotion planning with promotion execution, comprising:
[(a)] creating a trade promotion object reflecting a
potential trade promotion;
[(b)] creating a promotion condition record for condition
information reflecting a price discount corresponding to the
potential trade promotion, wherein the promotion condition
record includes an identifier corresponding to the trade
promotion object and a volume target of a particular product
associated with the potential trade promotion;
[(c)] associating the promotion condition record with a
first retailer;
[(d)] presenting the condition information of the
promotion condition record to the first retailer;
[(e)] receiving feedback from the first retailer about the
condition information;
[(f)] modifying the promotion condition record based on
the feedback from the first retailer;
[(g)] receiving data representing an approval of the
promotion condition record when the promotion condition
record is within a set of functional limits after the modification;
[(h)] updating the promotion condition record to reflect
the approval;
[(i)] sending the updated promotion condition record to a
backend system;
[(j)] tracking, using a processor, the promotion condition
record to determine liabilities owed to the first retailer as a
function of the volume target;
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[(k)] after receiving the data representing an approval of
the promotion condition record associated with the first retailer,
receiving a sales order by a second retailer;
[(1)] searching promotion condition records to locate
stored trade promotions related to the particular product; and
[(m)] tracking the promotion condition record, after
location of a trade promotion record related to the particular
product, to determine liabilities owed to the second retailer as a
function of the volume target.
REJECTIONS
Claims 1—44 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—12, 14—26, 28-40, and 42^48 are rejected under 35 U.S.C.
§ 103(a) as unpatentable overNotarius (US 2002/0123957 Al, pub. Sept. 5,
2002), Huang (US 6,151,582, iss. Nov. 21, 2000), and Official Notice.
Claims 13, 27, and 41 are rejected under 35 U.S.C. § 103(a) as
unpatentable overNotarius, Huang, Lala (US 7,139,793 B2, iss. Nov. 21,
2006), and Official Notice.
ANALYSIS
Non-Statutory Subject Matter
Claims 1—44
Appellants argue claims 1—44 as a group. Reply Br. 2—6. We select
claim 1 as representative. The remaining claims stand or fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
In rejecting claims 1—44 under 35 U.S.C. § 101, the Examiner finds
that the claims are directed to the abstract idea of
creating a line or record in a database with fields containing
information about a promotion that is tracked and updated with
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feedback, approval, target volume data and ordering
information then sent to other systems (billing and ordering).
Ans. 2. The Examiner determines that “[tjracking promotions by retailer
including feedback, volume and approval parameters is a fundamental
economic practice.” Id. And the Examiner finds that the additional
elements or combination of elements in the claim amount to no more than
associating retailers with orders and liabilities or billing, which require no
more than a generic computer to perform generic computer functions. Id. at
2-3.
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 because the Examiner “cites no text or other support that
‘creating a line or record in a database with fields containing information
about a promotion that is tracked and updated’ constitutes an abstract idea.”
Reply Br. 4. Specifically, Appellants note that the Supreme Court in Alice
cited authority for the proposition that “mitigating settlement risk” is a
fundamental economic practice. Id.', see also Alice Corp. Pty Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347 (2014). Appellants suggest that the Examiner is,
likewise, required to cite authority to show the claims are directed to an
abstract idea. Appellants’ argument is not persuasive, at least because
nothing in Alice requires the Office to identify specific references to support
a finding that a claim is directed to an abstract idea.
Appellants dispute the Examiner’s finding that the claims are directed
to creating a line or record in a database with fields containing information
about a promotion that is tracked and updated. In this regard, Appellants
copy portions of claim 1 (i.e., the preamble, limitation (b), and limitations
(e)-(g)), and charge: (1) that the “specific language of the body of the claim
does not recite ‘creating a line or record in a database ...,’” (2) that “the
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Examiner arbitrarily ‘summarizes’ the claim, ignoring major portions,” and
(3) that the Examiner’s determination that the claims are directed to a
fundamental business practice is “contrary to the language of the claims.”
Reply Br. 4—5. We disagree that the Examiner erred in determining that the
claim is directed to an abstract idea.
As an initial matter, the Examiner’s formulation of the abstract idea
need not copy the language recited in the claim. Our reviewing court has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [Specification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (citing Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
It asks whether the focus of the claims is on a specific improvement in
relevant technology or on a process that itself qualifies as an “abstract idea”
for which computers are invoked merely as a tool. See id. at 1335—36.
We find the character of the claims, considered as a whole in light of
the Specification, to be directed to integrating promotion planning with
promotion executing, or at a higher level of abstraction, to be directed to a
data processing system. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1241 (Fed. Cir. 2016) (“[a]n abstract idea can generally be described at
different levels of abstraction. . . . The Board’s slight revision of its abstract
idea analysis does not impact the patentability analysis.”). Claim 1, for
example, is a computer-implemented method for integrating promotion
planning with promotion execution that recites steps of: (a) creating a trade
promotion object; (b) creating a promotion condition record; (c) associating
the promotion condition record; (d) presenting the condition information; (e)
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receiving feedback; (f) modifying the promotion condition record; (g)
receiving data; (h) updating the promotion condition record; (i) sending the
updated promotion condition record; (j) tracking the promotion condition
record; (k) receiving a sales order; (1) searching promotion condition
records; and (m) tracking the promotion condition record. In this regard, we
find claim 1 similar to other data gathering and processing claims that the
Federal Circuit held to be patent ineligible. See, e.g., Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (claims held to be
directed to an abstract idea where “[t]he advance they purport to make is a
process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions.”).
Our conclusion is supported by Appellants’ Specification, which
describes the advance over the prior art in terms of data gathering and
processing. See Affinity Labs of Texas, LLC v. DirectTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (“[t]he ‘abstract idea’ step of the inquiry calls
upon us to look at the ‘focus of the claimed advance over the prior art’ to
determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.”) For example, the Background of the Specification
describes that “[t]he success of an enterprise depends on its ability to
synchronize marketing, sales, finance, operations, logistics, and retailer
service efforts to generate the maximum benefit from the information
available about retailers and consumers.” Spec. 1 9. It describes that
“retailer-centric data needs to be captured and visible to each stakeholder
responsible for the retailer interaction process within a manufacturer’s
enterprise.” Id. | 5. With such information, manufacturers can meet “the
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challenge of delivering the right product, in the right place, at the right time,
and at the right price.” Id. 14. The Specification also describes the
invention as relating to “data processing systems and, more particularly, to
methods and systems for integrating trade promotion planning with
execution of those promotions.” Id. 12; see also id. Ull (“Summary”), 27
(“Overview”).
Appellants argue that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 101 because the claims amount to significantly more than the
abstract idea identified by the Examiner. Reply Br. 6—8. Specifically,
Appellants assert that by characterizing the claims as being directed to the
abstract idea of creating a line or record in a database, the Examiner’s
analysis improperly fails to consider all of the claim elements, individually
and in combination, as required by the second step of the analysis. Id. at 7
(citations omitted).
But, in applying step two of Alice, the Examiner considered the claims
“as a whole” (Ans. 3) and determined that the additional claim elements or
combination of claim elements do not amount to significantly more than the
abstract idea identified in step one {id. at 2—3). Appellants direct us to
limitations (b) and (e) through (g) of claim 1 as exemplary claim elements
that amount to significantly more than the abstract idea. But these
limitations amount to nothing more than collecting information and
processing information, i.e., a collection of abstract ideas.
Beyond the abstract idea of data processing or, more narrowly,
integrating promotion planning with promotion executing, claim 1 adds the
additional claim element of a generic “processor,” i.e., limitation (j). But the
use of a generic processor to implement an abstract idea fails to provide the
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requisite inventive concept to confer patent eligibility. See DDR Holdings,
LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“after Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible”) (internal citations
and quotation marks omitted). For example, nothing in claims 1—44,
considered individually or as an ordered combination, purports to improve
computer functioning or “effect an improvement in any other technology or
technical field.” Alice, 134 S. Ct. at 2359. Nor do the claims solve a
problem unique to the Internet. See DDR Holdings, 773 F.3d at 1257. The
claims also are not adequately tied to “a particular machine or apparatus.”
Bilski v. Kappos, 561 U.S. 593, 601 (2010).
Appellants argue that the Examiner erred in “not mak[ing] any finding
of fact[s] that the method recited in claim 1 . . . would monopolize or
preempt every substantial application of the purported abstract idea.” Reply
Br. 5. Appellants’ argument is unpersuasive. The Supreme Court has
characterized pre-emption as a driving concern for patent eligibility. See
Alice, 134 S. Ct. at 2354. But characterizing pre-emption as a driving
concern for patent eligibility is not the same as characterizing pre-emption as
the sole test for patent eligibility. “The Supreme Court has made clear that
the principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at
2354). Although “preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Id.
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In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of claim 1, and claims 2-44, which fall with claim 1.
Dependent Claims 45—48
Claims 45—48 depend from claim 1 and are directed to the same
abstract idea as claim 1. Claims 45 and 46 recite further limitations
regarding the type of information collected, and claims 47 and 48 recite
additional steps related to processing the collected information. In other
words, the additional claim elements recited in these claims are also abstract
and insufficient to confer patent eligibility. Because we find that dependent
claims 45—48 lack additional elements, considered individually and as an
ordered combination, that would render the claims patent-eligible, we enter a
new ground of rejection under 35 U.S.C. § 101 of claims 45—48 for the same
reasons set forth above with respect to claim 1.
Claims 29—42
Claims 29-42 are rejected under 35 U.S.C. § 101 as being directed to
signals per se. Ans. 3. In this regard, the Examiner finds that “Appellants]
ha[ve] not provided a specific definition of a computer-readable media.” Id.
at 3^4. The Examiner points to paragraph 130 of Appellants’ Specification
as providing a carrier wave as an example of a computer-readable media,
and concludes that the definition of “computer-readable media” in light of
the Specification broadly includes signals. Id. at 4. Although a computer-
readable media, as described in the Specification, broadly encompasses
transient signals, independent claims 29 and 42 each recite that the
computer-readable storage medium is “non-transient.” As such, we do not
sustain the Examiner’s rejection of independent claims 29 and 42 and
dependent claims 30-41 as impermissibly covering “signal claims.”
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Obviousness
Independent Claims 1, 14, 15, 28, 29, 42, 43, and 44, and Dependent Claims
2-12, 16-26, 30-40, and 45-48
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 102(e) because Notarius
does not disclose “receiving feedback from the first retailer about the
condition information,” i.e., limitation (e), as recited in claim 1. App.
Br. 24—25.
In the Final Action, the Examiner provides an “Amended Rejection”
finding that Notarius teaches “[r]eceiv[ing] data representing an approval of
the promotion condition record[,]” and “provid[ing] a link for the retailer to
contact [the] supplier to negotiate the terms of the order.” Final Act. 8
(citing Notarius H 215, 335, 584).
Notarius relates to a method and apparatus for marketing and
communication in the wine/spirits industry. Notarius 132. Notarius
describes providing HTML templates to create, edit, and approve site
content. A/. H 214—215. Content can take the form of ads, promotions, and
customer targeted messages. Id. 1216. An application is provided that
allows a supplier to display a list of unbranded or under-branded items that a
supplier wants to promote. Id. H 333—334. The application includes an
email link for a retailer to contact the supplier to negotiate terms of an order
for the unbranded or under-branded items. Id. 1335. A marketing system
allows suppliers to create real-time, targeted promotions and product
recommendations on the e-commerce site, and facilitates measurement of
results to help determine effective marketing activities. Id. 1 584.
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Thus, Notarius describes providing for marketing campaigns,
measuring the effectiveness of such campaigns, and for providing a link to a
retailer to negotiate terms of an unbranded or under-branded item that a
supplier seeks to promote. But we fail to see, and the Examiner does not
adequately explain, how Notarius describes or suggests “condition
information” that “reflects] a price discount corresponding to the potential
trade promotion,” let alone “receiving feedback . . . about the condition
information,” as required by limitation (e).
In the Answer, the Examiner takes the position that Notarius describes
that “advertisers, business managers, suppliers[,] and Channel Hub
Operations work together creating specific business rules and approving
content” and the Examiner interprets such collaboration as “feedback.”
Ans. 4 (citing Notarius H 212—216). We have reviewed the cited portions.
Yet, we fail to see anything that teaches or suggests the argued limitation.
At paragraphs 212 to 213, Notarius generally describes a
merchandising and promotions management application for the Channel
Hub Network that supports the setup and management of business rules, as
well as promotions and incentives. Specifically, in a preferred embodiment,
various entities “work with Channel Hub Operations to create their specific
business rules, customer profiles and process-based flows.” Notarius 1213.
Notarius also describes an HTML templates content management
application that includes the ability to create, edit, and approve site content,
where content can take the form of ads or promotions. Id. H 214—216.
However, nothing in the cited portions of Notarius discloses or suggests
receiving feedback from the . . . retailer about the condition information
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[reflecting a price discount corresponding to a potential trade promotion],”
as recited in claim (e).
Therefore, we do not sustain the Examiner’s rejection of independent
claim 1 and dependent claims 2—12 and 45—48 under 35 U.S.C. § 103(a).
Independent Claims 14, 15, 28, 29, 42, 43, and 44, and Dependent Claims
16—26 and 30—40
Independent claims 14, 15, 28, 29, 42, 43, and 44 include language
substantially similar to the language of independent claim 1. Therefore, we
do not sustain the rejection under 35 U.S.C. § 103(a) of independent
claims 14, 15, 28, 29, 42, 43, and 44, and claims 16—26 and 30-40, which
depend therefrom, for the same reasons set forth above with respect to claim
1.
Dependent Claims 13, 27, and 41
Claims 13, 27, and 41 each depends, directly or indirectly, from one
of independent claims 1,15, and 29. The rejection of these dependent
claims does not cure the deficiency in the Examiner’s rejection of
independent claims 1,15, and 29. Therefore, we do not sustain the
Examiner’s rejection under 35 U.S.C. § 103(a) of claims 13, 27, and 41 for
the same reasons set forth above with respect to the independent claims.
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DECISION
The Examiner’s rejection of claims 1—44 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejections of claims 1—48 under 35 U.S.C. § 103(a)
are reversed.
A NEW GROUND OF REJECTION of claims 45^18 under
35 U.S.C. § 101 has been entered.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection . . .
shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also
provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
respect to the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the Examiner.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
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-IN-PART
37 C.F.R, $ 41.50(b)
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