Ex Parte Buset et al

Patent Trials and Appeals BoardMar 29, 2019

13733663 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/733,663 01/03/2013 46583 7590 04/02/2019 Roberts Mlotkowski Safran Cole & Calderon, P.C. Intellectual Property Department P.O. Box 10064 MCLEAN, VA 22102-8064 Knut I. Buset 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. END920120043US 1 9869 EXAMINER SHORTER, RASHIDA R ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 04/02/2019 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): docketing@rmsc2.com lga11augher@rmsc2.com secretaries@rmsc2.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte KNUT I. BUSET, BLAINE H. DOLPH, SRI RAMANATHAN, TOM SOMBOONSONG, and MATTHEW B. TREVATHAN Appeal2017-005373 Application 13/733,663 1 Technology Center 3600 Before ST. JOHN COURTENAY III, JASON J. CHUNG, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellant appeal under 35 U.S.C. Â§ 134(a) from the Examiner's rejection of claims 1-6, 8-12, and 14-26, which are all the claims pending in this application. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. 1 Appellant is the Applicant, International Business Machines Corporation, which, according to the Brief, is the real party in interest. App. Br. 2. Appeal2017-005373 Application 13/733,663 STATEMENT OF THE CASE Introduction Appellant's application relates to integrating a retailer's local store, online, and alternate store inventories. Spec. ,r 2. Claim 1 illustrates the appealed subject matter and reads as follows: 1. A method for completing a retail purchase, the method compnsmg: determining, by a computer processor, whether an item is in inventory at a physical location of a user, one or more alternate locations, or an on-line store of a merchant, by leveraging a scanned SQ code or bar code of the item; adding, by the computer processor, the item to a virtual cart associated with a mobile device of a user based on the scanned SQ code or bar code, wherein the adding of the item to the virtual cart is performed after determining that the item is in inventory; determining, by the computer processor, which items are omitted from a physical cart by a weight difference between items in the virtual cart and items determined to be in the physical cart; and completing, by the computer processor, an order of the item at one of the physical location of the user, the one or more alternate locations, and the on-line store of a merchant. The Examiner's Rejections Claims 1, 3, 6, 8, 12, 19, 23, and 242 stand rejected under 35 U.S.C. Â§ 112(a) or pre-AIA 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. Final Act. 2-3. 2 The Final Rejection lists claim 15 in the heading of the written description rejection, but does not provide any further detail for claim 15. See Final Act. 2-3. Appellant notes this issue in the Appeal Brief and assume claim 15 is not rejected under 35 U.S.C. Â§ 112. App. Br. 47. The Examiner does not provide further detail regarding claim 15 in the Answer. Ans. 11. We treat 2 Appeal2017-005373 Application 13/733,663 Claims 1-6, 8-12, and 14-26 stand rejected under 35 U.S.C. Â§ 101 as being directed to patent-ineligible subject matter. Final Act. 4-5. ANALYSIS Written Description The Examiner rejects claim 1 as failing to comply with the written description requirement because it is "unclear how one can determine an item is omitted based on weight difference (i.e. if two items are the same weight)." Final Act. 2. Claim 1 recites, in relevant part, "determining, by the computer processor, which items are omitted from a physical cart by a weight difference between items in the virtual cart and items determined to be in the physical cart." Appellant argues the Examiner erred because the Specification describes such a determination. App. Br. 48-51 (citing Spec. ,r,r 20, 36, 37, 41, and 63). We agree with Appellant. The Specification discloses the weight of an item in a virtual cart can be tabulated automatically by look-up tables. Spec. ,r 20. At checkout, items in a physical cart can be validated against the virtual cart by comparing the weight of the physical cart with the calculated weight of all of the items in the virtual cart. Id. If there is a weight difference, the system can infer which items are missing based on this weight difference. Id. We agree with Appellant that this disclosure sufficiently supports the recited claim limitation, so as to establish possession of what is claimed. Thus, we do not sustain the written the inclusion of claim 15 in the rejection heading as a typographical error and treat claim 15 as not being rejected under 35 U.S.C. Â§ 112. 3 Appeal2017-005373 Application 13/733,663 description rejection of claim 1. We also do not sustain the written description rejection of independent claims 12, 19, and 24, which recite commensurate limitations. The Examiner also rejects dependent claims 3, 6, 8, and 23 for failing to satisfy the written description requirement. Final Act. 3. In each rejection, the Examiner finds the recited limitations are "unclear." However, the Examiner does not explain how the Specification fails to support the recited limitation as required for a written description rejection. Appellant argues that each dependent claim is supported by disclosure in the Specification, citing paragraphs that explicitly disclose the subject matter claimed. See App. Br. 51-53. We agree with Appellant's arguments and do not sustain the Examiner's written description rejection of dependent claims 3, 6, 8, and 23 for the reasons set forth by Appellant. 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. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. 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. Alice, 573 U. S. 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 4 Appeal2017-005373 Application 13/733,663 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, 192 ( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 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. ( citation omitted) ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or 5 Appeal2017-005373 Application 13/733,663 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 (quotation marks 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. ( alterations in original) ( 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 Â§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance 84 Fed. Reg. 50 ("Revised Guidance"). 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" Â§ 2106.05(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: 6 Appeal2017-005373 Application 13/733,663 (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP Â§ 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 Revised Guidance. Revised Guidance Step 1 Step 1 of the Revised Guidance asks whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. Â§ 101: process, machine, manufacture, or composition of matter. See Revised Guidance. Claim 1 recites "a method for completing a purchase." Appellant does not argue the Examiner erred in concluding claim 1 falls within the four statutory categories of patentable subject matter. We agree with the Examiner's conclusion because claim 1 falls within the process category. Revised Guidance Step 2A, Prong 1 Under Step 2A, Prong 1 of the Revised Guidance, we determine whether the claims recite 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). See Revised Guidance. The Examiner concludes claim 1 is directed to "a method of completing a purchase by determining whether the inventory is at an online or physical location and determining which items were omitted from the physical cart by analyzing the weight difference." Final Act. 4. The 7 Appeal2017-005373 Application 13/733,663 Examiner concludes this is an abstract idea because it is a method of organizing human activity. Ans. 3. Appellant argues the Examiner erred because claim 1 is not directed to an abstract idea. App. Br. 6-11; Reply Br. 2-13. In particular, Appellant argues claim 1 does more than compare and store information because it also determines which items are omitted from a physical cart based on a weight difference between items in a virtual cart and items in the physical cart. App. Br. 9. Appellant argues this improvement overcomes limitations that occur in traditional retail settings and are not part of what typically and routinely occurs when completing a retail purchase. Id. Claim 1 recites the following limitations: (1) "determining ... whether an item is in inventory at a physical location of a user, one or more alternate locations, or an on-line store of a merchant;" (2) "adding ... the item to a virtual cart associated with a mobile device of a user ... after determining that the item is in inventory;" and (3) "completing ... an order of the item at one of the physical location of the user, the one or more alternate locations, and the on-line store of a merchant." These limitations, under their broadest reasonable interpretation, recite a method of commercial interactions, including marketing or sales activities or behaviors because these limitations recite operations that ordinarily take place in the marketing or sale of goods. For example, the "determining" step recited in limitation (1) is characteristic of determining whether an item is available in inventory at one of a number of locations. The "adding" step recited in limitation (2) is characteristic of beginning the process of selling an item to a customer, and the "completing" step in limitation (3) finishes this process. Accordingly, we conclude claim 1 recites a method of commercial interactions, including 8 Appeal2017-005373 Application 13/733,663 marketing or sales activities or behaviors, which falls within the certain methods of organizing human activities category of abstract ideas identified in the Revised Guidance. Revised Guidance Step 2A, Prong 2 Under Step 2A, Prong 2 of the Revised Guidance, we next determine whether the claims recite additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.0S(a}-(c), (e}-(h)). Appellant argues claim 1 is not directed to a method of organizing human activity that constitutes an abstract idea because claim 1 requires certain technology, including a computer processor, to implement the virtual cart. App. Br. 10. Appellant has not persuaded us of Examiner error. The mere recitation of technology, such as a computer processor, does not constitute "additional elements that integrate the exception into a practical application." See MPEP Â§ 2106.0S(a}-(c), (e}-(h). To integrate the exception into a practical application, the additional claim elements must, for example, improve the functioning of a computer or any other technology or technical field (see MPEP Â§ 2106.0S(a)), apply the judicial exception with a particular machine (see MPEP Â§ 2106.0S(b)), effect a transformation or reduction of a particular article to a different state or thing (see MPEP Â§ 2106.0S(c)), or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP Â§ 2106.0S(e)). See Revised Guidance. Appellant further argues claim 1 recites additional elements that improve an existing technological process-the use of scanned SQ codes or bar codes and a virtual cart associated with a mobile device. App. Br. 13; 9 Appeal2017-005373 Application 13/733,663 see MPEP Â§ 2106.05(a). According to Appellant, these technologies are significant and not commonly used in the retail industry. App. Br. 13. Appellant also argues the claims are "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." App. Br. 14 (citing DDR Holdings, LLC v. Hotels.com, LP, 773 F.3d 1245 (Fed. Cir. 2014)). Appellant has not persuaded us of Examiner error. The nature of claim 1 as a whole is not to define a specific technological improvement, which may constitute integrating the claims into a practical application. Instead, claim 1 merely recites the steps necessary to perform the abstract idea itself. Specifically, claim 1 employs "generic processes and machinery" to achieve results and is not focused on "a specific means or method that improves the relevant technology." McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Appellant argues the claim recites using a scanned SQ code or bar code and a virtual cart associated with a mobile device, which are "important" technologies that are not commonly done in the retail industry. App. Br. 13. However, Appellant does not identify any purported improvement to SQ codes, bar codes, virtual carts, or mobile devices. Instead, the claimed invention uses these existing technologies to achieve a new business goal. Thus, claim 1 focuses on the manner in which a marketing or sales transaction is completed, not improvements to the technology used to complete the transaction. Further, our reviewing court has held that limiting an abstract idea to the e-commerce setting does not make it any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015) (holding claim that limits price optimization method to the e-commerce setting is 10 Appeal2017-005373 Application 13/733,663 directed to an abstract idea). Appellant's arguments that the claims overcome limitations of "traditional" retail are unpersuasive because merely linking the abstract idea of marketing or sales activities to the particular technological environment of e-commerce is insufficient. Similarly, Appellant's argument that claim 1 requires "certain technology," including a processor, is insufficient because this, too, constitutes linking the idea to a particular technological environment. Thus, Appellant have not persuaded us of Examiner error with respect to Step 2A, Prong 2 of the Revised Guidance. Therefore, we conclude the judicial exception is not integrated into a practical application under the Revised Guidance. Revised Guidance Step 2B Under Step 2B of the Revised Guidance, we next determine whether the claims recite an "inventive concept" that "must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer." BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). There must be more than "computer functions [that] are 'well- understood, routine, conventional activit[ies]' previously known to the industry." Alice, 573 U.S. at 225 (second alteration in original) (quoting Mayo, 566 U.S. at 73). Appellant argues claim 1 recites significantly more than merely describing and applying the abstract idea. App. Br. 12-13. As noted above with respect to Step 2A, Prong 2, Appellant argues the claim recites improvements to technology, in particular involving scanned SQ codes or bar codes and virtual carts associated with a mobile device. Id. Appellant also argues the claims are necessarily rooted in computer technology and 11 Appeal2017-005373 Application 13/733,663 there is no correspondence in the pre-computer world for the claimed features. Id. at 13. The Examiner concludes the claims do not recite significantly more than the abstract idea itself because "the claims do not effect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment." Final Act. 5. Appellant's argument regarding improving computer technology is unpersuasive of Examiner error with respect to Step 2B for the same reasons as with respect to Step 2A, Prong 2. Appellant's argument that the claims are necessarily rooted in computer technology is similarly unpersuasive. In DDR, the Federal Circuit found that claims drawn to "generating a composite web page that combines certain visual elements of a 'host' website with content of a third-party merchant" provided a solution "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." 773 F.3d at 1248. Yet, unlike DDR, Appellant fails to show how claim 1 is directed to specific rules that improve the relevant technology, as opposed to improving a business practice where generic computer elements are invoked merely as a tool. See id.; see also Credit Acceptance Corp. v. Westlake Servs., 859 F .3d 1044, 1055 (Fed. Cir. 2017). Appellant nominally presents other arguments (see App. Br. 13-14), but these arguments are conclusory and unpersuasive. For example, Appellant argues the claims require more than generic computer components to perform generic computer functions, but Appellant does not persuasively identify any claimed components or functions that are not generic. See App. 12 Appeal2017-005373 Application 13/733,663 Br. 12-13. Moreover, we note the Specification states "computer program instructions may be provided to a processor of a general purpose computer." Spec. ,r 27; see also Spec. ,r 43 (discussing computing device 14 as any general purpose computer). For these reasons, we agree with the Examiner that the claims do not recite an "inventive concept" sufficient to transform the claims from an abstract idea to a patent eligible application. We, therefore, sustain the patent-ineligible subject matter rejection of claim 1. We also sustain the rejection of independent claims 12, 19, 22, and 24, for which Appellant provide similar arguments. See App. Br. 6--43. We also sustain the rejection of dependent claims 2-6, 8-11, 14-18, 20, 21, 23, 25, and 26, for which Appellant provide similar arguments. See App. Br. 43-47. DECISION We reverse the Examiner's decision rejecting claims 1, 3, 6, 8, 12, 19, 23, and 24 under 35 U.S.C. Â§ 112(a) or pre-AIA 35 U.S.C. Â§ 112, first paragraph. We affirm the Examiner's decision rejecting Claims 1-6, 8-12, and 14-26 under 35 U.S.C. Â§ 101. Because we have sustained at least one ground of rejection with respect to each claim on appeal, we affirm the decision of the Examiner rejecting claims 1-6, 8-12, and 14-26. See 37 C.F.R. Â§ 4I.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l )(iv). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 13