Ex Parte Chetuparambil et al

Patent Trial and Appeal Board

Jun 8, 2017

13316950 (P.T.A.B. Jun. 8, 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.
13/316,950 12/12/2011 Madhu K. Chetuparambil IN920110206US1
(790.142)
2880
89885 7590 06/08/2017
FERENCE & ASSOCIATES LLC
409 BROAD STREET
PITTSBURGH, PA 15143
EXAMINER
MANSFIELD, THOMAS L
ART UNIT PAPER NUMBER
3623
MAIL DATE DELIVERY MODE
06/08/2017 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MADHU K. CHETUPARAMBIL, KALAPRIYA KANNAN, and
GEORGE T. JACOB SUSHIL
____________

Appeal 2016-006842
Application 13/316,9501
Technology Center 3600
____________

Before LARRY J. HUME, JOYCE CRAIG, and MATTHEW J. McNEILL,
Administrative Patent Judges.

McNEILL, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 13‒19 and 22‒25, which are all the claims pending in this
application.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 According to Appellants, the real party in interest is International Business
Machines Corporation. App. Br. 3.
2 Claims 1‒12, 20, and 21 are canceled. App. Br. 21, 24 (Claims App.).
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Application 13/316,950

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STATEMENT OF THE CASE
Introduction
Appellants’ application relates to obtaining market intelligence
through social media. Spec. ¶ 17. Different sources of data are integrated
and several types of business intelligence analysis are performed and made
available to consumers on an on-demand basis. Id. Claim 13 is illustrative
of the appealed subject matter and reads as follows:
13. An apparatus comprising:
at least one processor; and
a computer readable storage medium having computer
readable program code embodied therewith and executable by
the at least one processor, the computer readable program code
comprising:
computer readable program code configured to input
guidelines for deriving mercantile intelligence with relation to a
product;
computer readable program code configured to mine
social content data with relation to the product, the social content
data comprising user-generated content with relation to the
product;
computer readable program code configured to generate a
map which reconciles the social content data with the guidelines,
the social content data including language-based terms expressed
in social content;
computer readable program code configured to extract
from the map elements related to mercantile intelligence, the
elements comprising product-related features to which the social
content language-based terms are mapped; and
computer readable program code configured to output a
mercantile intelligence report with relation to the product, via
determining a product utility value;
wherein to determine a product utility value comprises:
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determining a weighted sum of expected attribute utility
values; and
determining an exponential component for modeling a
natural decay in a value of a product during its lifetime.
The Examiner’s Rejection3
Claims 13‒19 and 22‒25 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 3‒5.
Related Case
The present application is the parent application under 35 U.S.C.
§ 120 of continuation Application Serial No. 13/598,987, which is also
before this panel on appeal (Appeal 2016-006814).
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
contentions that the Examiner has erred. We disagree with Appellants’
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken and (2) the reasons set forth by the Examiner in the Examiner’s
Answer in response to Appellants’ Appeal Brief. We concur with the
conclusions reached by the Examiner. We highlight the following additional
points.
Appellants argue the Examiner erred because the rejection is lacking
in meaningful detail and “little more than a hollow set of arguments without

3 The Examiner also indicated claims 1‒6 and 9‒12 are rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter because they are
directed to a processor to execute computer code and do not recite that the
computer code is tangibly embodied on a non-transitory computer readable
storage medium. Final Act. 5. However, as Appellants note (App. Br. 18),
claims 1‒6 and 9‒12 are canceled.
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basis.” App. Br. 13. Appellants also argue the Examiner “over-interpreted
claimed elements” and “mischaracterizes the currently claimed features.”
App. Br. 14. Appellants argue the “embodiments of the invention, as
broadly claimed, go well beyond a mere ‘abstract idea.’” Id. According to
Appellants, there is a “level of sophistication in [the] single elements and the
totality of elements that significantly transcend ‘mere instructions to
implement the idea on a computer, or . . . recitation of generic computer
structure . . . .” App. Br. 16.
Alice identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to determine if the claim is directed to a law of
nature, a natural phenomenon, or an abstract idea (judicial exceptions).
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S.Ct. 2347, 2355 (2014). If so,
the second step is to determine whether any element or combination of
elements in the claim is sufficient to transform the nature of the claim into a
patent eligible application, that is, to ensure that the claim amounts to
significantly more than the judicial exception. Id.
We agree with the Examiner that claim 13 recites “the abstract idea of
generating a mercantile intelligence report relating to products.” Final
Act. 3. Our reviewing court has explained:
[T]he “realm of abstract ideas” includes “collecting information,
including when limited to particular content.” Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.2016)
(collecting cases). We have also “treated analyzing information
by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within
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the abstract-idea category.” Id. And we have found that “merely
presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of
such collection and analysis.” Id.
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016).
As in FairWarning, the claims here “are directed to a combination of
these abstract-idea categories.” Id. Specifically, the claims here recite steps
of gathering information (social content data and guidelines for deriving
mercantile intelligence), analyzing that information (generating a map to
reconcile social content data with the guidelines), and presenting that
information (outputting a mercantile intelligence report by determining a
product utility value). And like in FairWarning, “[w]hile the claims here
recite using one of a few possible rules to analyze the . . . data, this does not
make them eligible under our decision in McRO, Inc. v. Bandai Namco
Games America Inc., No. 15–1080, 837 F.3d 1299, 2016 WL 4896481 (Fed.
Cir. Sept. 13, 2016), which also involved claims reciting rules.”
FairWarning, 839 F.3d at 1093–94. Accordingly, we agree with the
Examiner that claim 13 is directed to an “abstract idea.”
Regarding step two, Appellants argue claim 13 recites “significantly
more” because it uses “at least one processor . . . to carry out one or more
steps that the Office might otherwise misinterpret as a mere ‘abstract idea’.”
App. Br. 13. However, using a processor to perform a method embodied by
computer readable program code on a computer readable storage medium—
generic computer components— does not impart patentability. Our
reviewing court “found similar claims to be ineligible despite the recitation
of a general purpose computer or the Internet.” Versata Dev. Grp., Inc. v.
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SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases). As
in Versata, the claims here “do not improve some existing technological
process or solve some technological problem in conventional industry
practice.” Id. Similarly,
the claims at issue are not rooted in computer technology to solve
a problem specifically arising in some aspect of computer
technology. Instead, the claims at issue are more like the claims
we summarized in DDR Holdings as insufficient to reach
eligibility—claims reciting a commonplace business method
aimed at processing business information despite being applied
on a general purpose computer.
Id. Accordingly, 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.
For these reasons, Appellants have not persuaded us the Examiner
erred in rejecting claim 13 as directed to nonstatutory subject matter. On
this record, we, therefore, sustain the rejection of claim 13. We also sustain
the rejection of independent claim 14, which recites a computer program
product of similar scope, and dependent claims 15‒19 and 22‒25, which are
not argued separately (App. Br. 13‒18).
DECISION
We affirm the decision of the Examiner to reject claims 13‒19
and 22‒25.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED