Ex Parte COHEN et al

Patent Trial and Appeal Board

Aug 3, 2017

13481140 (P.T.A.B. Aug. 3, 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.
13/481,140 05/25/2012 Maxime COHEN T9049-19683US01 5998
74739 7590 08/07/2017
MILES & STOCKBRIDGE P.C.
Oracle International Corporation
1751 Pinnacle Drive
EXAMINER
FIELDS, BENJAMIN S
Suite 1500
Tysons Corner, VA 22102-3833
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/07/2017 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):
Ipdocketing @ Miles S tockbridge. com
bgoldsmith @ miles stockbridge .com
smcvean @ milesstockbridge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAXIME COHEN, ANDREW VAKHUTINSKY,
and KIRAN PANCHAMGAM1
Appeal 2016-006018
Application 13/481,140
Technology Center 3600
Before MAHSHID D. SAADAT, LARRY J. HUME, and
MATTHEW J. McNEILL, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1—20. 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.
Appeal 2016-006018
Application 13/481,140
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed and claimed inventions relate "to a computer
system that optimizes product pricing." Spec. 12.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitations):
1. A computer readable medium having instructions
stored thereon that, when executed by a processor, causes the
processor to determine seasonal time-dependent product pricing
for a product category having multiple time periods during a
selling season, the determining pricing for each time period
comprising:
receiving a non-linear time-dependent problem for the
product category, wherein the non-linear problem comprises a
demand model;
for a plurality of pair of products in the product category,
determining coefficients for a change in demand of a first
product at each of a plurality of time periods when a price of a
second product is changed and repeating the determining
coefficients for at least all related pair of products in the
product category,
generating an approximate Mixed Integer Linear
Programming (MILP) problem comprising a change of demand
based on a sum of the determined coefficients',
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 25, 2015); Reply Brief ("Reply Br.," filed May 23, 2016); Examiner's
Answer ("Ans.," mailed Mar. 24, 2016); Final Office Action ("Final Act.,"
mailed Apr. 10, 2015); and the original Specification ("Spec.," filed
May 25, 2012).
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Application 13/481,140
solving the MILP problem to obtain a MILP solution;
and
converting the MILP solution to optimized prices for
each product in the product category at each time period
during the selling season.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Dagumetal. US 2009/0210355 A1 Aug. 20, 2009
("Dagum")
Venkatraman et al. US 2008/0086429 A1 Apr. 10, 2008
("Venkatraman")
Rejections on Appeal
Rl. Claims 1—20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Ans. 4; Final Act. 3.
R2. Claims 1—20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Venkatraman and Dagum. Ans. 7;
Final Act. 6.
CFAIM GROUPING
Based on Appellants' arguments (App. Br. 3—8), we decide the appeal
of non-statutory subject matter Rejection Rl of claims 1—20 on the basis of
representative claim 1; and we also decide the appeal of obviousness
Rejection R2 of claims 1—20 on the basis of representative claim l.3
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
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Application 13/481,140
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We agree with particular arguments advanced by Appellants with
respect to § 103 Rejection R2 of claims 1—20. However, we disagree with
Appellants' arguments with respect to § 101 Rejection R1 of claims 1—20
and, unless otherwise noted, we incorporate herein by reference and 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 and rebuttals set forth in
the Examiner's Answer in response to Appellants' arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. $ 101 Rejection R1 of Claims 1—20
Issue 1
Appellants argue (App. Br. 3—8; Reply Br. 2-4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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Did the Examiner err in concluding claim 1 is directed to an abstract
idea, and thus is ineligible for patenting under a judicial exception to the
requirements of35U.S.C. § 101?
Analysis
Appellants contend "[e]ven if the claims are considered to be directed
to an abstract idea (not admitted by Applicants), the claims can include an
'inventive concept' or additional elements so that the abstract idea is
transformed into a patent-eligible application." App. Br. 4 (citing Alice
Corp. Pty Ltd. v. CLSBanklnt'l, 134 S. Ct. 2347, 2357 (2014)). As support
for this contention, Appellants argue "[t]he claims do not merely recite
conventional functionality" (App. Br. 4); "[t]he claims do not preempt an
abstract idea" (App. Br. 6); "[t]he recited functionality of the claims
improves the functioning of the computer" (id.); and "[t]he claim elements
were not considered in combination." App. Br. 8 (emphasis omitted).
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
566 U.S. at 71; Alice, 134 S. Ct. at 2354. Accordingly, laws of nature,
natural phenomena, and abstract ideas are not patent-eligible subject matter.
Id.
The Supreme Court's two-part Mayo!Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
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blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotations omitted). First, we "determine
whether the claims at issue are directed to a patent-ineligible concept." Id.
at 2355. If so, we "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." Id. at 2357 (quoting Mayo, 566 U.S.
at 72, 79). While the two steps4 of the Alice framework are related, the
"Supreme Court's formulation makes clear that the first-stage filter is a
meaningful one, sometimes ending the § 101 inquiry." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the
Supreme Court "has not established a definitive rule to determine what
constitutes an 'abstract idea'" for the purposes of step one. Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S.
Ct. at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353—54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
4 Applying this two-step process to claims challenged under the abstract
idea exception, the courts typically refer to step one as the "abstract idea"
step and step two as the "inventive concept" step. Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
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carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Under the "abstract idea" step we must evaluate "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." Id. (citation omitted). If the
concept is directed to a patent-ineligible concept, we proceed to the
"inventive concept" step. For that step we must "look with more specificity
at what the claim elements add, in order to determine 'whether they identify
an 'inventive concept' in the application of the ineligible subject matter' to
which the claim is directed." Affinity Labs, 838 F.3d at 1258 (quoting Elec.
Power Grp., 830 F.3d at 1353).
Turning to the claimed invention, claim 1 recites a "computer readable
medium having instructions stored thereon that, when executed by a
processor, causes the processor to determine seasonal time-dependent
product pricing for a product category having multiple time periods during a
selling season." Claim 1 (preamble).5 Medium claim 1 is recited as
including instructions that cause the claimed pricing determination to be
carried out by "receiving ... a demand model;" "determining coefficients for
a change in demand of a first product. . . when a price of a second product is
changed and repeating the determining coefficients for . . . all related pair[s]
of products;" "generating an approximate Mixed Integer Linear
5 Similarly, independent claims 9 and 17 preambles recite "[a] computer
implemented method for determining seasonal time-dependent product
pricing for a product category having multiple time periods during a selling
season" (claim 9); and "[a] product pricing optimization system that
determines seasonal time-dependent product pricing for a product category
having multiple time periods during a selling season, wherein the non-linear
problem comprises a demand model." Claim 17.
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Programming (MILP) problem," "solving the MILP problem to obtain a
MILP solution; and converting the MILP solution to optimized prices . . .
Method claim 9 similarly includes steps of "receiving a . . . demand
model;" "determining coefficients for a change in demand of a first product
. . . and repeating the determining coefficients for at least all related pair of
products in the product category;" "generating an approximate Mixed
Integer Linear Programming (MILP) problem;" "solving the MILP problem
to obtain a MILP solution; and converting the MILP solution to optimized
prices . . . Claim 9.
System claim 17 limitations also require a "coefficient generator," "a
Mixed Integer Linear Programming (MILP) generator," and "a converter"
recited as carrying out functions as recited in each of claims 1 and 9.
Claim 17.
The Examiner finds, and we agree,
[Claims 1—8, 17—20 and] 9—16 have been found to be directed
towards the abstract idea of "[a] computer implemented method
for determining seasonal time-dependent product pricing for a
product category having multiple time periods during a selling
season, ... ", claims of which add nothing of substance to the
underlying abstract idea directed towards (i) a fundamental
economic practice and (iv) a mathematical relationship or
formula.
Ans. 5 (emphasis omitted). The Examiner further finds:
[T]he recitations of "receiving", "determining", "generating",
"solving", and "converting", of a "demand model" and/or a
"Mixed Integer Linear Programming (MILP) problem" amount
to little more than reciting that a generic computer system
applies the abstract idea using such tools to do so. The Claims
can then be analyzed under the second part of the analysis and
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the claims require no more than a generic computer to perform
generic computer functions. Further, as a/the computer only
automates the abstract idea, the abstract idea is ineligible
because the claim can also be performed without any apparatus,
and even if it requires computer-implementation, nothing more
than a generic computer is required to perform this claim,
which is insufficient to render the claim statutory. Having
considered the claims as a whole, no element or combination of
elements in the claims are sufficient to ensure that the claims
amount to significantly more than the abstract idea itself.
Indeed, the claims fail to recite any improvements to another
technology or technical field, improvements to the functioning
of the computer itself, and/or meaningful limitations beyond
generally linking the use of an abstract idea to a particular
environment. Therefore, because there are no meaningful
limitations in the claim that transform the exception into a
patent eligible application such that the claim amounts to
significantly more than the exception itself, the claim is rejected
under 35 U.S.C. 101 as being directed to non-statutory subject
matter.
Ans. 5—6.
Under step one, we agree with the Examiner that the inventions
claimed in claims 1, 9, and 17 are directed to an abstract idea, i.e.,
"determining seasonal time-dependent product pricing for a product category
having multiple time periods during a selling season," involving use of a
computer to receive, process, and store data.
As the Specification itself observes,
One embodiment is a price optimizer that optimizes
prices for product items in a given merchandise category to
maximize the total revenue subject to linear constraints and
dependent on the specific time period during a selling season.
The optimizer determines, for a pair of products at each time
period, a set of coefficients that express the changes in demand
when the price of one product is changed. Using the
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coefficients, an approximate linear Mixed Integer Linear
Programming ("MILP") problem is formulated in place of the
original, non-linear demand problem, which can then be solved
to determine the optimized prices.
Spec. 19.
We find this type of activity (i.e., optimizing prices to maximize total
revenue) existed well before the advent of computers and the Internet and
could be carried out by a human with pen and paper. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson").6
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has altered the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue to "treat[ ] analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(quoting Elec. Power Grp., 830 F.3d at 1354 (citations omitted)).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
6 Cybersource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101." Cybersource, 654 F.3d at 1373.
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715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 132 S.
Ct. at 1298.
Evaluating representative claims 1, 9, and 17 under step 2 of the Alice
analysis, we agree with the Examiner that, similar to independent claim 9,
claim 1 lacks an "inventive concept" that transforms the abstract idea of
"determin[ing] seasonal time-dependent product pricing for a product
category having multiple time periods during a selling season" into a patent-
eligible application of that abstract idea. Ans. 5—6. We agree with the
Examiner because, as in Alice, we find the recitation of a computer-
implemented method, system, or computer-readable medium that carries out
the recited method/instructions "adds nothing of substance to the underlying
abstract idea directed towards (i) a fundamental economic practice and (iv) a
mathematical relationship or formula" (Ans. 5) and is simply not enough to
transform the patent-ineligible abstract idea here into a patent-eligible
invention. See Alice, 134 S. Ct. at 2357 ("[Cjlaims, which merely require
generic computer implementation, fail to transform [an] abstract idea into a
patent-eligible invention.").
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped claims 2—20
which fall therewith. See Claim Grouping, supra.
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2. $103 Rejection R2 of Claims 1—20
Issue 2
Appellants argue (App. Br. 9-12; Reply Br. 4—5) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Venkatraman and Dagum is in error. These contentions
present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] computer readable medium having instructions stored
thereon that, when executed by a processor, causes the processor to
determine seasonal time-dependent product pricing for a product category
having multiple time periods during a selling season, the determining pricing
for each time period" including, inter alia, the steps of:
for a plurality of pair of products in the product category,
determining coefficients for a change in demand of a first
product at each of a plurality of time periods when a price of a
second product is changed and repeating the determining
coefficients for at least all related pair of products in the
product category;
generating an approximate Mixed Integer Linear
Programming (MILP) problem comprising a change of demand
based on a sum of the determined coefficients; . . . [and]
converting the MILP solution to optimized prices for
each product in the product category at each time period during
the selling season,
as recited in claim 1?
Analysis
Appellants contend "the Prior Art Fails to Disclose Determining
Coefficients for a Change in Demand of a First Product at each of a Plurality
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of Time Periods when a Price of a Second Product is Changed, and
Repeating the Determining Coefficients for at least all Related Pair of
Products in the Product Category to Generate a MILP and Determine
Product Pricing." App. Br. 9 (emphasis omitted).
Appellants further argue:
The Examiner alleges that Dagum discloses a MILP problem,
however a text search reveals that there is no disclosure of a
MILP problem, further, as with Venkatraman, Dagum fails to
disclose optimized prices by determining coefficients for a
change in demand of a first product at each of a plurality of
time periods when a price of a second product is changed, and
generating an approximate Mixed Integer Linear Programming
("MILP") problem that includes a change of demand based on
a sum of the determined coefficients.
Because many of the recited limitations are not disclosed
by the prior art, the Examiner has failed to establish a prima
facie case of obviousness.
App. Br. 10.
In response, the Examiner finds Dagum teaches or suggests
"generating an approximate Mixed Integer Linear Programming (MILP)
problem comprising a change of demand based on a sum of the determined
coefficients." Ans. 8 (citing Dagum Abstract; figures 1, 4, 5, 8, 11; Ull,
31-35, 37, 65).
We have reviewed the cited portions of Dagum and the entirety of the
reference, and find no disclosure, teaching, or suggestion of generating an
approximate MILP problem, as required by the claims, nor has the Examiner
provided reasoning sufficient to persuade us the method disclosed by Dagum
teaches or suggests the claimed generation of an approximate MILP
problem.
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Therefore, for essentially the same reasons argued by Appellants as
cited above, we reverse the Examiner's rejection of independent claim 1, and
also the rejection of independent claims 9 and 17, which recite the disputed
limitations in commensurate form. For the same reasons, we also reverse
the obviousness rejections of all claims 2—8, 10-16, and 18—20 that depend
therefrom.
Therefore, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner's reliance on the combined
teachings and suggestions of the cited prior art combination to teach or
suggest the disputed limitation of claim 1, such that we cannot sustain the
Examiner's resulting legal conclusion of obviousness. We also cannot
sustain the Examiner's obviousness rejection of independent claims 9 and 17
which recite the contested limitation in commensurate form, nor can we
affirm the rejection of grouped claims 2—8, 10-16, and 18—20 which
variously depend therefrom and fall therewith. See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2—5) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner’s Answer will not be considered except for good cause (see 37
C.F.R. § 41.41(b)(2)), which Appellants have not shown.
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CONCLUSIONS
(1) The Examiner did not err with respect to Rejection R1 of claims
1—20 under 35 U.S.C. § 101 as being drawn to patent-ineligible subject
matter, and we sustain the rejection.
(2) The Examiner erred with respect to obviousness Rejection R2
of claims 1—20 under 35 U.S.C. § 103(a) over the cited prior art combination
of record, and we do not sustain the rejection.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision. See 37
C.F.R. § 41.50(a)(1).
DECISION
We affirm the Examiner's decision rejecting claims 1—20.
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). See 37
C.F.R. § 41.50(f).
AFFIRMED
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