Ex Parte Dance et al

Patent Trials and Appeals Board

Mar 26, 2019

13969762 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/969,762 08/19/2013
144578 7590 03/28/2019
FAY SHARPE LLP / CONDUENT
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
FIRST NAMED INVENTOR
Christopher R. Dance
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.
20110645US01-CNDT2770US01 8532
EXAMINER
HENRY, MATTHEW D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/28/2019 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@faysharpe.com
Conduent.PatentDocketing@conduent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHRISTOPHER R. DANCE, ONNO R. ZOETER,
and DANIEL H. GREENE 1
Appeal2018-000074
Application 13/969,762
Technology Center 3600
Before MICHAEL J. STRAUSS, NABEEL U. KHAN, and
PHILLIP A. BENNETT, Administrative Patent Judges.
STRAUSS, 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, 3-14, 16-21, and 24--29. Claims 2, 15, 22, and
23 are canceled. See App. Br. 38--41, Claims App. We have jurisdiction
under 35 U.S.C. § 6(b).
1 According to Appellants, Conduent Business Services, LLC is the real
party in interest. See App. Br. 1.
Appeal2018-000074
Application 13/969,762
We AFFIRM. 2
THE INVENTION
The claims are directed to simple pricing by price-difference
regularization. Spec., Title. Claim 1, reproduced below, is representative of
the claimed subject matter:
1. A method for selecting an optimized price schedule for
communication from a server to a user device over a computer
network, comprising:
providing, at the server, a simplicity metric for computing a
simplicity term based on weighted differences between prices
in a price schedule;
providing, at the server, a welfare function for computing a
welfare term corresponding to the price schedule;
for a plurality of price schedules, the server:
evaluating the simplicity term of each price schedule in
accordance with the simplicity metric,
computing a welfare term for each price schedule in
accordance with the welfare function, and,
determining a difference between the welfare term and the
simplicity term for each price schedule;
performing, at the server, a plurality of iterations, for each
iteration:
determining a set of price differences between an initial
price schedule and a target schedule which optimize a
soft threshold function, the soft threshold function
being based on the welfare function for the initial price
schedule and simplicity metric for the initial price
schedule, subject to a constraint on the set of price
differences, and wherein the soft threshold function is
of the form:
2 We refer to the Specification, filed August 19, 2013 ("Spec."); Final
Office Action, mailed January 18, 2017 ("Final Act."); Appeal Brief, filed
June 19, 2017 ("App. Br."); Examiner's Answer, mailed August 2, 2017
("Ans.") and Reply Brief, filed October 2, 2017 ("Reply Br.").
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Application 13/969,762
pk:= argmaxpW(p) - ~ ( C(Yip))
LiEA\Akaig
subject to yip = 0 for i E Ak-l
determining a new price schedule by optimizing a hard
threshold function that optimizes the welfare function
subject to the determined set of price differences,
wherein the hard threshold function is of the form:
puk := argmaxpW(p) subject to yip= 0 for i E Ak
computing a value of the new price schedule as a function
of the computed welfare term and simplicity term for
the new price schedule;
selecting one of the new price schedules, the selected one
of the new price schedules being selected based on the
values computed over the plurality of the iterations;
outputting, by the server, the selected one of the new price
schedules as an optimized price schedule selected from the
plurality of price schedules, the selected one of the plurality
of price schedules being selected in accordance with the
determined respective differences;
modifying the selected one of the plurality of price schedules by
the server for display on a display of the user device, wherein
the selected one of the plurality of price schedules is adapted
by the server to retain readability on a small display of the
user device; and
transmitting the selected one of the plurality of price schedules
from the server to the user device over the computer network,
wherein at least one of the evaluating, computing,
determining, selecting, and outputting is performed by a
computer processor.
REJECTION
Claims 1, 3-14, 16-21, and 24--29 stand rejected under 35 U.S.C.
§ 101 as being directed to ineligible subject matter. Final Act. 2-17.
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REJECTION UNDER 35 U.S.C. § 101
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bankint'l, 573 U.S. 208 (2014). The Supreme Court
instructs us to "first determine whether the claims at issue are directed to a
patent-ineligible concept," Id. at 218-219. In this case, the inquiry centers
on whether the claims are directed to an abstract idea. If the initial threshold
is met, we then move to the second step, in which we "consider the elements
of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Supreme
Court describes the second step as a search for "an 'inventive concept'-i.e.,
an element or combination of elements that is 'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself."' Id. ( quoting Mayo, 566 U.S. at 72-73).
The USPTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (hereinafter "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
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(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 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:
(3) adds a specific limitation beyond the judicial exception that is 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.
Examiner's Determinations and Conclusion
In the first step of the Alice inquiry, the Examiner determines the
claims are "directed to a series of computational functions that analyze data
to generate a pricing schedule." Final Act. 12. The Examiner reasons the
claimed steps recite mathematical equations/relationships and the idea itself
which are similar to claims directed to organizing information through
mathematical correlations that were determined to be an abstract idea in
Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014). Id.
At Alice step 2, the Examiner determines the claims do not recite
elements sufficient to amount to significantly more than the abstract idea
because the resultant claims do not amount to an improvement to: (i)
another technology or technical field; or (ii) the functioning of a computer
and because the claim; (iii) does not move beyond a general link of the use
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of an abstract idea to a particular technological environment; and (iv) merely
amounts to the application or instructions to apply the abstract idea on a
computer. Final Act. 14. Addressing claim 1, the Examiner finds
[T]he additional limitations of claim 1, "providing a simplicity
metric, providing a welfare function, outputting an optimized
price schedule, and transmitting the selected one of the plurality
of price schedules from the server to the user device over the
computer network[,]" simply append well-understood, routine,
and conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception
( e.g., a claim to an abstract idea requiring no more than a
generic computer to perform generic computer functions that
are well-understood, routine and conventional activities
previously known to the industry), therefor insufficiently
providing information qualifying as "significantly more" when
analyzing part 2 of the Mayo test because the providing and
providing steps amount to generically making a metric of
function available and outputting the price schedule is directed
to generic displaying functions, which are well-understood,
routine, and conventional activities previously known to the
industry.
Id. at 14--15. Addressing the recited structural elements, the Examiner finds
the "server, user device, and computer network ... merely facilitate the
claimed functions at a high level of generality and they perform
conventional functions." Id. at 16. According to the Examiner, "[ w ]hen
viewed as a whole, these additional claim element(s) do not provide
meaningful limitation(s) to transform the abstract idea into a patent eligible
application of the abstract idea such that the claim(s) amounts to
significantly more than the abstract idea itself." Id.
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Appellants ' Contentions
Appellant presents several arguments in favor of eligibility. First,
Appellants contend the Examiner has failed to set forth a prima facie case of
ineligibility by omission of a "discussion which reflects that an analysis
looking to all limitations of the claims as an ordered combination." App. Br.
13. Appellants further contend "the present claims do not claim an end
result, but rather claim only a limited and specific apparatus or method for
achieving the end result, hence are not directed to an abstract idea." Id. at
14. In support of their contention, Appellants argue "[ f]or example, claim 1
calls for a method for creating price schedules. Claim 1 does not create
price schedules regardless by what method they are generated. Rather, it
only protects the specific combination of steps set forth in claim 1." Id.
Appellants also challenge the Examiner's determination under Alice
step 2. Specifically, Appellants argue "[i]n the present claims, general
purpose computer components were not added post hoc to a fundamental
economic practice or mathematical equation. Rather, the claims are directed
to a specific implementation of a solution to a problem." Id.at 15.
Appellants further contend "[ t ]he present claims do not set forth merely a
series of well-understood steps or computer operations. Rather, they set
forth something significantly more." Id. Appellants argue the claimed
optimization calculations "cannot be performed without the help of
computer technology, and would require specific processes and programs to
analyze data of each of these multiple parameters to perform these complex
calculations." Id. Appellants assert that claim 1 is similar to the
hypothetical claim determined to be patent eligible in example 36 of the
USPTO's "Subject Matter Eligibility Examples: Business Methods" (Dec.
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Application 13/969,762
15, 2016) (hereinafter "Example 36"). Id. at 15-16. Appellants' contentions
of error in connection with independent claim 24 (id. at 23-28) and
independent claim 25 (id. at 28-34) are repetitive in substance to those
presented in connection with independent claim 1 (id. at 12-18).
Appellants' contentions of error in connection with dependent claims 3-14
and 16-21 (id. at 18-23) and dependent claims 26-29 (id. at 34--35) are that
the claims improve computer related technology and thereby recite
significantly more than an abstract idea.
Examiner's Response
The Examiner provides a comprehensive response to Appellants'
contentions of error and arguments which we adopt and incorporate herein.
Ans. 9-20. Addressing Appellants' contention the Examiner failed to set
forth a prima facie case of ineligibility, the Examiner repeats the analysis of
the claims, identifying each element considered to be a mathematical
equation/relationship and idea of itself and, therefore, an abstract idea. Ans.
9-12. The Examiner references the "2014 Interim Guidance on Patent
Subject Matter Eligibility" (dated December 16, 2014) and July 2015 Update
to Subject Matter Eligibility for guidance and examples of limitations found
insufficient in qualifying as "significantly more" under Part 2 of the Mayo
test. Ans. 12. Addressing the computer or server element, the Examiner
finds Appellants' Specification describes the required functionality to be
provided by a general-purpose computer. Id. The Examiner again explains
the additional elements "are well-understood, routine, and conventional
activities previously known to the industry." Id. at 13. Thus, according to
the Examiner, "[ t ]he additional limitations of the independent and dependent
claim( s) when considered individually and as an ordered combination do not
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amount to significantly more than the abstract idea." Id. at 14. The
Examiner further finds there is "no evidence that the claimed
process/functions are any different than what would be done without a
computer, where there are no adjustments to the mental process to
accommodate implementation by computers." Id. at 17. The Examiner
addresses Appellants' arguments analogizing the rejected claims to those
found patent-eligibile in McRO, 3 TLI4, BASCOM, 5 Enfzsh6, Example 36, and
Diamond7 , finding those cases distinguishable and inapposite to the subject
matter of Appellants' claims. Id. at 16-20.
Our Review
Addressing Appellants' procedural objection, Appellants' contention
the Examiner has failed to set forth a prima facie case of ineligibility is
unpersuasive. The Federal Circuit has repeatedly noted "the prima facie
case is merely a procedural device that enables an appropriate shift of the
burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
court has, thus, held that the Office carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection,
"together with such information and references as may be useful in judging
3 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016).
4 TL! Communications LLC Patent Litigation, 823 F.3d 607, 612 (Fed. Cir.
2016).
5 BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
6 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016).
7 Diamondv. Diehr, 450 U.S. 175, 192 (1981).
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of the propriety of continuing the prosecution of [the] application." In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). All that is required of the
Office is that it set forth the statutory basis of the rejection in a sufficiently
articulate and informative manner as to meet the notice requirement of 3 5
U.S.C. § 132. Jung, 637 F.3d at 1362; see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (Noting that [35 U.S.C.] § 132 "is violated
when a rejection is so uninformative that it prevents the applicant from
recognizing and seeking to counter the grounds for rejection.").
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner analyzed the claims using the Mayo/Alice two-step framework,
consistent with the then available guidance set forth in the USPTO's Interim
Guidance. Specifically, the Examiner notified Appellants that claims 1, 3-
14, 16-21, and 24--29 "directed to a series of computational functions that
analyze data to generate a pricing schedule" and that such computational
functions "are directed toward the abstract idea of mathematical equations/
relationships" and "the abstract concept of organizing information through
mathematical correlations." Final Act. 12-13. The Examiner has provided a
complete characterization of each claim element individually and as an
ordered combination. We conclude the rejection is sufficient to satisfy the
notice requirement of 35 U.S.C. § 132.
Substantively, applying the guidance set forth in the Memorandum,
we are not persuaded of Examiner error. The Memorandum instructs us first
to determine whether any judicial exception to patent eligibility is recited in
the claim. The guidance identifies three judicially-excepted groupings:
(1) mathematical concepts; (2) certain methods of organizing human activity
such as fundamental economic practices; and (3) mental processes. We
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focus on the first group, mathematical concepts which includes
mathematical relationships, mathematical formulas or equations, and
mathematical calculations.
Appellants' Specification discloses "[a] method and system for
determining an optimized price schedule that control the simplicity of a price
schedule while maintaining efficiency in terms of welfare." See Abstract.
In accord with the Examiner's analysis of the claim elements, we agree that
"evaluating the simplicity term, computing a welfare term,
determining a difference between the welfare term and the
simplicity term, performing a plurality of iterations,
determining a set of price differences, determining a new price
schedule, computing a value of the new price schedule,
selecting one of the new pricing schedules, modifying the
selected one of the plurality of price schedules for display on
the user device, and adapting the price schedule to retain
readability on a small display of the user device" [are]
[]mathematical equations/relationships and idea of itself[],
which are considered to be abstract ideas.
Final Act. 12. The emphasis on the mathematical relationships required by
claim 1 are clearly apparent by the recitation of specific formulas for
calculating soft and hard thresholds pk and puk, respectively, used in
determining a set of price differences and a new price schedule, as follows:
pk:= argmaxpW(p) - ~ ( c(Yip))
LiEA\Akaig
subject to yip = 0 for i E Ak-l
puk := argmaxpW(p) subject to yip= 0 for i E Ak
Claim 1. Appellants' argument that the claims do not claim an end result are
unpersuasive as such argument does not address whether the claims recite
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and are directed to an abstract idea. Accordingly, we conclude the claims
recite a judicial exception of a mathematical concept.
Having determined that the claims recite a judicial exception, our
analysis under the Memorandum turns to determining whether there are
"additional elements that integrate the judicial exception into a practical
application." See MPEP § 2106.0S(a}-(c), (e}-(h)). Appellants' claim 1
recites computer-related and/or hardware-related limitations, including a
"server," "user device," and "computer network." Appellants disclose
"computer system 102 may include a computer server, workstation, personal
computer, combination thereof, or any other computing device" and "one or
more interface devices 112, 114 for communicating with external devices or
to receive external input." Spec. ,r,r 32, 38. The recited user device is only
generally disclosed as a display device 116 and input device 118. Thus,
these computer and/or hardware-related limitations are described at a high
level in the Specification without meaningful detail about their structure or
configuration that differentiates them from standard computers performing
the recited operations. As such, we do not find the computer and/or
hardware-related limitations are sufficient to integrate the judicial exception
into a practical application.
In addition to the identified computer hardware, claim 1 recites
providing a simplicity metric, providing a welfare function, outputting an
optimized price schedule, and transmitting the selected one of the plurality
of price schedules from the server to the user device over a computer
network. See Final Act. 5. We agree with the Examiner these steps of
receiving, outputting and transmitting information are generic computer
functions and that such functions described, as they are, at a high level
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without meaningful detail about their operation, fail to differentiate them
from operations performed by standard computers performing the recited
operations. See id. As such, we do not find these data processing-related
functional limitations are sufficient to integrate the judicial exception into a
practical application.
Furthermore, we agree with the Examiner that claim 1 "do[ es] not
affect an improvement to another technology or technical field [or] an
improvement to the functioning of the computer itself [ see MPEP
2106.0S(a)], [or meaningful limitations] beyond generally linking the use of
an abstract idea to a particular technological environment [ see MPEP
2106.0S(h)]." Final Act. 7-8. Consistent with Appellants' argument, rather
than a technological innovation, the "claims provide systems and methods to
perform multiple optimization calculations to optimize weighted sums of
welfare and simplicity metrics in order to generate a price schedule, in
addition a continuous analysis to improve traffic flow, decrease problems
with parking spots, and the like." App. Br. 17. Thus, in view of Appellants'
Specification, and consistent with the Examiner's determinations and
Appellants' characterization of the claims, we conclude that claim 1 does not
integrate the judicial exception into a practical application. We determine
claim 1 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
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(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a}-(c), (e}-(h). Instead, any improvement is to the
underlying abstract idea of a series of computational functions that analyze
data to generate a pricing schedule. Accord OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359 (Fed. Cir. 2015) (claim to price optimization method
directed to an abstract idea).
For the reasons discussed above, we agree with the Examiner that
claim 1 is directed to a judicial exception that is not integrated into a
practical application.
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether the claim adds a specific limitation beyond
the judicial exception that is not "well-understood, routine, conventional" in
the field (see MPEP § 2106.05(d)) or 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.
We agree with the Examiner that the claim does not supply the
inventive concept required under Alice step 2. See Final Act. 14--15; Ans.
6-7, 11-13. Appellant's argument under Alice step 2 is that the claims
require the performance of multiple calculations that "cannot be performed
without the help of computer technology, and would require specific
processes and programs to analyze data of each of these multiple parameters
to perform these complex calculations." App. Br. 15. We are unpersuaded
by this argument. "[R ]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible."
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Alice, 573 U.S. at 225. These processes remain unpatentable even when
automated to reduce burden to the user of what once could have been done
with pen and paper. CyberSource, 654 F.3d at 1375 ("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.").
Accordingly, we do not discern in claim 1 any specific limitation
beyond the judicial exception that is not "well-understood, routine,
conventional," and instead agree with the Examiner that the claims do not
supply an inventive concept sufficient to transform the judicial exception
into patent-eligible subject matter. Ans. 7.
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellants do not identify any error in the
Examiner's determination under Alice step 2, we sustain the rejection of
claim 1 under 35 U.S.C. § 101. Appellants' contentions of error in
connection with independent claim 24 (id. at 23-28) and independent claim
25 (id. at 28-34) are repetitive in substance to those presented in connection
with independent claim 1. Id. at 12-18. Appellants' contentions of error in
connection with dependent claims 3-14 and 16-21 (id. at 18-23) and
dependent claims 26-29 (id. at 34--35) are, in substance, repetitions of the
claims limitations followed by the conclusory assertion that the claims
improve computer related technology and thereby recite significantly more
than an abstract idea without further explanation. Such naked contentions
standing alone are insufficient to identify and persuade us of reversible
Examiner error and are not considered to be separate arguments for
patentability. Accordingly, we treat claim 1 as representative, and sustain
the patent-eligibility rejection of the remaining claims for the same reasons.
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DECISION
We affirm the Examiner's rejection of claims 1, 3-14, 16-21, and 24--
29 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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