Ex Parte Drew et al

Patent Trial and Appeal Board

Mar 8, 2017

11083576 (P.T.A.B. Mar. 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.
11/083,576 03/18/2005 Juile W. Drew 82202636 4387
56436 7590
Hewlett Packard Enterprise
3404 E. Harmony Road
Mail Stop 79
Fort Collins, CO 80528
EXAMINER
CHOY, PAN G
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/10/2017 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):
hpe.ip.mail@hpe.com
chris. mania @ hpe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE W. DREW, QI FENG, and BIN ZHANG
Appeal 2015-002328
Application 11/083,576
Technology Center 3600
Before MICHAEL W. KIM, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
This is an appeal from the Final rejection of claims 8—11, 17—19, and
23—31 mailed June 13, 2014.1 We have jurisdiction to review the case under
35 U.S.C. §§ 134 and 6.
The invention relates generally to managing a product portfolio
offered for sale by reducing the number of products included in a portfolio to
a set expected to increase the business’ profit. Spec. 1 and 10.
1 Claims 1—7, 12—16, and 20—22 are cancelled.
Appeal 2015-002328
Application 11/083,576
Independent claim 8 is illustrative:
8. A method executed by a computer for selecting
products for a product portfolio, comprising:
identifying, by the computer, a set of customer orders
including a set of ordered products, and a total order benefit;
identifying, by the computer, subsets of the customer
orders each having a corresponding subset order benefit;
generating, by the computer, a linear function for each of
the identified subsets of the customer orders, the linear functions
being based on a penalty multiplier, the linear function for each
subset being generated by subtracting from the corresponding
subset order benefit a value that is derived from the penalty
multiplier (X) multiplied by a number of products in the subset;
finding, by the computer, selected ones of the subsets of
customer orders which form part of an upper envelope for the
linear functions generated; and
selecting, by the computer, the products in the selected
subsets of customer orders that form part of the upper envelope
for the product portfolio, wherein the total order benefit and the
subset order benefit are selected from among revenue, profit, and
number of orders covered.
Claims 8, 10, 17, 23, 26, 29, and 30 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Marsten (US 8,078,489 Bl, iss. Dec. 13,
2011) and Marshall L. Fisher, An Applications Oriented Guide to
Lagrangian Relaxation, Interfaces 15, Department of Decision Sciences,
The Wharton School, University of Pennsylvania, 10—21 (March—April
1985) (hereinafter “Fisher”). Final Act. 9.
Claims 9, 11, 18, 19, 24, 25, 27, 28, and 31 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Marsten, Fisher, and Dorit S.
Hochbaum, Selection, Provisioning, Shared Fixed Costs, Maximum Closure,
and Implications on Algorithmic Methods Today, Department of Industrial
Engineering and Operations Research and Walter A. Haas School of
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Application 11/083,576
Business, University of California, Berkeley, (March 14, 2004) (hereinafter
“Hochbaum”).
Claims 8—11, 17—19, and 23—31 are rejected under 35U.S.C. § 101
for failing to recite statutory subject matter.2
We AFFIRM.
ANALYSIS
Rejections Under 35 U.S.C. § 103 of Claims 8, 10, 17, 23, 26, 29, and 30
The Appellants contend that the combination of Marsten and Fisher
fails to account for “finding, by the computer, selected ones of the subsets of
customer orders which form part of an upper envelope for the linear
functions generated,” as recited in independent claim 8 and similarly recited
in each of independent claims 17 and 29. More specifically, the Appellants
assert that “the sets depicted in Fig. 34 of Marsten are sets of different types
of configurations of products” that refer to a combination of features of a
product, and are not subsets of customer orders, as claimed. App. Br. 9. In
more practical terms, the Appellants assert that Marsten’s “configurations
for which there is customer demand” cannot correspond properly to the
recited “customer orders.” Reply Br. 8—9. The Examiner responds and
asserts that Fig. 34 teaches a subset of customer orders in the form of set C
which is composed of “[a]ll customer ordered configurations.” Ans. 5—6
(citing Marsten Fig. 34); see also Marsten 27:10-41.
2 The rejection of claims 8—11, 17—19, and 23—31 under 35 U.S.C. § 101
was entered as a new grounds of rejection in the Examiner’s Answer, mailed
October 27, 2014. Ans. 3—5.
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Application 11/083,576
We are not persuaded by the Appellants’ argument that Marsten does
account adequately for the recited “customer orders.” The Appellants take
the position that Marsten’s described “configuration for which there is
demand” is different from Marsten’s “ordered product,” and that only the
latter can, at best, correspond to the claimed “customer orders.” Reply Br.
8—9. We see no such distinction because Marsten’s demanded configuration
represents an order for a particular configuration of a product. Marsten
27:10-41; see also Ans. 7. Marsten makes this equivalence explicit while
explaining Figure 34 using the example of a tractor where “V contains 2832
configurations and C contains the 713 of those 2832 that have a customer
demand of at least one tractor.” Marsten 27:28—31; see also Ans. 6. Hence,
we find that Marsten discloses that there is demand for 713 tractors with
differing configurations, each of which represent an actual ordered product.
Ans. 6.
The Appellants further argue that “Fisher does not provide any
teaching or hint of finding selected ones of the subsets of customer orders
which form part of an upper envelope for the linear functions that are
generated in the ‘generating’ clause of claim 8.” App. Br. 11—13.
Specifically, the Appellants assert that “nowhere in Fisher is there any
reference to customer orders, or subsets of customer orders.” Id. at 11. The
Appellants’ arguments are misplaced because, as noted above, we find that
Marsten teaches the claimed “customer orders,” and the Appellants have not
explained sufficiently why the Examiner’s additional finding that Marsten
further teaches the “subsets of’ those “customer orders,” as required by the
claims, is inadequate. Final Act. 9—10; see also Ans. 5—8; Ex parte Frye,
Appeal 2009-006013, 2010 WL 889747 *3^1 (BPAI Feb. 26, 2010)
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Application 11/083,576
(precedential) (“If an appellant fails to present arguments on a particular
issue — or, more broadly, on a particular rejection — the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection.”).
For these reasons, we sustain the rejections of independent claims 8,
17, and 29, as well as claims 10, 23, 26, and 30 dependent therefrom.
Rejections Under 35 U.S.C. ft103 of
Claims 9, 11, 18, 19, 24, 25, 27, 28, and 31
The Appellants contend that the combination of Marsten, Fisher, and
Hochbaum fails to account adequately for “performing a binary search that
uses the penalty multiplier for each of the identified subsets to determine if
the corresponding identified subset forms part of the upper envelope,” as
recited in independent claim 9, and similarly recited in independent
claim 18. App. Br. 13—15. Specifically, Appellants argue that “there is
nothing in Hochbaum that indicates that its binary search is a binary search
that uses the penalty multiplier for each of the identified subsets of customer
orders to determine if the corresponding identified subset of customer orders
forms part of the upper envelope.” Id. at 13. The Examiner responds and
asserts that Hochbaum teaches “a method for finding a collection of sets so
that their benefit minus the cost of the elements in their union is maximized”
and further teaches “[t]he algorithm requires at each iteration finding the
integer minima of the convex functions which is accomplished with binary
search in the O(nlogU) steps.” Ans. 11 (citing Hochbaum 2, 8).
We find the Appellants’ argument to be persuasive. The Examiner
relies on two sections of Hochbaum, which separately disclose performing a
convex function using a binary search, and applying a cost when
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Application 11/083,576
determining a collection of sets. Ans. 11. While those sections of
Hochbaum may disclose performing a binary search, the Examiner has not
shown adequately that the binary search of Hochbaum is performed using a
penalty multiplier, as required by the claim. App. Br. 14. Presumably the
Examiner intended some number from Marsten or Fisher to correspond to
the recited “penalty multiplier” in order to meet the claim limitation,
however, the Examiner has not identified any such variable(s) in those
references. For these reasons, we do not sustain the rejection of independent
claims 9 and 18. We similarly do not sustain the rejection of claims 11 and
19, which depend upon independent claims 9 and 18, respectively.
The Appellants further contend, using the same rationale as noted
above in the discussion of independent claim 9, that the combination of
Marsten, Fisher, and Hochbaum fails account adequately for “performing a
binary search to determine which of the identified subsets form part of the
upper envelope,” as recited in independent claim 28 and similarly recited in
independent claim 31. App. Br. 16. Independent claims 28 and 31 each
require performing a binary search, but differ from independent claim 9 in
that a penalty multiplier is not recited. As stated above, we determined that
the combination of Marsten, Fisher, and Hochbaum accounts properly for
performing a binary search to determine which of the identified subsets form
part of the upper envelope. Accordingly, we sustain the rejection of
independent claims 28 and 31.
Rejection Under 35 U.S.C. §101
The Examiner asserts that claims 8—11, 17—19, and 23—31 do not
recite statutory-eligible subject matter, in that the claims are directed to the
abstract idea of “selecting the products in the selected subsets of customer
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Application 11/083,576
orders that form part of an upper envelope for the product portfolio.”
Ans. 3—5. The Answer then applies the second step of the Alice analytical
framework and concludes that claims 8—11, 17—19, and 23—31 contain no
meaningful limitations that transform it into a patent-eligible application of
the abstract idea, nor do they produce any material object, improve any
technology or technical field, or improve the functioning of the computer
itself. Id. at 4; see also Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S.Ct.
2347, 2355 (2014).
We have analyzed independent claims 8, 17, and 29, and determine
that the Examiner’s identified concept is reasonable and is directed to a
patent-ineligible abstract idea. See OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1361—62 (Fed. Cir. 2015) (finding a method comprising: (1)
testing prices; (2) gathering statistics about how customers reacted to the
prices; (3) using that data to estimate outcomes; and (4) acting on estimated
outcomes (i.e., automatically selecting and offering new prices based on
estimated outcome) to be directed to the abstract idea of price optimization.).
The Appellants first argue that the present invention is distinguishable
from the invention in Alice because it is “inventive” and, thus, would not
qualify as “a fundamental economic practice that is ‘long prevalent in our
system of commerce.’” Reply Br. 2, 3. Concerning the “inventive”
argument, as an initial matter, we are unclear if “inventiveness” alone has a
proper place in a subject matter eligibility analysis. And in any case, we are
not persuaded for at least the reasons set forth supra, in that we determined
that we are unpersuaded of Examiner error that at least independent claims
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8, 17, and 28—31 are neither novel nor non-obvious.3 Concerning whether
the claims are directed to a “fundamental economic practice,” that line of
argument is foreclosed by our reviewing court’s decision referenced above.
We also are not persuaded by the Appellants’ argument that
independent claim 8 does not recite an abstract idea, because the “selecting”
clause of independent claim 8 recites a computer, and the products selected
by the computer are physical objects. Reply Br. 3. The recitation of a
computer in independent claim 8, at best, suggests a nominal use of a
general purpose computer and imposes no meaningful limits on the scope of
the claim. See Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333—1334 (Fed.
Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim
covering an abstract concept, without more, is insufficient to render the
claim patent eligible”). Further, while the claimed orders may represent
physical products, the claimed invention is merely a computer implemented
method of manipulating hypothetical orders in the abstract.
Finally, the Appellants argue that even if independent claim 8 is
directed to an abstract idea, independent claim 8 recites “additional subject
matter that supplies the ‘inventive concept’ sufficient to transform the
claimed invention into a patent-eligible application.” Reply Br. 4.
Specifically, the Appellants identify the following subject matter as
amounting to significantly more than the ineligible abstract concept:
identifying, by the computer, a set of customer orders
including a set of ordered products, and a total order benefit;
3 The outcome of the obviousness rejection with respect to independent
claims 9 and 18 is not dispositive, given that the Examiner’s determination
of what the claims are “directed to” does not recite the “penalty multiplier.”
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Application 11/083,576
identifying, by the computer, subsets of the customer
orders each having a corresponding subset order benefit;
generating, by the computer, a linear function for each of
the identified subsets of the customer orders, the linear functions
being based on a penalty multiplier, the linear function for each
subset being generated by subtracting from the corresponding
subset order benefit a value that is derived from the penalty
multiplier (A.) multiplied by a number of products in the subset;
finding, by the computer, selected ones of the subsets of
customer orders which form part of an upper envelope for the
linear functions generated; and
selecting, by the computer, the products in the selected
subsets of customer orders that form part of the upper envelope
for the product portfolio, wherein the total order benefit and the
subset order benefit are selected from among revenue, profit, and
number of orders covered.
Id. at 4—5. The Appellants assert that the “selecting clause” supplies “an
inventive concept ‘in the physical realm of things’ that provides a ‘new and
useful application’ of the claimed subject matter to the physical realm.” Id.
at 5. We are unpersuaded, as we discern nothing in the subject matter
claimed that transforms the abstract idea of product portfolio optimization
into “significantly more.” We agree with the Examiner that the claim
elements highlighted by the Appellants amount to no more than “generic”
computer data processing functionality used to implement a mathematical
business algorithm. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014).
For these reasons, we sustain the rejections of claims 8—11, 17—19,
and 23-31 under 35 U.S.C. § 101.
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DECISION
We AFFIRM the rejections of claims 8, 10, 17, and 23—31 under 35
U.S.C. § 103.
We REVERSE the rejections of claims 9, 11, 18, and 19 under 35
U.S.C. § 103.
We AFFIRM the rejections of claims 8—11, 17—19, and 23—31 under
35 U.S.C. § 101.
AFFIRMED
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