Ex Parte Henne et al

Patent Trials and Appeals Board

Jul 3, 2019

13372386 - (D) (P.T.A.B. Jul. 3, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/372,386 02/13/2012
79502 7590 07/08/2019
Knobbe, Martens, Olson & Bear, LLP
AMAZON TECHNOLOGIES, INC.
2040 Main Street
Fourteenth Floor
Irvine, CA 92614
FIRST NAMED INVENTOR
Randal M. Henne
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.
MIPS.l 18Cl 7312
EXAMINER
KONERU, SUJAY
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
07/08/2019 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
SEAZN.Admin@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RANDAL M. HENNE and DWAYNE S. BENEFIELD
Appeal2018-000803
Application 13/3 72,386
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1-3, 5, and 7-27. We have jurisdiction under
35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify Amazon Technologies, Inc., as the real party in
interest. Appeal Br. 1.
Appeal2018-000803
Application 13/3 72,386
THE INVENTION
Appellants claim data mining algorithms for analyzing item
acquisition histories of users of an electronic catalog of items. (Spec. ,r 2
Title).
Claim 1 is representative of the subject matter on appeal.
1. A data mining method, comprising:
storing, in computer storage, item acquisition data of
users of an electronic catalog of items, said item acquisition
data including information reflective of timings of item
acquisition events, said electronic catalog including item detail
pages that correspond to particular catalog items;
detecting, based on an analysis of the item acquisition
data by a computer system, a sequential item acquisition pattern
in which users who acquire a first catalog item tend to
subsequently acquire a second catalog item, said first catalog
item being a non-consumable item, and the second catalog item
being a consumable item that is used by the first catalog item,
wherein the analysis of the item acquisition data comprises
executing a computer process that comprises:
maintaining, in computer storage, a plurality of
tuple-specific counters, each tuple-specific counter
corresponding to a respective tuple of the first catalog
item, the second catalog item, and a time interval range,
wherein the time interval ranges are different for each of
the plurality of tuple-specific counters;
detecting, from the item acquisition data of users, a
plurality of sequential acquisition events in which a user
acquired the first catalog item followed by the second
catalog item;
for each detected sequential acquisition event,
incrementing the respective tuple-specific counter
corresponding to the time interval between the user's
acquisition of the first catalog item and the user's
acquisition of the second catalog item; and
determining, based on values of the tuple-specific
counters, a characterizing time interval representing an
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Application 13/3 72,386
amount of time users typically wait to acquire the second
catalog item after acquiring the first catalog item;
causing an indication of the sequential item acquisition
pattern to be incorporated into an item detail page for the first
catalog item, to thereby expose an existence of the sequential
item acquisition pattern to users of the electronic catalog, said
indication of the sequential item acquisition pattern indicating a
sequential order in which the first and second catalog items are
acquired.
THE REJECTION
Claims 1-3, 5, and 7-27 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-3, 5, and 7-27 under
35 U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, ... then ask, "[ w ]hat else
is there in the claims before us?" To answer that question, ...
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. [The Court] described step two of this
analysis 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."
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Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 217-218 (2014) ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012))
( citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether 'their character as
a whole is directed to excluded subject matter."' See Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an "abstract
idea" for which computers are invoked merely as a tool. See id. at 1335-36.
In so doing we apply a "directed to" two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 50-57 (Jan. 7, 2019) ("Guidance").
The Examiner determines that the claims are directed to collecting and
analyzing information to detect misuse and notifying a user when misuse is
detected which is collecting information, analyzing it and displaying certain
results of the collection analysis as in Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (Final Act. 4). The Examiner
found the claims do not include limitations amounting to significantly more
than the abstract idea. (Id.)
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We agree with the Examiner that the steps of claim 1 constitute
"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." Elec. Power Grp., 830 F.3d at 1354.
Appellants' invention is directed to mining acquisition histories of
users of an electronic catalog to assist users in identifying items of interest
(Spec. ,r,r 3--4). In this regard, claim 1 recites "storing ... item acquisition
data of users of an electronic catalog," "detecting, based on an analysis of
item acquisition data ... a sequential acquisition pattern," and "causing an
indication of the sequential item acquisition pattern .... " In essence, claim
1 recites a method in which acquisition history data is stored and then
analyzed to detect a sequential acquisition pattern and the data related to a
detected sequential item is displayed. As such, the Examiner is correct that
claim 1 recites analyzing information by making an observation, and then
performing evaluations to form a judgment as to the existence of the
"sequential acquisition pattern," which, as claimed, are steps people can
perform practically in their minds.
In addition, the placement of the sequential item on the item detail
page is done to assist users in identifying items of interest to purchase from
the electronic catalog. (Spec. ,r,r 4, 7). The method of claim 1 can also be
used to select items that a relatively large percentage of users who acquire an
item also acquire another item after a period of time. The second item may
be recommended to the user via email, customized web page or other
communications methods at the after the period of time has elapsed. (Id. ,r
8).
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The presentation of items of interest on the item page or via other
communication methods thus constitutes an advertising and marketing
method which is a fundamental economic practice. A fundamental
economic practice is a certain method of organizing human activity and
therefore a judicial exception. Guidance 52.
As limitations in claim 1 recite a mental process and one of certain
methods of organizing human activity, we determine that claim 1 recites
several judicial exceptions.
Turning to the second prong of the "directed to test," claim 1 requires
a "computer system" and "computer system." The recitation of the words
"computer storage" and "computer system" does not impose "a meaningful
limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception." Guidance at 54. In
this regard, we find no indication in the Specification, nor do Appellants
direct us to any indication, that the operations recited in independent claim 1
invoke any inventive programming, require any specialized computer
hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
("[ A ]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.").
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
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functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a "practical application,"
as that phrase is used in the revised Guidance. See Guidance 55.
It also is significant here that although independent claim 1 recites
that the system processes are performed by "a computer system," the
processes can be performed by a human, e.g., mentally or manually, using a
pen and paper, without the use of a computer network or any other machine.
Thus, claim 1 is directed to a judicial exception that is not integrated into a
practical application and thus is an "abstract idea."
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas/judicial exceptions, the claims must
include an "inventive concept" in order to be patent-eligible, i.e., there must
be an element or combination of elements that is sufficient to ensure that the
claim in practice amounts to significantly more than the abstract idea itself.
See Alice, 573 U.S. at 217 (alteration in original) (quoting Mayo, 566 U.S. at
72-73).
The introduction of a computer into the claims does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[ t ]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
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ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-224 (alterations in original) (citations omitted).
Instead, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval----one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
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considered separately. The sequence of data reception-analysis-
access/ display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (the recited computer-implemented sequence of receiving, selecting,
offering for exchange, display, allowing access, and receiving payment was
not patent eligible), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876
F.3d 1372, 1378 (Fed. Cir. 2017) (holding that the recited computer-
implemented sequence of data retrieval, analysis, modification, generation,
display, and transmission was not patent eligible), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding that recited computer-implemented sequence of processing, routing,
controlling, and monitoring was not patent eligible). The ordering of the
steps is, therefore, ordinary and conventional.
The claims do not, for example, purport to improve the functioning of
the computer itself. As we stated above, the claims do not affect an
improvement in any other technology or technical field. The Specification
spells out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of information access under different
scenarios. (See, e.g., Spec. ,r,r 33, 104, 106). Thus, the claims at issue
amount to nothing significantly more than instructions to apply the abstract
idea of information access using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 226.
\Ve have reviewed all the argmnents (Appeal Br. 7-11; Reply Br. 1-
8) Appellants have submitted concerning the patent eligibility of the claims
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before us that stand rejected under 35 U.S.C. § 101. We find that our
analysis above substantially covers the substance of all the arguments, which
have been made. But, for purposes of completeness, we will address certain
arguments individually.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the instant claims are not like anything found by
the courts to be an abstract idea. (Appeal Br. 8). Specifically, Appellants
argue that the instant claims are different from those at issue in Fair Warning
IP v. Iatric Systems, Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016), which was
cited by the Examiner, because the instant claims do not involve the
notification of misuse. Appellants also argue that the claims are not like the
claims in Elec. Power Grp, 830 F.3d at 1354, because the instant claims
focus on how the data is analyzed using computer algorithms. However, the
claims differ from the Fair Warning and Electric Power claims only in the
data that is analyzed and how this data is analyzed. In other words, the
instant claim, like the claims in these cases, involves analysis of data. The
exact nature of the data may be different, but the instant claims nonetheless
involve analysis of data. In addition, the way that the data is analyzed
involves steps that can be practically performed in the human mind. As we
determined above, those steps recited in claim 1 are part of the judicial
exception itself, mental processes, and therefore it cannot form the basis of
patent eligibility of the instant claims.
Appellants analogize the claimed invention to the invention at issue in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016). Appeal Br. 10. Appellants contend that the claims recite
algorithmic, technical improvements that enable a computer system to
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efficiently and reliable detect and analyze sequential item acquisition
patterns. (Id.)
We are not persuaded that the claimed invention is analogous to the
claimed invention in McRO. The claims in McRO were directed to a
specific asserted improvement in computer animation, i.e., the automatic use
of rules of a particular type. McRO, 837 F.3d at 1314. By contrast, claim 1
recites only steps to determine a sequential item acquisition pattern that can
be performed practically in the human mind.
Unlike McRO, the claims here are not directed to an improvement that
previously could only be produced through subjective decisions by human
users. See id.
Appellants' determination of a sequential item acquisition pattern is
known to be performed through a series of mathematical operations. See
Spec. 11-18. Such calculations could be performed by a human operator,
albeit in a time consuming fashion. We regard Appellants' claimed
invention to amount to a set of calculations that may differ from the prior art
calculations, but which could similarly be performed by a human operator.
Lastly, Appellants argue that the Examiner did not provide evidence
to establish the elements of claim 1 are routine and conventional computer
functions. Appellants argue that the functions are not routine and
conventional as evidenced by the Office's finding that the claims are novel
and non-obvious. (Appeal Br. 10-11).
Appellants' argument is not persuasive at least because "the relevant
inquiry is not whether the claimed invention as a whole is unconventional or
non-routine." BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290
(Fed. Cir. 2018). Instead, the question is whether the claims include an
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inventive concept, i.e., an element or combination of elements other than the
abstract idea, sufficient to ensure that the patent in practice amounts to
significantly more than a patent on the abstract idea itself. Id.; see also
Mayo, 566 U.S. at 72-73.
The Examiner determined that the claims do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception (Final Act. 5). More particularly, the Examiner determined that
performing the steps of claim 1 on a computer, and having a nontransitory
computer storage which stores executable program code that directs a
computer system to perform operations of the abstract idea steps, requires
nothing more than a generic computer to perform routine and conventional
computer functions and other use of hardware computers for mere data
gathering or data transforming. (Id. at 5---6). The only claim element beyond
the abstract idea recited in claim 1 is a computer storage and a computer
system, i.e., generic computer components used to perform generic computer
functions of storing, retrieving, processing, and displaying data- a
determination amply supported by, and fully consistent with the
Specification discloses at paragraph 50, page 18 which discloses that the
functions recited in the claims can be implemented by a general purpose
computer and the data storage can be done by any type of computer storage.
In view of the foregoing, we will sustain the rejection as it is directed
to claim 1. We will also sustain the rejection as it is directed to the claims 2,
3, 5, 7-24, 26, and 27, because the Appellants have not argued the separate
eligibility of these claims.
In regard to the rejection of claim 25, Appellants argue that the claim
includes algorithmic details and thus recite something significantly more
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than the abstract idea. This argument is not persuasive because the details
that the Appellants reference are further details of the steps that can be
performed practically in the human mind. Therefore, we will sustain the
rejection of this claim as well.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1-3, 5, and
7-27 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-3, 5, and 7-27 is
affirmed.
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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