Ex Parte Henne et alDownload PDFPatent Trials and Appeals BoardJul 3, 201913372386 - (D) (P.T.A.B. Jul. 3, 2019) Copy Citation 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 2 Appeal2018-000803 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." 3 Appeal2018-000803 Application 13/3 72,386 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.) 4 Appeal2018-000803 Application 13/3 72,386 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). 5 Appeal2018-000803 Application 13/3 72,386 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 6 Appeal2018-000803 Application 13/3 72,386 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 7 Appeal2018-000803 Application 13/3 72,386 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 8 Appeal2018-000803 Application 13/3 72,386 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 9 Appeal2018-000803 Application 13/3 72,386 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 10 Appeal2018-000803 Application 13/3 72,386 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 11 Appeal2018-000803 Application 13/3 72,386 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 12 Appeal2018-000803 Application 13/3 72,386 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 13 Copy with citationCopy as parenthetical citation