Ex Parte Hipsher

Patent Trial and Appeal Board

Aug 31, 2017

12195948 (P.T.A.B. Aug. 31, 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.
12/195,948 08/21/2008 Brian Hipsher MET1686-088 9443
8698 7590 09/05/2017
STANDLEY LAW GROUP LLP
6300 Riverside Drive
Dublin, OH 43017
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
09/05/2017 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):
standley docketing @ standleyllp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN HIPSHER
Appeal 2016-002419
Application 12/195,948
Technology Center 3600
Before JAMES R. HUGHES, JUSTIN BUSCH, and
CATHERINE SHIANG, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1 and 4—32, which are all the claims pending and rejected
in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
According to the Specification, the present invention relates to
optimizing the selling price and controlling inventory level of perishable
products. See generally Spec. 1. Claim 1 is exemplary:
1. A perishable goods inventory management system for
managing perishable goods sold in multiple portioned units
of varying weight, comprising:
Appeal 2016-002419
Application 12/195,948
at least one non-POS [point of sale] advanced weighing
scale adapted to collect at least weight-based information about
a perishable good of interest that is placed on said advanced
weighing scale and the weight of which is continually reduced
by portioning during a shelf life thereof, the at least one
advanced weighing scale being further adapted to transmit
information regarding the current real-time weight of said
perishable good of interest to at least a perishable goods
inventory management software application;
a perishable goods inventory management software
application in communication with said at least one advanced
weighing scale, said perishable goods inventory management
software application adapted to receive real-time perishable
good weight information from said advanced weighing scale;
and
a perishable goods price optimization software application in
communication with said at least one advanced weighing scale;
wherein said perishable goods inventory management
software application and said perishable goods price
optimization software application output data to said at least
one advanced weighing scale for controlling the inventory of
said perishable good of interest based on the negative change in
weight of said perishable good of interest over some given time
period.
Rejection
Claims 1 and 4-32 are rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter.
ANALYSIS
We disagree with Appellant’s arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
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appeal is taken and (ii) the Answer to the extent they are consistent with our
analysis below.
The Examiner rejects the claims under 35U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Non-Final Act. 3^4;
Ans. 3—7. Appellant argues the Examiner erred. See App. Br. 12—29.
Appellant has not persuaded us of error. In response to Appellant’s
arguments, the Examiner provides further findings showing the claims are
directed to patent-ineligible subject matter. See Ans. 3—7. In particular, the
Examiner finds the claims are directed to the abstract idea of a fundamental
economic process (price optimization of perishable inventory) and
specifically, manipulation of data. See Non-Final Act. 2; Ans. 3—7. The
Examiner also finds weight information and outputting information
regarding inventory and price optimization can be performed by human
thought alone or by a person utilizing a pencil and paper. See Ans. 3.1 The
Examiner further finds the claims use generic computer components to
perform generic computer functions. See Ans. 3—7. Appellants fail to
persuasively respond to such findings and therefore, fail to show error in the
Examiner’s findings.
Further, we agree with the Examiner’s findings. Section 101 of the
Patent Act provides “[wjhoever 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 therefor, subject to the
conditions and requirements of this title.” 35 U.S.C. § 101. That provision
1 “A method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under § 101.” CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011).
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“contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Banklnt’l, 134 S. Ct. 2347, 2354 (2014). According to the Supreme
Court:
[W]e 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, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. ... If so, we then ask,
“[w]hat else is there in the claims before us?” ... To answer
that question, 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. . . . We have 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.”
Alice Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335—36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has “treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas.”
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
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Application 12/195,948
790 F.3d at 1348-49 (Fed. Cir. 2015); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015); Content Extraction & Transmission
LLC v. Wells Fargo Bank, Natl Ass ’n, 776 F.3d 1343, 1347 (Fed. Cir.
2014). “In a similar vein, we have treated 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, 830 F.3d at 1354 (emphasis added); see also In re TLI
Comm ’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016). “And we
have recognized that merely presenting the results of abstract processes of
collecting and analyzing information, without more (such as identifying a
particular tool for presentation), is abstract as an ancillary part of such
collection and analysis.” Elec. Power, 830 F.3d at 1354 (emphasis added);
see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714—15 (Fed. Cir.
2014).
The rejected claims “fall into a familiar class of claims ‘directed to’ a
patent-ineligible concept.” Elec. Power, 830 F.3d at 1353. Contrary to
Appellant’s arguments (App. Br. 12—20, 25—29), the claims are similar to the
claims of Electric Power, and are focused on the combination of abstract-
idea processes or functions. See Elec. Power, 830 F.3d at 1354. For
example, claim 1 is directed to collecting information (“collect at least
weight-based information . . . transmit information .... receive real-time
perishable good weight information . . .”), and presenting the results of
abstract processes of collecting and analyzing information (“output data to
said at least one advanced weighing scale for controlling the inventory of
said perishable good of interest. . . .”). Similarly, claim 23 is directed to
collecting and analyzing information (“collect real-time weight-based
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Application 12/195,948
inventory information . . . receive and analyze weight information . . .
provide perishable good weight information . . . analyze the remaining
weight of said perishable good of interest. . . recommend a price per unit. . .
receiving and viewing the output. . and displaying information
(“displaying the price . . . display the price . . . See Elec. Power, 830
F.3dat 1353. Claim 12 is a system claim with similar limitations. See claim
12. The dependent claims are directed to similar abstract processes or
functions, and Appellant has not shown such claims are directed to other
non-abstract functions or processes. See claims 4—11, 12—22, and 24—32.
Further, Appellant’s assertion regarding pre-emption (App. Br. 14—15)
is unpersuasive, because “[wjhile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility .... Where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015);
see also OIP, 788 F.3d at 1362—63 (“that the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract”).
Regarding Alice step two, contrary to Appellant’s assertion (App. Br.
20-29), Appellant has not shown the claims in this case require an arguably
inventive set of components or methods, or invoke any assertedly inventive
programming. See Elec. Power, 830 F.3d at 1355. In particular, Appellant
describes advanced weighing scales as follows:
In addition to typical weighing scale components,
advanced weighing scales typically also include a
microprocessor, an operating system (scale software
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application), memory, one or more displays, and an input
means.
Spec. 110.
However, Appellant acknowledges the following prior art:
It is known that software applications exist to assist retailers
with planning and managing their inventory of perishable
goods. Such applications commonly operate by gathering
relevant information from point of sale (POS) terminals,
weighing scales and handheld devices, and subsequently using
said information to generate inventory-related reports that are
delivered to computers at central locations (e.g., headquarters or
individual store offices).
Spec. 14.
In light of the above disclosure, Appellant has not persuasively shown
the recited “non-POS advanced weighing scale” constitutes an inventive
component (App. Br. 22—24). For example, consistent with paragraph 10 of
the Specification, a “non-POS advanced weighing scale” can be a non-POS
conventional weighing scale connected to a conventional computer, and the
computer is connected to a conventional network. In fact, paragraph 10 of
the Specification describes the known art of using software applications to
gather information from weighing scales.
In addition, contrary to Appellant’s assertion (App. Br. 24), adding
“perishable goods sold in multiple portioned units of random weight” to the
preamble of some claims “is, without more, insufficient to transform them
into patent-eligible applications of the abstract idea at their core.” Elec.
Power, 830 F.3d at 1354; see also Alice, 134 S.Ct. at 2358; Bilski v. Kappos,
130 S.Ct. 3218, 3230 (2010); Diamond v. Diehr, 450 U.S. 175, 191-92
(1981).
Contrary to Appellant’s arguments (App. Br. 20-29), the claims are
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Application 12/195,948
similar to the claims of Electric Power, because they do not require any
nonconventional weighing scale, computer, network, or display components,
or even a “non-conventional and non-generic arrangement of known,
conventional pieces,” but merely call for performance of the claimed
information collection, analysis, and display functions on generic weighing
scales, computer components and display devices. See Elec. Power, 830
F.3d at 1355. Specifically, claim 1 recites (emphases added):
one non-POS advanced weighing scale adapted to collect at
least weight-based information . . . transmit information ... to
at least a perishable goods inventory management software
application . . . adapted to receive real-time perishable good
weight information . . . said perishable goods inventory
management software application and said perishable goods
price optimization software application output data to said at
least one advanced weighing scale for controlling the inventory
Claim 23 recites (emphases added):
providing a non-POS advanced weighing scale adapted to
collect real-time weight-based inventory information . . .
placing a perishable goods inventory management software
application . . . adapted to receive and analyze weight
information . . . using said advanced weighing scale to provide
perishable good weight information to said perishable goods
inventory management software application . . . placing a
perishable goods price optimization software application . . .
adapted to analyze the remaining weight. . . and to recommend
a price per unit. . . receiving and viewing the output of said
perishable goods inventory management software application
and said perishable goods price optimization software
application at said advanced weighing scale . . . providing an
electronic pricing device for displaying the price . . . using said
electronic pricing device to display the price ....
Claim 12 is a system claim with similar limitations. As to the
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dependent claims, they call for similar generic components and
devices. See claims 4—11, 13—22, and 24—32. Appellant describes
their limitations, but has not shown the dependent claims require any
non-conventional components or devices. See App. Br. 25—29; claims
4-11, 13—22, and 24—32.
In short, Appellant has not shown the claims, read in light of the
Specification, require anything other than conventional weighing scale,
computer, network, and display technology for collecting, analyzing, and
presenting the desired information. See Elec. Power, 830 F.3d at 1354.
Such invocations of weighing scales, computers, and networks that are not
even arguably inventive are “insufficient to pass the test of an inventive
concept in the application” of an abstract idea. See Elec. Power, 830 F.3d at
1355.
Finally, Appellant’s assertion (App. Br. 17—19)2 about Diamond is
unpersuasive. In Diamond, the Court found:
we think that a physical and chemical process for molding
precision synthetic rubber products falls within the § 101
categories of possibly patentable subject matter. That
respondents’ claims involve the transformation of an article, in
this case raw, uncured synthetic rubber, into a different state or
thing cannot be disputed. The respondents’ claims describe in
detail a step-by-step method for accomplishing such, beginning
with the loading of a mold with raw, uncured rubber and ending
with the eventual opening of the press at the conclusion of the
2 Appellant’s assertion (App. Br. 19—20) about SiRF Technology, Inc. v.
International Trade Commission, 601 F.3d 1319 (2010) is unpersuasive.
That case predates Alice and does not employ the Alice two-step inquiry. As
discussed above, Appellant has not shown the rejected claims are eligible
under the Alice two-step inquiry.
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cure. Industrial processes such as this are the types which have
historically been eligible to receive the protection of our patent
laws.
Diamond, 450 U.S. at 184 (emphasis added).
This case is materially different from Diamond because as discussed
above, the claims here recite inventions that are merely the routine or
conventional use of the technology, and Appellant fails to show the claims
transform “an article . . . into a different state or thing.” Diamond, 450 U.S.
at 184.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of claims 1 and 4—32.
DECISION
We affirm the Examiner’s decision rejecting claims 1 and 4—32.
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).
AFFIRMED
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