Ex Parte Ladue et al

Patent Trial and Appeal Board

Nov 26, 2018

13858400 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
13/858,400
136715 7590
Athorus, PLLC
P.O. Box 579
FILING DATE
04/08/2013
11/28/2018
Mount Vernon, WA 98273
FIRST NAMED INVENTOR
Shahrul Azri Ladue
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.
110.0327 4711
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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):
athorus.docket@athorus.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHAHRUL AZRI LADUE, HEIDI LYNN DAIGLER,
MATTHEW PAUL HARREN, and GRETCHEN JANE BROWN
Appeal2017-008731
Application 13/858,400 1
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-9, 11, 14--20, and 25-28. 2 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. Br. 2.
2 All rejections under 35 U.S.C. §§ 102 and 103 have been withdrawn by the
Examiner. Answer 5.
Appeal2017-008731
Application 13/858,400
THE INVENTION
Appellants' claims cover electronic marketplaces offering a variety of
items to customers over the Internet. Abstract.
Claim 1 reproduced below, is representative of the subject matter on
appeal.
1. A method comprising:
receiving a request to offer a first item for sale at an
electronic marketplace from a seller over a network, wherein
the request comprises functional attributes of the first item, and
wherein at least one of the functional attributes of the first item
is a first dimension of the first item;
receiving an identification of a second item as an
equivalent to the first item from the seller over the network,
wherein the second item is offered for sale at the electronic
marketplace;
identifying functional attributes of the second item,
wherein at least one of the functional attributes of the second
item is a second dimension of the second item;
calculating a first confidence score indicative of a
relationship between the second item and the first item based at
least in part on a comparison of the first dimension of the first
item to the second dimension of the second item;
calculating a second confidence score for the seller based
at least in part on the identification of the second item as the
equivalent to the first item received from the seller and the first
confidence score;
receiving, over the network, at least one of an order for
the first item or information regarding a return of the first item;
modifying the first confidence score based at least in part
on at least one of the order for the first item or the return of the
first item;
modifying the second confidence score based at least in
part on at least one of the order for the first item or the return of
the first item;
confirming that the second item is an equivalent to the
first item based at least in part on the first confidence score or
the second confidence score; and
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causing a display of an item detail page comprising
information regarding the first item.
The following rejection is before us for review.
Claims 1-9, 11, 14--20, and 25-28 are rejected under 35 U.S.C. § 101
because the claimed invention is directed to non-statutory subject matter.
FINDINGS OF FACT
1. We adopt the Examiner's findings as set forth on pages 4--12 of the
Final Action and pages 2-14 of the Answer.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1-9, 11, 14--20, and 25-28
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, we 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. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we determine that the plain language of the claims
and the Specification provide enough information to inform one as to what
they are directed to.
The steps in representative claim 1 result substantively in3:
modifying the first confidence score based at least in part
on at least one of the order for the first item or the return of the
first item;
modifying the second confidence score based at least in
part on at least one of the order for the first item or the return of
the first item;
confirming that the second item is an equivalent to the
first item based at least in part on the first confidence score or
the second confidence score.
App. Br. 30.
The Examiner found that the claims are directed to,
offering an item for sale based on a confidence score related to
available and proposed items, which includes the abstract ideas
of an idea 'of itself' (e.g., collecting and comparing known
information (Classen), obtaining and comparing intangible data
( Cybersource ), comparing new and stored information and
using rules to identify options (SmartGene), using categories to
orgamze, store and transmit information ( Cyberfone) );
orgamzmg human activity (e.g., concepts relating to
3 Our analysis is made based on considering the claims as a whole, but for
purposes of this discussion, we note the result phrases of the independent
claim to point to what the claims are directed to.
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interpersonal and intrapersonal actlv1tles, such as managing
relationships or transactions between people, social activities,
and human behavior; satisfying or avoiding a legal obligation;
advertising, marketing, and sales activities or behaviors; and
managing human mental activity); and mathematical
relationships/formulas.
(Final Act. 11 ).
The Examiner further found,
Claims 1-2 do not present additional elements beyond the
details of the abstract ideas. The recited network could simply
be a collection of interrelated items or people. A display could
be a non-electronic presentation of data. Claims 9, 11, 14-20,
and 25-28 include the additional element of a computer
processor. The computer processor is broadly applied to the
abstract idea(s) at a high level of generality and they operate in
well-understood, routine, and conventional manners.
Id.
The Specification states: "competitors or other sources of the
malfunctioning part, or of equivalent parts, may frequently offer the
malfunctioning part, or equivalent parts, at prices that are lower than those
that are offered by the original equipment manufacturer." Spec. ,r 3.
We thus find that the claims are directed to determining with a relative
degree of confidence, an equivalence between first and second items offered
for sale. It follows from prior Supreme Court cases, and Gottschalk v.
Benson, 409 U.S. 63 (1972), in particular, that the claims at issue here are
directed to an abstract idea. Determining with a relative degree of
confidence, an equivalence between first and second items offered for sale is
a fundamental economic principle because it assures the buyer is obtaining a
product made specifically for the intended purpose of the purchase. The
patent-ineligible end of the spectrum includes fundamental economic
practices. Alice, 134 S. Ct. at 2357.
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Also, we find the steps of:
1. calculating a first confidence score indicative of a relationship
... based at least on a comparison of ... dimension[s];
11. calculating a second confidence score for the seller based at
least in part on . . . identification of the [] item as the
equivalent;
111. modifying the first confidence score based at least in part on at
least one of an order[] or the return of [one of the items];
1v. modifying the second confidence score based at least in part on
at least one of the order ... or return of the [one] item;
v. confirming that the [] item is an equivalent based at least in part
on the first confidence score or the second confidence score,
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., 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) (claims directed to
certain arrangements involving contractual relations are directed to abstract
ideas). Thus, determining with a relative degree of confidence, an
equivalence between first and second items offered for sale is an "abstract
idea" beyond the scope of § 101.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
an intermediated settlement, as discussed in Alice, and the concept of
determining with a relative degree of confidence, an equivalence between
first and second items offered for sale, at issue here. Both are squarely
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within the realm of "abstract ideas" as the Court has used that term. That the
claims do not preempt all forms of the abstraction or may be limited to
replacement parts, does not make them any less abstract. See OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-1663 (Fed. Cir. 2015)
( citations omitted) ("And 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.").
Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, transmission, and
linkage and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (finding claims not abstract because they
"focused on a specific asserted improvement in computer animation").
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 pre-emption
concern that undergirds our § 101 jurisprudence. Given the
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."
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Alice, 134 S. Ct. at 2358 (alterations in original) (internal 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 2359. 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 to drive a
score 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 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) (internal citation omitted).
Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-modification
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) (sequence of receiving, selecting, offering for exchange, display,
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allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). 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. Nor do they effect 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 26.; cf Appeal Br. 16-19.
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, 134
S. Ct. at 2360.
We have reviewed all the arguments (Appeal Br. 5-27; Reply Br. 2-
16) Appellants have submitted concerning the patent eligibility of the claims
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 various
arguments in order to make individual rebuttals.
Appellants argue, "the claims recite detailed and non-obvious features
to overcome a technical problem specifically arising in the realm of
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identifying interchangeable items by calculating confidence scores using at
least particular datapoints, rules and processing methods." (Appeal Br. 8).
We disagree with Appellants. The question in step two of the Alice
framework is not whether an additional feature is novel, but whether the
implementation of the abstract idea involves "more than the performance of
'well-understood, routine, [and] conventional activities previously known to
the industry."' Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343, 1347-1348 (quoting Alice, 134 S. Ct. at
2359).
Appellants next argue,
Clearly the details of how interchangeable items are
identified by calculating confidence scores using particular
datapoints, rules and processing methods extend well beyond
any abstract idea. In addition, the automatic generation and
display of item details pages including information regarding
interchangeable items, based at least on the calculated
confidence scores and/or degree of equivalence, also extend
well beyond any abstract idea.
(Appeal Br. 9)
We disagree with Appellants because the steps of calculating a
confidence score is still an abstraction albeit, maybe novel, but "a claim for a
new abstract idea is still an abstract idea." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (citing Mayo, 566 U.S. at 90). As to
the argued display of resulting data, we find that this is limited to
insignificant extra solution activity not covered under 35 U.S.C. § 101. See
In re Schrader, 22 F. 3d 290,294 (Fed. Cir. 1994) (recording step of the
claimed process is incapable of imparting patent-eligibility under 35 U.S.C.
§ 101 ).
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Appellants next argue,
Appellant respectfully disagrees with the Examiner's
characterization, and submits that the particular details related
to analyzing the data, e.g., related to orders or returns of the
first item, in order to calculate and modify the first and second
confidence scores do indeed constitute at least part of the
technical or technological improvements of the present claims.
(Appeal Br. 10).
We disagree with Appellants. The question here is whether the claims
as a whole "focus on a specific means or method that improves the relevant
technology" or are "directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery." McRO, 837 F.3d at
1314. In this case, the claims, as a whole, are focused on satisfying certain
contingencies for confirming that a second item is an equivalent to a first
item based at least in part on a first confidence score or the second
confidence score. We find this limitation to be a result or an effect, and not
an improvement in the technology of how a processor, memory, and
program works. Thus, we find no improvement in device technology here,
but rather only the idea of selecting one product over another.
Appellants argue,
For an electronic marketplace handling thousands or millions of
orders and/or returns of items each day, the continuous stream
of data regarding orders and returns could not be effectively and
efficiently processed and analyzed in the mind of a human user
or through use of pen and paper.
(Appeal Br. 13).
We disagree with Appellants. The Federal Circuit has held that if a
method can be performed by human thought alone, or by a human using pen
and paper, it 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.
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2011 ). While reducing the time of calculation though machine intervention
may be an enhancement, it still does not make the calculations any less of an
abstraction. Automation to reduce the burden on the user of what once
could have been done with pen and paper, e.g. formatting of data, does not
qualify an idea for patent eligibility because it is still a mental process. See
CyberSource, 654 F.3d at 1375. "The Court [Parker v. Flook, 437 U.S. 584
(1978)] rejected the notion that the recitation of a practical application for
the calculation could alone make the invention patentable." CyberSource,
654F.3dat 1371.
Appellants argue that the Examiner has not provided an explanation of
"why the courts have recognized, or those in the relevant field of art would
recognize, those claim limitations as being well-understood, routine,
conventional activities ... ( emphasis omitted)." (Appeal Br. 15).
We disagree with Appellants. We understand the Examiner, through
citation to the July 2015 Update (Final Act. 5-9, 11, and 12), to rely on prior
court decisions finding that certain computer functions are well-understood,
routine, and conventional functions. These prior court decisions adequately
support this finding to satisfy the requirement to set forth a prima facie case
ofunpatentability under 35 U.S.C. § 101. "Whether something is well-
understood, routine, and conventional to a skilled artisan ... is a factual
determination." Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018). "The improvements in the specification, to the extent they are
captured in the claims, create a factual dispute regarding whether the
invention describes well-understood, routine and conventional activities."
Id. As found supra, we find no technological improvement captured in the
claims. Similarly, the Examiner found, "Appellant's invention focuses on
the details of the abstract ideas. The additional elements are only broadly
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applied to the abstract ideas at a high level of generality and they are used in
conventional, routine, and well-understood manners." Answer 10.
Appellants further argue, "Further, the Office has not shown that the
claims fail to provide improvements to another technical field. As set forth
in the Office's own guidance, 'improvements to another technology or
technical field' may be enough to qualify as 'significantly more' when
recited in the claim." (Appeal Br. 15).
We disagree with Appellants. The Examiner properly addresses this
issue on pages 5, 7, 8, 10, and 12 of the Final Action and on pages 4, 6, 12,
and 13 of the Answer. As we found above, the claims do not, for example,
purport to improve the functioning of the computer itself. Nor do they effect
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 26.
Appellants argue, "Like the claims at issue in DDR Holdings,
independent claims 1 and 3 do not recite 'mathematical algorithms' or
'fundamental economic or longstanding commercial practices,' but are both
'particular to the Internet' and 'necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of
computer[ s]. "' (Appeal Br. 21 ).
We disagree with Appellants. In DDR Holdings 4, the Court evaluated
the eligibility of claims "address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
4 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014).
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Internet hyperlink protocol, would be instantly transported away from a
host's website after 'clicking' on an advertisement and activating a
hyperlink." Id. at 1257. There, the Court found that the claims were
patent eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no "pre-Internet
analog." Id. at 1258. At best, claim 1 before us here only generically
recites an "electronic marketplace" and a "network" and claim 3 recites "a
computer processor" and a "network", let alone an internet technology item
like a hyperlink. The Court cautioned, however, "that not all claims
purporting to address Internet-centric challenges are eligible for patent."
Id. For example, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258-1259 (citing Ultramercial, 772 F.3d at
715-716). As noted there, the Ultramercial claims were "directed to a
specific method of advertising and content distribution that was
previously unknown and never employed on the Internet before." Id. at
1258 (quoting Ultramercial, 772 F.3d at 714). Nevertheless, those claims
were patent ineligible because they "merely recite[ d] the abstract idea of
'offering media content in exchange for viewing an advertisement,' along
with 'routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet."' Id.
Appellants argue,
Like the claims at issue in Enfzsh, independent claims 1 and 3
are not simply directed to any form of obtaining and comparing
intangible data but are specifically directed to calculating
confidence scores using particular datapoints, rules and
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processing methods to then identify interchangeability or
equivalence between items.
(Appeal Br. 22).
We disagree with Appellants because, based on Enfzsh, we look to
whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
the abstract idea and merely invoke generic processes and machinery.
See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
As found supra, independent claim 1 before us here only generically recites
an "electronic marketplace" and a "network", and independent claim 3 only
generically recites "a computer processor" and a "network", let alone an
internet technology item. As such, we find that the claims are directed to the
abstraction of determining with a relative degree of confidence, an
equivalence between first and second items offered for sale.
Finally, Appellants argue,
Like the claims at issue in McRO, independent claims 1
and 3 recite rules with specific characteristics - particular
rules and processing methods for calculating confidence scores,
i.e., taking into account an order for [a] first item or information
regarding a return of [a] first item to calculate/modify the
confidence scores.
(Appeal Br. 23).
We disagree with Appellants. The question is whether the claims as a
whole "focus on a specific means or method that improves the relevant
technology" or are "directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery." McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case,
and again, the independent claims as a whole are focused on satisfying
certain contingencies for determining with a relative degree of confidence,
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an equivalence between first and second items offered for sale, and not on
any specific means for improving a relevant technology, such as "generating
an intermediate stream of output morph weight sets and a plurality of
transition parameters" as found in McRO.
For the reasons identified above, we determine there are no
deficiencies in the Examiner's prima facie case of patent ineligibility of the
rejected claims based on the record before us.
CONCLUSION OF LAW
We conclude the Examiner did not err in rejecting claims 1-9, 11, 14--
20, and 25-28 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1-9, 11, 14--20, and 25-
2 8 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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