Ex Parte Ozonat

Patent Trial and Appeal Board

Mar 26, 2018

13756268 (P.T.A.B. Mar. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131756,268 0113112013
146568 7590 03/28/2018
Entit Software LLC
1140 Enterprise Way, Bldg F
MS: 3104
Sunnyvale, CA 94089
FIRST NAMED INVENTOR
Mehmet Kivanc Ozonat
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.
146568 8202
EXAMINER
WEISENFELD, ARYANE
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
03/28/2018 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):
software.ip.mail@hpe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MEHMET KIVANC OZONAT
Appeal 2016-002852 1
Application 13/756,268
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner's decision to reject claims 1-18. We have jurisdiction under
§ 6(b).
We AFFIRM.
1 Our Decision references Appellant's Specification ("Spec.," filed Jan. 31,
2013), Appeal Brief ("Appeal Br.," filed Aug. 11, 2015), and Reply Brief
("Reply Br.," filed Jan. 19, 2016), as well as the Examiner's Final Office
Action ("Final Act.," mailed Mar. 12, 2015) and Answer ("Ans.," mailed
Nov. 19, 2015).
Appeal2016-002852
Application 13/756,268
SUBJECT MATTER ON APPEAL
The invention relates to "an automated, online negotiation agent that
can negotiate with consumers on behalf of businesses and can make multiple
offers at every round of negotiation." Spec. i-f 11. Claims 1, 10, and 13 are
the independent claims on appeal. Independent claim 1, reproduced below,
is illustrative of the claimed subject matter:
and
1. A non-transitory computer-readable medium storing a set
of instructions to determine a counteroffer, the set of instructions
executable by a processing resource to:
determine, by an automated agent, a plurality of
counteroffers to an offer received by a user;
separate, by the automated agent, the plurality of
counteroffers into a number of clusters based on content of each
of the plurality of counteroffers and a determined distance
between each of the plurality of counteroffers;
select, by the automated agent, an individual counteroffer
from each of the number of clusters based on the offer,
characteristics of the user, and the determined distances; and
cause the automated agent to present each of the individual
counteroffers to allow negotiation of at least one issue of an
associated electronic commerce transaction.
REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 1-18 under 35 U.S.C. § 101 as non-statutory subject matter;
claims 1-18 under 35 U.S.C. § 102(b) as anticipated by Karp
(US 2004/0243495 Al, pub. Dec. 2, 2004).
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ANALYSIS
Non-Statutory Subject Matter
Appellant argues claims 1-----18 as a group. Appeal Br. 22----25;
Reply Br. 8-9. We select independent claim 1 as representative. The
remaining claims of the group stand or fall with independent claim 1.
37 C.F.R. § 41.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To "distinguish[] patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts," the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the first step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the elements the claim, individually and as an ordered
combination, recite an inventive concept-an element or combination of
elements sufficient to ensure the claim amounts to significantly more than
the abstract idea and transform the nature of the claim into a patent-eligible
application. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1294,
1296-98).
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Here, in rejecting independent claim 1 under 35 U.S.C. § 101 as
non-statutory subject matter, i.e., subject matter judicially excepted from
statutory subject matter, the Examiner analyzes the claim using this two-step
analysis. Final Act. 2-5. More specifically, pursuant to the first step, the
Examiner determines the claim is directed to the abstract idea of
"negotiation with consumers on behalf of businesses by making multiple
offers at every round of negotiation," which is a fundamental economic
practice, and, therefore, an abstract idea. Id. at 3. Under the second step, the
Examiner determines that the elements of the claim, considered individually
and as an ordered combination, do not amount to significantly more than the
abstract idea. Id. at 3-5. In particular, the Examiner determines that using a
computer to determine a plurality of counteroffers, separate the
counteroffers into clusters, select a counteroffer, and present the counteroffer
amounts to simple electronic record keeping, which is a basic function of a
computer that is well-understood, routine, and conventional. Id. at 4. The
Examiner also determines that the claim does no more than implement the
abstract idea on a generic computer. Id. The Examiner further determines
that the claim does not purport to improve the functioning of the computer or
to improve any other technology or technical field. Id.
Appellant argues that, in determining what the claim is directed to, the
Examiner overly summarizes and mischaracterizes independent claim 1.
Appeal Br. 23-24; Reply Br. 8. In particular, Appellant points out that
independent claim 1 recites the steps of separating the counteroffers into a
number of clusters based on the content of each counteroffer and a
determined distance between each of the counteroffers, and selecting an
individual counteroffer from each of the clusters based on the offer,
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characteristics of the user, and the determined distances. Appellant's
argument does not apprise us of error.
As set forth above, the Examiner determines that independent claim 1
is directed to "negotiation with consumers on behalf of businesses by
making multiple offers at every round of negotiation." Final Act. 3. We
agree with the Examiner that this characterization represents the character of
the claim as a whole. Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1346 (Fed. Cir. 2015) ("Under step one of Mayo/Alice, the claims
are considered in their entirety to ascertain whether their character as a
whole is directed to excluded subject matter.").
Independent claim 1 recites the steps of: determining a plurality of
counteroffers to an offer; separating the counteroffers into a number of
clusters based on the content of each counteroffer and a determined distance
between each of the counteroffers; selecting an individual counteroffer from
each of the clusters based on the offer, characteristics of the user, and the
determined distances; and presenting each individual counteroffer to allow
negotiation of at least one issue of an associated transaction.
Independent claim 1 thus recites that the particular steps for selecting
counteroffers to present to a user enable negotiation.
Negotiating with consumers on behalf of businesses by separating the
counteroffers into a number of clusters and selecting an individual
counteroffer from each cluster further describes the abstract idea of
"negotiation with consumers on behalf of businesses by making multiple
offers at every round of negotiation." In other words, negotiating by
separating the counteroffers into a number of clusters and selecting an
individual counteroffer from each cluster is still negotiating. The specific
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steps of separating counteroffers into clusters and selecting an individual
counteroffer from each cluster do not separate the claimed invention from
the abstract idea of "negotiation with consumers on behalf of businesses by
making multiple offers at every round of negotiation." Rather, these steps
simply suggest that the Examiner's characterization is at a high level of
abstraction, which is not persuasive of error. See Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can
generally be described at different levels of abstraction.").
Appellant also contends that the Examiner has failed to present
evidence or reasoning to explain that independent claim 1, which recites
separating the counteroffers into a number of clusters and selecting an
individual counteroffer from each of the clusters, is directed to a
longstanding economic practice. Appeal Br. 24; Reply Br. 9. Appellant's
argument is not persuasive of error.
As set forth above, the claimed steps of separating the counteroffers
into a number of clusters and selecting an individual counteroffer from each
cluster do not separate the claimed invention from the abstract idea of
"negotiation with consumers on behalf of businesses by making multiple
offers at every round of negotiation." Moreover, this concept is similar to
other concepts that the courts have held to be abstract ideas. See Amdocs
(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
("[T]he decisional mechanism courts now apply is to examine earlier cases
in which a similar or parallel descriptive nature can be seen-what prior
cases were about, and which way they were decided."). For example, we see
no meaningful distinction between the concept of "negotiation with
consumers on behalf of businesses by making multiple offers at every round
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of negotiation" and the abstract ideas of "intermediated settlement" in Alice,
134 S. Ct. at 2356-57 and "offer-based price optimization" in OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015). Like the
abstract ideas of facilitating settlement and price optimization, negotiating is
a longstanding commercial practice. As such, we see no error in the
Examiner's determination that "negotiation with consumers on behalf of
businesses by making multiple offers at every round of negotiation" is a
fundamental economic practice and, therefore, an abstract idea.
Seeing no error in the Examiner's determination that independent
claim 1 is directed to an abstract idea pursuant to the first step of the
patent-eligibility analysis, we tum to Appellant's arguments under the
second step. Appellant argues that the Examiner erred in determining that
the claimed invention recites a generic computer performing generic
computer functions. Appeal Br. 24--25; Reply Br. 8. According to
Appellant, the Examiner has not shown that the claimed steps of separating
the counteroffers into a number of clusters based on content and distance,
selecting an individual counteroffer from each of the clusters, and causing an
automated agent to present each of the individual counteroffers to allow
negotiation are well-understood, routine, and conventional functions.
Reply Br. 8. Appellant's argument is not persuasive of error.
As set forth above, the second step of the patent-eligibility analysis
determines whether a claim recites an inventive concept, namely an element
or combination of elements sufficient to ensure the claim amounts to
significantly more than the abstract idea and transforms the nature of the
claim into a patent-eligible application. Alice, 134 S. Ct. at 2355.
Limitations that further describe the abstract idea do not transform the nature
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of a claim into a patent-eligible application. Consequently, the inquiry under
the second step is not whether a function perfrnmed on a computer is
unconventional, but rather) whether the implementation of the abstract idea
involves "more than performance of 'well-understood, routine, [and]
conventional activities previously knovvn to the industry. rn Content
Extraction & Transnlission LLC v. FVells Fcugo Bank, Nat 'l Ass 'n, 776 F.3d
1343, 1347----48 (Fed. Cir. 2014) (alteration in original) (quoting Alice, 134
S. Ct at 2359}
Here, Appellant does not explain, and we fail to see, how the
implementation of the separating, selecting, and presenting steps requires
something apart from generic computing components performing
well-understood, routine and conventional cornputer functions such as
processing and displaying data. l\11oreover, there is no indication that the
implementation results in an improvement to the functioning of the
computer itself or to some other technology or technical field.
Consequently, even if we were to agree with Appellant that the steps of
separating, selecting, and presenting counteroffers distinguish the claimed
invention from the prior art, the computer implementation of these steps
does not transfom1 the abstract idea into a patent-eligible application.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner's determination that the claims are judicially excepted from
statutory subject matter. We, therefore, sustain the rejection of claims 1-18
under 35 U.S.C. § 101.
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Application 13/756,268
Anticipation
Appellant argues that Karp does not disclose selecting or presenting
multiple counteroffers. Appeal Br. 11-14; Reply Br. 1-2. More
specifically, Appellant argues that Karp does not disclose the limitation of
independent claim 1 reciting "select, by the automated agent, an individual
counteroffer from each of the number of clusters." Appeal Br. 11-13.
Appellant's argument is convincing.
In rejecting independent claim 1, the Examiner relies on Karp's child
nodes for disclosing a plurality of counteroffers, and the Examiner finds that
Karp's Figure 2 shows the counteroffers separated into clusters.
Final Act. 6-7. With respect to the disputed limitation, the Examiner finds
Karp teaches that any counteroffer can be selected by following the
selections needed to get to the counteroffer. Final Act. 7 (citing Karp i-fi-1 24--
25); Ans. 2-3. As an example, the Examiner refers to Karp's Figure 2 and
explains that to get to node 1, a selection of wingtips is made, and to get to
node 4, a selection of wingtips and the color brown is made. Final Act. 7;
Ans. 3. Even if we were to agree with the Examiner that Karp discloses
counteroffers separated into clusters, Karp does not teach selecting an
individual counteroffer from each cluster, as claimed.
Karp discloses a method for automated negotiation, whereby the
method involves constructing a game tree based on an offer received from
an opponent, evaluating the game tree, and selecting a counteroffer based on
the evaluation of the game tree. Karp i1 8, Fig. 1. Figure 2 shows a game
tree constructed to determine the possible counteroffers for a negotiation for
a pair of shoes in which two attributes are being negotiated, namely the type,
i.e., wingtips (W) or loafers (L), and color, i.e., black (Bl) or brown (Br).
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Karp i-f 24, Fig. 2. Root node 0 represents the current state of the
negotiation, and each child node represents a possible counteroffer. Id. As
shown in Figure 2, the branches connecting root node 0 to the child nodes
indicate what attribute( s) would need to be selected to move a particular
child node. Id.
Once construction of the game tree is completed and all the possible
counteroffers are determined, the game tree is evaluated. Id. i-f 38. The
evaluation process involves determining a payoff value for each child node,
and the child node with the highest available payoff is usually selected as the
best option. Id. i-f 38, Fig. 4. Karp therefore teaches selecting the
counteroffer with the highest payoff value of all of the counteroffers, not
selecting an individual counteroffer from a cluster of counteroffers, as
recited in the disputed limitation.
In view of the foregoing, there is insufficient support for the
Examiner's finding that Karp discloses the limitation of independent claim 1
reciting "select, by the automated agent, an individual counteroffer from
each of the number of clusters." Each of independent claims 10 and 13
includes a similar limitation to this limitation of independent claim 1, and
the Examiner's rejection of independent claims 10 and 13 is based on the
same deficient finding. Final Act. 13-14, 17-18. Accordingly, we do not
sustain the Examiner's rejection of claims 1-18 under 35 U.S.C. § 102(b).
DECISION
The Examiner's decision to reject claims 1-18 under 35 U.S.C. § 101
is affirmed.
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Application 13/756,268
The Examiner's decision to reject claims 1-18 under 35 U.S.C.
§ 102(b) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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