Ex Parte Ward Drew et al

Patent Trial and Appeal BoardMar 9, 2017

12581840 (P.T.A.B. Mar. 9, 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. 12/581,840 10/19/2009 Julie Ward Drew 82251128 3397 56436 7590 Hewlett Packard Enterprise 3404 E. Harmony Road Mail Stop 79 Fort Collins, CO 80528 EXAMINER VETTER, DANIEL ART UNIT PAPER NUMBER 3628 NOTIFICATION DATE DELIVERY MODE 03/13/2017 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): hpe.ip.mail@hpe.com chris. mania @ hpe. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JULIE WARD DREW, JOSE LUIS BELTRAN GUERRERO, GUILLERMO GALLEGO, MING HU, and SHAILENDRA K. JAIN Appeal 2015-007437 Application 12/5 81,8401 Technology Center 3600 Before HUBERT C. LORIN, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Julie Ward Drew, et al. (Appellants) seek our review under 35 U.S.C. § 134 of the final rejection of claims 1—7 and 21. We have jurisdiction under 35 U.S.C. § 6(b) (2002). 1 The Appellants identify Hewlett-Packard Development Company, LP as the real party in interest. App. Br. 1. Appeal 2015-007437 Application 12/581,840 SUMMARY OF DECISION We AFFIRM. THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method executed by a computer, comprising: determining, by executing a module stored on a non-transitory computer-readable medium, for a sale of a product and a post-sale service for the product from a supplier to a retailer, an expected supply chain profit for the sale as a function of an effort cost function of the retailer, a quantity of the product ordered, and an expected revenue of the retailer; and determining a wholesale price schedule for the product that is a function of the quantity of the product ordered by the retailer and not a function of a quantity of the post-sale service, based on the expected supply chain profit for the sale of the product and the post-sale service for the product, wherein the wholesale price schedule reduces effects of double marginalization on the sale of the product and the post-sale service. THE REJECTION The Examiner relies upon the following as evidence of unpatentability: Hoffman et al. US 2003/0069774 A1 Apr. 10, 2003 (“Hoffman”) Terry A. Taylor, Supply Chain Coordination Under Channel Rebates with Sales Effort Effects, MGMT. Sci., Vol. 28, No. 8, 992-1007 (Aug. 2002) (hereinafter “Taylor”). 2 Appeal 2015-007437 Application 12/581,840 Gerard P. Cachon, Supply Chain Coordination with Contracts, Ch. 6 of HANDBOOKS IN OR & MS, Vol. 11, 2003, pgs. 229-339, (hereinafter “Cachon”) Wan-ting Hu, Supply Chain Coordination Contracts with Free Replacement Warranty, Drexel Univ. Thesis, (2008) (hereinafter “Hu”). Yu-Chung Tsao, et al., Dynamic Pricing, Promotion, and Replenishment Policies for a Deteriorating Item Under Permissible Delay in Payments, Computers & Operations Research 35, Institute of Industrial Management, 3562—3580, National Central University, Taiwan, (2008), (hereinafter “Tsao”). The following rejections are before us for review: 1. Claims 1—7 and 21 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter. 2. Claims 1—7 and 21 are rejected under 35 U.S.C. §112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regard as the invention. 3. Claims 1—3, 6, 7 and 21 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Taylor, Hu, and Hoffman. 4. Claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Taylor, Hu, Hoffman, and Cachon. 5. Claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Taylor, Hu, Hoffman, and Tsao. ISSUE Did the Examiner err in rejecting claims 1—7 and 21 under 35 U.S.C. §101 as being directed to non-statutory subject matter? 3 Appeal 2015-007437 Application 12/581,840 ANALYSIS The rejection of claims 1—7 and 21 under 35 U.S.C. §112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regard as the invention. The rejection of claims 1—3, 6, 7 and 21 under 35 U.S.C. §103 (a) as being unpatentable over Taylor, Hu and Hoffman is affirmed. The rejection of claim 4 under 35 U.S.C. §103 (a) as being unpatentable over Taylor, Hu, Hoffman, and Cachon is affirmed. The rejection of claim 5 under 35 U.S.C. §103 (a) as being unpatentable over Taylor, Hu, Hoffman, and Tsao is affirmed. The Appellants do not appeal these rejections. See App. Br. 2. Accordingly, they are affirmed. Claims 1—7 and 21 under 35 U.S.C. §101 as being directed to non-statutory subject matter. The Appellants argued these claims as a group. See App. Br. 3—7. We select claim 1 as the representative claim for this group, and the remaining claims 2—7 and 21 stand or fall with claim 1. 37 C.F.R. §41.37(c)(l)(iv). Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014) identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under § 101. According to Alice step one, “[w]e must first determine whether the claims at issue are directed to a patent-ineligible concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355. The Examiner found claim 1 to be “directed to the abstract idea of determining prices, which is a fundamental economic practice involving mathematical relationships.” Final Act. 4. The Appellants agree. See App. Br. 3. 4 Appeal 2015-007437 Application 12/581,840 Step two is “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, 134 S. Ct. at 2355 {quotingMayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294 (2012)). The Examiner found The additional elements in the claims other than the abstract idea per se (“executing a module stored on a non-transitory computer-readable medium”) amount to no more than generic computing structure. None of the hardware recited “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers.” Id., slip op. at 16 {citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). Viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application such that the claims amount to significantly more than the abstract idea itself. Final Act. 4. The Appellants challenge the Examiner’s position regarding Alice steps two’s “search for an ‘inventive concept.’” According to the Appellants, there are two “specific limitation[s] other than what is well-understood, routine and conventional in the field,” rendering claim 1 patent eligible under 35 U.S.C. §101. App. Br. 4. 1. “The first is determining for a sale of a product and a post-sale service for the product from a supper to a retailer, an expected supply chain profit for the sale as a function of an effort cost function of the retailer, a quantity of the product ordered, and an expected revenue of the retailer.'1'’ App. Br. 4. According to the Appellants, “[t]his claim language is 5 Appeal 2015-007437 Application 12/581,840 significantly more than determining an expected supply chain profile for a sale.” App. Br. 4. While we can agree that determining an expected supply chain profit for a sale of the product/service as claimed “as a function of an effort cost function of the retailer, a quantity of the product ordered, and an expected revenue of the retailer” is more limited in scope than determining an expected supply chain profit per se for a sale of the product/service, that is not enough to transform the abstract idea of determining prices into a patent- eligible application of said abstract idea. The question is whether it “focus[es] on a specific means or method that improves the relevant technology” or instead is “directed to a result or effect that itself is the abstract idea and merely invoke[s] generic processes and machinery.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016) (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016)). Here the determination of the expected supply chain profit is limited to depend on a particular function, quantity, or revenue. This dependency simply lowers the level of abstraction, describing the abstract idea in more narrow terms; that is, the desired result of the determination is made more specific. It does not, however, relate to any specific means or method that improves any technology. “Generally, a claim that merely describes an ‘effect or result dissociated from any method by which [it] is accomplished’ is not directed to patent-eligible subject matter.” Id., 842 F.3d at 1244 (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)). 6 Appeal 2015-007437 Application 12/581,840 Accordingly, we do not find the first relied-upon claim limitation sufficient to ensure that the claimed subject matter as a whole amounts to significantly more than to be upon the abstract idea itself. 2. “The second specific limitation that adds ‘significantly more’ to the claim language is determining a wholesale price schedule for the product that is a function of the quantity of the product ordered by the retailer and not a function of a quantity of the post-sale service, based on the expected supply chain profit for the sale of the product and the post-sale service for the product, wherein the wholesale price schedule reduces effects of double marginalization on the sale of the product and the post-sale service.” App. Br. 5. For similar reasons already discussed, we do not find this second relied-on claim limitation sufficient to ensure that the claimed subject matter as a whole amounts to significantly more than to be upon the abstract idea itself. The Appellants further argue that, as a result of this second claim limitation, “[tjhere is no such pre-emption as to independent claim 1 of the present patent application.” App. Br. 5. It is difficult to countenance how such a specifically crafted claim pre empts others from practicing the abstract idea of determining a wholesale price schedule. The claim language delineates a quite particular approach to such price schedule determination, and thus applies this general idea to a new and useful end. App. Br. 6. The difficulty with this argument is that it confuses the pre-emption concern with the level of abstraction describing the abstract idea. With respect to the pre-emption concern, “[wjhat matters is whether a claim 7 Appeal 2015-007437 Application 12/581,840 threatens to subsume the full scope of a fundamental concept, and when those concerns arise, we must look for meaningful limitations that prevent the claim as a whole from covering the concept’s every practical application.” CLS Bank Intern, v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here, said second relied-on claim limitation simply narrows the abstract idea so that it is described at a lower level of abstraction. It does not render the abstract idea to which the claim is directed to any less an abstract idea. Pre-emption is not a separate test. To be clear, the proper focus is not preemption per se, for some measure of preemption is intrinsic in the statutory right granted with every patent to exclude competitors, for a limited time, from practicing the claimed invention. See 35 U.S.C. § 154. Rather, the animating concern is that claims should not be coextensive with a natural law, natural phenomenon, or abstract idea; a patent-eligible claim must include one or more substantive limitations that, in the words of the Supreme Court, add “significantly more” to the basic principle, with the result that the claim covers significantly less. See Mayo 132 S. Ct. at 1294. Thus, broad claims do not necessarily raise § 101 preemption concerns, and seemingly narrower claims are not necessarily exempt. Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (“[wjhile preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.”). We have considered the Appellants’ position in “look[ing] at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.’” Affinity Labs of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 8 Appeal 2015-007437 Application 12/581,840 2016); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Here, the Appellants do not persuasively show that this second relied-on claim limitation supports viewing said focus and determination as not directed to said abstract idea. Instead, the Appellants make a case for “a quite specific approach for determining such a price schedule.” App. Br. 6. But that does little to ensure that the claimed subject matter as a whole amounts to significantly more than the abstract idea itself. While this specific approach may prevent pre-emption of all price schedule determinations, it does not make the claimed subject matter any less directed to an abstract idea. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-1363 (Fed. Cir.) {cert, denied, 136 S. Ct. 701, 193 L. Ed. 2d 522 (2015)) (“[Tjhat 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.”). Because we find the claimed subject matter covers patent-ineligible subject matter, the pre-emption concern is necessarily addressed. “Where a paten”s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, [jpreemption concerns are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379. The remaining arguments have been considered but found unpersuasive as to error in the rejection. 9 Appeal 2015-007437 Application 12/581,840 CONCLUSIONS The rejection of claims 1—7 and 21 are rejected under 35 U.S.C. §101 as being directed to non-statutory subject matter is affirmed. The rejection of claims 1—7 and 21 are rejected under 35 U.S.C. §112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regard as the invention is affirmed. The rejection of claims 1—3, 6, 7 and 21 are rejected under 35 U.S.C. §103 (a) as being unpatentable over Taylor, Hu and Hoffman is affirmed. The rejection of claim 4 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Taylor, Hu, Hoffman, and Cachon is affirmed. The rejection of claim 5 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Taylor, Hu, Hoffman, and Tsao is affirmed. DECISION The decision of the Examiner to reject claims 1—7 and 21 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)(l)(iv). AFFIRMED 10