Ex Parte Tellefsen

Patent Trial and Appeal Board

Jun 15, 2017

11748957 (P.T.A.B. Jun. 15, 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.
11/748,957 05/15/2007 Jens E. Tellefsen 134268.411547 7354
26694 7590 06/19/2017
VENABLE LLP
P.O. BOX 34385
WASHINGTON, DC 20043-9998
EXAMINER
JUNG, ALLEN J
ART UNIT PAPER NUMBER
OPQA
NOTIFICATION DATE DELIVERY MODE
06/19/2017 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):
PTOMail@Venable.com
cavanhouten@venable.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENS E. TELLEFSEN
Appeal 2015-001231
Application 11/748,957
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Jens E. Tellefsen (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 4—18, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed May 28, 2014) and Reply Brief (“Reply Br.,” filed October 29,
2014), and the Examiner’s Answer (“Ans.,” mailed August 29, 2014), and
Final Action (“Final Act.,” mailed August 28, 2013).
Appeal 2015-001231
Application 11/748,957
The Appellant invented a price setting tool. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 4, which is reproduced below (bracketed matter and some
paragraphing added).
4. A method of incorporating pricing data into an integrated
price management system, said method comprising:
[1] tracking, by a computer processor,
percentage of successful deal negotiations;
[2] monitoring adherence to
price realization goals;
[3] generating an approximation of impact of
successful deal negotiations on revenue;
[4] generating an approximation of
impact of successful deal negotiations on volume;
[5] generating an approximation of impact of
successful deal negotiations on profit;
[6] displaying the price realization goals,
wherein price realization goals include
a target price,
an approval price,
and a floor price
for a negotiation;
[7] adjusting price realization goals;
and
[8] displaying current price realization data.
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Application 11/748,957
The Examiner relies upon the following prior art:
Walker US 2001/0047301 A1 Nov. 29, 2001
Apr. 22, 2003
Oct. 28, 2004
Apr. 22, 2008
Carter US 6,553,350 B2
US 2004/0215504 A1
US 7,360,697 B1
Ikezawa
Sarkar
Claims 4—8 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ikezawa and Walker.
Claims 9—15 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Ikezawa, Walker, and Sarkar.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Ikezawa, Walker, Sarkar, and Carter.
Claims 4—18 stand rejected under 35 U.S.C. § 101 as directed to non—
statutory subject matter.
The issues of obviousness turn primarily on whether patentable weight
should be afforded the data labels in the claims, and to the extent weight is
afforded, whether the claims’ scope encompasses the art applied. The issues
of statutory subject matter turn primarily on whether collecting and
displaying data is more than abstract conceptual advice.
ISSUES
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Application 11/748,957
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Ikezawa
01. Ikezawa is directed to sales activity management. Ikezawa
para. 2.
02. Ikezawa describes advising each salesperson in sales activity
using a database; an activity content evaluation unit that evaluates
the activity content of each salesperson based on at least one of
the activity management information and the sales negotiation
item information; and an evaluation report creating unit that
generates evaluation report information concerning the activity
content of each salesperson. The activity management
information includes the number of registered sales negotiations,
number of agreements reached in sales negotiations, rate of
agreements reached in sales negotiations, sales proceeds, and
estimate proceeds. The sales negotiation item information
includes data of progress level of each sales negotiation item. The
sales activity management system has an activity pattern
analyzing unit that extracts sales management information that has
a number or rate equal to or higher than a predetermined number
of registered sales negotiations or a predetermined rate of
registered sales negotiations from the database, and analyzes the
activity pattern of the salesperson, using the extracted sales
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Application 11/748,957
management information. The evaluation report creating unit may
generate advice towards the activity content of each salesperson
based on the analysis by the activity pattern analyzing unit. The
advice includes activity instruction information towards each
salesperson. The activity pattern analyzing unit extracts sales
management information. Where a sales proceed or an estimate
proceed is higher than a predetermined amount, it analyzes the
activity pattern of the salesperson using the extracted sales
management information. The evaluation report creating unit
ranks the activity content of each salesperson, based on the
evaluation results by the activity content evaluation unit. Ikezawa
paras. 9—21.
03. The activity pattern analyzing unit specifies activity
management information wherein predetermined data items (for
example, number of registered sales negotiations, number of
agreements reached in sales negotiation, and sales proceeds, etc.)
that are set beforehand, have a value equal to or more than a
predetermined value, in the activity management information
registered in the activity management information, and carries out
processing for analyzing activity patterns of a salesperson in the
activity management information. Criterion of judgment is
arbitrary, and may be determined by sales proceeds (or estimated
sales proceeds) during a predetermined period, or profit amount
(rate). Ikezawa para. 60.
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Application 11/748,957
Walker
04. Walker is directed to a restaurant menu dynamically generated
based on revenue management information. Walker para. 2.
05. Walker Figures 3A to 3C are tabular representations of the price
management table database. The table includes a product
identifier and a current price. The price management table
database also includes an evaluation frequency, a sales since last
evaluation, a previous demand, a current demand and a demand
increment. The price management table database includes a price
adjustment increment, a minimum price, a suggested price and a
maximum price. Walker paras. 43^45.
ANALYSIS
Claims 4—8 and 18 rejected under 35 U.S.C. § 103(a) as unpatentable over
Ikezawa and Walker
As the Examiner finds, Ikezawa’s disclosure performs all of the step
actions as such. Final Act. 3—5. See also FF 02. Walker describes the step
6 price limitations. Id. See also FF 05.
We are not persuaded by Appellant’s argument that Ikezawa fails to
describe limitations 2, 4, and 5. App. Br. 13. Limitation 2 recites
monitoring adherence to price realization goals. The manner or
implementation of such monitoring and adherence are neither recited nor
narrowed. In particular, indirect monitoring is within the scope. Ikezawa’s
monitoring of sales proceeds, which by definition is the accumulation of
prices times quantities sold, therefore monitors pricing, and its tracking of
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Application 11/748,957
estimated proceeds as well therefore monitors adherence to price realization
goals implicit in such estimates.
Limitations 4 and 5 generate an approximation of impact of successful
deal negotiations on volume and profit. These limitations generate an
approximation of impact. They do not quantify volume and profit or
deviations from them per se. The steps do not recite or narrow the manner
or implementation of such generation, approximation, or impact. The steps
also do not recite or narrow the precision or accuracy of the approximation,
whether the approximation is quantitative or qualitative, how the
approximation is expressed, the nature of the impact, the manner in which
the impact is expressed, or how directly the impact relates to volume and
profit. Ikezawa’s analysis of sales proceeds, which by definition is the
accumulation of prices times quantities sold, and profits (FF 02), therefore
generates approximations of impact of successful deal negotiations on
volume and profit.
We are not persuaded by Appellant’s argument that the claims recite
generating predictive approximations for volume and profits. Reply Br. 15.
Again, limitations 3—5 generate approximations of impact, not of the volume
and profits per se.
Claims 9 15 and 17 rejected under 35 U.S.C. § 103(a) as unpatentable over
Ikezawa, Walker, and Sarkar
These claims are not separately argued.
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Application 11/748,957
Claim 16 rejected under 35 U.S.C. § 103(a) as unpatentable over Ikezawa,
Walker, Sarkar, and Carter
This claim is not separately argued.
Claims 4—18 rejected under 35 U.S.C. §101 as directed to non—statutory
subject matter
Appellant argues only claim 4. Arguments to the remaining claims are
waived.
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.”
Alice Corp., Pty. Ltd. v. CLS BankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Labs, Inc., 132 S. Ct. 1289
(2012)).
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Application 11/748,957
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
are directed to fundamental economic practices and/or methods of
organizing human activities. Ans. 3.
Although the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 4 recites that it is a method of incorporating
pricing data into an integrated price management system. The eight steps in
claim 4 result in price data. The Specification at paragraph 2 recites that the
invention relates to price setting. Thus, all this evidence shows that claim 4
is directed to price setting, i.e., setting prices.
It follows from prior Supreme Court cases, and Bilski v. Kappos,
561 U.S. 593 (2010) in particular, that the claims at issue here are directed to
an abstract idea. Like the risk hedging in Bilski, the concept of setting prices
is a fundamental business practice long prevalent in our system of market
commerce. The use of setting prices is also a building block of market
capitalism. Thus, setting prices, like hedging, is an “abstract idea” beyond
the scope of § 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
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
risk hedging in Bilski and the concept of setting prices at issue here. Both
are squarely within the realm of “abstract ideas” as the Court has used that
term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
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The remaining claims merely describe input parameters and output data.
We conclude that the claims at issue are directed to a patent-ineligible
concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two. The only step reciting computer based performance is the
first step. The remaining steps do not narrow the manner of performance
and include personal observation and display using paper and pen in their
scope.
the 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 if” 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 “implement[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
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
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Application 11/748,957
We are not persuaded by Appellant’s argument that the claims combine
analysis with data collection and impact analysis. Reply Br. 11. Analysis
per se is the height of abstraction.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to enter data, generate approximations, edit data, and display data
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
industry. In short, each step does no more than require a generic computer
to perform generic computer functions. And again, only the first step recites
computer-based performance. The remaining steps are not even necessarily
performed by a computer.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s method claims
simply recite the concept of obtaining data for setting prices, perhaps as
performed by a generic computer. The method 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. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of setting prices, manually, or using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
We are not persuaded by Appellant’s argument that
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[t]he Examiner continues by stating that the limitations
merely 'link the abstract ideas' to 'generic computer functions'.
Under such an analysis any process involving data
manipulation would be merely 'linked' to a generic computer
function (since nearly any data process step is readily
performed by computers these days), thereby essentially
making any process that involves data analysis and
manipulation an "abstract idea". Appellants refuse to believe
this was the intent of the Court, and find the ultimate extension
of the Examiner's reasoning absurd.
App. Br. 11. Appellant’s beliefs are irrelevant to the analysis of statutory
subject matter. The analysis supra is based on and supported by the facts of
the case and is not extrapolated to all computer processes as Appellant
suggests.
CONCLUSIONS OF LAW
The rejection of claims 4—8 and 18 under 35 U.S.C. § 103(a) as
unpatentable over Ikezawa and Walker is proper.
The rejection of claims 9—15 and 17 under 35 U.S.C. § 103(a) as
unpatentable over Ikezawa, Walker, and Sarkar is proper.
The rejection of claim 16 under 35 U.S.C. § 103(a) as unpatentable over
Ikezawa, Walker, Sarkar, and Carter is proper.
The rejection of claims 4—18 under 35 U.S.C. § 101 as directed to non-
statutory subject matter is proper.
DECISION
The rejection of claims 4—18 is affirmed.
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Application 11/748,957
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) (2011).
AFFIRMED
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