IBM Upsells Patent to PTO

Another Armonk classic.

Prior art:"Want fries with that?"
Novel: "Want fries with that? There's room in your bag.."

U.S. Patent No.7,571,105 Weight based upselling Assignee: IBM 9. A computer program product for weight based upselling, the computer program product disposed in a computer-readable recording medium, the computer program product comprising computer program instructions when executed causing a processor to perform the method comprising:     receiving a purchase request for an item from a customer;     determining a weight of the item;     identifying, in dependence upon the weight of the item, a shipping weight range and a shipping cost for the item, wherein the shipping weight range includes a maximum shipping weight;     calculating a difference between the weight of the item and the maximum shipping weight in the shipping weight range;     selecting an upsell item in dependence upon the difference between the weight of the item and the maximum shipping weight in the shipping weight range; and     offering the upsell item to the customer, including offering to ship both the item and the upsell item for only the identified shipping cost.

Commentary: Note that there are no method claims, just system and Beauregard. That's because the method claims that were originally filed--with identical steps as the CRM claims here--were effectively Bilskied in the first office action in August 2008 (the Examiner applied the Machine-or-Transformation test prior to the CAFC's adoption of it).

IBM didn't fight the rejection, and promptly canceled the claims. Why? Because it had already gotten those basic methods through in the parent case. That's right, this is a continuation of what is now U.S. Patent 7,509,262, which issued in March 2009 (not sure how that one slipped by the radar at 12:01...) and has extremely similar method claims:

1. A computer-implemented method for weight based upselling comprising the computer-implemented steps:      receiving a purchase request for an item from a customer including receiving a purchase request in an electronic commerce server through an electronic data communications medium, wherein the purchase request includes an item identifier:      determining, using a computer, a weight of the item including selecting an item record in dependence upon the item identifier, wherein the item record includes data elements describing the item, including the weight of the item, and reading the weight of the item from the item record;      identifying, using a computer in dependence upon the weight of the item, a shipping weight range and a shipping cost for the item, wherein the shipping weight range includes a maximum shipping weight;     calculating, using a computer, a difference between the weight of the item and the maximum shipping weight in the shipping weight range;     selecting, using a computer an upsell item in dependence upon the difference between the weight of the item and the maximum shipping weight in the shipping weight range including selecting an upsell item having a weight not greater than the difference between the weight of the item and the maximum shipping weight in the shipping weight range, a type code matching a type code associated with the item, at least one demographic code matching at least one demographic code associated with the customer, and an item type matching an item type associated with the customer through a purchase history; and     offering, using a computer, the upsell item to the customer, including offering to ship both the item and the upsell item for only the identified shipping cost including offering the upsell item to the customer from the electronic commerce server through the electronic data communications medium.

Note the extra computer beef there in bold. IBM added most of that in a preliminary amendment "in an effort to expeditiously move this case to allowance." A nice preemptive move, particularly since it was made pre-Bilski (I've tried this trick myself post-Bilski).

But it turns out it wasn't necessary here. The amendment didn't make it in front of the Examiner before the mailing of her first office action (May 2008), in which she allowed the original, unamended, broad method claims. Oops... Things got squared away with an Examiner's amendment that incorporated the changes, along with a few others (notably, the "using a computer" modifiers were not in IBM's preliminary amendment).

So IBM tried again, submitting those very same original method claims in a child application (that became this week's '105 patent) and it was examined by the same Examiner...who, as noted above, rejected them under M-O-T in August 2008, just three months after she had allowed them in the parent case.  Go figure.  There must have been a "memo" that went out last summer that caused the change of heart.

But wait... it looks like there's some extra room in the bag: there's another continuation application in the works that's currently being upsold to the same Examiner.