Curtis Villars

Patent Trials and Appeals Board

Jul 26, 2019

14290571 - (D) (P.T.A.B. Jul. 26, 2019)

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.
14/290,571 05/29/2014 Curtis Villars P01439-US-
UTIL (M01.272)
2944
28062 7590 07/26/2019
BUCKLEY, MASCHOFF & TALWALKAR LLC
50 LOCUST AVENUE
NEW CANAAN, CT 06840
EXAMINER
JEANTY, ROMAIN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/26/2019 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):
Martin@BMTPATENT.COM
colabella@bmtpatent.com
szpara@bmtpatent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte CURTIS VILLARS1
____________________

Appeal 2018-002923
Application 14/290,571
Technology Center 3600
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1–3 and 6–21, which are all claims pending in the
application. Appellant has canceled claims 4 and 5. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.

1 Appellant identifies the real party in interest as Mastercard International
Inc. Appeal Br. 2.
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BACKGROUND2
Appellant’s disclosed embodiments and claimed invention “relate to
linking consumer-related data of disparate datasets in a privacy-friendly
manner, performing data analysis, and then providing business related
information to clients without exposing any personally identifiable
information.” Spec. 1:4–9. Claim 1, reproduced below, is illustrative of the
subject matter on appeal:
1. A method for linking de-identified data from disparate
datasets, comprising:
[(1)] receiving, by an anonymized data analysis
processor, a plurality of disparate anonymized datasets
originating from a plurality of different data sources,
each disparate anonymized dataset comprising de-
identified data of individuals;
[(2)] formatting, by the anonymized data analysis
processor, the de-identified data of each of the plurality
of the disparate anonymized datasets into a plurality of
formatted anonymized datasets, each formatted
anonymized dataset containing a plurality of data entries
associated with each de-identified individual comprising
a user unique identifier (UID), date data, time data,
location data, and activity data;
[(3)] linking, by the anonymized data analysis
processor, the data entries of the de-identified individuals
of the plurality of formatted datasets by matching at least
the date data, time data, and location data for data entries
occurring within a predetermined time frame;

2 Throughout this Decision we have considered the Specification filed
May 29, 2014 (“Spec.”), the Final Rejection mailed April 24, 2017 (“Final
Act.”), the Appeal Brief filed September 11, 2017 (“Appeal Br.”), the
Examiner’s Answer mailed November 28, 2017 (“Ans.”), and the Reply
Brief filed January 26, 2018 (“Reply Br.”).
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[(4)] combining, by the anonymized data analysis
processor, the activity data from the disparate datasets
associated with linked de-identified individuals;
[(5)] analyzing, by the anonymized data analysis
processor, the combined activity data to derive at least
one pattern of behavior for the individuals associated
with the disparate data sets; and
[(6)] generating, by the anonymized data analysis
processor, at least one report based on the analysis
without divulging any personally identifiable information
of the individuals.
Appeal Br. 24 (Claims App’x) (bracketed limitation numbering added).
REJECTIONS
Claims 1–3 and 6–21 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 3–9.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
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Rejection of Claims 1–3 and 6–21 under 35 U.S.C. § 101
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “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.” Alice, 573 U.S.
at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “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, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
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abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
For purposes of the § 101 rejection, Appellant argues claims 1–3
and 6–21 together as a group. See Appeal Br. 14–22; Reply Br. 2–4.
Therefore, consistent with the provisions of 37 C.F.R. § 41.37(c)(l)(iv), we
limit our discussion to independent claim 1. Independent claims 13 and 19
and dependent claims 2, 3, 6–12, 14–18, 20, and 21 stand or fall with
independent claim 1.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
The Judicial Exception—Abstract Idea
The Examiner determined “the claims are directed to the abstract idea
of linking or matching data of disparate datasets and then performing
business related data analysis,” which is similar to “commercial practices . . .
and . . . an idea of itself . . .comparing known information . . . collecting
information, analyzing it, and displaying certain results . . . found by the
courts to be abstract ideas.” Final Act. 3–4. For the reasons explained
below, Appellant has not persuaded us that the Examiner erred.
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Claim 1 recites limitations [1]–[6] reproduced in full above. Each of
at least limitations [2]–[5] recites an act that people can perform in their
minds or using pen and paper.
Starting with limitations [2]–[4], limitation [2] recites “formatting . . .
the de-identified data of each of the plurality of the disparate anonymized
datasets into a plurality of formatted anonymized datasets . . . comprising a
user unique identifier (UID), date data, time data, location data, and activity
data.” Appeal Br. 24 (Claims App’x). Limitation [3] recites “linking . . . the
data entries” of these datasets “by matching at least the date data, time data,
and location data for data entries occurring within a predetermined time
frame.” Id. And limitation [4] recites “combining . . . the activity data”
from the linked datasets. Id. Each of these steps—comprising storing and
organizing information—can be done in the human mind or with pen and
paper. See BSG Tech. LLC v. Buyseasons, Inc., 899 F.3d 1281, 1286 (Fed.
Cir. 2018) (comparing claims reciting a method of inputting data and
indexing a database to those determined unpatentable mental processes in
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed.
Cir. 2011)). Even if these limitations required physical steps such as typing
on a keyboard, these limitations would not make claim 1 patent eligible as
they merely gather data. See CyberSource, 654 F.3d at 1372 (“Moreover, as
discussed above, even if some physical steps are required to obtain
information from the database (e.g., entering a query via a keyboard,
clicking a mouse), such data-gathering steps cannot alone confer
patentability.” (citation omitted)).
Turning to limitation [5], it recites “analyzing . . . the combined
activity data to derive at least one pattern of behavior for the individuals
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associated with the disparate data sets.” Appeal Br. 24 (Claims App’x).
People can derive patterns from data sets. Cf. Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) (“[W]e continue to
‘treat[ ] 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.’” (quoting Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016))).
In sum, limitations [2]–[5] recite a process that people can perform in
their heads or using pen and paper. The recited process is not meaningfully
different from other processes that courts have determined are mental
processes. See, e.g., CyberSource, 654 F.3d at 1373 (determining that a
claim whose “steps can be performed in the human mind, or by a human
using a pen and paper” is directed to an unpatentable mental process). This
is true even though claim 1 recites that computer components (including “an
anonymized data analysis processor”) perform the claimed process. “Courts
have examined claims that required the use of a computer and still found that
the underlying, patent-ineligible invention could be performed via pen and
paper or in a person’s mind.” Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015); see also Revised Guidance, 84 Fed. Reg.
at 52 n.14 (“If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”).
Appellant contends the Examiner failed to establish a prima facie case
of patent ineligibility because the Examiner “failed to cite any court cases
which included concepts similar to the claimed concepts,” instead relying on
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“conclusory statements” that do “not provide the required reasoned rationale
as to why the pending claims recite non-statutory subject matter.” Appeal
Br. 16–17.
We disagree. The Federal Circuit has repeatedly noted that “the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed.
Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
Examiner satisfies the burden of establishing a prima facie case under 35
U.S.C. § 132 by setting forth a rejection in a sufficiently articulate and
informative manner. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
If the Examiner “adequately explain[s] the shortcomings [of the claims] . . .
the burden shifts to the applicant to rebut the prima facie case with evidence
and/or argument.” Hyatt, 492 F.3d at 1370.
The Final Office Action adequately explains the § 101 rejection. See
Final Act. 3–5. The Examiner’s statements satisfy § 132(a) because they
apply the Alice analytical framework and apprise Appellant of the reasons
for the § 101 rejection under that framework. Appellant has not responded
by alleging a failure to understand the rejection. To the contrary, Appellant
clearly identifies the abstract idea identified by the Examiner. See Appeal
Br. 15.
Appellant’s arguments have not persuaded us claim 1 is “directed to”
a patent-eligible concept. For example, Appellant argues that “the claimed
process solves the technical problem of how to analyze large volumes of
transaction data of individuals found that are found in disparate datasets in a
privacy-friendly manner, so that reports can be generated that describe a
pattern of activity over time for those individuals without divulging any
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personally identifiable information.” Appeal Br. 16, 17, 18. The claim,
however, does not require any particular amount of data. See Two-Way
Media Ltd. v. Comcast Cable Comm’s, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (stating that despite patentee’s assertion “that the claim solves various
technical problems,” the claim “only uses generic functional language to
achieve these purported solutions”). Appellant does not point us to any
other discussion in the Specification that explains sufficient technical details
as to how to implement the invention such that a person of ordinary skill in
the art would recognize the claimed invention as providing an improvement
in the conventional functioning of a computer, or upon conventional
technology or technological processes. See Affinity Labs of Tex. v. DirecTV,
LLC, 838 F.3d 1253, 1263–64 (Fed. Cir. 2016)).
We also do not agree with Appellant’s contention that “just like in the
[Trading Technologies] case, the present claims require a specific structure
(formatted de-identified data) paired with a prescribed functionality that is
directly related to the structure, which results in a method that is patent-
eligible.” Appeal Br. 18 (citing Trading Technologies Int’l, Inc. v. CQG,
Inc., 675 Fed. App’x 1001 (Fed. Cir. 2017)). In Trading Technologies, the
claims found to be patent-eligible “require a specific, structured graphical
user interface paired with a prescribed functionality directly related to the
graphical user interface’s structure that is addressed to and resolves a
specifically identified problem in the prior state of the prior state of the art.”
675 Fed. App’x at 1004. Appellant does not explain how the formatted data
is similar to a structured graphical user interface. In fact, we do not agree
that formatted data is directly related to the improvement of computer
functionality in the same way that a structured graphical user interface is.
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Instead, the claims here are more similar to those found not patent-eligible in
Trading Technologies Int’l, Inc. v. IBG LLC. 921 F.3d 1084 (Fed. Cir.
2019) (“IBG”). In IBG, the Federal Circuit explained that claims reciting
“receiving bid and offer information from an electronic exchange, displaying
such information . . . , and sending an order to the electronic exchange based
on a user input” did not “solve a technical problem using a technical
solution.” Id. at 1089. According to IBG, by displaying trading information
in a particular format, the claims “make[] the trader faster and more
efficient, not the computer.” Id. Because the claims here, similar to those in
IBG, recite improvements related to data format as opposed to the structure
of the graphical user interface, we do not agree with Appellant that the
claims recite a patent-eligible technological improvement.
Finally, Appellant argues that “the claims specify processing of de-
identified data of individuals in a manner that is different from conventional
processes.” Appeal Br. 16. However, “[t]he ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (emphasis
omitted) (quoting Diamond v. Diehr, 450 U.S. 175, 188–89 (1981)).
We, therefore, conclude that claim 1 recites mental processes, one of
the abstract idea groupings in the Revised Guidance. See Revised Guidance,
84 Fed. Reg. at 52. Claim 1 thus recites an abstract idea.

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Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of “an anonymized data
analysis processor,” “receiving . . . a plurality of disparate anonymized
datasets originating from a plurality of different data sources” (limitation
[1]), and “generating . . . at least one report based on the analysis without
divulging any personally identifiable information of the individuals”
(limitation [6]). Appeal Br. 24 (Claims App’x). Considering claim 1 as a
whole, the additional elements do not apply or use the abstract idea in a
meaningful way such that the claim as a whole is more than a drafting effort
designed to monopolize the exception. The Supreme Court guides that the
“prohibition against patenting abstract ideas ‘cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment’ or [by] adding ‘insignificant postsolution activity.’” Bilski v.
Kappos, 561 U.S. 593, 610–11 (2010) (quoting Diehr, 450 U.S. at 191–92).
In particular, limitations [1] and [6], which receive data and generate a
reports based on analyzed data, are recited without sufficient detail or
specific implementation structure such that they limit the abstract idea to a
specific technical solution, such as a technical improvement to the recited
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anonymized data analysis processor. For example, generating at least one
report based on the analysis without divulging any personally identifiable
information of the individuals (limitation [6]), unlike the claims held patent
eligible in Core Wireless, is not directed to any particular manner of
summarizing and presenting information or to an improved display interface.
Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1359–63
(Fed. Cir. 2018). Instead, limitation [6] simply recites insignificant extra-
solution activity to abstract idea. MPEP § 2106.05(g); Affinity Labs of
Texas, LLC v. DirecTV, LLC, 838 F.3d 1253, 1261 (Fed. Cir. 2016); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Similarly, receiving a plurality of disparate anonymized datasets originating
from a plurality of different data sources (limitation [1]), simply recites
collecting data. Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d
1315, 1340 (Fed. Cir. 2017).
Moreover, the Specification describes the claimed anonymized data
analysis processor as “one or more commercially available Central
Processing Units (CPUs) in the form of one-chip microprocessors.”
Spec. 17:12–16. Thus, because the Specification describes the anonymized
data analysis processor in general terms, without describing the particulars,
we conclude the claim limitations may be broadly but reasonably construed
as reciting a generic computing components.
Accordingly, even in combination with all the other recited elements,
the addition of “an anonymized data analysis processor,” “receiving . . . a
plurality of disparate anonymized datasets originating from a plurality of
different data sources” (limitation [1]), and “generating . . . at least one
report based on the analysis without divulging any personally identifiable
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information of the individuals” (limitation [6]), does not integrate the
abstract idea into a practical application because it does not impose any
meaningful limits on practicing the abstract idea. For these reasons, we
determine that claim 1 does not integrate the recited abstract idea into a
practical application.
Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. The Examiner’s finding that an additional element (or
combination of elements) is WURC activity must be supported with a
factual determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum3).
Whether the additional elements (“an anonymized data analysis
processor,” “receiving . . . a plurality of disparate anonymized datasets
originating from a plurality of different data sources” (limitation [1]), and
“generating . . . at least one report based on the analysis without divulging
any personally identifiable information of the individuals” (limitation [6]))
are WURC activity is a question of fact. See Berkheimer v. HP Inc., 881
F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is well-understood,

3 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
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routine, and conventional to a skilled artisan . . . is a factual
determination.”).
On the record before us, Appellant has not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field (see MPEP
§ 2106.05(d)). Other than asserting that the entirety of the claimed subject
matter is unconventional, Appellant does not point to any particular claimed
element that does not qualify as WURC. Appeal Br. 16–22.
In fact, Appellant’s Specification demonstrates the WURC nature of
“an anonymized data analysis processor,” “receiving . . . a plurality of
disparate anonymized datasets originating from a plurality of different data
sources” (limitation [1]), and “generating . . . at least one report based on the
analysis without divulging any personally identifiable information of the
individuals” (limitation [6]). Spec. 4:1–15; 10:13–11:3; 17:9–20:4. In
addition, courts have recognized that inputting and organizing information in
a generic database is WURC. BSG Tech, 899 F.3d at 1291.
Appellant’s arguments have not persuaded us claim 1 is “directed to”
a patent-eligible concept. For example, Appellant compares the
application’s claims to those found patentable in BASCOM Global Internet
Services v. AT&T Mobility, LLC, 827 F.3d 1341 (Fed. Cir. 2016). Appeal
Br. 19–20. This argument is unavailing. The Federal Circuit held in
BASCOM that “the patent describe[d] how its particular arrangement of
elements [was] a technical improvement over the prior art ways of filtering
such content.” BASCOM, 827 F.3d at 1350. Appellant, however, does not
point out where the Specification provides a description of an analogous
technical improvement. We also see no language recited in the claims that
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specifically improves the particular arrangement of the recited generic
computer components.
Appellant’s preemption arguments (Appeal Br. 20–22) do not alter
our § 101 analysis. Rather than preemption, the Federal Circuit instructs
that the Alice two-step analysis is the test for whether claims are statutory.
“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.
For these reasons, we conclude that claim 1, considered as a whole,
does not include an inventive concept.
Conclusion
Therefore, we sustain the Examiner’s § 101 rejection of independent
claim 1. We also sustain the Examiner’s § 101 rejection of claims 2, 3, and
6–21, for which Appellant relies on the same arguments made with respect
to claim 1. Appeal Br. 14–22; Reply Br. 2–4.
DECISION
We affirm the Examiner’s rejection of claims 1–3 and 6–21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED