Curtis VillarsDownload PDFPatent Trials and Appeals BoardJul 26, 201914290571 - (D) (P.T.A.B. Jul. 26, 2019) Copy Citation 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. Appeal 2018-002923 Application 14/290,571 2 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.”). Appeal 2018-002923 Application 14/290,571 3 [(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. Appeal 2018-002923 Application 14/290,571 4 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 Appeal 2018-002923 Application 14/290,571 5 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. Appeal 2018-002923 Application 14/290,571 6 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 Appeal 2018-002923 Application 14/290,571 7 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 Appeal 2018-002923 Application 14/290,571 8 “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 Appeal 2018-002923 Application 14/290,571 9 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. Appeal 2018-002923 Application 14/290,571 10 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. Appeal 2018-002923 Application 14/290,571 11 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 Appeal 2018-002923 Application 14/290,571 12 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 Appeal 2018-002923 Application 14/290,571 13 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”). Appeal 2018-002923 Application 14/290,571 14 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 Appeal 2018-002923 Application 14/290,571 15 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 Copy with citationCopy as parenthetical citation