Ex Parte Canis et al

Patent Trials and Appeals Board

Mar 21, 2019

13940417 - (D) (P.T.A.B. Mar. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/940,417 07/12/2013
132326 7590
Thompson Hine LLP
10050 Innovation Drive
Suite 400
Dayton, OH 45342-4934
03/25/2019
FIRST NAMED INVENTOR
Laure Canis
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
PT1084USOO 1152
EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
03/25/2019 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):
ipdocket@thompsonhine.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURE CANIS, CEDRIC FLORIMOND,
SIMONE BISOGNI, and MARION BONNET 1
Appeal2017-006105
Application 13/940,417
Technology Center 3600
Before CARL W. WHITEHEAD JR., BETH Z. SHAW, and
JOSEPH P. LENTIVECH, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
1 Appellants identify the Real Party in Interest as Amadeus S.A.S. App.
Br. 3.
Appeal2017-006105
Application 13/940,417
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 2, 4--7, 37, 40, and 42--47. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The invention is for fraud screening for a transaction request. Spec.
p. 1, 11. 9-10. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A fraud management system comprising:
a server communicating with a terminal; and
a computer-storage medium including a plurality of
instructions that, when executed by the server, cause the server
to:
receive a plurality of transaction requests;
sort the transaction requests into a plurality of groups;
select a number of the transaction requests from each
group to define a sample of the group that contains less than all
the transaction requests in the group;
for each transaction request in each sample:
determine which rules of a plurality of rules are
satisfied by the transaction request,
select an acceptance flow from a plurality of
acceptance flows based on the rules satisfied by the
transaction request,
calculate a total cost of fraud for the transaction
request by applying the selected acceptance flow to the
transaction request, and
store the total cost of fraud in a total cost of fraud
database;
determine a total cost of fraud for each group based on
the total costs of fraud calculated for the transaction requests in
the sample of the group and stored in the total cost of fraud
database; and
monitor an efficiency of the fraud management system
by computing a key performance indicator for each rule based
on the total costs of fraud stored in the total cost of fraud
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Application 13/940,417
database and the value of transactions associated with the
transaction requests to which the rule applied.
REJECTION
The Examiner rejected the pending claims under 35 U.S.C. § 101.
Non-Final Act. 2.
CONTENTIONS AND ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int'!, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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Application 13/940,417
economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192
(1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
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Application 13/940,417
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance ("Memorandum"). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
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Application 13/940,417
The Examiner concludes the pending claims are directed to receiving,
sorting, determining, and monitoring information, an abstract idea that can
be performed mentally. Ans. 3. The Examiner also concludes that the
claims are similar to other concepts found abstract by courts, such as
organizing information through mathematical correlations. Id.
The "select a number of the transaction requests from each group to
define a sample of the group that contains less than all the transaction
requests in the group," "select an acceptance flow from a plurality of
acceptance flows based on the rules satisfied by the transaction request," and
"determine a total cost of fraud for each group," steps, as drafted, under a
broadest reasonable interpretation, cover performance of the limitations in
the mind but for the recitation of generic computer components. That is,
other than reciting "cause the server to," nothing in the claim element
precludes this selecting and determining from practically being performed in
the human mind. For example, but for the "cause the server to" language,
the claim encompasses a user selecting certain transaction requests,
determining which rules are satisfied, and selecting an acceptance flow, in
his or her mind. Additionally, the mere nominal recitation of a generic
server does not take the claim limitation out of the mental processes
grouping. Thus, the claim recites a mental process, which is a judicial
exception identified in the Memorandum, and thus an abstract idea.
We next determine if there are additional element( s) or a combination
of elements in the claim that integrate the judicial exception into a practical
application. See MPEP § 2106.0S(a}-(c), (e}-(h); Memorandum.
Although each of the steps analyzed individually may be viewed as
mere pre- or post-solution activity, the claim as a whole is directed to a
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particular improvement in fraud management. The additional elements
recite a specific manner of computing "a key performance indicator for each
rule based on the total costs of fraud stored in a database" and a "value of
transactions associated with transaction requests to which the rule applied."
The collected data can then be used to "monitor the efficiency of a fraud
management system," which provides a specific improvement over prior
systems, resulting in improved fraud management. See Spec. 1 :25-2:3; see
also Memorandum§ III A ("An additional element reflects an improvement
in the functioning of a computer, or an improvement to other technology or
technical field."). The claim as a whole integrates the mental process into a
practical application.
Accordingly, we do not sustain the rejection of the pending claims
under 35 U.S.C. § 101.
DECISION
For the above reasons, the Examiner's rejection of claims 1, 2, 4--7,
37, 40, and 42--47 is reversed.
REVERSED
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