Ex Parte Huovilainen

Patent Trial and Appeal Board

Jul 12, 2018

13644124 (P.T.A.B. Jul. 12, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/644,124 10/03/2012 Sarni Huovilainen
13708 7590 07/13/2018
Johnson, Marcou & Isaacs, LLC
PO Box 691
Hoschton, GA 30548
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.
CITI-0726 1279
EXAMINER
AUSTIN, JAMIE H
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
07/13/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SAMI HUOVILAINEN
Appeal2017-001833
Application 13/644, 124
Technology Center 3600
Before TARA L. HUTCHINGS, AMEE A. SHAH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-17, which are all of the pending claims.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
STATEMENT OF THE CASE
The Appellant's invention "relates generally to the field of analyzing
customer data, and more particularly to methods and systems for optimizing
1 Throughout this Decision, we refer to the Appellant's Appeal Brief ("Br.,"
filed Apr. 25, 2016) and Specification ("Spec.," filed Oct. 3, 2012), and to
the Examiner's Answer ("Ans.," mailed Sept. 6, 2016), and Final Office
Action ("Final Act.," mailed Nov. 25, 2015).
2 According to the Appellant, the real party in interest is Citicorp Credit
Services, Inc. (USA). Br. 2.
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marketing strategy to financial institution customers or prospective
customers." Spec. ,r 1.
Claims 1, 16, and 1 7 are the independent claims on appeal. Claim 1
(Br. 27 (Claims App.)) is exemplary of the subject matter on appeal and is
reproduced below (lettered bracketing added for reference).
1. A method of optimizing marketing strategy to financial
institution customers or prospective customers, comprising:
[(a)] receiving, by one or more processors of a financial
institution, anonymous financial institution customer profile data
consisting at least in part of anonymous transaction card account
behavior information of customers of the financial institution
with a plurality of financial institutions that issue transaction
cards other than the financial institution;
[ (b)] developing, using the one or more processors of the
financial institution, models based at least in part on the
anonymous financial institution customer profile data consisting
at least in part of the anonymous transaction card account
behavior information of the customers of the financial institution
with the plurality of financial institutions that issue transaction
cards other than the financial institution and at least in part on
non-anonymous financial institution information and non-
anonymous financial institution customer credit bureau data;
[ ( c)] generating, by the one or more processors of the
financial institution, estimated spend and balance behaviors for
at least one financial institution customer with the plurality of
financial institutions that issue transaction cards other than the
financial institution based at least in part on said models; and
[ ( d)] creating, by the one or more processors of the
financial institution, financial institution marketing initiatives
based at least in part on said estimated spend and balance
behaviors of the at least one financial institution customer with
the plurality of financial institutions that issue transaction cards
other than the financial institution.
2
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REJECTIONS
I. Claims 1-17 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
II. Claims 1-17 stand rejected under AIA 35 U.S.C. § 112(a)3 as
failing to comply with the written description requirement.
III. Claims 1-17 stand rejected under AIA 35 U.S.C. § 112(b) as
being indefinite.
IV. Claims 1-5 and 8-17 stand rejected under pre-AIA 35 U.S.C.
§ I03(a)4 as being unpatentable over Heiser, II et al. (US 2008/0091535 Al,
pub. Apr. 17, 2008) (hereafter "Heiser"), Megdal et al.
(US 2008/0033852 Al, pub. Feb. 7, 2008) (hereafter "Megdal"), and Gandhi
(US 8,666,812 Bl, iss. Mar. 4, 2014), Zollino et al. (US 2008/0086365 Al,
pub. Apr. 10, 2008) (hereafter "Zollino"), and Heiser, II et al.
(US 8,234,159 B2, iss. July 31, 2012) (hereafter "Heiser II").
V. Claims 6 and 7 stand rejected under pre-AIA 35 U.S.C.
§ I03(a) as being unpatentable over Heiser, Megdal, Gandhi, Zollino,
Heiser II, Kalia et al. (US 8,401,947 B2, iss. Mar. 19, 2103) (hereafter
"Kalia"), 5 and Burgess et al. (US 2012/0005053 Al, pub. Jan. 5, 2012)
(hereafter "Burgess").
3 Because this application was filed after September 16, 2012, pre-AIA
35 U.S.C. § 112 is not applicable. 35 U.S.C. § 112.
4 Because this application was filed before March 16, 2003, pre-AIA
§ I03(a) is applicable. 35 U.S.C §§ 100, 103.
5 Although the Examiner refers to this reference as "Prashant" (Ans. 3;
Final Act. 46), the first named inventor is "Prashant Kalia," and the patent is
issued to "Kalia et al."
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ANALYSIS
Rejection I-Patent-Ineligible Subject Matter-§ 1 OJ
The Appellant argues claims 1-17 as a group. See Br. 8, 16. We
select claim 1 as representative of the group; claims 2-17 stand or fall with
claim 1. See 37 C.F.R. 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 588-89 (2013)
(internal quotations omitted)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78-79 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. (emphasis
added) ( citing Mayo, 566 U.S. at 79). If so, the second step is to consider
the elements of the claims "individually and 'as an ordered combination'" to
determine whether the additional elements "'transform the nature of the
claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 78-79).
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We first address the Appellant's argument that "the Examiner has
failed to meet the initial burden of presenting a prima facie case of ineligible
subject matter" because the "rejection lacks evidence, articulated reasoning
and analysis" to "establish a basis for alleging" that the claims are directed
to an abstract idea and do not amount to significantly more than the abstract
idea. Br. 8; see also id. at 9-12, 15-16. Specifically, the Appellant argues
that "the Examiner must provide documentary evidence to support a
conclusion that the claims are directed to a judicial exception or that claim
limitations are well understood, routine, and conventional." Id. at 9; see also
id. at 15-16.
Here, in rejecting claim 1 under § 101, the Examiner analyzes the
claim using the Mayo/Alice two-step framework. Specifically, the Examiner
looks to the intrinsic evidence of the claim language as factors in
determining that the claim is directed to an abstract ideal. See Final
Act. 3, 5; Ans. 3--4, 7-10. The Examiner also cites to judicial decisions and
compares the concept to those found to be abstract in those decisions. Final
Act. 3. The Examiner further considers the claim's limitations individually
and as an ordered combination as factors in determining that the claim does
not recite limitations that transformed the nature of the claim into a patent-
eligible invention. See Final Act. 3-8; Ans. 4--5, 15-17. The Examiner cites
to the Specification and compares the elements to judicial decisions as
summarized in Office Guidelines for support and evidence for determining
that the claim does not contain an inventive concept. See Ans. 11, 15-17,
21-22.
Thus, the Examiner has clearly articulated the reasons as to why the
claim is directed to an abstract idea and has notified the Appellant of the
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reasons for the rejection "together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
[the] application." 35 U.S.C. § 132. In doing so, the Examiner has set forth
a prima facie case ofunpatentability. See In re Jung, 637 F.3d 1356, 1362
(Fed. Cir. 2011); Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990)
(Section 132 "is violated when a rejection is so uninformative that it
prevents the applicant from recognizing and seeking to counter the grounds
for rejection"). We further note that the Examiner has clearly followed the
Office's guidelines.
We find unpersuasive of error the Appellant's argument that the
Examiner has failed to follow the Administrative Procedures Act, which
requires that the Examiner's "determination [to] be ... based on 'substantial
evidence"' by "provid[ing] documentary evidence to support a conclusion
that the claims are directed to a judicial exception or that claim limitations
are well understood, routine, and conventional." Br. 9 ( citing Alice
generally); see also id. at 15-16. Although the Court in Alice made a direct
finding as to what the claims were directed to, the claims before us and the
Specification provide enough information to inform one as to what these
claims are directed to. There is no requirement that in every situation "the
Examiner must cite authoritative documentary evidence, such as textbooks
or similar publications to support a conclusion that a claim recites a judicial
exception or that certain practices are well known, conventional or routine."
Id. at 9-10. Nor, contrary to Appellant's assertions (id. at 12), did this
Board hold, in Ex parte Renald Poisson, Appeal No. 2012-011084 (PTAB
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Feb. 27, 2015), that there is any such requirement. 6 "Instead of a definition,
then, the decisional mechanism courts now apply is to examine earlier cases
in which a similar or parallel descriptive nature can be seen-what prior
cases were about, and which way they were decided." Amdocs (Israel) Ltd.
v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)). It is
"sufficient to compare claims at issue to those claims already found to be
directed to an abstract idea in previous cases" (Enfish, 822 F.3d at 1334), as
the Examiner has done here. "[I]t is also possible, as numerous cases have
recognized, that a § 101 analysis may sometimes be undertaken without
resolving fact issues." Mortgage Grader, Inc. v. First Choice Loan Servs.
Inc., 811 F.3d 1314, 1325-26 (Fed. Cir. 2016)); see also Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018) ("not every§ 101 determination
contains genuine disputes over the underlying facts material to the § 101
inquiry").
Evidence may be helpful in certain situations where, for instance,
facts are in dispute. For example, in Berkheimer, the patent owner presented
evidence in the form of portions of the Specification that contradicted the
district court's finding that the claims described well-understood, routine,
and conventional activities by describing inventive features that stored data
in an unconventional manner that provided technical benefits. 881 F.3d at
1368---69. The court determined that summary judgment was inappropriate
for the claims that captured this inventive feature, because there existed a
factual dispute as to whether the claims described well-understood, routine,
and conventional activities. Id. at 1369, 1370.
6 We would not be bound, in any event, by a non-precedential decision of
the Board.
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In contrast, here, the Appellant provides no such evidence, and we
find no such evidence, to dispute the Examiner's finding that the claim
limitations recite well-understood, routine, and conventional activities. The
Specification, for example, provides for employing generic computer
hardware and software, "including, without limitation, one or more
processors coupled to memory and non-transitory computer-readable storage
media with one or more executable programs stored thereon which instruct
the processors to perform the methods and systems" as claimed. Spec. ,r 4.
The Appellant has not made the case that a factual dispute has arisen that
additional evidence can help resolve. See Automated Tracking Sols., LLC v.
Coca-Cola Co., 723 F. App'x 989, 995 (Fed. Cir. 2018) and Intellectual
Ventures I LLC v. Symantec Corp., 725 F. App'x 976, 978 (Fed. Cir. 2018).
Step One of the Mayo/Alice Framework
Turning to the first step of the Mayol Alice framework, we consider the
claims "in their entirety to ascertain whether their character as a whole is
directed to excluded subject matter." Internet Patents Corp. v. Active
Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). The question is
whether the claims as a whole "focus on a specific means or method that
improves the relevant technology" or are "directed to a result or effect that
itself is the abstract idea and merely invoke generic processes and
machinery." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016). In other words, the claims are assessed as to whether
they "do no more than describe a desired function or outcome, without
providing any limiting detail that confines the claim to a particular solution
to an identified problem." Affinity Labs of Tex., LLC v. Amazon.com Inc.,
838 F.3d 1266, 1269 (Fed. Cir. 2016).
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Under the first step of the Alice/Mayo framework, the Examiner
determines that the claim is directed to "the abstract idea of developing a
marketing strategy for a customer/potential customer," i.e., "the comparing
of new and stored information and using rules to identify options," an idea
of itself, a method of organizing human activity, and a fundamental
economic practice. Ans. 7; Final Act. 6.
The Specification is titled "METHODS AND SYSTEMS FOR
OPTIMIZING MARKETING STRATEGY TO CUSTOMERS OR
PROSPECTIVE CUSTOMERS OF A FINANCIAL INSTITUTION."
According to the Specification, the invention "relates generally to the field
of analyzing customer data, and more particularly to methods and systems
for optimizing marketing strategy to financial institution customers or
prospective customers." Spec. ,r 1. The Background section of the
Specification discusses that "it is important for a card-issuing financial
institution, such as a bank, to focus on a customer perspective and to know
more about its customers." Id. ,r 2. The claimed invention "address[es] a
financial institution's need to know how its customers use off-us bankcards
and provides the financial institution a comprehensive view of its customers'
spend and balance behavior with other issuers." Id. ,r 3. To do so, the
invention "employ[ s] computer hardware and software, including, without
limitation, one or more processors coupled to memory and non-transitory
computer-readable storage media with one or more executable programs
stored thereon which instruct the processors to perform the methods and
systems for optimizing marketing strategy to financial institution customers
or prospective customers." Id. ,r 4.
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Claim 1 provides for a "method of optimizing marketing strategy to
financial institution customers or prospective customers, comprising:"
(a) receiving by a processor anonymous customer profile data,
(b) developing using a processor model based on the received data, non-
anonymous institution information, and non-anonymous credit bureau data,
( c) generating by the processor estimated spend and balance behaviors based
on the models, and ( d) creating by the processor, marketing initiatives based
on the behaviors. See Br. 27 (Claims App.). The developing of the models
comprises employing "statistical tools and estimators." Spec. ,r 30. The
generating of the behaviors comprises observing, estimating, and/ or
calculating customer behaviors based on the models. Id. ,r,r 42--45, 53. The
computer processor used to perform the functions of the method "may
include, but are not limited to, a microprocessor, an application specific
integrated circuit (ASIC), and or state machines" (id. ,r 58), a client device
that "may be any suitable type of processor-based platform that is connected
to a network and that interacts with one or more application programs and
may operate on any suitable operating system" (id. ,r 60), or a server device
that "may comprise a processor coupled to a computer-readable
medium[,] ... may be a single computer system, may also be implemented
as a network of computer processors," "[ e ]xamples of such server devices
are servers, mainframe computers, networked computers, a processor-based
device, and similar types of systems and devices" (id.).
In light of Specification's description of the problem and solution, the
purported advance over the prior art by the claimed invention is a way to
provide more relevant/targeted marketing based on an analysis of spend and
balance behavior data. In that context, claim 1 is directed to developing a
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marketing strategy for a customer/potential customer based on generated
data. 7 The claim here is akin to ones our reviewing court has deemed
abstract in Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d
1363, 1369-70 (Fed. Cir. 2015) (customizing and tailoring web page content
based on navigation history and known user information), Elec. Power Grp.
LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (collecting
information and "analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, ... [are] essentially
mental processes within the abstract-idea category"), and Affinity Labs, 838
F.3d at 1271 (customizing a user interface to have targeted advertising based
on user information). It is also similar to claims deemed abstract by other
courts. See OpenTV, Inc. v. Netjlix Inc., 76 F.Supp.3d 886, 893 (N.D. Cal.
2014) ("The concept of gathering information about one's intended market
and attempting to customize the information then provided is as old as the
saying, 'know your audience"'); Bridge & Post, Inc. v. Verizon Commc 'ns,
Inc., No. 3: 17-CV-094-JAG, 2018 WL 1336738, at *5 (E.D. Va. Mar. 15,
2018) ("Targeted marketing, or 'gathering information about one's intended
market and attempting to customize the information then provided,' is an
abstract idea at the first Alice step") ( citation omitted); Morsa v. Facebook,
Inc., 77 F.Supp.3d 1007, 1013 (C.D. Cal. 2014), ajf'd, 622 F. App'x 915
(Fed. Cir. 2015) ("First, targeted advertising is just such a concept, insofar as
matching consumers with a given product or service 'has been practiced as
7 We note that "[a]n abstract idea can generally be described at different
levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240
(Fed. Cir. 2016). The Board's "slight revision of its abstract idea analysis
does not impact the patentability analysis." Id. at 1241.
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long as markets have been in operation'") (quoting Tuxis Techs., LLC v.
Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *5 (D. Del.
Sept. 3, 2014)).
Here, the claim involves nothing more than receiving, developing, and
generating data of a specific content, and presenting content based on the
analysis, without any particular inventive technology - an abstract idea.
See Elec. Power, 830 F.3d at 1354. As such, we find unpersuasive the
Appellant's argument that the claim is not directed to an abstract idea
because "it is not a long-prevalent and fundamental practice in comparison
to the abstract ideas of risk-hedging and intermediated settlement relied
upon by the Court in Alice Corp., which have been in widespread use for
many centuries throughout the world." Br. 10 (emphasis added).
We also find unpersuasive the Appellant's argument that "the
Examiner's generalized arguments, not directed to the specific language of
the claims, are insufficient to support the Examiner's conclusory allegation
that the claims are directed to a patent-ineligible 'abstract idea"' because
"the Examiner's arguments do not even reference the specific limitations of
the claims." Br. 11. As noted above, the Examiner considers the claim
limitations in making the determination that the claim is directed to an
abstract idea, and specifically references the claim limitations. Ans. 9-11.
We are further not persuaded by the Appellant's arguments that the
Examiner's comparison of the present claims to those at issue in SmartGene,
Inc. v Advanced Biological Lab., SA, 555 F. App'x 950 (Fed. Cir. 2014)) and
In re Maucorps, 609 F.2d 481 (CCPA 1979) is inapposite. Br. 11. The
claim's developing and generating data based on statistical analyses,
observations, estimations, and calculations are not dissimilar to SmartGene's
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computerized process of providing information and generating information
based on the provided information. See SmartGene, 555 F. App'x at 952.
Nor is it dissimilar to Maucorps' computerized processing of data that
calculated values and selected a value based on the calculations. See
Maucorps, 609 F.2d at 482,486.
Step Two of the Mayo/Alice Framework
The second step of the Mayo/Alice framework is to "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, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
Under the second step of the Mayo/Alice framework, we agree with
and find supported the Examiner's determination that the elements of
claim 1, individually or as an ordered combination, do not amount to
significantly more than the above-identified abstract idea. See Final
Act. 4--5, 7-8; Ans. 20-23. We are not persuaded of Examiner error by the
Appellant's arguments that assert the opposite. See Br. 13-16. As discussed
above, the Specification conveys that the processor recited in the claim is a
generic processor. See, e.g., Spec. ,r,r 4, 58, 60.
We find unpersuasive the Appellant's arguments that the Examiner
erred in not "consider[ing] the entirety of each claim limitation." Br. 13.
The Examiner looks to the claim limitations (Ans. 9-10), alone and in
combination, in determining that the claim's limitations are performed by a
generic computer, do not improve the functioning of a computer, do not
effect a transformation, do not add a specific limitation other than what it
well-understood, routine, and are not meaningful beyond generally linking
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the abstract idea to the particular technological environment (Ans. 11 ). As
discussed above, the "computer processing steps" of the claim, i.e., the
"limitations as to the source of data, the types of data, the operations
performed on the data, how the output is generated, where the data is stored
or transmitted" (Br. 14), comprise developing models by employing
mathematical algorithms, i.e., "statistical tools and estimators." (Spec. ,r 30)
and generating behaviors by observing, estimating, and/or calculating
customer behaviors based on the models (id. ,r,r 42--45, 53).
In response to the Appellant's argument that "[t]he present claims do
not possibly carry a risk of pre-empting or tying up the entire alleged
'abstract idea."' (Br. 15; see also id. at 14), we note that although the
Supreme Court has described "the concern that drives this exclusionary
principle[, i.e., the exclusion of abstract ideas from patent eligible subject
matter,] as one of preemption" (see Alice, 134 S. Ct. at 2354), characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. "The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability" and "[ fJor this reason, questions
on preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
( citing Alice, 134 S. Ct. at 23 54 ). Although "preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Id. The claimed invention is not sufficiently
limiting so as to fall clearly on the side of patent-eligibility.
We also find unpersuasive the Appellant's argument that the claim is
"specific and detailed enough to overcome the prior art." Br. 15. An
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elaboration of an abstract idea does not transform the abstract idea into
patent-eligible subject matter when the functions are well-understood,
routine, and conventional functions of a generic computer. Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 715-16 (Fed. Cir. 2014). Moreover, an abstract
idea does not transform into an inventive concept just because the prior art
does not disclose or suggest it. See Mayo, 566 U.S. at 91.
"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry." Ass 'n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). Indeed, "[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." Diamond v. Diehr,
450 U.S. 175, 188-89 (1981); see also Mayo, 566 U.S. at 91 (rejecting "the
Government's invitation to substitute§§ 102, 103, and 112 inquiries for the
better established inquiry under § 101 ").
Thus, we are not persuaded the Examiner erred in the rejection of
claim 1 under 35 U.S.C. § 101, and we sustain the Examiner's rejection of
claim 1, and of claims 2-1 7, which fall with claim 1.
Rejection II- Written Description-§ l l 2(a)
The Examiner rejects claims 1-17 because the Specification does not
reasonably convey to one skilled in the relevant art that the inventor, at the
time the application was filed, had possession of the claimed invention
including "the information of the anonymous information being directly
associated with the transaction card account behavior of only the customers
of the financial institution." Final Act. 9. The Examiner further rejects
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claim 2 because the Specification does not reasonably convey receiving the
"specific ... [ type of] anonymous information" of "anonymous customer
transaction card account spend and balance behaviors of the customers of the
financial institution with the plurality of financial institutions that issue
transaction cards other than the financial institution" (id. at 9-10 ( emphasis
omitted)), and claim 3 because the Specification does not convey receiving
the specific information of "revolving balances by annual percentage rate
behaviors" (id. at 10)).
The Appellant contends that the claims do not recite that the
information is directly associated with the behavior of only the customers of
the institution. Br. 17. The Appellant further cites to paragraphs 29
through 39 of the Specification as support for receiving "the nature and
source of the anonymous information that is employed" (id.), and contends
that "the concept of anonymous data is clearly explained in the foregoing
paragraphs, as well as throughout the Specification" (id. at 20).
Claims 1, 16, and 17 recite receiving "anonymous financial institution
customer profile data consisting at least in part of anonymous transaction
card account behavior information of customers of the financial institution
with a plurality of financial institutions that issue transaction cards other
than the financial institution" and developing models based in part on that
information. Br. 27, 31 (Claims App.). Claims 2 and 3 further narrow the
type of anonymous customer transaction card account behavior information.
Id. at 28, 28.
The portions of the Specification relied on by the Appellant provide
that the invention may "indirectly" provide knowledge of customers'
behavior with a financial institution's competitors' card. Spec. ,r 29. The
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invention may use "anonymous data received from an entity that analyzes
customer profiles from card issuers for a significant percentage" (id.) and
"anonymous customer profile data ... from the entity" (id. ,r 30). The
invention then "may also employ statistical tools and estimators utilizing
both the financial institution information and other card issuers' information
to derive variables." Id. Use of the received anonymous profile data "may
be used to develop and train models that may be deployed to estimate the
behavior of the customers of the financial institution with other card
issuers." Id. By utilizing data available, such as internal data and data from
credit bureaus, "the financial institution may complete a reasonable, but not
a complete, picture of its customers." Id. ,r 31. The internal data may teach
how an institution's "customers spend using on-us cards and how and at
what price points its customers revolve with on-us cards" and how "its
customers react to different marketing efforts of the financial institution."
Id. ,r 32. The credit bureau data may teach "what kinds of balances its
customers hold with cards issued by other card issuers and how many lines
of credit its customers have with other card issuers." Id. The Specification
acknowledges that neither the internal data nor the credit bureau data can
teach how its customers are shopping using competitors' cards. Id.
,r,r 33, 34.
Although the Specification provides support such that one of ordinary
skill in the art would understand the Appellant to have had possession of
receiving anonymous card issuers', i.e., competitive financial institutions',
customer profile data, the Specification does not provide details on what the
profile data encompasses or comprises. It is not enough for the Specification
to explain "the concept of anonymous data." "The question is not whether a
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claimed invention is an obvious variant of that which is disclosed in the
specification .... It extends only to that which is disclosed." Lockwood v.
Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir. 1997); see also Rivera v.
Int'! Trade Comm 'n, 857 F.3d 1315, 1322 (Fed. Cir. 2017) ("The knowledge
of ordinary artisans may be used to inform what is actually in the
specification, see Lockwood, 107 F.3d at 1571, but not to teach limitations
that are not in the specification, even if those limitations would be rendered
obvious by the disclosure in the specification"). As such, the Specification
does not provide adequate written description to allow a person having
ordinary skill in the art to recognize that the inventor had possession, at the
time the application was filed, of the received anonymous profile data
information consisting of anonymous transaction card account behavior
information.
Thus, we sustain the rejection of the claims under 35 U.S.C. § 112(a).
Rejection III-Indefiniteness-§ 112 (b)
The Examiner rejects claims 1-17 because "it is unclear how the data
[ of transaction behavior information of customers] could be anonymous but
also have an association specifically with a customer of the financial
institution." Final Act. 11.
The Appellant contends that "the bounds of the claims would clearly
be understood by one skilled in the art when read in light of the
Specification" because "the claims do not recite or even imply that the
anonymous information has 'an association specifically with a customer of
the financial institution' or is 'directly linked to a customer profile', which
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on its face would not be possible since the anonymous data is not linked to a
particular identified customer." Br. 21.
The relevant portion of claims 1, 16, and 17 recites receiving
"anonymous transaction card account behavior information of customers of
the financial institution with a plurality of financial institutions that issue
transaction cards other than the financial institution." Br. 27, 31. Looking at
the claims' language, the anonymous information is "of customers of the
financial information" and of behavior "with" competitor institutions. The
Examiner interprets the "of customers" as being associated with the
customers such that the information received relates to or is associated with
the customers of the institution, and, thus, not anonymous. Conversely, the
Appellant appears to interpret the "of customers" and being data of
customers but not linked to a particular identified customer and, thus,
anonymous. But, we note that the claims do not recite that the data are not
linked to particular customers. And, we do not see how data regarding
customers of an institution can be obtained without some identification of
the customers. The Specification provides no details on how data received
regarding customers of the institution is received anonymously or can
remain anonymous. As such, we agree with the Examiner that one of
ordinary skill in the art would not understand the claimed subject matter with
a reasonable degree of clarity and particularity.
Thus, we sustain the rejection of the claims under 35 U.S.C. § 112(b).
Rejections IV and V- Obviousness-§ 103 (a)
The Appellant contends that the Examiner's rejections under
35 U.S.C. § 103(a) are in error because the prior art:
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separately or in combination with one another, fail to teach or
suggest at least a FI processor that receives anonymous
transaction card account behavior information of customers of
the financial institution with a plurality of financial institutions
that issue transaction cards other than the FI and that develops
models based partly on that anonymous transaction card account
behavior information and partly on non-anonymous FI customer
account information and non-anonymous FI customer credit
bureau data, according to Applicant['s] claimed invention.
Br. 24.
Where claims do not particularly point out and distinctly claim the
invention as required by the second paragraph of 35 U.S.C. § 112, a
rejection of the claims must be reversed as impermissibly involving
speculative assumptions as to the meaning of the claims. See In re Steele,
305 F.2d 859, 862---63 (CCPA 1962); In re Wilson, 424 F.2d 1382, 1385
(CCPA 1970) ("Ifno reasonably definite meaning can be ascribed to certain
terms in the claim, the subject matter does not become obvious-the claim
becomes indefinite"). Here, the issues with respect to the rejections under
35 U.S.C. § 103(a), depend on the interpretation of the limitation of
receiving anonymous transaction card account behavior of customers of the
financial institution. In view of our determination that independent claims 1,
16, and 17 are indefinite based on this limitation, it follows that any analysis
regarding those rejections would involve considerable speculation.
Additionally, claims 2-15 depend from claim 1 and the prior art rejections of
these claims fall for the same reason as claim 1. As such, we are unable to
ascertain whether the prior art renders the claims obvious.
Therefore, the rejections under 35 U.S.C. § 103(a) of claims 1-17 are
not sustained, proforma. It should be understood, however, that our
decision in this regard is proforma and based solely on the indefiniteness of
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the claimed subject matter, and does not reflect on the adequacy of the prior
art evidence applied in support of the rejection.
DECISION
The Examiner's rejection of claims 1-17 under 35 U.S.C. § 101 is
AFFIRMED.
The Examiner's rejection of claims 1-17 under 35 U.S.C. § 112(a) is
AFFIRMED.
The Examiner's rejection of claims 1-17 under 35 U.S.C. § 112(b) is
AFFIRMED.
The Examiner's rejections of claims 1-17 under 35 U.S.C. § 103(a)
are REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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