Ex Parte Malov et al

Patent Trial and Appeal Board

Jun 28, 2018

13538002 (P.T.A.B. Jun. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/538,002 06/29/2012
50400 7590 07/02/2018
SCHWEGMAN LUNDBERG & WOESSNER/SAP
P.O. BOX 2938
MINNEAPOLIS, MN 55402
Denis Malov
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.
2058.698US 1 5330
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
07/02/2018 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENIS MALOY and ZHIBIN CAO
Appeal 2016-005793
Application 13/53 8,002 1
Technology Center 3600
Before MICHAEL J. STRAUSS, IRVINE. BRANCH, and
JON M. JURGOV AN, Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1, 3-8, and 10-20, constituting the only
claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm. 2
1 Appellants identify SAP SE as the real party in interest. App. Br. 2.
2 Our Decision refers to the Specification ("Spec.") filed June 29, 2012, the
Non-Final Office Action ("Final Act.") mailed March 12, 2015, the Appeal
Brief ("App. Br.") filed November 5, 2015, the Examiner's Answer ("Ans.")
mailed March 14, 2016, and the Reply Brief ("Reply Br.") filed May 16,
2016.
Appeal2016-005793
Application 13/538,002
CLAIMED INVENTION
The claims are directed to applying a rule to a dataset replicated from
a transactional data environment and stored in an in-memory database to
determine customers or accounts likely to have a particular outcome, such as
the opening of an account, a large deposit, or a loan account default. Spec.
Abstract, ,r 40. Claim 1, which is representative of the claimed invention, is
reproduced below:
1. A method comprising:
receiving input identifying at least one of a customer and a
customer account attribute of interest;
based on the at least one customer and customer account
attribute of interest, performing a statistical analysis of other
customer and customer account attributes of customers and
customer accounts stored in a dataset replicated from a
transactional data environment to an in-memory database, the in-
memory database holding data in a memory bank, the statistical
analysis performed to identify other customer and customer
account attributes that contribute to the at least one customer and
customer account attribute of interest;
generating a rule identifying data attributes that contribute to
the at least one outcome with regard to the at least one product
based on the identified other customer and customer account
attributes that contribute to the at least one customer and
customer account attribute of interest;
applying the rule to a dataset replicated from a transactional
data environment to an in-memory database to segment at least
one of customers and customer accounts likely to have each of
the at least one outcomes, the replicated dataset including
customer data; and
outputting data representative of the segmented at least one of
customers and customer accounts likely to have each of the at
least one outcomes.
App. Br. 28 ("Claims App'x").
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Application 13/538,002
REJECTIONS
Claims 1, 3-8, and 10-20 stand rejected under 35 U.S.C. § 101 as
directed to ineligible subject matter. Non-Final Act. 4-- 6.
Claims 1, 3-8, 10-16, and 20 stand rejected under 35 U.S.C. § I03(a)
based on Belgaied (US 2009/0234710 Al, Sept. 17, 2009) and Dempers (US
2007/0185751 Al, Aug. 9, 2007). Non-Final Act. 6-19.
Claim 17 stands rejected under 35 U.S.C. § I03(a) based on Belgaied,
Dempers, and Amstutz (US 2004/0054610 Al, Mar. 18, 2004). Non-Final
Act. 19-21.
Claim 18 stands rejected under 35 U.S.C. § I03(a) based on Belgaied,
Dempers, Amstutz, and Cunningham (US 2008/0082386 Al, Apr. 3, 2008).
Non-Final Act. 21-22.
Claim 19 stands rejected under 35 U.S.C. § I03(a) based on Belgaied,
Dempers, Amstutz, Cunningham, and Pednault (US 2009/0030864 Al, Jan.
29, 2009). Non-Final Act. 22-23.
ANALYSIS
§ 101 Rejection
Patent eligibility is a question of law. Dealertrack, Inc. v. Huber, 67 4
F.3d 1315, 1333 (Fed. Cir. 2012). Accordingly, we review the Examiner's
§ 101 determinations de nova.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
\\'noever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
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In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt "the basic tools of scientific and technological
work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014). The rationale is that
patents directed to basic building blocks of technology would not "promote
the progress of science" under the U.S. Constitution, Article I, Section 8,
Clause 8, but instead would impede it. Accordingly, laws of nature, natural
phenomena, and abstract ideas are not patent-eligible subject matter. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 134
S. Ct. at 2354).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice. 134 S. Ct. at 2355. The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76-77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we "examine the elements of the
claim to determine whether it contains an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application."
Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79). The "inventive
concept" may be embodied in one or more of the individual claim
limitations or in the ordered combination of the limitations. Alice, 134 S. Ct.
at 2355. The "inventive concept" must be significantly more than the
abstract idea itself, and cannot be simply an instruction to implement or
apply the abstract idea on a computer. Alice, 134 S. Ct. at 2358. "'[W]ell-
understood, routine, [and] conventional activit[ies]' previously known to the
industry" are insufficient to transform an abstract idea into patent-eligible
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subject matter. Alice, 134 S. Ct. at 2359 (third alteration in original) (citing
Mayo, 566 U.S. at 73).
At the outset, we note that the claims in this case are directed to
methods, systems, and computer-readable storage media which fit the
definitions of "process, machine, [ and] manufacture" in § 101. However,
this does not end the inquiry, as we must apply the two-step test in
Alice/Mayo to determine if the claims are statutory.
The Examiner analyzes independent claims 1, 8, and 15 together for
purposes of§ 101, and determines as follows:
In this case, the claims are directed towards segmenting customer
accounts to model customer behavior, a method of organizing
human activity. No improvement to another technology or
technical field is recited, nor do the claims purport to improve
the functioning of the computer itself. The claims require no
more than a generic computer to perform generic functions that
are well-understood, routine, and conventional [ activities]
previously known in the industry. As such, the claims recite
ineligible subject matter under 35 USC§ 101.
Non-Final Act. 6.
Turning to the first step of Alice/Mayo, Appellants argue that the
Supreme Court in Alice relied on authoritative documentation (i.e., law
journal articles) to establish that the claims included fundamental economic
practices long prevalent in commerce. App. Br. 13. Appellants argue the
Examiner was likewise compelled to provide similar authoritative
documentation in this case to establish the claimed invention recites a
fundamental economic practice. Id. In the Answer, however, the Examiner
indicates he did not assert the claims are directed towards a fundamental
economic practice. Ans. 4.
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Nonetheless, we determine the claims do recite a fundamental
economic practice similar to the claims found abstract in OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015) ("OIP"). There, the court
found the similarity of OIP's claims to those in previous cases sufficient
authority to decide that those claims were abstract. Id. at 1362. OIP's
claims recited pricing a product for sale at different prices, gathering
statistics about how customers reacted to the prices, using that data to
estimate outcomes, and automatically selecting and offering a new price
based on the estimated outcome. Id. at 1361---62. OIP's claims in effect
segment customers according to price, and thus are similar to the claims in
this case.
Appellants argue the Examiner has failed to provide evidentiary
support or well-articulated reasoning that the claims are directed to an
abstract idea. App. Br. 15. The Examiner determines the claims are directed
to an abstract idea that is a method of organizing human activity "because it
is intrinsically human in nature; it is a process that humans would conduct to
improve business operations." Ans. 3. We agree with the Examiner the
claims are also abstract for reciting a method of organizing human activity.
In this regard, the Specification states: "Once segmented, the customers and
customer accounts segments can be utilized for various purposes, such as
marketing, default prevention, education, and account reviews." Spec. ,r 19
( emphasis added). These are human activities organized by segmentation.
Accordingly, we are not persuaded by Appellants' arguments. App. Br. 19--
20.
The Examiner also determines the claims are abstract for reciting "an
idea of itself." Ans. 6. According to the July 2015 Update: Subject Matter
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Eligibility, https://www.uspto.gov/sites/default/files/docmnents/ieg-july-
2015-update.pdf ("July 2015 Update"), page 5, an "idea 'of itself" describes
"an idea standing alone such as an uninstantiated concept, plan or scheme, as
well as a mental process ( thinking) that 'can be performed in the human
mind, or by a human using a pen and paper."' Although the claims recite
certain technical components, the method or functions recited in the claims
can indeed be performed in the human mind or using pen and paper, as the
Examiner contends. Ans. 6. Under similar circumstances, our reviewing
court has found such claims to be ineligible. See, e.g., Parker v. Flook, 437
U.S. 584, 586 (1978) (holding claims unpatentable as capable of
performance with pencil and paper even though described as primarily
useful for computerized calculations producing automatic adjustments in
alarm settings); CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). Thus, we are not persuaded by
Appellants' arguments, including that "one cannot implement an in-memory
database mentally or on paper." Reply Br. 4; App. Br. 18-19.
Appellants argue the Examiner fails to set forth any case law
involving similar claims found to be abstract. App. Br. 15. Our reviewing
court has stated "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
Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)).
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In the Answer, the Examiner relies on the July 2015 Update, supra,
pages 4 to 5, which sets forth examples of abstract ideas including
"comparing data to determine a risk level," "structuring a sales force or
marketing company," and "using an algorithm for determining the optimal
number of visits by a business representative to a client." These examples
are based, respectively, on PerkinElmer, Inc. v. Intema Ltd., 496 F. App'x
65, 73 (Fed. Cir. 2012); In re Ferguson, 558 F.3d 1359 (Fed. Cir. 2009); and
In re Maucorps, 609 F.2d 481 (CCPA 1979).
These cases have some similarities to the facts of this case. For
example, PerkinElmer and Maucorps involve predictions such as
determining a risk level or an optimal number, which are similar in that
respect to segmenting customers or accounts by likely outcome in the
claimed invention. However, we find OIP to be particularly relevant to this
case. OIP's offer-based price optimization similarly segments customers by
price according to likely outcome, i.e., whether or not they are likely to buy
a product at a certain price. OIP, 788 F.3d at 1363. OIP's claims were
determined to be directed to an abstract idea ineligible for patent protection.
Id. at 1364.
Another relevant case is Versata Dev. Grp., Inc. v. SAP Am., Inc., SAP
AG, 793 F.3d 1306 (Fed. Cir. 2016). This case involved claims directed to
pricing products in multi-level product and organizational groups. Id. at
1311. In other words, the claims recited arranging customers into a
hierarchy of customer groups and products into a hierarchy of product
groups, and determining pricing information based on those groupings. Id.
at 1312-13. Those claims, involving segmentation of customers by
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hierarchy within an organization, were found directed to an abstract idea
ineligible for patent protection. Id. at 1336.
Thus, we determine the previously decided cases most similar to this
one compel the conclusion these claims are directed to an abstract idea.
Appellants argue the Examiner ignored the specific claim limitations
and the claims as a whole and merely reduced the subject matter of the
claims to an Examiner-created summarization that does not reflect the actual
language in the claims. App. Br. 15; Reply Br. 3. Although we agree with
Appellants' contention to the extent that the Examiner's articulation of the
abstract idea embodied in the claims does not exactly mirror the claim
language, it does nonetheless capture the essence of the recited abstract idea.
More closely tracking the claim language, the claims are directed to the
abstract idea of segmenting customers or their accounts by likely outcome.
This abstract idea is embodied in the "applying" step of claim 1, the "rule
application module" of claim 8, and the "apply the model" function of claim
15.
In our analysis, we are mindful that claims directed to improvements
in computer functionality or other technology are not abstract. See, e.g.,
MPEP § 2106.04(a) 9th ed. (R-08.2017); Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1339 (Fed. Cir. 2016) (claims to a self-referential table for a
computer database were directed to an improvement in computer capabilities
and not an abstract idea). Here, Appellants argue that, because the claims
replicate transactional data into an in-memory database to process data
faster, the claims recite an improvement over the prior art. Reply Br. 5-6.
In support of their contention, Appellants cite the case of DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) ("DDR"), for the
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proposition that claims necessarily rooted in and directed to an improvement
to computer technology are patentable.
We are not persuaded by this argument, in part, because of the breadth
with which the Specification describes the claimed "in-memory database."
Initially, we note that claim terms are given their broadest reasonable
interpretation consistent with the specification in which they appear. In re
Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1369 (Fed. Cir. 2004). The
Specification states "the in-memory database 212 stores transactional data in
a large bank of random access memory (RAM)" (i-f 31 ). However, the
Specification also states "the in-memory database 212 may store the
replicated data primarily on disk" and may further include "other memory
types." Id. To the extent Appellants are arguing that the improvement
results from replicating transactional data to relatively fast types of memory
like RAM (see Spec. ,r 34 ), this feature is not reflected in the claims. Thus,
Appellants' argument for patentability is unpersuasive.
Furthermore, the Specification appears to state a speed advantage is
attained by consolidating data from multiple sources into a single in-memory
database so that multiple transactions are not required to segment the data
(i-f 34). However, the claims are silent regarding this feature, so we do not
agree these claims recite an improvement that would take the claims out of
the realm of abstract ideas per DDR. Accordingly, we determine the claims
recite an abstract idea.
For the same reasons, under step two of Alice/Mayo, we determine the
claims do not recite an "inventive concept" sufficient to transform the
abstract idea embodied therein into patent-eligible subject matter,
particularly considering the breadth of the claim terms when viewed in light
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of the Specification, contrary to Appellants' arguments. App. Br. 21-23.
The claim elements other than the abstract idea, such as "in-memory
database," "transactional data environment," "memory bank," "attribute of
interest " "statistical analysis " "processor " "rules " "rule repository " "rule
' ' ' ' '
application module," and other features, are generic and well-known
components, at least as recited, and they are insufficient to transform the
claim into patent-eligible subject matter. See Alice, 134 S. Ct. at 2357.
Appellants argue the claims recite a "specially-configured computer"
and attempt to distinguish the "in-memory database" as using large banks of
memory, such as RAM or flash memory. App. Br. 21-23. As indicated
previously, the Specification also describes the "in-memory database" as
including disk or other types of memory. Accordingly, Appellants'
argument is unpersuasive because the claims do not restrict the "in-memory
database" to only large banks of RAM or flash memory. In addition, the
claimed features such as the "in-memory database" are recited in the sort of
vague, functional language that our reviewing court has determined
insufficient to confer patent eligibility. See In re TL! Commc 'ns LLC Patent
Litig., 823 F.3d 607, 615 (Fed. Cir. 2016) ("Such vague, functional
descriptions of server components are insufficient to transform the abstract
idea into a patent-eligible invention."). Thus, we are not persuaded the
claims recite an "inventive concept" that is significantly more than the
abstract idea under step two of Alice/Mayo.
Although the claims do not entirely preempt the abstract idea
embodied therein due to the presence of some technical features, the
preemption resulting from a patent on such claims is nonetheless significant.
A patent on these claims would foreclose applying a rule to transactional
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data to segment customers or accounts likely to have an unspecified
outcome, using statistical analysis, attributes, rules, in-memory database,
processor, repositories, etc., all of which, at the general level claimed, were
known in this art. Even if the claims do not entirely preempt use of the
abstract idea, "the absence of complete preemption does not demonstrate
patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015).
Appellants mention in passing that dependent claims 5-7 and 20 recite
additional features relevant to subject matter eligibility. App. Br. 16.
However, merely mentioning the claim limitations without indicating why
the recited features show error in the Examiner's determination is an
insufficient argument to establish patentability. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (the arguments shall explain why the examiner erred as to
each ground contested by appellant).
For all of the foregoing reasons, we sustain the rejection of claims 1,
3-8, and 10-20 under 35 U.S.C. § 101.
§ 103 Rejection
Obviousness is a question of law based on underlying factual findings.
In re Magnum Oil Tools Int'!, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016).
Specifically, the question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of skill in the art, and (4) where in evidence, so-called
secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17-18
(1966). The prior art references cited in the Examiner's rejection may be
viewed as representative of the level of ordinary skill in the art. Litton
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Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158, 164---65 (Fed. Cir.
1985).
Appellants attempt to distinguish independent claims 1, 8, and 15 over
Belgaied and Dempers on the basis of the "in-memory database" that utilizes
large banks of memory, such as RAM or flash memory, to replicate a dataset
from a transactional data environment against which to apply rules. App.
Br. 23-26. Appellants state the Examiner admits Belgaied fails to disclose
this feature, and argue Dempers describes only conventional databases and
data warehouses. Id. at 24.
We find Appellants' arguments (App. Br. 23-26; Reply Br. 7-9)
unpersuasive considering the breadth with which the Specification (i-f 31)
describes the term "in-memory database" to include disk and other types of
memory, i.e., conventional databases, as previously explained. Thus,
Appellants' attempt to distinguish the claims from Dempers on the basis of
the "in-memory database" is unpersuasive.
Appellants further argue Belgaied fails to disclose applying a rule
against a dataset replicated from a transactional data environment. App. Br.
24--25. We agree with the Examiner this feature is taught or suggested by
Belgaied. Non-Final Act. 8, 12, 17; Ans. 8 (citing Belgaied, Abstract, ,r,r 67,
217). Belgaied mentions gathering and storing transaction data ( customer
characteristics and preferences, context, offers presented, customer choices)
for each customer interaction (i-f 68), producing reports based in part on
customer segment (i-f 69), and defining business rules for optimization of
transactions (i-f 71 ). Belgaied further mentions use of a splitting rule to
segment a customer (i-f 217). Furthermore, Belgaied mentions "collection
and storage of large datasets of transaction data ( customer level historical
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interactions and sales) to derive predictions/forecasts of choice probabilities
by offer" (i-f 58), "application of Discrete Choice Analysis to these
transaction datasets ... to derive choice probabilities" (i-f 59), and
"segmentation of customers according to their choice behavior ... to
identify customer characteristics that have the highest influence on the
observed choices" (i-f 60). Belgaied also mentions grouping customers
having similar choice behaviors into segments using a segmentation tree
(i-f 171 ). Considering these teachings together, we agree with the Examiner
that Belgaied teaches or at least suggests applying a rule against transaction
data to segment customers.
Appellants also argue the Examiner fails to show the cited references
replicate data. Reply Br. 9. Belgaied mentions gathering and storing
transaction data (i-f 68) and collection and storage of large datasets of
transaction data (i-f 58). As the Examiner finds (Non-Final Act. 7, 11-12,
16), Dempers also mentions collecting and storing data in a transactional
database (i1i175, 76, 90). Gathering or collecting data at least suggests its
replication from one storage place to another. Accordingly, we find
Appellants' arguments unpersuasive to show Examiner error.
Remaining Claims
The remaining claims depend from claims 1, 8, and 15. No separate
arguments are submitted for these claims. Accordingly, for the reasons
stated with regard to their independent claims, we sustain the rejection of
these claims. 37 C.F.R. § 4I.37(c)(l)(iv).
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DECISION
We affirm the Examiner's decision to reject claims 1, 3-8, and 10-20
under 35 U.S.C. § 101.
We affirm the Examiner's decision to reject claims 1, 3-8, and 10-20
under 35 U.S.C. § 103(a).
AFFIRMED
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