Ex Parte Serio et al

Patent Trial and Appeal Board

Apr 20, 2018

13896053 (P.T.A.B. Apr. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/896,053 05/16/2013
101850 7590 04/24/2018
Knobbe, Martens, Olson & Bear, LLP
CORELOGIC (CLOGI)
2040 Main Street, Fourteen Floor
Irvine, CA 92614
FIRST NAMED INVENTOR
Dianna L. Serio
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.
CLOGI.009Cl 9295
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
04/24/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIANNA L. SERIO and
FELICE J. KESSELRING
Appeal2016-007274 1
Application 13/896,0532
Technology Center 3600
Before HUBERT C. LORIN, ANTON W. PETTING, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5, 6, 8-11, and 13. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
January 11, 2016) and Reply Brief ("Reply Br.," filed July 19, 2016), the
Examiner's Answer ("Ans.," mailed May 26, 2016), and Final Office
Action ("Final Act.," mailed October 1, 2015).
2 Appellants identify CoreLogic Solutions LLC, as the real party in interest
(Appeal Br. 1 ).
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CLAIMED INVENTION
Appellants' claims relate generally "to data processing methods for
automatically mining and analyzing information associated with mortgages,
property owners, and properties" (Spec. i-f 2).
Claims 1 and 9 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal:
1. A computer-implemented process of identifying
properties owned by an individual, the process comprising:
(a) receiving, via a user interface, input specifying a name
and social security number of the individual;
(b) searching, by processor execution of program
instructions, a plurality of data repositories for properties
associated with the name and social security number, said
plurality of data repositories including a data repository of credit
header data and a data repository of aggregated loan data, said
credit header data representing non-financial information
maintained by one or more credit bureaus, said aggregated loan
data representing mortgage loans offered by a plurality of
lenders;
( c) for each property identified in step (b ), assessing, based
at least partly on public recorder data that comprises property
sales transaction data, whether the property is currently owned
by the individual, said assessing comprising, by processor
execution of a name matching algorithm that accounts for name
variations, comparing the name of the individual to buyer and
seller names included in the sales transaction data associated
with the property to assess the individual's past and present
ownership of the property; and
( d) for at least a first property identified in step (b ),
executing a mailing address search for other properties whose
mailing address matches an address of the first property, to
thereby search for other properties potentially owned by the
individual;
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wherein steps (a}---( d) are performed by a computerized
analytics system that comprises one or more computing devices.
REJECTION
Claims 1-3, 5, 6, 8-11, and 13 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
ANALYSIS
Independent claim 1 and dependent claims 2, 3, 5, 6, and 8
Appellants argue claims 1-3, 5, 6, and 8 as a group (see Appeal Br. 4--
9). We select claim 1 as representative. Claims 2, 3, 5, 6, and 8 stand or fall
with independent claim 1. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
The "directed to" inquiry []cannot simply ask whether the claims
involve a patent-ineligible concept, because essentially every
routinely patent-eligible claim involving physical products and
actions involves a law of nature and/or natural phenomenon-
after all, they take place in the physical world. See Mayo, 132 S.
Ct. at 1293 ("For all inventions at some level embody, use,
reflect, rest upon, or apply laws of nature, natural phenomena, or
abstract ideas.") Rather, the "directed to" inquiry applies a stage-
one filter to claims, considered in light of the specification, based
on 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); see Genetic Techs. Ltd. v.
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Merial L.L.C., 818 F.3d 1369, 1375 (Fed. Cir. 2016) (inquiring
into "the focus of the claimed advance over the prior art").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The
'abstract idea' step of the inquiry calls upon us to look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, 822
F.3d at 1335.
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determines that the claims, considered as a whole, are directed to "a concept
of searching, assessing and comparing known information to identify
properties owned by an individual to mitigate risk for a loan" (Final Act. 4;
see also Ans. 3). More particularly, the Examiner determines the claims are
directed to
[ m ]anaging risk for a mortgage loan [which] has been in
widespread use[] in the banking industry and is considered to be
a good business practice (fundamental economic practice), []
loan information processing (a method of organizing human
activity), and a process of collecting and comparing known
information (an idea of itself).
(Ans. 3--4).
In response, Appellants argue that the Examiner "grossly
mischaracterizes and oversimplifies claim 1," and as such, errs by
"disregard[ing] significant portions of the claim, and oversimplif[ying] the
claimed subject matter in an attempt to characterize the invention as an
abstract idea" (Appeal Br. 4--5; see also Reply Br. 1-2). However, we agree
with the Examiner that the claims are directed broadly to the abstract idea of
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"searching, assessing and comparing known information to identify
properties owned by an individual to mitigate risk for a loan" (Final Act. 4).
And, to the extent Appellants argue that the Examiner erred in adequately
supporting this determination by providing support or citation (see Appeal
Br. 4---6), Appellants' argument is unpersuasive.
There is no requirement that the Examiner must provide evidentiary
support in every case before a conclusion can be made that a claim is
directed to an abstract idea. See, e.g., para. IV "July 2015 Update: Subject
Matter Eligibility" to 2014 Interim Guidance on Subject Matter Eligibility
(2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("The courts consider the
determination of whether a claim is eligible (which involves identifying
whether an exception such as an abstract idea is being claimed) to be a
question of law. Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the ultimate legal
conclusion on eligibility without making any factual findings.") (Emphasis
added). We agree that evidence may be helpful in certain situations where,
for instance, facts are in dispute. But it is not always necessary. Based on
the above analysis set forth by the Examiner, we are unpersuaded it is
necessary in this case.
Instead, we need only look to other decisions where similar concepts
were previously found abstract by the courts. See Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("Instead of a
definition [for what an 'abstract idea' encompasses], 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.")
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To that end, as noted above, the Examiner determines the claims are
directed to "searching, assessing and comparing known information to
identify properties owned by an individual to mitigate risk for a loan" (Final
Act. 4 ). Broadly, we agree that the Examiner is correct in articulating that
the claims are directed to an abstract idea.
Accordingly to the Specification, a problem in the mortgage industry
is that mortgage lenders "often enter into mortgage-related transactions
without accurate ownership data that allows them to properly investigate of
the accuracy of representations made by the other entities involved" (Spec.
i-f 3). The Specification identifies that this problem leads to "risky
investments that have resulted in significant monetary losses due to
decreased profitability or material misrepresentation related to defaulted
loans" (id.). To address this problem, the Specification discloses processes
"for efficiently mining and analyzing information associated with particular
mortgage loans, borrowers and properties" (id. i-f 4) by using "us[ing]
property-related data aggregated from multiple sources and jurisdictions to,
among other tasks, assess property ownership" (id.). And, taking
independent claim 1 as representative, we agree with the Examiner that
claim 1
recites a series of steps for receiving the information input of an
individual such as a name and social security number, searching
data repositories to identify properties owned by the individual,
assessing identified properties based on public record data, and
executing mailing address search for other properties potentially
owned by the individual.
(Ans. 3; see also Final Act. 4).
Thus, we agree with the Examiner that independent claim 1 is directed
to "searching, assessing and comparing known information to identify
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properties owned by an individual to mitigate risk for a loan" (Final Act. 4;
see also Ans. 3), and at a higher level directed to "[ m ]anaging risk for a
mortgage loan" (Ans. 3--4). Furthermore, we agree with the Examiner that
the claims are "directed to" a fundamental economic practice and method of
organizing human activity, in that they are similar to the concept of
intermediated settlement in Alice, and the concept of risk hedging in Bilski v.
Kappas, 561 U.S. 593 (2010), and, thus, is an abstract idea beyond the scope
of§ 101. See Alice Corp., 134 S.Ct. at 2356; see also Bilski, 561 U.S. at
611.
We also note the claimed steps for "receiving" identifying
information, "searching" databases for properties associated with the
identifying information, "assessing ... whether the property is currently
owned by the individual ... [using] a name matching algorithm ... to assess
the individual's past and present ownership of the property," and "executing
a mailing address search for other properties whose mailing address matches
an address of the first property, to thereby search for other properties
potentially owned by the individual" accomplish little more than collecting
data, analyzing the data, and then presenting the data based on the analysis,
and is similar to the steps that the Federal Circuit determined were patent
ineligible in Electric Power Grp., LLC v. Alstom S.A., Grid, Inc., 830 F.3d
1350 (Fed. Cir. 2016). In Electric Power, the method claims at issue were
directed to performing real-time performance monitoring of an electric
power grid by collecting data from multiple data sources, analyzing the data,
and displaying the results. Elec. Power Grp. LLC, 830 F.3d at 1351-52.
The Federal Circuit held that the claims were directed to an abstract idea,
explaining that "[ t ]he advance they purport to make is a process of gathering
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and analyzing information of a specified content, then displaying the results,
and not any particular assertedly inventive technology for performing those
functions." Id. at 1354.
Accordingly, we find that independent claim 1 involves nothing more
than receiving data, searching data, and analyzing data - activities squarely
within the realm of abstract ideas. See, e.g., Elec. Power Grp., LLC, 830
F.3d at 1353-54; see also Accenture Global Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (holding claims
reciting "generalized software components arranged to implement an
abstract concept [of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer" not patent
eligible).
Appellants' arguments regarding preemption are likewise
unpersuasive of Examiner error (see Appeal Br. 6; see also Reply Br. 3--4).
Although preemption "might tend to impede innovation more than it would
tend to promote it, 'thereby thwarting the primary object of the patent laws"'
(Alice, 134 S. Ct. at 2354 (citing Mayo, 132 S. Ct. at 1293)), "the absence of
complete preemption does not demonstrate patent eligibility." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
See also OIP Techs., 788 F.3d at 1362---63 ("[T]hat the claims do not
preempt all price optimization or may be limited to price optimization in the
e-commerce setting do not make them any less abstract.").
Step two is "a 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 (citing Mayo, 132 S.Ct. at 1294).
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And, similar to the situation in Electric Power, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
patenting. As the court explained in Electric Power, "merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas." Elec. Power Grp., 830 F.3d at 1355.
Here, as the Examiner points out, independent claim 1 "is basically directed
to information searching and comparing and nothing else. The process
being performed on a 'computing device', at best, limits the use of the
abstract idea to a particular technological environment" (Ans. 4).
Appellants argue that the Examiner completely disregards limitations
of claim 1 which recite "'processor execution of a name matching algorithm
that accounts for name variations"' (Appeal Br. 7) and "execution of a
'mailing address search for other properties whose mailing address matches
an address of the first property"' (id.). However, the Specification discloses
that "[a] conventional and/or proprietary name matching algorithm may be
used for this purpose" (Spec. i-f 28), and the only other disclosure regarding
the algorithm identifies using "a conventional name matching algorithm,
such as the Jaro-Winkler algorithm" (id.). Similarly, the Specification
discloses executing the "mailing address search" using "reverse phone data
queries or data provided by rental data aggregators" (id. i-f 32). Thus, we
agree with the Examiner that the steps recited by independent claim 1
amount to nothing more than mere instructions to implement the abstract
idea on a computer (see Ans. 4--5}-none of which add inventiveness
because they merely require the application of conventional, well-known
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analytical steps. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014) ("[T]he claimed sequence of steps comprises only
'conventional steps, specified at a high level of generality,' which is
insufficient to supply an 'inventive concept."') (citing Alice, 134 S. Ct. at
2357).
Appellants argue further that the Examiner fails to satisfy the second
step of the Alice analysis, because independent claim 1 "us[ es] additional
data sources (including 'a data repository of aggregated loan data' and
'public recorder data that comprises property sales transaction data'), in a
particular manner, to search for additional properties that may not show up
in the credit header data" (Appeal Br. 8), and as such, independent claim 1
provides a technical solution to "the problem of accurately identifying
owned properties" (id.). Appellants' argument is not persuasive.
Here, the claims do not, for example, purport to improve the
functioning of the computer itself or involve a solution necessarily rooted in
computer technology to overcome a problem specific to the realm of
computer networks, but instead embodies the use of generic computer
components in a conventional manner to perform an abstract idea, which, as
the Court in DDR Holdings explained, is not patent eligible. DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[T]hese
claims in substance were directed to nothing more than the performance of
an abstract business practice on the Internet or using a conventional
computer. Such claims are not patent-eligible."). Nor do the claims effect
an improvement in any other technology or technical field. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of "searching, assessing and comparing known
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information to identify properties owned by an individual to mitigate risk for
a loan" (Final Act. 4; see also Ans. 3), which under our precedents, is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2360.
Equally unpersuasive is Appellants' argument that "the present claims
are analogous to those found in" BASCOM Global Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) because "the present
claims recite an inventive concept that extends beyond the identified abstract
idea" (Reply Br. 3).
In BASCOM, the Federal Circuit found that the claims were directed
to an abstract idea of filtering Internet content under step one of the Alice
test. BASCOM, 827 F.3d at 1348. Under step two, the Federal Circuit
found that the limitations of the claims, taken individually, recited generic
computer, network, and Internet components, which were not inventive by
themselves. Id. at 1349. However, the court found that "[b ]y taking a prior
art filter solution (one-size-fits-all filter at the [Internet Service Provider
("ISP")] server) and making it more dynamic and efficient (providing
individualized filtering at the ISP server), the claimed invention represents a
'software-based invention[] that improve[s] the performance of the
computer system itself.'" Id. at 13 51 (citations omitted). As such, the court
determined that "[ o Jn this limited record, this specific method of filtering
internet content cannot be said, as a matter of law, to have been conventional
or generic." Id. at 1350.
Here, there is no evident parallel between Appellants' claims and the
claims in BASCOM, nor have Appellants set forth any such parallel. The
record does not indicate, for example, that the claimed invention relates to a
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software-based invention that improves the performance of the computer
system itself. Instead, the claims are directed to performing the abstract idea
of "searching, assessing and comparing known information to identify
properties owned by an individual to mitigate risk for a loan" (Final Act. 4;
see also Ans. 3) on one or more general-purpose computers (see Spec. i-f 50).
And it is well-settled that "merely recit[ing] the abstract idea ... with the
requirement to perform it on the internet, or to perform it on a set of generic
computer components ... would not contain an inventive concept."
BASCOM, 827 F.3d at 1350.
Appellants also argues that "the operations described in claim 1 are
not analogous to any business practice that is, or reasonably can be,
performed without the use of a computer" (Appeal Br. 8). However,
Appellants' argument is not persuasive at least because Appellants fail to
provide adequate evidence or technical reasoning as to how or why any
efficiencies provided by the claimed invention are necessarily rooted in
computer technology. The fact that the claim 1 may use a matching
algorithm "that increases the likelihood of locating owned properties"
(Appeal Br. 7; see also Reply Br. 3--4) does not make the claimed invention
any less abstract. "[R ]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible."
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
We also are not persuaded by Appellants' argument that independent
"claim 1 recites an inventive concept" that "transform[ s] the abstract idea
into a patent eligible invention" because the Examiner "has implicitly found
that claim 1 recites an inventive concept by finding the claimed subject
matter to be novel and non-obvious over the cited art" (Appeal Br. 8-9). To
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the extent that Appellants argue that independent claim 1 necessarily
contains an "inventive concept" because the claims are not rejected over
prior art, Appellants misapprehend the controlling precedent. Although the
second step in the Alice/ Mayo framework is termed a search for an
"inventive concept," the analysis is not an evaluation of novelty or non-
obviousness, but rather, a search for "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. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2, 3, 5, 6, and 8, which
fall with independent claim 1.
Independent claim 9 and dependent claims 10, 11, and 13
Appellants argue claims 9-11 and 13 as a group (see Appeal Br. 9-
10). We select claim 9 as representative. Claims 10, 11, and 13 stand or fall
with independent claim 9. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants argue "[ w ]hen viewed as a whole, claim 9, like claim 1, is
not directed to an abstract idea" (Appeal Br. 10). Instead, Appellants argue
that independent claim 9 "is directed to an analytics system that includes,
and uses, a specific combination of data repositories to search for properties
owned by an individual" (id.). However, independent claim 9 is
substantially similar to independent claim 1 and recites a system that
corresponds to the method of independent claim 1. Appellants make the
same arguments as independent claim 1 for independent claim 9 (see Appeal
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Br. 9--10), and we do not find these arguments persuasive of error in the
Examiner's rejection of independent claim 9 for the reasons discussed above
in regard to independent claim 1. Here, as in Alice, "the system claims are
no different in substance from the method claims. The method claims recite
the abstract idea implemented on a generic computer; the system claims
recite a handful of generic computer components configured to implement
the same idea." Alice, 134 S. Ct. at 2351.
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 9, and claims 10, 11, and 13, which
fall with independent claim 9.
DECISION
The Examiner's rejection of claims 1-3, 5, 6, 8-11, and 13 under
35 U.S.C. § 101 is affirmed.
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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