Ex Parte Sharma et al

Patent Trial and Appeal Board

May 31, 2017

11520351 (P.T.A.B. May. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/520,351 09/12/2006 Abhinay Sharma 16113-155001/GP-909-01-US 8794
26192 7590 06/02/2017
FISH & RICHARDSON P.C.
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
EXAMINER
BROWN, ALVIN L
ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
06/02/2017 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):
PATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABHINAY SHARMA and KAI CHEN
Appeal 2015-001229
Application 11/520,351
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Abhinay Sharma and Kai Chen (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1—9, 12—17, and 20-22, the
only claims pending in the application on appeal. We have jurisdiction over
the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed July 25, 2014) and Reply Brief (“Reply Br.,” filed October 29,
2014), and the Examiner’s Answer (“Ans.,” mailed September 3, 2014), and
Final Action (“Final Act.,” mailed January 27, 2014).
Appeal 2015-001229
Application 11/520,351
The Appellants invented a secure conversion tracking method.
Specification para. 9.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A secure conversion tracking method, comprising:
[1] receiving a conversion notification,
the conversion notification including a unique identifier
generated by an advertiser in response to a conversion
action;
[2] comparing, by one or more processors,
the unique identifier
to
a set of unique identifiers
that were received with previous conversion
notifications;
and
[3] determining, by one or more processors, whether the
conversion notification is valid
based on the comparison,
the conversion notification being valid when the unique
identifier does not match any identifiers in the set of the
unique identifiers,
and
the conversion notification being invalid when the unique
identifier matches an identifier in the set of unique
identifiers,
where the method is performed by one or more
processors.
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The Examiner relies upon the following prior art:
Dake US 6,928,426 B2 Aug. 9, 2005
Nov. 16, 2006
Oct. 16, 2008
May 31,2012
Brooks US 2006/0259468 A1
Collins US 2008/0255915 A1
Broman US 2012/0134478 A1
Claims 1—3, 12—14, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Collins and Broman.
Claims 4—6, 8, 9, 15—17, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Collins, Broman, and Dake.
Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Collins, Broman, Dake, and Brooks.
Claims 1—9, 12—17, and 20-22 stand rejected under 35 U.S.C. § 101 as
directed to non—statutory subject matter.
The issues of obviousness turn primarily on whether Broman shows the
need for fraud detection and the generic approach of testing whether a given
customer had a history of fraud by comparing a customer attribute to those
of known fraud practitioners, and whether doing so by generating and
storing such attributes without submitting them was known. The issues of
statutory subject matter turn primarily on whether generic fraud protection
by comparing attributes is more than abstract conceptual advice.
ISSUES
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. A “conversion” is said to occur when the user performs a
conversion action at the advertiser’s website, such as purchase a
product, create a new account, provide information, etc. Spec,
para. 3.
Facts Related to the Prior Art
Collins
02. Collins is directed to advertising campaign management and
optimization. Collins para. 3.
03. To facilitate tracking and collection of ad performance data
from the Web properties, Collins maintains custom tags, program
code, navigation code, etc. A tag may comprise a piece of code
that is created by the system and placed on relevant webpages of a
given website to allow automatic tracking and collection of data
indicative of a customer session on the advertiser website. Collins
para. 49.
04. A conversion counter is the simplest analytics data collection
technique available. With conversion counter analytics, the
advertiser places a tag on pages where revenue is generated. This
data collection mechanism generates enough data to provide
optimization on creative weighting. It should be further noted that
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in one embodiment a direct accreditation method may be applied
to the conversion counter. In the conversion counter approach,
visitor state may be stored on the client device, e.g., as a client
side cookie. Alternatively, the conversion counter approach may
implement server-side storage of visitor state, which allows for
improved performance and scalability at the cost of additional
storage in a given pod. In another embodiment, a sampling
method is utilized whereby only a random number of unique
visitors, for example, 10 percent, are tracked, reducing data
collection and storage requirements. Collins para. 104.
Broman
05. Broman is directed to performing a one-to-many comparison of
voice prints to determine if a particular caller voice print matches
any one of many known voice prints in order to perform an action
related to a financial transaction account. Broman para. 2.
06. Aside from credit card companies, many other entities receive
calls from customers and desire a way to verify the true identity of
the callers. This verification can be useful, for example, in
determining whether to execute a particular transaction requested
by a caller. Accordingly, a need exists for a more reliable way to
minimize fraud in telephonic transactions or other transactions
involving oral communications, or to screen callers for other
purposes during those transactions. Broman para. 6.
07. A caller’s voice print represents an electronic recording of a
caller's voice, and the known voice prints represent electronic
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recordings of persons having a particular known characteristic.
Bromanpara. 15.
08. Broman’s server compares the customer’s voice print with
multiple known voice prints to determine any substantial matches,
meaning that the customer’s voice print and one of the known
voice prints are likely from the same person. The identification of
any matches can be used for a variety of purposes, such as
determining whether to authorize a transaction requested by the
customer. By comparing the customer’s voice print with the
multiple known voice prints, associated with persons having
attempted fraudulent transactions, the system can determine
whether this customer is likely attempting to interact with another
person’s credit card account based upon any matches with the
known voice prints. Bromanpara. 17.
09. Broman’s server can optionally use the results of processing to
determine whether to authorize particular transactions for
customers relating to the recorded voice prints in the processed
files. For example, it can automatically and programmatically
deny the requested transaction if any matches are found for the
caller voice print in question. Broman para. 50.
Dake
10. Dake is directed to improving file management within a
computer and communication system. Dake 1:6—9.
11. A file management system typically comprises a client and a
server. The client typically sends a file request to a server. The
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Application 11/520,351
server associates a unique identifier with the file name, identifies
location information for the file, and stores it with the unique
identifier. The server then sends the unique identifier back to the
client. The client receives the unique identifier and uses it in lieu
of the file name for subsequent file requests. A unique identifier
is assigned to a file name to reduce bandwidth demands on the
interconnect systems. Because a file name may comprise many
characters, the interconnect system may have to transport a
relatively large number of bits. To reduce this problem, the server
may assign a unique identifier to each file name and send the
unique identifier to the client. The unique identifier is typically
smaller in length than the file name. For example, a unique
identifier may have a length of 32 or 64 bits. The client may then
use the unique identifier for subsequent file requests. Dake 2:15—
45.
ANALYSIS
Claims 1—3, 12—14, and 20 rejected under 35 U.S.C. § 103(a) as
unpatentable over Collins and Broman
We adopt the Examiner’s findings and analysis from the Final Action 2—
4 and the Answer 7—8 and reach similar legal conclusions. In particular, we
are not persuaded by Appellants’ argument that Broman fails to describe a
conversion notification generated by an advertiser in response to a
conversion action. App. Br. 6. Collins describes financial transactions in
the form of advertising conversions into sales. Broman shows that it was
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known that various financial transactions were susceptible to fraud and
describes a generic manner of detecting such fraud by comparing some
attribute, in the case of Broman, a voice print, of a customer to the same
attribute from known fraudulent parties. Broman, thus, describes a
transaction notification to a server generated by a merchant in response to a
transaction. Thus, Broman shows the need for fraud detection and the
generic approach of testing whether a given customer had a history of fraud
by comparing a customer attribute to those of known fraud practitioners. It
is not necessary for Broman to describe the specific context in Collins, as
Broman describes a generic approach that one of ordinary skill would have
immediately seen to be applicable to sales in Collins. The remaining claims
are argued on the basis of claim 1.
Claims 4—6, 8, 9, 15—17, 21, and 22 rejected under 35 U.S.C. § 103(a) as
unpatentable over Collins, Broman, and Dake
Claim 5 recites
[]
automatically generating a unique identifier;
generating and storing a file having the automatically generated
unique identifier as a filename in a web server directory of a
website, the stored file being accessible to a verification process
by the filename;
[]
providing, by one or more processors, the automatically
generated unique identifier and conversion notification to a
second device to initiate the verification process to confirm the
conversion action based on a determination that the
automatically generated unique identifier was previously
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generated and stored, but not previously submitted with a
conversion notification.
Claim 5.
We are persuaded by Appellants’ argument that Broman does not
suggest “that a voice print could be ‘previously generated and stored, but not
previously submitted,’ as recited by claim 5.” App. Br. 6. The Examiner
makes no findings that this limitation is described, but only that some other
unique identifier, not acoustically generated is used.
Claims 6, 8, and 9 depend from claim 5. Claims 16, 17, 21, and 22 have
limitations similar to claim 5. The remaining claims 4 and 15 are not
separately argued.
Claim 7 rejected under 35 U.S.C. § 103(a) as unpatentable over Collins,
Broman, Dake, and Brooks
This claim depends from claim 5.
Claims 1—9, 12—17, and 20—22 rejected under 35 U.S.C. § 101 as directed to
non—statutory subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, “[w]hat
else is there in the claims before us?” [] To answer that
question, [] consider the elements of each claim both
individually and “as an ordered combination” to determine
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whether the additional elements “transform the nature of the
claim” into a patent-eligible application. [The Court] described
step two of this analysis as 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 Corp., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct.
1289 (2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
Appellants argue claim 1 alone. Appellants thus waive arguments as to
the remaining claims.
The preamble to claim 1 recites that it is a secure conversion tracking
method. The three steps in claim 1 result in a Boolean valid/invalid
determination. The Specification, at paragraphs 4 and 5, recites that the
invention relates to solving conversion fraud. Thus, all this evidence shows
that claim 1 is directed to determining whether a transaction resulting from
an ad (a conversion) is valid, i.e., fraud detection. The Examiner more
broadly finds that the claims are directed to evaluating an advertising
campaign and that is a method of organizing human activity and a
fundamental economic practice. Ans. 5.
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It follows from prior Supreme Court cases, and Bilski in particular, that
the claims at issue here are directed to an abstract idea. Like the risk
hedging in Bilski, the concept of fraud detection is a fundamental business
practice long prevalent in our system of commerce. The use of fraud
detection is also a building block of a market economy. Thus, fraud
detection, like hedging, is an “abstract idea” beyond the scope of § 101. See
Alice 134 S. Ct. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of fraud detection at issue here. Both
are squarely within the realm of “abstract ideas” as the Court has used that
term. See Alice 134 S. Ct. at 2357.
We conclude that the claims at issue are directed to a patent-ineligible
concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, [] wholly generic computer
implementation is not generally the sort of “additional
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featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to received data, compare parameters, and determine matching
values amounts to electronic data query and retrieval—one of the most basic
functions of a computer. All of these computer functions are well-
understood, routine, conventional activities previously known to the
industry. In short, each step does no more than require a generic computer
to perform generic computer functions. The result of the claims is a Boolean
determination, i.e., a mathematical result of true or false as to validity. The
claims do no more than produce the result of a mathematical algorithm, the
epitome of an abstract idea.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellants’ method claims
simply recite the concept of fraud detection as performed by a generic
computer. The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they 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
fraud detection using some unspecified, generic computer. Under our
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precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice 134 S. Ct. at 2360.
As to the system claims, they
are no different from the method claims in substance. 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.
This Court has long “wam[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Id. at 2360.
We are not persuaded by Appellants’ argument that
even if the claims involve the abstract idea ... as asserted by
the Examiner (which the Applicant does not concede), the
pending claims do not pre-empt all applications of the asserted
Abstract idea. Rather, the pending claims recite specific
combinations of elements.
Reply Br. 1. Appellants essentially argue that an abstract idea, once
articulated, loses its abstraction because the words used to articulate the idea
are specific. This is not the case. Communicating an abstract concept does
not make the concept non-abstract.
We are not persuaded by Appellants’ argument that
[t]his combination of features is directed to a real-world
implementation that improves the ability of a computer system
to provide “secure conversion tracking” that distinguishes
between valid and invalid conversion notifications, without
requiring the computer system to maintain secret keys, perform
re-keying, or perform key-versioning.
Id. Appellants essentially argue that because an abstract concept improves
functioning, it is no longer abstract. But all abstract advice improves things
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in its applied context. Appellants are arguing that applying this advice in a
particular context removes the abstract nature. That the claims do not pre­
empt all forms of the abstraction or may be limited to the abstract idea in the
e-commerce setting do not make them any less abstract. See OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—1361 (2015).
CONCLUSIONS OF LAW
The rejection of claims 1—3, 12—14, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Collins and Broman is proper.
The rejection of claims 5, 6, 8, 9, 16, 17, 21, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over Collins, Broman, and Dake is improper.
The rejection of claims 4 and 15 under 35 U.S.C. § 103(a) as
unpatentable over Collins, Broman, and Dake is proper.
The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over
Collins, Broman, Dake, and Brooks is improper.
The rejection of claims 1—9, 12—17, and 20—22 under 35 U.S.C. § 101 as
directed to non—statutory subject matter is proper.
DECISION
The decision to reject claims 1—9, 12—17, and 20-22 is affirmed.
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No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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