Ex Parte Yan et al

Patent Trial and Appeal Board

Sep 19, 2017

14162079 (P.T.A.B. Sep. 19, 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.
14/162,079 01/23/2014 Rui Yan CLOGI.008C2 1065
101850 7590 09/21/2017
Knobbe, Martens, Olson & Bear, LLP
CORELOGIC (CLOGI)
2040 Main Street, Fourteen Floor
Irvine, CA 92614
EXAMINER
SHRESTHA, BIJENDRA K
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
jayna.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 RUI YAN, HOI-MING CHI,
SEONGJOON KOO, and JAMES BAKER
Appeal 2016-002882
Application 14/162,0791
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1—20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is CoreLogic Solutions,
LLC. “CoreLogic Solutions, LLC is a subsidiary of CoreLogic, Inc.”
(Appeal Br. 2.)
Appeal 2016-002882
Application 14/162,079
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “relates to computer processes for
detecting and assessing multiple types of risks in financial transactions.”
(Spec. 12.)
Claims 1 and 13 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A system for detecting and assessing risks, the system
comprising:
a computer system comprising one or more computing
devices, the computer system programmed, via executable code
modules, to implement:
a combined risk detection model for detecting and
assessing a plurality of risks in data, the combined risk detection
model configured to receive as input a plurality of input features
extracted from two or more of a plurality of risk detection
models, the plurality of risk detection models comprising:
a first risk detection model configured to generate a
first risk model score that is indicative of the presence of a first
risk in the data;
a second risk detection model configured to
generate a second risk model score that is indicative of the
presence of a second risk in the data; and
a third risk detection model configured to generate
a third risk model score that is indicative of the presence of a
third risk in the data, wherein the first risk detection model, the
second risk detection model, and the third risk detection model
are different models,
wherein the computer system is further programmed to:
determine combinability of the plurality of risk
detection models based at least partly on evaluating predictive
performance of scores from one or more combinations of the risk
detection models against historical data;
extract input features from the risk detection models
that are determined to be combinable for input into the combined
risk detection model, the input features selected based at least in
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part on an identified interaction between the scores from the
plurality of risk detection models, or an identified interaction
between respective scores from the plurality of risk detection
models and other input fields outside a scope of the respective
risk detection model; and
generate a composite risk score based at least in part
on calibrated scores from the models determined to be
combinable and the extracted input features; and
an output module that outputs the composite risk score
generated by the combined risk detection model and one or more
risk indicators to indicate individual risk factors that contributed
to the composite risk score.
REJECTION
Claims 1—20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(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.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
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claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to part one of the Alice framework, the Examiner
determines that the claims are directed to “[t]he concept of generating a
composite risk score by inputting extracted input features from plurality of
risk detection models that is determined to be combinable based on
predictive performance of scores from one or more combinations of risk
detection models” and that this “is a mathematical relationship/formula
which has been found by the courts to be an abstract idea.” (Final Action 3—
4, emphasis omitted.) The Examiner also determines that “the procedures
for generating a composite risk score consists [sic] of steps which can be
carried out by a human with pen and paper.” (Id.)
Appellants disagree and argue that “the claims are directed to a
system for detecting and assessing risks that includes a specific set of
computer components.” (Appeal Br. 7.) In particular, Appellants argue that
“[t]he alleged abstract concept cited in the Final Office Action . . . ignores
important limitations of the claims such as that the input features (used in
generating the composite risk score) are ‘selected based at least in part on an
identified interaction’” and that “[t]he claimed systems are able to examine
the interaction of risks and detect hidden risk patterns that otherwise may not
be easily detectable by individual models.” (Id.)
Under part one of the Alice framework, we “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) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
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Thus, although we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
The Specification provides evidence as to what the invention is
directed. In this case, the Specification discloses that the claimed invention
relates to “detecting and assessing various types of risks associated with
financial transactions, such as transactions involved in mortgage lending.”
(Spec. 1 6.) Claim 1 recites “a combined risk detection model. . .
comprising: a first risk detection model,” “a second risk detection model,”
“a third risk detection model,” a “computer system” to “determine
combinability of the plurality of risk detection models,” “extract input
features from the risk detection models,” “generate a composite risk score,”
and “output[] the composite risk score.” In short, the claims are directed to
collecting/inputting data, analyzing data, and outputting data.
In Electric Power Group, “[t]he focus of the asserted claims ... is on
collecting information, analyzing it, and displaying certain results of the
collection and analysis.” Elec. Power Grp., 830 F.3d at 1353. “[W]e have
treated collecting information, including when limited to particular content
(which does not change its character as information), as within the realm of
abstract ideas.” Id.
Additionally, the Federal Circuit has “recognized that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.”
Id. at 1354. Thus, a system, like the claimed system, “that employs
mathematical algorithms [e.g., risk detection models] to manipulate existing
information to generate additional information is not patent eligible.” See
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Digitech Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014). In view of the above, we are not persuaded that the
Examiner erred in determining that the pending claims are directed to an
abstract idea.
Appellants also argue that “[t]he Supreme Court has described the
concern that drives the abstract idea exception as being one of pre-emption,”
and that “[i]n the present case, no such preemption exists.” (Appeal Br. 8.)
We are not persuaded of error. Preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73],
CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013), affd, 134 S. Ct. 2347 (2014). Moreover, “[w]here a patent’s claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). In other words, “preemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Appellants further argue that “[t]he Final Office Action also cites no
evidence to support its finding that the claims are directed to ‘generating a
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composite score . . without adding significantly more.” (Appeal Br. 8.)
We do not find this argument persuasive of reversible error. There is no
requirement that examiners provide evidentiary support in every case before
a conclusion can be made that a claim is directed to an abstract idea.
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.
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) (footnote omitted).
Part two of the Alice framework has been described “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, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 72—73).
The introduction of a computer into the claims does not alter the
analysis at step two.
[T]he 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]” an abstract idea
“on ... a computer,” that addition cannot impart patent
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eligibility. This conclusion accords with the preemption concern
that undergirds our §101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Id. 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. Claim 1 relates to a computer
system for collecting/inputting data, analyzing data (using a combination of
risk models), and outputting data.
Regardless, Appellants argue that “[cjlaims 1—12 are analogous to the
patent-eligible subject matter in DDR Holdings .... In DDR Holdings, the
system takes two websites and merges them into a composite website for the
purpose of retaining website customers.” (Appeal Br. 10.) In particular,
Appellants argue that “[cjlaim 1 [sic, 13] recites (among other features),
‘extracting, on a physical computer processor, input features from the risk
detection models . . .”2 and that “[t]hese additional features of Claim 1
‘override[] the routine and conventional sequence of events’ and provide
‘significantly more’ to the claims.” {Id. at 11.)
We disagree. The claims in DDR Holdings “specify how interactions
with the Internet are manipulated to yield a desired result — a result that
overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” DDR Holdings, LLC v. Hotels.com,
2 Claim 1 contains similar language (“extract input features from the risk
detection models”).
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L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014). In other words, the invention
claimed in DDR Holdings does more than “simply instruct the practitioner to
implement the abstract idea with routine, conventional activity.” See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see
also DDR Holdings, 773 F.3d at 1259. In this case, the claims implement
the abstract idea of collecting/inputting data, analyzing data, and outputting
data with routine, conventional activity.
Appellants also argue that “the claims are a novel and non-obvious
improvement over any prior activities and therefore are not ‘well understood,
routine and conventional,’ which is sufficient for Claims 1—12 to recite
‘significantly more’ than any abstract idea.” (Appeal Br. 10.) We are not
persuaded of error. “The ‘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).
Taking the claim elements separately, the function performed by the
computer at each step is purely conventional. Using a computer to collect
data, analyze data, and output the results are basic computer functions.
Moreover, the Specification discloses that the invention can be implemented
using generic computer components. (See Spec. 1132.) In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. The claims do not, for example, purport to
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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 collecting/inputting data, analyzing data, and outputting the
results using some unspecified, generic computer. That is not enough to
transform an abstract idea into a patent-eligible invention. Alice, 134 S. Ct.
at 2360.
In view of the above, we are not persuaded that that Examiner erred in
rejecting claim 1 under § 101. Appellants rely on substantially the same
arguments with regard to independent claim 13, and for substantially the
same reasons, we are not persuaded that the Examiner erred in rejecting
claim 13 under § 101. Dependent claims 2—12 and 14—20 are not separately
argued and fall with claims 1 and 13. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
The Examiner’s rejection of claims 1—20 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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