Fred Ramberg et al.Download PDFPatent Trials and Appeals BoardSep 3, 201914305246 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. 14/305,246 06/16/2014 Fred Ramberg BT-091 7001 158771 7590 09/03/2019 Bottomline Technologies (DE), Inc. 325 Corporate Drive Portsmouth, NH 03801 EXAMINER PADOT, TIMOTHY ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 09/03/2019 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@dockettrak.com kfaust@bottomline.com rich.baker@bottomline.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte FRED RAMBERG and JERZEY BALA ____________ Appeal 2018-005311 Application 14/305,2461 Technology Center 3600 ____________ Before MICHAEL J. STRAUSS, DANIEL N. FISHMAN, and NABEEL U. KHAN, Administrative Patent Judges. KHAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection of claims 1–26. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellants identify Bottomline Technologies (DE) Inc. as the real party in interest. App. Br. 2. Appeal 2018-005311 Application 14/305,246 2 BACKGROUND THE INVENTION According to Appellants, their invention “relates to a data processing method and apparatus, more particularly, to a method and apparatus for predicting a next group of members to transition to another class. Spec. 1:5– 7. Exemplary independent claim 1 is reproduced below. 1. A computer implemented method for predicting the behavior or state of a negative occurrence class by scoring histories of members of the negative occurrence class against pasts of members of a positive occurrence class, the method comprising: identifying the positive occurrence class, wherein each of the members of the positive occurrence class were previously members of the negative occurrence class; determining with the computer positive occurrence class rules defining at least one cluster of the members of the positive occurrence class, wherein: the positive occurrence class rules are based on the pasts of the members of the positive occurrence class; and the pasts of the members of the positive occurrence class includes properties of the members of the positive occurrence class prior to becoming members of the positive occurrence class; determining with the computer a center of each of the at least one cluster of the members of the positive occurrence class; identifying the negative occurrence class, wherein each of the members of the negative occurrence class are currently members of the negative occurrence class; determining with the computer negative occurrence class rules defining at least one cluster of the members of the negative occurrence class, wherein: Appeal 2018-005311 Application 14/305,246 3 the negative occurrence class rules are based on the pasts of the members of the negative occurrence class; and the histories of the members of the negative occurrence class includes properties of the members of the negative occurrence class; determining with the computer a center of each of the at least one cluster of the members of the negative occurrence class; determining with the computer a nearest cluster distance for each cluster of the members of the negative occurrence class, wherein the nearest cluster distance is the distance between the center of a given cluster of the members of the negative occurrence class to the center of the nearest cluster of the members of the positive occurrence class; identifying with the computer the cluster of the members of the negative occurrence class having the smallest nearest cluster distance as the cluster of the members of the negative occurrence class that are most likely to next transition to members of the positive occurrence class. REJECTION2 Claims 1–26 stand rejected under 35 U.S.C. § 101. Final Act. 5–9. DISCUSSION LEGAL PRINCIPLES An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). 2 The Examiner has withdrawn the rejection of claims 1–13 under 35 U.S.C. § 112. Ans. 3. Appeal 2018-005311 Application 14/305,246 4 In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber Appeal 2018-005311 Application 14/305,246 5 products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must 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, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO recently published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and Appeal 2018-005311 Application 14/305,246 6 (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance. GUIDANCE STEP 1 The Examiner finds “that the method of claims 1-13 and apparatus of claims 14-26 are directed to potentially eligible categories of subject matter (process and machine, respectively).” Final Act. 5–6. Appellants do not dispute this finding. We agree with the Examiner and find the two independent claims, and the claims that depend from them, are directed to a statutory category, namely a process (claims 1–13) and a machine (claims 14–26). GUIDANCE STEP 2A - WHETHER THE CLAIMS ARE DIRECTED TO A JUDICIAL EXCEPTION The Examiner finds the claims “are directed to the abstract idea of analyzing information and presenting certain results, which is similar to the concept of collecting information, analyzing information, and presenting certain results.” Final Act. 6 (citing Electric Power Group v. Alstom, 830 F.3d 1350 (Fed. Cir 2016); FairWarning IP, LLC v. Iatric Systems, 839 F.3d 1089 (Fed. Cir 2016). Specifically, the Examiner analyzes each of claim 1’s Appeal 2018-005311 Application 14/305,246 7 limitations and finds they are directed to analyzing information and presenting results. Final Act. 6–7. Prong 1 of Step 2A Under the first prong of step 2A of the Guidance, we determine if the claims recite an abstract idea. Here, we agree with the Examiner that nearly every limitation of claim 1 analyzes information or performs some process or step that can be performed mentally or can be performed as a mathematical calculation. For example, limitations reciting “identifying the positive occurrence class” and “identifying the negative occurrence class” may be performed mentally. The Specification gives examples of a negative and positive occurrence class as newspaper subscribers and those that have unsubscribed, respectively. See Spec. 1:16–28. Identifying subscribers and former subscribers may be performed in the human mind or with the aid of a pen and paper for record keeping purposes. Keeping track of the “pasts” of these members can also be performed mentally or with the use of pen and paper. “[D]etermining . . . a center of each of the at least one cluster of the members of the” positive or negative occurrence class can also be done mentally. Additionally, this determination, which the Specification describes as determining the geometric center of the cluster (Spec. 13:17–20), involves a mathematical calculation. The claims also recite “determining . . . a nearest cluster distance for each cluster of the members of the negative occurrence class, wherein the nearest cluster distance is the distance between the center of a given cluster of the members of the negative occurrence class to the center of the nearest cluster of the members of the positive occurrence class.” The Specification describes the determination of the cluster distance as determining “the Euclidian distance between two Appeal 2018-005311 Application 14/305,246 8 cluster centers.” Spec. 15:2–4. Thus, determining a cluster distance is a step that can be done mentally, or is a mathematical calculation. Finally “identifying . . . the cluster of the members of the negative occurrence class having the smallest nearest cluster distance” is also a step that can be performed in the human mind. Both mental processes and mathematical calculations are categories of abstract ideas and thus, under prong one of the step 2A, we find the claims recite an abstract idea. Guidance, 84 Fed. Reg. at 52. Prong 2 of Step 2A Next we determine whether the claims recite a practical application of the recited judicial exception. Appellants argue that “the combination of additional elements when the claim is viewed as a whole amounts to significantly more than simply analyzing data and returning results. As described, the totality of the steps governed by the claimed invention provides software that improves another technical field, specifically predictive analysis and artificial intelligence.” App. Br. 16. Appellants argue the claims in the instant case are distinguished from the claims in Electric Power Group because the Appellants’ invention “describes a new technique providing additional capabilities in predictive analytics and artificial intelligence.” App. Br. 17. Similarly, Appellants distinguish the claims in FairWarning by arguing that Appellants’ invention “provide an improved method predictive analysis technique. Unlike FairWarning, it is not the mere incorporate of the computer that improves the existing technological process in the current application.” App. Br. 17; see also App. Br. 18–19 (arguing that the claims provide an improvement in computer or other technology). Appeal 2018-005311 Application 14/305,246 9 Appellants liken their claims to those in McRO3 arguing that their claims allow the computer to perform a function not previously performable by a computer, such as solving “the time prediction problem by use of particular rules.” App. Br. 20. Appellants also compare their claims to those in Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and argue that their claim elements have a particular arrangement and thus are directed to patent eligible subject matter. We are unpersuaded by Appellants’ arguments. Under prong 2 of step 2A, we look to see, amongst other things, if the claims include any additional elements that reflect an improvement in the functioning of a computer or to another technological field. Guidance, 84 Fed. Reg. at 54–55. Analyzing the claims limitations as a whole and individually, we do not find additional limitations, beyond the claimed abstract idea, that improve the functioning of a computer or another technological field. As we explained above, nearly every limitation of claim 1 recites a step that can be performed mentally or involves a mathematical calculation. Thus, we do not find any additional limitations, beyond those that recite the abstract idea, that reflect an improvement to the functioning of a computer or to another technical field. Appellants’ argument that their invention improves predictive analysis fails for this reason. Namely, the steps that improve predictive analysis, that of identifying positive and negative occurrence classes, determining rules that define clusters of those classes, determining the center of those clusters, determining nearest cluster distances, and identifying the cluster having the 3 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal 2018-005311 Application 14/305,246 10 smallest distance as the cluster most likely to next transition to members of the positive occurrence class, are all steps that can be performed mentally or involve mathematical calculations. Thus, we disagree that the claims include additional elements that improve the functioning of a computer or another technical field. We also determine that the additional claim limitations do not reflect an application of the judicial exception with, or by use of, a particular machine, a transformation or reduction of a particular article to a different state or thing, or a use of the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment. See MPEP § 2106.05(a)–(c), (e)–(h). GUIDANCE STEP 2B - WHETHER THE CLAIMS PROVIDE AN INVENTIVE CONCEPT In our analysis under step 2B, we look to see if the claims add limitations beyond the judicial exception that are not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)). Appellants’ arguments falling under this step are largely the same as those discussed above with respect to prong 2 of step 2A. Namely, Appellants argue that the claimed invention improves the technical field of predictive analysis as discussed above. App. Br. 7–8. We find Appellants’ arguments to be unpersuasive. As we explained above, the limitations Appellants point to are not beyond the abstract idea, but rather, are part of the abstract idea. Claim 1 does not recite any hardware components, other than a “computer.” However, this computer is described as a standard computer and thus we find the recitation of the computer as well-understood, routine and conventional. See Spec. 8:17–27. Appeal 2018-005311 Application 14/305,246 11 We, therefore, do not find the claims provide an inventive concept that is significantly more than the recited abstract idea. DECISION The Examiner’s rejection of claims 1–26 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended. See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation