International Business Machines Corporation

Patent Trials and Appeals Board

Mar 13, 2020

14153217 - (D) (P.T.A.B. Mar. 13, 2020)

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.
14/153,217 01/13/2014 TAMER E. ABUELSAAD END920130173US1 4757
87334 7590 03/13/2020
IBM END IPLAW (GLF)
c/o Garg Law Firm, PLLC
800 Bonaventure Way, suite 115
Sugar Land, TX 77479
EXAMINER
CHOY, PAN G
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/13/2020 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):
dpandya@garglaw.com
garglaw@gmail.com
uspto@garglaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TAMER E. ABUELSAAD, GREGORY J. BOSS,
JOHN M. GANCI JR., and CRAIG M. TRIM
____________

Appeal 2019-002702
Application 14/153,217
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
RYAN H. FLAX, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134(a) involving claims to a
method for pricing data according to usage. The Examiner rejected the
claims as reciting patent-ineligible subject matter. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
“A data store is a repository of data. Generally, the data in a data store
does not have to conform to any particular form or structure” (Spec. ¶ 2). A

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the Real Party in Interest as International
Business Machines Corporation (see Appeal Br. 2).
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“data store according to the illustrative embodiments contains numerous data
cubes” (id. ¶ 13). “A data cube is a quantum of data that can be sold,
purchased, borrowed, installed, loaded, or otherwise used in a computation”
(id.). The Specification teaches “that selling or trading data by bundling
with an application restricts the utility of the data as well as the market for
the data” (id. ¶ 16). “[T]he pricing of data cubes has to be use-related, such
that the price a user pays for a data cube, or a part thereof, is related to the
utility of that data cube, or a part thereof, in the user’s query” (id. ¶ 18).
The Claims
Claims 1–11 and 14–22 are on appeal. Claim 1 is reproduced below:
1. A method for pricing data according to usage, the method
comprising:
identifying, by using a processor, a set of data cubes
according to a set of cube selection parameters, the set of data
cubes being usable for answering a query;
analyzing, by using the processor, a manner in which a
first subset of data cubes is expected to participate in the query;
removing, responsive to the manner of participation in
query being subject to a restriction, the first subset of data
cubes from the set of data cubes as disqualified from
participating in the query;
selecting, by using the processor, a second subset of
participating data cubes from the data cubes remaining in the
set;
computing, by using the processor, an accuracy level of a
result-set of the query;
determining, by using the processor, that an improvement
in the accuracy level is achieved by having a new data cube
participate in the query, the new data cube being distinct from
the data cubes remaining in the set;
producing, by using the processor, a preview of the
improvement in the accuracy level of the result set, the preview
including a revised pricing for executing the query based upon
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the improvement in the accuracy level achieved by having the
new cube participate in the query; and
modifying, by using the processor, responsive to the
preview showing that the improvement exceeds a threshold
improvement, the query, wherein the modified query when
executed uses the new data cube.

The Rejection
The Examiner rejected claims 1–11 and 14–22 under 35 U.S.C. § 101
as directed to an abstract idea (Final Act. 7–14).
The Examiner finds the claims are “directed to a method and system
providing pricing data in data cube to a user for payment” (Final Act. 9).
The Examiner finds the claimed “steps are merely directed to 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’” (id. at 10).
Appellant responds that “claim 1 is directed to . . . a technological
improvement in querying data by selecting data cubes for the query in order
to improve an accuracy level of the query” (Appeal Br. 11).
Principles of Law
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. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
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
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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.”).
Concepts determined to be abstract ideas, and therefore 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) and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include, for example,
physical and chemical processes, such as “molding rubber products”
(Diamond v. Diehr, 450 U.S. 175, 191 (1981)) or software “purport[ing] to
improve the functioning of the computer itself” (Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)).
If a claim is determined to be “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 United States Patent and Trademark Office published guidance
on the application of 35 U.S.C. § 101. USPTO’s 2019 Revised Patent
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Subject Matter Eligibility Guidance (“Guidance”).2 Under the Guidance, in
determining what concept the claim is “directed to,” 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) (Guidance Step 2A, Prong 1);
and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)) (Guidance Step 2A, Prong 2).
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 contains an “‘inventive concept’ sufficient to ‘transform’”
the claimed judicial exception into a patent-eligible application of the
judicial exception. Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 82).
In so doing, we thus consider whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine and
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.
(Guidance Step 2B). See Guidance, 84 Fed. Reg. at 54–56.
Analysis
Applying this USPTO Guidance and Supreme Court’s direction to the
facts on this record, we find that Appellant’s claims 1–11 and 14–22 are

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50–57 (January 7, 2019).
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directed to patent-ineligible subject matter. Because the same issues are
presented for each of the claims, we focus our consideration on
representative claim 1. The same analysis applied below to claim 1 also
applies to the other rejected claims.
A. Guidance Step 1
We consider whether the claimed subject matter falls within the four
statutory categories set forth in § 101, namely “[p]rocess, machine,
manufacture, or composition of matter.” 2019 Guidance 53–54; see
35 U.S.C. § 101. Claim 1 recites a “method” and claims 14 rand 20 recite
either a “computer program product” or “computer system” and, thus, fall
within the “process,” and “machine” categories respectively. Consequently,
we proceed to the next step of the analysis.
B. Guidance Step 2A, Prong 1
The Guidance instructs us first to determine whether a judicial
exception to patent eligibility is recited in the claim. The Guidance
identifies three judicially-excepted groupings identified by the courts as
abstract ideas: (1) mathematical concepts, (2) certain methods of organizing
human behavior, such as fundamental economic practices, and (3) mental
processes.
Claim 1 reasonably falls within two of the three judicially-excepted
groupings listed in the Guidance: fundamental economic practices and
mental processes. The abstract concept of mental processes applies because
the “claimed steps can be performed by a human analog (i.e., by hand or
thinking)” (Final Act. 11). Our reviewing court in CyberSource instructs
that “a method that can be performed by human thought alone is merely an
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abstract idea and is not patent-eligible under § 101.” CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1373, 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.”). The abstract concept of fundamental economic practices applies
because claim 1 is “directed to the abstract idea of determining a price, using
organizational and product group hierarchies.” Versata Dev. Grp. v. SAP
Am., Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015).
Claim 1 is drawn to a method for pricing data of any type. The
Specification acknowledges that the method “may be implemented with
respect to any type of data, data source, or access to a data source over a data
network” (Spec. ¶ 33).
We agree with the Examiner that the steps recited by the claims are
concepts that can be performed in the human mind or by a human with pen
and paper and, therefore, qualify as “mental processes” under the Guidance.
See Guidance at 52. For example, the Specification teaches that the
“identifying . . . a set of data cubes” step encompasses the situation where “a
seller of a healthcare-related data cube may not wish for the cube to
participate in a query where it becomes possible to identify an individual
patient” (Spec. ¶¶ 21, 22). This represents the mental process of selecting
which data to exclude from the pricing process, such as individually
identifiable medical data, as desired by the data seller. The remaining steps
also involve pricing data by on how desirable the data is for answer a query.
“The concept of data collection, recognition, and storage is undisputedly
well-known. Indeed, humans have always performed these functions.”
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Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
776 F.3d 1343, 1347 (Fed. Cir. 2014).
We also agree with the Examiner that the claimed invention is
analogous to the claims in Versata (see Final Act. 10), where our reviewing
court found “[u]sing organizational and product group hierarchies to
determine a price is an abstract idea that has no particular concrete or
tangible form or application.” 793 F.3d at 1333. Likewise, the instant
claims recite pricing data based on the utility of the data, which is “a
fundamental economic practice long prevalent in our system of commerce.”
Bilski v. Kappos, 561 U.S. 593, 611 (2010); see also buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014).
Accordingly, we conclude that the steps of claim 1 recites the judicial
exceptions of mental processes and fundamental economic processes.

Guidance Step 2A, Prong 2
Having determined that the claims are directed to a judicial exception,
the Guidance directs us to next consider whether the claims integrate the
judicial exception into a practical application. Guidance, Step 2A, Prong 2.
“[I]ntegration into a practical application” requires that the claim recite an
additional element or a combination of elements, that when considered
individually or in combination, “apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” Guidance at 54.
A judicial exception is not integrated into a practical application when
the claims are drawn to the mere use of “a computer as a tool to perform an
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abstract idea.” Guidance, 84 Fed. Reg. at 55; see Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335–6 (Fed. Cir. 2016) (determining whether the
claims at issue were focused on a “specific asserted improvement in
computer capabilities” or “a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool”).
Here, there is no practical integration of the abstract idea. Other than
the limitations directed to the abstract idea, discussed above, the invention is
claimed at a very high level of generality and relies upon standard
computing devices (see, e.g., Spec. ¶¶ 43, 49, 54 “data processing
environment 100 may be the Internet”; the “operating system may be a
commercially available operating system”; “data processing system 200 also
may be a tablet computer, laptop computer, or telephone device in addition
to taking the form of a PDA”). We appreciate that the mere fact that
standard devices are used in the claimed process is not dispositive in
determining whether an invention is claimed as a practical integration.
Appellant contends that the “claimed invention solves the recognized
problems with respect to the selection of most relevant data” and that
“[d]ata effectiveness preview in this [claimed] manner is unavailable in the
prior-art, whether for ascertaining the data’s value or utility or some other
purpose.” (Reply Br. 4, 5).
We are not persuaded by Appellant’s argument because the idea of
previewing something for potential purchase, whether trying on pants for fit,
playing a computer game at the store, or test driving a car, is a fundamental
economic practice and mental process that would be understood to be
available for any purchase.
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We note that the Specification does not describe any specific
algorithms for performing the pricing transactions, but merely provides the
general concept of computerizing known methods of pricing data. See Spec.
¶ 17 (“data is, or can be, a generalized commodity, which can be traded
independently from any trade involving applications or other restrictions.”).
Thus, the Specification is reasonably understood as teaching simple
computerization of pricing systems.
Appellant contends that “claim 1 is directed to are directed to a
technological improvement in querying data by selecting data cubes for the
query in order to improve an accuracy level of the query” (Appeal Br. 11).
Appellant contends
similar to the situation in McRO, it is the claimed determining
that an improvement in the accuracy level is achieved by having
a new data cube participate in the query, producing a preview of
the improvement in the accuracy level of the result set, the
preview including a revised pricing for executing the query
based upon the improvement in the accuracy level achieved by
having the new cube participate in the query, and modifying,
responsive to the preview showing that the improvement
exceeds a threshold improvement, the query, wherein the
modified query when executed uses the new data cube not the
use of generic network components, which improves the
existing technological process.
(Id. at 12).
We are unpersuaded by Appellant’s reliance on McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). McRO was a
computer based process that improved operations on the computer animation
process itself, while claim 1 uses mental processes and methods of
organizing human activity of deciding how to price data for sale.
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Unlike McRO, the computer in claim 1 is used as a tool to perform the
same method performed in the mind of a human deciding how much to
charge for particular information. That is, an encyclopedia salesman selling
volumes of an encyclopedia and of annual updates may reasonably choose to
price the volumes and annual updates based on the interest shown by the
purchaser and the relevance of the particular volume. This pricing would be
a mental step and fundamental economic practice that does not improve a
computer itself. Claim 1 does not integrate the return process steps into a
practical improvement because the steps simply computerize known mental
processes and methods of organizing human activity. Therefore, contrary to
McRO, where the ultimate product produced was a synchronized computer
animation that was itself the transformative use, the result of the presently
claimed method is drawn to a method of pricing data, which does not
improve the computer itself.
Therefore, claim 1 does not recite elements that integrate the abstract
idea into a practical application that is more than the abstract idea itself.
Instead, the claims recite conventional computer components that are used to
apply the mental process and method of organization of human activity of
pricing data. Alice makes clear that “[s]tating an abstract idea while adding
the words ‘apply it with a computer’ simply combines those two steps, with
the same deficient result.” Alice, 573 U.S. at 223.
C. Guidance Step 2B
Having determined that the judicial exception is not integrated into a
practical application, the Guidance requires us to evaluate the additional
elements individually and in combination to determine whether they provide
an inventive concept, such as a specific limitation beyond the judicial
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exception that is not well-understood, routine, conventional in the field, or
simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. See 84 Fed. Reg. 51.
Appellant does not argue that the pricing process recited in claim 1 is
drawn to something not well-understood, routine, or conventional. We note
that the claimed pricing concept does not alter the computer itself in any
structural way or improve its functioning and we see no meaningful
distinction between the type of financial practice claimed and “the concept
of intermediated settlement” held to be abstract in Alice, 573 U.S. at 219.
The facts here are like those in Credit Acceptance, where the court found
“[t]he invention’s ‘communication between previously unconnected
systems—the dealer’s inventory database, a user credit information input
terminal, and creditor underwriting servers,’ . . . does not amount to an
improvement in computer technology.” Credit Acceptance Corp. v.
Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017).
The rejection of the claims under 35 U.S.C. § 101 is affirmed.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–11, 14–22 101 Eligibility 1–11, 14–22

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED