Ex Parte Balestrieri et al

Patent Trial and Appeal Board

Jul 24, 2017

13260258 (P.T.A.B. Jul. 24, 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.
13/260,258 09/24/2011 Filippo Balestrieri 36MK-255183 8376
145169 7590 07/26/2017
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP (DXC)
379 Lytton Avenue
Palo Alto, CA 94301
EXAMINER
BYRD, UCHE
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
07/26/2017 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):
svpatents @ sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FILIPPO BALESTRIERI,
SUNDAR RAJARAM,
JULIE WARD DREW,
and ENIS KAYIS
Appeal 2015-005775
Application 13/260,258
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Filippo Balestrieri, Sundar Rajaram, Julie Ward Drew, and Enis Kayis
(Appellants) seek review under 35U.S.C. § 134 of a final rejection of
1 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed November 4, 2014) and Reply Brief (“Reply Br.,” filed May 12,
2015), and the Examiner’s Answer (“Ans.,” mailed March 12, 2015), and
Final Action (“Final Act.,” mailed June 4, 2014).
Appeal 2015-005775
Application 13/260,258
claims 1—15, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of eliciting customer preferences from
purchasing behavior surveys to consider survey data that include purchasing
choices for particular products, along with customer demographic and
behavioral data. Specification para. 6.
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 method, comprising:
[1] clustering survey respondents into two or more clusters
according to a data pattern identified in a dataset of
responses to survey questions that includes
product purchasing decision response data,
and
respondent and product attribute response data;
[2] producing, by a computer, from data associated with a given
cluster of the two or more clusters,
a model relating
purchasing decision response data
to
product attribute response data and respondent
attribute response data;
[3] generating, by a computer using the model, projected
purchasing decision response data for the cluster
by replacing a value relating to selected product attribute
data with an alternative value;
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[4] transforming the dataset by replacing purchasing decision
response data with the projected purchasing decision response
data;
and
[5] re-clustering survey respondents according to a data pattern
identified in the transformed dataset.
The Examiner relies upon the following prior art:
Reynolds US 2008/0065471 A1 Mar. 13, 2008
Blume US 2007/0244741 A1 Oct. 18,2007
Claims 1—15 stand rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—15 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Reynolds and Blume.
ISSUES
The issues of statutory subject matter turn primarily on whether market
research is abstract. The issues of obviousness turn primarily on whether the
references describe replacing data in the original dataset.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
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Facts Related to the Prior Art
Reynolds
01. Reynolds is directed to performing market research via
interviewing and analysis of the resulting interview data on a
communications network, and in particular, determining customer
decision-making factors that can be used to increase customer
loyalty and/or market share. Reynolds para. 2.
Blume
02. Blume is directed to analysis of consumer financial behavior,
and more particularly to analyzing historical consumer financial
behavior to accurately predict future spending behavior and likely
responses to particular marketing efforts, in specifically identified
data-driven industry segments. Blume para. 3.
03. Blume describes the membership function computing the
membership value for each segment as the predicted dollar
amount that the account holder will purchase in the segment given
previous purchase history. The dollar amount is projected for a
predicted time interval based on a predetermined past time
interval. These two time intervals correspond to the time intervals
of the input window and prediction windows used during training
of the merchant segment predictive models. Sorting the list by the
membership value identifies the merchant segments at which the
consumer is predicted to spend the greatest amounts of money in
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the future time interval, given their spending historically. Blume
para. 303.
ANALYSIS
Claims 1—15 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 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. CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014) (
(citing Mayo Collaborative Servs. v. Prometheus Labs., 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, in this case, the claims themselves and the
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Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in clustering survey respondents. The Specification at
paragraph 6 recites that the invention relates to eliciting customer preference
from purchasing behavior surveys. Thus, all this evidence shows that
claim 1 is directed to analyzing customer surveys, i.e., market research.
It follows from prior Supreme Court cases, and Bilski in particular, that
the claims at issue here are directed to an abstract idea. See Alice Corp. Pty.
Ltd., 134 S. Ct. at 2356. Like the risk hedging in Bilski, the concept of
market research is a fundamental sales practice long prevalent in our system
of commerce. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356. The use of
market research is also a building block of market economies. Thus, market
research, like hedging, is an “abstract idea” beyond the scope of § 101. See
Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the “abstract ideas” category in this case. See Alice Corp. Pty.
Ltd., 134 S. Ct. at 2357. 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 market research at issue here. See Alice
Corp. Pty. Ltd., 134 S. Ct. at 2357. Both are squarely within the realm of
“abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd.,
134 S. Ct. at 2357.
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Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing it, and
displaying certain results of the collection and analysis” are “a familiar class
of claims ‘directed to’ a patent ineligible concept”); see also In re TLI
Comma ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data collection, analysis, and
aggregation and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract
because they “focused on a specific asserted improvement in computer
animation”). As such, claim 1 is directed to the abstract idea of receiving,
analyzing, and aggregating data.
The remaining claims merely describe labels attached to data and abstract
analytic techniques. 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 if” 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
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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 preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (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.” Alice Corp. Pty. Ltd., 134 S. Ct. 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 cluster, produce, generate, replace, and transform data 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.
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
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simply recite the concept of market research as performed by a generic
computer. To be sure, the claims recite doing so by advising one to create a
model from aggregated data and use that model to create further research
data according to various criteria. But this is no more than abstract
conceptual advice on the parameters for such research and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
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. The 13 pages of specification spell
out different generic equipment and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of creating research data under different criteria
and parameters. They do not describe any particular improvement in the
manner a computer functions. Instead, the claims at issue amount to nothing
significantly more than an instruction to apply the abstract idea of market
research using some unspecified, generic computer. Under our precedents,
that is not enough to transform an abstract idea into a patent-eligible
invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural 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
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ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360 (alterations in original) (quoting
Mayo, 132 S. Ct. at 1294).
We are not persuaded by Appellants’ argument that the claims are novel
and non-obvious. Reply Br. 8—9. Eligibility of subject matter is a different
ground of rejection, and novelty per se does not transform an abstract idea
into a concrete idea.
We are not persuaded by Appellants’ argument that the claims are
similar to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (2014).
Reply Br. 9. Appellants contend that the claims recite
specific features that are not well-understood, routine and
conventional in the field, and add unconventional features that
confine the claims to a particular useful application and are
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment.
Reply Br. 10, 11. As we find supra, the independent claims do no more than
cluster, replace, and create data. Appellants’ arguments are conclusory and
do not provide any evidence that these are not routine data processing
operations.
Claims 1—15 rejected under 35 U.S.C. § 103(a) as unpatentable over
Reynolds and Blume
We are persuaded by Appellants’ argument that Blume fails to disclose
limitation [4] of transforming the dataset by replacing purchasing decision
response data with the projected purchasing decision response data. App.
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Br. 10—11. The Examiner finds that Blume’s paragraph 303 describes
projected purchasing decision data. Ans. 6. We agree so far as this goes,
but the claim also recites replacing original response data with this data in
the original response dataset. The Examiner presents no findings as to this
and we are unable to discern any such disclosure.
CONCLUSIONS OF LAW
The rejection of claims 1—15 under 35U.S.C. § 101 as directed to non-
statutory subject matter is proper.
The rejection of claims 1—15 under 35 U.S.C. § 103(a) as unpatentable
over Reynolds and Blume is improper.
DECISION
The rejection of claims 1—15 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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