Ex Parte Banerjee et al

Patent Trial and Appeal Board

Mar 28, 2018

12770947 (P.T.A.B. Mar. 28, 2018)

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.
12/770,947 04/30/2010 Sudeshna Banerjee 4068US1.014033.767 1669
69603 7590 03/30/2018
Rank of America
EXAMINER
c/o Moore and Van Allen, PLLC
P.O. Box 13706
CAO, VINCENT M
3015 Carrington Mill Boulevard, Suite 400
RESEARCH TRIANGLE PARK, NC 27709
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
boauspto @ mvalaw. com
u sptomail @ m valaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SUDESHNA BANERJEE, THAYER S. ALLISON JR.,
DEBASHIS GHOSH, DAVID JO A, KURT D. NEWMAN,
HEMANT KAGADE and YANGHONG SHAO 1
Appeal 2016-007587
Application 12/770,947
Technology Center 3600
Before JAMES R. HUGHES, SCOTT B. HOWARD, and
JOHN D. HAMANN, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s decision rejecting claims 1, 3—19, and 21—32. Claims 2 and 20
have been canceled. Non-Final Act. 1—2; App. Br. I.2 We have jurisdiction
under 35 U.S.C. § 6(b).
1 According to Appellants, the real party in interest is Bank of America
Corporation. App. Br. 1.
2 We refer to Appellants’ Specification (“Spec.”) filed Apr. 30, 2010;
Appeal Brief (“App. Br.”) filed Nov. 23, 2015; and Reply Brief (“Reply
Br.”) filed Aug. 2, 2016. We also refer to the Examiner’s Non-Final Office
Appeal 2016-007587
Application 12/770,947
We affirm.
Appellants ’ Invention
The invention generally relates to “providing an interactive mobile
commerce system” (Spec. 11). More particularly, the invention relates to
apparatuses, systems, computer program products, and methods for having
stored thereon programs configured to cause a processor to perform a
multiphase deduplication process. The multiphase deduplication process
(method) analyzes all allocated blocks stored in a source storage targeted for
backup, determines if the blocks are duplicated in a vault storage, and stores
all of the blocks that are unique non-duplicate blocks in the vault storage.
Spec. H9—12; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A computer-implemented method comprising:
providing, using a computing device processor, a
computer processor executing computer readable instruction
code specifically structured to cause the computer processor to
perform the following operations:
communicating with a consumer’s mobile device to
receive location information associated with the consumer's
mobile device;
determining, using the location information, the
consumer’s location relative to a location of a merchant;
Action (Non-Final Rejection) (“Non-Final Act.”) mailed May 27, 2015, and
Answer (“Ans.”) mailed June 3, 2016.
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mapping, over time based on the consumer location
relative to the location of the merchant, consumer shopping
trends;
providing an offer to purchase an offered product from the
merchant to the consumer’s mobile device while the consumer is
at the merchant location based at least partially on the
consumer’s location relative to the merchant and the consumer
shopping trends, wherein the offered product comprises a price
amount;
receiving transaction information relating to a transaction
between the merchant and the consumer, wherein the transaction
information comprises product information related to products
purchased by the consumer;
determining the products purchased by the consumer does
not include the offered product;
determining that at least one of the products purchased by
the consumer is similar to that of the offered product, thus
resulting in at least one similar product;
determining whether the price amount of the offered
product is less than a price of the at least one similar product;
determining that the consumer affirmatively rejected the
offer based on determining whether the price amount of the
offered product is less than the price of the at least one similar
product;
determining that the consumer lacks interest in the offer
based at least partially on the indication of the affirmatively
rejected offer and a comparison of the number of times the
consumer’s mobile device has been proximate to the location of
the merchant over a period of time and the number of financial
transactions associated with the consumer during that period of
time and based on whether the price amount of the offered
product is less than the price of the at least one similar product;
providing to the consumer’s mobile device via the
communication device over the distributed network, in response
to determining the consumer lacks interest in the offer, a survey
comprising questions related to the offer and merchant in which
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the consumer lacks interest, including questions requesting a
type of product that the consumer is interested in purchasing, an
amount the consumer that is willing to spend on the product, how
far the consumer is willing to travel to purchase the product, a
brand of product that the consumer is interested in buying and a
product model that the consumer is interested in buying;
receiving from the consumer’s mobile device, via the
communication over the distributed network, a completed survey
from the consumer, wherein the completed survey comprises
questions answered by the consumer about the offer and the
merchant;
modifying the offer based on at least receiving the
completed survey, wherein the offer is modified to feature a
product that is selected based on the consumer’s answers to the
questions related to the offer and merchant; and
providing to the consumer's mobile device, via the
communication device over the distributed network the modified
offer to the consumer, wherein the modified offer is provided to
the consumer on the mobile device while the consumer is still at
the merchant location, wherein it is determined that the consumer
is still at the merchant location based on further communicating
with the consumer’s mobile device to receiving location
information associated with the consumer's mobile device.
Rejection on Appeal
The Examiner rejects claims 1, 3—19, and 21—323 under 35 U.S.C.
§ 101 as being directed to patent-ineligible subject matter.
3 We note that claim 31 recites “[t]he system of claim 30.” Independent
claim 30, from which claim 31 depends, recites “[a]n apparatus.” See App.
Br. 40-42. Appellants do not separately address claims 30 and 31.
Accordingly, we need not address this issue. In the event of further
prosecution, we invite the Examiner to address the apparent ambiguity in
claims 30 and 31.
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ISSUE
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issue before us follows:
Did the Examiner err in finding Appellants’ claims were directed to
patent ineligible subject matter under 35 U.S.C. § 101?
ANALYSIS
Appellants argue independent claims 1, 16, 18, 25, 30, and 32 (as well
as dependent claims 3—15, 17, 19, 21—24, 26—29, and 31) together as a group
with respect to the § 101 rejection. See App. Br. 22—28. We select
independent claim 1 as representative of Appellants arguments with respect
to claims 1, 3-19, and 21-32. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner rejects the claims as being directed to patent-ineligible
subject matter in that “the claimed invention is directed to a judicial
exception (. . . an abstract idea) without significantly more”—“concepts of
targeted offers based on user information, determining user response to
offers, collecting market data from the customer regarding the offer, and
providing follow up offers” that are “fundamental economic practices used
in the arts of marketing and market research.” Non-Final Act. 2; see also
Non-Final Act. 2—3; Ans. 2—5. Appellants contend that the claims are not
directed to an abstract idea because the Examiner’s interpretation of the
claims is a “broad over simplification” (App. Br. 23), the Examiner has
failed to provide “evidentiary support” for the rejection (id. at 24, citing
PNC Bank v. Secure Axcess, LLC, CBM 2014-00100, Paper 10, slip op. at
21 (PTAB Sept. 9, 2014)), “the Office has not sufficiently tied the language
of the claims to the purported abstract idea” (App. Br. 24), “the claims are
not merely directed towards an abstract idea, but. . . require a specified set
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of detailed steps necessary to accomplish the task that are sufficiently
distinguished from the general concepts” delineated by the Examiner (App.
Br. 25), and the claims “amount to significantly more than abstract idea
itself’ (App. Br. 26). See App. Br. 22—28; Reply Br. 2—6.
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77—80 (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. Assuming that a claim nominally falls within one of the statutory
categories of machine, manufacture, process, or composition of matter, the
first step in the analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts” {id.), e.g., to an abstract
idea. For example, abstract ideas include, but are not limited to,
fundamental economic practices, methods of organizing human activities, an
idea of itself, and mathematical formulas or relationships. Id. at 2355—57. If
the claims are not directed to an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
considered “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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 78—79). This second step is described as “a search for an “‘inventive
concept”’—i.e., an element or combination of elements that is ‘. . .
significantly more than . . . the [ineligible concept] itself.’” Id. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72—73).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Alice Step 1 Analysis
Turning to the first step of the eligibility analysis, “the first step in the
Alice inquiry . . . asks whether the focus of the claims is on the specific
asserted improvement in computer capabilities ... or, instead, on a process
that qualifies as an ‘abstract idea’ for which computers are invoked merely
as a tool.” Enfish, 822 F.3d at 1335—36. “The abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” McRO, Inc. v. Bandai Namco
Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting
O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1853)). “We therefore look
to whether the claims . . . focus on a specific means or method that improves
the relevant technology or are instead directed to a result or effect that itself
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is the abstract idea and merely invoke generic processes and machinery.”
McRO, 837 F.3d at 1314.
The Examiner finds claim 1 is directed to the abstract ideas of
“collecting user data, tracking user response, facilitating user feedback, and
customizing marketing materials” that are “fundamental economic practices
known in the arts of marketing and market research.” Ans. 3; see also Non-
Final Act. 2—3; Ans. 2-4. Conversely, the Appellants attack the Examiner’s
findings as being a “broad over simplification” and lacking “evidentiary
support” (App. Br. 23), contend the claims require specific, detailed steps
distinguishing the recited method from the Examiner-delineated abstract
concepts (see App. Br. 25), and also contend the claims are “directed to an
improvement to computer functionality” (Reply Br. 3 (citing Enfish, 822
F.3d at 1335—36). See App. Br. 22—26; Reply Br. 2-4. We agree with the
Examiner that Appellants’ claim 1 (and the other pending claims) are
directed to a patent-ineligible abstract ideas or concepts.
Instead of using a fixed definition of an abstract idea and analyzing
how claims fit (or do not fit) within the definition, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen — what prior cases were about,
and which way they were decided.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)). As part of this
inquiry, we must “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).
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Here, Appellants’ claims generally, and independent claim 1 in
particular, relate to collecting information (receiving location information,
receiving transaction information, and receiving completed survey
information), as well as analyzing and manipulating information:
determining the consumer’s location relative to a merchant, mapping the
consumer’s shopping trends, providing an offer based on the shopping
trends, determining the products purchased, determining the consumer
purchased a product similar to the offered product, determining that the price
of the offered product is less than that of the similar product and (based on
this) determining the consumer rejected the offer based on price,
determining the consumer lacks interest in the offer based on the consumer’s
rejection of the offer based on price and the number of times the consumer
has been proximate to the merchant and the number of transactions
associated with the consumer, providing the consumer a survey comprising
questions related to the offer, and modifying the offer based on the
completed survey. See claim 1. That is, Appellants claims relate to
analyzing and manipulating data utilizing un-recited processes or algorithms
to provide various results (an offer, numerous determinations, and a revised
offer). Therefore, the claims broadly recite collecting, analyzing, and
manipulating information (data). See Abstract; Spec. ]Hf 9-12. This is
consistent with how Appellants describe the claimed invention (see App. Br.
2-6). See Spec. H 4, 5, 7-15, 40-42, 4AA6, 60, 66, 67, 69, 7^84, 89, 90,
96—100, 103—106; Figs. 8—10. Contrary to Appellants’ assertions (see App.
Br. 22—26; Reply Br. 2-4), the present claims are directed to an abstract
idea, in that the instant claims are analogous to a number of cases in which
courts have identified similar claims as encompassing abstract ideas.
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Our reviewing court has held that abstract ideas include gathering,
analyzing, and manipulating information. See Elec. Power, 830 F.3d at
1354 (finding claims directed to a “combination of. . . abstract-idea
processes .... of gathering and analyzing information” to be abstract).
Similarly, our reviewing court has held that abstract ideas include gathering,
analyzing, and storing information. See Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC., 874 F.3d 1329, 1337—38 (Fed. Cir. 2017) (finding
claims directed to the functional results of accumulating, converting, and
monitoring records manipulate data “but fail[] to do so in a non-abstract
way” {id. at 1338)); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat'l Ass'n., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (finding the “claims
generally recite . . . extracting data . . . [and] recognizing specific
information from the extracted data” (id. at 1345) and that the “claims are
drawn to the basic concept of data recognition” (id. at 1347)).
Here, the collection, analysis, and manipulation of information
(data)—in the form of collecting specific data, analyzing and evaluating that
data (the determinations), and the manipulation of the data and resulting
determinations (mapping, providing an offer, providing a survey, and
providing a revised offer)—are analogous to the abstract ideas of collecting,
analyzing, and manipulating information discussed in Elec. Power, Two-
Way Media, and Content Extraction. Appellants’ claims can be
distinguished from patent-eligible claims such as those in Enfish (directed to
“a specific improvement to the way computers operate.” Enfish, 822 F.3d at
1336). Appellants’ claims are directed to the results of data analysis and
manipulation (the various determinations, providing a survey, and providing
the offers) rather than “a particular way of performing” or “inventive
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technology for performing those functions” or, in other words, “achieving]
these results in a non-abstract way.” Two-Way Media, 874 F.3d at 1337—38.
In other words, “the focus of the claims is not on such an improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools.” Elec. Power, 830 F.3d at 1354.
With respect to Appellants’ arguments concerning the Examiner’s
prima facie case, we note that PNC Bank is a nonprecedential PTAB
opinion, and therefore, not binding on this panel. Moreover, there are
significant differences between the attorney arguments that are presented in
a post-grant AIA-CBM proceeding such as PNC Bank compared to findings
and conclusions of an Examiner. See Icon Health & Fitness, Inc. v. Strava,
Inc., 849 F.3d 1034, 1042-44 (Fed. Cir. 2017) (discussing differences
between attorney arguments and the Examiner’s findings). Further, the
Panel in PNC Bank relied on more than the lack of persuasive evidentiary
support in determining that the claims were not directed to an abstract idea.
See PNC Bank, Paper 13, slip op. at 4 (PTAB Sept. 30, 2014) (recognizing
that the lack of evidence was only “one factor in our analysis” in denying
request for rehearing).
Thus, we agree with the Examiner that the claims are directed to the
abstract ideas of collecting, analyzing, and manipulating information.
Notably, this characterization is consistent with Appellants’ description of
the claimed invention. See Spec. H 113 (“computer-executable program
code . . . provided to a processor of a general purpose computer”), 116
(“general-purpose circuits perform the function by executing particular
computer-executable program code”).
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Alice Step 2 Analysis
Having found Appellants’ claims are directed to an abstract idea under
Alice’s step 1 analysis, we next address whether the claims add significantly
more to the alleged abstract idea. As directed by our reviewing Court, we
search for an ‘“inventive concept’ sufficient to ‘transform the nature of the
claim into a patent-eligible application.’” McRO, 837 F.3d at 1312 (quoting
Alice, 134 S. Ct. at 2355). The implementation of the abstract idea involved
must be “more than performance of ‘well-understood, routine, [and]
conventional activities previously known to the industry.’” Content
Extraction, 776 F.3d at 1347-48 (alteration in original) (quoting Alice, 134
S. Ct. at 2359). The “inventive concept” “must be significantly more than
the abstract idea itself, and cannot simply be an instruction to implement or
apply the abstract idea on a computer.” BASCOM Global Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016).
Here, the Examiner determined that Appellant’s claims do not add
significantly more. See Non-Final Act. 2—3; Ans. 4—5. Appellants, on the
other hand, contend the claims recite, inter alia, “[t]he generation,
presentation, and subsequent review of the survey [which] is akin to a
physical process of surveying” that the PTAB found to be patent-eligible in
U.S. Bancorp v. Solutran. App. Br. 27 (citing U.S. Bancorp v. Solutran,
Inc., CBM2014—00076 (PTAB Aug. 7, 2014) (Paper 16)). Solutran is
unpersuasive for the same reasons as PNC Bank {supra). Appellants further
contend the “claims require positioning systems” (App. Br. 27), solve a
technological problem similar to Diehr (see App. Br. 28, citing Diamond v.
Diehr, 450 U.S. 175, 187 (1981)), and include “an inventive concept” in that
“the additional recited elements amount[] to significantly more than the
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abstract idea” (Reply Br. 5, citing Bascom, 827 F.3d at 1349). See App. Br.
26—28; Reply Br. 4—6.
Appellants fail to persuade us of error in the Examiner’s rejection
with respect to the second Alice step. Here Appellants conflate the Alice
two-part analysis and do not address the Examiners’ findings. To the extent
Appellants’ arguments invoke DDR Holdings {see Reply Br. 5—6)—in that
the instant claims improve the operation of a computer system {supra)—we
disagree. In DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014), the court held that a claim may amount to more than an abstract
idea recited in the claims when it addresses and solves problems only
encountered with computer technology and online transactions, e.g., by
providing (serving) a composite web page rather than adhering to the
routine, conventional functioning of Internet hyperlink protocol. See DDR
Holdings, 773 F.3d at 1257—59. In contrast, claim 1 performs a process of
analyzing and manipulating information, utilizing conventional computer
networks and systems. See Ans. 4—5; Spec. Tflf 9—12, 113, 116; Fig. 1.
Despite Appellants’ arguments to the contrary (analogizing their claims to
those in BASCOM and DDK), nothing in the claim recites a “specific
improvement to the way computers operate” {supra). The analysis and
manipulation of customer information and creation of surveys and/or offers
based on that information, is not a solution to a technical problem as
discussed in DDR Holdings. Providing an offer, determining various
intermediate results, creating and providing a survey, evaluating the survey,
and providing a modified offer, are all commercial solutions to a consumer
marketing problem {see Act. 2—3; Ans. 2-4), not a technical solution to a
computer or networking problem. This commercial solution may be assisted
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using a general purpose computer to perform the data collection, analysis,
and manipulation processes, but does not improve how the computer itself
functions. As we previously explained, the instant claims are more akin to
the claims for analyzing information found to be abstract in Elec. Power,
830 F.3d at 1353.
We agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent
eligible application. See e.g., Ans. 2-4. Indeed, the claim merely recites
functions (processes) for presenting offers and surveys based on analyzed
and manipulated consumer data. Such steps are all routine and conventional
and well-understood computer functions of a general processor. The
Specification supports this view in discussing the processes implemented in
software which operates on generic computers to perform the recited data
manipulation steps. See Spec. Tflf 113, 116. Such convention computer
processes “do not alone transform an otherwise abstract idea into patent-
eligible subject matter.” FairWarning IP, LLC v. Iatric Systems, Inc., 839
F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under § 101 of independent claims 1, 16, 18, 25, 30,
and 32, as well as dependent claims 3—15, 17, 19, 21—24, 26—29, and 31,
which were not argued separately.
CONCEUSION
Appellants have not shown that the Examiner erred in rejecting claims
1,3-19, and 21-32, under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner’s rejections of claims 1, 3—19, and 21—32.No
time period for taking any subsequent action in connection with this appeal
maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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