Ex Parte Bene et al

Patent Trial and Appeal Board

Feb 26, 2019

12342925 (P.T.A.B. Feb. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/342,925 12/23/2008
75564 7590 02/28/2019
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Marc Del Bene
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
21652-00044 3558
EXAMINER
DICKERSON, TIPHANY B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
02/28/2019 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARC DEL BENE, PO HU, ANANT NAMBIAR,
and DANIEL G. SALAZAR
Appeal2017-009185
Application 12/342,925 1
Technology Center 3600
Before ELENI MANTIS MERCADER, LARRY J. HUME, and
BETH Z. SHAW, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-22, which are all claims pending in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is MasterCard
International Inc. App. Br. 1.
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Application 12/342,925
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate "to
predicting consumer behavior from transaction card purchases and, more
particularly, to network-based methods and systems for predicting whether a
consumer will experience a life event, and predicting future purchases of the
consumer based on the predicted life event." Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal:
1. A computer-based method for predicting consumer
behavior within a predetermined time period, said method
performed using a payment processor computer device coupled
to a database, said method comprising:
recording, by the payment processor computer device,
electronic consumer data in the database for each consumer of a
global population of consumers including historical purchases
made by each consumer, including at least one electronic
transaction initiated by a consumer using a transaction card at a
point-of-sale (POS) device;
defining, by the payment processor computer device, a
life event by assigning spending variables to the life event,
wherein a spending variable represents a quantity of consumer
spending associated with one or more of (i) a particular
merchant and (ii) a particular type of good or service;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Feb. 28, 2017); Reply Brief ("Reply Br.," filed June 13, 2017); Examiner's
Answer ("Ans.," mailed Apr. 14, 2017); Final Office Action ("Final Act.,"
mailed Sept. 15, 2016); and the original Specification ("Spec.," filed
Dec. 23, 2008).
2
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Application 12/342,925
generating an anticipated spend for each spending
variable assigned to the life event by extrapolating a historical
actual spend based on the historical purchases, wherein the
anticipated spend represents anticipated spending in each
spending variable assigned to the life event;
calculating a residual value of a determined variance
between the anticipated spend and an actual spend for each
consumer by calculating a quotient of (i) the difference between
the anticipated spend and the actual spend and (ii) the
anticipated spend;
determining that a residual value of a determined
variance between the anticipated spend and the actual spend for
each consumer exceeds a predefined threshold;
assigning, by the payment processor computer device, the
consumer to a sample group, wherein the sample group
represents consumers that are experiencing the life event;
generating, by the payment processor computer device, a
predictive model based on historical purchases made by
consumers within the sample group;
applying, by the payment processor computer device, the
predictive model to predict each consumer within the global
population and outside of the sample group that will experience
the life event; and
outputting, by the payment processor computer device, a
list of consumers outside of the sample group that are predicted
to experience the life event within the predetermined time
period.
3
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Application 12/342,925
Rejection on Appeal3
Claims 1-22 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 3.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 6-13) and our discretion
under 37 C.F.R. § 4I.37(c)(l)(iv), we decide the appeal of patent-ineligible
subject matter Rejection RI of claims 1-22 on the basis of illustrative
claim 1.
ISSUE
Appellants argue (App. Br. 6-13; Reply Br. 1--4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO' s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
3 We note the Examiner withdrew the rejection of claims 1, 4--12, 14--19,
21, and 22 under 35 U.S.C. § I03(a) as being unpatentable over the
combination of Hyder, Lazarus, Hoerl, and Decotiis, and also withdrew the
rejection of claims 2, 3, 13, and 20 under 35 U.S.C. § I03(a) as being
unpatentable over the combination of Hyder, Lazarus, Hoerl, and Decotiis.
Ans. 2.
4
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A. 35 U.S.C. § 101
PRINCIPLES OF LAW
We first note "[w]hether a claim is drawn to patent-eligible subject
matter is an issue of law that we review de novo." SiRF Tech., Inc. v. Int 'l
Trade Comm'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.4
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. 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
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. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as "Step l" in the patent-eligibility
inquiry under § 101.
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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 (Gottschalkv. 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 "[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We view
respondents' claims as nothing more than a process for molding rubber
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.").
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However, the Federal Circuit has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1353-54 (Fed.
Cir. 2016) ( collecting cases). At the same time, "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. Abstract ideas may include, but
are not limited to, fundamental economic practices, methods of organizing
human activities, and mathematical formulas or relationships. Alice 134 S.
Ct. at 2355-57. Under this guidance, we must therefore ensure at step one
that we articulate what the claims are directed to with enough specificity to
ensure the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully
in construing this exclusionary principle lest it swallow all of patent law.").
If the claim is "directed to" an abstract idea, we tum 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.
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B. USPTO Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of§ 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
"Guidance") (https://www.govinfo.gov/content/pkg/FR-2019-01-07 /pdf/
2018-28282.pdf).
Under that 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); 5 and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a}-
(c ), (e }-(h)). 6
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 are 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. 7
5 Referred to as "Revised Step 2A, Prong l" in the Guidance (hereinafter
"Step 2A(i)").
6 Referred to as "Revised Step 2A, Prong 2" in the Guidance (hereinafter
"Step 2A(ii)").
7 Items (3) and (4) continue to be collectively referred to as "Step 2B" of the
Supreme Court's two-step framework, described in Mayo and Alice.
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See Guidance.
Step 2A(i) ~ Abstract Idea
Informed by our judicial precedent, the recent Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts-mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity -
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Guidance, if the claim does not recite a judicial exception
(a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Guidance. 8
8 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Guidance,
Section III.C.
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However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) ~ Practical Application
If a claim recites a judicial exception in Step 2A (i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception( s ); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified "practical application" sections of the MPEP, 9
cited in the Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05( c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(±) Mere Instructions To Apply An
Exception
( 6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
9 See MPEP § 2106.05(a}-(c), (e}-(h). Citations to the MPEP herein refer to
revision [R-08.2017].
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(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. If not, then analysis proceeds to Step 2B.
Step 2B - "Inventive Concept" or "Significantly More"
Under our precedent, it is possible that a claim that does not
"integrate" a recited judicial exception under Step 2A(ii) is nonetheless
patent eligible. For example, the claim may recite additional elements that
render the claim patent eligible even though a judicial exception is recited in
a separate claim element. 10 The Federal Circuit has held claims eligible at
the second step of the Alice/Mayo test (USPTO Step 2B) because the
additional elements recited in the claims provided "significantly more" than
the recited judicial exception ( e.g., because the additional elements were
unconventional in combination). 11 Therefore, if a claim has been
determined to be directed to a judicial exception under Revised Step 2A, we
must evaluate the additional elements individually and in combination under
Step 2B to determine whether they provide an inventive concept (i.e.,
10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1257-59 (Fed. Cir. 2014).
11
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whether the additional elements amount to significantly more than the
exception itself). 12
Under the Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) "Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;" or (2) "simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present." See Guidance, III.B. 13
In the Step 2B analysis, an additional element ( or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
12 We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
13 In accordance with existing Step 2B guidance, an Examiner's conclusion
that an additional element ( or combination of elements) is well understood,
routine, conventional activity must be supported with a factual
determination. For more information concerning evaluation of well-
understood, routine, conventional activity, see MPEP § 2106.05( d), as
modified by the USPTO Berkheimer Memorandum (USPTO Commissioner
for Patents Memorandum dated Apr. 9, 2018, "Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.)" (hereinafter "Berkheimer
Memo").
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1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element( s ).
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05( d)(II) as noting the well-
understood, routine, conventional nature of the additional
element( s ).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element( s ).
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element( s).
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element ( or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
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However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1
Claim 1, as a method claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner generally determined "the claims describe collecting
and analyzing data." Final Act. 4.
In particular, recording and defining data as in the first
two limitations represent steps for collecting and labeling/
categorizing intangible data. The steps of performing a residual
analysis and generating a predictive model each relate to
performing a mathematical analysis or an algorithm on the data.
The steps of assigning the consumer to a sample group based on
the result of the residual analysis and applying the predictive
model relate to using categories to store information. Finally,
outputting a list of consumers outside the sample group is an
insignificant post-solution activity that does not add
significantly more that the idea itself.
Id. The Examiner further concludes Appellants' claimed invention is a
business improvement rather than a technical improvement. Ans. 3.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. However, in view of the revised
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Guidance, we reevaluate whether an abstract idea is recited by claim 1. We
conduct our review for abstractness de novo.
We agree with the Examiner that claim 1 recites a number of abstract
ideas, including mathematical concepts and mental processes that can be
performed in the human mind and/or by pen and paper. Final Act. 4--5.
Specifically, we conclude at least the following limitations of claim 1
may be considered as directed to abstract ideas under the Guidance:
(a) "defining, by the payment processor computer device,
a life event by assigning spending variables to the life event,
wherein a spending variable represents a quantity of consumer
spending associated with one or more of (i) a particular
merchant and (ii) a particular type of good or service;"
(b) "determining that a residual value of a determined
variance between the anticipated spend and the actual spend for
each consumer exceeds a predefined threshold;"
( c) "assigning, by the payment processor computer
device, the consumer to a sample group, wherein the sample
group represents consumers that are experiencing the life
event."
Limitations (a) through ( c ), as drafted, are processes that under their
broadest reasonable interpretation, cover performance of the limitations in
the mind, but for the recitation of generic computer components.
( d) "generating an anticipated spend for each spending
variable assigned to the life event by extrapolating a historical
actual spend based on the historical purchases, wherein the
anticipated spend represents anticipated spending in each
spending variable assigned to the life event;"
( e) "calculating a residual value of a determined variance
between the anticipated spend and an actual spend for each
consumer by calculating a quotient of (i) the difference between
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the anticipated spend and the actual spend and (ii) the
anticipated spend;"
(f) "generating, by the payment processor computer
device, a predictive model based on historical purchases made
by consumers within the sample group."
Even considering that the precise relationships or formulae are not
explicitly recited in limitations ( d) and (f), and notwithstanding the recitation
of generic computer components, under the broadest reasonable
interpretation, these limitations are directed to mathematical concepts such
as mathematical relationships, mathematical formulae or equations, and
mathematical calculations. Similarly, limitation ( e) is likewise directed to
mathematical formulae, i.e., a "quotient" ( division) and a "difference"
(subtraction).
This type of activity, i.e., using mathematical relationships and mental
processes to compare information and rules to make a determination,
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (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."). 14 Further, merely combining
several abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
("Adding one abstract idea (math) to another abstract idea ... does not
14 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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render the claim non-abstract."); see also Fair Warning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (determining the
pending claims were directed to a combination of abstract ideas).
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since Cy her Source in cases like Mayo
and Alice, the Federal Circuit continues to "treat[] analyzing information by
steps people go through in their minds, ... without more, as essentially
mental processes within the abstract-idea category." Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016) (quoting
Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information (e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Also,
collecting and comparing known information has been determined to be an
abstract idea. Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d
1057, 1067 (Fed. Cir. 2011) ("Claim 1 of the '283 patent states the idea of
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collecting and comparing known information"). Also, more recently, our
reviewing court has also concluded that acts of parsing, comparing, storing,
and editing data are abstract ideas. Berkheimer, 881 F.3d at 1366. 15
Moreover, the Specification provides evidence as to what the claimed
invention is directed. In this case, the Specification discloses that the
invention "relates generally to predicting consumer behavior from
transaction card purchases and, more particularly, to network-based methods
and systems for predicting whether a consumer will experience a life event,
and predicting future purchases of the consumer based on the predicted life
event." Spec. ,r 1. 16
15 Our reviewing court recognizes that "[a]n abstract idea can generally be
described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, "impact the patentability analysis." Id. at 1241.
16 The Abstract describes:
A computer-based method for predicting consumer
behavior is provided. The method is performed using a
computer system coupled to a database. The method includes
recording consumer data in the database for each consumer of a
global population of consumers including historical purchases
made by each consumer using a transaction card, defining a life
event by assigning spending variables to the life event,
determining a sample group of consumers that are experiencing
the life event based on the consumer data stored within the
database with respect to the spending variables, generating a
predictive model based on historical purchases made by
consumers within the sample group, and applying the predictive
model to predict each consumer within the global population
that will experience the life event. The predictive model is
applied using the computer system. A list of consumers
predicted to experience the life event within a predetermined
time period is output.
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Thus, under Step 2A(i), we conclude claim 1 recites a combination of
abstract ideas including reliance upon mathematical relationships and mental
processes, as discussed above.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "practical application" Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
In addition to the abstract limitations (a) through (f) identified in Step
2A(i), supra, claim 1 recites (1) "recording, by the payment processor
computer device, electronic consumer data in the database for each
consumer of a global population of consumers including historical purchases
made by each consumer, including at least one electronic transaction
initiated by a consumer using a transaction card at a point-of-sale (POS)
device;" and (2) "outputting, by the payment processor computer device, a
list of consumers outside of the sample group that are predicted to
experience the life event within the predetermined time period."
As to the specific limitations, limitation (1) recites insignificant data
gathering. See MPEP § 2106.0S(g). Data gathering, as performed by the
step or function in Appellants' claims, is a classic example of insignificant
Spec. 41.
19
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Application 12/342,925
extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir.
2008) (en bane), ajf'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010).
Limitation (2) recites insignificant post-solution activity by
"outputting ... a list." The Supreme Court guides that the "prohibition
against patenting abstract ideas 'cannot be circumvented' [by] adding
'insignificant postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting
Diehr, 450 U.S. at 191-92).
On this record, Appellants' claims do not operate the recited generic
computer components in an unconventional manner to achieve an
improvement in computer functionality. See MPEP § 2106.05(a).
However, Appellants argue, and we agree, "the innovation recited in
Claim 1 is based on much more than the mere use of a computer - it is the
specific, claimed features of the ordered combination." App. Br. 9. Further,
we find Appellants Specification supports this argument. See Spec. ,r 15. 17
In particular, we find that the previously-unaddressed limitation
"applying, by the payment processor computer device, the predictive model
to predict each consumer within the global population and outside of the
sample group that will experience the life event" integrates the previously
identified abstract ideas into a practical application. Even though this
limitation does not improve the underlying computer system functionality,
17 "The embodiments described herein facilitate achieving higher lifts as
compared to other known targeting methods and system. For example, the
embodiments described herein achieve lifts of approximately 2.4 times to
approximately 4.3 times, as compared to the lifts of 1.3 times to 1.6 times
for known targeting methods for a large population. In other words, the
methods and systems described herein provide better accuracy in predicting
future purchases of a consumer." Spec. ,r 15.
20
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Application 12/342,925
e.g., improved processor or memory performance, in agreement with
Appellants, it does improve the underlying consumer behavior prediction
technology. See MPEP § 2106.05(a) ("Improvements to the Functioning of
a Computer or To Any Other Technology or Technical Field'') ( emphasis
added).
Accordingly, we conclude the recited judicial exception is integrated
into a practical application as determined under one or more of the MPEP
sections cited above, such that the claim is not directed to the judicial
exception, and is thus patent-eligible under our governing case law and the
Guidance, thus ending the patent-eligibility inquiry. 18
Therefore, we do not sustain the § 101 rejection of claim 1, and
grouped claims 2-22, which stand therewith. See Claim Grouping, supra.
CONCLUSION
We do not sustain the rejection of claims 1-22 under 35 U.S.C. § 101.
DECISION
We reverse the Examiner's decision rejecting claims 1-22.
REVERSED
18 Because we agree with at least one of the dispositive arguments advanced
by Appellant, we need not reach the merits of Appellant's other arguments.
See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir. 1984)
(finding an administrative agency is at liberty to reach a decision based on "a
single dispositive issue").
21