Ex Parte Chauhan et al

Patent Trials and Appeals Board

Apr 30, 2019

14038650 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/038,650 12/09/2013
126944 7590 05/02/2019
MasterCard
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
FIRST NAMED INVENTOR
Rohit Chauhan
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.
37537.0020Ul- 1036
EXAMINER
ELCHANTI, TAREK
ART UNIT PAPER NUMBER
3621
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
uspatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROHIT CHAUHAN, PO HU, JEAN-PIERRE GERARD, and
TONGZHANG 1
Appeal2018-003229
Application 14/038,650
Technology Center 3600
Before ROBERT E. NAPPI, ERIC S. FRAHM, and MICHAEL T. CYGAN,
Administrative Patent Judges.
NAPPI, 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 through 20. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
INVENTION
The invention is directed to a system to enable vendor
recommendations using payment card transaction information. Abstract.
Claim 1 is illustrative of the invention and is reproduced below:
1. A recommendation method comprising:
1 According to Appellants, the real party in interest is, MasterCard
International Inc. App. Br. 2.
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Application 14/038,650
extracting financial transaction entries from a database
stored on a computer-readable storage medium;
filtering, with a processor, the financial transaction
entries based on an application domain to produce domain-
filtered financial transaction entries;
filtering, with the processor, the domain-filtered financial
transaction entries based on a geographic location of each
domain-filtered financial transaction entry to produce
geographically-filtered financial transaction entries;
computing, with the processor, pairwise similarities
between geographically-filtered financial transaction entries
from multiple cardholders to produce recommendations;
storing the recommendations in the database.
REJECTION AT ISSUE
The Examiner rejected claims 1 through 20 under 35 U.S.C. § 101 for
being directed to patent-ineligible subject matter. Answer 3. 2
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
Whoever invents or discovers any new and useful
process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent
therefor, subject to the conditions and requirements of this title.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of
2 Throughout this Opinion, we refer to the Appeal Brief, filed September
22, 2017 ("App. Br."), the Reply Brief ("Reply Br."), filed January 30, 2018,
the Examiner's Answer, mailed November 30, 2017 ("Answer"), and the
Final Office Action, mailed February 22, 2017 ("Final Act.").
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nature, natural phenomena, and abstract ideas." Alice Corp. v. CLS Bank
Int'!, 573 U.S. 208, 216 (2014); Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 70 (2012).
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. Alice, 573 U.S. at 217-18 (citing Mayo, 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.").
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, 67 (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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
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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.").
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 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Under that guidance, we
first look to whether the claim is directed to a judicial exception because:
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( 1) the claim recites a judicial exception, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice,
or mental processes); and
(2) the claim as a whole fails to recite additional elements that
integrate the judicial exception into a practical application (see MPEP
§ 2106.0S(a}-(c), (e}-(h) (9th ed. 2018).
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
§ 2106.0S(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
ANALYSIS
Abstract Idea.
The Examiner finds that the claims are not patent eligible as they are
directed to a judicial exception without reciting significantly more. Answer
3--4. Specifically, the Examiner finds that the claims are directed to an
abstract idea; in particular,
the idea of extracting financial entries for "collecting
information", filtering the financial transaction, filtering the
domain filtered financial transaction for "analyzing it",
computing and storing the recommendations in the database for
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"displaying results", which is an abstract idea similar to
ELECTRIC POWER GROUP [ Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)] and filtering the
financial transaction, filtering the domain filtered financial
transaction for "creating a contractual relationship", which is
similar to buySAFE [buySAFE v. Google, Inc., 765 F.3d 1350,
(Fed. Cir. 2014].
Answer 4.
Appellants argue the Examiner's rejection provides a gross
oversimplification of the claimed invention and as claim 1 recites
"computing ... pairwise similarities between geographically-filtered financial
transaction entries from multiple cardholders to produce recommendations"
and not just collecting data and "analyzing it." Reply Br. 3. Further,
Appellants argue that the claims in Electric Power Group were directed to
receiving, detecting and analyzing events and displaying the results but did
not provide any direction as to how to perform the steps. Reply Br. 4.
Appellants argue that the two filtering steps clearly set forth how the
geographically filtered transaction data are produced and not merely
producing the entries and the claims are different than those in Electric
Power Group. Reply Br. 4. Further, Appellants argue the claims can be
distinguished from those at issue in buySAFE as in buySAFE the claims did
not describe how anything is done, rather the claim recited receiving and
processing a request by a computer to create a contractual relationship.
Reply Br. 4-5.
We concur with the Examiner's finding that representative claim 1
recites a method of organizing human activity (an abstract idea), we also
note that the claims recite elements directed to a mental process.
Representative claim 1 recites limitations "extracting financial transaction
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entries ... filtering ... entries based upon domain ... filtering ... entries based
on a geographic location ... computing pairwise similarities between ...
geographically filtered finical entries ... to produce recommendations."
These limitations which involve using financial information to produce
recommendations, are related to a fundamental economic principle or
commercial interactions ( advertising, marketing or sales activity as.
providing a recommendation is a form of advertising or marketing). We also
note that these are steps that a person would perform in their mind to provide
a recommendation or an opinion, and as such recites a mental process. Our
reviewing court, in the Electric Power Group decision, cited by the
Examiner, states "we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms without more, as
essentially mental processes within the abstract idea category." Electric
Power Group, 830 F.3d at 1354 (Fed. Cir. 2016) (collecting cases).
These limitations are similar to those in the claims at issue in
CyberSource v. Retail Decisions, Inc, which involved obtaining credit card
information relating to transactions, verifying parameters ( similar to
filtering), obtaining information about other transactions to create a map and
use the map to determine of a transaction is valid). CyberSource v. Retail
Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011). The steps of
"extracting financial transaction entries" and the two steps of filtering are
data gathering steps, which typically do not make an otherwise non-statutory
claim statutory. CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1370
(Fed. Cir. 2011) ("mere data-gathering steps cannot make an otherwise non-
statutory claim statutory"). Further, the step of computing the pairwise
similarities is performed using an unclaimed analysis, and Appellants'
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specification discusses the process as being a matching process (i.e. a
comparison). Specification para. 46. This step of matching financial
transactions from multiple cardholders (i.e a comparing step), is a process
that could be performed in the mind of a person, e.g., a concierge providing
a recommendation to a person based upon their knowledge of what the
person wants and where the person is located, or a marketing analyst
considering different demographics to determine a target audience for an
advertisement. While Appellants' Specification, in paragraph 15, identifies
that recommendations without the claimed filtering steps, would take a
"half-year on a typical computer"; suggesting that it could not be performed
in the human mind, the amount of time in producing the recommendation is
dictated by the size of the knowledge base (financial transaction database).
However, the claims are not limited by the size of the database. Thus, we
consider the claim limitations to collectively recite a concept that could be
described as any one of a certain method of organizing human activity, a
fundamental economic practice ( of commercial interactions, advertising,
marketing or sales activity) and a mental process (performing a comparison
and providing an opinion) such that it is similar to those concepts identified
as abstract by the courts.
We are not persuaded by Appellants' argument that the Examiner
oversimplified the claims in determining the claims recite an abstract idea.
As discussed above the representative claim includes steps of gathering data
and matching ( comparing) step to provide an opinion ( a mental analysis
step). Further, Appellants' arguments directed to the Examiner's reliance on
Electric Power Grp. are not persuasive as discussed above the claims do
recite steps of gathering data, and while the step of computing "pairwise
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similarities" may not recite "analyze it" the broadest reasonable
interpretation of the limitation is nonetheless an abstract concept.
Accordingly, we concur with the Examiner's finding that
representative claim 1 recites an abstract idea.
Practical Application/Significantly more than Abstract Idea.
The Examiner finds that filtering data is not a technical solution to a
problem. Answer 4. Similarly, the Examiner finds that the claim 1
recitation of storing data does not add significantly more to the abstract idea.
Answer 5. Similarly, the Examiner states that the recitation of a database,
computer readable medium and processor are generically reciting computer
structure which is not sufficient to transform a judicial exception into a
patentable invention. Answer 5, Final Act 3.
Appellants argue that the claims are directed to using a special
purpose computer, and that "[t]he record does not suggest that the various
functional features of the claims be implemented on a generic, unspecified
computer, as a generic computer is not capable of performing the functional
features recited in the claims." App Br. 14. Appellants assert that the
claimed computer system has improved functionality over a generic
computer. App Br. 14 (citing In reAlappat, 33 F.3d 1526 (Fed. Cir 1994).
Further, Appellants argue the claims "solve a technological problem and
thus provide a real world, practical application and an improvement on
existing technologies .... for example, the independent claims, via each of
their particularly programmed structural computer components store,
receive, model and additionally generate very specific and sensitive
information in a very specific manner in a hardware-based system that has
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not been done before in the industry." App. Br. 15. Additionally,
Appellants argue that the claims do not tie-up or pre-empt the user of the
abstract idea. App. Br. 10. Appellants assert:
it is readily apparent that the claims of the present application
do not "tie up" or pre-empt others from a method of filtering
less relevant data, as it does not limit someone from all manners
in which a recommendation engine is implemented. Rather, the
claims at issue are drawn to a specific, technical and tangible
manner in which a novel and unobvious method and system, via
their specifically configured hardware components, can
evaluate the allocation rule by a specialized processing device.
App. Br. 11. Appellants restate all of the limitations of the claim to support
this assertion and further assert that there is no logical manner in which the
claims cover the entire realm of recommendation engines. Answer 11-12
(citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014)).
Appellants' argument have not persuaded us the claims are directed to
a practical application of the abstract idea. We do not find that the claims
are necessarily rooted in computer technology, as were the claims in DDR.
In DDR, the claimed invention created a hybrid web page that combined
advantageous elements from two web pages, bypassing the expected manner
of sending a visitor to another party's web page, in order to solve the
internet-centric problem of retaining website visitors. DDR Holdings, 773
F.3d at 1257-1259. Unlike DDR, the claims do not overcome a problem
specifically arising in the realm of computer networks. Rather, Appellants
characterize the problem as reducing "the size of memory space and amout
of processor time to enable a merchant recommendation engine." Spec.
para. I. While this type of problem is related to a computer, it is not unique
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to a computer as is merely is a method of reducing an amount of data to be
considered and as discussed above is also applicable to mentally performing
the steps of making a recommendation selecting the target audience for an
advertisement. Appellants' claimed subject matter does not attempt to
improve a computer so as to be able to perform a conventional "comparison
approach" of recommendation, which Appellants state "cannot be used" due
to computational resource constraints. Spec. para. 15. Rather, Appellants
have made changes to the approach so that it can be used on a conventional
computer, and consequently, describes a potential improvement to the
mental process of forming recommendations rather than to a particular
technological improvement to a computer's data processing capabilities. See
Id. Furthermore, the mere "performance of some business practice known
from the pre-Internet world along with the requirement to perform it" via
computer and Internet (web server) has been distinguished as not involving
solutions necessarily rooted in computer technology. DDR Holdings, 773
F.3d at 1257.
We agree with the Examiner's finding that the claims do not improve
a computer or another technology or technological field. Ans. 6-7. As
discussed above, representative claim 1 recites imitations of extracting
information, filtering the information, computing pairwise similarities to
produce recommendations, which recite an abstract idea. The remaining
claim limitations, directed to a "database stored on a computer-readable
storage medium" and a processor (which performs the filtering and the
processing to produce the recommendations). Appellants' specification
discusses the use of generic networks and computer devices to implement
the abstract concepts. Specification paras. 36-37. Furthermore the steps in
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claim 1 of extracting financial transaction entries and storing the
recommendations in the database, do not recite using a computer or
computer network to solve a problem unique to using a computer or
computer network; rather, they merely identify the source of the data. Such
generically claimed data gathering merely adds insignificant extra-solution
activity to the identified abstract idea, and does not provide eligibility.
CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)
("mere data-gathering steps cannot make an otherwise nonstatutory claim
statutory").
Thus, we are not persuaded by Appellants' arguments that the claims
are rooted in computer technology, rather, the claims merely recite use of a
computer as a tool to implement a method of organizing human activity
involving a fundamental economic principle (an abstract idea) and a mental
process. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327
(Fed. Cir. 2017) ("Unlike Enfish, [the claim] does not claim a software
method that improves the functioning of a computer ... [but] claims a
'process that qualifies as an "abstract idea" for which computers are invoked
merely as a tool"') (citation omitted). Accordingly, we concur with the
Examiner's finding that the claims merely require the abstract idea to be
applied on a general-purpose computer. As such we do not consider,
representative claim 1 to reciting a specific machine to perform the
abstraction and is not an improvement in the functioning of a computer or
any other technology, i.e., that the claims do not integrate the abstract
concept to a practical application.
Appellants' augments directed to preemption similarly have not
persuaded us of error. As stated by the Examiner on page 4--5 of the Answer,
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the preemption concern is addressed by the two part analysis of Alice.
Answer 4--5. "While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362
(Fed. Cir. 2015)("[T]hat the claims do not preempt all price optimization or
may be limited to price optimization in the e-commerce setting do not make
them any less abstract."). Thus, Appellants' arguments directed to
preemption have not persuaded us of error
We next address the issue of whether the claims provide significantly
more that the recited abstract idea. Appellants argue that the claims are
"inextricably tied to (inseparable from) a computer-implemented
environment in order to overcome a problem that has arisen in processing an
enormous amount of data in a limited computer memory to create a
recommendation engine." App Br. 12. Appellants analogize the claims to
those at issue in DDR Holdings, LLC v. Hotels.com, L.P., as they overcome
a problem in the realm of electronic wallets and specify how interactions
between computer components are manipulated to reach a desired result
which is not routine or conventional. App Br. 13 (citing DDR Holdings,
LLC v. Hotels.com, L.P.), Reply Br. 9-10.
These arguments have not persuaded us the Examiner erred in finding
representative claim 1 does not recite significantly more. Initially, we note
that claim is not drawn to electronic wallets, but rather the above-discussed
method of making a recommendation, which takes and filters financial
transaction data then computes pairwise similarities between transactions ( a
comparison step), so as to encompass an abstract idea. We do not find the
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steps of representative claim 1 to involve unconventional steps. The step of
"extracting information" and "filtering" are data gathering steps which are
not "unconventional activity" when performed by a computer in a generic
manner. See e.g., Intellectual Ventures v. Symantec, 838 F.3d 1307, 1321
(Fed. Cir. 2016), MPEP §2106.0S(d)(II)(i). Similarly, the step of
calculating pairwise similarities between transactions is discussed in the
Specification as using "methods known in the art" and as involves
conventional computerized techniques. Specification para. 46. Thus, we
consider the claims to recite well-understood, routine and conventional
activities and Appellants have not persuaded us that the Examiner erred in
not considering the claims to recite significantly more as tied to computer
technology.
In summary, Appellants' arguments have not persuaded us of error in
the Examiner's determination that the claims are directed to an abstract idea;
a certain method of organizing human activity which is both a fundamental
economic practice ( of commercial interactions, advertising, marketing or
sales activity) and a mental process (an evaluation and opinion). Further,
Appellants' arguments have not persuaded us that the Examiner erred in
finding that the claims are not directed to: an improvement in the
functioning of the computer or to other technology or other technical field; a
particular machine; performing or affecting a transformation of an article to
a different state or thing; and/ or using a judicial exception in some
meaningful way beyond linking the exception to a particular technological
environment such that the claim as a whole is more than a drafting effort to
monopolize the judicial exception.
Accordingly, we sustain the Examiner's rejection of claims 1 through
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20 under 35 U.S.C. § 101 as being directed to patent ineligible subject
matter.
DECISION
The decision of the Examiner to reject claims 1 through 20 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)(l)(iv).
AFFIRMED
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