Ex Parte Favreau et al

Patent Trial and Appeal Board

Feb 20, 2018

12858611 (P.T.A.B. Feb. 20, 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.
12/858,611 08/18/2010 Kevin Favreau 90945-785863 (017500US) 6230
20350 7590 02/22/2018
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
TROTTER, SCOTT S
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KEVIN FAVREAU, HOLLIS BAUGH,
and ROBERT ENZALDO
Appeal 2016-006054
Application 12/858,611
Technology Center 3600
Before HUNG H. BUI, ADAM J. PYONIN, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—9, 11, 13—16, 18—27, 29, and 30, constituting all
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
Appeal 2016-006054
Application 12/858,611
STATEMENT OF THE CASE
Appellants’ invention is directed to systems and methods for assessing
fraud risk. Spec. H 2, 3. Claim 1, reproduced below, is representative of
the claimed subject matter:
1. A non-transitory computer-implemented method of
assessing a fraud risk, the method comprising:
receiving data associated with a plurality of customer
complaints, wherein for each of the plurality of customer
complaints:
the data at least suggests that a money-transfer
transaction between a first customer and a second
customer did not complete as expected;
the data is associated with first money-transfer
agent and a second money-transfer agent who were
responsible for facilitating the money-transfer transaction
between the first customer and the second customer,
wherein:
the second money-transfer agent is different
than the first money-transfer agent;
the first money-transfer agent receives funds
from the first customer;
the second money-transfer agent disburses
funds to the second customer; and
the data is received after a third customer
unsuccessfully attempts to receive funds from the
money-transfer transaction which have already
been paid to the second customer; electronically
storing the data in a complaint database; and for at
least one of the money-transfer agents:
retrieving data associated with the money-transfer agent
from the complaint database, and
determining, based on the third customer unsucessfully
attempting to receive funds, a fraud-risk index for the money-
transfer agent based on the retrieved data, wherein the fraud-
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risk index is indicative of a likelihood that the money-transfer
agent is involved in fraudulent activity.
REJECTIONS
Claims 1—9, 11, 13—16, 18—27, 29, and 30 stand rejected under 35
U.S.C. § 101 because the claimed invention is directed to a judicial
exception to statutory subject matter.
ANALYSIS
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014), the Supreme Court reiterates an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (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. The first step in the analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” such as an
abstract idea. Id. If the claims are directed to a patent-ineligible concept,
the second step in the analysis is to consider the elements of the claims
“individually and ‘as an ordered combination’” to determine whether there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Id. (citing Mayo, 566 U.S. at 79, 78). In other
words, the second step is to “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.’” Id. (citing Mayo, 566 U.S. at 72—73).
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Application 12/858,611
In rejecting independent claims 1,13, and 30 and dependent claims 2—
9, 11, 14—16, 18—27, and 29, the Examiner determines (1) the claims are
directed to the abstract idea of determining fraud risk and that (2) the
additional elements in the claim do not provide meaningful limitations to
transform the abstract idea into a patent eligible application of the abstract
idea such that the claims amount to significantly more than the abstract idea
itself. Final Act. 2.
As to the first step of the Alice inquiry, Appellants argue “[t]he Office
Action does not allege what type of abstract idea this is (i.e., fundamental
economic practice), so for at least this reason Appellant believes the
rejection to be inadequate.” App. Br. 4.
Appellants’ argument is not persuasive. The title of Appellants’
Specification provides the invention is directed to “systems and methods for
assessing fraud risk.” The Specification further provides embodiments for
“assessing a fraud risk” Spec. Tflf 3, 5, claims 1, 13, 20. Thus, we agree
with the Examiner (see Ans. 4) that the claim is directed to the abstract idea
of determining fraud risk, which is both a method of organizing human
activity and a fundamental economic practice. Such activities are squarely
within the realm of abstract ideas. Fraud risk assessment is a fundamental
business practice long prevalent in our system of commerce, like the risk
hedging in Bilski (see Bilski v. Kappas, 561 U.S. 593 (2010)), the
intermediated settlement in Alice (see Alice, 134 S. Ct. at 2356-57),
verifying credit card transactions in CyberSource (see CyberSource Carp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)), collecting and
analyzing in formation to detect and noti fy of misuses in FairWaming (see
FairWarningIP, LLCv. latric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir,
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Application 12/858,611
2016)), and guaranteeing transactions (see buy SAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1354 (Fed. Cir. 2014)). Assessing fraud risk is also a
building block of a market economy. Thus, fraud risk detection, like risk
hedging and intermediated settlement, is an “abstract idea” beyond the scope
of § 101. See Alice 134 S. Ct. at 2356.
In the second step of the Alice inquiry, Appellants argue “[e]ach of
the claims improves other technical fields beyond ‘determining fraud risk’
(the alleged abstract idea).” App. Br. 5. According to Appellants,
“significantly more than just a mere ‘determining fraud risk’ is occurring in
embodiments of the independent claims.” Id. at 6. Specifically, Appellants
assert agent tracking technology for money transfer entities and customer
service technology is improved. Id. Appellants further argue “non-generic,
machines/computers are necessary to implement the systems and methods of
the claims.” App. Br. 6. According to Appellants, “[o]ff-the-shelf generic
computers are not capable of performing such functions, much less
concurrently during an [sic] period of intense heavy transaction load as may
be necessary in such industry.” Id.
We are not persuaded by Appellants’ arguments. Rather, we agree
with the Examiner (Ans. 5) that Appellants are describing the same technical
field as determining fraud risk, not a different technical field. The claims
describe, inter alia, a “complaint database,” a “complaint-receiving
component,” a “data-storing component,” and a “risk processor.” Although
Appellants argue off-the-shelf generic computers are not capable of
performing the functions in the claims, the Specification supports the view
that these elements encompass what was generic and common in the field at
the time of the invention. E.g., Spec. ^fl[ 26 (“Transaction computer 204 may
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Application 12/858,611
include, for example, server computers, personal computers, workstations,
web servers, and/or other suitable computing devices”), Spec. 127
(“Transaction database 205 may be a storage device that includes solid-state
memory, such as RAM, ROM, PROM, and the like, magnetic memory, such
as disc drives, tape storage, and the like, and/or optical memory, such as
DVD”); Spec. 134 (“Risk processor 206 may be any microprocessor-based
device capable of retrieving transaction information relating to money
transfers conducted by a particular agent”); Spec. 142 (“risk processor 206
may be a single computer, such as a personal computer or a database
server”); see also Spec. 26, 28, 29, 43, 44. Appellants have not directed
our attention to anything in the record that shows specialized computer
hardware is required, nor have Appellants shown how the claims are
performed such that they are not routine, conventional functions of a generic
computer. See Alice, 134 S. Ct. 2358 (“the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.”)
Appellants further argue claims 1,13, and 30 “include specific
limitations other than what is well-understood, routine and conventional in
the field, or add unconventional steps that confine the claim to a particular
useful application” and “[t]he Office Action admits this implicitly because
these claims do not stand rejected under § 102 or § 103.” App. Br. 6.
We are not persuaded. Although the second step in the Alice/Mayo
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “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
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Application 12/858,611
[ineligible concept] itself.”’ Alice, 134 S. Ct. at 2355. “The ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr, 450
U.S. 175, 188-89 (1981). A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Appellants do not identify what specific limitations in the claims at issue are
not well-understood, routine, and conventional in the field, or what
unconventional steps have been added. The claims when viewed as whole
are nothing more than performing conventional processing functions that
courts have routinely found insignificant to transform an abstract idea into a
patent-eligible invention. As such, the claims amount to nothing
significantly more than an instruction to implement the abstract idea on a
generic computer — which is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 134 S. Ct. at 2360.
With respect to dependent claims 2—9, 11, 14—16, and 18—29,
Appellants argue “the Office Action makes no effort to analyze these claims
and state any grounds for why the recitations of these claims do not amount
to significantly more than the alleged abstract idea.” App. Br. 7.
Appellants present no discussion of the specific recitations of these
claims, which merely include additional limitations pertaining to the data
analyzing (claims 2—9, 11, 20—27, 29), as well as limitations adding generic
computer components (claims 14, 15, 16, 18, 19). See App. Br. 7.
Therefore, we are not persuaded of error in the Examiner’s rejection of the
dependent claims for the same reasons as set forth above.
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Application 12/858,611
Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of
claims 1—9, 11, 13—16, 18—27, 29, and 30.
DECISION
We affirm the Examiner’s 35 U.S.C. § 101 rejection of claims 1—9,
11, 13-16, 18-27, 29, and 30.
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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