Ex Parte Ghosh

Patent Trial and Appeal Board

Dec 18, 2018

13935188 (P.T.A.B. Dec. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/935, 188 07/03/2013
75564 7590 12/20/2018
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
FIRST NAMED INVENTOR
Debashis Ghosh
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.
21652-00283 8638
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
12/20/2018 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBASHIS GHOSH
Appeal 2017-011066
Application 13/935,188
Technology Center 3600
Before JAMES R. HUGHES, CATHERINE SHIANG, and
BETH Z. SHAW, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellant2 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of claims 1-9, 13, 15-19, and 21-25, which
represent all the pending claims. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Throughout this Decision we have considered the Appeal Brief filed May
8, 2017 ("App. Br."), the Reply Brief filed August 28, 2017 ("Reply Br."),
the Examiner's Answer mailed June 28, 2017 ("Ans."), the Specification
filed July 3, 2014 ("Spec."), and the Final Rejection mailed November 4,
2016 ("Final Act.").
2 Applicant MasterCard International Incorporated is the real party in
interest. App. Br. 1.
Appeal 2017-011066
Application 13/935,188
INVENTION
Appellant's invention is for estimating a value for a real property
location based on historical transaction data of a merchant located at the real
property location. See Spec. ,r 1.
Claim 1 is illustrative of the claims at issue and is reproduced below:
1. A computer-implemented method for estimating a
value for a real property location based on historical transaction
data associated with merchants conducting business at the real
property location, said method implemented using a computing
device associated with a payment card network, said method
compnsmg:
receiving merchant location data for a plurality of
merchants at the computing device, the merchant location data
including data identifying a real property location at which each
merchant is located, wherein the computing device processes
payment transactions for each merchant of the plurality of
merchants;
electronically grouping merchants together from among
the plurality of merchants based on the received merchant
location data, the electronically grouped merchants being
located at the same real property location;
receiving, at the computing device, historical transaction
data generated by the computing device, the historical
transaction data comprising payment transactions processed by
computing device;
receiving an evaluation request message from a user
computing device, the evaluation request message comprising
data identifying at least one merchant from among the
electronically grouped merchants;
determining a merchant cash flow for each merchant of
the electronically grouped merchants by multiplying transaction
amounts in the historical transaction data by a scaling factor
representing an amount of usage of the payment card network
in a geographical area where the real property location is
located;
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Application 13/935,188
generating, for each merchant from among the plurality
of electronically grouped merchants, a plurality of scores based
on the merchant cash flow for each merchant, wherein the
plurality of scores includes a revenue trend score, a revenue
consistency score, a financial success score, a rent payment
ability score, and an insurance risk score;
determining an estimated value of the real property
location by i) dividing a yearly rent associated with each
merchant of the electronically grouped merchants by a
capitalization value, ii) calculating a sum that includes the
dividend for each merchant of the electronically grouped
merchants, and iii) including, in the determination, the plurality
of scores; and
transmitting the estimated value of the real property
location to the user computing device.
REJECTION
The Examiner rejected claims 1-9, 13, 15-19, and 21-25 under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act.
2-16.
CONTENTIONS AND ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence
produced. For at least the reasons discussed below, we agree with and adopt
the Examiner's findings and conclusions in the Final Action and Answer.
The Examiner determines the pending claims are directed to an
abstract idea of (i) a fundamental economic practice, (ii) a method of
organizing human activities, (iii) an idea, in and of itself, and/or (iv) a
mathematical relationship or formula. Final Act. 2. The Examiner also
determines additional elements recited in these claims do not amount to
significantly more than the abstract idea itself. Final Act. 5. According to
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Application 13/935,188
the Examiner, the claims require no more than implementing the abstract
idea on a generic computer. Id.
Appellant presents several arguments against the 35 U.S.C. § 101
rejection. App. Br. 6-15; Reply Br. 1-12. Appellant contends the claims
are not directed to an abstract idea and that the claims amount to
significantly more than an abstract idea. Id.
Appellant's arguments are unpersuasive. Instead, we find the
Examiner has provided a comprehensive response to Appellant's arguments
supported by a preponderance of evidence. Ans. 6-23; see also Final Act.
2-16. As such, we agree with and adopt the Examiner's findings and
explanations provided therein. Id.
The Supreme Court has long held that "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 573 U.S. 208,216 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
"'abstract ideas' category embodies 'the longstanding rule that '[a]n idea of
itself is not patentable."' Alice, 573 U.S. at 218 (alteration in original)
(quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 217 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-78 (2012)). 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.
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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. (quoting Mayo, 566 U.S. at 77-80). 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. at 217-18 ( alteration in original) ( quoting Mayo, 566
U.S. at 72-73). The prohibition against patenting an abstract idea "'cannot
be circumvented by attempting to limit the use of the formula to a particular
technological environment' or adding 'insignificant postsolution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
Appellant argues the claims as a group. See App. Br. 6. After
undertaking the first step of the Alice inquiry, we agree with the Examiner
that Appellant's claims are directed to an abstract idea, as explained by the
Examiner ( e.g., (i) a fundamental economic practice, (ii) a method of
organizing human activities, (iii) an idea, in and of itself, and/or (iv) a
mathematical relationship or formula). Final Act. 2-5. All the steps recited
in Appellant's claims (e.g., "receiving [a] merchant location," "grouping
merchants together," receiving historical transaction data, "receiving an
evaluation request," "determining a merchant cash flow," generating a
plurality of scores, and "determining an estimated value of the real property
location"), are abstract processes of organizing information. Cf Digitech
Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed.
Cir. 2014) (finding an abstract idea because claims describe a process of
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organizing information through mathematical correlations and are not tied to
a specific structure or machine). We are not persuaded by Appellant's
argument that the Examiner erred by confusing an outcome of the claim with
the way in which to achieve the outcome. Reply Br. 5. Rather, the
Examiner considered each and every word of the claim, and the claim
limitations as a whole, as evidenced by the record. Ans. 17; Final Act. 6-9.
We agree with the Examiner's determination that the claims are
directed to determining estimated value of the real property location based
on historical data is a mathematical relationship. Contrary to Appellant's
position, we conclude that the claims solve a mathematical problem.
Moreover, as the Examiner determined, estimating the value of a
property based on historical transaction data is a fundamental economic
practice that would fall under the umbrella of managing transactions or sales
activities. Ans. 5. Appellant's characterization of the claimed technique,
i.e., "independently validating seller cash flow information, thereby
mitigating information symmetry between the buyer and the seller through
specific rules for using inaccessible third-party transaction data" (Reply Br.
5}-regardless of whether that characterization is accurate-also falls under
the umbrella of managing transactions or sales activities. See Alice, 573
U.S. at 219--20; see, e.g., Intellectual Ventures I LLC v. Capital One Bank,
792 F.3d 1363, 1369----79 (Fed. Cir. 2015) (an advertisement taking into
account the time of day and tailoring the information presented to the user
based on that information is another "fundamental ... practice long
prevalent in our system"); Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044 (Fed. Cir. 2017) (patent claims directed to a systern and method
for providing financing to allow a customer to purchase a product selected
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from an inventory of products maintained by a dealer are patent-ineligible as
directed to the abstract idea of processing an application for financing a
purchase, an economic practice long prevalent in commerce). Estimating
the value of a property based on historical transaction data, or validating
seller cash flow information, are fundamental economic practices.
Accordingly, we are not persuaded the Examiner erred under the first step of
the Alice inquiry.
Our reviewing court also concludes receiving, storing, and updating
data constitute an abstract idea. See Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) ("collecting information, analyzing it,
and displaying certain results of the collection and analysis" is abstract); In
re Salwan, 681 F. App'x 938, 941 (Fed. Cir. 2017) (nonprecedential)
(affirming the rejection under§ 101 of claims directed to "storing,
communicating, transferring, and reporting patient health information,"
noting that "while these concepts may be directed to practical concepts, they
are fundamental economic and conventional business practices"); Cybeifone
Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988, 992 (Fed. Cir.
2014) (nonprecedential) ("using categories to organize, store, and transmit
information is well-established"). Similarly, all the steps executed by claim
1 are abstract processes of receiving, grouping, generating, and transmitting
data.
The second step of the Alice inquiry indicates that the limitations in
Appellant's claims do not add anything "significantly more" to transform
them into a patent-eligible application of the abstract concept of calculating
a series of vectors. Final Act. 5---6; Ans. 19, 20; see also Alice, 573 U.S. at
221-22. We agree with the Examiner that the computer limitations of claim
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1 do not add anything "significantly more" than the abstract idea. Final Act.
5-6. As recognized by the Supreme Court, "the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention." Alice, 573 U.S. at 223; see id. at 225 (concluding claims
"simply instruct[ing] the practitioner to implement the abstract idea of
intermediated settlement on a generic computer" are not patent eligible).
Contrary to Appellant's arguments (see App. Br. 6-7; Reply Br. 5---6),
the claims do not seek to improve any type of computer capabilities, such as
a "self-referential table for a computer database" outlined in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). "[M]erely
'configur[ing]' [a] generic computer[] in order to 'supplant and enhance' an
otherwise abstract manual process is precisely the sort of invention that the
Alice Court deemed ineligible for patenting." Credit Acceptance Corp., 859
F.3d at 1056 (second alteration in original).
Appellant appears not to dispute that the claims use generic computer
hardware (Reply Br. 5---6), but argues the claims are analogous to the patent-
eligible claims in McRO, Inc. v. Bandai Namco Games America Inc., 837
F.3d 1299 (Fed. Cir. 2016). App. Br. 8-13; Reply Br. 5---6. We are not
persuaded by Appellant's argument that the claims improve the "collective
system of' sources, similar to the patent-eligible claims in McRO. App.
Br. 15-16. InMcRO, the Federal Circuit found that "the claims themselves
set out meaningful requirements for the first set of rules: they 'define[] a
morph weight set stream as a function of phoneme sequence and times
associated with said phoneme sequence."' 837 F.3d at 1313 (alteration in
original) (citation omitted). Appellant's claims are directed to automation of
conventional estimation of value of real property. Cf McRO, 837 F.3d at
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1314 ("This [ conventional] activity, even if automated by rules, would not
be within the scope of the claims because it does not evaluate sub-sequences,
generate transition parameters or apply transition parameters to create a final
morph weight set. It is the incorporation of the claimed rules, not the use of
the computer, that 'improved [the] existing technological process' by
allowing the automation of further tasks." (second alteration in original)
( citing Alice, 573 U.S. at 223)). As the Examiner concludes, the claims use
"data that would ordinarily be considered in a commercial real estate
valuation." Ans. 21.
Appellant also relies on Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). App. Br. 9--10; Reply
Br. 8-12. Contrary to Appellant's arguments, the Federal Circuit did not
create a new test in Bascom for analyzing claims. Rather, in Bascom, the
Federal Circuit followed the Supreme Court's guidance for determining
whether the claims recite an inventive concept set forth in Alice.
Because Appellant's claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of these
claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
DECISION
The decision of the Examiner to reject claims 1-9, 13, 15-19, and
21-25 is affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED
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