Ex Parte GOLDBERG et al

Patent Trial and Appeal Board

Dec 21, 2018

14486351 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/486,351 09/15/2014
125578 7590 12/26/2018
MASTERCARD
C/0 Buchanan Ingersoll & Rooney PC
P.O. Box 1404
Alexandria, VA 22314
FIRST NAMED INVENTOR
Ina GOLDBERG
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.
0076412-000306 3807
EXAMINER
LUDWIG, PETER L
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
ADIPDOC 1@BIPC.com
charles. wieland@bipc.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte INA GOLDBERG, STEVEN JOEL JONAS, and MATTHEW
ALCURI 1
Appeal2017-006569
Application 14/486,351
Technology Center 3600
Before JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 3, 4, 9, 11-13, and 15-18 which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF THE DECISION
We AFFIRM.
1 MasterCard International Incorporated.
Appeal2017-006569
Application 14/ 486,351
THE INVENTION
The Appellants' claimed invention is directed to the estimation and
evaluation of risk and spend profiles for a business (Spec., para. 1). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A computer-implemented method for electronically evaluating
a small business profile, comprising:
receiving, by a receiving device of a processing server, from a
payment network, transaction data for a plurality of payment
transactions,
storing, in an entity database of the processing server, a
plurality of entity profiles, wherein each entity profile is associated
with an entity including (i) a unique entity identifier and (ii) a
plurality of transaction data entries, each transaction data entry of the
plurality of transaction entries including the transaction data
associated with a payment transaction involving one of a plurality of
transaction accounts associated with the associated entity;
storing, in a memory device of the processing server, at least
one scoring algorithm;
receiving, by the receiving device of the processing server, a
score request requesting the processing server to calculate at least one
of a risk score and a behavior score, wherein the score request
includes a set of one or more entity identifiers;
identifying, in the entity database of the processing server, a set
of one or more entity profiles where the unique entity identifier
included in each entity profile in the set of one or more entity
profiles corresponds to the entity identifier in the set of one or more
entity identifiers included in the received score request;
in response to receiving the score request, calculating, by a
processing device of the processing server, the requested score for
each entity associated with an entity profile in the identified set of one
or more entity profiles by applying the at least one scoring algorithm,
stored in the memory device of the processing server, to at least the
transaction data included in one or more transaction data entries
included in the respective entity profile, wherein the calculated score
is representative of at least one of (i) a risk of the entity associated
with the specific entity profile and (ii) a behavior score representative
of a spend behavior of the entity associated with the specific
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entity profile; and
transmitting, by a transmitting device of the processing server,
the calculated score for each entity associated with the entity profile in
the identified set of one or more entity profiles in response to the
received score request.
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1, 3, 4, 9, 11-13, and 15-18 are rejected under 35
U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 1, 3, 4, 9, 11-13, and 15-18 are rejected under 35
U.S.C. § I03(a) as unpatentable over Collier, Marsha (January 10, 2012),
eBay® For Dummies®, 7th Edition (hereinafter "Collier") and Beckman,
US 8,065,227 Bl, issued Nov. 22, 2011.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.
ANALYSIS
Rejection under 35 U.S.C. § 1 OJ
The Appellants argue that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea and is "significantly more" than
the alleged abstract idea (App. Br. 6-19, Reply Br. 2-10).
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
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In contrast the Examiner has determined that rejection of record is
proper (Final Act. 2-5, Ans. 2-8).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a "new and useful process, machine, manufacture,
or composition of matter." 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: "laws of nature,
natural phenomena, and abstract ideas" are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Id. at 2355 ( citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)). In accordance with that framework, we first determine whether the
claim is "directed to" a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as "an ordered
combination" to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application of the abstract idea. Id.
This is a search for an "inventive concept" an element or combination of
elements sufficient to ensure that the claim amounts to "significantly more"
than the abstract idea itself. Id. The Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention". Id. at 2358.
Here, we determine that the claim is directed to the concept of
estimating the risk and spend profiles for a business. This is a fundamental
economic practice long prevalent in our system of commerce and an idea in
itself, and is an abstract idea beyond the scope of§ 101. See Electric Power
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Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting
information, analyzing it, and displaying results from certain results of the
collection and analysis was held to be an abstract idea.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not. The Specification at paras. 75-85 describes using conventional
computer components in a manner for their known functions.
Considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
We note the point about pre-emption (App. Br. 14--16, Reply Br. 6, 7).
While pre-emption "might tend to impede innovation more than it would
tend to promote it, 'thereby thwarting the primary object of the patent laws'"
(Alice, 134 S. Ct. at 2354 (quoting Mayo Collaborative Servs., 132 S. Ct. at
1293)), "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, 1362-63 (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.").
The Appellants, in the Appeal Brief at pages 7-13, have cited
to Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show
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that the claim is not abstract. But the claims in that case were not similar in
scope to those here. In contrast, those claims were directed to a self-
referential data table.
The Appellants, in the Reply Brief at pages 4--7, have also cited to
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016). But the claims in that case are distinguished from this case in being
directed to rules for lip sync and facial expression animation.
For these above reasons, the rejection of claim 1, and its dependent
claims which are directed to similar subject matter, is sustained.
We reach the same conclusion as to independent system claims 9 and
13 and their dependent claims. Here, as in Alice, "the system claims are no
different in substance from the method claims. The method claims recite the
abstract idea implemented on a generic computer; the system claims recite a
handful of generic computer components configured to implement the same
idea." Alice 134 S. Ct. at 2351. "[T]he mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention. Stating an abstract idea 'while adding the words "apply
it'" is not enough for patent eligibility." Id. at 2358 ( quoting Mayo, 132 S.
Ct. at 1294).
Rejection under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art does not disclose claim limitations requiring:
receiving, by the receiving device of the processing server, a
score request requesting the processing server to calculate at least one
of a risk score and a behavior score, wherein the score request includes
a set of one or more entity identifiers; ...
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in response to receiving the score request, calculating, by a
processing device of the processing server, the requested score for
each entity associated with an entity profile in the identified set of one
or more entity profiles by applying the at least one scoring
algorithm, ...
(App. Br. 20, 21, emphasis original).
In contrast, the Examiner has cited to the prior art as disclosing the
above argued claim limitations and cited in particular to Collier at Fig. 4--11
and Beckman at col. 5, lines 5----67 (Ans. 9-11 ).
We agree with the Examiner and adopt the findings made in this
regard. The Appellants argue, for example, that Collier's calculated score is
"based on comments that people leave about the user" (App. Br. 23,
emphasis original). The Appellants also argue that the feedback rating in
Collier is "calculated based on positive and negative reviews that a user
has received from other users" (Reply Br. 12, emphasis original).
However, the argued claim limitation for a "behavior score" is broad enough
to include the feedback and review system of Collier which indicates the
user's behavior to others and meets the argued claim limitation. The
Appellants also argue that in Collier, the score is "continuously" displayed
rather than being updated in response to a requested score (App. Br. 24).
However, Beckman at col. 7, lines 13-15 discloses custom models can
include behavior models when a new score is requested.
As the cited rejection discloses a combination that suggests the argued
claim limitations the rejection of claim 1 is sustained. The Appellants have
provided similar arguments for claims 9, 13, and the remaining claims, and
the rejection of these claims is sustained as well.
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CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 3, 4, 9, 11-13, and 15-18 under 35 U.S.C. § 101.
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 1, 3, 4, 9, 11-13, and 15-18 under 35 U.S.C. § 103(a) as
listed in the Rejections section above.
DECISION
The Examiner's rejection of claims 1, 3, 4, 9, 11-13, and 15-18 is
sustained.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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