Ex Parte GROSSMAN

Patent Trials and Appeals Board

Mar 22, 2019

14219215 - (D) (P.T.A.B. Mar. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/219,215 03/19/2014
21839 7590 03/26/2019
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
David GROSSMAN
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.
0076412-000219 4337
EXAMINER
TINKLER, MURIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
03/26/2019 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID GROSSMAN
Appeal2017-011233
Application 14/219 ,215
Technology Center 3600
Before JENNIFER S. BISK, LINZY T. McCARTNEY, and
JOYCE CRAIG, Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134 from a rejection of claims
1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 Appellant identifies the real party in interest as MasterCard International
Incorporated. App. Br. 2.
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BACKGROUND2
The claims are directed to predicting consumer behavior. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method for predicting consumer behavior based on a
propensity to have available funding, comprising:
storing, in a consumer database of a processing server of a
payment network, a plurality of consumer profiles, wherein each
consumer profile includes data related to one or more consumers
including at least consumer data and a profile identifier;
receiving, by a receiving device of the processing server
of the payment network, an authorization request or clearing
record for a payment transaction, wherein the authorization
request or clearing record includes at least an indication of the
payment transaction as an installment transaction, transaction
data, a specific profile identifier, a repayment length, and an
installment amount;
identifying, by a processing device in the consumer
database of the processing server of the payment, a specific
consumer profile comprising an indication of a propensity to
have available funding, where the included profile identifier
corresponds to the specific profile identifier, and the propensity
to have available funding is determined based on the repayment
length and the installment amount of the payment transaction;
and
transmitting, by a transmitting device of the processing
server of the payment network to a content provider, the specific
consumer profile comprising the indication of the propensity to
have available funding, wherein the indication of the propensity
to have available funding includes at least the consumer data
included in the identified specific consumer profile and the
2 Throughout this Decision we have considered the Specification filed
March 19, 2014 ("Spec."), the Final Rejection mailed November 03, 2016
("Final Act."), the Appeal Brief filed May 3, 2017 ("Appeal Br."), the
Examiner's Answer mailed June 29, 2017 ("Ans."), and the Reply Brief
filed August 29, 2017 ("Reply Br.").
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installment amount included m the received authorization
request or clearing record.
REJECTIONS
The Examiner made the following rejections:
Claims 5 and 15 are rejected under 35 U.S.C. § 112(a), first
paragraph, as failing to comply with the written description requirement.
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to non-statutory subject matter.
Claims 1-20 are rejected under 35 U.S.C. § I02(a)(2) as being
anticipated by US 2009/0037323 Al, published February 5, 2009
("Feinstein").
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 3 7 C.F .R.
§ 4I.37(c)(l)(iv).
We have considered all of Appellant's arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Claims 5 and 15 under 35 U.S.C. § 112
The Examiner rejects dependent claims 5 and 15 under 35 U.S.C.
§ 112(a)3 as failing to comply with the written description requirement
3 Because this application was filed on March 19, 2014, we apply§ 112 as
amended on Sept. 16, 2011.
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because the term "microsegment" was not defined in the Specification.
Final Act. 7.
Appellant disagrees, arguing that the term "microsegment" is
sufficiently described by the Specification. Appeal Br. 5. Specifically,
Appellant points to paragraph 25, which states "in one embodiment, the
consumer 102 may be included in a micro segment of other consumers, and
the third party 110 may be provided with information regarding available
funding or consumer behavior models for the microsegment of consumers."
Spec. ,r 25. According to Appellant, "[i]t is clear from this context that the
term microsegment is used to mean a small group and/or small cluster of
consumers by the plain meaning of the term itself (micro means small and
segment meaning portion, in context of a population of people)." Appeal Br.
5. Appellant adds that "'microsegments' is a term used in the industry." Id.
(citing US 2013/0024242 Al, published Jan. 24, 2013 ("Villars I"); US
2013/0024274 Al, published Jan. 24, 2013 ("Villars II")). Based on these
arguments, Appellant contends that a person of ordinary skill in the art
"would understand the term 'microsegment' to be a term of art" and
"sufficiently described to allow one skilled in the art to reasonably conclude
that the inventor had possession of the claimed invention." Reply Br. 2.
The Examiner does not agree, explaining that the language of
paragraph 25 quoted above does not actually define the term
"microsegment" and noting that Appellant did not add the purported
definition to the claims. Ans. 11-12. However, the Examiner does not
address Appellant's argument that a person of ordinary skill in the art would
have understood the term "microsegments" to be a term of art meaning a
small group or cluster. The Examiner also does not address Appellant's
proffered evidence-the two previously published applications-supporting
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the position that the term "microsegment" is a term of art that would have
been understood by a person of ordinary skill. Finally, the Examiner does
not address Appellant's argument that the plain meaning of the term
"microsegment" supports a meaning of small group or cluster.
We agree with Appellant that the evidence supports a finding that a
person of ordinary skill in the art would have understood the term
"microsegment," which was referred to in the originally filed Specification
(Spec. ,r 25), as a small group or cluster. For example, Villars I describes
"microsegments, each microsegment including a group of entities, wherein
every entity of the group of entities has at least one characteristic or activity
in common." Villars I ,r 9. Similarly, Villars II describes "generating a
plurality of microsegments, each microsegment including a subset of the
plurality of entities based on the associated characteristic information."
Villars II, Abstract. We also agree that a person of ordinary skill in the art
would recognize, based on the prefix "micro" and the root "segment," the
plain meaning of the term "microsegment" to be consistent with a meaning
of small group or cluster.
For these reasons, we agree with Appellant that the Specification
describes the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention at the time of filing. See Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010).
We, therefore, do not sustain the Examiner's rejection of claims 5 and
15 under U.S.C. § 112(a).
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Rejection of Claims 1-20 under 35 U.S. C. § 1 OJ
For the§ 101 rejection, Appellant argues claims 1-20 together. See
Appeal Br. 6-15. As permitted by 37 C.F.R. § 41.37, we decide the appeal
for this rejection based on claim 1. See 37 C.F.R. §4I.37(c)(l)(iv).
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
"Laws of nature, natural phenomena, and abstract ideas are not patentable."
Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is "directed to one of those patent-ineligible
concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of
each 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." Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an "inventive concept," "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."' Alice, 573 U.S. at 217-18 ( alteration in original) ( quoting
Mayo, 566 U.S. at 72-73).
The Patent Office recently issued guidance regarding this framework.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) ("Revised Guidance"). Under the Revised Guidance, to
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decide whether a claim is "directed to" an abstract idea, we evaluate whether
the claim (1) recites subject matter falling within an abstract idea grouping
listed in the Revised Guidance and (2) fails to integrate the recited abstract
idea into a practical application. See Revised Guidance, 84 Fed. Reg. at 51.
If the claim is "directed to" an abstract idea, as noted above, we then
determine whether the claim recites an inventive concept. The guidance
explains that when making this determination, we should consider whether
the additional claim elements add "a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field" or "simply append[] well-understood, routine, conventional activities
previously known to the industry." Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we tum to the Examiner's § 101
rejection.
"Directed to an Abstract Idea "-Abstract Idea
The Examiner determined that claim 1 is "directed to" an abstract idea
because the claim recites a fundamental economic practice. Final Act. 10.
For the reasons explained below, we see no error in this determination.
Claim 1 recites the following limitations: ( 1) "storing ... a plurality of
consumer profiles, wherein each consumer profile includes data related to
one or more consumers including at least consumer data and a profile
identifier"; (2) "receiving ... an authorization request or clearing record for
a payment transaction, wherein the authorization request or clearing record
includes at least an indication of the payment transaction as an installment
transaction, transaction data, a specific profile identifier, a repayment length,
and an installment amount"; (3) identifying ... a specific consumer profile
comprising an indication of a propensity to have available funding, where
the included profile identifier corresponds to the specific profile identifier,
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and the propensity to have available funding is determined based on the
repayment length and the installment amount of the payment transaction";
and (4) "wherein the indication of the propensity to have available funding
includes at least the consumer data included in the identified specific
consumer profile and the installment amount included in the received
authorization request or clearing record." Appeal Br. 23 (Claims Appendix).
These limitations, under their broadest reasonable interpretation, recite a
method of predicting the availability of consumer funding for an installment
transaction.
For example, "storing ... a plurality of consumer profiles, wherein
each consumer profile includes data related to one or more consumers
including at least consumer data and a profile identifier," as recited in
limitation ( 1) stores data related to various consumers, and from this data, a
particular consumer profile is "identif1ied]" that includes "the propensity to
have available funding, "as recited in limitation (3), where that propensity is
calculated as in limitation ( 4), based on a received "authorization request or
clearing record for a payment transaction, wherein the authorization request
or clearing record includes at least an indication of the payment transaction
as an installment transaction, transaction data, a specific profile identifier, a
repayment length, and an installment amount," as recited in limitation (2).
All of these limitations contribute to the method of predicting the availability
of consumer funding for an installment transaction. The installment
transaction at issue is a type of purchase and predicting the availability of
consumer funding for that transaction is an economic act similar to
processing an application for financing a purchase found to be an abstract
idea in Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed.
Cir. 2017). Similarly, "[ w ]e see no meaningful distinction between this type
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of financial industry practice and 'the concept of intermediated settlement'
held to be abstract in Alice ... or the 'basic concept of hedging' held to be
abstract in Bilski." Id. at 1054 (citingAlice, 134 S.Ct. at2356;Bilskiv.
Kappas, 561 U.S. 593, 611, 1 (2010)); see also BuySAFE, Inc. v. Google,
Inc., 765 F.3d 1350 (Fed. Cir. 2014) (holding unpatentable claims "squarely
about creating a contractual relationship----a 'transaction performance
guaranty'-that is beyond question of ancient lineage"). Accordingly, we
conclude the claims recite a fundamental economic practice, which is a
certain method of organizing human activity identified in the Revised
Guidance, and thus an abstract idea. Revised Guidance, 84 Fed. Reg. at 52,
53 (listing "Certain methods of organizing human activity-fundamental
economic principles or practices" as one of the "enumerated groupings of
abstract ideas").
"Directed to an Abstract Idea "-Practical Application
If a claim recites a judicial exception, 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. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of "a consumer database
of a processing server of a payment network," "a receiving device of the
processing server of the payment network," "a processing device in the
consumer database of the processing server," and "transmitting, by a
transmitting device of the processing server of the payment network to a
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content provider, the specific consumer profile comprising the indication of
the propensity to have available funding." Appeal Br. 23 (Claims
Appendix).
Considering claim 1 as a whole, the additional elements do not apply
or use the abstract idea in a meaningful way such that the claim as a whole
are not more than a drafting effort designed to monopolize the exception.
The Supreme Court guides that the "prohibition against patenting abstract
ideas 'cannot be circumvented by attempting to limit the use of the formula
to a particular technological environment' or [by] adding 'insignificant
postsolution activity."' Bilski, 561 U.S. at 610-11 (quoting Diehr, 450 U.S.
at 191-92).
The Specification describes each of these elements as generic
components. The Specification discloses that the data at issue "may be
configured in any type of suitable database configuration," noting that
"[ s Jui table configurations and storage types will be apparent to persons
having skill in the relevant art." Spec. ,r 64. Similarly, the Specification
discloses that the "processing server" "may be a computing system
configured to predict consumer behavior based on installment transactions"
and may include "a receiving unit," "a processing unit," "a transmitting
unit," "a memory," and a "transaction database." Id. ,r,r 22, 28, 31-34. Each
of these items is a component of a general-purpose computer. Id. ,r 57----67;
see also ,r 19 ("The payment transaction may be conducted ... via
telephone, the Internet, ... a mobile device 103, such as a cellphone,
smartphone, tablet computer, etc."). Simply programming a general-purpose
computer to perform abstract ideas does not integrate those ideas into a
practical application. See Revised Guidance, 84 Fed. Reg. at 55 (identifying
"merely includ[ing] instructions to implement an abstract idea on a
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computer" as an example of when an abstract idea has not been integrated
into a practical application).
As for "transmitting ... the specific consumer profile comprising the
indication of the propensity to have available funding," this is simply a
routine function used to implement the underlying abstract idea of predicting
the availability of consumer funding for an installment transaction. See
Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1262 ("The
claim simply recites the use of ... routine functions, such as transmitting
and receiving signals, to implement the underlying idea."); see also
BuySAFE, 765 F.3d at 1355 ("That a computer receives and sends the
information over a network-with no further specification-is not even
arguably inventive. The computers in Alice were receiving and sending
information over networks connecting the intermediary to the other
institutions involved, and the Court found the claimed role of the computers
insufficient."). The Specification does not describe any particular way of
transmitting data. See Spec. ,r 43 ("The consumer-specific content may be
transmitted to the mobile device 103 via methods that will be apparent to
persons having skill in the relevant art, such as e-mail, short message service
message, multimedia message service message, telephone, an application
program, etc."). The mere function of transmitting is not a "specific
improvement to the way computers operate." Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Appellant's arguments have not persuaded us claim 1 is "directed to"
a patent-eligible concept. For example, Appellant argues that claim 1
focuses on a technical improvement, but Appellant does not further explain
this contention. Appeal Br. 11-13 (citing BASCOM Global Internet
Services v. AT&T Mobility, LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
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Appellant, however, does not identify, and we cannot see in the claims, any
"specific improvement in the way computers operate" or any other
improvement to technology. Enfish, 822 F.3d at 1336. Instead, in reviewing
the record, we find the claims on appeal are silent regarding specific
limitations directed to an improved computer or technology.
Appellant also compares the application's claims to those in Example
35 of the "Subject Matter Eligibility Examples: Business Methods," issued
by the Office in December, 2016 ("the 2016 Examples") and those found
patentable in BASCOM Global Internet Services v. AT&T Mobility, LLC,
827 F.3d 1341 (Fed. Cir. 2016). Appeal Br. 13-14; Reply Br. 2-3. These
arguments are unavailing. The Federal Circuit held in BASCOM that "the
patent described[ d] how its particular arrangement of elements [was] a
technical improvement over the prior art ways of filtering such content."
BASCOM, 827 F.3d at 1350. Appellant does not point out where the
Specification provides such description. On the contrary, the Specification
provides that the invention can be realized on "various computer system
configurations." Spec. ,r 58. We also see no language recited in the claims
that specifically improves any of the recited generic computer components.
As BASCOM recognized, claims like these that "merely recite the abstract
idea ... along with the requirement to perform it on ... a set of generic
computer components" do not contain an inventive concept. BASCOM, 827
F.3d at 1350.
For these reasons, we determine that claim 1 does not integrate the
recited abstract idea into a practical application.
Inventive Concept
Because we agree with the Examiner that claim 1 is "directed to" an
abstract idea, we consider whether an additional element ( or combination of
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elements) adds a limitation that is not well-understood, routine, conventional
("WURC") activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. The Examiner's finding that an additional element ( or
combination of elements) is WURC activity must be supported with a
factual determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum4).
Whether the additional elements ("a consumer database of a
processing server of a payment network," "a receiving device of the
processing server of the payment network," "a processing device in the
consumer database of the processing server," and "transmitting, by a
transmitting device of the processing server of the payment network to a
content provider, the specific consumer profile comprising the indication of
the propensity to have available funding") are WURC activity is a question
of fact. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018)
("Whether something is well-understood, routine, and conventional to a
skilled artisan ... is a factual determination.").
Here, as the Examiner points out (Ans. 15), Appellant's Specification
demonstrates the WURC nature of the additional elements because it
indicates the additional elements are sufficiently well-known that the
Specification does not need to describe the particulars of such additional
elements. See, e.g., Spec. ,r,r 19, 33, 43, 59, 60, 63, and 67 ( discussed
above). In addition, courts have recognized that receiving or transmitting
4 "Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)," April 19, 2018 (hereinafter "Berkheimer Memorandum").
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data over a network is WURC. OIP Techs., Inc., v. Amazon.com, Inc., 788
F.3d 1359, 1363 (Fed. Cir. 2015) (sending messages over a network);
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 1355 (Fed. Cir. 2014)
( computer receives and sends information over a network). Courts have also
recognized that storing and retrieving information in memory is WURC.
Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir.
2015); OIP Techs., 788 F.3d at 1363.
Conclusion
For at least the above reasons, we agree with the Examiner that claim
1 is "directed to" an abstract idea and does not recite an "inventive concept."
Accordingly, we sustain the Examiner's rejection of claim 1 under 35 U.S.C.
§ 101. For the same reasons, we also sustain the§ 101 rejection of
independent claim 11 and dependent claims 2-20, not argued separately.
Anticipation Rejection
The Examiner finds that claims 1-20 are anticipated by Feinstein.
Final At. 13-16. Specifically, the Examiner contends that Feinstein
discloses "the propensity to have available funding is determined based on
the repayment length and the installment amount of the payment
transaction" ("the available funding limitation"), as recited by both
independent claims 1 and 11. Final Act. 13-14 ( citing Feinstein, Abstract).
The Examiner adds that Feinstein teaches "simulated balances," which "can
in fact predict a change [ of] future credit risk if the individual takes [the]
contemplated action." Ans. 16. Moreover, according to the Examiner,
"Feinstein's 'credit worthiness' involves a prediction model that predicts a
statistical interaction of performance expectation with likely post-scoring
behavior." Id. at 16.
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Appellant argues that Feinstein does not teach or suggest the available
funding limitation. Appeal Br. 16-18. According to Appellant, Feinstein
discloses determining a consumer's credit risk score based on credit bureau
information, but not to using repayment length or installment amount to
determine available funds and a propensity to spend. Id. at 18.
We agree with Appellant that the Examiner does not sufficiently
explain, nor is it obvious from the cited portion of Feinstein, how Feinstein's
prediction model makes use of a requested repayment length or installment
amount to determine a propensity to have available funding as recited by the
claims. And while Feinstein uses the term "simulated balance," the
Examiner does not sufficiently explain how Feinstein discloses that those
simulated balances are in any way related to the claimed repayment length
or installment amount. See Ans. 16; Feinstein ,r,r 41, 165.
We, therefore, do not sustain the Examiner's rejection of claims 1-20
as unpatentable under 35 U.S.C. § 102(a) as anticipated by Feinstein.
CONCLUSION
We conclude the Examiner erred in rejecting claims 5 and 15 under
35 U.S.C. § 112(a) and in rejection claims 1-20 as anticipated by Feinstein.
We conclude Appellant has not demonstrated the Examiner erred in
rejecting claims 1-20 under 35 U.S.C. § 101.
DECISION
Because we affirm at least one ground of rejection with respect to
each claim on appeal, we affirm the Examiner's rejection of claims 1-20.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
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AFFIRMED
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