Ex Parte Grossman et al

Patent Trial and Appeal Board

Mar 7, 2016

13646285 (P.T.A.B. Mar. 7, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/646,285 10/05/2012
71973 7590 03/08/2016
HOFFMANN & BARON, LLP
6900 JERICHO TURNPIKE
SYOSSET, NY 11791
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.
1788-77 7744
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
MAILDATE DELIVERY MODE
03/08/2016 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID GROSSMAN, ANNA HSU, MARIA D' ALBERT,
STEVEN BRUCE OSHRY, and HENRY WEINBERGER
Appeal2016-002708 1
Application 13/646,2852
Technology Center 3600
Before BIB HU R. MOHANTY, SHEILA F. Mc SHANE, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-3, 5, 6, 8, 9, and 11-13. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appeal Brief ("Appeal Br.," filed
Aug. 13, 2015), the Reply Brief ("Reply Br.," filed Jan. 4, 2016), the
Examiner's Answer ("Ans.," mailed Nov. 4, 2015), the Final Action ("Final
Act.," mailed Jan. 26, 2015), and the Specification ("Spec.," filed Oct. 5,
2012).
2 According to the Appellants, the real party in interest is MasterCard
International, Inc. Appeal Br. 2.
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Application 13/646,285
STATEMENT OF THE CASE
The Appellants' invention "relates to business analysis. More
specifically, disclosed is a system and method for nominating a proposed set
of peer competitors to a business enterprise for benchmarking, performance
analysis, competitive analysis, acquisition of, retention of, and promotion to
customers of that business enterprise, to aid in planning operations and
growth." Spec. i12.
Claims 1, 12, and 13 are the independent claims on appeal. Claim 1 is
exemplary of the subject matter on appeal and is reproduced below:
1 A computer-based method of identifying candidate
enterprises for inclusion in a competitive set assembled for the
purpose of competitively analyzing a subject enterprise, the
method comprising:
using a computing device operatively connected with a
data storage storing therein transactional data describing a
plurality of cashless purchase transactions using a payment
device related to each of a subject enterprise and competitive
enterprises, and their respective customers, from \'l1hich
transactional data identifying information and numerically
quantifiable firmographic characteristics are derivable,
identifying numerically quantifiable firmographic characteristics
of the subject enterprise, the characteristics including one or
more of a geographic location of the subject enterprise, a size of
the physical presence of the subject enterprise, a dollar volume
of revenue of the subject enterprise, a classification of the
business engaged by the subject enterprise, market share of the
subject enterprise, average purchase size by customers of the
subject enterprise, purchase frequency by customers of the
subject enterprise, size of customer base of the subject enterprise,
commonality of the customer base, demographic characteristics
of the customer base of the subject enterprise, location of
customers of the subject enterprise, degree of customer loyalty
to the subject, the subject enterprise's share of the customer's
wallet, the channels of trade engaged in by the subject enterprise,
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and attributes pertaining to the interaction between the subject
enterprise and third party suppliers, service providers or
resellers;
using the computing device, compiling a list of candidate
enterprises based upon a predetermined degree of numerical
similarity between the subject enterprise and/or the identified
competitive enterprise on the one hand, and the candidate
enterprise on the other, in a plurality of the identified numerically
quantifiable firmographic characteristics derived from the
transactional history data;
selecting a first plurality of nominee enterprises to
populate the competitive set from among the list of candidate
enterprises for inclusion in the competitive set; and
validating the competitive set of nominee enterprises for
compliance with predetermined validation criteria, said
validation criteria being collectively applicable to the
competitive set.
Appeal Br. 12, Claims App.
REJECTIONS
Claims 1-3, 5, 6, 8, 9, and 11-13 stand rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
Claims 1-3, 5, 6, 8, 9, and 11-13 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the Performance Measurement Group's
online benchmarking offering (References C, D, and H, as identified in the
Final Action) (hereinafter collectively referred to as "PMG") and Ho (US
2004/0153359 Al, pub. Aug. 5, 2004).
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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 evidence. 3
ANALYSIS
Patent-Eligible Subject Matter
The Examiner finds claims 1-3, 5, 6, 8, 9, and 11-13 unpatentable
because they are directed to a non-statutory abstract idea. Final Act. 8. The
Appellants argue claims 1-3, 5, 6, 8, 9, and 11-13 as a group. See Appeal
Br. 6-8. We select claim 1 as representative of the claims being rejected.
See 37 C.F.R. § 41.37(c)(iv) (2014).
The Appellants contend the rejection is in error because the claims
"amount to 'significantly more' than the judicial exception" of an abstract
idea. Appeal Br. 7. Specifically, the Appellants argue that the claims
provide "improvements to a technical field." Id. at 8.
The Supreme Court has long held that laws of nature, abstract ideas,
and natural phenomena are excluded from patent protection. See Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293
(2012); Diamond v. Diehr, 450 U.S. 175, 185 (1981). Although a law of
nature or an abstract idea, by itself, is not patentable, a practical application
of the law of nature or abstract idea may be deserving of patent protection.
See Mayo, 132 S. Ct. at 1293-94. In Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347 (2014), the Court reiterated the framework, set forth
3 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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previously in Mayo, "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of [these] concepts." Alice, 134 S. Ct. at 23 5 5 (citation
omitted). The first step in this analysis is to "determine whether the claims
at issue are directed to one of those patent-ineligible concepts." Id. (citation
omitted). If so, in the second step, the elements of the claims "individually
and 'as an ordered combination'" are considered to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 132 S. Ct. at 1297, 1298).
Stated differently, the second step is a "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. (brackets in original) (quoting Mayo, 132
S. Ct. at 1294).
The Specification describes the invention as related generally "to
business analysis" and specifically to "nominating a proposed set of peer
competitors to a business enterprise for benchmarking, performance
analysis, competitive analysis, acquisition of, retention of, and promotion to
customers of that business enterprise, to aid in planning operations and
growth." Spec. i-f 2. Claim 1 recites a method "of identifying candidate
enterprises for inclusion in a competitive set assembled for the purpose of
competitively analyzing a subject enterprise" comprising identifying
numerically quantifiable characteristics of an enterprise, compiling a list of
candidate enterprises, selecting a first plurality of nominee enterprises to
populate the competitive set, and validating the competitive set with
predetermined criteria. Appeal Br. 12, Claims App.; see also Spec. i-fi-18, 9.
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Claim 1 describes the method as "computer-based" but uses a computing
device only for the identifying and compiling steps. A computing device is
not required for the selecting and validating steps. These steps could be
performed manually or mentally. Even as to the identifying and compiling
steps, the computing device functions no differently than a conventional
computer; that is, it identifies data and compiles a list. As reasonably
broadly construed, claim 1 is drawn to the concept of benchmarking, i.e.
analyzing, enterprises. See Final Act. 8, Appeal Br. 7. We find that the
concept of analyzing enterprises is a fundamental economic practice.
Because we find that claim 1, as reasonably broadly construed, is directed to
the concept of analyzing enterprises, i.e., a fundamental economic practice,
claim 1 is directed to a patent-ineligible abstract idea.
Turning to the second step outlined in Alice, we next consider whether
there is an inventive concept, defined by an element or combination of
elements in claim 1, which is significantly more than the abstract idea of
analyzing enterprises. We agree with the Examiner that here, there is no
such inventive concept. See Ans. 4--9. We find unpersuasive the
Appellants' argument that the claimed invention provides significantly more
than benchmarking because the invention "resolves existent problems of
competitive enterprises data quality issues such as inclusions of irrelevant
enterprises with respect to the subject enterprise." Appeal Br. 8.
"[P]roviding and improved solution in the field of competitive
benchmarking" (id.) does not improve a technological process (see Alice,
134 S.Ct. at 2358), but rather relates to a business challenge not particular to
the Internet. See Ans. 6; cf DDR Holdings, LLC v. Hotels.com L.P., 773
F.3d 1245, 1257. (Fed. Cir. 2014) (finding that retaining website visitors is a
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business challenge particular to the Internet). Here, the claimed invention
merely recites the performance of a business practice known from the pre-
computer world with the requirement that some of the steps be performed by
a generic computing device. See Ans. 7-9. The problems with "competitive
enterprises data quality issues" do not specifically arise from the realm of
computers. See DDR, 773 F.3d at 1257. Thus, the improvements to data
quality issues do not add anything of significance to the abstract idea of
analyzing businesses. Therefore, we agree with the Examiner that claim 1
does not include additional inventive features such that the claim scope does
not solely capture the abstract idea.
For the foregoing reasons, the Examiner's rejection of claim 1 under
35 U.S.C. § 101 is sustained. For the same reasons, we also sustain the
Examiner's rejection of claims 2, 3, 5, 6, 8, 9, and 11-13.
Obviousness
The Appellants argue claims 1-3, 5, 6, 8, 9, and 11-13 as a group.
Appeal Br. 8. We select claim 1 as representative. Claims 2, 3, 5, 6, 8, 9,
and 11-13 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(iv) (2014).
The Appellants contend that PMG, upon which the Examiner relies,
"does not teach or disclose validation criteria being collectively applicable to
a competitive set." Appeal Br. 9. Specifically, the Appellants argue that
"while PMG teaches predetermined validation criteria which include the
[validation] questions, PMG does not teach or suggest the validation criteria
that are applicable to a competitive set, individually or collectively." Id. at
10.
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The Examiner finds that the validation criteria of PMG "apply to any
company choosing to participate in the benchmarking study [and] are as
'collectively applicable' as much as is claimed." Ans. 10. The Examiner
finds that PMG's "industry segment" against which the company's data are
compared meets the limitation of "competitive set." Final Act. 17, Ans. 11.
The Examiner further finds that PMG validates data of every company
choosing to participate in the study to "ensure an individual company is
compared against businesses of the same type," i.e. industry segment. Thus,
the Examiner finds PMG meets the limitation of "validating the competitive
set of nominee enterprises for compliance with predetermined validation
criteria, said validation criteria being collectively applicable to the
competitive set," as interpreted in light of the Specification. Ans. 11-12
(citing Spec. i-fi-130, 31 ), Final Act. 17.
PMG discloses validating data for each business (company)
completing any of the Supply-Chain Management Benchmarking Series
surveys using criteria comprising "key validation questions" including
whether all the requested data has been provided, whether the data is in the
requested format, whether there is any conflicting data, and whether the data
provide appropriate indications. Reference H, pp. 1-2. Each business
completing a survey is a "subscriber." See Reference C, p. 2, Reference D,
p. 1. Each survey enables comparisons of the business with other
subscribers within the business's industry. Reference C, p. 3.
During examination, "claims ... are to be given their broadest
reasonable interpretation consistent with the specification, and ... claim
language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech
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Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (citations omitted). However,
limitations appearing in the specification, but not recited in the claim, will
not be read into the claim. See CollegeNet, Inc. v. Apply Yourself, Inc., 418
F.3d 1225, 1231 (Fed. Cir. 2005). Thus, the Examiner's finding that PMG
discloses validating the competitive set of nominee enterprises, i.e. the
subscribers within the same industry, with predetermined validation criteria,
i.e. the key validation questions, that are collectively applicable to the
competitive set, i.e. applicable to every subscriber (see Ans. 11-12, Final
Act. 1 7), is reasonable and supported by a preponderance of the evidence.
The Appellants' argument that "PMG's 'validation criteria' are used
to control supply data quality of the subject enterprises only" and are thus
"not analogous to the validation criteria that are used in Appellant[']s'
independent claims" (Appeal Br. 10) is unpersuasive. As discussed above,
the criteria are used to validate data of each subscriber, including those that
make up the competitive set, and are thus "collectively applicable to a
competitive set."
Thus, for the above reasons, we sustain the Examiner's rejection of
claim 1 under 35 U.S.C. § 103. For the same reasons, we also sustain the
Examiner's rejection of claims 2, 3, 5, 6, 8, 9, and 11-13.
DECISION
The Examiner's rejection of claims 1-3, 5, 6, 8, 9, and 11-13 under
35 U.S.C. § 101 is AFFIRMED.
The Examiner's rejection of claims 1-3, 5, 6, 8, 9, and 11-13 under
35 U.S.C. § 103(a) is AFFIRMED.
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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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