Ex Parte Huerta et al

Patent Trial and Appeal Board

Dec 26, 2018

14138194 (P.T.A.B. Dec. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/138,194 12/23/2013 Juan Huerta
13708 7590 12/26/2018
Johnson, Marcou & Isaacs, LLC
PO Box 691
Hoschton, GA 30548
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.
CITI-0746 4558
EXAMINER
SHARVIN, DAVID P
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
12/26/2018 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
ExparteJUANHUERTA, YULINNING,
and LEANDRO DALLE MULE
Appeal2017-011303
Application 14/138,194
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
MANTIS MERCADER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1 and 5-27, which constitute all the pending claims
in this application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Citibank, N.A. as the real party in interest (App. Br. 3).
Appeal 2017-011303
Application 14/138,194
THE INVENTION
Appellants' claimed invention is directed to "assessing behavior, such
as fraud and risk, in financial entities and transactions," in which a "behavior
score [is] generated for each entity" (Abstract).
Independent claim 1, reproduced below, is representative of the
subject matter on appeal:
1. A method for assessing financial institution branch
behavior, comprising:
receiving, using a processing engine computer having a
processor coupled to memory, data related to a plurality of
branches of a financial institution;
segmenting, using the processing engine computer, the
plurality of branches into a plurality of branch peer groups
based at least in part on a plurality of branch operational risk
behavior components consisting at least in part of observed
branch losses identified for each branch of the financial
institution in the received data;
normalizing, using the processing engine computer, each
of the branch operational risk behavior components for each of
the branch peer groups; and
generating, using the processing engine computer, a
branch operational risk behavior score for each branch of the
financial institution based on a comparison of operational risk
behavior values of each branch of the financial institution to a
branch operational risk behavior norm for the branch peer
group into which the branch is segmented.
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Application 14/138,194
REJECTION
The Examiner made the following rejection:
Claims 1 and 5-27 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or an abstract idea) without significantly more. Ans. 2,
Final Act. 11. 2
ISSUE
The pivotal issue is whether the Examiner erred in finding the claimed
invention is directed to a judicial exception without significantly more.
ANALYSIS
Appellants argue that none of the cases cited by the Examiner as
illustrations of judicial exceptions to statutory subject matter are "remotely
related or analogous to Applicants' claimed invention" (Reply Br. 2; see
Reply 2-5) and "the Examiner's references to such unrelated historic
examples is no substitute for a specific, plausible analysis regarding how or
why the specific claim language supports the Examiner's conclusion that the
claims are directed to the alleged 'abstract idea"' (Reply Br. 5). Appellants
contend "[t]he Examiner's reasoning ... demonstrates conclusively that the
Examiner deems all software and computer-implemented inventions to be
per se patent-ineligible 'abstract ideas"' (Reply Br. 7). Appellants further
contend that "the claimed invention provides a modeling process that
employs many different programming languages, multiple processing
platforms, and a series of advanced analytic techniques" (Reply Br. 8).
2 The Examiner introduced new grounds for the rejection under 35 U.S.C.
§ 101 that was made in the Final Action. See Ans. 2, 5.
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Application 14/138,194
We do not agree with Appellants' arguments. In Alice, the Supreme
Court sets 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." Alice Corp. Pty. Ltd.
v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (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. ( citing Mayo,
566 U.S. at 77-78). 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 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. (brackets 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 post-solution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted).
With respect to Alice step one, "[t]he 'abstract idea' step of the
inquiry calls upon us to look at the 'focus of the claimed advance over the
prior art' to determine if the claim's 'character as a whole' is directed to
excluded subject matter." Affinity Labs of Texas, LLC v. DirectTV, LLC,
838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v.
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Application 14/138,194
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) ("[T]he 'directed to'
inquiry applies a stage-one filter to claims, considered in light of the
specification, based on whether 'their character as a whole is directed to
excluded subject matter."' (Citation omitted.)).
Here, the Examiner first finds the claims are "directed to assessing
financial institution branch behavior, specifically risk and fraud, which is an
abstract idea" (Ans. 2-3). We do not find the Examiner's characterization of
the claims as directed to "assessing financial institution branch behavior"-
language taken from the preamble of claim I-to be in error, when
compared to Appellants' disclosure as a whole. For example, Appellants
characterize the present invention as providing "quantitative assessment of
behavior, such as fraud and risk, in financial entities and transactions" (Spec.
iT 1 ).
We also agree with the Examiner's comparisons between the
individual claim steps and claims identified by our reviewing court as being
directed to an abstract idea. Particularly, we find the claimed "receiving,"
"segmenting," "normalizing," and "generating" steps as akin to the claims at
. .
issue m:
I. Elec. Power Grp., 830 F.3d at 1353 (claims directed to "collecting
information, analyzing it, and displaying certain results of the
collection and analysis"); and
2. Digitech Image Technologies, LLC v. Electronics for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014) ("Without additional
limitations, a process that employs mathematical algorithms to
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Appeal 2017-011303
Application 14/138,194
manipulate existing information to generate additional information is
not patent eligible."),
The claim steps, when considered in light of the disclosure, describe the
mathematical concepts used to tum "data related to a plurality of branches of
a financial institution" into a set of "branch operational risk behavior
score[s]," and are indistinguishable from the methods found abstract by our
reviewing court and described above.
With respect to Alice step two, the Examiner finds, and we agree, that
"[t ]he claim(s) do not include additional elements that are sufficient to
amount to significantly more than the judicial exception because the
processing engine computer having a processor coupled to memory is a
generic computer with generic computer components performing the
abstract idea (Ans. 3 (alteration in original) and "[a]pplying an abstract idea
to a particular technological environment does not amount to significantly
more" (Ans. 4). The technical improvements cited by Appellants as
performed by the "claimed invention" (Reply Br. 8, citing Spec. ,r,r 33, 32,
37, 40, 43) describe features not appearing in the claimed invention, and are
themselves described by Appellants in the language of mathematical
techniques, such as "a series of advanced analytic techniques" and
"advanced outlier analytics" (Reply Br. 8).
Similarly, Appellants' argument that "the claimed invention solves
problems that specifically arise in the realm of computing" (Reply Br. 8,
citing Spec. ,r,r 2-3) corresponding to technical advantages related to
"adjust[ing] and adapt[ing] dynamically changing data sets" and providing
scalability "to handle arbitrarily large sets of data and information" (Reply
Br. 8) is not persuasive, as these purported advantages are again tied to the
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abstract method, and are, in Appellants' words, "an abstract-idea-based
solution implemented with generic technical components in a conventional
way" (Reply Br. 10).
Accordingly, we affirm the Examiner's rejection of independent claim
1, and independent claims 24--27 commensurate in scope, and affirm for the
same reasons the rejection of claims 5-23.
CONCLUSION
The Examiner did not err in finding the claimed invention is directed
to a judicial exception without significantly more.
DECISION
The Examiner's decision rejecting claims 1 and 5-27 under 35 U.S.C.
§ 101 is affirmed.
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).
AFFIRMED
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