Ex Parte Lee

Patent Trial and Appeal Board

Oct 10, 2018

14103113 (P.T.A.B. Oct. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/103,113 12/11/2013 Edward Lee
27623 7590 10/10/2018
OHLANDT, GREELEY, RUGGIERO & PERLE, LLP
ONE LANDMARK SQUARE, 10TH FLOOR
STAMFORD, CT 06901
UNITED ST A TES OF AMERICA
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.
0009448USU/4450 1077
EXAMINER
POINVIL, FRANTZY
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
10/10/2018 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
Ex parte EDWARD LEE
Appeal2017-001908
Application 14/103, 113
Technology Center 3600
Before JENNIFER S. BISK, JOHN A. EVANS and JOHN P. PINKERTON,
Administrative Patent Judges.
BISK, Administrative Patent Judge.
DECISION ON APPEAL
Edward Lee (Appellant) 1 appeals under 35 U.S.C. § 134(a) from the
Examiner's decision to reject claims 2-10, 12-19, and 21. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellant's invention relates to assessing the financial condition of a
merchant by retrieving, from one or more databases, information on
(1) merchant aggregated payment card transaction data for a defined time
period, and (2) social media information indicative of consumer sentiment of
1 Appellant identifies the real party in interest as Mastercard International
Inc. App. Br. 2.
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Application 14/103, 113
the merchant for the same period. The information is analyzed to identify
correlations. Based on those correlations, an assessment is made of the
financial condition of the merchant, and the merchant is notified of any
changes in that assessment. See Abstract.
Claim 12 is illustrative:
12. A system for assessing the financial condition of a
merchant comprising:
one or more databases comprising a first set of
information, the first set of information including merchant
aggregated payment card transaction data for a defined time
period;
one or more social media analysis servers having one or
more databases comprising a second set of information, the
second set of information including sentiment information that
determines the nature of sentiments on social media posts to
derive social media information indicative of consumer
sentiment of the merchant for the defined time period;
a processor configured to:
analyze the first set of information and the second set of
information to identify one or more correlations between the merchant
aggregated payment card transaction data and the social media
information indicative of consumer sentiment of the merchant; and
assess the financial condition of a merchant, based on the
one or more correlations.
THE REJECTION
The Examiner rejected claims 2-10, 12-19, and 21 under 35 U.S.C.
§ 101 as directed to ineligible subject matter. Final Act. 2---6. 2
2 Throughout this opinion, we refer to (1) the Final Rejection mailed August
25, 2015 ("Final Act."); (2) the Appeal Brief filed March 25, 2016 ("App.
Br."); (3) the Examiner's Answer mailed September 16, 2016 ("Ans."); and
(4) the Reply Brief filed November 16, 2016 ("Reply Br.").
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ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
contentions and the evidence of record. For the following reasons, we
sustain the Examiner's rejection.
To determine whether claims are patent eligible under§ 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of
nature, natural phenomena, and abstract ideas. Id. at 2354--55. If so, we
then proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Alice Step One
The Examiner finds that the claimed invention is directed to an
abstract idea, namely analyzing first and second information and assessing
the financial condition of a merchant, based on the one or more correlations.
Final Act. 3.
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Appellant appears to agree that at least claims 12-15 and 19 are
directed to the abstract idea of "assessing the financial condition of a
merchant." Appeal Br. 7 ("Claim 12 is directed to the judicially created
exception of an abstract idea, specifically, 'a system for assessing the
financial condition of a merchant."'). For independent claim 21 and
dependent claims 2--4, 9, and 10 that depend from claim 21, Appellant
argues that the recitation of "a computer readable non-transitory storage
medium storing instructions of a computer program" provides structural
limitations such that it qualifies as patent-eligible subject matter. Id. at 13-
14. Appellant, however, does not point to any authority for this contention.
Id. Similarly, Appellant contends that claims 5-8 and 16-18, which require
"using a computing device," "clearly comprise[] a structural limitation, and
[are] directed to . . . statutory subject matter." Id. at 14--15. Again,
Appellant points to no authority to support this contention. To the contrary,
the Supreme Court, in Alice, states that the mere fact that subject matter is
claimed in such a way that it "necessarily exist[ s] in the physical, rather than
purely conceptual, realm" does not end the§ 101 inquiry. Alice, 134 S. Ct.
at 2358---60. Moreover, Alice specifically warns against interpreting§ 101
"in ways that make patent eligibility 'depend simply on the draftsman's
art."' Id.
We agree with the Examiner that claims 2-10, 12-19, and 21 are all
directed to an abstract idea, i.e., retrieving and storing information regarding
the aggregated payment card transaction data for a defined period and data
indicative of consumer sentiment of the merchant for that same period,
analyzing the two types of data to identify correlations, and using that
analysis to assess the financial condition of a merchant. Our reviewing court
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has found similar methods to be abstract ideas. "[W]e have treated
collecting information, including when limited to particular content ( which
does not change its character as information), as within the realm of abstract
ideas." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) ( citations omitted). "In a similar vein, we have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category." Id. at 1354. "And we have recognized that merely
presenting the results of abstract processes of collecting and analyzing
information, without more ( such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis."
Id.
Alice Step Two
Because the claims are directed to an abstract idea, we proceed to step
two to determine whether the claims include additional limitations that
individually, or as an ordered combination, ensure the claims amount to
"significantly more" than the abstract idea. Alice, 134 S. Ct. at 2357. For
example, we look at whether the claims focus on a specific means or method
that improves the relevant technology or instead are directed to a result or
effect that, itself, is the abstract idea and merely invoke generic processes
and machinery. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336
(Fed. Cir. 2016).
According to the Examiner, the claimed elements do not add
significantly more to the abstract idea such that the claimed invention is
rendered patent-eligible because, among other things, the claimed invention
merely uses general-purpose computing devices to receive, store, analyze,
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Application 14/103, 113
and send data. Final Act. 3---6. The Examiner adds that the claimed
processor and database are generic and the "type of data being manipulated
does not impose meaningful limitations or render the idea less abstract."
Ans. 8-9.
Appellant argues that the claims recite additional elements that
amount to significantly more than the identified abstract idea. Appeal Br. 7-
15; Reply Br. 6-10. According to Appellant, the Examiner fails to address
the claims as a whole or as an ordered combination. Id. at 6. In particular,
Appellant argues that the claimed "social media analysis server is not a
general-purpose server" because it has "specific detailed structure to
accomplish the claimed results that have the information indicative of
consumer sentiment of a merchant" and "requires a specialized component
to achieve the results," including "a sentiment analysis module 505, which
determines the nature of the sentiments, such as tone and mood, expressed
by users in social media posts." App. Br. 8; Reply Br. 6-10 (citing Spec.
,r,r 57---61, Figs. 4--5).
The Examiner responds by stating "[ t ]he additional elements when
considered both individually and as a combination do not amount to
significantly more than the abstract idea." Ans. 8. Citing Federal Circuit
decisions Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057
(Fed. Cir. 2011), PerkinElmer, Inc. v. Intema Ltd., 496 Fed. App'x 65 (Fed.
Cir. 2012), and Cybersource Corp. v. Retail Decisions, Inc., 654 F.3d 1366
(Fed. Cir. 2011), the Examiner finds that the focus of Appellant's claims is
capturing information and analyzing the data to produce a result. Ans. 10-
11; also see id. at 12 (citing Internet Patents, 790 F.3d at 1349; OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Content
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Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d
1343, 1347 (Fed. Cir. 2014); Digitech Image Techs., LLC v. Elecs.for
Imagine, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); Cybersource, 654 F.3d
at 1370)). Additionally, the Examiner explains that "[a]s noted in the
Appellant's specification, the generic processor unit can be any known
server or computer processor or software or hardware components" and
"there is not a specific or new algorithm noted in the Appellant's
specification to provide a result based on analyzed data." Id. at 11.
We agree with the Examiner. Considered "both individually and as an
ordered combination," the processor, databases, and program steps of
Appellant's claim add nothing that is not already present when the steps are
considered separately. Alice, 134 S. Ct. at 2355 ( quotations omitted)
(quoting Mayo, 566 U.S. at 78). Appellant has not persuasively argued, nor
pointed to evidence supporting the contention, that the social media analysis
server is not implemented using generic computer equipment performing
routine functions. See, e.g., Intellectual Ventures I LLC v. Capital One Fin.
Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Rather, the claims recite both
a generic computer element-a processor-and a series of generic computer
'components' that merely restate their individual functions-i.e., organizing,
mapping, identifying, defining, detecting, and modifying."); Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709,716 (Fed. Cir. 2014) (quoting Alice, 134 S.
Ct. at 2357) ("Instead, the claimed sequence of steps comprises only
'conventional steps, specified at a high level of generality,' which is
insufficient to supply an 'inventive concept."'); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir. 2014) (finding computer-
implemented system for guaranteeing performance of an online transaction
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to be ineligible). To the contrary, the Specification makes clear that the
social media analysis server is merely generic computer hardware and
software that "collects social media from various social media websites,"
"stores the collected media in an internal data warehouse," and "provides
access to the warehoused social media to one or more entities." Spec. ,r 56.
The described data warehouse and other components of the social media
analysis server are composed of standard, off-the-shelf equipment and
software. Id. ,r,r 56-59; see also (id. ,r,r 68-73 (describing "typical" "devices
which are well known in the art"), ,r 75 (stating that the "disclosure is not
limited to a specific configuration of hardware and/or software"), ,r 85
( describing "a variety of known mathematical techniques," which "in tum
can be used to derive or generate indexing using any of a variety of available
analysis algorithms"). Nothing in the Specification indicates any particular
improvement in the hardware or software used to implement the abstract
idea of assessing the financial condition of a merchant.
Nor do we find Appellant's reliance on McRO, Inc. v. Bandai Namco
Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) (see Appeal Br. 10-
11) persuasive. McRO 's claimed process used a combined order of specific
rules that rendered information in a specific format that was applied to create
a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315.
Notably, the recited process automatically animated characters using
particular information and techniques, which, as discussed in the
specification, was an improvement over manual three-dimensional
animation techniques. Id. at 1316.
But unlike McRO that improved how the physical display operated to
produce better quality images, the claimed invention here analyzes data to
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assess the financial condition of a merchant-a mathematical determination
(see, e.g., Spec ,r,r 52, 85) that does not purport to improve a display
mechanism as was the case in McRO. Although the claimed invention
requires computer components, it is the incorporation of those
components-not a claimed rule-----that purportedly improves the existing
process. Cf FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089,
1095 (Fed. Cir. 2016). That the Specification indicates (see, e.g., ,r,r 5 6-59,
75, and 85) that standard off-the-shelf computer technology and standard
algorithms are usable to implement the claimed invention only bolsters the
notion that the claimed invention does not focus on an improvement in
computers as tools, but rather focuses on an abstract idea that is
implemented using standard computer equipment and functionality as tools.
See Elec. Power, 830 F.3d at 1354.
In short, the claimed invention does not solve a technical problem, but
rather solves a financial problem, namely determining the financial
condition of a merchant, based on the one or more correlations of data. We
disagree with Appellant's contention that the claims improve "another
technology or technical field, such as risk management." See Appeal Br. 11.
The claims do not, for example, purport to improve the functioning of the
processor or memory, or how merchant financial conditions are analyzed or
displayed. Nor do they effect an improvement in any other technology or
technical field. "At best, the claims describe the automation of the [abstract
idea] through the use of generic-computer functions." OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). That is not
enough to transform an abstract idea into a patent-eligible invention. See
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Alice, 134 S. Ct. at 2360. See also Claims 5 and 16 (reciting "a computing
device"); and Claim 21 (reciting "non-transitory storage medium").
We are also not persuaded by Appellant's argument that "[t]he second
set of information of claim 12 and 21 is not known." Reply 4--5 (referring to
"sentiment information" based on data aggregated from social media). The
particular content of collected information is not relevant to whether the
claimed subject matter is patent-eligible. Elec. Power Grp., 830 F.3d at
1353 (Fed. Cir. 2016) (citations omitted). For similar reasons, we do not
agree with Appellant that, as opposed to the data in Cybersource, "the first
and second set of information are directed to tangible data." Reply 5.
Lastly, we find unavailing Appellant's contention that the Examiner
also allegedly failed to consider preemption adequately. See Appeal Br. 6-
7; Reply Br. 10-11. Where, as here, the claims cover a patent-ineligible
concept, preemption concerns "are fully addressed and made moot" by an
analysis under the Alice framework. See Ariosa, 788 F.3d at 1379. The
Examiner's point in this regard is well taken. See Ans. 9-10.
For the foregoing reasons, then, the recited elements----considered
both individually and as an ordered combination----do not contain an
"inventive concept" sufficient to transform the claimed abstract idea into a
patent-eligible application. Therefore, we are not persuaded that the
Examiner erred in rejecting independent claims 12 and 21.
We also sustain the Examiner's ineligibility rejection of dependent
claims 2-10 and 13-19. See Final Act. 5-7 (finding that the dependent
claims include no additional elements that add significantly more to the
abstract idea). Appellant's contention that the dependent claims are eligible
for the same reasons that the independent claims are eligible (Br. 32) is
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unavailing for the reasons previously discussed. Dependent claims 2-10 and
13-19 call for similar generic components, devices, and functions as
independent claims 12 and 21. Appellant has not argued that the additional
limitations added by these claims require any non-conventional components,
devices, or functions.
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 2-10, 12-19, and 21 under§ 101.
DECISION
The Examiner's decision to reject claims 2-10, 12-19, and 21 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). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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