Ex Parte Pal et al

Patent Trial and Appeal Board

Jul 13, 2018

13483785 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/483,785 05/30/2012 Biswajit Pal
145169 7590 07/17/2018
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP (DXC)
379 Lytton Avenue
Palo Alto, CA 94301
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.
36MK-255212 9194
EXAMINER
CHONG CRUZ, NADJA N
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/17/2018 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):
svpatents@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BISW AJIT PAL and RITWIK SINHA
Appeal 2017-001125
Application 13/483,785 1
Technology Center 3600
Before DAVID M. KOHUT, ERIC B. CHEN, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review, under 35 U.S.C. § 134(a), of the
Examiner's Final Rejection of claims 1, 2, and 4--21. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify Hewlett Packard Enterprise Development LP as the
real party in interest. App. Br. 2.
Appeal 2017-001125
Application 13/483,785
STATEMENT OF THE CASE
Appellants' invention is directed to determining "customer conversion
propensity," i.e., the propensity of a customer to make a purchase. Abstract,
Spec. ,r 1. Claims 1, 8, and 15 are independent. Claim 1 is illustrative of the
invention and the subject matter of the appeal, and is reproduced below.
1. A method comprising:
identifying, via a processing unit coupled to a database of
customer information, a source group of customers from the
database;
calculating, via the processing unit [ and] the customer
information of a plurality of customers within the source
group[, and by] using a mixture cure modeling technique with
logistic regression, a probability value for a conversion event
for each of the plurality of customers within the source
registrant group,
categorizing, via the processing unit, the plurality of
customers, the categorizing including,
assigning, via the processing unit, customers
having a probability value above a threshold value to a
high conversion-propensity group, and
assigning, via the processing unit, customers
having a probability value below the threshold value to a
low conversion-propensity group; and
after the categorizing, calculating, by the processing unit
to predict through a parametric survival analysis approach, a
conversion timing for each of the customers within only the
high conversion-propensity group.
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Application 13/483,785
REJECTI0NS 2
Claims 1, 2, and 4--21 are rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2-8.
Claims 1, 2, 4, 6, 8-10, 13, 15-18, and 21 are rejected underpre-AIA
35 U.S.C. § I03(a) as being unpatentable over Shah et al.
(US 2003/0046096 Al; pub. Mar. 6, 2003, hereinafter "Shah"), Lukose et al.
(US 2010/0114654 Al; pub. May 6, 2010, hereinafter "Lukose"), Corbiere
(Corbiere, F. and P. Joly. "A SAS macro for parametric and semiparametric
mixture cure models" Computer Methods and Programs in Biomedicine,
Vol. 85, 173-180 (2007), hereinafter "Corbiere"), Bixby et al.
(US 2011/0307327 Al; pub. Dec. 15, 2011, hereinafter "Bixby"), and Maga
et al. (US 2007/0112614 Al; pub. May 17, 2007, hereinafter "Maga"). Final
Act. 9-22.
Claims 5, 7, 11, 12, 14, 19, and 20 are rejected under pre-AIA 35
U.S.C. § I03(a) as being unpatentable over Shah, Lukose, Corbiere, Bixby,
Maga, and Deaton et al. (WO 1995/003570 A2; pub. Feb. 2, 1995,
hereinafter "Deaton"). Final Act. 23-27.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Brief are deemed to be waived. See
37 C.F.R. § 4I.37(c)(l)(iv). On the record before us, we are not persuaded
the Examiner erred. We adopt as our own the findings and reasons set forth
2 The Examiner's rejection of claims 1, 2, and 4--21 under pre-AIA 35
U.S.C. § 112, first paragraph was withdrawn in the Answer. Ans. 2.
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Application 13/483,785
in the rejections from which the appeal is taken and in the Examiner's
Answer, and provide the following discussion for highlighting and emphasis.
Rejection Under 35 US.C. § 101
The Examiner concludes claim 1 is directed to the patent-ineligible
abstract idea of "calculating conversion timing[,] based on a parametric
survival analysis approach ... [, for] customers that are categorized in the
high conversion-propensity group." Final Act. 5. The Examiner further
finds the features in claim 1 are implemented by conventional uses of a
processor and database to input, calculate, compare, and store data. Ans. 8-
9; Final Act. 7-8. Appellants argue claim 1 does not encompass an abstract
idea, and that the Examiner "fails to compare the claims in the present
application to the claims already found to be directed to an abstract idea in
previous court decisions." Reply Br. 6. 3 Appellants further argue that even
if the claims involve an abstract idea, they encompass "significantly more."
We, however, are not persuaded the Examiner erred. App. Br. 8-9; Reply
Br. 9-10.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
3 Appellants' arguments regarding claims 2 and 4--21 are redundant to those
regarding independent claim 1. App. Br. 8-13; see also Reply Br. 3-11.
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CLS Banklnt'l, 134 S.Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-590 (2013)). The
Court has set forth a two-part inquiry to determine whether this exception
applies. First, we must "determine whether the claims at issue are directed
to one of those patent-ineligible concepts." Alice, 134 S.Ct. at 2355 (citation
omitted). Second, if the claims are directed to one of those patent-ineligible
concepts, we consider "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,
134 S.Ct. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 77-78 (2012)). Put differently, we must search the claims
for an "inventive concept," that is, "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,
134 S.Ct. at 2355 (quoting Mayo, 566 U.S. at 72-73).
Regarding step one of the Alice analysis, as Appellants argue, claim 1
fundamentally is about "predicting the likelihood of conversion," i.e., a
calculation. App. Br. 8. The claim recites steps of "identifying,"
"calculating," "categorizing," and "assigning" information. App. Br. 20.
Our reviewing Court has repeatedly held that claims involving data
collection, analysis, and display are directed to an abstract idea. See, e.g.,
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016) (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent ineligible concept"); see also In re TL!
Communications LLC Patent Litigation, 823 F.3d 607, 611 (Fed. Cir. 2016);
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FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016). Accordingly, we discern no error in the Examiner's conclusion
that claim 1 is directed to an abstract idea.
Turning to the second step in Alice, Appellants argue claim 1 is
directed to significant improvements in accuracy and timing of conversion.
App. Br. 8. Appellants argue the claim is similar to those found
patent-eligible in Enfzsh and McRO. Reply Br. 6-7 ( citing Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)). We
disagree.
The claims in Enfzsh were directed to a "specific improvement to the
way computers operate," i.e., an improved database configuration that
permitted faster searching for data. Enfish, 822 F.3d at 1336. Appellants'
claims do not recite an advance in hardware or software that, for example,
causes a processor to operate faster or more efficiently. Similarly, the
claims in McRO recited a "specific ... improvement in computer animation"
using "unconventional rules that relate[ d] sub-sequences of phonemes,
timings, and morph weight sets." McRO, 837 F.3d at 1302---03, 1307---08,
1314--15. Appellants, however, do not direct us to any evidence that the
claimed conversion calculations correspond to unconventional rules.
Similarly, we are unpersuaded by Appellants' argument that the
claims do not preempt the field of conversion propensity. Reply Br. 8-9.
Although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016) (quotingAriosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
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1379 (Fed. Cir. 2015); see also OIP Technologies, Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1362---63 (Fed. Cir. 2015), cert, denied, 136 S.Ct. 701, 193
(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."). Where, as here, "a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo framework ...
preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
For the foregoing reasons, we are unpersuaded the Examiner erred in
rejecting claims 1-2 and 4--21 as being directed to patent-ineligible subject
matter. Accordingly, we sustain the rejection.
Rejections Under 35 USC§ 103(a)
A. Claims 1, 2, 4, 6, 8-10, 13, 15, 18, and 21
Appellants argue the Examiner erred in finding claim 1 obvious over
the combined references because, according to Appellants, Corbiere is
non-analogous art. App. Br. 14. Specifically, Appellants contend Corbiere
is non-analogous art because the claimed invention is CRM technology and
"[Corbiere's] statistics used in biomedicine ... is a non-analogous art field
to the [CRM] field." Id. at 14. Appellants further argue the Examiner erred
in finding a rationale to combine the references because Corbiere does not
suggest modifying Shah's system. Id. at 14--15. Appellants also argue the
combination of references does not teach "calculating ... a conversion
timing for ... customers within only the high conversion propensity group,"
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as recited by claim 1. 4 Id. at 16-17; Reply Br. 12-13. Appellants'
arguments, however, do not persuade us of error.
We first address the non-analogous art argument. Appellants
acknowledge that CRM "questions naturally lend themselves to the field of
'survival analysis."' Spec. ,r 8. Corbiere is directed to "[s]urvival analysis."
Corbiere 173 (see, e.g., keywords section). Thus, we, like the Examiner,
find that an ordinarily skilled artisan would consider Corbiere' s techniques
pertinent and applicable to the claimed invention. See In re Clay, 966 F .2d
656, 659---60 (Fed. Cir. 1992) ("[P]rior art is analogous ... if ... reasonably
pertinent to the particular problem with which the [applicant] inventor is
involved.").
Similarly, we are unpersuaded by Appellants' arguments that the
Examiner erred in finding a rationale to combine the references. Appellants
argue Corbiere teaches away from applying its teachings to other fields, such
as CRM, because Corbiere states:
[T]here are potential problems in applying the mixture cure
model in cases where it may not be adequately justified. The
use of such models should be restricted to problems in which
there are strong biological evidences of the presence of a cured
fraction.
App. Br. 15 ( quoting Corbiere 180). This statement in, Corbiere however,
does not discourage use of the mixture cure model in other fields. Read in
light of the overall disclosure, this passage urges restriction of the model to a
"possibility of cure" that results in two outcomes: "susceptible individuals,
4 We need only address the rejection of claim 1. With respect to claims 2, 4,
6, 8-10, 13, 15, 18, and 21, regarding the rejection under 35 U.S,C. § 103,
Appellants' arguments present us with the same dispositive issue as
independent claim 1. App. Br. 13-19; Reply Br. 11-13.
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who may experience the event of interest" (might be cured) and
"non-susceptible individuals that will never experience it" (incurable).
Corbiere 173, Abstract. That is, Corbiere teaches restriction of the statistical
model to a binary outcome. Similarly, the Examiner applies Corbiere' s
teachings to the binary outcome of high and low propensity purchasers. See,
e.g., KSR International Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007) ("[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill."). The Examiner also finds that applying Corbiere's
teachings to the other references "would have yielded predictable results,"
which "would have been recognized" by one of ordinary skill in the art."
Final Act. 14--15. Appellants do not demonstrate error in this finding, and
we discern none on the record before us.
Finally, Appellants argue that adding Corbiere' s conversion timing to
the Shah-Lukose combination still does not teach the claimed invention
because Corbiere's conversion timing is calculated for all subjects (patients)
and the conversion timing recited in claim 1 is calculated only for
high-propensity subjects (customers). App. Br. 16-17. The Examiner,
however, relies on Maga, not Corbiere, as suggesting the claimed calculation
of conversion timing for only high-propensity subjects. Specifically, the
Examiner: (i) analogizes Maga's "positive response propensity" and
"ARPU increase propensity" to, respectively, conversion propensity and
conversion timing; (ii) finds Maga filters the high "positive response
propensity" customers for calculations of "ARPU increase propensity" and;
(iii) finds Maga thereby suggests filtering high-propensity customers for
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calculations of conversion timing. Final Act. 12-13; see also Ans. 14 (citing
Maga ,r 56); Maga ,r,r 57-59. Thus, Appellants' argument regarding
Corbiere does not persuade us of error.
In the Reply Brief, Appellants alter their argument, asserting "Maga
does not discuss any threshold that is used to categorize the customers" with
a high-propensity to purchase. Reply Br. 12-13. This new argument could
have been raised in the Appeal Brief, see Final Act. 12-13 (citing Maga),
and therefore is waived as untimely. See 37 C.F.R. § 4I.37(c)(4). Even if
our reviewing court were to find the argument timely raised, we would not
be persuaded the Examiner erred. Maga describes calculating "ARPU
increase propensity" as "drilling down" on the "wedges" of "customers
having a high propensity to respond positively," e.g., the wedges for
customers having a 40% or higher propensity to respond positively. Maga
,r,r 56-58, Figs. 10-11. Moreover, Maga teaches "to contact only those
customers who are likely to accept the offer." Maga ,r 59 ( emphasis added).
Thus, one of ordinary skill in the art would understand Maga as teaching
"drilling down" and contacting only high "positive response propensity"
customers, which supports the Examiner's finding that Maga filters only
such customers for further calculations ( of "ARPU increase propensity").
Id. ,I,I 56, 57, 59.
For the foregoing reasons, we are unpersuaded the Examiner erred in
rejecting claims 1, 2, 4, 6, 8-10, 13, 15, 18, and 21 under 35
U.S.C. § 103(a). Accordingly, we sustain the rejection.
B. Claims 5, 7, 11, 12, 14, 19, and 20
Claims 5, 7, 11, 12, 14, 19, and 20 are rejected as obvious over Shah,
Lukose, Corbiere, Bixby, Maga, and Deaton. Appellants do not address
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these claims separately. App. Br. 19. Accordingly, we sustain their
rejection under 35 U.S.C. § 103(a).
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, and 4--21.
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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