Ex Parte Penzotti et al

Patent Trial and Appeal Board

Mar 28, 2018

14534862 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/534,862 11/06/2014 Julie Penzotti
500 7590 03/30/2018
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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.
400094.409 9960
EXAMINER
FRUNZI, VICTORIA E.
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JULIE PENZOTTI, COUROSH MEHANIAN,
OLIVER DOWNS, and LUCA CAZZANTI
Appeal2016-006384 1
Application 14/534,862
Technology Center 3600
Before JOSEPH L. DIXON, JOHNNY A. KUMAR, and LARRY J. HUME,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-9, 17-21, 25-28, 30, and 34--37, which are not all the
claims pending in the application. Appellants have withdrawn, but not
canceled, claims 22-24, 29, and 31-33 from consideration as being drawn to
non-elected species. App. Br. 18. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to Appellants, the real party in interest is Globys, Inc. App.
Br. 2.
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Application 14/534,862
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention relate
generally to:
providing targeted offerings to at least a telecommunications
customer and, more particularly, but not exclusively to applying
clustering procedures, ensemble methods, and dimensionality
reduction techniques to an entity's activity data that is expressed
in a discrete distribution (histogram) form, of one or many
dimensions, to dynamically classify the entity's usage/behavior
patterns, usable to selectively provide an offering.
Spec. 1, 11. 10-14.
Exemplary Claims
Claims 1 and 9, reproduced below, are representative of the subject
matter on appeal (emphases added to contested limitations):
1. A network device, comprising:
a transceiver to send and receive data over a network;
and a processor that performs actions including:
receiving telecommunications customer data for a
plurality of customers;
extracting, for each of the plurality of customers from the
telecommunications customer data, multiple usage histograms
for the customer corresponding to durations of telephone calls
involving the customer during a time window, to quantities of
messages sent to and from the customer during the time
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Nov. 23, 2015); Reply Brief ("Reply Br.," filed June 10, 2016); Examiner's
Answer ("Ans.," mailed Apr. 13, 2016); Final Office Action ("Final Act.,"
mailed June 23, 2015); Advisory Action ("Adv. Act." mailed
Aug. 28, 2015); and the original Specification ("Spec.," filed Nov. 6, 2014).
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window, and to amounts of time between recharge events for a
telecommunications plan account of the customer;
analyzing the extracted multiple usage histograms for the
plurality of customers to generate a plurality of clusters,
wherein each of the clusters represents a group of customers
having related types of behavior involving durations of
telephone calls, quantities of messages sent and amounts of
time between recharge events;
analyzing telecommunications customer data for one of
the plurality of customers to classifY the one customer within
one of the plurality of clusters; and
providing, based at least in part on classifying the one
customer in the one cluster, promotional information to the one
customer that is based on the related types of behavior for the
one cluster.
9. A system comprising:
one or more non-transitory storage devices; and
one or more processors that perform actions including:
receiving telecommunications customer data
for a plurality of customers;
extracting, for each of the plurality of
customers from the telecommunications customer
data, multiple usage histograms having usage
patterns for the customer over a time window
corresponding to amounts of time between
recharge events for a telecommunications plan
account of the customer and to changing balances
of the customers' telecommunications plan
account;
analyzing the extracted multiple usage
histograms for the plurality of customers to
generate a plurality of clusters, wherein each of
the clusters represents a group of customers
having related types of behavior involving amounts
of time between recharge events and changing
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balances of the customers' telecommunications
plan account;
analyzing telecommunications customer
data for one of the plurality of customers to
classify the one customer within one of the
plurality of clusters; and
performing, based at least in part on
classifying the one customer in the one cluster and
on identifying an occasion for the one customer
corresponding to the related types of behavior for
the one cluster, an interaction with the one
customer related to the identified occasion.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Sirosh US 6,226,408 B 1 May 1, 2001
Lambert et al. US 7,373,311 B2 May 13, 2008
("Lambert")
Anderson et al. US 2009/0132347 Al May 21, 2009
("Anderson")
Edwards et al. US 2010/0262487 Al Oct. 14, 2010
("Edwards")
Chandramouli et al. US 2011/0313844 Al Dec. 22, 2011
("Chandramouli")
Bucak et al. US 2012/0030020 Al Feb.2,2012
("Bucak")
Raleigh et al. US 2012/0101952 Al Apr. 26, 2012
("Raleigh")
Bekkerman et al. US 8,463,784 Bl June 11, 2013
("Bekkerman ")
Caralis et al. US 8,463,295 Bl June 11, 2013
("Caralis")
Erman et al. US 8,565,718 Bl Oct. 22, 2013
("Erman")
Tran US 8,684,900 B2 Apr. 1, 2014
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Rejections on Appeal3
RI. Claims 1-9, 17-21, 25-28, 30, and 34--37 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 5-6.
R2. Claims 1, 9, 17, 25-28, 30, and 34--37 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over the combination of Anderson,
Lambert, Raleigh, Chandramouli, and Erman. Final Act. 6-26.
R3. Claims 2, 3, 18, and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Anderson, Lambert, Raleigh,
Chandramouli, Erman, and Bekkerman. Final Act. 26-29.
R4. Claims 4 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Anderson, Lambert, Raleigh,
Chandramouli, Erman, and Sirosh. Final Act. 29-31.
R5. Claims 5 and 21 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Anderson, Lambert, Raleigh,
Chandramouli, Erman, and Edwards. Final Act. 31-32.
R6. Claim 6 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Anderson, Lambert, Raleigh,
Chandramouli, Erman, Caralis, and Bucak. Final Act. 32-34.
R7. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Anderson, Lambert, Raleigh,
Chandramouli, Erman, and Tran. Final Act. 34--35.
3 We note the Examiner withdrew the 35 U.S.C. § 112(b) rejection of
claim 1. See Adv. Act. 2.
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R8. Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Anderson, Lambert, Raleigh,
Chandramouli, Erman, Bekkerman, and Bucak. Final Act. 35-37.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 32-36), we decide the
appeal of patent-ineligible subject matter Rejection RI of claims 1-9, 17-21,
25-28, 30, and 34--37 on the basis of representative claim 1; and we decide
the appeal of obviousness Rejection R2 of claims 1, 9, 17, 25-28, 30, and
34--37 on the basis of representative claim 9.
Remaining claims 2-8 and 18-21 in Rejections R3 through R8, not
argued separately or substantively, stand or fall with the respective
independent claim from which they depend. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-9,
17-21, 25-28, 30, and 34--37 and, unless otherwise noted, we incorporate by
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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reference herein and adopt as our own: (1) the findings and reasons set forth
by the Examiner in the action from which this appeal is taken, and (2) the
reasons and rebuttals set forth in the Examiner's Answer in response to
Appellants' arguments. We highlight and address specific findings and
arguments regarding claims 1 and 9 for emphases as follows.
1. § 101 Rejection RI of Claims 1-9, 17-21, 25-28, 30, and 34--37
Issue 1
Appellants argue (App. Br. 32-36; Reply Br. 8-14) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Did the Examiner err in concluding claim 1 is directed to a judicial
exception, i.e., an abstract idea, without significantly more, and thus is
patent-ineligible under§ 101?
Analysis
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
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Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "examine the elements of
the claim to determine whether it contains an 'inventive concept' sufficient to
'transform' the claimed abstract idea into a patent-eligible application." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea"' for the purposes of step one.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
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itself, and mathematical formulas or relationships. Alice, 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "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. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (citation omitted).
If the claims are not directed to a patent-ineligible concept, the inquiry ends.
See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1262 (Fed.
Cir. 2017). If the concept is directed to a patent-ineligible concept, we
proceed to the "inventive concept" step. For that second step we must "look
with more specificity at what the claim elements add, in order to determine
'whether they identify an "inventive concept" in the application of the
ineligible subject matter' to which the claim is directed." Affinity Labs, 838
F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
Our reviewing court has held claims ineligible as being directed to an
abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
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the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
The Examiner concludes the appealed claims are directed to a judicial
exception, i.e., an abstract idea without significantly more because the
claims on appeal "are directed to the steps for 'providing, based at least in
part on classifying the one customer in the one cluster promotional
information to the one customer that is based on the related types of
behavior for the one cluster'." Final Act. 5.
Appellants contend, "[t]he Office has failed to demonstrate that any of
claims 1-9, 17-21, 25-28, 30[,] and 34--37 recite non-statutory subject
matter." App. Br. 32. Appellants further argue the Examiner has "taken the
alleged abstraction of the claims too far," allegedly contrary to U.S. Supreme
Court and USPTO Examiner Guidelines. Id.
[T]he pending claims address problems specific to a networked
environment and involving analyzing real-world activities of
particular users, including to specify particular manners for
performing an automated analysis of data reflecting interactions
of customers using telephone networks in order to yield a
desired result, and cannot merely be a fundamental economic
practice as the problems being addressed did not previously
exist outside such networked environments-thus, the pending
claims do not recite an abstract idea for at least that reason. In
particular, the pending claims generally relate to an
environment in which telecommunications customer data for a
plurality of customers over a period of time is received and
analyzed, with such temporal telecommunications customer
data including "balance, recharge activity, incoming
(plus/and/or) outgoing voice activity, incoming (plan/and/or)
outgoing SMS activity, data usage and the like" in at least some
embodiments. (Application As Filed, page 21 ). After data for a
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particular customer is extracted for a period of time, automated
operations may be performed to analyze that data, such as to
generate usage histograms that correspond to different types of
activity by that customer-non-exclusive examples discussed in
the application of activities represented by such usage
histograms include durations of telephone calls involving the
customer during a time window, quantities of messages sent to
and from the customer during the time window, a number of
calls made by the customer during each of multiple periods of
time that are repeated each day or each week (e.g., each hour of
each day of a week), amounts of time between recharge events
for a telecommunications plan account of the customer,
amounts of money spent by the customer during the recharge
events for the customer's telecommunications plan account,
changing balances of the customer's telecommunications plan
account, etc. The generated usage histograms for various
customers are used to generate clusters that each represent a
group of customers having shared types of behavior with
respect to one or more such types of activities, and a particular
customer may then be classified as belonging to one such
cluster based on that customer's activities matching those of that
cluster, with corresponding information being provided to the
customer based on that cluster classification.
App. Br. 33-34.
In addition, Appellants argue, rather than being directed to an abstract
idea, the claims on appeal describe automated analysis and "use of data that
[is] 'necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks' such as in a
manner analogous to that discussed in [ DDR Holdings]." App. Br. 34. In
particular, Appellants contend the recited invention is unconventional "based
at least in part on extracting and analyzing time series data for a particular
customer," including generating usage histograms corresponding to different
types of activity by a customer and generating "clusters that each represent a
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group of customers having shared types of behavior with respect to one or
more such types of activities, and performing further automated operations
based on that automated analysis.'' Id. 5
Under the "abstract idea" step we must evaluate "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, 83 8 F .3d at
1257 (citation omitted).
Turning to the claimed invention, device claim 1 recites a transceiver
and a processor, wherein the processor performs various functions including:
receiving ... data ... ;
extracting ... histograms ... corresponding to[: (i)]
durations of telephone calls involving the customer during a
time window ... [(ii)] quantities of messages sent ... during
the time window, and ... [(iii)] amounts of time between
recharge events for a telecommunications plan account of the
customer;
analyzing the extracted ... histograms ... to generate a
plurality of clusters ... [each cluster representing] a group of
customers having related types of behavior involving durations
of telephone calls, quantities of messages sent and amounts of
time between recharge events;
analyzing telecommunications customer data ... to
classify the one customer within one of the plurality of clusters;
and
5 By emphasis on the alleged "root" of claim 1 in computer technology and
citation to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014), Appellants appear to conflate the Alice Step 1 analysis regarding
abstractness with Alice Step 2 analysis for "significantly more," to which
DDR Holdings is directed.
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providing ... promotional information to the one
customer that is based on the related types of behavior for the
one cluster.
Claim 1 (redacted).
In response to Appellants' arguments, the Examiner further concludes:
Claim 1 is directed to the steps for "providing, based at least in
part on classifying the one customer in the one cluster
promotional information to the one customer that is based on
the related types of behavior for the one cluster" which is an
abstract idea. The abstract idea is "an idea itself comprising
activities such as data recognition and storage or a method of
organizing human activities comprising advertising and
marketing.
Ans. 7. The Examiner summarizes by stating the claim limitations "are
similar to the abstract idea of organizing, storing, and transmitting
information (Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558
Fed. Appx. 988 (Fed. Cir. 2014).) found to be ineligible under 35
USC 101." Ans. 9.
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1, 9, 1 7, and 3 7 are directed to an
abstract idea, i.e., organizing, storing, and transmitting information, which
we consider, in this case, to be methods of organizing human activity,
including advertising and marketing. See Ans. 7 et seq.
As the Specification itself observes,
[t]he present invention relates generally to providing targeted
offerings to at least a telecommunications customer and, more
particularly, but not exclusively to applying clustering
procedures, ensemble methods, and dimensionality reduction
techniques to an entity's activity data that is expressed in a
discrete distribution (histogram) form, of one or many
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dimensions, to dynamically classify the entity's usage/behavior
patterns, usable to selectively provide an offering.
Spec. 1, 11. 10-14.6
We find this type of activity, i.e., receiving, analyzing, and labeling
data includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). 7
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
6 See also Spec. 39 ("Abstract"):
Techniques disclosed herein employ entity-activity data
expressed in a discrete distribution (histogram) form having one
or many dimensions to dynamically classify the entity's usage
and/or behavior patterns, where groupings or segmentations of
different entities that exhibit similar usage patterns are
identified using various approaches, including dimensionality
reduction, and/or clustering procedures. A consensus or
ensemble clustering may be generated that represents a
clustering of clusters, based on subclusterings themselves,
and/or any combination of subclusters with entity-activity data
to selectively execute a market offering campaign. In one
embodiment, the resulting ensemble clusterings enable selective
directing of targeted offerings to a telecommunication
provider's customers.
7 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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and Alice, they continue to "treat[ ] 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." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354).
In this regard, the claims are similar to claims our reviewing court has
found patent-ineligible in Elec. Power Grp., 830 F.3d at 1353-54 (collecting
information and "analyzing information by steps people go through in their
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category").
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. We further refer to Content
Extraction, where the Federal Circuit has provided additional guidance on
the issue of statutory subject matter by holding claims to collecting data,
recognizing certain data within the collected data set, and storing that
recognized data in memory were directed to an abstract idea and therefore
unpatentable under § 101. Content Extraction & Transmission LLC v. Wells
Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014).
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
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we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of "data recognition and storage or a method of
organizing human activities comprising advertising and marketing" (Ans. 7)
into a patent-eligible application of that abstract idea. See also Final Act. 5;
Ans. 8. 8
8 The Examiner concludes:
[ T] he identified additional elements do not provide significantly
more to the abstract idea because the transceiver and processor
are performing the claimed limitations in a routine and
conventional manner.
These additional elements do not provide significantly more to
the abstract idea as the additional elements do not:
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We agree with the Examiner because, as in Alice, we find the
recitation of processing and organizing data using "a processor that performs
actions" (claim 1 ); "one or more processors that perform actions" (claim 9);
"[a] non-transitory computer readable medium having computer-executable
instructions stored thereon that, in response to execution by a special
purpose computing device, cause the special purpose computing device to
perform operations" (claim 17)9; or "[a] computer-implemented method"
using "one or more configured computing systems" is simply not enough to
transform the patent-ineligible abstract idea here into a patent-eligible
invention. See Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require
generic computer implementation, fail to transform [an] abstract idea into a
patent-eligible invention."). 10
• Improve another technology or technical field
• Improve the functioning of a computer itself
•Add a specific limitation other than what is well-
understood, routine, and conventional in the field
• Add meaningful limitations that amount to more than
generally linking the use of the exception to a particular
technological environment
Viewed as a whole, these additional claim elements do not
provide meaningful limitation( s) to transform the abstract idea
into a patent eligible application of the abstract idea such that
the claims amount to significantly more than the abstract idea
itself.
Ans. 9-10.
9 Although claim 1 7 recites "execution by a special purpose computing
device," we agree with the Examiner that, "based on a review of the
specification, the processor recited in the specification is determined to
function in a routine manner and has not met the criteria ... to be
significantly more." Ans. 11.
10 Appellants allege:
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Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's§ 101 rejection of independent claim 1, and grouped claims 2-9,
17-21, 25-28, 30, and 34--37, not argued separately, and which fall
therewith. See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims 1, 9, 17, 25-28, 30, and 34--37
Issue 2
Appellants argue (App. Br. 19-25; Reply Br. 5-8) the Examiner's
rejection of claim 9 under 35 U.S.C. § 103(a) as being obvious over the
combination of Anderson, Lambert, Raleigh, Chandramouli, and Erman is in
error. These contentions present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests a system having "one or more processors that perform
actions including," inter alia, "extracting, for each of the plurality of
customers from the telecommunications customer data, multiple usage
histograms having usage patterns for the customer over a time window
corresponding to amounts of time between recharge events for a
telecommunications plan account of the customer and to changing balances
of the customers' telecommunications plan account;" and "analyzing the
Appellant is unaware of any case in which automated
operations to analyze telecommunications data to generate and
use usage histogram data structures to generate further cluster
data structures representing related customers have been found
to be merely well-understood and routine activities of a generic
computer.
Reply Br. 13.
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extracted multiple usage histograms for the plurality of customers to
generate a plurality of clusters, wherein each of the clusters represents a
group of customers having related types of behavior involving amounts of
time between recharge events and changing balances of the customers'
telecommunications plan account," as recited in claim 9?
(b) Did the Examiner err in combining the cited prior art in the
manner suggested by allegedly failing to provide "articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness,"
as required by KSR. 11
Analysis
Appellants initially contend:
Appellant submits that if the Office needs to rely on 11 prior art
references to reject 30 claims (with combinations of between 5
and 7 references used for each of the claims), with those 11
references being directed to different technologies, that a high
threshold should be employed for determining whether
motivation would exist for one of ordinary skill in the art to
combine that many disparate references to attempt to reach
functionality analogous to that of the claims, and that such
motivation has not been established with the required
particularity, nor has a sufficient description of how such
numerous disparate technologies would operate together been
established. Moreover, even if it is assumed for the sake of
argument that motivation to combine the 11 references did
exist, the hypothetical combination would still not disclose the
elements recited in the pending claims, as discussed further
below.
App. Br. 19.
11 KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
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(a) All Claimed Limitations are Taught or Suggested
Appellants contend the reference combination does not teach or
suggest any functionality related to analyzing telecommunications data over
time to generate usage histograms for certain types of customer activities,
particularly, '"amounts of time between recharge events for a
telecommunications plan account of the customer' along with other types of
customer data," as well as "analyzing such usage histograms to generate
customer clusters that represent shared types of customer behavior with
respect to such types of customer activities, with further automated
operations performed based on the generated customer clusters." App.
Br. 20.
Appellants further allege that Raleigh, relied upon by the Examiner as
teaching or suggesting the contested limitations (see Final Act. 14), lacks
any such disclosure. App. Br. 21. Appellants then go on to quote
extensively from the disclosure of Raleigh (App. Br. 21-22 (quoting Raleigh
i-fi-1 90, 3 61, 391) ), and state, "while Raleigh includes extensive lists of data
that it could track, it appears to lack any disclosure related to tracking or
using data about occurrences of recharge events." App. Br. 23. Appellants
additionally allege:
Id.
the Office has failed to identify any functionality in Raleigh
that is remotely related to tracking an amount of time between
recharge events for a customer, let alone to extracting usage
histograms for customers that represent an amount of time
between recharge events, or to clustering customers based at
least in part of such usage histograms representing an amount
of time between recharge events.
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We disagree with Appellants' allegations. We disagree because,
contrary to Appellants' contentions, the Examiner does identify the specific
functionality relied upon for this teaching in Raleigh (e.g., see Raleigh
i-fi-164, 90) and further concludes, as a matter of claim construction, the
recited "recharge event" is the replenishing of an account, and Raleigh
teaches "replenishing or modifying a service plan and the identifying,
monitoring, recording or reporting other categories of user or device
activity." Ans. 3 (citing Raleigh i1361). The Examiner also finds Raleigh
teaches or suggests determining patterns for services related to the device
over a period of time, i.e., a teaching or suggestion of histograms, in
paragraphs 361 and 391. Id. "Therefore the Examiner maintains that the
combination of references does disclose 'amounts of time between recharge
events for a telecommunications plan account of the customer' as this [is]
merely a pattern of service usage or one of the 'other categories' monitored
as taught in Raleigh." Id. We agree with the Examiner's finding quoted
above.
We agree with the Examiner because the Examiner makes specific
findings, and Appellants merely recite portions of the claim limitations,
extensively quote the references, and contend that the references do not
teach the limitations, without analysis as to why or how the Examiner erred.
App. Br. 19--25. Such statements are not considered to be arguments.
37 C.F.R. § 41.37(c)(l)(iv) ("A statement which merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim."); In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold
that the Board reasonably interpreted Rule 41.37 to require more substantive
arguments in an appeal brief than a mere recitation of the claim elements and
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a naked assertion that the corresponding elements were not found in the
prior art."). Thus, we do not find Appellants' arguments to be persuasive. 12
(b) The Examiner Provided Proper Motivation to Combine
With respect to the motivation to combine the references, Appellants
allege:
Moreover, no reason is apparent why one of skill in the art
would be motivated to modify the systems of the Anderson,
Lambert, Chandramouli, Raleigh and Erman references to
include completely new functionality corresponding to the
claimed features and techniques that they lack. ... However, no
reason has been demonstrated why one of skill in the art would
be motivated to modify the systems of the relied-upon references
to include completely new functionality corresponding to the
various claimed elements that those systems lack, let alone a
reason that is demonstrated with the required articulated
reasoning. Thus, independent claim 9 is further patentable for
this reason as well.
App. Br. 25.
12 Appellants unpersuasively argue in the Reply Brief:
the Office has failed to indicate any aspect of the relied-upon
Anderson and Lambert and Chandramouli and Raleigh and
Erman references (or the other 6 cited references) that actually
discloses functionality related to analyzing a customer's
telecommunications data over time to generate usage
histograms to identify amounts of time between recharge events
for telecommunications plan accounts of customers, let alone to
further analyze such usage histograms to generate customer
clusters that represent shared types of customer behavior with
respect to such recharge activities, and to perform further
automated operations based on the generated customer clusters.
Reply Br. 5 (emphasis added). We are unpersuaded, for example, because
the Examiner cites Lambert (col. 2, 11. 20-27) for teaching or suggesting
multiple usage histograms. See Final Act. 13-14. The Examiner cites to the
other references for other portions of the claim, as stated in the Final Action.
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The relevant inquiry is whether the Examiner has set forth "some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." In re Kahn, 441F.3d977, 988 (Fed. Cir. 2006)
(cited with approval in KSR, 550 U.S. at 418).
For example, with respect to the combination of Lambert and
Anderson, the Examiner finds:
Therefore it would have been obvious to try by one of
ordinary skill in the art at the time the invention was made to
modify the histograms and clusters of Anderson in view of
Lambert to include wherein each of the clusters represents a
group of customers having related types of behavior involving
amounts of time between recharge events and changing balances
of the customers' telecommunications plan account, as taught in
Raleigh since there are a finite number of identified, predictable
potential solutions to generating histograms and clusters and one
of ordinary skill in the art could have pursued the known
potential solutions with a reasonable expectation of success.
Final Act. 15. On this record, we find this statement of motivation meets the
articulated reasoning and rational underpinning requirements of KSR, cited
above. The Examiner makes separate findings with respect to the
combination of each of the other references in sub combination, with which
we also agree. 13
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
13 The Examiner provides additional motivational reasons to combine. For
example: Lambert combined with Anderson (see Final Act. 14); Lambert,
Anderson, and Raleigh combined with Chandramouli (see Final Act. 16);
and Lambert, Anderson, Raleigh, and Chandramouli combined with Erman
(see Final Act. 17). We find each of these findings of motivation meets the
articulated reasoning and rational underpinning requirements of KSR, cited
above.
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combination to teach or suggest the disputed limitation of claim 9, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 9, and grouped claims 1, 17, 25-28, 30, and 34--37 which fall
therewith. See Claim Grouping, supra.
3. § 103(a) Rejections R3-R8 of Claims 2-8 and 18-21
In view of the lack of any substantive or separate arguments directed
to obviousness Rejections R3 through R8 of claims 2-8 and 18-21 under
§ 103 (see App. Br. 30-32), we sustain the Examiner's rejection of these
claims. Arguments not made are waived. 14
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 4--14) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see
37 C.F.R. § 41.41(b)(2)), which Appellants have not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1-9, 17-21, 25-28, 30, and 34--37
under 35 U.S.C. § 101, and we sustain the rejection.
14 Appellants merely argue, 11 [ c ]laims 2-8 depend from independent claim 1,
and are thus patentable for at least the same reasons as independent claim 1, 11
(App. Br. 30), and 11 [c]laims 18-21 depend from independent claim 17, and
are thus patentable for at least the same reasons as independent claim 17. 11
App. Br. 31.
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(2) The Examiner did not err with respect to obviousness
Rejections R2 through R8 of claims 1-9, 17-21, 25-28, 30, and 34--37 under
35 U.S.C. § 103(a) over the cited prior art combinations of record, and we
sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1-9, 17-21,
25-28, 30, and 34--37.
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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