Ex Parte Rane et al

Patent Trial and Appeal Board

Jun 26, 2018

12690725 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/690,725 01/20/2010
27571 7590
Ascenda Law Group, PC
333 W San Carlos St.
Suite 200
San Jose, CA 95110
06/28/2018
FIRST NAMED INVENTOR
Rajendra R. Rane
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.
6857-25700 8369
EXAMINER
MISIASZEK, AMBER AL TSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
patents@ascendalaw.com
tarek.fahmi@ascendalaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RAJENDRA R. RANE and MELISSA SCHWARTZ
Appeal2017-003538
Application 12/690, 725 1
Technology Center 3600
Before, JOSEPH A. FISCHETTI, BIBHU R. MOHANTY, and
BART A. GERSTENBLITH, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1, 2, 4-13, 19, and 21-27. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellants identify III Holdings 1, LLC, as the real party in interest. App.
Br. 3.
Appeal2017-003538
Application 12/690,725
THE INVENTION
Appellants state the "invention generally relates to using analytics and
statistical analysis to categorize and draw inferences from data, and more
particularly, to applying data collection, data aggregation, data clustering,
and data appending, to spend level data in order to segment entities and draw
inferences regarding those entities." Specification i-f 1.
Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A method comprising:
receiving, by a computer system, spending data
indicative of transactions by a plurality of entities with a
plurality of merchants, wherein each of the plurality of
merchants is associated with a merchant category code
corresponding to a predominant business activity of that
merchant;
assigning, by the computer system, a score to each of
the plurality of entities with respect to one or more merchant
category codes, wherein the score for that entity is determined
based on the spending data of that entity within the one or more
merchant category codes as compared to the spending data of
others of the plurality of entities within the one or more
merchant category codes;
determining, by the computer system, a cluster comprising a
subset of the plurality of entities, wherein the determining is
performed according to whether the respective assigned score
for each of the plurality of entities falls within a selected range
of scores for a selected merchant category code;
receiving, by the computer system, one or more criteria
specifying a selectable ranking merchant threshold;
ranking, by the computer system, a subset of the plurality of
merchants based on comparisons between individual ones of
the subset of the plurality of merchants using portions of the
spending data;
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selecting, by the computer system, one or more particular
merchants from the ranked subset of the plurality of merchants
based on the respective rankings for the one or more particular
merchants meeting the selectable ranking merchant threshold;
and
transmitting, by the computer system, information that
identifies the one or more particular merchants that were
selected based on the selectable ranking merchant threshold.
THE REJECTION
The following rejection is before us for review.
Claims 1, 2, 4-13, 19, and 21-27 are 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.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1, 2, 4-13, 19, and 21-27
under 35 U.S.C. § 101.
The Supreme Court:
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat else
is there in the claims before us?" To answer that question, ...
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. [The Court] described step two of this
analysis as a search for an "'inventive concept"'-i.e., an
element or combination of elements that is "sufficient to ensure
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that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in claim 1 result in identifying: "one or more particular
merchants that were selected based on the selectable ranking merchant
threshold."
The Specification states:
In one embodiment, a method and system for clustering
entities (e.g., consumers) into groups using spend level data is
disclosed. These clusters may be enriched with data known to a
clustering host, or provided by one or more third parties. The
clusters may be enriched with attribute, identification,
preference, characteristic, demographic and/or other
information. The enriched clusters may be analyzed and profile
information of the clusters (e.g., aggregate cluster attributes,
characteristics, demographics, and preferences) may be
determined from the analysis. This profile information of the
clusters may be used by the host and/or a third party such as a
merchant and/or marketer. This profiled cluster information
may be useful in matching entities with other entities, matching
entities with merchants, matching merchants with entities, and
matching merchant with other merchants.
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Specification i-f 21. Thus, this evidence shows that claim 1 is directed to
clustering consumers into groups using spending level data scoring. It
follows from prior Supreme Court cases, Gottschalk v. Benson, 409 U.S. 63
(1972), in particular, that the claims at issue here are directed to an abstract
idea. Clustering consumers into groups using spending level data scoring is
a fundamental economic practice of a transaction because matching
customers with merchants is a basic strategy for sales. The patent-ineligible
end of the 35 U.S.C. § 101 spectrum includes fundamental economic
practices. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2355-57.
In addition, we find the steps of:
1. assigning, a score to each of the plurality of entities with respect to
one or more merchant category codes,
11. determining a cluster comprising a subset of the plurality of entities,
wherein the determining is performed according to whether the
respective assigned score for each of the plurality of entities falls
within a selected range of scores for a selected merchant category
code;
111. ranking a subset of the plurality of merchants based on comparisons
between individual ones of the subset of the plurality of merchants
using portions of the spending data; and
1v. selecting one or more particular merchants from the ranked subset of
the plurality of merchants based on the respective rankings for the one
or more particular merchants meeting the selectable ranking merchant
threshold,
constitute, "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." Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also buySAFE, Inc.
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v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (claims directed to certain
arrangements involving contractual relations are directed to abstract ideas).
Thus, clustering consumers into groups using spending level data scoring is
an "abstract idea" beyond the scope of§ 101.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of an intermediated settlement in Alice and the concept
of clustering consumers into groups using spending level data scoring, at
issue here. Both are squarely within the realm of "abstract ideas" as the
Court has used that term. That the claims do not preempt all forms of the
abstraction or may be limited to customer-merchant relationships, does not
make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1360----61 (Fed. Cir. 2015).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two:
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[ t ]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
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process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (citations
omitted). "[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data amounts to
electronic data query and retrieval---one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp. v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); see also In re Katz
Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir.
2011) ("Absent a possible narrower construction of the terms 'processing,'
'receiving,' and 'storing,' ... those functions can be achieved by any
general purpose computer without special programming."). In short, each
step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-access is
equally generic and conventional or otherwise held to be abstract. See
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Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display,
and transmission); Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC,
874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Viewed as a whole, Appellants' claims simply recite the concept of
clustering consumers into groups using spending level data scoring. The
claims do not, for example, purport to improve the functioning of the
computer itself. Nor do they effect an improvement in any other technology
or technical field. Instead, the claims at issue amount to nothing
significantly more than instructions to cluster consumers into groups using
spending level data scoring. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The Specification spells out
different generic equipment and parameters that might be applied using this
concept and the particular steps such conventional processing would entail
based on the concept of information access under different scenarios. See,
e.g., Specification i-f 40. The Specification does not describe any particular
improvement in the manner a computer functions, at least with respect to the
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claims in the instant application. Instead, the claims at issue amount to
nothing significantly more than instructions to apply the abstract idea of
information access using some unspecified, generic computer. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they:
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art."'
Id. (alterations in original).
We have reviewed all the arguments Appellants have submitted
concerning the patent eligibility of the claims before us that stand rejected
under 35 U.S.C. § 101. Appeal Br. 10-16. We find that our analysis above
substantially covers the substance of all the arguments that have been made.
But, for purposes of completeness, we will address various arguments in
order to make individual rebuttals of same.
Appellants argue:
In addressing claim 1 relative to the second portion of the
Alice test, the Examiner merely states that claim performs the
functions of 'receiving, assigning, determining, ranking,
selecting, and transmitting.' Office Action at 4. Appellant
submits that the Examiner is grossly simplifying the language
of claim 1 in an attempt to minimize or obscure its actual
limitations.
This pattern of reasoning is logically faulty, because any
claim element is capable of being simplified or generalized to
an arbitrary degree. Conclusions drawn from such a
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simplification do not necessarily apply to the claim elements
themselves, however. For example, innumerable operations that
can be performed by a computer involve steps that include
'receiving,' 'determining,' or 'transmitting,' see id. When taken
in a complete vacuum, such recitations might indeed be 'well-
understood, routine, and conventional,' see id. However, the
Examiner does not establish that the particular operations
performed by a computer in claim 1 are routine or conventional.
Put another way, the simplification process used by the
Examiner by definition obscures the details of various claim
features, which runs counter to Alice's requirement to consider
the elements of the claims themselves, and not simply
unclaimed generalizations of those features.
Appeal Br. 11-12.
We disagree with Appellants. The Examiner found:
In the Final Office Action dated October 16, 2015, Examiner
clearly asserted that the claims amounted to no more than a
recitation of functions that are well-understood, routine, and
conventional activities previously known to the pertinent
industry (i.e. receiving, assigning, determining, ranking,
selecting, and transmitting). The July 2015 Updated on Subject
Matter Eligibility at page 7 clearly states "the courts have
recognized the following computer functions to be well-
understood, routine, and conventional functions when they are
claimed in a merely generic manner:
performing repetitive calculations,
receiving, processing, and storing data,
electronically scanning or extracting data from a physical
document,
electronic recordkeeping,
automating mental tasks, and
receiving or transmitting data over a network, e.g., using the
Internet to gather data". Therefore, claim 1 has been clearly
established as merely reciting well-understood, routine, and
conventional activities as set forth in the previous Office Action
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dated October 16, 2015, recognized by the courts, and as clearly
stated above.
Ans. 2-3.
We understand the Examiner, through citation to the July 2015
Update, to rely on prior court decisions finding that certain computer
functions are well-understood, routine, and conventional functions. These
prior court decisions adequately support this finding to satisfy the
requirement to set forth a prima facie case of unpatentability under 3 5
U.S.C. § 101. Thus, we find the Examiner's findings of generic nature of
the component parts recited in the claims provides sufficient evidence of a
generic computer system used to implement the abstraction. See Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1057 (Fed. Cir. 2017)
("Significantly, the claims do not provide details as to any non-conventional
software for enhancing the financing process"). See Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017)
(explaining that"[ o ]ur law demands more" than claim language that
"provides only a result-oriented solution, with insufficient detail for how a
computer accomplishes it").
Appellants argue:
It is beyond dispute that rejections by the Office
under Sections 102 and 35 U.S.C. § 103(a) would not be
made absent any direct evidence. Appellant submits that any
determination under Section 101 must likewise be supported by
evidence-particularly if it is alleged that the subject matter in
question is, for example, a "fundamental," "well understood,
routine and conventional activities previously known to the
industry." No logically consistent rationale supports treating
questions as to the prior art status of a claim feature differently
under Section 101 than under Sections 102 and 103.
Appeal Br. 13.
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We disagree with Appellants. In this regard, there is no requirement
that examiners must provide evidentiary support in every case before a
conclusion can be made that a claim is directed to an abstract idea. See, e.g.,
MPEP 2106.07(a)(III) (2018) ("The courts consider the determination of
whether a claim is eligible (which involves identifying whether an exception
such as an abstract idea is being claimed) to be a question of law. Thus, the
court does not require 'evidence' that a claimed concept is a judicial
exception, and generally decides the legal conclusion of eligibility without
resolving any factual issues." (citations omitted.))
Appellants also argue:
Here, no art-based rejections exist. This fact is
tantamount to an admission by the Examiner that the claims are
not anticipated or rendered obvious by the prior art, and thus it
cannot reasonably be asserted that the claims are directed to
'fundamental,' 'well-understood, routine and conventional
activities previously known to the industry.' If this were the
case, the Examiner surely would have also asserted Section 102
or Section 103 rejections.
Appeal Br. 13-14.
We disagree with Appellants. The question in step two of the Alice
framework is not whether an additional feature is novel, but whether the
implementation of the abstract idea involves "more than the performance of
'well-understood, routine, [and] conventional activities previously known to
the industry."' Content Extraction and Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) (quoting Alice,
134 S. Ct. at 2359).
Finally, Appellants argue that "the present system, similarly to the
system in BASCOM, improves upon various aspects of prior art
electronically implemented offer programs." Reply Br. 3--4.
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We disagree with Appellants. In Bascom the Court found that:
the claims of the '606 patent are directed to the abstract idea of
filtering content, BASCOM has adequately alleged that the
claims pass step two of Alice's two-part framework. BASCOM
has alleged that an inventive concept can be found in the
ordered combination of claim limitations that transform the
abstract idea of filtering content into a particular, practical
application of that abstract idea.
Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341,
1352 (Fed. Cir. 2016). To the contrary, we found supra, that nothing in the
claims before us passes step two of the Alice two-part test; namely, we found
that when considered as an ordered combination, the computer components
of Appellants' claims add nothing that is not already present when the steps
are considered separately.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 2, 4-13,
19, and 21-27 under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1, 2, 4-13, 19, and
21 - 2 7 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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