Ex Parte Robida et al

Patent Trial and Appeal Board

Feb 23, 2018

13555982 (P.T.A.B. Feb. 23, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/555,982 07/23/2012 Chuck Robida EXP.083DV1C1 6641
20995 7590 02/27/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
DONLON, RYAN D
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
02/27/2018 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHUCK ROBIDA and
CHIEN-WEI WANG
Appeal 2016-0013471
Application 13/555,9822
Technology Center 3600
Before KENNETH G. SCHOPFER, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—8, 10-18, and 20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed
June 19, 2015), the Examiner’s Answer (“Ans.,” mailed September 30,
2015) and Final Office Action (“Final Act.,” mailed July 17, 2014).
2 Appellants identify “Experian Information Solutions, Inc.” as the real
party in interest (Appeal Br. 3).
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Application 13/555,982
CLAIMED INVENTION
Appellants’ claims relate generally “to analysis of financial and
demographic information of individuals in order to categorize the
individuals, assign risks for future delinquencies to the individuals, and
return reasons for assignment of a particular risk to an individual”
(Spec. 12).
Claims 1, 12, and 17 are the independent claims on appeal. Claim 1,
reproduced below with bracketing matter added, is illustrative of the subject
matter on appeal (bracketing added for reference):
1. A method for providing information related to an
individual’s credit risk assessment, the method comprising:
[a] accessing information indicating that an individual has
been assigned to at least a first segment and a second segment
indicating respective types of financial history or credit risk
associated with the individual;
[b] determining, using one or more computer processors,
a first relative impact of the assignment of the individual to the
first segment on a risk score for the individual;
[c] in response to determining that the first relative impact
is greater than a first threshold amount, selecting a first adverse
action code associated with assignment of the individual to the
first segment;
[d] determining, using one or more computer processors,
a second relative impact of the assignment of the individual to
the second segment on the risk score for the individual; and
[e] in response to determining that the second relative
impact is greater than a second threshold amount, selecting a
second adverse action code associated with assignment of the
individual to the second segment,
[f] wherein the first and second adverse action codes
indicate specific reasons why the risk score for the individual is
less than a maximum possible risk score.
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REJECTIONS
Claims 1—8, 10-18, and 20 are rejected under 35 U.S.C. § 101 as
being directed to non-statutory subject matter.
Claims 1—8, 10-18, and 20 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Honarvar (US 7,318,224 B2, iss. Jan. 8, 2008), David
Forrest “Achieving Perfect Credit”; The Motley Fool, The Motley Fool
Online Seminar: FICO 850: Achieving Perfect Credit; date 2002 (Copyright
1995—2002) (hereinafter, “Forrest”), and Hong (US 7,925,578 Bl, iss. Apr.
12, 2011).
ANALYSIS
Non-statutory subject matter
Appellants argue claims 1—8, 10—18, and 20 as a group (see Br. 8—15).
We select claim 1 as representative. The remaining claims stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts.” Id. If the
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claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered “individually and ‘as an ordered
combination’” to determine whether there are additional elements that
“‘transform the nature of the claim’ into a patent-eligible application.” Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, that “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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
“whether their character as a whole is directed to excluded subject matter.”
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determines that the claims are directed to a fundamental economic
practice and method of organizing human activities, and more particularly to
the concept of credit risk analysis and credit scoring (see Final Act. 2), and
as such, the claims are directed to an abstract idea. The Examiner further
determines that the claims do not include additional elements that are
sufficient to amount to significantly more than the abstract idea because they
“require no more than a generic computer to perform generic computer
functions that are well-understood, routine and conventional activities
previously known to the industry” {id. at 2—3).
We are not persuaded, as an initial matter, by Appellants’ argument
that the Examiner has failed to establish a prima facie case of patent-
ineligibility because “the current rejection violates 35 U.S.C. § 132(a)” (Br.
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8—9). More particularly, Appellants argue that the Examiner “has provided
no evidence or documentation and has not cited any art or pointed to any
other evidence indicating that the features recited in the claims ‘do not
amount to significantly more than the abstract idea’” {id. at 9). However,
there is no requirement that an examiner provide evidentiary support in
every case before a conclusion can be made that a claim is directed to an
abstract idea. Nor, contrary to Appellants’ suggestion (see id. at 8—9), does
the USPTO’s “2014 Interim Guidance on Patent Subject Matter Eligibility,”
79 Fed. Reg. 74618 (Dec. 16, 2014) impose any such requirement.
Although evidence may be helpful, e.g., where facts are in dispute, it is not
always needed. Cf. Mortgage Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1325—26 (Fed. Cir. 2016) (“[I]t is also possible, as numerous
cases have recognized, that a § 101 analysis may sometimes be undertaken
without resolving fact issues.”). Appellants’ bare assertion here that
evidence is needed, without any supporting reasoning as to why, is
insufficient to require the Examiner to provide evidentiary support.
The Federal Circuit, moreover, has repeatedly observed that “the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The court has, thus, held that the USPTO carries its procedural burden of
establishing a prima facie case when its rejection satisfies the requirements
of 35 U.S.C. § 132 by notifying the applicant of the reasons for the rejection,
“together with such information and references as may be useful in judging
of the propriety of continuing the prosecution of [the] application.”
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all that is
required of the Office is that it sets forth the statutory basis of the rejection
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in a sufficiently articulate and informative manner as to meet the notice
requirement of § 132. Id. \ see also Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) (Section 132 “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
As described above, in rejecting the pending claims under § 101, the
Examiner analyzed the claims using the Mayo/Alice two-step framework,
consistent with the 2014 Interim Guidance in effect at the time the Final
Office Action was mailed. The Examiner, thus, notified Appellants of the
reasons for the rejection in a sufficiently articulate and informative manner
as to meet the notice requirement of § 132. And we find that, in doing so,
the Examiner set forth a prima facie case of patent-ineligibility.
We also are not persuaded of Examiner error by Appellants’ argument
that independent claim 1, considered as a whole, “is not directed to simply
the ‘concept of credit risk and credit score’” (Br. 10). In making this
determination, we note that the Specification discloses the present invention
is related to analysis of data related to a plurality of individuals
in order to categorize the individuals. More particularly, the
invention is related to analysis of financial and demographic
information of individuals in order to categorize the individuals,
assign risks for future delinquencies to the individuals, and return
reasons for assignment of a particular risk to an individual.
(Spec. 12). And, taking independent claim 1 as representative, the claimed
subject matter is generally directed to “[a] method for providing information
related to an individual’s credit risk assessment” including steps related to
accessing, classifying, analyzing, and presenting risk information. Thus, we
agree with the Examiner that claim 1 is directed generally towards the
“concept of credit risk and credit score” analysis (Final Act. 2), and is
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similar to certain fundamental economic and conventional business practices
that our reviewing courts have found patent ineligible, like intermediated
settlement (sqq Alice, 134 S. Ct. at 2356—57), creating a contractual
relationship in guaranteeing performance of an online transaction (see
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1352, 1355 (Fed. Cir. 2014)),
“verifying the validity of a credit card transaction over the Internet”
('CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011)), and using advertising as a currency on the Internet (Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014)).
Furthermore, as in Alice, 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 risk hedging in Bilski and the concept of risk
assessment/scoring at issue here. Both are squarely within the realm of
“abstract ideas” as the Court has used that term. See Alice, 134 S. Ct.
at 2357. We also note that claims involving data collection, analysis, and
display are directed to an abstract idea. See Elec. Power Grp. 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 TLI Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94
(Fed. Cir. 2016). Here, independent claim 1, unlike the claims found non­
abstract in prior cases, uses generic computer technology (see, e.g.,
Spec. 132) to access, classify, analyze, and present risk information, and
does not recite an improvement to a particular computer technology. See,
e.g.,McRO, Inc., 837 F.3d at 1314—15 (finding claims not abstract because
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they “focused on a specific asserted improvement in computer animation”).
Thus, independent claim 1 is directed to a patent-ineligible abstract idea.
We also are not persuaded of Examiner error by Appellants’ argument
that the claims do not threaten to monopolize, preempt, or tie up all uses of
the abstract idea (Br. 10). There is no dispute that the Supreme Court has
described “the concern that drives [the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption.” Alice Corp., 134 S.
Ct. at 2354. But characterizing pre-emption as a driving concern for patent
eligibility is not the same as characterizing pre-emption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354).
“[Preemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility.” Id.
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 134 S.Ct. at 2355 (citingMayo, 132 S.Ct. at 1294).
And, similar to the situation in Electric Power, we find nothing
sufficient to remove the claims from the class of subject matter ineligible for
patenting. As the court explained in Electric Power, “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.” Elec. Power Grp., 830 F.3d at 1355.
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Here, as the Examiner points out, independent claim 1 “is nothing
more than the instruction to implement the abstract idea (i.e. allowing credit
agency to assess an individual risk based individual’s information) in a
particular, albeit well-understood, routine and conventional technological
environment” (see Ans. 4). Appellants argue that “the recited elements of
claim 1 represent a significant improvement to existing credit reporting
technology” (Br. 13). However, as discussed above, we find independent
claim 1 is directed broadly to “[a] method for providing information related
to an individual’s credit risk assessment” including steps for accessing,
classifying, analyzing, and presenting risk information—none of which add
inventiveness because they merely require the application of conventional,
well-known analytical steps. See Ultramercial, Inc., 772 F.3d at 716 (“[T]he
claimed sequence of steps comprises only ‘conventional steps, specified at a
high level of generality,’ which is insufficient to supply an ‘inventive
concept.’”) (citing Alice, 134 S. Ct. at 2357). There is no indication in the
record that any specialized computer hardware is required or evidence that
the programming related to these “improvement[s]” would entail anything
atypical from conventional programming. Instead, the Specification
discloses utilizing conventional computer components (see Spec, 32—33).
Appellants argue that “the present claims are analogous to those
recently found patent-eligible in DDR Holdings, LLC v. Hotels.com L.P.,
773 F.3d 1245 (Fed. Cir. 2014)” because “they do not merely recite the
performance of some business practice known from the pre-Internet world
along with the requirement to perform it on the Internet” (Br. 12—14 (citing
DDR Holdings, 773 F.3d at 1257) (emphasis omitted)). However, we find
no evident parallel between the present claims and those at issue in DDR
Holdings. The claims in DDR Holdings were directed to retaining website
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visitors, and in particular to a system that modified the conventional web
browsing experience by directing a user of a host website, who clicks an
advertisement, to a “store within a store” on the host website, rather than
directing the user to the advertiser’s third-party website. DDR Holdings,
773 F.3d at 1257—58. The court, thus, determined that the claims were
directed to statutory subject matter because they claim a solution
“necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks,” and that the claimed
invention did not simply use computers to serve a conventional business
purpose. Id. Rather, there was a change to the routine, conventional
functioning of Internet hyperlink protocol. Id.
Appellants argue here that the present claims are patent-eligible for
similar reasons as those in DDR Holdings (Br. 11—14 (citing Spec. 86—
102)), i.e., for example, the claims provide “improvements to the existing
technology related to ‘credit risk and credit score[s]”’ (Br. 14). However,
there is no indication here that the invocation of the Internet adds any
inventive concept and, as described above, no indication that any specialized
hardware is required or that the computer components operate in an
unconventional manner. None of the steps recited in independent claim 1,
whether viewed individually or as an ordered combination, transforms the
nature of the claim into patent-eligible subject matter. Instead, the steps
simply instruct a practitioner to implement the abstract idea with routine
conventional activities, which is insufficient to transform the abstract idea
into patent-eligible subject matter. See Mayo, 566 U.S. at 79-80.
In view of the foregoing, we sustain the Examiner’s rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2—8, 10-18, and 20,
which fall with independent claim 1.
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Obviousness
Independent claims 1, 12, and 17, and dependent claims 2—8, 11, 13—16, 18,
and 19
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 103(a) because Honarvar,
on which the Examiner relies, fails to disclose or suggest “accessing
information indicating that an individual has been assigned to at least a first
segment and a second segment indicating respective types of financial
history or credit risk associated with the individual,” as recited by limitation
[a] of independent claim 1 (Br. 15—16).
In the Final Office Action, the Examiner finds Honarvar discloses the
argued limitation, and cites the “entire document,” but more particularly
relies on the Abstract, Figures 2-4, 6, 10, 12, 14, 16, 18A/B, and 20—22, as
well as column 8, lines 30-52, column 11, line 31 through column 12, line 4,
and column 20, lines 1—22 (Final Act. 4). In the Answer, the Examiner also
relies on Honarvar at column 3, lines 27—43, column 4, lines 12—40, column
5, lines 8—10, column 14, lines 52—63, column 15, line 42 to column 16, line
4 (Ans. 6—7).
Honarvar is directed to “a decision management system for creating
and applying strategies to manage clients, such as customers, accounts or
applicants, of an organization” (Honarvar, col. 1,11. 43 46). Honarvar
discloses that its system “prioritizes and tailors customer interactions based
on predictive information, specific business rules, and continually evolving
decision strategies” (id. at col. 3,11. 11—13). More particularly, Honarvar
discloses that its system “determines an appropriate action which is to be
taken by an action-taking system 30. An appropriate action to be taken
could include, for example, a call to a customer, a specific collections
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procedure or a specific marketing action” {id. at col. 3,11. 14—18). Honarvar
discloses that
a client is assigned to a segment. A segment is a grouping of
clients based on a characteristic by which the clients will be
separated for applying different rules. Generally, a segment is a
high-level segregation of clients for the purpose of associating
largely independent high-level strategy. Segments are
completely separate groups of clients, for which a unique set of
evaluation processes have been defined.
{id. at col 3,11. 36-45; see also id. at col. 8,11. 40-47).
We have reviewed the cited portions of Honarvar, and agree with
Appellants that Honarvar fails to disclose or suggest the argued limitation
{see Br. 15—16). Although we agree with the Examiner that Honarvar
discloses “accessing information indicating that an individual has been
assigned to” a segment {see Ans. 6), we cannot agree with the Examiner that
Honarvar discloses or suggests “accessing information indicating that an
individual has been assigned to at least a first segment and a second segment
indicating respective types of financial history or credit risk associated with
the individual” (emphasis added), as limitation [a] requires. Instead, we
agree with Appellants that “Honarvar’s segments are quite different from the
segments recited in Claim 1. For example, as recited in Claim 1, ‘an
individual has been assigned to at least a first segment and a second
segment.’ In contrast, as described in Honarvar, ‘[sjegments are completely
separate groups of clients.’” (Br. 16 (citing Honarvar, col. 3,11. 41—42)
(emphasis omitted)).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 103(a). For the same reasons, we
also do not sustain the Examiner’s rejection of claims 2—8, 10, and 11, which
depend therefrom.
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Independent claims 12 and 17 and dependent claims 12—16, 18, and 20
Independent claims 12 and 17 include a limitation substantially
similar to limitation [a] of independent claim 1, as discussed above.
Therefore, we do not sustain the Examiner’s rejection under 35 U.S.C.
§ 103(a) of independent claims 12 and 17, and claims 13—16, 18, and 20 that
depend therefrom, for the same reasons set forth above with respect to
independent claim 1.
DECISION
The Examiner’s rejection of claims 1—8, 10—18, and 20 under
35 U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1—8, 10—18, and 20 under
35 U.S.C. § 103(a) is reversed.
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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