Ex Parte Satyavolu et al

Patent Trial and Appeal Board

Nov 30, 2018

14166525 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/166,525 01/28/2014
154359 7590 12/04/2018
MICHAEL BEST & FRIEDRICH LLP (DEN)
100 E WISCONSIN A VENUE
Suite 3300
MILWAUKEE, WI 53202
FIRST NAMED INVENTOR
Ramakrishna Venkata Satyavolu
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.
490836-9023-US 18 7123
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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):
mkeipdocket@michaelbest.com
smalter@michaelbest.com
lachristiansen@michaelbest.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte RAMAKRISHNA VENKATA SATYAVOLU,
SAMIR KOTHARI, and SHEHZAD DARED IA 1
Appeal2017-009305
Application 14/166,525
Technology Center 3600
Before JASON V. MORGAN, JOHN R. KENNY, and
AARON W. MOORE, Administrative Patent Judges.
KENNY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify Truaxis, a subsidiary of Mastercard International Inc.,
as the real party in interest. App. Br. 3.
Appeal2017-009305
Application 14/166,525
SPECIFICATION
The Specification relates generally to consumer comparison shopping
and usage based service analysis. Spec. ,r 4. Claim 1, which is illustrative,
reads:
1. A computer-implemented method, the method
implemented by one or more physical processors configured to
execute computer program instructions, the method comprising:
embedding an executable script in a computer program
for a graphical user interface of a financial account of each of a
plurality of users;
executing the executable script when a user among the
plurality of users accesses the user's financial account by at
least one computer, the executable script effective for:
gathering transaction data from the financial account of
each of the plurality of users using the at least one computer;
anonymizing the transaction data of each of the plurality
of users by the at least one computer;
transmitting the anonymized transaction data of each of
the plurality of users to the one or more physical processors for
analysis;
analyzing the anonymized transaction data of each of the
plurality of users by the one or more physical processors for at
least one expenditure selected from the group consisting of a
minimum total spending amount in a spending category, a
minimum total spending amount with a particular merchant and
a minimum single transaction amount;
matching by the one or more physical processors a
savings opportunity from a database of savings opportunities to
one or more users among the plurality of users based on the at
least one expenditure selected from the group consisting of an
expenditure in a period of time, a spending amount with a
particular merchant and an amount spent on a particular
transaction;
instructing a decision engine in communication with the
one or more physical processors to select at least one matched
savings opportunity based on the at least one expenditure of the
one or more users;
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receiving an indication of the at least one selected
savings opportunity from the decision engine; and
displaying the at least one selected savings opportunity in
the account graphical user interface of the financial account of
only the matched one or more users wherein the savings
opportunity is displayed interweaved with at least a portion of
the transaction data.
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 3.
Claims 1, 7, and 11 stand rejected under 35 U.S.C. § 112(a). Final
Act. 5.
ANALYSIS
35 us.c. § 101
In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 234 7
(2014), the Supreme Court reiterated an analytical two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 79 (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, 134 S. Ct. at
2355. The first step in the analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. If the claims are directed to eligible subject matter, the
inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir.
2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir.
2016).
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Application 14/166,525
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "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."' Id. (alteration in original) (quoting Mayo, 566
U.S. at 72-73).
In rejecting claims 1-20 under 35 U.S.C. § 101, the Examiner
determines these claims are directed to the abstract idea of targeted
marketing. Final Act. 4--5; Ans. 3. The Examiner analogizes claims 1-20 to
the claims addressed in Fair Warning IP, LLC v. Iatric Systems, Inc., 839
F.3d 1089 (Fed. Cir. 2016), and SmartGene, Inc. v. Advanced Biological
Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014) (non-precedential). Final Act.
4; Ans. 5---6. Further, the Examiner determines that the additional elements
recited by claim 1 add nothing more to the abstract idea than mere
instructions to implement the idea on a computer and the recitation of
generic computer structure that serve to perform well-understood, routine,
and conventional activities. Final Act. 4--5.
Alice Step One
Appellants argue claims 1-20 are not directed to an abstract idea,
analogizing those claims to hypothetical claim 1 in Example 23 in Appendix
1 of the July 2015 Update to the 2014 Interim Guidance on Subject Matter
Eligibility ("Example 23 claim 1"). App. Br. 12-13. Appellants argue that
because claims 1, 7, and 11 (the independent claims amongst claims 1-20)
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Application 14/166,525
recite "wherein the savings opportunity is displayed interweaved with at
least a portion of the transaction data," claims 1, 7, and 11 of this
Application are like claim 1 of Example 23, and are necessarily rooted in
computer technology to overcome a problem specifically arising in graphical
user interfaces. Id. The Examiner disagrees, finding that Appellants'
invention is directed to "presenting the consumer with relevant alternative
service options," which connotes targeted marketing. Ans. 3 (quoting Spec.
,r 6). Further, the Examiner finds the Specification teaches that the invention
can be practiced by hand. According to the Examiner, Figure 14 of the
Specification, reproduced below, illustrates the recited displayed saving
opportunity interweaved with the transaction data:
I'' "'°fu 01:!w,r A:f&.T ti:~ta in C.A th~t $p*ntl $60 ,;>r trmr:~ eyn *heir
f.·~_:,_:-_:_,,f.:,:_l_;_i_lj_tti wk*~MS ~fil, fai.mcl *hay watlEi' l."l·ll'~f lSf~lEi'ti-clk!~ b)' at ~am
·' $24-0 p~r ~t~a-~
Figure 14 depicts a screenshot of an account statement of a user.
Spec. ,r,r 3 7, 110. The Examiner finds that the Specification teaches that the
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Application 14/166,525
disclosed platform used to target customers in Figure 14 can be used for
customers as they "review their recent transactions via an online or paper
account statement." Ans. 4 (emphasis omitted); Spec. ,r 110. The Examiner
determines the description of the paper account statement means that the
invention can be performed by hand. Ans. 4.
Appellants argue that whether the invention can be performed by hand
is irrelevant because "processes that automate tasks that humans are capable
of performing are patent eligible if properly claimed." Reply Br. 3--4
(quoting McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016)). According to Appellants, claims 1-20 are patent
eligible because they focus on a specific asserted improvement in computer
capabilities, dynamically displaying the savings opportunities as the user
views its account statement, as provided by the interweaved limitation.
Reply Br. 4. We are not persuaded by Appellants' arguments.
First, we do not agree that claims 1-20 are analogous to Example 23
claim 1. The interleaving limitation of claims 1-20 does not address a
technical problem arising with graphic user interfaces like the reformatting
limitation of Example 23 claim 1. The interleaving limitation merely recites
displaying cost savings information in a manner that, the Examiner finds and
Appellants do not dispute, can also be used for paper statements. Further,
claims 1-20 do address targeted marketing, "displaying the at least one
selected savings opportunity," which is similar to abstract ideas identified by
the courts. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) ("the concept embodied by the majority of the limitations describes
only the abstract idea of showing an advertisement before delivering free
content"); Fair Warning, 839 F.3d at 1095 ("the focus of the claims is not on
... an improvement in computers as tools, but on certain independently
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abstract ideas that use computers as tools" ( quoting Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016))).
Second, we do not agree that the claims are analogous to those
addressed in McRO. "The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into a
mathematically automated process executed on computers." Fair Warning,
839 F.3d at 1094. Here, as the Examiner finds and Appellants do not
dispute, the interleaving limitation can be performed by humans in the same
manner as claimed here.
Accordingly, we determine claims 1-20 are directed to an abstract
idea.
Alice Step Two
Appellants argue that claims 1-20 recite an inventive concept that
amounts to significantly more than an abstract idea: combining dynamic
data, such as savings opportunities, with traditionally displayed static
transaction data, thus comprising an inventive concept that amounts to
significantly more than an abstract idea. App. Br. 13-14. Appellants also
argue that claims 1-20 would not create broad preemption and, as such, are
patent eligible. Id. at 14.
We are not persuaded by either argument. First, Appellants' argument
that combining dynamic and static data can transform a claim into eligible
subject matter is not persuasive because claims 1-20 do not recite dynamic
or static data. Similarly, Appellants' argument that the allegedly narrow
preemptive effects of the claims render them patent eligible is not persuasive
because although "preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility."
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Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015).
Accordingly, we sustain the rejection of claims 1-20 under 35 U.S.C.
§ 101.
35 US.C. § l 12(a)
In evaluating compliance with the written description requirement,
"the test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010)
( citing cases). When claims are drawn to a genus, "a sufficient description
of [the] genus ... requires the disclosure of either a representative number of
species falling within the scope of the genus or structural features common
to the members of the genus so that one of skill in the art can 'visualize or
recognize' the members of the genus." Id. at 1350, cited in D Three Enters.,
LLCv. SunModo Corp., 890 F.3d 1042, 1047 (Fed. Cir. 2018); see also
Amgen Inc. v. Sanofi, 872 F.3d 1367, 1373-74 (Fed. Cir. 2017).
The Examiner finds that the Specification does not provide written
description support for the limitation recited by claims 1, 7, and 11 of:
"analyzing ... for at least one expenditure selected from the group
consisting of a minimum total spending amount in a spending category, a
minimum total spending amount with a particular merchant and a minimum
single transaction amount." Final Act. 5-6. Appellants argue that paragraph
13 of the Specification supports this analyzing-at-least-one-expenditure
limitation. Paragraph 13 describes analyzing transaction data to determine if
it meets a criteria set by a merchant for a savings opportunity. As
Appellants highlight, paragraph 13 further describes that the criteria may
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Application 14/166,525
comprise a total spending amount with the merchant, total spending during a
period of time, a particular transaction, and a transaction at a particular
merchant location. App. Br. 15. Appellants argue these descriptions
describe the analyzing-at-least-one-expenditure limitation. The Examiner
disagrees, finding that paragraph 13 does not describe limiting the choice
amongst expenditures to the three recited expenditures, noting that the
Specification uses the term "may comprise," rather than "consisting of."
Ans. 7. The Examiner also finds paragraph 13 does not describe using an
amount spent on a particular transaction as a criteria. Ans. 7.
Appellants respond that "may comprise" describes a choice among
three expenditures and that paragraph 13 describes using an amount spent on
a particular transaction by describing using "a particular transaction" as a
criteria. Reply Br. 6.
We are not persuaded by Appellants' arguments. For clarity, we note
that there are two different limitations in claims 1, 7, and 11 that recite "at
least one expenditure" and the Examiner and Appellants address both
limitations in this Appeal. The Final Action and the Appeal Brief address
the analyzing-at-least-one-expenditure limitation. Final Act 5---6; App. Br.
15. The Answer and Reply Brief address another limitation: "matching ...
based on the at least one expenditure selected from the group consisting of
an expenditure in a period of time, a spending amount with a particular
merchant and an amount spent on a particular transaction." Ans. 7; Reply
Br. 6. We address the analyzing-at-least-one-expenditure limitation because
it was the limitation addressed in the Final Action and the Appeal Brief.
Regarding the analyzing-at-least-one-expenditure limitation, we do
not agree that paragraph 13 describes using a minimum single transaction
amount as an analytical criteria. The paragraph merely describes using a
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transaction as an analytical criteria, but there are various characteristics that
could be associated with a transaction, meaning that disclosure is insufficient
for written description support. D Three Enters., 890 F .3d at 1052
( disclosing a washer above a flashing does not provide written description
support for a washer below a flashing or a washer either above or below a
flashing). Although the use of a particular transaction as an analytical
criteria might render obvious using a minimum single transaction amount as
an analytical criteria, obviousness does not constitute written description
support. Ariad, 598 F.3d at 1357 (rendering obvious is insufficient for
written description support) (citing Regents of the University of California v.
Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997)).
Accordingly, we sustain the written description rejection of claims 1,
7, and 11.2
2 In the event of future prosecution, if the written description deficiency of
independent claims 1, 7, and 11 is not resolved, claims 2-6, 8-10, and 12-20
should be rejected under 35 U.S.C. § 112(a) due to their dependency on
claims 1, 7, and 11. Also, it could be worthwhile to ascertain whether "the
at least one expenditure" recited by claims 1, 7, and 11 differs from the "at
least one expenditure" in the analyzing-at-least-one-expenditure limitation
and whether that difference renders claims 1, 7, and 11 and their dependent
claims indefinite.
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DECISION
We affirm the rejection of claims 1-20 under 35 U.S.C. § 101.
We affirm the rejection of claims 1, 7, and 11 under 35 U.S.C.
§ 112(a).
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
AP J Initials
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