Ex Parte Serio

Patent Trial and Appeal Board

Sep 21, 2018

13551499 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/551,499 07/17/2012
101850 7590 09/25/2018
Knobbe, Martens, Olson & Bear, LLP
CORELOGIC (CLOGI)
2040 Main Street, Fourteen Floor
Irvine, CA 92614
FIRST NAMED INVENTOR
Dianna Lee Serio
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.
CLOGI.024A 1030
EXAMINER
NORMAN, SAMICA L
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DIANNA LEE SERIO
Appeal2017-005349
Application 13/551,499
Technology Center 3600
Before MARC S. HOFF, JASON J. CHUNG, and JOYCE CRAIG,
Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-Final Rejection of claims 1-9, which are all of the claims pending in
this application. 2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 According to Appellant, the real party in interest is CoreLogic Solutions
LLC. App. Br. 1.
2 Claims 10-23 have been canceled. Non-Final Act. 2.
Appeal2017-005349
Application 13/551,499
INVENTION
Appellant's invention relates to automated anomaly detection for real
estate transactions. Abstract. Claim 1 is illustrative and reads as follows:
1. A system for processing a transaction history
associated with a property to identify an elevated risk of fraud
associated with an apparent release of a lien on the property, the
system comprising:
a computer system comprising one or more computers,
said computer system comprising one or more processors and
one or more memories that store a list of subscribers and
subscriber contact information, said computer system
configured to at least:
receive an indication that one or more public records
documents have been recorded with respect to one or more real
properties;
access the one or more public records documents over a
network;
convert the public records documents into a common
format and store the converted data in a data repository;
access the data repository to obtain a transaction history
associated with a property, the transaction history comprising a
list of a plurality of transactions involving the property, at least
one of the transactions comprising the release of a lien on the
property;
process the transaction history to determine whether the
transaction history includes an instance of a pre-determined
pattern of transactions indicative of an elevated risk of fraud
associated with lien releases, wherein the pre-determined
pattern of transactions comprises recordation of the lien and
recordation of the release of the lien some time after the
recording of the lien and without recordation of an intervening
lien between the recordation of the lien and the recordation of
the release of the lien;
generate an indication of an elevated risk of fraud at least
partly in response to determining that the transaction history
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includes an instance of the pre-determined pattern of
transactions;
in response to determining that the transaction history
includes an instance of the pre-determined pattern of
transactions, automatically create an electronic report which
identifies the recordation of the release of the lien and the
elevated risk of fraud; and
use an email address or a mobile phone number included
in the subscriber contact information to transmit the electronic
report over a wireless communication channel to a mobile
phone of at least one subscriber in the list of subscribers.
REJECTION
Claims 1-9 stand rejected under 35 U.S.C. § 101 because the claimed
invention is directed to a judicial exception to patentability, without
significantly more. Non-Final Act. 2.
ANALYSIS
We have reviewed the rejections of claims 1-9 in light of Appellant's
arguments that the Examiner erred. We have considered in this decision
only those arguments Appellant actually raised in the Briefs. Any other
arguments Appellant could have made, but chose not to make, in the Briefs
are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellant's arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 4--10) and in the Action (Non-Final Act. 2--4)
from which this appeal was taken. We provide the following explanation for
emphasis.
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The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Banklnt'l,
134 S. Ct. 2347, 2355 (2014). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 134 S. Ct. at 2355. If so, the
second step is to determine whether any element, or combination of
elements, amounts to significantly more than the judicial exception. Alice,
134 S. Ct. at 2355.
In step 1 of the Alice analysis, the Examiner concluded that claim 1 is
directed to a system for processing a transaction history that includes the
steps of receiving, accessing, processing and generating, which is similar to
the abstract concepts of comparing data to determine a risk level and
comparing new and stored information and using rules to identify options.
Non-Final Act. 2. Appellant contends that this characterization disregards
significant portions of the claim, and oversimplifies the claimed subject
matter in an attempt to characterize the invention as an abstract idea. App.
Br. 6. Appellant also contends that the Examiner's statement that the claims
are directed to "simply the organization and manipulation of data" is wholly
unsupported and contradicts that the invention is novel and non-obvious
over the art of record. Id.
We disagree that the Examiner's§ 101 analysis is incomplete, overly
general, untethered from claim language, or otherwise flawed. All of the
functions recited in claim 1 relate to receiving, accessing, converting,
processing, generating, and transmitting information. The Examiner
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Application 13/551,499
correctly concluded that concepts relating to the collection of data (such as
receiving an indication, accessing documents and a transaction history) and
the use of the collected data in combination with rules (such as converting
documents into a common format and storing them, and processing the
transaction history to determine whether it includes a pre-determined pattern
of transactions) in decision making (such as generating an indication of an
elevated risk of fraud and generating a report to be sent to a subscriber) are
abstract. See Ans. 5.
We agree with the Examiner's conclusion that claim 1 is directed to
an abstract idea similar to that identified in Content Extraction, where the
Federal Circuit held that 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). In so doing, the Federal Circuit found that
"[t]he concept of data collection, recognition, and storage is undisputedly
well-known," and "humans have always performed these functions." Id. at
1347.
We also agree claim 1 is directed to an abstract idea similar to that
identified in PerkinElmer, Inc. v Intema Ltd., 496 Fed. App'x 65 (Fed. Cir.
2012), which involved the abstract idea of comparing data to determine a
risk level. The claims in PerkinElmer were drawn to methods of
determining whether a pregnant woman is at increased risk of having a fetus
with Down's syndrome, which included steps of measuring ultrasound
screening markers and using the frequency of those markers to provide a risk
estimate. Id. at 67. The Federal Circuit found the "determining" step to
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comprise merely the "mental step" of comparing marker levels in Down's
and unaffected pregnancies. Id. Similarly, here, we agree with the
Examiner that, in claim 1, the recited steps of receiving, accessing,
processing transaction history and generating a risk level, which are directed
to the organization and manipulation of data, can be performed mentally,
and amount to an idea of itself. See Ans. 5. The Federal Circuit has held
that "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." Electric Power Group,
LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016). In addition,
"merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis."
Id. at 1354--55.
We also discern no error in the Examiner's reliance on SmartGene,
Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950, 955 (Fed. Cir.
2014). In SmartGene, the Federal Circuit concluded claims were patent-
ineligible because they did "no more than call on a 'computing device,' with
basic functionality for comparing stored and input data and rules, to do what
doctors do routinely." Id. at 954. In the instant case, the recited "transaction
history" is nothing more than data used in an algorithm process that uses a
central system (i.e., "processors" and "memories") to make determinations
on the data using rule-based processes. The claims at issue in SmartGene
relied upon "expert rules" for "'evaluating and selecting' from a stored
'plurality of different therapeutic treatment regimens."' Id. at 955. The
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"expert rules" in SmartGene are analogous to the "pre-determined pattern of
transactions indicative of an elevated risk of fraud associated with lien
releases, wherein the pre-determined pattern of transactions comprises
recordation of the lien and recordation of the release of the lien some time
after the recording of the lien and without recordation of an intervening lien
between the recordation of the lien and the recordation of the release of the
lien" used to generate an indication of an elevated risk of fraud in claim 1.
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another
abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016) ( determining the pending claims directed to collecting and analyzing
information to detect misuse and notifying a user when misuse is detected
were directed to a combination of abstract ideas).
We are also not persuaded by Appellant's argument that claim 1 is not
abstract because it "is novel and non-obvious over the art of record." App.
Br. 6. Appellant improperly relies upon the fact that the Examiner has not
made any rejections under§§ 102 or 103. Id. However, this is not the test
for determining patent-eligible subject matter under§ 101, as the Supreme
Court has set forth in Alice the proper two step framework for distinguishing
patents that claim abstract ideas. Appellant's contention that the Examiner
has found the invention novel and non-obvious, i.e., has found no prior art
references that teach/suggest all of the claimed features, does not apprise us
of error in the rejection under 35 U.S.C. § 101. An abstract idea does not
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transform into an inventive concept just because the prior art does not
disclose or suggest it.
For these reasons, we are not persuaded that the Examiner erred in
concluding that claims 1-9 are directed to an abstract idea.
Turning to step two of the Alice analysis, the Examiner concluded the
additional elements in claim 1 do not amount to "significantly more" than
the abstract idea.
Appellant contends the present claims are analogous to those found in
BASCOM to represent "significantly more" than an abstract idea. App. Br. 9
(citing BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016)). Appellant argues claim 1 represents
"significantly more" when viewed as a whole, by providing a technical
solution to the problem of using a computer system and stored public
records documents to identify an elevated risk of fraud associated with an
apparent release of a lien on the property. Id. at 10.
We disagree. In BASCOM, the Federal Circuit premised its
determination that the claims at issue include an inventive concept on the
fact that the claims represent a technical improvement to filtering content on
the Internet, not on the specificity of the claimed filtering scheme, as
Appellant suggests. Appellant's claims and Specification do not identify a
specific improvement to computer technology or computer operation
effected by the claims. In contrast, BASCOM's patent-eligible ordered
combination of claim limitations contain an "inventive concept [that]
harnesses [a] technical feature of network technology in a filtering system by
associating individual accounts with their own filtering scheme and elements
while locating the filtering system on an ISP [Internet Service Provider]
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server," thus "improv [ ing] the performance of the computer system itself
with a "technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems." See
BASCOM, 827 F.3d at 1350-52.
We also are not persuaded by Appellant's argument that "the present
claims do not preempt the alleged abstract idea." App. Br. 10. "[W]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Fair Warning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (quoting
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-
63 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 701, 193 (2015) ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract."). Further, "[w]here a patent's claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, as they are in
this case, preemption concerns are fully addressed and made moot." Ariosa,
788 F.3d at 1379.
Nor are we persuaded by Appellant's argument that "the operations
described in claim 1 are not analogous to any business practice that is, or
reasonably can be, performed without the use of a computer." App. Br. 11
(citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014)). DDR Holdings does not support Appellant's arguments. In DDR
Holdings, the Federal Circuit determined that certain claims satisfied Alice
step two because "the claimed solution amounts to an inventive concept for
resolving [a] particular Internet-centric problem," i.e., a challenge unique to
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the Internet. DDR Holdings, 113 F.3d at 1257-59; see Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (noting that
"[i]n DDR Holdings, we held that claims 'directed to systems and methods
of generating a composite web page that combines certain visual elements of
a 'host' website with content of a third-party merchant' contained the
requisite inventive concept"). The Federal Circuit explained that the patent-
eligible claims specified "how interactions with the Internet are manipulated
to yield a desired result ... that overrides the routine and conventional
sequence of events ordinarily triggered by the click of a hyperlink." DDR
Holdings, 773 F.3d at 1258. The court reasoned that those claims recited a
technological solution "necessarily rooted in computer technology" that
addressed a "problem specifically arising in the realm of computer
networks." Id. at 1257. The claims here do not address a similar problem
and do not contain a similar inventive concept as the patent-eligible claims
in DDR Holdings. Instead, as the Examiner determined, claim 1 uses a
conventional, general purpose computer to perform generic computer
functions, i.e., receiving, accessing, processing transaction history data, and
generating a risk level. See Ans. 9; see also Spec. ,r,r 79-80.
Moreover, Appellant's assertion that "the Office has implicitly found
that claim 1 recites such an 'inventive concept' by finding the claimed
subject matter to be novel and non-obvious over the cited art" is
unpersuasive. See App. Br. 12. A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See e.g., Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79 (2012).
For these reasons, we are not persuaded the Examiner erred in
concluding claims 1-9 are directed to an abstract idea, without significantly
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more. Accordingly, we sustain the Examiner's§ 101 rejection of
independent claim 1, as well as the Examiner's § 101 rejection of
independent claim 3, which Appellant argues is patentable for similar
reasons. App. Br. 12-14. We also sustain the Examiner's rejection of
dependent claims 2 and 4--9, not argued separately. Id. at 12, 14.
DECISION
We affirm the Examiner's decision rejecting claims 1-9.
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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