Lisa Davis et al.

Patent Trials and Appeals Board

Aug 28, 2019

13924138 - (D) (P.T.A.B. Aug. 28, 2019)

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.
13/924,138 06/21/2013 Lisa Davis CITI-0741 4944
13708 7590 08/28/2019
Johnson, Marcou & Isaacs, LLC
PO Box 691
Hoschton, GA 30548
EXAMINER
WILDER, ANDREW H
ART UNIT PAPER NUMBER
3627
MAIL DATE DELIVERY MODE
08/28/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte LISA DAVIS, PADMA SANTHANAM, TIM SCHUMAN,
SRINIVAS KUNIGAL, NIKHIL SHAH, KAPIL KHURANA, and
SURANJAN CHOUDHURY
________________

Appeal 2017-011658
Application 13/924,1381
Technology Center 3600
________________

Before JOHN A. EVANS, LINZY T. McCARTNEY, and
JASON J. CHUNG, Administrative Patent Judges.

CHUNG, 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 and 3–23.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
INVENTION
The invention relates to providing a global statement showing
consolidated account information across regions for an entity and selected

1 According to Appellants, Citibank, N.A. is the real party in interest. Br. 3.
2 According to the last set of claims filed on September 9, 2016 before the
Appeal Brief was filed, claim 2 is cancelled.
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ones of its related entities. Spec. ¶ 1. Claim 1 is illustrative of the invention
and is reproduced below:
1. A method, comprising:
collecting, by a global data warehouse server processor,
post-billing customer account data from each of a plurality of
regional data warehouse servers for each of a plurality of
accounts of a plurality of business units of an entity into a single
subset of the global data warehouse according to a hierarchy of
a unique subsidiary identifier for each business unit of the entity
linked to a unique identifier for the entity;
selecting, by the global data warehouse server processor,
post-billing customer account details from the collected post-
billing customer account data for business units of the entity
corresponding to unique subsidiary identifiers requested by a
global billing server processor; and
generating, by the global billing server processor, a single
consolidated postbilling customer account statement showing the
selected post-billing customer account details for the business
units of the entity corresponding to the unique subsidiary
identifiers requested by the global billing server processor.

REJECTIONS AT ISSUE
Claims 1 and 3–233 stand rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Final Act. 8–9.
Claims 1, 3–19, and 21–23 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Brockman (US 2002/0123919
A1, published Sept. 5, 2002), Harding (US 2012/0311449 A1, published

3 Although the Examiner and Appellants refer to claims 1–23 (see e.g., Final
Act. 7, 9; Br. 7, 16–20) and the Examiner also refers to claims 1 and 3–23
(see e.g., Ans. 2), we interpret the inclusion of claim 2 as a typographical
error because claim 2 was canceled. See supra n.2. We, therefore, address
claims 1 and 3–23 in our Decision.
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Dec. 6, 2012), and Clark (US 2003/0128828 A1, published July 10, 2003).
Final Act. 8–19.
Claims 20 stands rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Brockman, Harding, Clark, and
Stephen (US 2007/0182990 A1, published Aug. 9, 2007). Final Act. 19–20.
ANALYSIS
I. Claims 1 and 3–23 Rejected Under 35 U.S.C. § 101
A. Legal Principles
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
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economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 192 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
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concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum.
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B. The Examiner’s Conclusions and Appellants’ Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Ans. 3–4. The Examiner also determines the
present claims do not amount to significantly more than an abstract idea
itself because the Examiner determines the abstract idea is implemented on
generic components that are well-understood, routine, and conventional
previously known to the industry. Ans. 10–11 (citing In re TLI Commc’ns,
823 F.3d 607 (Fed. Cir. 2016)).
Appellants argue the Examiner mischaracterizes what the present
claims are directed to and fails to support rejection with sufficient evidence,
plausibly articulated reasoning, and analysis. Br. 7–10. Appellants argue,
similar to the claims in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016), the present claims are directed to an improvement in computer-
related technology because the present claims improve validity,
completeness, accuracy, and analysis of database data. Br. 10–12 (citing
Spec. ¶¶ 19–20). Appellants further argue, similar to DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), the present claims are
necessarily rooted in database technology to solve problems specifically
arising in the realm of legacy database technology. Br. 12–13. Appellants
argue the present claims do not preempt any abstract idea. Id. at 14–15.
Appellants argue, similar to BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), the present claims
recite a combination of non-conventional and non-generic arrangement of
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known, conventional elements, which results in an inventive concept. Br.
13–14.4 We disagree with Appellants.
C. Discussion
1. Step 2A, Prong 1
We reproduce claim 1, below, with emphases.
1. A method, comprising:
collecting, by a global data warehouse server processor,
post-billing customer account data from each of a plurality of
regional data warehouse servers for each of a plurality of
accounts of a plurality of business units of an entity into a single
subset of the global data warehouse according to a hierarchy of
a unique subsidiary identifier for each business unit of the entity
linked to a unique identifier for the entity;
selecting, by the global data warehouse server processor,
post-billing customer account details from the collected post-
billing customer account data for business units of the entity
corresponding to unique subsidiary identifiers requested by a
global billing server processor; and
generating, by the global billing server processor, a single
consolidated postbilling customer account statement showing
the selected post-billing customer account details for the
business units of the entity corresponding to the unique
subsidiary identifiers requested by the global billing server
processor.

The emphasized portions of claim 1,5 reproduced above, recite
commercial interactions (including sales activities). According to the

4 Appellants’ arguments pertaining to Smartgene, Inc. v. Advanced
Biological Labs., SA, 555 F. App’x. 950 (Fed. Cir. 2014) (non-precedential)
and Cyberfone Systems, LLC v. CNN Interactive Group, Inc. 588 F.2d 998
(Fed. Cir. 2014) (non-precedential) (Br. 9–10) are moot because we do not
rely on these cases to reach our Decision.
5 Claim 1, reproduced above with emphasis, recites similar features as
independent claims 23. Appellants do not argue claims 1 and 3–23
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Memorandum, commercial interactions (including sales activities) fall into
the category of certain methods of organizing human activity. See
Memorandum. Moreover, those certain methods of organizing human
activity are a type of an abstract idea. See id.
We disagree with Appellants’ argument that the Examiner
mischaracterizes what the present claims are directed to and fails to support
rejection with sufficient evidence, plausibly articulated reasoning, and
analysis. Br. 7–10. We disagree because the Examiner concludes the
present claims recite certain methods of organizing human activity. Ans. 3–
4.
Because the present claims recite concepts such as commercial
interactions (including sales activities), which fall into the category of
certain methods of organizing human activity (i.e., an abstract idea), we
proceed to prong 2.
2. Step 2A, Prong 2
The present claims do not integrate the abstract idea into a practical
application because they do not impose any meaningful limits on practicing
the abstract idea. In particular, we disagree with Appellants’ argument that,
similar to the claims in Enfish, the present claims are directed to an
improvement in computer-related technology because the present claims
improve validity, completeness, accuracy, and analysis of database data. Br.
10–12 (citing Spec. ¶¶ 19–20).
The alleged improvement is to validity, completeness, accuracy, and

separately, but assert the § 101 rejection of those claims should be
withdrawn for at least the same reasons. Br. 7–15. We, therefore, group
claims 1 and 3–23 together and refer to those claims as the “present claims.”
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analysis of database data. Unlike the claims of Enfish, the present claim are
not directed to “a specific improvement to the way computers operate,
embodied in the self-referential table.” Enfish, LLC v. Microsoft Corp., 822
F.3d at 1336.
Instead, the present claims are directed to an abstract idea as discussed
supra, in § I.C.1., or at best, improving an abstract idea—not a technological
improvement. The Specification indicates the additional elements (i.e.,
“global data warehouse server processor,” “regional data warehouse
servers,” and “global billing server processor”) recited in the present claims
are merely tools used to implement the abstract idea. Spec. ¶¶ 7–10, 17, 21–
23, 25, 28–36, 38.
Additionally, “a claim for a new abstract idea is still an abstract idea.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (emphasis added). “[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial LLC,
818 F.3d 1369, 1376 (Fed. Cir. 2016).
We also disagree with Appellants’ argument that, similar to DDR, the
present claims are necessarily rooted in database technology that overcomes
a problem specifically arising in the realm of legacy database technology.
Br. 12–13. Instead, the present claims are directed to an abstract idea using
additional generic elements as tools to implement the abstract idea as
discussed supra in §§ I.C.1., I.C.2. or at best, the present claims are rooted in
commercial interactions (i.e., certain methods of organizing human activity,
which is an abstract idea as discussed above) technology and overcoming a
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problem arising in that area.
Additionally, we disagree with Appellants’ argument that the present
claims are patent eligible because they do not preempt any abstract idea.
Br. 14–15. Although preemption may denote patent ineligibility, its absence
does not demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric
Sys., Inc., 839 F.3d at 1098. For claims covering a patent-ineligible concept,
preemption concerns “are fully addressed and made moot” by an analysis
under the Mayo/Alice framework. Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellants do not make any other arguments pertaining to step 2A,
prong 2. Because the present claims recite an abstract idea that is not
integrated into a practical application, we proceed to Step 2B.
3. Step 2B
We agree with the Examiner’s determination that the abstract idea is
implemented on generic components that are well-understood, routine, and
conventional. Ans. 10–11 (citing In re TLI Communications, 823 F.3d 607
(Fed. Cir. 2016)). The Specification supports the Examiners determination
in this regard because it explains that “global data warehouse server
processor,” “regional data warehouse servers,” and “global billing server
processor” are generic components. Spec. ¶¶ 7–10, 17, 21–23, 25, 28–36,
38. Appellants’ Specification indicates these elements were well-
understood, routine, and conventional components because it describes them
at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id.
We disagree with Appellants’ argument that, like BASCOM, the
present claims recite a combination of non-conventional and non-generic
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arrangement of known, conventional elements, which results in an inventive
concept. Br. 13–14. Instead, the present claims are directed to an abstract
idea using generic components as discussed supra, in §§ I.C.1. and I.C.2. or
at best, improving an abstract idea—not an inventive concept.
Appellants do not argue claims 1 and 3–23 separately, but assert the
§ 101 rejection of those claims should be withdrawn for at least the same
reasons. Br. 7–15. Based on our review of the dependent claims, these
claims do not recite any additional features that would transform the abstract
idea embodied in independent claims 1 and 23 into an inventive concept.
Accordingly, we sustain the Examiner’s rejection of: (1) independent claims
1 and 23; and (2) dependent claims 3–22 under 35 U.S.C. § 101.
II. Claims 1 and 3–23 Rejected Under 35 U.S.C. § 103
The Examiner finds Clark teaches a billing system collects billing
information from a customer created hierarchy; the customer created
hierarchy includes a root level indicating the company name, the first level
indicating offices located in certain states, the second level indicating
various cities located within those states, which the Examiner maps to the
limitation:
collecting, by a global data warehouse server processor, post-
billing customer account data from each of a plurality of regional
data warehouse servers for each of a plurality of accounts of a
plurality of business units of an entity into a single subset of the
global data warehouse according to a hierarchy of a unique
subsidiary identifier for each business unit of the entity linked to
a unique identifier for the entity

recited in claim 1 (and similarly recited in claim 23). Ans. 14–15 (citing
Clark ¶ 78, Figs. 1–2); Final Act. 11 (citing Clark ¶¶ 74–92).
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The Examiner finds Clark teaches the billing system extracts billing
information according to the customer-defined hierarchy and generates a
single consolidated bill showing specific charges for the each state in the
hierarchy and specific charges for each of the cities located within those
states, which the Examiner maps to the limitation:
selecting, by the global data warehouse server processor, post-
billing customer account details from the collected post-billing
customer account data for business units of the entity
corresponding to unique subsidiary identifiers requested by a
global billing server processor; and generating, by the global
billing server processor, a single consolidated postbilling
customer account statement showing the selected post-billing
customer account details for the business units of the entity
corresponding to the unique subsidiary identifiers requested by
the global billing server processor.

recited in claim 1 (and similarly recited in claim 23). Ans. 15–16 (citing
Clark ¶¶ 72, 120, Fig. 21).
Appellants argue Brockman, Harding, and Clark fail to teach all the
limitations recited in claims 1 and 23 because Clark merely teaches a phone
company retrieving phone charges for a customer’s company units and
sending a consolidated phone bill for all those charges to the customer. Br.
17. We disagree with Appellants.
At the outset, we note that the Examiner made some new findings in
the Answer, which Appellants did not rebut in a Reply Brief. Compare Ans.
14–16 (citing Clark ¶¶ 71, 72, 120, Fig. 21), with Final Act. 11–12 (does not
cite to Clark ¶¶ 71, 72, 120, Fig. 21).
Nonetheless, Clark teaches a billing system (Fig. 1) generates
consolidated billing information (i.e., post-billing information) according to
a customer created hierarchy; the customer created hierarchy includes a root
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level indicating the company name (i.e., unique subsidiary identifier), the
first level indicating offices located in certain states (i.e., regional data
warehouse servers), the second level indicating various cities (i.e., business
units of an entity) located within those states, which teaches the limitation:
collecting, by a global data warehouse server processor, post-
billing customer account data from each of a plurality of regional
data warehouse servers for each of a plurality of accounts of a
plurality of business units of an entity into a single subset of the
global data warehouse according to a hierarchy of a unique
subsidiary identifier for each business unit of the entity linked to
a unique identifier for the entity

recited in claim 1 (and similarly recited in claim 23). Clark ¶ 78, Figs. 1–2
(cited at Ans. 14–15); Clark ¶¶ 74–92 (cited at Final Act. 11).
Clark teaches the billing system (i.e., global data warehouse server
processor) extracts billing information according to the customer-defined
hierarchy and generates a single consolidated bill showing specific charges
for the each state in the hierarchy and specific charges for each of the cities
(i.e., details from the collected post-billing customer account data for
business units of the entity) located within those states, which teaches the
limitation:
selecting, by the global data warehouse server processor, post-
billing customer account details from the collected post-billing
customer account data for business units of the entity
corresponding to unique subsidiary identifiers requested by a
global billing server processor; and generating, by the global
billing server processor, a single consolidated post-billing
customer account statement showing the selected post-billing
customer account details for the business units of the entity
corresponding to the unique subsidiary identifiers requested by
the global billing server processor.

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recited in claim 1 (and similarly recited in claim 23). Clark ¶¶ 72, 120, Fig.
21 (cited at Ans. 15–16).
Appellants do not argue claims 3–22 separately with particularity, but
assert the § 103 rejection of those claims should be withdrawn for at least
the same reasons as argued for independent claims 1 and 23. Br. 7–15.
Accordingly, we sustain the Examiner’s rejection of: (1) independent claims
1 and 23; and (2) dependent claims 3–22 under 35 U.S.C. § 103.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 41.37(c)(1)(iv).

DECISION
We affirm the Examiner’s decision rejecting claims 1 and 3–23 under
35 U.S.C. § 101.
We affirm the Examiner’s decision rejecting claims 1 and 3–23 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED