Ex Parte Ciurea

Patent Trial and Appeal Board

Nov 29, 2018

14070110 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/070,110 11/01/2013 Peter Ciurea
66945 7590 12/03/2018
KILPATRICK TOWNSEND & STOCKTONLLP/VISA
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
79900-892375 6848
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER CIUREA 1
Appeal2017-010091
Application 14/070, 110
Technology Center 3600
Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
PHILLIP A. BENNETT, Administrative Patent Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Rejection of claims 21--40, all the pending claims in the
present application. Claims 1-20 are canceled. See Claims Appendix. We
have jurisdiction over the appeal under 35 U.S.C. § 6(b ).
We AFFIRM.
The present invention relates generally to authentication and risk
analysis. See Abstract.
1 Appellant names Visa International Service Association as the real party in
interest (App. Br. 3).
Appeal2017-010091
Application 14/070, 110
Claim 21 is illustrative:
21. A method comprising:
receiving, at a server computer, a request message associated
with a transaction from an access device, the request including
transaction data associated with the transaction;
in response to receiving the request message from the access
device, retrieving, by the server computer and from a database, search
history data or search parameters relating to searches conducted by a
user associated with the transaction, the user using a user
communication device to contact a search engine to perform the
searches over a communications network, the search history data or
search parameters including one or more terms associated with the
searches conducted by the user;
after retrieving the search history data or search parameters
from the database, determining, by the server computer, a risk
parameter associated with the transaction, wherein the risk parameter
is based on at least the search history data or search parameters and
the transaction data included in the request message, wherein the risk
parameter is determined based on a correlation between the
transaction data and the one or more terms included in the search
history data or search parameters relating to searches conducted by the
user;
determining, by the server computer, if the transaction is
authorized using the risk parameter; and
transmitting, by the server computer, a response message to the
access device after determining if the transaction is authorized.
Appellant appeals the following rejection:
Claims 21--40 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter (Final Act. 4--8).
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
2
Appeal2017-010091
Application 14/070, 110
ANALYSIS
Re} ection under § 101
Issue: Did the Examiner err in finding that the claims are directed to
patent-ineligible subject matter?
Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), identifies a
two-step framework for determining whether claimed subject matter is
judicially excepted from patent eligibility under § 101. According to Alice
step one, "[ w ]e must first determine whether the claims at issue are directed
to a patent-ineligible concept," such as an abstract idea. Alice, 134 S. Ct. at
2355. "If the claims are not directed to an abstract idea [or other patent-
ineligible concept], the inquiry ends. If the claims are 'directed to' an
abstract idea, then the inquiry proceeds to the second step of the Alice
framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016). In analyzing whether a claim is directed to an
abstract idea, we look to other decisions where similar concepts were
previously found abstract by the courts. See Amdocs (Israel) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016).
In this regard, with respect to independent method claim 21, and
similarly, system claim 31, the Examiner determines that the claims are
directed to the abstract idea of "organizing human activities and a
fundamental economic practice" (Final Act. 4 ). The Examiner adds that "a
memory and a processor are used to receive/retrieve data, process the data,
and transmit the data" (id.) and "[ t ]hese particular behaviors are
'intrapersonal or interpersonal activities' of 'managing relationships or
transactions between people, social activities, or behaviors"' (id. at 5).
3
Appeal2017-010091
Application 14/070, 110
We find that the Examiner's cogent analysis relying on judicial
examples (see Ans. 5---6), shows the Examiner provided an adequate basis
for determining that the claims are directed to an abstract idea.
Appellant challenges the Examiner's determinations on the ground
that "the Examiner has not cited a single court case with respect to step 2A
of the Alice analysis ... [thus] the Examiner has failed to meet his burden of
making a prima facie case" (App. Br. 6).
In response, the Examiner determines, and we agree, "there is no
requirement in the [M]ayo test[, step one,] to cite cases/evidence to support
the rejection" (Ans. 3), nonetheless the Examiner cites "Electric Power
Group" and concludes that, like the current invention, Electric Power
Group "merely performed 'collecting information, analyzing it, and
displaying certain results of the collection and analysis"' (id.). See, e.g.,
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed.
Cir. 2016) ("collecting information, analyzing it, and displaying certain
results of the collection and analysis" are "abstract-idea processes").
Appellant fails to direct our attention to any precedential cases that
stand for the proposition that Examiners must provide evidentiary support in
every case before a conclusion can be made that a claim is directed to an
abstract idea. There is no such requirement. See, e.g., para. IV "July 2015
Update: Subject Matter Eligibility" to 2014 Interim Guidance on Subject
Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("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. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
4
Appeal2017-010091
Application 14/070, 110
resolve the ultimate legal conclusion on eligibility without making any
factual findings" ( emphasis added)). Evidence may be helpful in certain
situations where, for instance, facts are in dispute. But it is not always
necessary. In any case, the Examiner persuasively cites to Electric Power
Group.
Here, the claimed sequence of steps in claim 21 cover employing a
server computer to perform functions, such as receiving a request
message/transaction data, retrieving search history data, determining a risk
parameter, determining if transaction is authorized, and transmitting a
response message (see claim 21 ). However, information collection and
analysis, including when limited to particular content, is within the realm of
abstract ideas. Elec. Power, 830 F.3d at 1353 (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."). As such, the abstract idea here is not meaningfully different
from the ideas found to be abstract in other cases.
In rejecting claims 21--40 under 35 U.S.C. § 101, the Examiner
analyzed the claims using the Mayol Alice two-step framework, consistent
with the guidance set forth in the USPTO's "2014 Interim Guidance on
Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014).
Thus, the Examiner notified Appellant 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." 3 5
U.S.C. § 132. Therefore, contrary to Appellant's assertions, in doing so, the
Examiner set forth a prima facie case of unpatentability such that the burden
shifted to Appellant to demonstrate that the claims are patent-eligible.
5
Appeal2017-010091
Application 14/070, 110
Appellant further contends that "it is unclear as to how steps that
could not possibly be performed by humans equate to organizing human
activities" (App. Br. 7). In response, the Examiner concludes, and we agree,
that "because series of organized human activities need to be performed in a
computer environment does NOT mean it is NOT abstract idea of organizing
human activities" (Ans. 3).
Courts have similarly determined that various methods of organizing
human activity fall "squarely within the realm of 'abstract ideas."' Alice, 134
S. Ct. at 2357 (discussing methods for risk hedging and intermediated
settlement as non-limiting examples of organizing human activity). Among
others, recent cases from the Federal Circuit also have "applied the 'abstract
idea' exception to encompass inventions pertaining to methods of organizing
human activity." In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 613
(Fed. Cir. 2016) (finding the claimed method of classifying and storing
images in an organized manner was a well-established basic concept
analogous to methods of organizing human activity); see Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir.
2015) (finding the claim at issue was directed to the abstract idea of
budgeting, which was "not meaningfully different from the ideas found to be
abstract in other cases before the Supreme Court and our court involving
methods of organizing human activity"). See also, e.g., Content Extraction
& Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347
(Fed. Cir. 2014) (finding claims directed to collecting data, recognizing
certain data within the collected data set, and storing the recognized data
drawn to an abstract idea and noting that "humans have always performed
these functions").
6
Appeal2017-010091
Application 14/070, 110
Appellant further contends that "the Examiner has ignored several
important features of the claims" (App. Br. 15) "because the Examiner
attempts to distill the claim into a gist or core principle" (id. at 16).
Whichever way the concept is described, Appellant has not adequately
shown that claim 21 is not directed to an abstract idea. Just because the
claim includes more words than the phrase the Examiner uses as an
articulation of the abstract idea is an insufficient reason to persuasively
argue that claim 21 is not directed to an abstract idea. Stated differently, the
identified abstract idea need not encompass every claim limitation.
Otherwise, there would be no need for step two of the Alice inquiry. Alice,
134 S. Ct. at 2355.
For the foregoing reasons, we agree with the Examiner that the claims
are directed to an abstract idea.
We now tum to the second step of the Alice framework: "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
(alteration in original) (quoting Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The Examiner determines that "all the claims require no more than
adding insignificant extra-solution activity to the judicial exception ... and
performing of generic computer functions" (Final Act. 5).
Appellant contends that "the claims at issue share substantial
similarities to the claims of DDR Holdings" (App. Br. 10) and "in both DDR
Holdings and Trading Technologies, embodiments of the invention utilize
unconventional techniques to solve problems rooted in prior art systems" (id.
7
Appeal2017-010091
Application 14/070, 110
at 11-12). Appellant further contends that "[l]ike the claims at issue in
McRO, ... [t]he claims are limited to 'a combined order of specific rules'
that prevents preemption of any abstract concept" (id. at 13). Appellant also
contends that similar to Amdocs, "the claims recite a nonconventional and
non-generic arrangement of components while avoiding drawbacks present
in other systems" (id. at 14).
In response, the Examiner determines, and we agree, that "none of
these cases were factually similar to the current invention ... [the] current
invention is not 'necessarily rooted in computer technology' ... is not using
rules to solve a technological problem ... does not recite a non-conventional
and non-generic arrangement of components ... [ and] [ A Jppellant is NOT
improving any technology ... but at best, it is, merely improving an abstract
idea itself' (Ans. 4).
Regarding DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1259 (Fed. Cir. 2014), the subject claim was held patent-eligible because it
encompassed "an inventive concept" for resolving a "particular Internet-
centric problem." Specifically, the invention in DDR Holdings allowed a
host merchant website to maintain the look and feel of the host website when
hyperlinking to outside merchants' product pages, i.e., "specify how
interactions with the Internet are manipulated to yield a desired result."
DDR Holdings, 773 F.3d at 1257-58.
In contrast, we find Appellant's method performed by a server
computer processor ( claim 21) does not provide a solution "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks." DDR, 773 F.3d at 1257.
Because we find all claims on appeal merely use a generic computer or
8
Appeal2017-010091
Application 14/070, 110
processor as a tool which is used in the way a computer normally functions,
i.e., to analyzing data to make a determination, we conclude that the claims
fail to impart any discernible improvement upon the computer or processor;
nor do Appellant's claims solve "a challenge particular to the Internet" as
considered by the court in DDR, 773 F.3d at 1256-57.
Here, Appellant is merely using a generic computer to add an
additional conventional feature, i.e., search history data, to another
conventional method, i.e., approving/declining a transaction. Appellant is
reminded that "relying on a computer to perform routine tasks rnore quickly
or more accurately is insufficient to render a claim patent eligible." OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2359 ("use of a computer to create electronic
records, track multiple transactions, and issue simultaneous instructions" is
not an inventive concept)). Thus, we find unavailing Appellant's arguments
that the present claims are similar to DDR Holdings, given that no
convincing "inventive concept" for resolving a "particular Internet-centric
problem" is identified by Appellant.
Furthermore, Appellant has not adequately explained how the claims
are performed such that they are not routine, conventional functions of a
generic computer. The claims at issue do not appear to require any
nonconventional computer or database components, or even a "non-
conventional and non-generic arrangement of known, conventional pieces,"
but merely call for performance of the claimed data collection, analysis, and
transmitting "on a set of generic computer components." Bascom Global
Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349--52 (Fed.
Cir. 2016). As noted in Appellant's Specification, "risk analysis parameters
9
Appeal2017-010091
Application 14/070, 110
associated with search technology may be used to improve previously
known and used methods of analyzing risk by improving the accuracy of
risk scores by providing an additional risk analysis parameter" (Spec. ,r 22).
In other words, the present claims merely use an additional piece of data, not
improved technology, to determine risk. Thus, considering the features of
the claims, individually and as an ordered combination, we find there are no
additional elements that transform the nature of the claim into a patent-
eligible application. Alice., 134 S. Ct. at 2355. Thus, we agree with the
Examiner that the alleged improvement to the technical field appears to
address the "abstract idea itself' (Ans. 4).
We also are not persuaded by Appellant's argument that the Federal
Circuit's decision in Trading Technologies International Inc. v. CQG, Inc.,
675 F. App'x 1001 (Fed. Cir. 2017) (nonprecedential), requires a legal
conclusion of patent eligibility in this case (App. Br. 11). In Trading
Technologies, the Federal Circuit accepted the lower court's findings, with
respect to step two of Alice, that the claims provided "an inventive concept
that allows traders to more efficiently and accurately place trades using this
electronic trading system." 675 F. App'x at 1004. The Federal Circuit
noted "[ t ]he court distinguished this system from the routine or conventional
use of computers or the Internet, and concluded that the specific structure
and concordant functionality of the graphical user interface are removed
from abstract ideas, as compared to conventional computer implementations
of known procedures." Id. Accordingly, the distinguishing feature under
Alice step two for the claims in Trading Technologies was an advance in
efficiency provided by an improved graphical user interface as compared to
other computer processes. However, the claims here are unlike those in
10
Appeal2017-010091
Application 14/070, 110
Trading Technologies because Appellant's claims do not recite a graphical
user interface. In addition, as discussed supra, Appellant has not provided
persuasive evidence or technical reasoning that the method of claim 21
produces an advance in efficiency or technological improvement to the
computer data processing system.
We also are not persuaded by Appellant's argument that the Federal
Circuit's decision in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1314 (Fed. Cir. 2016), requires a legal conclusion of patent eligibility
in this case (App. Br. 13). In McRO, the Federal Circuit concluded that the
claim, when considered as a whole, was directed to a "technological
improvement over the existing, manual 3-D animation techniques" through
the "use of limited rules specifically designed to achieve an improved
technological result in conventional industry practice." McRO, 837 F.3d at
1316. Specifically, the Federal Circuit found that the claimed rules allow
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators; and the rules are limiting because they define morph
weight sets as a function of phoneme sub-sequences. Id. at 1313 ( citations
omitted).
In contrast, here, Appellant has not identified any analogous
improvement attributable to the claimed invention. Although determining a
risk parameter based at least in part on search history data may improve a
business process, it does not achieve an improved technological result. We
see no parallel between the limiting rules described in McRO and the results-
based rules recited in Appellant's claims. In addition, "[ w ]here a patent's
claims are deemed only to disclose patent ineligible subject matter under the
11
Appeal2017-010091
Application 14/070, 110
Mayo framework, [] preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
Regarding Appellant's pointing out "the lack of a rejection under
35 U.S.C. § 103" (App. Br. 9), we note that a finding of novelty or non-
obviousness does not require the conclusion that the claimed subject matter
is patent-eligible. Although the second step in the Mayo/Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or nonobviousness, but, rather, is a search for "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 Corp., 134 S. Ct. at 2355. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass'n.for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). A novel and non-obvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
See also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ( "The 'novelty' of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the§ 101 categories of possibly patentable subject matter.").
Because Appellant's independent claims 21 and 31 2 are directed to a
patent-ineligible abstract concept under the first step of Alice and do not
recite something "significantly more" under the second step of the Alice
analysis, we sustain the Examiner's rejection of these claims as well as
2 Alice also confirmed that if a patent's systems claims are no different in
substance from its method claims, they will rise and fall together. 134 S. Ct.
at 2360.
12
Appeal2017-010091
Application 14/070, 110
respective dependent claims 22-30 and 32--40 under 35 U.S.C. § 101 as
being directed to non-statutory subject matter in light of Alice and its'
progeny.
For the foregoing reasons, Appellant's contentions are unpersuasive
as to error in the rejection under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's§ 101 rejection.
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
13