Ex Parte De et al

Patent Trial and Appeal Board

Feb 13, 2017

11755288 (P.T.A.B. Feb. 13, 2017)

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.
11/755,288 05/30/2007 Sruba De 070457.2426 8869
125665 7590
Baker Botts LLP
30 Rockefeller Plaza
New York, NY 10112
02/15/2017 EXAMINER
KANG, IRENE S
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
02/15/2017 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):
nycdocket@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SRUBA DE, ANANT NAMBIAR, and SHERYL SLEEVA
Appeal 2015-0020641
Application 11/755,2882
Technology Center 3600
Before NINA L. MEDLOCK, PHILIP J. HOFFMANN, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
MEDLOCK, 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 10-16 and 18—20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
November 22, 2013) and Reply Brief (“Reply Br.,” filed December 2, 2014),
and the Examiner’s Answer (“Ans.,” mailed October 2, 2014) and Final
Office Action (“Final Act.,” mailed March 15, 2013).
2 Appellants identify MasterCard International Incorporated as the real party
in interest. App. Br. 3.
Appeal 2015-002064
Application 11/755,288
CLAIMED INVENTION
Appellants’ claimed invention relates to a method for developing a
payment card product targeted to a specific consumer market segment
(Abstract).
Claims 18, 19, and 20 are the independent claims on appeal.
Claim 18, reproduced below, is illustrative of the claimed subject matter:
18. A method for developing a payment card program
based on a multidimensional segment analysis, said program
consisting of a plurality of card elements, said method
comprising:
performing demographic analysis to identify an
opportunity segment;
receiving market research data regarding said opportunity
segment;
receiving attitudinal research data regarding said
opportunity segment;
receiving behavioral data regarding one or more
consumers in said opportunity segment;
performing behavioral analysis on said behavioral data
using computer hardware;
developing a profile of a targeted consumer segment based
at least in part on the results of said behavioral analysis and said
attitudinal research data; and
selecting a plurality of card elements based on said profile
for subsequent offering to said targeted consumer segment as a
payment card program, wherein said plurality of card elements
are selected prior to issuance of a payment card associated with
said payment card program to a member of said targeted
consumer segment.
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Appeal 2015-002064
Application 11/755,288
REJECTIONS
Claims 10-16 and 18—20 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 10-15 and 18—20 are rejected under 35 U.S.C. § 102(e) as
anticipated by Haggerty et al. (US 2006/0242039 Al, pub. Oct. 26, 2006,
hereinafter “Haggerty”).3
Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Haggerty and Mack et al. (US 2003/0229533 Al, pub. Dec. 11, 2003,
hereinafter “Mack”).
ANALYSIS
Non-Statutory Subject Matter
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 Labs.,
Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of these concepts.” Alice Corp., 134 S. Ct.
3 We treat the Examiner’s reference to canceled claim 17 at page 3 of the
Final Office Action as inadvertent error.
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Appeal 2015-002064
Application 11/755,288
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., e.g., to an
abstract idea. If the claims are not directed to 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.” Alice Corp.,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297).
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, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
finds that claims 10—16 and 18—20 are directed to providing a payment card,
which the Examiner determines is a fundamental business practice and,
therefore, an abstract idea; that the claims do not include limitations that are
“significantly more” than the abstract idea because the claims do not include
an improvement to another technology or technical field, an improvement to
the functioning of the computer itself, or meaningful limitations beyond
generally linking the use of an abstract idea to a particular technological
environment; and that the claims require no more than a generic computer
performing generic computer functions that are well-understood, routine,
and conventional activities previously known in the industry (Ans. 4—5).
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Appeal 2015-002064
Application 11/755,288
Responding to the rejection, Appellants assert that claims 10—16 and
18—20 are not directed to an abstract idea (Reply Br. 4). But Appellants
offer no persuasive argument or technical reasoning to support that position.
Instead, Appellants merely paraphrase the language of claim 18, and
summarily assert, “[t]his is not an abstract idea;” at the same time,
Appellants concede that the claims “involve . . . what could be argued to be
an abstract idea, if “only in part” (id.).
Appellants further argue that even assuming, for the sake of argument,
that claims 10-16 and 18—20 are directed to an abstract idea, the claims
“contain an inventive concept sufficient to transform the claimed abstract
idea into a patent-eligible application” (id. at 4—5). Citing limitations recited
in claim 18, which Appellants assert are “patentably distinct from the cited
references,” Appellants ostensibly argue that claims 10-16 and 18—20
contain an “inventive concept” because the claimed invention is novel
and/or non-obvious (id). That argument fails at least because Appellants
misapprehend the controlling precedent. Although the second step in the
Alice!Mayo framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, 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, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
We are not persuaded by Appellants’ arguments that the Examiner
erred in rejecting claims 10-16 and 18—20 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection.
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Appeal 2015-002064
Application 11/755,288
Anticipation
Independent Claim 18 and Dependent Claims 10—15
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 18 under 35 U.S.C. § 102(e) because Haggerty
does not disclose “selecting a plurality of card elements based on said profile
for subsequent offering to said targeted consumer segment as a payment card
program,” as recited in claim 18 (App. Br. 7; see also Reply Br. 6—7).
Haggerty is directed to a method for modeling consumer behavior and
applying the model to both potential and actual customers to determine,
based on individual and aggregate consumer data, consumer spending
behavior patterns (Haggerty || 7, 8, 21—23, 31, 33, 34). Haggerty discloses
that consumer behavior can be modeled, for example, by dividing consumers
into categories based on account balance levels, demographic profiles,
household income levels, or any other desired categories (id. 134; see also
id. 126). One or more models are generated for each of the categories of
consumers (id. 134), and these models are used to estimate the size of an
individual consumer’s spending wallet (id. 142) (describing that individual
consumers or prospects to be examined are selected and “[a]n appropriate
model. . . [is] applied to the presently available tradeline information
[i.e., information associated with the customer’s account] ... to determine,
based on the results of application of the derived models, an estimate of a
consumer’s size of wallet.”); see also id. at 126). Based on the output for
the individual customer, purchasing incentives are then identified and
provided to the customer (id. H 26, 67—69).
In rejecting claim 18 as anticipated by Haggerty, the Examiner cites
paragraphs 22, 23, 26, 31, 34, 35, 67, and 68 as disclosing the argued
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Appeal 2015-002064
Application 11/755,288
limitation (Final Act. 4). However, we find nothing in the cited paragraphs
that discloses “selecting a plurality of card elements based on said profile for
subsequent offering to said targeted consumer segment as a payment card
program,” as called for in claim 18. Instead, the best that Haggerty discloses
is that models are applied to information related to individual customers to
identify purchasing incentives for the individual consumer (see, e.g.,
Haggerty || 67—69). We agree with Appellants that offering an incentive to
a single consumer — whether that individual is a current or prospective
cardholder — does not constitute an “offering to said targeted consumer
segment as a payment card program,” as called for in claim 18 (Reply Br. 6).
In view of the foregoing, we do not sustain the Examiner’s rejection
of claim 18 under 35 U.S.C. § 102(e). For the same reasons, we also do not
sustain the Examiner’s rejection of dependent claims 10—15.
Independent Claims 19 and 20
Independent claims 19 and 20 include language substantially similar
to the language of independent claim 18, and stand rejected based on the
same rationale applied with respect to claim 18 (see Final Act. 4).
Therefore, we do not sustain the rejection of claims 19 and 20 under
35 U.S.C. § 102(e) for the same reasons set forth above with respect to
claim 18.
Obviousness
Dependent Claim 16
Claim 16 depends from independent claim 18. The rejection of
claim 16 under § 103 based on Mack, in combination with Haggerty, does
not cure the deficiency in the Examiner’s rejection of claim 18. Therefore,
we do not sustain the rejection of claim 16 under 35 U.S.C. § 103(a).
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Application 11/755,288
DECISION
The Examiner’s rejection of claims 10—16 and 18—20 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 10—15 and 18—20 under 35 U.S.C.
§ 102(e) is reversed.
The Examiner’s rejection of claim 16 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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