Ex Parte Deshmukh et al

Patent Trial and Appeal Board

May 16, 2018

13664249 (P.T.A.B. May. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/664,249 10/30/2012
84986 7590 05/18/2018
GRASSOPLLC
1818 LIBRARY STREET, SUITE 500
RESTON, VA 20190
FIRST NAMED INVENTOR
Abhijit Deshmukh
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.
IN9201201 l 6US 1 9092
EXAMINER
HALE,TIMB
ART UNIT PAPER NUMBER
3685
NOTIFICATION DATE DELIVERY MODE
05/18/2018 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):
admin@grassoip.com
vromme@grassoip.com
fgrasso@grassoip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ABHIJIT DESHMUKH and ANURAG SRIVASTAVA
Appeal2016-005053 1
Application 13/664,2492
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-20, which are all the pending claims in the application.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("App. Br.," filed
Aug. 19, 2015), Reply Brief ("Reply Br.," filed Apr. 8, 2016), the
Examiner's Answer ("Ans.," mailed Feb. 10, 2016), and the Final Office
Action ("Final Act.," mailed Jan. 5, 2015).
2 Appellants identify "International Business Machines Corporation" as the
real party of interest. App. Br. 4.
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Application 13/664,249
STATEMENT OF THE CASE
Claimed Subject Matter
Appellants' invention provides for evaluations of a subscriber
transaction or expenditure including receiving and considering measured
real-time physiological metrics of the subscriber, evaluating received
physiological metrics of the subscriber, receiving financial metrics related to
the transaction or the expenditure, and the subscriber, and determining
whether the transaction or expenditure should be assigned a full or partial
authorized status. Spee., Abstract. Claim 1, reformatted and reproduced
below, is illustrative of the claimed subject matter.
1. A nontransient computer readable medium
containing instructions thereon, the instructions, which when
executed by a processor, cause the processor to perform a
process compnsmg:
receive a request to evaluate a proposed subscriber
financial transaction or expenditure;
receive one or more real-time measured physiological
metrics of the subscriber;
evaluate one or more received physiological metrics of
the subscriber;
receive two or more financial metrics, one of the financial
metrics related to the proposed transaction or the expenditure,
and one of the financial metrics related to the subscriber;
determine whether the proposed subscriber financial
transaction or expenditure should be assigned a full or partial
authorized status after
evaluating one or more of the received physiological
metrics of the subscriber,
evaluating one or more metrics related to the proposed
financial transaction or expenditure and
evaluating previously submitted personal targets or
thresholds of the subscriber; and
report the determined authorization status.
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Prior Art Relied Upon
The Examiner relies on the following prior art as evidence of
unpatentability:
Shoham US 2004/0177030 Al Sept. 9, 2004
Labrou et al. US 2007 /0022058 Al Jan.25,2007
Fisher et al. US 2007/0192245 Al Aug. 16, 2007
Guo et al. US 2009/0006188 Al Jan. 1,2009
Rapaport et al. US 2010/0205541 Al Aug. 12, 2010
Mele et al. US 2011/0202474 Al Aug. 18, 2011
Rejections on Appeal3
I. Claims 1-20 stand rejected under 35 U.S.C. § 101 as not
directed to patent-eligible statutory subject matter.
II. Claims 1-20 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite.
III. Claims 1, 2, 6-8, 12-14, and 18-20 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Rapaport, Guo,
and Shoham.
IV. Claims 3, 9, and 15 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Rapaport, Guo, Shoham, and Mele.
V. Claims 4, 10, and 16 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Rapaport, Guo, and Fisher.
VI. Claims 5, 11, and 17 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Rapaport, Guo, Shoham, and Labrou.
3 The rejection of claims 7 and 13 under 35 U.S.C. § 112, second paragraph,
is withdrawn. Advisory Action 1 ("Advisory Act.," mailed Apr. 2, 2015).
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ANALYSIS
Rejection I-Non-Statutory Subject Matter
Section 3 5 U. SC. § 101 defines patent-eligible subject matter as "any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof," subject to the other limitations of
the Patent Act. 35 U.S.C. § 101. Apart from the Patent Act, the Supreme
Court has created exceptions to the literal scope of 35 U.S.C. § 101. "Laws
of nature, natural phenomena, and abstract ideas are not patentable." Alice
Corp. v. CLSBankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
In Alice, the Court reaffirmed a two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories,
Incorporated, 566 U.S. 66 (2012), for analyzing whether a claim is patent
eligible. Alice, 134 S. Ct. at 2355. The first step in that framework is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts," such as an abstract idea. Id. If so, the inquiry proceeds
to step two to look at the claim for "something more" by "examin[ing] the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Id. at 2354, 2357 (quoting Mayo, 566 U.S. at 66, 79).
This inventive concept must do more than simply recite "well-understood,
routine, conventional activity." Mayo, 566 U.S. at 66, 79.
Applying the framework in Alice, and as the first step of that analysis,
the Examiner determines that "[t]he claim(s) is/are directed to the abstract
idea of a fundamental economic practice of profiling in transaction ( e.g.,
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evaluating the emotional state of a transaction participant)." Final Act. 5.
According to the Examiner, "[t]he claims broadly recite receiving and
evaluating a real-time psychological metric and subsequently analyzing
them. Collecting and analyzing psychological metrics to determine a fraud
risk is routinely preformed without the use of a computer by non-machine
entities, e.g., an attorney or loan agent analyzing a client's veracity."
Advisory Act. 2. The Examiner further elaborates:
Claims 1, 7 and 13 are directed to a series of steps to
determine whether the proposed subscriber financial transaction
or expenditure should be assigned a full or partial authorized
status after evaluating one or more of the received physiological
metrics of the subscriber, evaluating one or more metrics
related to the proposed financial transaction or expenditure and
evaluating previously submitted personal targets or thresholds
of the subscriber; "[sic]Thus, the claims describe an abstract
idea of a fundamental economic practice (e.g., the claims read
on determining subscriber eligibility to a financial transactions,
such as determining the credit worthiness of a regular
customer).
Ans. 4--5. Proceeding to the second step in the analysis, the Examiner
determines:
Id.
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no
more than: recitation of generic computer structure that serves
to perform generic computer functions that are well-understood,
routine, and conventional activities previously known to the
pertinent industry. Viewed as a whole, these additional claim
element( s) do not provide meaningful limitation( s) to transform
the abstract idea into a patent eligible application of the abstract
idea such that the claim( s) amounts to significantly more than
the abstract idea itself.
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Appellants contest Rejection !by arguing claims 1-20 as a group.
App. Br. 8-13; Reply Br. 4---6. We select claim 1 as the representative claim
for this group. Therefore, claims 2-20 stand or fall with claim 1. See
37 C.F.R. § 4I.37(c)(l)(iv).
Alice Step One
Appellants' "invention relates to management of personal finance
and more specifically to real-time evaluation of personal expenditures
and transactions." Spec. ,r 1. According to Appellants, "[t]he
appropriateness of certain personal expenditures and transactions can depend
on many variables and circumstances" ( e.g., the timing of the transaction,
cost of the transaction in relation to an individual's net worth, cash on hand,
salary, and the emotional state of the individual at the time of the
transaction), that can influence and trigger initiation of detrimental and
unwanted transactions that lead to financial hardships. Id. ,r 2. Appellants'
invention solves these problems by evaluating "certain real-time metrics and
purchase transaction metrics" prior to completion of the transaction to
determine if the transaction is appropriate and should be allowed. Id. ,r 4.
Appellants argue that the claims are not directed to an abstract idea
because "[t]he claims here include a physiological real-time measurement,
receiving that measurement, and then action based on receipt of that
measurement." App. Br. 9. We find this argument unpersuasive at least
because it is not commensurate with the scope of claim 1. As the Examiner
observes, claim 1 broadly recites receiving and evaluating metrics and
subsequently analyzing them, but fails to include real-time "'specific'
measurements." Final Act. 3 ("Applicant has read specific terms from the
[S]pecification into the claims ... [and] argued terms not present in the
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claims."). In other words, claim 1 only requires receiving a real-time
"measured" physiological metric of the subscriber, rather than including a
physiological real-time measurement of the subscriber.
Appellants next argue that the rejection under 35 U.S.C. § 101 should
not be upheld because the Final Office Action and Advisory Action "confuse
physiological, which is in the claims, with psychological, which is not in the
claims." App. Br. 9. In response to this argument, the "Examiner maintains
that the claims are ineligible in either case. The operative step is 'receiving
and evaluating ... a metric'. Since as far as 101 eligibility is concerned,
whether or not the claimed system receives a psychological metric or
physiological metric is immaterial to patentability." Ans. 6.
We agree with the Examiner because claims directed to collecting
information, analyzing it, and displaying certain results of the collection and
analysis are directed to an abstract idea. Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) ("[W]e have treated
analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category."). Regarding claim 1 's recitation of
specific data types (i.e., physiological metric), the Federal Circuit has
recognized that limiting information to particular content does not change its
character as information and is within the realm of abstract ideas. Id.
at 1353 ("Information as such is an intangible.").
We also are not persuaded of reversible error under step one of Alice
because the claim calls for receipt of measured real-time physiological
metrics but the Examiner has not accounted for this explicit language. App.
Br. 10. Appellants' reasoning for distinguishing claim 1 from the
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Examiner's parallel abstract concept appears to be focused on the particular
type of content received (id. ("[T]he hypothetical does not include the
receipt of measured physiological metrics in real-time."), which as discussed
above, does not change its character as information to fall outside the realm
of abstract ideas. Under our precedents, the "directed to" inquiry applies a
stage-one filter to the claims considered in light of the Specification, based
on whether the character of the claim "as a whole is directed to excluded
subject matter," instead of a piecemeal itemization of each of the claim
limitations. See Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015); see also Genetic Techs. Ltd. v. Merial L.L.C.,
818 F.3d 1369, 1376 (Fed. Cir. 2016); Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016).
Appellants have not shown how providing an alternative method for
determining the authorization status of a transaction, which results in fewer
inappropriate and unwanted transactions, is an improvement to computer
capability or functionality. Indeed, like the abstract idea of hedging risk in
Bilski v. Kappas, 561 U.S. 593 (2010), the concept of evaluating certain
criteria to assess the authorization status of a financial transaction is a
fundamental economic and business practice long prevalent in our system of
commerce, and beyond the scope of35 U.S.C. § 101. See Alice, 134 S. Ct.
at 2356.
Alice Step Two 4
In step two, we consider the elements of the claim, both individually
and as an ordered combination, to assess whether the additional elements
4 Appellants' introduction of new arguments as to claims 4, 5, 10, 11, 16,
and 17 are not considered. See Reply Br. 6. "Any bases for asserting error,
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transform the nature of the claim into a patent-eligible application of the
abstract idea. Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). This is the search for an
inventive concept, which is something sufficient to ensure that the claim
amounts to significantly more than the abstract idea itself. Id. For example,
merely reciting the use of a generic computer cannot convert a patent-
ineligible abstract idea into a patent-eligible invention. Alice, 134 S. Ct.
at 2358; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1332
(Fed. Cir. 2015).
Appellants argue that
even if the first prong of the judicial exception is allegedly
triggered, the receipt and use of real-time and measured
physiological metrics of a subscriber amounts to significantly
more - placing the claims into a class of statutory subject matter
under 35 U.S.C. §103. It is significantly more because doing so
is not well understood, is not routine, and is not conventional in
the field as demonstrated by the absence of citation in the FOA
to a reference disclosing or suggesting the receipt and
subsequent use of real time and measured physiological metrics
of a subscriber (e.g., applicant, purchaser, etc.) ahead of
providing authorization for a financial transaction involving the
subscriber.
App. Br. 13. We disagree.
To the extent that Appellants maintain that the elements of the claim
necessarily amount to "significantly more" than the abstract idea because the
claim is allegedly patentable over the cited prior art, Appellants
whether factual or legal, that are not raised in the principal brief are waived."
Ex parte Borden, 93 USPQ2d 1473, 1474 (BPAI 2010) (informative); see
also Optivus Tech., Inc. v. Ion Beam Applications. S.A., 469 F.3d 978, 989
(Fed. Cir. 2006).
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misapprehend the controlling precedent. Although the second step in the
Alice framework is termed a search for an "inventive concept," the analysis
is not an evaluation of novelty or nonobviousness, 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, 566 U.S. at 1289. "Groundbreaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry." Ass 'n
for Molecular Pathology, 133 S. Ct. at 2117.
We agree with the Examiner that the elements of the claim-both
individually and when combined----do not transform the claimed abstract
idea into a patent-eligible application of the abstract idea. The claimed
invention can readily be understood as adding conventional computer
components to well-known business practices. See, e.g., Spec. ,r 17
("authorizations to finalize a transaction or expenditure using a credit card or
debit card, ACH authorization, and by using mobile NFC (Near Field
Communication) payment methodologies"), ,r 26 ("sensors can include
commercially available devices"), ,r 28 (transactions may be executed on a
processor or computer). For instance, claim 1 merely requires
implementation on a generic processor. Similar to the claims in Electric
Power, claim 1 here gathers, analyzes, and displays, including in "real-
time," but it does not include any requirement for performing the claimed
functions of receiving, determining, evaluating, and reporting by use of
anything but entirely conventional, generic technology. See Elec. Power
Grp., 830 F.3d at 1356; see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
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709, 717 (Fed. Cir. 2014). It is not enough to point to conventional
applications and say "do it on a computer." Cf Alice, 134 S. Ct. at 2358
("Stating an abstract idea while adding the words 'apply it with a computer'"
is not enough for patent eligibility) ( quoting Mayo, 566 U.S. at 66, 79).
For the foregoing reasons, we are not persuaded of Examiner error
and sustain the rejection of independent claim 1 under 35 U.S.C. § 101,
including claims 2-20, which fall with claim 1.
Rejection II-Indefiniteness
We are persuaded of Examiner error by Appellants' arguments, and
for the reasons advanced by Appellants (App. Br. 13-16), we reverse the
Examiner's indefiniteness rejection of claims 1-20, "as being incomplete for
omitting essential steps, such omission amounting to a gap between the
steps." See Final Act. 6-7; Ans. 8-9.
Rejection III--Obviousness
Independent claims 1, 7, and 13
Independent claims 1, 7, and 13 require, inter alia, "determin[ing]
whether the proposed subscriber financial transaction or expenditure should
be assigned a full or partial authorized status after evaluating one or more of
the received physiological metrics of the subscriber." See App. Br. 27-30
(Claims App'x).
In rejecting claims 1, 7, and 13 as obvious over Rapaport, Guo, and
Shoham, the Examiner finds that neither Rapaport nor Guo teaches this
disputed limitation. Final Act. 9. To cure this deficiency, the Examiner
relies on paragraph 49 and Figure 2 of Shoham. Id.
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We are persuaded by Appellants' arguments, and find the Examiner's
reliance on Shoham fails to cure the deficiency in Rapaport and Guo. App.
Br. 17-20.
Shoham is directed to an automated system for evaluating the
creditworthiness of an organization by utilizing the responses of
organization managers to psychometric interview questions. Shoham,
Abstract. A series of personality type questions are administered via a
secure internet interface and the answers provided by interviewees are
combined with credit application information to output a score as to
creditworthiness, and used by the lender to make a credit decision. Id. ,I,I38,
49.
Although the Examiner acknowledges that "Shoham teaches that a
psychometric5 interview administration process is utilized," the Examiner
nevertheless presumes "the interviewer would take into account various
physiological responses to questions during the psychometric interview to
evaluate the psychological state of the Applicant, such an interview would
read on both a psychological and physiological metric." Ans. 9-10. The
Examiner does not cite to any disclosure in Shoham in which an interviewer
is personally "evaluating one or more of the received physiological metrics"
of an Applicant, as required by each of the independent claims. A rejection
based on 35 U.S.C. § 103 clearly must rest on a factual basis. The Examiner
has the initial duty of supplying the factual basis for the rejection and may
not resort to speculation, unfounded assumptions, or hindsight
reconstruction to supply deficiencies in its factual basis. In re Warner,
5 Merriam Webster online dictionary defines "psychometrics as 'the
psychological theory or technique of mental measurement."' Reply Br. 8.
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379 F.2d 1011, 1017 (CCPA 1967). Even though we acknowledge that
during an in-person interview an interviewer could possibly evaluate certain
physiological characteristics of an interviewee, we find this interpretation
unreasonably broad in light of the plain language of the claims and the
Specification, which require "the processor to perform a process comprising
... determine whether the proposed subscriber financial transaction or
expenditure should be assigned a full or partial authorized status after
evaluating one or more of the received physiological metrics of the
subscriber." For instance, the Specification at paragraph 21 provides that
real-time physiological metrics like body temperature and heart rate are
evaluated by a wrist or chest sensor. Moreover, Shoham is directed to an
automated system, in which questions are administered over an Internet
interface, and Appellants' invention is similarly performed in a computing
environment, wherein all the recited claim steps are performed by a
processor. We find the Examiner's reasoning as to the above disputed
limitation of claims 1, 7, and 13 is unsupported by the record before us.
Therefore, we do not sustain the rejection of independent claims 1, 7,
and 13, including dependent claims 2, 6, 8, 12, 14, and 18-20. Cf In re
Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) ("dependent claims are
nonobvious if the independent claims from which they depend are
nonobvious").
Rejections IV-VI
We also do not sustain the obviousness rejections of claims 3-5, 9-11,
and 15-1 7 for the same reasons, because each of these claims depends from
either claim 1, 7, or 13, and the Examiner has not relied on the additional
cited references to cure the deficiency in Shoham.
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DECISION
The Examiner's rejection under 35 U.S.C. § 101 is affirmed.
The Examiner's rejections under 35 U.S.C. §§ 112 and 103 are
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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