Ex Parte GanorDownload PDFPatent Trial and Appeal BoardDec 20, 201713349648 (P.T.A.B. Dec. 20, 2017) Copy Citation 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. 13/349,648 01/13/2012 Shlomo COHEN GANOR P-75634-US 1080 49443 7590 12/22/2017 Pearl Cohen Zedek Latzer Baratz LLP 1500 Broadway 12th Floor New York, NY 10036 EXAMINER PRESTON, JOHN O ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 12/22/2017 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): US PTO @ PearlCohen .com Arch-USPTO @ PearlCohen. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SHLOMO COHEN GANOR Appeal 2016-0026911 Application 13/349,6482 Technology Center 3600 Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and ALYSSA A. FINAMORE, Administrative Patent Judges. FINAMORE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 1—25. We have jurisdiction under § 6(b). We AFFIRM. 1 Our Decision references Appellant’s Specification (“Spec.,” filed Jan. 13, 2012), Appeal Brief (“Appeal Br.,” filed July 27, 2015), and Reply Brief (“Reply Br.,” filed Jan. 7, 2016), as well as the Examiner’s Final Office Action (“Final Act.,” mailed Feb. 13, 2015) and Answer (“Ans.,” mailed Nov. 9, 2015). 2 Appellant identifies NICE Systems Ltd. as the real party in interest. Appeal Br. 1. Appeal 2016-002691 Application 13/349,648 SUBJECT MATTER ON APPEAL The invention “relate[s] to correlating transaction events over a transaction lifecycle.” Spec. 11. Claims 1,11, and 21—23 are the independent claims on appeal. Independent claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method, implemented using one or more processors and associated memories, for correlating transaction events, the method comprising: receiving transaction events identifying actions executed at a plurality of different types of source systems; for each transaction event, determining by a processor whether or not the transaction event is associated with the same payment transaction for a single monetary transfer as a previous transaction event using an equivalence relationship, wherein the equivalence relationship defines events as being associated with the same payment transaction when each of the events has a subset of parameters that match exactly and a different subset of parameters that match approximately and not exactly differing within a predetermined range; correlating transaction events determined to be associated with the same payment transaction by grouping the transaction events together to form the same payment transaction; and outputting a list of the correlated transaction events over a lifecycle of the same payment transaction. REFERENCES The Examiner relies on the following prior art in rejecting the claims on appeal: Palaghita et al. (“Palaghita”) US 2004/0064401 A1 Apr. 1, 2004 Greene et al. (“Greene”) US 2007/0038568 Al Feb. 15, 2007 2 Appeal 2016-002691 Application 13/349,648 REJECTIONS The Examiner rejects the claims on appeal as follows: claims 1—25 under 35 U.S.C. § 101 as non-statutory subject matter; and claims 1—25 under 35 U.S.C. § 103(a) as unpatentable over Palaghita and Greene.3 ANALYSIS Non-Statutory Subject Matter 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 implicit exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014). To “distinguish[] patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts,” the Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), which, in the first step, considers whether a claim is directed to a patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the second step, whether the elements the claim, individually and as an ordered combination, recite an 3 Although the heading of the rejection under 35 U.S.C. § 103(a) references only claims 1—22, the body of rejection discusses of claims 1—25. Final Act. 5—16. We consider the rejection to include claims 1—25, which is consistent with Appellant’s understanding of the claims subject to this rejection (Appeal Br. 5). 3 Appeal 2016-002691 Application 13/349,648 inventive concept—an element or combination of elements sufficient to ensure the claim amounts to significantly more than the abstract idea and transform the nature of the claim into a patent-eligible concept. Alice, 134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1294, 1296—98). In rejecting claims 1—25 under 35 U.S.C. § 101 as non-statutory subject matter, the Examiner applies this two-step analysis. Final Act. 4. Under the first step, the Examiner finds the claims are directed to the abstract idea of “correlating transaction events associated with the same payment transaction.” Id. at 2, 4. Under the second step, the Examiner finds the claims do not recite additional elements amounting to significantly more than the abstract idea because the additional elements are no more than mere instructions to implement the idea on a computer via generic computer structures performing generic computer functions that are well-understood, routine, and conventional activities. Id. at 4. Appellant argues the claims do not recite an abstract idea pursuant to the first step of the patent-eligibility analysis. In particular, Appellant contends that independent claim 1 recites a series of steps, including determining an equivalence “when each of the events has a subset of parameters that match exactly and a different subset of parameters that match approximately and not exactly differing within a predetermined range,” that is not a building block of the modem economy, a fundamental tmth, or abstract. Appeal Br. 7—8. Appellant also contends that “correlating transaction events associated with the same payment transaction” is not a fundamental economic practice nor a method of organizing human activity. Id. at 5—6. Appellant’s arguments are not persuasive of error. 4 Appeal 2016-002691 Application 13/349,648 In determining that the claims are directed to an abstract idea, the Examiner finds the claimed invention includes a series of steps that could be performed by a human using a pen and paper. Ans. 15. As Appellant acknowledges, the Federal Circuit has held that if a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372—73 (Fed. Cir. 2011); Reply Br. 6. The Federal Circuit also has held that a mental process remains unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource, 654 F.3d at 1375. Although the present claims recite that certain steps are performed by a computer, the steps could be performed via human thought processes. For example, a human could ascertain mentally whether a transaction event is associated with the same payment transaction for a single monetary transfer as a previous transaction event by determining whether each of the events has a subset of parameters that match exactly and whether a different subset of parameters that match approximately and not exactly differing within a predetermined range. Given that the claimed invention is simply the automation of a series of mental steps, Appellant does not apprise us of error in the Examiner’s finding that the claims are directed to an abstract idea. Appellant also argues that the claims are not directed to an abstract idea because they are similar to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) and Messaging Gateway Solutions v. Amdocs, Inc., 2015 WF 1744343 (D. Del. 2015). Reply Br. 7. More specifically, Appellant contends that, like the claimed inventions in DDR Holdings and Messaging Gateway Solutions, the present invention 5 Appeal 2016-002691 Application 13/349,648 addresses an issue unique to computer technology. Id. Namely, the claimed invention correlates transaction data generated from actions executed at a plurality of different types of source systems, which requires an application of a more robust correlation than merely matching data fields exactly. Id. Appellant’s argument is not persuasive. Correlating data from a plurality of different types of sources is not a computer problem; it is an analytics problem. Furthermore, making correlations, including robust correlations, is not an issue unique to computers. Even if the claims recite a robust correlation scheme, the claimed steps are nevertheless a series of mental steps. As such, we fail to see how the claimed invention is something other than the generic computer implementation of mental steps for correlating information, which is insufficient for patent-eligibility. CyberSource, 654 F.3d at 1375. Appellant further argues that the claims recite an inventive concept pursuant to the second step of the patent-eligibility analysis because they recite a non-intuitive equivalence relationship. Appeal Br. 6, 8—9. More particularly, Appellant asserts the additional elements relating to the equivalence relationship are not mere instructions to perform the abstract idea on a computer, but instead provide the very substance of the claims by explaining how the correlation is accomplished, i.e., via the claimed equivalence relationship that defines events as being associated with the same payment transaction when the event has a subset of parameters that match exactly and a different subset of parameters that match approximately. Id. at 9. Appellant’s arguments do not apprise us of error. Here, the claims recite a series of steps for correlating transaction events, including the step of using an equivalence relationship defining 6 Appeal 2016-002691 Application 13/349,648 events as being associated with the same payment transaction when the event has a subset of parameters that match exactly and a different subset of parameters that match approximately. These steps are instructions. The claims also recite that a processor is used to perform the claimed equivalence relationship. The claims, therefore, recite instructions to be performed on a computer. As such, the relevant question under the second step is whether the claims recite more than instructions to perform the claimed steps on a generic computer performing routine and conventional computer functions. As the Examiner correctly finds, they do not. Final Act. 4. For instance, Appellant’s Specification explains that “[p]rocessor(s) 118,108,114 and 132 may include, for example, a central processing unit (CPU), a digital signal processor (DSP), a microprocessor, a controller, a chip, a microchip, an integrated circuit (IC), or any other suitable multi-purpose or specific processor or controller.” Spec. 124. Furthermore, considering the claim elements separately, the function performed by the processor at each step is conventional. In other words, each step is implemented via routine computer functions such as receiving and processing data. Considered as an ordered combination, the claim elements add nothing that is not already present when the steps are considered separately. The elements do not purport to improve the functioning of the computer itself or effect an improvement in any other technology or technical field. Accordingly, Appellant does not apprise us of error in the Examiner’s finding that the claims are mere instructions to implement the abstract idea of “correlating transaction events associated with the same payment transaction” on a 7 Appeal 2016-002691 Application 13/349,648 generic computer, which is not an inventive concept under the second step. Alice, 134 S. Ct. at 2360 (citing Mayo, 132 S. Ct. at 1297—98). Furthermore, to the extent Appellant relies on the alleged novelty and nonobviousness of the claimed equivalence relationship as the basis for the equivalence relationship being an inventive concept, the determination of an inventive concept is not an evaluation of novelty or nonobviousness. Notwithstanding that‘“the § 101 patent-eligibility inquiry and, say, the § 102 novelty inquiry might sometimes overlap’ ... 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) (quoting Mayo, 132 S. Ct. at 1304). The question in the second step of the patent-eligibility analysis is not whether a claimed element is novel, but rather, as set forth above, whether the implementation of the abstract idea invol ves “more than perfonnan.ce of ‘well-understood, routine, [and] conventional activities previously known to the industry.’” Content Extraction & Transmission LLCv. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359). Appellant does not explain, and we fail to see, how the implementation of the recited steps, including the step of using the claimed equivalence relationship, requires something apart from generic computing components performing routine and conventional computer functions. With specific reference to independent claim 21, Appellant contends that “determining ... for each incoming transaction event a corresponding identity key by using said equivalence relation identity value function” is significantly more than the abstract idea. Appeal Br. 9—10. We find this argument unpersuasive for the essentially the same reasons we find 8 Appeal 2016-002691 Application 13/349,648 unpersuasive Appellant’s argument that the claimed equivalence relationship is an inventive step. In view of the foregoing, Appellant does not apprise us of error in the Examiner’s determination that the claims are directed to patent-ineligible subject matter. Accordingly, we sustain the rejection of claims 1—25 under 35U.S.C. § 101. Obviousness We are persuaded by Appellant’s argument that Palaghita does not disclose “for each transaction event, determining by a processor whether or not the transaction event is associated with the same payment transaction for a single monetary transfer as a previous transaction event using an equivalence relationship,” as recited in independent claim 1. Appeal Br. 10- 12. In rejecting independent claim 1, the Examiner relies on Palaghita for teaching this limitation. Final Act. 5—6. In particular, the Examiner finds: Palaghita teaches determining whether different documents are associated with the same loan or transaction for a single monetary transfer by associating different documents based on their relation to a business entity’s line of business. The line of business in Palaghita suggests a single monetary transfer that may include one or more transaction events. Ans. 16 (citation omitted). Even if we agree with the Examiner that Palaghita’s disclosure of associating one or documents with an entity’s line of business teaches determining whether or not a transaction event is associated with the same payment transaction for a single monetary transfer, Palaghita does not disclose using an equivalence relationship to make this determination, as 9 Appeal 2016-002691 Application 13/349,648 recited in the disputed limitation. Palaghita discloses organizing documents into various categories, including line of business. Palaghita 32—33. Palaghita further discloses that each category may be associated with one or more variables for detecting fraud {id. 133), and that these variables include mismatched or inconsistent information {id. 130). Palaghita therefore teaches using different variables, including mismatched or inconsistent information, i.e., an equivalence relationship, to detect fraud for a particular category, but Palaghita does not teach using the equivalence relationship to organize the documents into categories, i.e., determine whether or not the transaction event is associated with the same payment transaction for a single monetary transfer. As such, the Examiner has not established that Palaghita discloses the disputed limitation of independent claim 1. In view of the foregoing, we do not sustain the Examiner’s rejection under 35 U.S.C. § 103(a) of independent claim 1 and claims 2—10 and 24 depending therefrom. Each of independent claims 11 and 21—23 includes a limitation similar to the limitation of independent claim 1 discussed above, and the Examiner’s rejection of independent claims 11 and 21—23 suffers from the same deficiency as the Examiner’s rejection of independent claim 1. Final Act. 9, 13—15. We, therefore, also do not sustain the Examiner’s rejection of independent claims 11 and 21—23 and claims 12—20 and 25 depending therefrom. DECISION The Examiner’s decision to reject claims 1—25 under 35 U.S.C. § 101 is affirmed. 10 Appeal 2016-002691 Application 13/349,648 The Examiner’s decision to reject claims 1—25 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). 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 11 Copy with citationCopy as parenthetical citation