Ex Parte Grindrod

Patent Trial and Appeal Board

Jan 30, 2018

13215047 (P.T.A.B. Jan. 30, 2018)

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.
13/215,047 08/22/2011 Peter Grindrod 20160.0004.APUS00 1456
28694 7590
POLSINELLI PC
1401 Eye Street N.W., Suite 800
WASHINGTON, DC 20005
EXAMINER
PUTTAIAH, ASHA
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
TPavelko@Polsinelli.com
DBowman@Polsinelli.com
DC -IPdocketing @polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER GRINDROD
Appeal 2016-004853
Application 13/215,047
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claim 1, which is the only claim pending. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER a NEW GROUND OF REJECTION
pursuant to our authority under 37 C.F.R. § 41.50(b).
1 Throughout this opinion, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed Oct. 10, 2012), Reply Brief (“Reply Br.,” filed Jan. 14,
2013), and Specification (“Spec.,” filed Aug. 22, 2011), and to the
Examiner’s Answer (“Ans.,” mailed Nov. 14, 2012) and Final Office Action
(“Final Act.,” mailed May 10, 2012).
2 According to the Appellant, the real party in interest is Cignifi, Inc.
Appeal Br. 3.
Appeal 2016-004853
Application 13/215,047
STATEMENT OF THE CASE
The Appellant’s invention “relates to inferring user characteristics
from mobile phone usage” and, more particularly, to “inferring
creditworthiness from mobile phone usage.” Spec. 12.
Claim 1 is the only claim on appeal and is reproduced below (with
added bracketing for reference):
1. A computer implemented method for inferring
creditworthiness of a mobile phone user, the method comprising:
[(a)] receiving, by a computer, call level data for each of a
first plurality of mobile phone users, with the call level data being
for a period of common duration;
[(b)] deriving, by the computer, attributes from the
received call level data;
[(c)] defining, by the computer, an attribute space based
on the derived attributes with each mobile phone user being
represented by an attribute vector;
[(d)] partitioning, by the computer, the attribute space into
clusters of attribute vectors;
[(e)] receiving, by the computer, a measure of
creditworthiness for each of a second plurality of mobile phone
users with the second plurality of mobile phone users being a
subset of the first plurality of mobile phone users;
[(f)] mapping, by the computer, each received measure of
creditworthiness to at least one cluster corresponding to the
mobile phone user from the subset;
[(g)] characterizing, by the computer, the creditworthiness
of each cluster as a function of the creditworthiness mapped
thereto; and
[(h)] inferring, by the computer, the creditworthiness of a
given mobile phone user in a given cluster as a function of the
creditworthiness characterizing the given cluster.
Appeal Br. 24 (Claims App.).
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Application 13/215,047
REJECTIONS
Claim 1 stands rejected under 35 U.S.C. § 112, first paragraph, for
failing to comply with the written description requirement. Final Act. 4.
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Haggerty (US 2006/0242048 Al, pub. Oct. 26, 2006) and
Johnson (US 2008/0310608 Al, pub. Dec. 18, 2008). Id. at 5.
ANALYSIS
§ 112 — Indefiniteness
The Examiner rejects claim 1 because the Specification does not
describe the steps performed “by the computer” in such a way as to
reasonably convey to one skilled in the relevant art that the inventor, at the
time the application was filed, had possession of the claimed invention being
performed by a computer. Final Act. 4. The Examiner finds that “the
written description does not disclose which steps are particularly performed
by a computer and as such, Applicant’s amendment presents subject matter
which was not described in the specification.” Id.
Conversely, the Appellant contends that “[o]ne of ordinary skill in the
art, at the time the application was filed, would certainly recognize that the
inventors had possession of the claimed invention.” Appeal Br. 6. The
Appellant cites to the original claims and the Specification, paragraphs 24,
56, and 57, as support for “defm[ing] that the technology can be a computer
program product that is acted upon by a computer” such that one of ordinary
skill would recognize the Appellant had possession of the claimed computer-
implemented method at the time of filing. Id. at 6—7. We agree.
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The Specification describes throughout that “technology” can be used
to perform such functions as receiving, calculating, determining, estimating,
and summarizing data, deriving attributes and risk measures, partitioning
space, and inferring creditworthiness. See Spec. Tflf 12, 13, 16, 19, 20, 23,
and 24. The Specification further describes that the “technology” can take
the form of “hardware, software or both hardware and software elements”
(id. 1 56), or “a computer program product comprising program modules
accessible from computer-usable or computer-readable medium storing
program code for use by or in connection with one or more computers,
processors, or instruction execution system” (id. 157). Figure 7 of the
Specification depicts a data processing system with a processor, memory
elements, input/output devices, and network adapters. See also id. 1 58.
Thus, we conclude the Specification reasonably conveys to one of ordinary
skill in the art that the Appellant had possession of the steps being performed
by a computer at the time the application was filed.
Therefore, we do not sustain the Examiner’s rejection of claim 1
under 35U.S.C. § 112, first paragraph.
§103 — Obviousness
The Appellant contends that the Examiner’s rejection of claim 1 is in
error because, in pertinent part, the prior art does not teach limitation (e) of
receiving a measure of creditworthiness for each of a second plurality of
users as a subset of a first plurality of users. See Appeal Br. 16—17, 22. We
agree.
The Examiner finds that “Haggerty discloses a method of modeling
that uses various data sources to provide outputs that describe consumer
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spending capability” and that Johnson teaches that the “particular type of
data [claimed] is old and well known to be collected in the art.” Ans. 17.
The Examiner cites to Haggerty for teaching the “functional steps” of
claim 1 of receiving, deriving, defining, portioning, mapping, characterizing,
and inferring data, and to Johnson for teaching “the type of data and to
whom the data pertains.” Id. at 21. With regards to limitation (e), the
Examiner finds that Haggerty teaches receiving data, including specific
types of customers, to identify and evaluate the ability of a customer to pay
for services. See id. at 35—36; see also Final Act. 8, 11. The Examiner
further finds that Haggerty teaches receiving a measure, i.e., a qualitative or
quantitative indication or tendency, of the customer’s ability to pay, i.e.,
creditworthiness. Ans. 41 42. The Examiner finds that Johnson teaches
that that the data pertain to a “second plurality of mobile phone users with
the second plurality of mobile phone users. ” Final Act. 11.
Even assuming arguendo the Examiner’s findings to be correct, the
Examiner has not adequately shown, such that one or ordinary skill in the art
would understand, that Haggerty and Johnson, alone or in combination,
teach receiving data for a subset of a first set of data, as required by
limitation (e). To the extent the Examiner considers Haggerty’s consumers
as the first data set and the consumers in sub-categories, i.e., specific types
of customers, as the subset (see Final Act. 8; Ans. 36 (citing Haggerty
1140)), the Examiner does not adequately show where or how Haggerty
teaches receiving a measure of spending ability for the subset of customers.
Haggerty discloses creating a subset of consumers based on a measure and
generating, deriving, validating, and refining models for the subset of
consumers (Haggerty || 46-48), but we do not see, and the Examiner has
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not shown, that Haggerty discloses receiving a measure of data for the
created subset. Further, although Johnson discloses receiving data for a
particular user (Johnson | 54), the Examiner does not adequately explain
how one of ordinary skill in the art would combine Johnson with Haggerty
such that Johnson teaches receiving data for a subset comprising a plurality
of particular customers or for the subset of Haggerty’s set of specific type of
customers. See Appeal Br. 22.
For the above reason, we do not sustain the rejection under 35 U.S.C.
§ 103 of claim 1.
NEW GROUND OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), we reject
claim 1 under 35 U.S.C. § 101 as being directed to non-statutory subject
matter. We find the claim ineligible for patent protection because it is
directed to a non-statutory abstract idea.
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 78—79 (2012), “for distinguishing patents
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Application 13/215,047
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
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. (citing
Mayo, 566 U.S. at 79) (emphasis added). If so, the second step is to
consider the elements of the claims “individually and ‘as an ordered
combination’” to determine whether the additional elements “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78).
In other words, the second step is to “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.’” Id. (alteration in original) (quoting
Mayo, 566 U.S. at 72—73). 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, 566 U.S. at 71. 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, i.e., “whether the focus of the claims is on [a] specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an ‘abstract idea’ for which computers are invoked merely as a
tool.” See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335—36
(Fed. Cir. 2016).
Under the first step of the analysis, the preamble of claim 1 provides a
“method for inferring creditworthiness of a mobile phone user.” Appeal
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Br. 24 (Claims App.). The claim achieves this by receiving, deriving,
defining, partitioning, mapping, and characterizing data. Id. The
Specification provides that the invention relates to “inferring
creditworthiness from mobile phone usage.” Spec. 12. In that context, the
claim is directed to receiving and processing data to infer creditworthiness of
a user, an idea of itself and method for organizing human activity — an
abstract idea. In this manner, the claim is similar to those found to be
patent-ineligible in Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324 (Fed. Cir. 2016) (“collection of information to generate
a ‘credit grading’ and to facilitate anonymous loan shopping”); Elec. Power
Grp. LLCv. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)
(collecting, analyzing, and displaying of available information in a particular
field), and Alice, 134 S. Ct. at 2356—57 (use of a third party to mitigate
settlement risk). Here, the claim involves nothing more than generically
receiving and processing data to infer data of creditworthiness, without any
particular inventive technology, i.e., an abstract idea. See Elec. Power Grp.,
830 F.3d at 1354.
Under the second step of the analysis, we find claim 1 does not recite
an inventive concept. The elements of the claim, considered alone and as an
ordered combination, do not amount to significantly more to transform the
abstract idea of receiving and processing data to infer creditworthiness into a
patent-eligible invention. Any general purpose computer available at the
time the application was filed would have been able to perform the functions
of claim 1 of receiving, deriving, defining, partitioning, mapping,
characterizing, and inferring data. The Specification supports this view in
describing a data processing system with generic components of a processor,
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memory, and input/output devices to implement the method. See Spec.
56—58, Fig, 7. The introduction of a computer to implement an abstract
idea is not a patentable application of the abstract idea. Alice, 134 S. Ct.
at 2357—58. The computer implementation here is purely conventional and
performs basic functions. See id. at 2359-60. The claims do not purport to
improve the functioning of the computer itself, nor do they effect an
improvement in any other technology or technical field. See id. at 2359.
Thus, under the two-part analysis, we conclude that claim 1 covers
claimed subject matter that is judicially-excepted from patent eligibility
under § 101. Therefore, we enter a new ground of rejection of claim 1 under
35U.S.C. § 101.
DECISION
The Examiner’s rejection of claim 1 under 35U.S.C. § 112, first
paragraph, is REVERSED.
The Examiner’s rejection of claim 1 under 35 U.S.C. § 103(a) is
REVERSED.
A NEW GROUND OF REJECTION has been entered for claim 1
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
In addition to affirming the Examiner’s rejection of one or more
claims, this decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the Examiner, in which event the proceeding will be
remanded to the Examiner. . . .
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. . . .
REVERSED: 37 C.F.R, $ 41.50(b)
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