Ex Parte Gupta et al

Patent Trial and Appeal Board

Dec 20, 2017

12257453 (P.T.A.B. Dec. 20, 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.
12/257,453 10/24/2008 Sandeep Gupta 096923-0368171 7078
132265 7590
Kilpatrick Townsend & Stockton LLP/Equifax, Inc.
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309-4528
EXAMINER
KAZIMI, HANI M
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):
ipefiling@kilpatricktownsend.com
KT S Docketing2 @ kilpatrick. foundationip .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SANDEEP GUPTA, CHRISTIAN HALL, JAMES REID,
SHEN LU, DENNIS HORTON, LEE GRICE, THRESA DIXON,
SCOTT GARTEN, and SUDHAKAR REDDY
Appeal 2016-006274
Application 12/257,453
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 12—28. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b). Appellants appeared for hearing on
October 31, 2017.
We AFFIRM.
Appeal 2016-006274
Application 12/257,453
BACKGROUND
Appellants’ invention is directed to systems and methods of
automating tasks related to processing applications such as credit related
applications and related decision making. Spec. 12.
Claim 12 is illustrative:
12. A method for testing a decision rule for automated
credit request decisioning, comprising:
configuring, by a server device, a user interface to
allow a user to define the decision rule in a near-natural
language;
receiving test data comprising archived information
configured to be used to avoid affecting a production
environment that includes production data;
applying, by the server device, the decision rule in the
near-natural language to at least a portion of the archived
information of the test data to generate at least one test
decision, the server device comprising an automated decision
and application processing engine stored on a computer-
readable memory, the automated decision and application
processing engine being executable to cause the server
device to apply the decision rule in the near-natural language
to at least the portion of the archived information of the test
data to generate the at least one test decision;
displaying the at least one test decision through the user
interface;
receiving information associated with an applicant
through the user interface;
applying, by the server device, the decision rule in the
near-natural language to production data associated with the
applicant to generate a decision for the applicant, the
production data being from at least one data source; and
displaying the decision for the applicant through the
user interface.
Appellants appeal the following rejection:
Claims 12—28 under 35 U.S.C. § 101 as being directed to patent-ineligible
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subject matter.
PRINCIPLES OF LAW
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: “[l]aws of nature, natural phenomena, and abstract ideas” are not
patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347,
2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—95 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
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63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Benson, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
ANALYSIS
The Examiner found that independent claim 12 is directed to the
abstract idea of processing credit related applications and related decision
making. The concept of processing credit related applications and related
decision making can be performed by using a “processor” and is similar to
the kind of “organizing human activity” at issue in Alice Corp. Although
the claims are not drawn to the same subject matter, the abstract idea of
processing credit related applications and related decision making is similar
to the abstract idea of managing risk (hedging) during consumer transactions
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Application 12/257,453
(Bilski), mitigating settlement risk in financial transactions (Alice Corps.),
processing loan information (Dealertrack), comparing new and stored
information and using rules to identify options (SmartGene). Claim 12
therefore is directed to an abstract idea. Ans. 6—7. The Examiner found that
the additional elements or combination of elements other than the abstract
idea amount to no more than mere instructions to implement the idea on a
computer and/or a 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. The
Examiner concludes that viewed as a whole these additional claim elements
do not provide meaningful limitations to transform the abstract idea into a
patent eligible application of the abstract idea such that the claim amounts to
significantly more than the abstract idea itself. Fin. Act. 2—3. We agree.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the rejection is conclusory because the Examiner
failed to make a prima facie case. Specifically, Appellants argue that the
Examiner failed to explain why claim 12 is directed to an abstract idea and
why the elements of claim 12 in addition to the abstract idea do not amount
to significantly more than the abstract idea.
The Patent and Trademark Office (“PTO”) satisfies its initial burden
of production by “adequately explaining] the shortcomings it perceives so
that the applicant is properly notified and able to respond.” Hyatt v. Dudas,
492 F.3d 1365, 1370 (Fed. Cir. 2007). In other words, the PTO carries its
procedural burden when its rejection satisfies 35 U.S.C. § 132, in
“notify[ing] the applicant. . . [by] stating the reasons for [its] rejection, or
objection or requirement, together with such information and references as
may be useful in judging of the propriety of continuing the prosecution of
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Application 12/257,453
[the] application.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(quoting 35 U.S.C. § 132). That section “is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990).
The Examiner has met this burden in the Final Action
was “directed to the abstract idea of testing a decision rule for
automated credit request decisioning [by] configuring] a server device, a
user interface to allow a user to define [a] decision rule and applying it in the
near-natural language to production data to generate and display a decision.”
Fin. Act. 2 (emphasis omitted). The Examiner further refined this
explanation of the idea of claim 12 in the Answer which stated
the abstract idea is related to decision making which can be performed using
a processor. The Examiner also identified several cases which included
claims similar to claim 12 in which the claims were found patent ineligible.
Ans. 7. We also note that as in Alice Corp. Pty. Ltd., we need not labor to
delimit the precise contours of the “abstract ideas” category in this case. It is
enough to recognize that there is no meaningful distinction in the level of
abstraction between the concept of an intermediated settlement in Alice and
the concept of processing credit applications using a processor. Both are
squarely within the realm of “abstract ideas” as the Court has used that term.
In addition, the Examiner clearly stated that the steps of the claims are well-
understood, routine, and conventional activities performed by generic
computers.
That the claims do not preempt all forms of the abstraction or may be
limited to financial account cards, does not make them any less abstract. See
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OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—61 (Fed. Cir.
2015).
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the subject matter of claim 12 is novel and
nonobviousness and thus amounts to significantly more than any abstract
idea. 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 (quoting Mayo, 132 S. Ct at 1294). 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 of error on the part of the Examiner by
Appellants’ argument that claim 12 is patent eligible in accordance with the
decision in T. Rowe Price Inv. Servs., Inc. v. Secure Axcess, LLC,
CBM2015-00027 (PTAB June 13, 2016) because the T. Rowe Price decision
is nonprecedential and thus is not binding on this panel.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims effect an improvement to a technical
field analogous to that in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014), where the Court noted that a claim may amount
to more than any abstract idea recited in the claims when it addresses a
business challenge, such as “retaining website visitors,” where that challenge
is particular to a specific technological environment, such as the Internet.
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Appellants contend that the claim addresses a technical challenge in the
automation of decision-making. App. Br. 17.
In DDR, the court stated that “the [] patent’s claims address the
problem of retaining website visitors that, if adhering to the routine,
conventional functioning of Internet hyperl i nk protocol, would be instantly
transported away from a host's website after ‘clicking’ on an advertisement
and activating a hyperlink.” DDR Holdings, 773 F.3d at 1257. This was
done in the claim by serving a composite page with content based on the link
that was activated to serve the page.
In contrast, claim 12 performs a process that tests a decision rule by
configuring a user interface, receiving data, analyzing data, and displaying
data. There is no specific asserted improvement in computer capabilities;
rather, it is on a process for which computers are involved merely as a tool.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir.
2016). Appellants have not established that there is any improvement to the
server device or the user interface, and as such the subject matter of claim 12
is not analogous to the subject matter of the claims in DDR.
In viewr of the foregoing, we will sustain the Examiner’s rejection as it
is directed to claim 12. We will also sustain the rejection as it is directed to
claims 19 and 24 because the Appellants advance similar arguments
regarding the patent eligibility of these claims as was advanced in regard to
the rejection of claim 12. We will also sustain the rejection as it is directed
to the remaining claims because the Appellants have not advanced separate
arguments directed to their eligibility.
DECISION
The decision of the Examiner is affirmed.
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TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).
AFFIRMED.
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