Ex Parte HOWE

Patent Trial and Appeal Board

May 31, 2018

13938703 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/938,703 07/10/2013
21839 7590 06/04/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Justin X. HOWE
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.
007 6412-000151 3923
EXAMINER
DIVELBISS, MATTHEW H
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN X. HOWE
Appeal2017-000306 1
Application 13/938,703
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 2, 5-9, 11-14, 17-21, and 23-26, which are all the
claims pending in the application. Appellant has canceled claims 3, 4, 10,
15, 16, and 22. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is MasterCard
International Inc. App. Br. 2.
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Application 13/938,703
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention "relate[] to
the providing of characteristic payments data, specifically the providing of a
data file of a geographic information system (GIS) file format including
characteristic data for a plurality of payment transactions." Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphasis added to contested limitation in§ 103 prior art rejection):
1. A computer-implemented method for providing
characteristic payments data, comprising:
electronically receiving, by a receiving device of a
processing server, data from a financial payment network;
storing, in a transaction database of the processing server,
a plurality of transaction data entries based on the data received
from the financial payment network, each of the plurality of
transaction data entries including data related to a financial
transaction including at least transaction data, consumer
information, merchant information, and a geographic location,
wherein the consumer information included in each of the
stored plurality of transaction data is not personally
identifiable;
electronically receiving, by the receiving device of the
processing server, a request for payment transaction
characteristics from an external requesting entity, wherein the
request for payment transaction characteristics includes at least
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
Jan. 13, 2016); Reply Brief ("Reply Br.," filed Sept. 15, 2016); Examiner's
Answer ("Ans.," mailed July 15, 2016); Final Office Action ("Final Act.,"
mailed Nov. 13, 2015); and the original Specification ("Spec.," filed
July 10, 2013).
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one desired payment transaction characteristic metric and a
desired geographic area;
in response to the request for payment transaction
characteristics received from the external requesting entity,
identifying, by a processing device of the processing server, a
subset of the plurality of transaction data entries stored in the
transaction database, wherein the geographic location included
in each transaction data entry in the identified subset matches
the desired geographic area included in the request for payment
transaction characteristics received from the external requesting
entity;
calculating, by the processing device of the processing
server, the at least one desired payment transaction
characteristic metric based on an analysis of at least one of: the
transaction data, consumer information, and merchant
information of each transaction data entry of the identified
subset of the plurality of stored transaction data entries;
electronically generating, by the processing device of the
processing server, a data file in a geographic information
system (GIS) file format that illustrates the calculated at least
one payment transaction characteristic metric as applied to the
desired geographic area included in the request for payment
transaction characteristics received from the external requesting
entity; and
electronically transmitting, by a transmitting device of
the processing server, an output file including the generated
data file to the external requesting entity, wherein the
transmission of the output file causes a display of the external
requesting entity to display the generated data file.
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Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Necsoiu et al. ("Necsoiu") US 2004/0158584 Al Aug. 12, 2004
Tavares et al. ("Tavares") US 2012/0084117 Al Apr. 5, 2012
Villars et al. ("Villars") US 2014/0025483 Al Jan.23,2014
Zennaro et al. ("Zennaro") US 8,868,522 B 1 Oct. 21, 2014
Rejections on Appeal
RI. Claims 1, 2, 5-9, 11-14, 17-21, and 23-26 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 3.
R2. Claims 1, 2, 5-9, 11-14, 17-21, 23, and24 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over the combination of Tavares,
Necsoiu, and Zennaro. Final Act. 8.
R3. Claims 25 and 26 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over the combination of Tavares, Necsoiu, Zennaro, and
Villars. Final Act. 3 8.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 15-35), we decide the
appeal of patent-ineligible subject matter Rejection RI of claims 1, 2, 5-9,
11-14, 17-21, and 23-26 on the basis of representative claim 1; and we also
decide the appeal of obviousness Rejection R2 of claims 1, 2, 5-9, 11-14,
17-21, 23, and 24 on the basis of representative claim 1.
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Remaining claims 25 and 26 in Rejection R3, not argued separately or
substantively, stand or fall with the respective independent claims from
which they depend. 3
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claims 1, 2,
5-9, 11-14, 17-21, and 23-26 and, unless otherwise noted, we incorporate
by reference herein and adopt as our own: (1) the findings and reasons set
forth by the Examiner in the action from which this appeal is taken, and
(2) the reasons and rebuttals set forth in the Examiner's Answer in response
to Appellant's arguments. We highlight and address specific findings and
arguments regarding claim 1 for emphasis as follows.
1. § 101 Rejection RI of Claims 1, 2, 5-9, 11-14, 17-21, and 23-26
Issue 1
Appellant argues (App. Br. 15-35; Reply Br. 4--17) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
3 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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ineligible subject matter is in error. These contentions present us with the
following issue:
Did the Examiner err in concluding claim 1 is directed to an abstract
idea without significantly more, and is thus patent-ineligible under 35 U.S.C.
§ 101?
Analysis
Alice Framework
Section 101 provides that anyone who "invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof' may obtain a patent. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, we "examine 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
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2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea"' for the purposes of step one.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "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. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
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inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
Our reviewing court has held claims ineligible as being directed to an
abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "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. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Appellant generally contends, "the alleged abstract idea is not a
properly identified 'abstract idea' .... [T]he July 2015 Update stresses that a
claimed concept should not be identified as an abstract idea 'unless it is
similar to at least one concept that the courts have identified as an abstract
idea."' App. Br. 17.
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Id.
Along these lines, Appellant further argues:
[T]he body of case law precedent set by the Supreme Court and
the Court of Appeals for the Federal Circuit does not identify an
"abstract idea" that is similar to that of the alleged "providing of
characteristic payments data, specifically the providing of a
data file of a geographic information system (GIS) file format
including characteristic data for a plurality of payment
transactions."
In addition, Appellant contends:
Contrary to SmartGene,[4J Appellant's independent claim
1 recites several specifically configured computer components
and generates a very specific data file, in a very specific file
format (GIS file format), that illustrates (e.g., depicts)
calculated metrics, while maintaining consumer privacy, and
subsequently transmits an output file (including the generated
data file in GIS format) for display on a computing device. A
GIS file format, as understood in the art, is a standard of
encoding geographic information into a file (e.g., geocoding)
and, thus, requires the use of specific GIS software to produce
such a file. GIS software, as that implemented by independent
claim 1 in order to generate a GIS file, transforms, manipulates,
analyzes, and produces information related to the surface of the
Earth (see, the attached documents discussing GIS files and
associated required software), and in the present claims,
specific to a desired geographic area. Thus, it is clear that the
method of independent claim 1 transforms data from one form
into another form (i.e., into anonymized, privacy compliant,
visual displays of characteristic metrics). Such a transformation
4 Appellant alleges the Examiner "makes reference to SmartGene, Inc. v.
Advanced Biological Labs., SA, No. 2013-1186 (Fed. Cir. Jan. 24, 2014)
(non-precedential) and Cybeifone Systems v. CNN Interactive Group, No.
12-1673 (Fed. Cir. 2014) (non-precedential)." App. Br. 17. We find no such
reference by the Examiner to these non-precedential cases in the Final
Action or in the Answer.
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of data and transmission of an output file could not be
performed without a computer, e.g., in a person's head, as in
SmartGene, and is, thus, not abstract, as alleged.
App. Br. 19.
In response, the Examiner states he "followed the two prong test set
forth in the Alice decision and the Preliminary and Interim guidance. Each
of the steps presented in the claims merely recites a determination or
calculation that would constitute an abstract idea of itself. (See July 2015
update)," and the fact that the claims perform steps using a computer does
not make the underlying idea any less abstract. Ans. 4. This is consistent
with the Final Action, in which the Examiner concluded:
Regarding claim 1, the claim is directed to the providing of
characteristic payments data, specifically the providing of a
data file of a geographic information system (GIS) file format
including characteristic data for a plurality of payment
transactions which is analogous to comparing new and stored
information and using rules to identify options ((79 FR 74618,
74622) see Section 1.2 bullet point 6) and is also analogous to
using categories to organize, store and transmit information.
Final Act. 3. The Examiner further concluded the claimed invention "is
considered to be an abstract idea inasmuch as such activity is considered a
method of organizing human activity or an idea of itself with all or a
majority of the [ claimed limitations] recited at a high level of generality and
merely acted upon by a user." Final Act. 4. 5
5 The Examiner notes, "[t]he interim guidance provides examples of
instances where courts have held certain ideas to be abstract. It was through
these examples that the examiner determined, by analogy to the provided
examples, that the claims in the present application contain an abstract idea."
Ans. 5.
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Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d at
1257 ( citation omitted).
Turning to the claimed invention, claim 1 recites: "A computer-
implemented method for providing characteristic payments data." Claim 1
(preamble).
Method claim 1 's limitations also require the steps of:
(a) "receiving ... data";
(b) "storing ... data entries ... including data related to a
financial transaction including at least transaction data,
consumer information, merchant information, and a geographic
location, wherein the consumer information included in each of
the stored plurality of transaction data is not personally
identifiable;"
( c) "receiving ... a request for payment transaction
characteristics ... wherein the request for payment transaction
characteristics includes at least one desired payment transaction
characteristic metric and a desired geographic area;"
( d) "in response to the request ... identifying ... a subset
of the plurality of transaction data entries ... wherein the
geographic location ... matches the desired geographic area
included in the request. .. ; "
( e) "calculating ... the at least one desired payment
transaction characteristic metric based on an analysis of at least
one of: the transaction data, consumer information, and
merchant information of each transaction data entry of the
identified subset of the plurality of stored transaction data
entries·"
'
(f) "generating ... a data file in a geographic information
system (GIS) file format ... ;" and
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(g) "transmitting ... an output file including the
generated data file ... wherein the transmission of the output
file causes a display of the external requesting entity to display
the generated data file."
Under step one, we agree with the Examiner that the inventions
claimed in each of independent claims 1 and 13 are directed to an abstract
idea, i.e., comparing data and using rules to identify options related to
payment transactions, which we also conclude is a method of organizing
human activity. See Ans. 4--5.
As the Specification discloses, "[t]he present disclosure relates to the
providing of characteristic payments data, specifically the providing of a
data file of a geographic information system (GIS) file format including
characteristic data for a plurality of payment transactions." Spec. ,r 1. 6 We
find this type of activity, i.e., comparing new and stored information and
using rules to identify options, for example, includes longstanding conduct
that existed well before the advent of computers and the Internet, and could
6 See also Spec. 32 ("Abstract"):
A method for providing characteristic payments data includes:
storing a plurality of transaction data entries, each data entry
including transaction data, consumer information, merchant
information, and a geographic location; receiving a request for
characteristics, the request including a characteristic metric and
specified geographic area; identifying a subset of data entries,
where the geographic location is included in the specified
geographic area; identifying the characteristic metric based on
at least one of: the transaction data, consumer information, and
merchant information of each data entry in the subset;
generating a data file illustrating the identified characteristic
metric as applied to the specified geographic area, wherein the
data file is of a geographic information system (GIS) file
format; and transmitting the generated data file in response to
the received request for characteristics.
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be carried out by a human with pen and paper. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson."). 7
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since CyberSource in cases like Mayo
and Alice, they continue to "treat[ ] 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." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information (e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
7 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
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Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Further, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is abstract. Digitech Image
Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014). Also, more recently, our reviewing court has also concluded that
acts of parsing, comparing, storing, and editing data are abstract ideas.
Berkeimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
Appellant also alleges claim 1 is patent-eligible because its practice
does not preempt practice by others. App. Br. 25. We agree with the
Examiner's response, which we incorporate herein by reference. Ans. 6-7;
and see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014)
( collecting cases); Accenture Global Servs., GmbH v. Guidewire Software,
Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013); Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) ("While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility").
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. 8
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
8 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
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Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of identifying, collecting, storing, comparing,
and generating data into a patent-eligible application of that abstract idea.
See Ans. 7-9. 9
9 The Examiner concludes:
The claims here are not directed to a specific improvement to
computer functionality, rather, they are directed to the use of
conventional or generic computer technology in a nascent but
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The Examiner further concludes "the computer components are
generic components that are routine and conventional. . . . [T]he computer
elements recited in claim 1 are 'a processing server' (generic computer and
server), 'transaction database' (generic database), 'a display' (generic display
device). There is nothing about the elements cited that rise to the level of a
special-purpose computer." Ans. 8.
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed network
components and processes, we note the Examiner's citation to Appellant's
Specification in paragraphs 51 through 60. For example:
[0051] FIG. 7 illustrates a computer system 700 in which
embodiments of the present disclosure, or portions thereof, may
be implemented as computer-readable code. For example, the
processing server 102 of FIG. 1 may be implemented in the
computer system 700 using hardware, software, firmware, non-
transitory computer readable media having instructions stored
thereon, or a combination thereof and may be implemented in
one or more computer systems or other processing systems.
Hardware, software, or any combination thereof may embody
well-known environment, without any claim that the invention
reflects an inventive solution to any problem by combining the
two.
Ans. 7-8.
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modules and components used to implement the methods of
FIGS. 3 and 6.
[0052] If programmable logic is used, such logic may execute
on a commercially available processing platform or a special
purpose device. A person having ordinary skill in the art may
appreciate that embodiments of the disclosed subject matter can
be practiced with various computer system configurations,
including multi-core multiprocessor systems, minicomputers,
mainframe computers, computers linked or clustered with
distributed functions, as well as pervasive or miniature
computers that may be embedded into virtually any device. For
instance, at least one processor device and a memory may be
used to implement the above described embodiments.
[0053] A processor device as discussed herein may be a
single processor, a plurality of processors, or combinations
thereof. Processor devices may have one or more processor
"cores." The terms "computer program medium," "non-
transitory computer readable medium," and "computer usable
medium" as discussed herein are used to generally refer to
tangible media such as a removable storage unit 718, and a hard
disk installed in hard disk drive 712.
[0054] Various embodiments of the present disclosure are
described in terms of this example computer system 700. After
reading this description, it will become apparent to a person
skilled in the relevant art how to implement the present
disclosure using other computer systems and/or computer
architectures. Although operations may be described as a
sequential process, some of the operations may in fact be
performed in parallel, concurrently, and/or in a distributed
environment, and with program code stored locally or remotely
for access by single or multi-processor machines. In addition, in
some embodiments the order of operations may be rearranged
without departing from the spirit of the disclosed subject
matter.
[0055] Processor device 704 may be a special purpose or a
general purpose processor device. The processor device 704
may be connected to a communication infrastructure 706, such
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as a bus, message queue, network, multi-core message-passing
scheme, etc. The network may be any network suitable for
performing the functions as disclosed herein and may include a
local area network (LAN), a wide area network (WAN), a
wireless network (e.g., WiFi), a mobile communication
network, a satellite network, the Internet, fiber optic, coaxial
cable, infrared, radio frequency (RF), or any combination
thereof. Other suitable network types and configurations will be
apparent to persons having skill in the relevant art. The
computer system 700 may also include a main memory 708
(e.g., random access memory, read-only memory, etc.), and
may also include a secondary memory 710. The secondary
memory 710 may include the hard disk drive 712 and a
removable storage drive 714, such as a floppy disk drive, a
magnetic tape drive, an optical disk drive, a flash memory, etc.
Spec. ,r,r 51-55.
We agree with the Examiner that the claim limitations may be broadly
but reasonably construed as reciting conventional computer components and
techniques, particularly in light of Appellant's Specification, as quoted
above. 10
With respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of either a "computer-implemented
method for providing characteristic payments data" using a "server" and a
10 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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"database" ( claim 1 ), or an "electronic system for providing characteristic
payments data" having a server with a processing device and a database
(claim 13) is simply not enough to transform the patent-ineligible abstract
idea here into a patent-eligible invention. See Alice, 134 S. Ct. at 2357
("[C]laims, which merely require generic computer implementation, fail to
transform [an] abstract idea into a patent-eligible invention."). 11
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped claims 2, 5-
9, 11-14, 17-21, and 23-26, not argued separately, and which fall therewith.
See Claim Grouping, supra. 12
11 Appellant merely alleges:
[T]he technical solution provided by the instant claims is
inextricably tied to (inseparable from) the recited computer-
implemented environment to address a problem that heretofore
went unsolved in conventional financial transaction systems,
wherein sufficient characteristic data could not be calculated
and provided to a requesting party without compromising
consumer privacy.
Independent claim 1, similar to those claims found to be
patent eligible in DDR Holdings, is "necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm o(computer networks."
App. Br. 26.
12 While it may appear that Appellant offers a separate patent eligibility
argument for independent claim 13 by use of a separate heading, Appellant
merely states "[i]ndependent claim 13 includes the same recitations as
independent claim 1, but is directed towards a respective specifically
configured electronic system rather than a computer-implemented method"
(App. Br. 33), and "[i]ndependent claim 33 [sic] recites similar computer
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2. § 103 Rejection R2 of Claims 1, 2, 5-9, 11-14, 17-21, 23, and 24
Issue 2
Appellant argues (App. Br. 6-14; Reply Br. 3--4) the Examiner's
rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over the
combination of Tavares, Necsoiu, and Zennaro is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests "[a] computer-implemented method for providing characteristic
payments data" wherein, inter alia, "the consumer information included in
each of the stored plurality of transaction data is not personally identifiable,"
as recited in claim 1?
Analysis
"[O]ne cannot show non-obviousness by attacking references
individually where ... the rejections are based on combinations of
references." In re Keller, 642 F.2d 413,426 (CCPA 1981). "The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference .... Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art." Id. at 425.
Appellant contends "personally identifiable information (PII) includes
information that may be used, alone or in conjunction with other sources, to
uniquely identify an individual. Examples of personally identifiable
components and technical functional features, as does claim 1. Therefore,
arguments similar to those presented above with respect to claim 1 are also
applicable to claim 13." App. Br. 34. We find these arguments are not truly
separate arguments.
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information include, names, social security numbers, residential
addresses, account numbers, etc." App. Br. 7. Appellant further states:
Id.
[A] premise of Appellant's claims pertains to a unique
functionality of providing a generated privacy compliant data
file of a geographic information system (GIS) file format
illustrating one or more characteristic payment data. Consumer
information is non-personally identifiable and, thus, consumer
PII is not used in the generation of the GIS data file. As a result
consumer privacy is maintained so that consumer may not be
individually identified.
In combination with Tavares and Necsoiu, the Examiner cites Zennaro
as teaching or suggesting removing personally identifiable information from
transaction records. Final Act. 15 ( citing Zennaro col. 5, 11. 27-39). The
Examiner additionally cites Zennaro (col. 4, 11. 14--18) as teaching or
suggesting having the ability to set permissions to allow gathering or
utilization of certain information. Final Act. 15. The Examiner also finds
" [ r ]emoval of Personally Identifiable Information, or permission to use
Personally Identifiable Information is well known in the art and many
different methods are known in the art to remove, contain or control
Personally Identifiable Information[]." Final Act. 15-16.
Appellant contends, "[c]ontrary to the present claims, however,
Tavares discloses the use of personally identifiable information (e.g.,
account holder's residential address, account numbers, names) in the
generation of reports." App. Br. 9 (citing Tavares ,r,r 11-14, 217, and 219).
Appellant further argues Zennaro's teaching "cannot be applied to Tavares
without destroying the original principal of operation of the Tavares
document." App. Br. 11.
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Contrary to Appellant's argument that the combination would have
changed Tavares principle of operation, it is well settled that "a
determination of obviousness based on teachings from multiple references
does not require an actual, physical substitution of elements." In re Mouttet,
686 F.3d 1322, 1332 (Fed. Cir. 2012) (citations omitted). Nor is the test for
obviousness whether a secondary reference's features can be bodily
incorporated into the structure of the primary reference. See Keller, 642
F.2d at 425.
We agree with the Examiner's finding:
While Tavares may not disclose modifying the reports to
remove personally identifiable information, it is an over
extension to then say that doing so would completely destroy
the function of the invention disclosed in Tavares. A person of
ordinary skill is a person of ordinary creativity as well. It is not
beyond the skill of a person or ordinary skill in the art to take a
report with information regarding customers and their
transactions and with the teachings of Zennaro, remove
personally identifiable information, and still be able to use the
information in the report to provide useful information. The
effects of removing personally identifiable information is well
known in the art and clearly taught by Zennaro in the
paragraphs cited in the above action. It is not beyond a person
with ordinary skill in the art to be able to combine this with the
teachings of Tavares and arrive at a method that provides
reports of transaction information that do not disclose the
personally identifiable information of those the information was
gathered from.
Ans. 3--4. We agree with the Examiner because we find that Appellant's
invention is simply a combination of known teachings that realize a
predictable result. The Supreme Court has determined the conclusion of
obviousness can be based on the interrelated teachings of multiple patents,
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the effects of demands known to the design community or present in the
marketplace, and the background knowledge possessed by a person having
ordinary skill in the art. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418
(2007). The skilled artisan would "be able to fit the teachings of multiple
patents together like pieces of a puzzle" since the skilled artisan is "a person
of ordinary creativity, not an automaton." Id. at 420-21.
Therefore, based upon the findings above, on this record, we are not
persuaded of error in the Examiner's reliance on the cited prior art
combination to teach or suggest the disputed limitation of claim 1, nor do we
find error in the Examiner's resulting legal conclusion of obviousness.
Therefore, we sustain the Examiner's obviousness rejection of independent
claim 1, and grouped claims 2, 5-9, 11-14, 17-21, 23, and 24 which fall
therewith. See Claim Grouping, supra.
3. § 103 Rejection R3 of Claims 25 and 26
In view of the lack of any substantive or separate arguments directed
to obviousness Rejection R3 of claims 25 and 26 under § 103 (see App.
Br. 14), we sustain the Examiner's rejection of these claims. Arguments not
made are waived. 13
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2-17) not in response to a shift in the Examiner's position
in the Answer, we note arguments raised in a Reply Brief that were not
13 Appellant merely argues, "[t]hese claims depend, directly or indirectly,
from one of the independent claims and are therefore patentably distinct
from the applied documents at least due to their respective dependencies."
App. Br. 14.
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raised in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 3 7
C.F.R. § 41.4I(b)(2)), which Appellant has not shown.
CONCLUSIONS
(1) The Examiner did not err with respect to patent-ineligible
subject matter Rejection RI of claims 1, 2, 5-9, 11-14, 17-21, and 23-26
under 35 U.S.C. § 101, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 and R3 of claims 1, 2, 5-9, 11-14, 17-21, and 23-26 under
35 U.S.C. § I03(a) over the cited prior art combinations of record, and we
sustain the rejections.
DECISION
We affirm the Examiner's decision rejecting claims 1, 2, 5-9, 11-14,
17-21, and 23-26.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). See 3 7
C.F.R. § 41.50(±).
AFFIRMED
24