Ex Parte Miles et al

Patent Trial and Appeal Board

Oct 25, 2017

12121477 (P.T.A.B. Oct. 25, 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.
12/121,477 05/15/2008 Eric L. Miles 096923-0831527 6949
132265 7590
Kilpatrick Townsend & Stockton LLP/Equifax, Inc.
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309-4528
EXAMINER
GILKEY, CARRIE STRODER
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
10/27/2017 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 ERIC L. MILES, CARL A. COZINE,
and BRADLEY D. BROWN
Appeal 2016-005 83 51
Application 12/121,4772
Technology Center 3600
Before KENNETH G. SCHOPFER, TARA L. HUTCHINGS, and
MATTHEW S. MEYERS, Administrative Patent Judges.
SCHOPFER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 from the rejection of claims
1—5, 17, and 19-43. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references the Appeal Brief (“Appeal Br.,” filed Oct. 28,
2015) and Reply Brief (“Reply Br.,” filed May 11, 2016), and the
Examiner’s Answer (“Ans.,” mailed Mar. 11, 2016) and Final Office Action
(“Final Act.,” mailed May 28, 2015). The record includes a transcript of the
oral hearing held September 21, 2017.
2 According to Appellants, the real party in interest is IntelliReal, LLC,
“which is a subsidiary of Equifax, Inc. Appeal Br. 1.
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BACKGROUND
According to the Specification, “embodiments of the present
invention provide methods of creating segmented transaction data built by
clustering base geographical units based on similarity of statistical data
associated therewith.” Spec. 13.
CLAIMS
Claim 1 is illustrative of the appealed claims and recites:
1. A method comprising:
receiving a clustering criterion;
receiving, by a computer system comprising a processor
device, information regarding a plurality of completed real
property transactions that meet the clustering criterion from a
geographic region, the geographic region comprising a plurality
of base geographic units, each of which is associated with a
plurality of numerically valued attributes; wherein each of the
plurality of completed real property transactions is associated
with one of the plurality of base geographic units based on a
physical location of a real property associated with the completed
real property transaction;
building, with the computer system, a plurality of
relatively homogeneous segments of completed real property
transactions for performing a desired numerical modeling or
analysis by:
(a) identifying, with the computer system, a
threshold number of completed real property transactions
for each of the plurality of relatively homogenous
segments for the desired numerical modeling or analysis;
(b) identifying, with the computer system, base
geographic units of the geographic region that are
associated with a number of completed real property
transactions greater than the threshold number and
assigning these base geographic units to individual
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clusters and assigning associated completed real property
transactions into individual segments;
(c) performing, with the computer system, a
similarity analysis on all possible pairs of base geographic
units of the geographic region by comparing the
numerically valued attributes associated with the base
geographic units, the similarity analysis generating
similarity information for all possible pairs of base
geographic units; and
(d) aggregating, with the computer system,
remaining unassigned completed real property
transactions into one or more segments based on the
similarity information and the threshold number such that
all of the plurality of completed real property transactions
have been assigned to a segment of the plurality of
relatively homogeneous segments; and
performing the desired numerical modeling or analysis
based on one or more of the plurality of relatively homogeneous
segments; and
outputting a report associated with the numerical modeling
or analysis performed on the plurality of relatively homogeneous
segments to a user.
Appeal Br. 41^42.
REJECTIONS
1. The Examiner rejects claims 1—5, 17, and 19-43 under 35 U.S.C. § 101
as directed to non-statutory subject matter.
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2. The Examiner rejects claims 1—5, 17, 19-27, and 38-403 under 35 U.S.C.
§ 103(a) as unpatentable over Robbins4 in view of Delurgio.5
3. The Examiner rejects claims 41—43 under 35 U.S.C. § 103(a) as
unpatentable over Robbins in view of Delurgio and Miller.6
DISCUSSION
35 U.S.C. §101
With respect to this rejection, Appellants first raise arguments with
respect to independent claim 28, Appellants then raise arguments regarding
the remaining independent claims, and then Appellants raise arguments with
respect to the claims as a single group. See Appeal Br. 14—31. We address
the independent claims separately and as a single group as necessary in the
discussion that follows.
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept,” such as an
abstract idea. Alice, 134 S. Ct. at 2355.
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
3 We note that although the heading for this rejection does not include
claims 39 and 40, the substance of the rejection makes clear that these
claims are included in the rejection. See Final Act. 18—19.
4 Robbins, US 2001/0039506 Al, pub. Nov. 8, 2001.
5 Delurgio et al., US 7,386,519 Bl, iss. June 10, 2008.
6 Miller et al., US 2004/0153330 Al, pub. Aug. 5, 2004.
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phenomenon—after all, they take place in the physical world.
See Mayo, 132 S. Ct. [1289,] 1293 [(2012)] (“For all inventions
at some level embody, use, reflect, rest upon, or apply laws of
nature, natural phenomena, or abstract ideas.”) Rather, the
“directed to” inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether “their
character as a whole is directed to excluded subject matter.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343,
1346 (Fed. Cir. 2015); see Genetic Techs. Ltd. v. MerialL.L.C.,
818 F.3d 1369, 1375, 2016 WL 1393573, at *5 (Fed. Cir. 2016)
(inquiring into “the focus of the claimed advance over the prior
art”).
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). “The
‘abstract idea’ step of the inquiry calls upon us to look at 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 Tex., LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1257-58 (Fed. Cir. 2016) (citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016);
Enfish, 822 F.3d at 1335.
With respect to each of the independent claims on appeal, the
Examiner finds that the claims are directed to the abstract idea of grouping
property transactions. Final Act. 3. The Examiner also finds that the
claimed steps in claim 1 of receiving clustering criterion, receiving property
transaction information, building or grouping property transaction,
performing numerical modeling, and outputting a report are “(i) a
fundamental economic [/business] practice, (ii) a method of organizing
human activities, [and] (iii) an idea of itself.” Id. The Examiner
additionally finds that the claims are directed to a mathematical formula or
relationship. Ans. 4. And still further, the Examiner finds:
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The claims are considered to be a fundamental economic
practice, because they are directed to valuing properties, which
are concepts relating to the economy and commerce. They are
also considered to be an idea 'of itself as, for example, they may
be performed by the human mind or by a human using pencil and
paper. For example, Digitech stated that organizing information
through mathematical correlations was an idea of itself. In this
case, the information regarding the property transactions is being
organized through grouping the transactions using mathematical
correlations. The claims, which are directed to grouping
property transactions, are also considered to be certain methods
of organizing human activity as the claims include concepts
relating to managing relationships or transactions between
people (such as BuySAFE), as property transactions are
transactions between people.
Id.
Appellants do not appear to raise arguments regarding the Examiner’s
finding with respect to Alice step 1. See Appeal Br. 14—31. We agree with
and adopt the Examiner’s findings regarding the claims and conclude that
the claims are directed to an abstract idea.
Step two of Alice is “a 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.’” Alice, 134 S. Ct. at 2355 (alteration in original)
(citing Mayo, 132 S. Ct. at 1294).
With respect to this step, the Examiner finds:
The additional elements or combination of elements in the claims
other than the abstract idea per se amounts to no more than: (i)
mere instructions to implement the idea on a computer, and/or
(ii) recitation of generic computer structure that serves to
perform generic computer functions that are well understood,
routine, and conventional activities previously known to the
industry. The Examiner asserts that the claimed invention fails
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to further improve upon the technology since the claimed
invention does not improve on the general purpose computer of
[0117] - [0126] of the published application. That is, the
computer recited in the specification that is performing the
identifying, receiving information, grouping, performing
numerical analysis, and outputting a report, steps of the claims is
nothing more than a general purpose computer, wherein a general
purpose computer is fully capable of performing the claimed
invention since any general purpose computer is capable of
receiving, comparing, and generating data. The claimed
computer is merely being used as a means of implementing the
idea on the computer and is serving to perform generic computer
functions. As a result, the computer of the Specification that
performs the steps of the methods is still considered to be nothing
more than a general purpose computer that happens to be the
particular means for performing/executing the method, i.e. the
abstract idea. 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 claims amount to significantly more than the
abstract idea itself. Therefore, the claims are rejected under 35
U.S.C 101 as being directed to non-statutory subject matter.
Final Act. 3^4.
Here, Appellants first argue, with respect to claim 28, “[t]he
Examiner’s finding of novelty and non-obviousness shows the significance
of features recited in claim 28.” Appeal Br. 15 (emphasis omitted).
Appellants also assert that the absence of a teaching or suggestion of the
features of claim 28 in “the prior art indicates that they impose meaningful
limits on any abstract idea.” Id. We disagree.
As an initial matter, we do not agree that the lack of a prior art
rejection with respect to claim 28 is an acknowledgement that the invention
of claim 28 is novel or non-obvious. Rather, the withdrawal of the prior art
rejection means only that the Examiner is not pursuing that particular
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rejection and may relate to the perceived strength of that particular prior art
rejection by the Examiner or may be an action to limit the issues in the
application because the Examiner is of the opinion that the 101 rejection is
dispositive. Further, although the second step in the MayolAlice 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 Corp., 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
Second, Appellants argue, with respect to claim 28, that “[t]he
Examiner failed to explain why the novel and non-obvious features of
independent claim 28 are not significantly more than an abstract idea.”
Appeal Br. 18 (emphasis omitted). Appellants assert that “the Examiner was
required to determine whether the other limitations of claim 28 [beyond
those similar to the limitations included in claim 1 ] amount to significantly
more than the abstract idea.” Id. at 19. More specifically, Appellants assert
that the Examiner did not address or discuss the novel and non-obvious
features of claim 28 with respect to the second step of the Alice analysis.
Thus, Appellants conclude that the Examiner failed to establish a prima facie
case of unpatentability under section 101 with respect to claim 28.
We are not persuaded.
First, as discussed above, the lack of an art rejection with respect to
claim 28 does not provide a conclusive showing that the limitations of claim
28 are novel and non-obvious. Second, we are not persuaded that the
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Examiner did not make a prima facie showing that claim 28 is directed to
ineligible subject matter.
The Federal Circuit has repeatedly noted that “the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (alteration in original) (quoting 35 U.S.C.
§ 132). Thus, all that is required of the Office is that it set forth the statutory
basis of the rejection, and the reference or references relied on, in a
sufficiently articulate and informative manner as to meet the notice
requirement of § 132. Id.\ see also Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) (Section 132 “is violated when the rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.”).
In view of this case law, we note that Appellants do not contend that
the Examiner’s rejection under § 101 was not understood or that the
rejection otherwise fails to satisfy the notice requirements of § 132. And we
find that Appellants’ understanding of the rejection is clearly manifested by
their response as set forth in the Briefs.
Third, Appellants argue that “[t]he Examiner’s rationale for
characterizing the claimed features as ‘generic computer functions’ was
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erroneous.” Appeal Br. 20 (emphasis omitted). Appellants assert that “the
mere fact that a general-purpose computer can be programmed to perform
claimed operations does not show that these operations are ‘conventional’ or
otherwise lack significantly more than an abstract idea.” Id. at 21 (emphasis
omitted). Although we may agree with Appellants’ premise, Appellants
present no persuasive argument or technical reasoning here to support the
position that the rejection includes reversible error because claim 28 recites
“significantly more than an abstract idea,” contrary to the Examiner’s
findings.
Next, Appellants separately address independent claims 1,17, and 38.
Appeal Br. 22—26. However, Appellants arguments with respect to these
claims are substantially the same as arguments discussed above.
Specifically, Appellants argue that the Examiner erred because the rejection
does not specifically address certain elements of the claims in finding that
the claims do not amount to significantly more than the abstract idea. Id. at
22—26. We are not persuaded of error for the same reasons discussed above.
Appellants are again arguing that the Examiner failed to establish a prima
facie showing, and we disagree because Appellants were provided a
sufficient basis and reasoning in the rejection such that the rejection satisfies
the notice requirements of § 132, as evidenced by Appellants understanding
of the rejection as manifested in the Briefs before us.
Finally, Appellants argue that all the claims recite features that
amount to an improvement to a technical field, and thus, the claims are
patent-eligible. Appeal Br. 26. In support, Appellants assert that the claims
and Specification are directed to problems in the technical field of automated
modeling methods. Id. at 26—31. Appellants assert that the Specification
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identifies “a technical field in which computer-implemented . . . modeling
algorithms are required for the generation of certain data.” Id.
In contrast, the Examiner finds that the claims and Specification relate
more generally to “modelling methods” because the claims are related to
grouping and pricing properties, which are not limited to taking place on
computers. We agree with the Examiner. In short, we cannot distinguish
the claims from the concept of using transactional data as inputs to some
undefined numerical model. Taking claim 1 as an example, the claim
requires receiving clustering criterion, receiving transaction information,
building segments based on the criterion and transaction information,
performing “desired numerical modeling or analysis,” and outputting a
report. We find these steps similar to the steps that the Federal Circuit
determined were patent ineligible in Electric Power. In Electric Power, the
method claims at issue were directed to performing real-time performance
monitoring of an electric power grid by collecting data from multiple data
sources, analyzing the data, and displaying the results. Elec. Power Grp.
LLC, 830 F.3d at 1351—52. The Federal Circuit held that the claims were
directed to an abstract idea, explaining that “[t]he advance they purport to
make is a process of gathering and analyzing information of a specified
content, then displaying the results, and not any particular assertedly
inventive technology for performing those functions.” Id. at 1354.
Similarly, the claims here are directed to gathering and segmenting data for
inputs into a “desired numerical modeling or analysis” to generate a report.
Further, although Appellants point to portions of the Specification indicating
that the modeling methods used are “automated,” the claims are not limited
to automated modeling methods and there does not appear to be any
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indication that the claimed methods are related to modeling methods that
must be automated. In short, the claimed method is not rooted in technology
because it seems to solve a problem related to not only automated modeling
but also non-automated modeling, i.e. the results of building segments per
the claimed method may be used as inputs to non-automated modeling
methods, even if such segments are built on a computer. See, e.g., Spec.
| 62 (“The clustering methodologies described herein may facilitate the
provision of more homogeneous, segmented data for any modeling task that
depends upon a minimum sized segment for accuracy, reliability, precision
and/or usefulness.” (emphasis added))
Based on the foregoing, we are not persuaded of reversible error in the
rejection of claims 1—5, 17, and 19-43 under 35 U.S.C. § 101. Accordingly,
we sustain the rejection.
35 U.S.C. § 103(a)
With respect to the rejection independent claim 1 as obvious, we are
persuaded by Appellants argument that the Examiner has not established that
the art of record discloses step d in claim 1. More specifically, Appellants
argue, and we agree, that the claim requires first identifying and assigning
units into individual segments and then aggregating remaining unassigned
properties into segments based on generated similarity information. Appeal
Br. 34—35. We agree with Appellants that the cited portions of Robbins,
relied upon for teaching step d of the claim, do not show that remaining
unassigned property transactions are placed into segments based on
generated similarity information. Id.
In the rejection, the Examiner quotes Robbins paragraph 132 with
respect to step (d) of claim 1. Final Act. 8 (citing Robbins Tflf 130-136, 188,
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215—224 and quoting Robbins 1132). In particular, the Examiner relies on
the following:
At the beginning of the analysis, individual Census Tracts that
share important attribute scores are linked together into small
groups. The small groups are then linked together into larger
groups and the larger groups are linked together into still larger
groups. At the conclusion of the analysis, all Census Tracts are
joined together into a single group representing the county.
Through evaluation of the grouping process, individual Census
Tracts can be assigned into representative groups that share
important attribute scores. A consistent method is thereby
established that permits selection of comparables from locations
outside the Census Tract of the subject but which share important
attribute scores such as size, age, condition, neighborhood
profile, etc.
Robbins 1132. Further, in response to Appellants’ arguments, the Examiner
states:
As to step (d), Robbins teaches aggregating unassigned property
transactions into one or more segments in [0130]—
[0136][0188][0215]-[0224], and more specifically, in [0132], it
is stated that “At the conclusion of the analysis, all Census Tracts
are joined together into a single group representing the county.”
Examiner further notes that step (d) just seems to make certain
that any “leftover” properties are assigned to a segment (or
cluster), rather than being left out of the analysis.
Ans. 15. Thus, the Examiner finds that because Robbins ensures that all
tracts are joined into a single group and because step (d) only requires that
leftover properties are assigned to a cluster, then Robbins teaches the
limitation. However, step (d) of claim 1 requires not only that the remaining
unassigned property transactions are placed into one or more segments, thus
ensuring that all properties are accounted for, but this step also requires that
the unassigned properties are assigned to segments based on generated
similarity information and threshold number requirements. Without further
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explanation from the Examiner, we fail to see how the cited portions of
Robbins teach or otherwise render this limitation obvious.
For these reasons, we are persuaded of reversible error with respect to
the rejection of claim 1 as obvious. We are also persuaded of reversible
error with respect to the remaining independent claims subject to this
rejection, i.e. claims 17 and 38, which include substantially similar
limitations. Further, the Examiner has not shown, and it is not readily
apparent to us, that the other art of record cures the deficiencies in the
rejection of these independent claims. Accordingly, we do not sustain the
obviousness rejections of claims 1—5, 17, 19—27, 38-43.
CONCEUSION
We AFFIRM the rejection of claims 1—5, 17, and 19-43 under
35 U.S.C. § 101, and we REVERSE the rejections of claims 1—5, 17, 19-27,
and 38—43 under 35 U.S.C. § 103(a).
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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