Ex Parte Qiu et al

Patent Trial and Appeal Board

Nov 2, 2018

14292539 (P.T.A.B. Nov. 2, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/292,539 05/30/2014
101850 7590 11/06/2018
Knobbe, Martens, Olson & Bear, LLP
CORELOGIC (CLOGI)
2040 Main Street, Fourteen Floor
Irvine, CA 92614
FIRST NAMED INVENTOR
Dingxi Qiu
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.
CLOGI.047A 1019
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
11/06/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DINGXI QIU and WEI LIU1
Appeal2017-009385
Application 14/292,539
Technology Center 3600
Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
ADAM J. PYONIN, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-9 and 21-23. App. Br. 3. 2 We have jurisdiction
under 35 U.S.C. § 6(b ).
We affirm.
1 Appellants list CoreLogic Solutions, LLC as the real party in interest.
Appeal Brief filed February 27, 2017 ("App. Br.") 1.
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents, for their respective details: the Final Action mailed
September 14, 2016 ("Final Act."); the Examiner's Answer mailed April 21,
2017 ("Ans."); and the Reply Brief filed June 20, 201 7 ("Reply Br.").
Appeal2017-009385
Application 14/292,539
THE INVENTION
Appellants describe the present invention as follows:
A computer model of tax delinquency risk is generated by
analyzing historical data, including mortgage loan data,
associated with real estate properties that have become property
tax delinquent. The model is used to generate property-specific
scores representing the likelihood that the corresponding
properties will become tax delinquent ( absent lender or servicer
intervention) within a selected time period, such as six months.
The scores may, for example, be used by a mortgage lender or
servicer to identify loans/properties for which to take preemptive
action to avoid tax delinquency.
Abstract.
Independent claim 1, reproduced below, illustrates the claimed
invention:
1. A system, comprising:
a data repository that stores loan-level data corresponding
to each of a plurality of mortgage loans, said loan-level data
including payment performance data and including identifiers of
corresponding real estate properties; and
a computer system comprising one or more computing
devices, the computer system programmed to generate tax
delinquency risk scores, each of which corresponds to a different
respective real estate property of a plurality of real estate
properties, using at least the loan-level data, each tax
delinquency risk score being an indication of a likelihood that the
respective real estate property will become tax delinquent within
a defined time period, and being based at least partly on a
mortgage payment history of a corresponding borrower, said
mortgage payment history corresponding to a mortgage payment
schedule having a higher payment due date frequency than a
property tax payment schedule for the corresponding real estate
property;
wherein the computer system is programmed to generate
the tax delinquency risk scores using a computer model that
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correlates specific loan-level attributes with tax delinquency risk
based on loan-level data corresponding to real estate properties
that have entered into tax delinquency, and is programmed to use
the tax delinquency risk scores to rank the plurality of real estate
properties.
THE REJECTION AND CONTENTIONS
Claims 1-9 and 21-23 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2-3.
The Examiner finds that the claims are
directed to the abstract idea of [a] fundamental economic
practice, in particular storing loan-level data, generat[ing] tax
delinquency risk scores, each of which corresponds to a different
respective real estate property of a plurality of real estate
properties, using at least the loan-level data, each tax
delinquency risk score being an indication of a likelihood that the
respective real estate property will become tax delinquent within
a defined period of time and being based at least partly on a
mortgage payment history of a corresponding borrower, said
payment history corresponding to a mortgage payment schedule
having a higher payment due date frequency than a property tax
payment schedule for the corresponding real estate property and
generating tax delinquency risk scores using a model that
correlates specific loan-level attributes with tax delinquency risk
based on loan-level data corresponding to real estate properties
that have entered into tax delinquency and use the tax
delinquency risk scores to rank the plurality of real estate
properties. The specific type of scores, period of time, and
payment history used are further details of the abstract idea and
not significantly more.
Final Act. 2-3.
The Examiner finds that the concept to which the claims are directed
is similar to other concepts the courts have found to constitute abstract ideas.
Id. at 3. For example, the Examiner compares the presently claimed subject
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matter to that of SmartGene, Inc. v. Advanced Biological Laboratories, SA,
555 F. App'x 950 (Fed. Cir. 2014) (claiming subject matter directed to
comparing new and stored information and using rules to identify options);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347 (2014) (claiming
subject matter directed to mitigating settlement risk); Bilski v. Kappas, 561
U.S. 593 (2010) (claiming subject matter directed to hedging financial
risks); Cyberfone Systems, LLC v. CNN Interactive Group, Inc., 558 F.
App'x 988 (Fed. Cir. 2014) (claiming subject matter directed to using
categories to organize, store and transmit information); Digitech Image
Technologies, LLC v. Electronics for Imaging, Inc., 758 F.3d 1344 (Fed.
Cir. 2014) (claiming subject matter directed to organizing information
through mathematical correlations). Final Act. 3. The Examiner
additionally finds that "[ a ]11 the limitations recited in the depending claims
([fJor example, generating, estimating, determining, uploading, obtaining)
are further details of the abstract idea and not significantly more." Id.
The Examiner then finds that "[t]he claim[s] recite[] the additional
limitations of [] 'computer devices' to perform the recited steps" of the
abstract idea. Id. The Examiner finds that "the 'devices' are recited at a
high level of generality and are recited as performing generic computer
functions routinely used in computer applications." The Examiner takes
notice that the acts of "exchanging communications, transmitting and
receiving information over a network, presenting interfaces and applying
decision rules by a computer" constitute "generic computer functions that
are well-understood, routine, and conventional activities previously known
to the pertinent industry." Id. The Examiner therefore determines that the
additional elements of the claims other than the abstract idea amount to no
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more than mere instructions to implement the idea on a computer and the
recitation of generic computer structure that serves to perform generic
computer functions. Id. Based on this reasoning, the Examiner then
concludes that the claims are directed to patent-ineligible subject matter. Id.
Appellants present multiple arguments on appeal in relation to
independent claim 1 and dependent claims 22 and 23. App. Br. 3-9; Reply
Br. 1-8. We address these arguments below seriatim.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential).
Regarding the question of patent eligibility 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, 134 S. Ct. at 2354 ( quoting Ass 'n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589
(2013)). Accordingly, in applying the§ 101 exception, the Supreme Court
cautioned:
we must distinguish between patents that claim the "'buildin[g]
block[ s]"' of human ingenuity and those that integrate the
building blocks into something more, thereby "transform[ing]"
them into a patent-eligible invention. The former "would risk
disproportionately tying up the use of the underlying" ideas, and
are therefore ineligible for patent protection. The latter pose no
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comparable risk of pre-emption, and therefore remain eligible for
the monopoly granted under our patent laws.
Alice, 134 S. Ct. at 2354--55 (alterations in original) (internal citations
omitted).
In Alice, the Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71-73 (2012)). In the first step of the analysis, we
determine whether the claim at issue is "directed to" a judicial exception,
such as an abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends.
Thales Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claim
is determined to be directed to an abstract idea, then we consider under step
two whether the claim contains an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
In considering whether a claim is directed to an abstract idea under
step one, we acknowledge, as did the Supreme Court, 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 claim focuses on a specific means or method that improves the
relevant technology or is instead directed to a result or effect that, itself, is
the abstract idea and merely invokes generic processes and machinery. See
Enfish, 822 F.3d at 1336.
In the second step of the Alice analysis, if applicable, we must
consider whether the claim contains an element or a combination of
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elements that is sufficient to transform the nature of the claim into a patent-
eligible application. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714
(Fed. Cir. 2014); Alice, 134 S. Ct. at 2355.
In applying step two of the Alice analysis, we must
"determine whether the claim[] do[es] significantly more than
simply describe [the] abstract method" and thus transform the
abstract idea into patentable subject matter. We look to see
whether there are any "additional features" in the claim[] that
constitute an "inventive concept," thereby rendering the claim[]
eligible for patenting even if [it is] directed to an abstract idea.
Those "additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) ( citations omitted). A claim that "merely require[ s] generic
computer implementation[] fail[ s] to transform [an] abstract idea into a
patent-eligible invention." Alice, 134 S. Ct. at 2357.
Central to our analysis herein is the fundamental principle that the
Alice framework must be applied to the claims, as properly construed. As
our reviewing court has stated, "[ t ]he § 101 inquiry must focus on the
language of the Asserted Claims themselves." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016); see also Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345
(Fed. Cir. 2013) (admonishing that "the important inquiry for a§ 101
analysis is to look to the claim"); Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1346 (Fed. Cir. 2014)
(focusing on "whether the claims of the asserted patents fall within the
excluded category of abstract ideas") ( emphasis added)).
These principles are based on long-established jurisprudence that "[i]t
is the claims [that] define the metes and bounds of the invention entitled to
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the protection of the patent system." In re Warmerdam, 33 F.3d 1354, 1360
(Fed. Cir. 1994) (citing Zenith Lab. Inc. v. Bristol-Myers Squibb Co., 19
F.3d 1418, 1424 (Fed. Cir. 1994)).
ANALYSIS
Appellants argue that "[t]he Office Action does not ... cite any
evidence to suggest that the subject matter of claim 1 is fundamental." App.
Br. 3. Appellants more specifically argue that "the Office Action cites no
evidence to suggest that it was known-much less fundamental-to
program a computer system to use the mortgage payment history
corresponding to a borrower to assess the risk that an associated property
will become tax delinquent, as described in claim 1." Id. ( emphasis added).
Appellants similarly argue that the Office Action does not cite evidence to
show that it was a fundamental idea "to generate tax delinquency risk scores
'using a computer model that correlates specific loan-level attributes with
tax delinquency risk based on loan-level data corresponding to real estate
properties that have entered into tax delinquency' as recited in claim 1." Id.
at 3--4 ( emphasis added).
Appellants' arguments are unpersuasive because they do not address
the Examiner's rejection. The Examiner does not reject the claims under a
theory that the programmed computer constitutes part of the abstract idea to
which claim 1 is directed. See Final Act. 2-3. The Examiner instead
determines that the claimed computer devices constitute additional elements
beyond the abstract idea that are used to perform the underlying abstract
idea. Id. at 3.
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Appellants argue
the Office Action at page 3 makes the conclusory assertion that
the "concept" recited in the claims is "very similar" to the
following concepts found to be abstract by the courts:
(1) comparing new and stored information and using rules to
identify options; (2) mitigating settlement risk, (3) hedging;
( 4) using categories to organize, store and transmit information;
and ( 5) organizing information through mathematical
correlations. But the claimed subject matter is not similar to any
of these concepts, and the Office Action does [sic] makes no
attempt to explain why the claimed subject matter can be viewed
as similar to any of these concepts.
App. Br. 4.
This argument is unpersuasive. We understand the Examiner's
position to be that Appellants' claimed subject matter is similar to that of the
cited cases because the limitations of the appealed claims are analogous to
the claims of the cited cases. See Ans. 6-7. We agree. The claimed steps of
generating a tax delinquency risk score and using the scores to rank the real
estate properties, for example, can be characterized as at least (1) comparing
new and stored information and using rules to identify options, and
(2) organizing information through mathematical correlations. Appellants
present insufficient reasoning or factual bases to demonstrate otherwise. We
note "mere statements of disagreement ... do not amount to a developed
argument." SmithKline Beecham Corp. v. Apotex Corp., 439 F.3d 1312,
1320 (Fed. Cir. 2006).
Appellants argue that the court in McR03 supports a finding that the
present claims are not directed to an abstract idea. App. Br. 5. More
3 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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specifically, Appellants argue that "[l]ike the claims found eligible in McRO,
the present claims involve a technological process that improves computer-
related technology by allowing computer performance of a function that
could not previously be performed by a computer." Id.
This argument is unpersuasive. The present claims are not directed to
an improvement in computer-related technology. They instead are directed
to an improved abstract idea that uses conventional computer technology to
perform the abstract idea more efficiently. "[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter."
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (US.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Relying on a "processor" to "perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015).
Appellants argue that the claims recite significantly more than an
abstract idea under step two of the Alice inquiry. App. Br. 5-7. For
example, Appellants point out that "claim 1 states that the computer system
is 'programmed to generate the tax delinquency risk scores using a computer
model that correlates specific loan-level attributes with tax delinquency risk
based on loan-level data corresponding to real estate properties that have
entered into tax delinquency."' Id. at 6. Appellants argue that "[t]he use of
such a computer model extends well beyond, and represents significant more
than, any fundamental economic practice or other abstract idea that could
possibly be recited in claim 1." Id.
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This argument is unpersuasive. Appellants are conflating the claim
language that is directed to the additional elements with the language that is
directed to the underlying abstract idea. "It has been clear since Alice that a
claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
more' than that ineligible concept." BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018).
Appellants argue
A finding that the claims recite "significantly more" is
consistent with the Federal Circuit's decision in DDR Holdings,
LLC v. Hotels.com L.P., [773 F.3d 1245 (Fed. Cir. 2014)]. Like
the claims found patent-eligible (under the "significantly more"
prong) in DDR Holdings, the subject matter of claim 1 "does not
merely involve the use of a computer or the Internet to perform
a pre-Internet world business practice." Indeed, the operations
described in claim 1 are not analogous to any business practice
that is, or reasonably can be, performed without the use of a
computer.
App. Br. 6.
This argument is unpersuasive. We agree with the Examiner that all
of the steps of the recited abstract idea "(for example, storing data,
generating scores, ranking properties, determining actions, generating
coefficient, providing and obtaining scores) can be carried out by a human
using pen and paper." Final Act. 4.
In this regard, Appellants further argue that
it would be highly impractical, if even possible, to implement the
subject matter of claim 1 via pencil and paper. This is because,
among other reasons, a very large quantity of loan data and tax
delinquency data would need to be (manually) analyzed to
generate a model that reliably correlates specific loan level
attributes with tax delinquency risk.
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App. Br. 7.
This argument is unpersuasive. First, because claim 1 places no
objective limits on the amount of data that needs to be analyzed, one cannot
reasonably conclude that performing the calculations with pen and paper
necessarily would be highly impractical. Second, even if we assume for the
sake of argument that it would be highly impractical to perform the
calculations with pen and paper, such a condition would not make the idea
less abstract. "[R ]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible."
OIP Techs., 788 F.3d at 1363; see also Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("[O]ur
precedent is clear that merely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea").
In relation to step one of the Alice inquiry, Appellants argue that the
Examiner has found the claims to be novel and non-obvious, and that this
fact indicates the claimed subject matter was not a fundamental economic
practice as of the Application's filing date. App. Br. 4. In relation to step
two of the Alice inquiry, Appellants similarly argue that by finding the
claims are "novel and non-obvious, the Office acknowledge that the claims
recite features that were not well-understood, routine or conventional
activities." Id. at 7.
These arguments are unpersuasive. "The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr, 450
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U.S. 175, 188-89 (1981). A novel and nonobvious claim directed to a
purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S.
at 90.
For the foregoing reasons, Appellants have not persuaded us of error
in the Examiner's determination that independent claim 1 is directed to
patent-ineligible subject matter. Accordingly, we sustain the Examiner's
rejection of that claim, as well as the rejection under § 101 of claims 2-9 and
21, which Appellants do not argue separately. See App. Br. 7.
Appellants separately argue the patentability of dependent claim 22.
Id. at 7-8. Claim 22 reads as follows:
22. The system of claim 1, wherein the computer system is
programmed to generate the model using a model generation
component that generates, for each of a plurality of explanatory
variables, a respective coefficient specifying a strength of a
correlation between the explanatory variable and tax delinquency
risk.
App. Br. 11.
Appellants argue
the feature recited in claim 22 is not merely a detail of the alleged
abstract idea or an instruction to implement an abstract idea on a
computer. Rather, the claim recites specific, technical details of
how the recited computer model is generated. Nothing in the
record suggests that these details are abstract, or that they are
well-understood, routine and conventional activities previously
known to the pertinent industry.
App. Br. 8.
This argument is unpersuasive. We agree with the Examiner (Ans. 9)
that the language of claim 22 "merely further details [the] abstract idea,"
rather than reciting additional elements that conceivably could make
claim 22 more than the underlying abstract idea. It is immaterial whether
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the underlying abstract idea was well-understood, routine, or conventional.
No matter how worthy and groundbreaking-how novel and non-obvious-
a disclosed invention might be, merely claiming an improved abstraction is
not sufficient to result in patent-eligible subject matter. "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Myriad, 569 U.S. at 591.
Appellants also separately argue the patentability of dependent
claim 23. App. Br. 8. Claim 23 reads as follows:
23. The system of claim 1, wherein the computer system
further includes an interactive user interface that provides
functionality for a user to upload a list of real estate properties
and to obtain the tax delinquency risk scores for the real estate
properties on the list.
Id. at 11.
Appellants argue that "the interactive user interface recited in
claim 23 is not merely a detail of an abstract idea or an instruction to
implement an abstract idea on a computer." Id. at 9. We agree that the
language of claim 23 is not directed to the underlying abstract idea.
However, claim 23 additionally merely recites the additional computer
functionality of an interactive user interface for retrieving data to be
analyzed and manipulated. Based on the record before us, we agree with the
Examiner that the recited computer components for collecting data are
conventional and do not add significantly more than the underlying abstract
idea. Ans. 9; see also Spec. ,r,r 41--42.
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DECISION
The Examiner's decision rejecting claims 1-9 and 21-23 is affirmed.
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 ). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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