Ex Parte Rothman et al

Patent Trial and Appeal Board

Aug 3, 2018

11282644 (P.T.A.B. Aug. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/282,644 11/21/2005
131244 7590 08/03/2018
Hunton Andrews Kurth LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania A venue, NW
Suite 800
Washington, DC 20037
FIRST NAMED INVENTOR
Michael J. Rothman
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.
47004.000388 1863
EXAMINER
DURAN, ARTHUR D
ART UNIT PAPER NUMBER
3622
MAIL DATE DELIVERY MODE
08/03/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL J. ROTHMAN, KATHLEEN H. WITSIL,
and DAVID W. NANEK 1
Appeal2017-001664
Application 11/282,644
Technology Center 3600
Before BRADLEY W. BAUMEISTER, AMBER L. HAGY, and
PHILLIP A. BENNETT, 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 59---61, 63-80, and 92-98. App. Br. 7. 2 We have
jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
Pursuant to 37 C.F.R. § 41.50(b), we enter NEW GROUNDS OF
REJECTION for claims 59-61, 63-80, and 92-98 under at least one of
35 U.S.C. §§ 101 and 112, ,r 2 (pre-AIA).
1 Appellants identify JPMorgan Chase Bank, NA as the real party in
interest. Appeal Brief 1, filed June 27, 2016 ("App. Br.").
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the details of the above-mentioned Appeal Brief, as
well as the following documents: the Final Action mailed January 27, 2016
("Final Act."); the Examiner's Answer mailed September 13, 2016 ("Ans.");
and the Reply Brief filed November 11, 2016 ("Reply Br.").
Appeal2017-001664
Application 11/282,644
STATEMENT OF THE CASE
Appellants describe the present invention as follows:
The present invention relates to storing and manipulating
customer purchasing information, particularly purchasing
information by credit cards, debit cards, checks, and the like. A
hierarchical organizational structure is created comprising a
plurality of categories and sub-categories. The customer
purchase information may then be retrieved according to user
created links to generate customer preference information. The
customer preference information may be stored in a customer
account, thereby allowing targeted offers to be made to
customers.
Abstract.
Independent claim 59 illustrates the claimed invention:
59. A method for making a targeted offer, the method
implemented in a computer system for storing and manipulating
customer purchase information received from a plurality of
sources for a plurality of customers, the computer system
comprising a storage device for storing the customer purchase
information and a processor for placing the customer purchase
information, the method comprising:
receiving the customer purchase information, the
receiving performed by the processor, the customer purchase
information associated with customer accounts of the plurality of
customers;
creating an organizational structure comprising a plurality
of categories and subcategories arranged in a hierarchy, and then
organizing the customer purchase information within the
organizational structure, the organizing performed by the
processor, wherein headings for the plurality of sub-categories in
the organizational structure include representations of specific
merchant names;
placing the customer purchase information, with
associated customer accounts, into an order based on the
customer purchase information for the plurality of customers, the
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customer purchase information comprising a dollar amount of
purchases among the plurality of categories and sub-categories,
and so as to order the customer accounts of the plurality of
customers respectively within the plurality of categories and sub-
categories;
generating a plurality of customer scores for the plurality
of customers based on the order of the customer accounts within
each of the at least one of the plurality of categories and
subcategories;
creating a customer preference, for a target customer,
based on at least one of the generated plurality of customer scores
associated with the at least one of the plurality of categories and
sub-categories; and
forming an off er for the target customer based on the
customer preference;
wherein the step of generating a plurality of customer
scores for the plurality of customers includes generating multiple
customer scores for the target customer, the multiple customer
scores for the target customer each being respectively associated
with different subcategories of a category, and
wherein the step of organizing the customer purchase
information within the organizational structure further comprises
using a link file to direct the processor, the link file comprising a
plurality of instructions directing the processor to place the
customer purchase information in a predetermined location in the
organizational structure, the plurality of instructions comprising
wordstring data corresponding to the specific merchant names.
App. Br. 30-31 (Claim App.).
Claims 59-61, 63-80, and 92-98 stand rejected under 35 U.S.C.
§ I03(a) as unpatentable over Herz et al. (US 2001/0014868 Al; published
Aug. 16, 2001, hereinafter "Herz"), Lazarus et al. (US 6,430,539 Bl; issued
Aug. 6, 2002, hereinafter "Lazarus"), and Chakrabarti et al. (US 6,334,131
B2; issued Dec. 25, 2001, hereinafter "Chakrabarti"). Final Act. 8.
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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, 107 5 (BP AI 2010)
(precedential).
Pursuant to 37 C.F.R. § 4I.50(b), we also exercise our discretionary
authority, entering new grounds of rejection for claims 59---61, 63-80, and
92-98 under at least one of 35 U.S.C. §§ 101 and 112, ,r 2 (pre-AIA).
NEW INDEFINITENESS REJECTION
Principles of Law
"The specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the applicant
regards as his invention." 35 U.S.C. § 112, ,r 2 (Pre-AIA).
\Vhere a claim directed to a device can be read to include the same
element hvice, the claim may be indefinite. Ex parte Kristensen,
10 USPQ2d 1701 (BPAI 1989),
"[I]f a claim is amenable to two or more plausible claim constructions,
the USPTO is justified in requiring the applicant to more precisely define the
metes and bounds of the claimed invention by holding the claim
unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite." Ex
parte Miyazaki, 89 USPQ2d 1207, 1211 (BPAI 2008) (precedential); see
also Ex parte McAward, Appeal No. 2015-006416, 2017 WL 3669566
(PTAB Aug. 25, 2017) (precedential).
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Analysis
As noted above, independent claim 59 recites, inter alia, the following
two limitations:
creating an organizational structure compnsmg a
plurality of categories and subcategories arranged in a hierarchy,
and then organizing the customer purchase information within
the organizational structure, the organizing performed by the
processor, wherein headings for the plurality of sub-categories in
the organizational structure include representations of specific
merchant names;
placing the customer purchase information, with
associated customer accounts, into an order based on the
customer purchase information for the plurality of customers, the
customer purchase information comprising a dollar amount of
purchases among the plurality of categories and sub-categories,
and so as to order the customer accounts of the plurality of
customers respectively within the plurality of categories and
sub-categories.
App. Br. 30-31 (Claim App.).
The remaining two independent claims, claims 75 and 96,
respectively, are directed to a system for storing and manipulating customer
purchase information and a method for making targeted offers. Id. at 33-34,
36-37. These independent claims recite limitations that are similar to the
above-noted limitations of claim 59. Id. The above-recited claim limitations
of these independent claims did not appear in the originally filed claims, but,
instead, were added by amendment over the course of prosecution.
Compare, e.g., Appellants' original claim 1, filed November 21, 2005
(reciting only a single organizing or "placing" step) with new claim 59, as
filed February 26, 2006 (reciting a single organizing step) and with amended
claim 59, filed September 17, 2007 (reciting for the first time, two distinct
information-organizing and information-ordering steps).
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The plain language of these independent claims, as currently
amended, appears to require two distinct organizing and ordering steps ( or,
in the case of system claim 75, two distinct ordering means) for the
following reasons: In the case of claim 59, for example, the first step entails
"organizing the customer purchase information of the plurality of customers
within the organizational structure." The second step entails "placing the
customer purchase information ... into an order based on customer purchase
information for the plurality of customers ... so as to order the customer
accounts of the plurality of customers respectively within the plurality of
categories and sub-categories." That is, the plain language indicates that the
customer information is first placed into the organizational structure and
then, in a distinct step, subsequently ordered within the organizational
structure.
Appellants' substitute Specification filed February 27, 2006 ("Spec.")
conversely indicates that the invention entails only a single information-
organization step. See, e.g., Spec. 12-13 (setting forth only a single
placement step that entails placing customer purchase information into the
organizational structure after the information has been received from the
purchase storage device), and FIG. 5 (stating that customer purchase
information is received in step 106, only that the information is ordered or
"placed" into the organizational structure using a link file in step 108, and
that the ordered information then is scored in step 110).
The conflict between Appellants' amended claims and Appellants'
Specification renders it less than reasonably clear how many ordering steps
are intended to be encompassed by the metes and bounds of the claims. For
example, it may be that the claims entail only a single ordering step or
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means, as disclosed by Appellants' Specification. But it equally may be the
case that Appellants actually intended to claim two distinct organizing and
ordering steps, even though such a claim scope does not appear to be
supported by Appellants' originally filed Specification.
Accordingly, we exercise our discretionary authority under 37 C.F.R.
§ 4I.50(b) and enter a new ground of rejection for claim 59-61, 63-80, and
92-98 under 35 U.S.C. § 112, ,r 2 (pre-AIA).
OBVIOUSNESS REJECTION
Appellants assert, inter alia, that "[t]he Office Action does not
provide a prima facie case of obviousness, but rather presents a convoluted
concatenation of allegations." App. Br. 9. According to Appellants, "[t]he
Office Action does not 'clearly set[] forth findings of fact and the rationales
to support a rejection.' Rather, nearly 30 pages are devoted to rejecting the
limitations recited in independent claim 59, and in these 30 pages it is nearly
impossible to decipher the rejection." Id. at 10.
Appellants also assert that the obviousness rejection contains other
shortcomings:
In attempting to address the claimed invention, the Office
Action merely paraphrases the claim elements. As a result, the
precise claim terms are not properly addressed. For example, on
pages 9-10 of the Office Action, the Examiner concludes that the
claim elements are obvious. However, in doing so, the Office
Action does not follow the exact claim language. The Office
Action concludes the "Herz further renders obvious ...
wherein the predetermined organizational structure comprises a
plurality of categories, each category comprising a plurality of
sub-categories arranged in a hierarchy .... " However, the claims
require: "creating an organizational structure comprising a
plurality of categories and subcategories arranged in a hierarchy,
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and then organizing the customer purchase information within
the organizational structure, the organizing performed by the
processor, wherein headings for the plurality of sub-categories
in the organizational structure include representations of
specific merchant names." The language in bold and italics is
missing in the Office Action's "analysis."
In a similar manner, claim 59 recites:
placing the customer purchase information, with associated
customer accounts, into an order based on the customer purchase
information for the plurality of customers, the customer
purchase information comprising a dollar amount of
purchases among the plurality of categories and sub-
categories, and so as to order the customer accounts of the
plurality of customers respectively within the plurality of
categories and sub-categories ...
App. Br. 12-13.
Appellants urge that "[b ]ecause the Office Action fails to address the
claim element in its entirety, the current rejections are improper and should
be reversed." Id. at 13 .
We agree with Appellants that, in various instances, the Examiner's
rejection paraphrases claim elements and fails to address the actual claim
language. App. Br. 12. More generally, and regardless of whether the
claims are interpreted as requiring a single ordering step or plural organizing
and ordering steps, the basis of the rejection simply is unreasonably difficult
to decipher.
For example, claim 59 recites the following limitation:
placing the customer purchase information, with
associated customer accounts, into an order based on the
customer purchase information for the plurality of customers, the
customer purchase information comprising a dollar amount of
purchases among the plurality of categories and sub-categories,
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and so as to order the customer accounts of the plurality of
customers respectively within the plurality of categories and
sub-categories,
generating a plurality of customer scores for the plurality
of customers based on the order of the customer accounts within
each of the at least one of the plurality of categories and sub-
categories.
App. Br. 30-31 (Claim App.) (emphasis added).
In this regard, the Examiner finds that Herz generally teaches most of
the limitations of independent claim 59 including hierarchical organization
trees. Final Act. 2--4, 8-11. The Examiner finds that "Herz does not
explicitly disclose that the hierarchical organization tree or order is based on
the scores associated with different vendors/merchants," but that Herz does
disclose "that ['type of business'] is an attribute that can be tracked and
sorted upon." Id. at 11 (citing Herz ,r,r 97, 137). According to the Examiner,
"Herz further discloses that scores can be associated with the various
attributes that are tracked" (id. (citing Herz ,r 142)), "a score for user
transactions [is associated] with a vendor" (id. (citing Herz ,r,r 39--46)), and
"there are different scores from each of the different vendors" (id.). The
Examiner then concludes that it is "obvious" (as opposed to finding that
Herz actually teaches) "that the clustering of Herz's Figure 2 (Figure 2)
which is performed on different weighted attributes based on user profile
and offers can utilize the different vendor information on user purchase
history which is available in Herz." Id. The Examiner reasons that "[o]ne
would [have been] motivated to do this in order to better take advantage of a
readily available parameter (store or store type) that is often used for
organizing offers that are made to users." Id.
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But the rejection subsequently states on the next page,
Herz does not explicitly disclose ordering the customer's
profile/interests and basing a score on that order. However,
Herz renders obvious, "generating a customer score based on
the order of the customer accounts [] " Herz discloses placing
the customer into a hierarchy of order with categories and
subcategories (Fig. 2; [6, 154] and citations above). Also, note
that Herz discloses that a variety of attributes can be scores ([73])
and also that ranking can be performed ([14] towards the end of
this paragraph). And, Herz further discloses that a score is
assigned to the customer account based on the order of the
customer account ([164], "It is only necessary to adopt the
convention that a cluster's profile is the average of the offer
profiles of all the offers in the cluster; that is, to determine the
cluster's value for a given attribute, take the mean value of that
attribute across all the offers in the cluster [ ... ]"). Hence, Herz
discloses that users profiles can be placed into an order and that
scores can then be provided to the customer profile.
Additionally, as noted above, Herz discloses ordering
customer profiles and also scoring of customer profiles.
Id. at 12-13 (emphasis added).
The rejection goes on to explain
Herz does not explicitly disclose a customer score for the
target customer based on the order of the customer accounts.
However, Herz renders obvious generating a customer score
based on the order of the customer accounts. Herz discloses
placing the customer into a hierarchy of order with categories
and subcategories .... Hence, Herz discloses that users profiles
can be placed into an order and that scores can then be provided
to the customer profile.
Additionally, as noted above, Herz discloses ordering
customer profiles and also scoring of customer profiles. Herz
further discloses clustering and targeting groups of users.
Id. at 14.
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It is not reasonably clear whether the Examiner finds that Herz
discloses the claimed ordering, the claimed scoring, both of the claimed
ordering and scoring, or merely renders obvious ordering and scoring, as
claimed.
Furthermore, the Examiner then relies on Lazarus----either in addition
to or instead of Herz-for the "organizing" limitation. Final Act. 14--15.
The Examiner concludes that the combination of Herz and Lazarus renders
this limitation obvious because, inter alia, "it would have been obvious to
one having ordinary skill in the art at the time the invention was made that
Lazarus assigning a score or rank to customer data that is ordered can be
added to Herz' s customer score and customer data ordering." Id. at 15.
In summary, the Examiner has not established a prima facie showing
of obviousness because the bases for the rejection cannot be ascertained with
reasonable certainty. Accordingly, we do not sustain the obviousness
rejection of claims 59---61, 63-80, and 92-98. 3
NEW PATENT-INELIGIBLE-SUBJECT-MATTER REJECTION
Background
Claims 59---61, 63-80, and 92-98 previously were rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter-
"applying rules to form an offer for a target customer." See Non-Final
Action 7 (mailed Oct. 5, 2015). In response, Appellants amended the
3 We reach no conclusions on whether the cited art, in fact, teaches or
suggests the ordering and scoring limitations, as claimed.
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claims, adding the following language as the final limitation of claim 59, for
example:
wherein the step of orgamzmg the customer purchase
information within the organizational structure further comprises
using a link file to direct the processor, the link file comprising a
plurality of instructions directing the processor to place the
customer purchase information in a predetermined location in the
organizational structure, the plurality of instructions comprising
wordstring data corresponding to the specific merchant names.
Amendment 13 (filed January 5, 2016) (emphasis omitted).
In conjunction with amending the claims, Appellants also argued that
the Examiner has not established that the claims only recite an abstract idea
(id. at 12) and that the claims recite significantly more than an abstract idea
(id. at 12-14).
In the latest examination, the Examiner then withdrew the rejection
under 35 U.S.C. § 101 without comment. Final Act. 1--47 (addressing only
the obviousness rejection).
For the reasons set forth below, we conclude that at least independent
claims 59, 75, and 96, even as amended, are directed to patent-ineligible
subject matter. We, therefore, exercise our discretionary authority under
37 C.F.R. § 4I.50(b) and reinstate the 35 U.S.C. § 101 rejection with respect
to these claims.
Principles of Law
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." Alice Corp. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014)
(citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
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71-73 (2012)). In the first step of the analysis, we determine whether the
claims at issue are "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. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are determined to
be directed to an abstract idea, then we consider under step two whether the
claims contain an "inventive concept" sufficient to "transform the nature of
the claim into a patent-eligible application." Alice, 134 S. Ct. at 2355
( citation omitted).
In considering whether a claim is directed to an abstract idea, 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
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, 822 F.3d at 1336.
If the claims are directed to an abstract idea, we then must consider
whether the claim contains an element or a combination of 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 claims do 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 claims that constitute
an "inventive concept," thereby rendering the claims eligible for
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patenting even if they are 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).
Claims that "merely require generic computer implementation[] fail to
transform [an] abstract idea into a patent-eligible invention." Alice, 134
S. Ct. at 2357.
Analysis-Step One of the Alice Framework
Claim 59 recites steps of receiving customer purchase information,
creating a hierarchical organizational structure of categories, organizing
customer purchase information within the hierarchical structure, generating
customer scores based on the order, creating a customer preference based on
the scores, and forming an off er for the target customer based on the
customer preference. Regardless of whether claim 59 is interpreted broadly
as reciting only one organization step or more narrowly as reciting distinct
organization and ordering steps, the steps of claim 59 reasonably may be
characterized as being directed to a patent-ineligible concept relating to
organizing or analyzing information in a way that can be performed mentally
or that is analogous to human mental work. See, e.g., Versata Development
Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1331 (Fed. Cir. 2015)
( wherein our reviewing court held that the "concept of organizational
hierarchies for products and customers is abstract because it represents a
disembodied concept, a basic building block of human ingenuity-it is little
more than determining a price, essentially a method of calculating"); see
also MPEP § 2106.04(a)(2) Part (III) (discussing other cases in which claims
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were determined be directed to patent-ineligible subject matter because the
claimed subject matter constitutes "an idea of itself').
Analysis-Step Two of the Alice Framework
Appellants' addition of the final "link file" limitation to the
independent claims, considered alone and in combination with the other
claim limitations, is insufficient to transform the nature of the claim into
patent-eligible subject matter. Nothing in Appellants' Specification
reasonably indicates that Appellants' link files are inventive or are used in a
novel manner that improves the operation of the processor carrying out the
above-discussed abstract idea. Appellants' Specification instead indicates
that the link files were employed in their well-understood, routine, and
conventional manner. See, e.g., Spec. 14--15 (indicating that the processor
merely searches, compares, and matches information in a predetermined
manner, as programmed). Restated, Appellants' Specification indicates that
Appellants' inventive concept relates to the abstract idea, itself, and this
abstract idea merely is made more efficient through automation with a
conventional processor. Nothing in Appellants' Specification reasonably
indicates that an inventive concept entails improving the operation of the
processor.
Conclusion
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
enter a new ground of rejection under 35 U.S.C. § 101 for independent claim
59, as well as independent claims 7 5 and 96, which recite similar claim
scope.
Although we decline to reject dependent claims 60, 61, 63-74, 76-80,
92-95, 97, and 98 pursuant to our discretionary authority under 37 C.F.R.
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§ 41. 50(b ), we emphasize that our decision does not mean that the remaining
claims are necessarily patentable. Rather, we merely leave the patentability
determination of these claims to the Examiner. See MPEP § 1213.02.
DECISION
We reverse the obviousness rejection of claims 59---61, 63-80, and 92-
98 under 35 U.S.C. § 103(a).
Pursuant to our discretionary authority under 37 C.F.R. § 41.50(b), we
newly reject claims 59---61, 63-80, and 92-98 under 35 U.S.C. § 112, ,r 2, as
being indefinite.
Pursuant to our discretionary authority under 37 C.F.R. § 4I.50(b), we
newly reject claims 59, 75, and 96 under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter.
Rule 41.50(b) provides that "[a] new ground of rejection pursuant to
this paragraph shall not be considered final for judicial review." Rule
4I.50(b) also provides the following:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an
appropriate amendment of the claims so rejected or
new Evidence relating to the claims so rejected, or
both, and have the matter reconsidered by the
examiner, in which event the prosecution will be
remanded to the examiner. The new ground of
rejection is binding upon the examiner unless an
amendment or new Evidence not previously of
Record is made which, in the opinion of the
examiner, overcomes the new ground of rejection
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designated in the decision. Should the examiner
reject the claims, appellant may again appeal to the
Board pursuant to this subpart.
(2) Request rehearing. Request that the
proceeding be reheard under§ 41.52 by the Board
upon the same Record. The request for rehearing
must address any new ground of rejection and state
with particularity the points believed to have been
misapprehended or overlooked in entering the new
ground of rejection and also state all other grounds
upon which rehearing is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure (MPEP) § 1214.01
(9th Ed., Rev. 9, Nov. 2015).
REVERSED
37 C.F.R. § 4I.50(b)
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