Ex Parte Rothrock et al

Patent Trial and Appeal Board

Jan 16, 2018

13944605 (P.T.A.B. Jan. 16, 2018)

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.
13/944,605 07/17/2013 Debra ROTHROCK 411577US8X 3876
113694 7590 01/18/2018
Ohlnn/Pnrelncno Tnr
EXAMINER
1940 Duke Street
Alexandria, VA 22314
PATEL, JAGDISH
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
01/18/2018 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):
oblonpat @ oblon. com
patentdocket @ oblon. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DEBRA ROTHROCK, AJAINATH NAIR,
RAO MYLAVARAPU, and HAMIN BALAPORIA
Appeal 2016-005681
Application 13/944,6051
Technology Center 3600
Before DENISE M. POTHIER, LARRY J. HUME, and
NORMAN H. BEAMER, 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, 8-13, and 20-24, which are all claims pending in the
application. Appellants have canceled claims 2-7, 14-19, and 25. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is CORELOGIC
SOLUTIONS, LLC. Br. 1.
Appeal 2016-005681
Application 13/944,605
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
systems, methods and computer program product for developing and
reporting enhanced credit reports. The enhanced credit reports contain
supplemental material above and beyond that disclosed in credit reports
provided by various credit bureaus." Spec. 1,11. 15-18.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for generating an enhanced credit report,
comprising:
receiving via a network communication channel, a credit
request for an enhanced credit report, wherein the credit request
includes identifying data of a consumer;
extracting from a data repository consumer data that is
associated with the identifying data contained in the credit
request;
storing in a first memory device consumer data within or
as a section of a conventional credit report provided by a major
credit bureau;
querying another data repository for supplemental credit
data that is associated with the consumer data and not included
2 Our decision relies upon Appellants' Appeal Brief ("Br.," filed
Nov. 2, 2015); Examiner's Answer ("Ans.," mailed Feb. 29, 2016); Final
Office Action ("Final Act.," mailed Apr. 30, 2015); and the original
Specification ("Spec.," filed July 17, 2013). We note Appellants did not file
a Reply Brief in response to the factual findings and legal conclusions in the
Examiner's Answer.
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within or as a section of a conventional credit report provided
by a major credit bureau, the querying including comparing the
consumer data to at least one of consumer property ownership
information, mortgage obligation records, a property legal filing
made at a courthouse, an indication of a credit liability on the
enhanced credit report based on the property legal filing made
at the courthouse, a rental application, rent collection, eviction
status, at least one of inquiries, loans and charge-offs of pay­
day or alternative credit lenders, consumer-specific bankruptcy,
liens, judgements, child-support obligations, and a property tax
payment status;
merging with enhanced credit report processing circuitry
the supplemental credit data and at least a portion of credit
information included in the conventional credit report and
producing a Federal Fair Credit Reporting Act compliant[3]
enhanced credit report that contains the supplemental credit
data, and an enhanced credit score.
Rejection on Appeal
Claims 1, 8-13, and 20-24 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Ans. 2.
CLAIM GROUPING
Based on Appellants' arguments (Br. 4-16), we decide the appeal of
the § 101 rejection of claims 1, 8-13, and 20-24 on the basis of
representative claim l.3 4
3 In the event of further prosecution, we invite the Examiner's attention to
the recitation in claim 1 of "a Federal Fair Credit Reporting Act compliant
enhanced credit report" to determine compliance with the definiteness
requirements of 35 U.S.C. § 112(b), given that such Federal statutes and
regulations may change or have changed over time.
4 "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
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ISSUE
Appellants argue (Br. 4-16) the Examiner's rejection of claim 1 under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter is in
error. These contentions present us with the following issue:
Did the Examiner err in concluding claim 1, and claims 8-13
and 20-24 grouped therewith, although directed to statutory subject matter,
are rejected under 35 U.S.C. § 101 because the claimed subject matter is
judicially-excepted from patent eligibility under § 101?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. We do not consider arguments
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claim 1 and,
unless otherwise noted, we incorporate by reference herein and adopt as our
own: (1) the findings and legal conclusions set forth by the Examiner in the
action from which this appeal is taken, and (2) the reasons, conclusions, and
rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
patentability of any grouped claim separately." 37 C.F.R. § 41.37(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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Appellants contend:
In summary, the pending claims are patent eligible as
they, among other things, compare various data and merge
supplemental credit data and conventional credit data and
produce an enhanced credit report. As described below in more
detail, the claimed invention solves a business challenge and is
applicable "to a new and useful end," thereby making it eligible
for patent protection. As emphasized in Alice that "the claims in
Diehr were patent eligible because they improved an existing
technological process,"[ ] the pending claims are also patent
eligible because they improve the process of merging gathered
information to produce an enhanced credit report to solve the
business challenge of allowing lenders the possibility of having
a tool that allows them to proactively determine whether to
extend credit based on additional information that is
unavailable from conventional credit reports.
Br. 5 (footnote omitted).
Appellants further contend, "independent Claims 1 and 13 are directed
to (Step 1) a process and a machine; (Step 2A) are not directed to a judicial
exception; and (Step 2B) do recite additional elements that amount to
significantly more than a judicial exception even if the claims were found to
be directed to a judicial exception." Br, 7.
We agree with Appellants' arguments that the claims are directed to a
statutory class of invention, i.e., a process (claim l’s method) or a machine
(claim 13’s system). Br. 7.
However, we disagree with Appellants contentions (infra) that (a) the
claims are not directed to a judicial exception, i.e., an abstract idea (Alice
Step 1); and (b) the claims recite significantly more than an abstract idea
(Alice Step 2).
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(a) Alice Step 1—The Claims are Directed to an Abstract Idea
Appellants argue, because claim 1 is directed to a method for
generating an enhanced credit report that includes various features and
incorporates various types of data from disparate sources, "the present
claims cannot be reasonably considered as being directed, on the whole, to
'fundamental economic practices' or any one of the other identified
categories." Br. 8. "While an enhanced credit report is produced, the
claimed invention is not solely directed to this feature of generating a report.
It is respectfully submitted that comparing the consumer data to at least one
of consumer property ownership information, mortgage obligation records,
.... is not an abstract idea and has not been identified as being an abstract
ideal Br. 9.
Appellants generally allege, "[t]he present claims are not directed to a
judicial exception, such as an abstract idea." Br. 7. Appellants specifically
contend the USPTO's contemporaneous § 101 Examination Guidelines
stated "a claimed concept is not identified as an abstract idea unless it is
similar to at least one concept that the courts have identified as an abstract
idea . . . , [and i]n the present case, the claimed features are not concepts that
have been explicitly identified as abstract ideas." Br. 7 (emphasis in
original). Appellants further allege, "none of these [claimed] features are
considered 'fundamental economic practices,' as the Office appears to
assert." Id.
"Whether a patent claim is drawn to patent-eligible subject matter is
an issue of law that we review de novo." SiRF Tech., Inc. v. Int'l Trade
Comm'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010) (citation omitted).
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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 Bank Infl, 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
"buildin[g] block[s] of human ingenuity" and those that "integrate the
building blocks into something more." Alice, 134 S. Ct. at 2354 (citation
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
2357 (quoting Mayo, 566 U.S. at 72, 79). Although 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)(citations omitted). We note the Supreme Court "has not
established a definitive rule to determine what constitutes an 'abstract idea'"
for the purposes of step one. Enflsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S. Ct. at 2357).
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However, 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.") (citation omitted).
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] method for
generating an enhanced credit report." Claim 1 (preamble). The limitations
of claim 1 also require the steps of:
(1) "receiving ... a credit request for an enhanced credit
report;"
(2) "extracting . . . data that is associated with the identifying
data contained in the credit request;"
(3) "storing . . . data within or as a section of a conventional
credit report;"
(4) "querying ... for supplemental. . . data . . . associated with
the consumer data and not included within ... a conventional
credit report;"
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(5) "[the querying] including comparing . . . data to . . .
information [from a variety of sources];"
(6) "merging ... the supplemental. . . data and at least a portion
of. . . information included in the conventional credit report"
and
(7) "producing a [different] report that contains the
supplemental. . . data, and an enhanced credit score."
In response to Appellants' arguments, the Examiner concludes the
claims are abstract, and thus patent-ineligible:
In this case the claims are directed to a concept of
generating a credit report. Generating a credit report (also
termed credit worthiness) is old established economic practice
and long prevalent in economy. For example, for decades,
merchants and credit issuers have relied on credit reports issued
by various agencies to determine a consumer's eligibility for
extending credit for purchase of major items such as
automobiles, homes and like.
Final Act. 3. Further, "[Appellants'] argument is not persuasive because
generating an enhanced credit report is a concept that inherently relates to
economy and commerce, such as agreements between the enhance[d] credit
[ ] report provider and a consumer in the form of a contract, legal obligations
and business relations." Ans. 2.
Additionally, the claims describe an idea standing alone such as
a uninstantiated concept, plan or scheme, as well as a mental
process that can be performed by a human using a pen and a
paper. For example, the limitations, extracting consumer data,
storing consumer data, querying another data repository for
supplemental credit data and merging the supplemental credit
data and at least a portion of credit information are concepts
relating processes of obtaining, storing, organizing and
transmitting information. Such concepts are found to be abstract
ideas in Cyberfone, Content Extraction and Cybersource.
Ans. 3 (italics added).
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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., generating a credit report, which "is old established economic
practice . . . long prevalent in [the] economy." Final Act. 3.
As the Specification itself observes, "[t]he present disclosure relates to
systems, methods and computer program product for developing and
reporting enhanced credit reports. The enhanced credit reports contain
supplemental material above and beyond that disclosed in credit reports
provided by various credit bureaus." Spec. 1,11. 15-18.5
In agreement with the Examiner, we find this type of activity, i.e.,
collecting and organizing credit-related and other supplemental information
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could 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,
5 See also, Spec. 33 ("Abstract"):
A system, method and computer program product cooperate to
gather and report information relevant to a consumer's credit
that is not typically reported on a credit report from one of the
major credit bureaus. By accessing other databases regarding
borrower specific financially relevant information (e.g.,
judgments, liens, rental payment compliance, alternative credit
transactions, etc.), enhanced data is available for making better
lending decisions. Removal of transactions that would prevent
compliance with the Fair Credit Reporting Act is performed, as
well as removal of transactions that are erroneous for a
particular consumer or include information that are not
associated with that particular consumer.
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even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson.").6
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, although the Supreme
Court has altered 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 this regard, the claims are similar to claims our reviewing court has
found patent ineligible in Elec. Power Grp., 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").
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than collecting, storing, comparing, and transmitting
data, without any particular inventive technology — an abstract idea. See
Elec. Power Grp., 830 F.3d at 1354. We further refer to Content Extraction,
where the Federal Circuit has provided additional guidance on the issue of
statutory subject matter by holding claims to collecting data, recognizing
certain data within the collected data set, and storing that recognized data in
memory were directed to an abstract idea and therefore unpatentable under
6 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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§ 101. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A.,
776 F.3d 1343 (Fed. Cir. 2014).
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner’s conclusion the claims include an abstract idea.
(b) Alice Step 2—The Claims do not Recite Significantly More than the
Abstract Idea
Appellants also argue they have solved a business need for enhanced
credit reports by "populating standard] . . . credit reports with supplemental
information that might predict credit risk." Br. 10. Appellants make
additional arguments the Examiner erred, citing limitations in claim 1 that
merely compare and merge data, and which purportedly provides a
technological solution. Br. 11 et seq. Additionally, throughout the Brief,
Appellants allege "[t]he present claims recite features that are not merely
generic" (Br. 14), and go on to quote claim l’s limitations, although
contending the USPTO's Examinations Guidelines and July 2015 Update do
not mention such limitations as being drawn to an abstract idea.7
Appellants further contend:
Thus, the fact that there are no prior art rejections against
the claims, i.e. that the claims recite elements or functions that
7 Appellants present various arguments based on USPTO examination
guidelines and updates. Br. 5 et seq. We have considered these guidelines,
which are based on controlling case law and USPTO policy at the time the
guidelines were issued. However, we note the PTAB applies relevant U.S.
Supreme Court and Federal Circuit case law to the facts of each patent
application on appeal, and does not rely on guidelines, intended to train
Patent Examiners, as controlling legal authority.
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are beyond those recognized in the art, is evidence[8] that the
claims recite features that amount to significantly more than
merely an abstract idea. In other words, the technological
advancements of the claims over the conventional methods and
systems corroborate the notion that the claims amount to
significantly more than merely an abstract idea.
Br. 16.
The Examiner finds:
Applicant's argument that merging supplemental credit data
with conventional credit report is similar to an e-commerce
outsourcing system generating a composite web page [DDR v.
Hotels.com . . .] is not persuasive because whereas DDR
addressed the problem rooted in computer technology, the
instant claims do not present such inventive technological
solution.
Final Act. 4. Further in this regard, the Examiner finds:
First, it is noted that all limitations are implemented on a
generic computer [e.g. system claim 1 recites the limitations
implemented on a "processing circuitry" which acts as a
generic computer] in a generic manner which are well-
understood, routine, and conventional activities previously
known to the industry. For example, receiving data, extracting
data, storing data, querying a data repository and merging two
sets of data are all not only well-understood, routine, and
conventional limitations implemented on generic computer but
also falls into computer functions that courts have recognized
to be well-understood, routine and conventional, e.g. receiving,
8 The Supreme Court guides: "[t]he ‘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 U.S. 175, 188—
89 (1981). Our reviewing court further indicates that "even assuming" that a
particular claimed feature was novel does not "avoid the problem of
abstractness." Affinity Tabs of Texas, EEC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016).
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processing and storing data [Alice Corp.] as well as mental
tasks that are automated or computer implemented [Benson,
Bancorp, and CyberSource].
Ans. 4-5.
We agree with the Examiner because "the use of generic computer
elements like a microprocessor or user interface do not alone transform an
otherwise abstract idea into patent-eligible subject matter." FairWarning IP,
LLCv. Iatric Sys. Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDR
Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)).
Therefore, based upon the record before us, we are not persuaded of
error in the Examiner's conclusion that claim 1 is drawn to patent-ineligible
subject matter under § 101. Therefore, we sustain the Examiner's § 101
rejection of independent claim 1, and grouped claims 8-13, and 20-24,
which fall therewith. See Claim Grouping, supra.
CONCEUSION
The Examiner did not err with respect to the rejection of claims 1,
8-13, and 20-24 under 35 U.S.C. § 101, and we sustain the rejection.
DECISION
We affirm the Examiner's decision rejecting claims 1, 8-13,
and 20-24.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
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