Ex Parte Rothschild

Patent Trials and Appeals Board

Mar 29, 2019

13340823 - (D) (P.T.A.B. Mar. 29, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/340,823 12/30/2011
22045 7590 04/02/2019
Brooks Kushman
1000 Town Center
22nd Floor
SOUTHFIELD, MI 48075
FIRST NAMED INVENTOR
Walter J. Rothschild
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.
ROTWOlOlPUS 3703
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
04/02/2019 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):
docketing@brookskushman.com
kdilucia@brookskushman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WALTER J. ROTHSCHILD
Appeal2018-000802
Application 13/340,823 1
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOW ARD, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-6, 8-11, and 13-17, which constitute all of
the claims pending in this application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellant identifies himself, Walter J. Rothschild, as the real party in
interest. App. Br. 1.
Appeal2018-000802
Application 13/340,823
THE INVENTION
The disclosed and claimed invention is directed to "consumer-driven
credit information control methods, systems and storage media for storing
sets of computer instructions which effectuate the methods." Spec. 1. 2
Claim 1, reproduced below with the disputed limitations italicized, is
illustrative of the claimed subject matter:
1. A consumer-generated, credit reporting method
comprising the steps of:
receiving, by a computer, a selection signal from a
consumer to at least partially establish a direct relationship
between the consumer and a credit reporting agency (CRA);
receiving, from the consumer, personal data of the
consumer, wherein the personal data includes at least one of bank
loan transaction records, utility payment records, credit card
records, name, address, and employer, wherein the consumer is
a source of the personal data;
storing the personal data in a database of the CRA;
receiving, by the computer, a data request signal from the
consumer which represents a request by the consumer to access
the personal data from the database;
transmitting at least a portion of the accessed personal data
from the CRA to the consumer based on the data request signal
via the computer;
receiving, by the computer, a data forward request signal
from the consumer which represents a request by the consumer
to forward the personal data to the CRA and include the personal
data;
2 We refer to the Specification filed Dec. 30, 2011 ("Spec."); Final Office
Action mailed Dec. 12, 2016 ("Final Act."); Appeal Brief filed June 12,
2017 ("App. Br."); Examiner's Answer mailed Aug. 28, 2017 ("Ans."); and
the Reply Brief filed Oct. 30, 2017 ("Reply Br.").
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transmitting the personal data based on the data forward
request signal to the CRA;
creating a new credit report of the consumer based on the
personal data received from the consumer; and
requesting an offer of credit from a lender in response to
authorization from the consumer, wherein the request includes
the new credit report of the consumer.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Hillestad et al.
Hudock
Guy et al.
US 2003/0208412 Al
US 2004/0111359 Al
US 2005/0154664 Al
REJECTIONS
Nov. 6, 2003
June 10, 2004
July 14, 2005
Claims 1, 3---6, 8-11, and 13-17 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.
Claims 1, 3---6, 8-11, and 13-15 stand rejected under pre-AIA
35 U.S.C. § I03(a) as being unpatentable over Guy and Hudock.
Claims 16 and 17 stand rejected under pre-AIA 35 U.S.C. § I03(a) as
unpatentable over Guy, Hudock, and Hillestad.
ANALYSIS
Section 101 Re} ection
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites "[ w ]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and useful
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improvement thereof, may obtain a patent therefor, subject to the conditions
and requirements of this title."
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573
U.S. 208, 215-17 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71 (2012). Although an abstract idea, itself, is patent-
ineligible, an application of the abstract idea may be patent-eligible. Alice,
573 U.S. at 217. Thus, we must consider "the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Id. (citing Mayo, 566 U.S. at 79, 78). The claim must contain
elements or a combination of elements that are "sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[abstract idea] itself." Id. ( citing Mayo, 566 U.S. at 72-73).
The Supreme Court set forth a two-part "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 217.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo, 566 U.S. at 75-
77]. If so, we then ask, "[ w ]hat else is there in the claims before
us?" Id. ... To answer that question, we consider the elements
of each claim both individually and "as an ordered combination"
to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application. Id. [at 79,
77-78]. We have described step two of this analysis as a search
for an "'inventive concept"'-i.e., an element or combination of
elements that is "sufficient to ensure that the patent in practice
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amounts to significantly more than a patent upon the [ineligible
concept] itself." Id. [at 72-73].
Id.
"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 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016). There is no definitive rule to determine what constitutes an
"abstract idea." Rather, the Federal Circuit has explained that "both [it] and
the Supreme Court have found it sufficient to compare claims at issue to
those claims already found to be directed to an abstract idea in previous
cases." Enfish, 822 F.3d at 1334; see also Amdocs (Isr.) Ltd. v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (explaining that, in
determining whether claims are patent-ineligible under§ 101, "the
decisional mechanism courts now apply is to examine earlier cases in which
a similar or parallel descriptive nature can be seen-what prior cases were
about, and which way they were decided").
Concepts determined to be abstract ideas, and thus patent-ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219-20; Bilski v. Kappas, 561 U.S.
593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584,
594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63,
69 (1972)). Concepts determined to be patent-eligible include physical and
chemical processes, such as "molding rubber products" (Diamond v. Diehr,
450 U.S. 17 5, 191 ( 1981) ); "tanning, dyeing, making water-proof cloth,
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vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v.
Burden, 56 U.S. 252, 267---68 (1853))); and manufacturing flour (Benson,
409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that "[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step of the Alice and Mayo framework, where "we must 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." Alice, 573 U.S. at 221 ( quotation marks omitted). "A
claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77).
"[M]erely requir[ing] generic computer implementation[] fail[ s] to transform
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that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
("Memorandum"). Under that guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure ("MPEP") § 2106.05(a}-(c), (e}-(h)).
See Memorandum at 52, 55-56. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not "well-understood, routine, conventional" in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See id. at 56.
Furthermore, the Memorandum "extracts and synthesizes key
concepts identified by the courts as abstract ideas to explain that the abstract
idea exception includes the following groupings of subject matter, when
recited as such in a claim limitation(s) (that is, when recited on their own or
per se)":
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(a) Mathematical concepts-mathematical
mathematical formulas or equations,
calculations;
relationships,
mathematical
(b) Certain methods of orgamzmg human activity-
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
( c) Mental processes----concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Id. at 52 (footnotes omitted).
_USPTO __ Step__2A, .. Prong_1_
The Examiner concludes the claims are "directed to an abstract idea of
allowing a consumer to control credit information," which, according to the
Examiner, is "similar to an idea of itself found by the courts to be abstract
ideas ( e.g., using categories to organize, store and transmit information in
Cyberfone)." Ans. 3 (citing Cyberfone Sys., LLC v. CNN Interactive Grp.,
558 F. App'x 988 (Fed. Cir. 2014)); see Ans. 8-9. According to the
Examiner, the claims are also similar to those in Electric Power Group and
describe "collecting information, analyzing it, and displaying certain results
of the collection and analysis." Ans. 9 ( citing Elec. Power Group, LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)).
Appellant contends the "alleged abstract idea, 'allowing a consumer to
control credit information' is an abstraction that is overbroad and untethered
from the language of the claim." App. Br. 10. Specifically, Appellant
argues the claims "specifically stray from merely collecting, separating, and
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Application 13/340,823
transmitting data," and instead "include steps that are affirmatively not well-
established," such as "us[ing] the received datafrom the consumers
themselves to create a new credit reporting system and credit report product
for the consumer." App. Br. 10.
erred.
We are not persuaded by Appellant's arguments that the Examiner
Representative claim I-with emphasis added-is reproduced below:
1. A consumer-generated, credit reporting method
comprising the steps of:
receiving, by a computer, a selection signal from a
consumer to at least partially establish a direct relationship
between the consumer and a credit reporting agency (CRA);
receiving, from the consumer, personal data of the
consumer, wherein the personal data includes at least one of
bank loan transaction records, utility payment records, credit
card records, name, address, and employer, wherein the
consumer is a source of the personal data;
storing the personal data in a database of the CRA;
receiving, by the computer, a data request signal from the
consumer which represents a request by the consumer to access
the personal data from the database;
transmitting at least a portion of the accessed personal
data from the CRA to the consumer based on the data request
signal via the computer;
receiving, by the computer, a data forward request signal
from the consumer which represents a request by the consumer
to forward the personal data to the CRA and include the personal
data;
transmitting the personal data based on the data forward
request signal to the CRA;
creating a new credit report of the consumer based on the
personal data received from the consumer; and
requesting an offer of credit from a lender in response to
authorization from the consumer, wherein the request includes
the new credit report of the consumer.
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The emphasized limitations are steps that can be performed by a
human, either mentally or with the use of pen and paper. Specifically, the
claim limitations identified above are directed to (i) receiving, transmitting,
and storing data and requests and (ii) the creation of a credit report by a
consumer. Each of those steps, both individually and as a combination, can
be performed by a human, either mentally or with the aid of paper and
pencil, which is similar to the claims found patent-ineligible as mental
processes in CyberSource and Intellectual Ventures. See CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("Thus, claim
3 's steps can all be performed in the human mind. Such a method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101. Methods which can be performed entirely in the
human mind are unpatentable not because there is anything wrong with
claiming mental method steps as part of a process containing non-mental
steps, but rather because computational methods which can be performed
entirely in the human mind are the types of methods that embody the 'basic
tools of scientific and technological work' that are free to all men and
reserved exclusively to none.") (quoting Benson, 409 U.S. at 67) (footnote
omitted)); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) ("[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.");
Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)
("Courts have examined claims that required the use of a computer and still
found that the underlying, patent-ineligible invention could be performed via
pen and paper or in a person's mind."). Accordingly, we conclude the claim
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recites a method that can be performed in the human mind, which is a mental
processes identified in the Memorandum, and thus an abstract idea.
Additionally, the same limitations identified recite the steps that
would be followed to request and then receive a new credit report.
Specifically, those claim limitations are directed to credit reporting (i.e.,
using personal data from the consumer to generate credit reports and
determine to request an offer of credit from a lender), which is a
fundamental economic practice. Thus, like the concept of the intermediated
settlement in Alice, and the concept of hedging in Bilski, the concept of
creating a credit report as recited in the claims "is a fundamental economic
practice long prevalent in our system of commerce." See Alice, 573 U.S. at
216 ( citations and internal quotation marks omitted); see also Clarilogic,
Inc. v. FormFree Holdings Corp., No. 15-cv-41, 2016 WL 3247890, at *2
(S.D. Cal. Mar. 4, 2016), aff'd 681 F. App'x 950, 954 (Fed. Cir. 2017)
(holding that a claim directed to "a method of financial risk assessment" is
similar to the risk hedging method found to be an abstract fundamental
business practice in Bilksi). Moreover, the prior art cited in the section 103
rejection makes it clear that "[c]redit reporting is a long established practice
of determining a consumer's credit worthiness." Hudock ,r 3. Accordingly,
we conclude that the claims recite a fundamental economic practice, which
is one of the certain methods of organizing human activity identified in the
Memorandum, and thus an abstract idea.
U/5PTO Step 2A, Prong 2
In determining whether claim 1 is "directed to" the identified abstract
ideas, we next consider whether claim 1 recites additional elements that
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integrate the judicial exception into a practical application. For the reasons
set forth below, we discern no additional element ( or combination of
elements) recited in claim 1 that integrates the judicial exception into a
practical application. See Memorandum at 54--55.
According to the Examiner, the claims "focus on [the] abstract idea of
allowing a consumer to control their own credit information using [the]
computer as a tool instead of improving [the] computer as a tool." Ans. 10;
see also MPEP 2106.05(a) (recognizing that improvements to the function of
a computer is patent eligible). According to the Examiner, the claims are
similar to those in Alice, and "the computer is used in the instant claims as a
tool to perform an existing process of allowing a consumer to control their
own credit information." Ans. 9-10.
Appellant does not rebut the Examiner's determination. Specifically,
Appellant does not argue the claimed additional elements (i.e., "system,"
"computer," "database of the CRA," "signal") provide any improvement to
computer function. 3
Claim 1 does not constitute an improvement to computer technology;
rather, it merely adapts the abstract idea of credit reporting using consumer-
drive consumer data, which can be performed mentally or manually, to an
execution of steps performed by a computer. See Spec. 8, 11. 26-30 ("This
new method improves efficiency in the consumer credit markets by
facilitating better access and control of credit files by individuals, yielding
more accurate and timely data/information, more precise and rational risk
3 Appellant has not argued the claim is directed to a particular machine or
results in a transformation or reduction of a particular article to a different
state or thing. See MPEP 2016.05(b), (c); Memorandum at 54.
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management practices by lenders .... ").
Relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible. See Alice, 573
U.S. at 224 ("use of a computer to create electronic records, track multiple
transactions, and issue simultaneous instructions" is not an inventive
concept); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (a computer "employed only for its most
basic function ... does not impose meaningful limits on the scope of those
claims"); MPEP 2106.05([)(2) ("Use of a computer or other machinery in its
ordinary capacity for economic or other tasks ( e.g., to receive, store, or
transmit data) or simply adding a general purpose computer or computer
components after the fact to an abstract idea ( e.g., a fundamental economic
practice or mathematical equation) does not provide significantly more.").
Appellant further argues that the "steps of claim 1 would not 'tie up'
the general idea of 'allowing a consumer to control credit information."'
App. Br. 14. Although the extent of preemption is a consideration, the
absence of complete preemption is not dispositive. See, e.g., Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
("While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.");
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013)
("[T]he Supreme Court has stated that, even if a claim does not wholly pre-
empt an abstract idea, it still will not be limited meaningfully if it contains
only insignificant or token pre- or post-solution activity-such as identifying
a relevant audience, a category of use, field of use, or technological
environment.") (citations omitted), vacated and remanded, WildTangent,
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Inc. v. Ultramercial, LLC, 573 U.S. 942 (2014) (remanding for consideration
in light of Alice). Therefore, even if the claims does not preempt the abstract
idea, that alone is not enough to render the claims patent-eligible.
Accordingly, we are not persuaded of error in the Examiner's
determination that claim 1 is directed to an abstract idea, and we find the
claimed additional elements do not integrate the abstract idea into a practical
app li cation.
USPTO Step 2B
Turning to step 2 of the Alice/1\fayo framework, we look to whether
claim 1 (a) adds a specific limitation or combination of limitations that are
not well-understood, routine, conventional activity in the field, or (b) simply
appends well-understood, routine, conventional activities previously known
to the industry, specified at a high 1eve1 of generality, to the judicial
exception. 1\1emorandum at 56.
The Examiner determines that the additional element of the claim are
generic computer limitations which "are well-understood, routine, and
conventional elements that amount to no more than implementing the
abstract idea with a computerized system." Ans. 3. According to the
Examiner, the claims "merely amount to the application or instructions to
apply the abstract idea of allowing a consumer to control their own credit
information on a computer, and is considered to amount to nothing more
than requiring a generic computer system to merely carry out the abstract
idea itself." Ans. 11.
Appellant contends "the purported abstract idea of 'allowing the
consumer to control credit information' is not claimed," and rather "once
new personal information is transmitted by the consumer, a new credit
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report of the consumer is created," which is "entirely unconventional and is
lacking in the art." App. Br. 12. According to Appellant, the "claim
limitations transform the claim from being directed from merely 'organizing,
storing, and transmitting information' into 'something more' that deviates
from conventional practices." Reply Br. 2.
We are not persuaded by Appellant's argument that the Examiner
erred. As discussed above, claim 1 is directed to generating a credit report
and requesting an offer of credit from a lender, which can be performed
mentally or manually. Similarly, the additional elements in the claim
amount to no more than mere instructions to apply the abstract idea using
generic computer components, which is insufficient to provide an inventive
concept Specifically, the Specification describes the computer elements as
generic computer elements, including a "computer interface of a computer
(or other I/0 device)," and the communications network including "[a]ny
network ... such as a computer network like the Internet," and a "database
server" that stores data" with "[ d]ata and information ... communicated to
and from users through computer interfaces and other means." Spec. 11, 11.
13-23. Accordingly, we agree with the Examiner that the additional claim
limitations besides the abstract idea are well-understood, routine, and
conventional elements.
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than we11-
understood, routine, and conventional functions, such as receiving, storing,
and transmitting data, and using the data to create a report and make a
request See buyS:4FE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) ("That a computer receives and sends the information over a
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network-. -with no further specification-is not even arguably inventive"); In
re TL! Cmnmunications LLC Patent Litigation, 823 F.3d 607, 614 (Fed. Cir.
2016) ( server that receives data, extracts classification information from the
received data, and stores the digital images insufficient to add an inventive
concept); Alice, 573 U.S. at 225-26 (receiving, storing, sending information
over networks insufficient to add an inventive concept); CyberSource Corp.
v. Retail Decisions. Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (use of
Internet to verify credit-card transaction does not add enough to abstract idea
of verifying the transaction).
Further, Appellant's argument that the pending claims are patent
eligible because they are otherwise novel and non-obvious (see App. Br. 12-
13 (the claim is "entirely unconventional and is lacking in the art" and
provides "an atypical process"); Reply Br. 2) is not persuasive because it
improperly conflates the requirements for eligible subject matter(§ 101)
with the independent requirements of novelty(§ 102) and obviousness
(§ 103). Although the second step in the Alice framework is termed a search
for an "inventive concept," the analysis is not an evaluation of novelty or
non-obviousness. Alice, 573 U.S. at 217-18. A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. 66 at 78-79. Further, "under the Mayo/Alice framework, a
claim directed to a newly discovered law of nature ( or natural phenomenon
or abstract idea) cannot rely on the novelty of that discovery for the
inventive concept necessary for patent eligibility." Genetic Techs. Ltd. v.
Merial L.L.C., 818 F.3d 1369 (Fed. Cir. 2016).
Conclusion_ on _Section__} {)] __ Rejection
Accordingly, we sustain the Examiner's rejection of claim 1 as being
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directed to patent-ineligible subject matter, as well as independent claims 6
and 11 with commensurate limitations, and dependent claims 3-5, 8-10, and
13-17, not separately argued.
Section 103 Rejection
Claim 1 recites "creating a new credit report of the consumer based on
the personal data received from the consumer."
Appellant argues "Hudock does not teach or disclose creating a new
credit report of the consumer," and, instead, "is directed to 'correcting and
verifying' an existing credit report." App. Br. 15 (emphasis omitted) (citing
Hudock, Title, Abstract, ,r 39); see App. Br. 16. Appellant further contends
Guy does not teach creating a new credit report, and instead is directed to a
"credit report site," which is "not a CRA" and does not "revise and create
new credit reports, but rather to services that transmit already-existing credit
reports to the user." App. Br. 14--15 (citing Guy, Abstract).
Appellant's argument against Hudock separately from Guy does not
persuasively rebut the combination made by the Examiner. One cannot
show non-obviousness by attacking references individually, where the
rejections are based on combinations of references. In re Merck & Co., Inc.,
800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,425
(CCPA 1981).
Instead, we agree with the Examiner's finding that Guy teaches
receiving personal data of a consumer from the consumer, and Hudock
teaches creating a new credit report of the consumer based on the personal
data received from the consumer. Ans. 4 ( citing Guy ,r 42); Ans. 5 ( citing
Hudock ,r,r 38--40). According to the Examiner, Hudock "teaches that as
part of creating a credit report, consumer receives the credit report
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Application 13/340,823
information and can make corrections to the information," and "thus, shows
creating a new credit report of the consumer based on the personal data
received from the consumer." Ans. 13 (citing Hudock ,r,r 38-39). For
example, as cited by the Examiner (Ans. 5, 13), Hudock teaches "[t]he
TI CCI central processing unit uses the consumer's credit report information
and creates a credit report form 501." Hudock ,r 38 (emphasis added). Guy
teaches that "credit report site 30 queries the user as to the types of credit,
financial, and personal information he or she presently has accessible or
available (e.g., such as a credit card statement, auto loan coupon, etc.)."
Guy ,r 42 (emphasis added). In other words, Guy teaches receiving personal
data of the consumer from the consumer (i.e., "quer[ying] the user as to ...
personal information he or she presently has accessible or available") and
Hudock teaches creating a new credit report based on personal data (i.e.,
"us[ing] the consumer's credit report information [to] create[] a credit report
form"). See Guy ,r 42; Hudock ,r 38. Appellant has not persuasively argued
why Hudock's creating a credit report form from the consumer's credit
report information, combined with Guy's consumer personal data received
from the consumer, only teaches correcting and verifying an existing credit
report rather than the claimed "creating a new credit report of the consumer
based on the personal data from the consumer" as recited in claim 1.
Further, Appellant does not rebut the Examiner's finding that it would
have been obvious to combine Guy and Hudock "in order to provide for
credit verification and repair." Ans. 5-6; see Ans. 15 (citing Hudock ,r 4).
Specifically, according to the Examiner, "all the claimed elements were
known in the prior art," and "the elements in Hudock, with are combined
with the elements of Guy, remain the same after combining the elements of
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Application 13/340,823
Guy and Hudock" and "could have [been] combined ... as claimed by
known methods with no change in their respective functions," and "yielded
nothing more than predictable results to one of ordinary skill in the art at the
time of the invention." Ans. 15. Although Appellant argues the Examiner
has not provided any "clear articulation of the reasons why these features [ of
Guy and Hudock] would allegedly have been obvious" (App. Br. 17),
Appellant does not address the Examiner's findings regarding the reason to
combine the references. See Reply Br. 3--4.
Accordingly, we sustain the Examiner's rejection of claim 1, as well
as independent claims 6 and 11 with commensurate limitations, and
dependent claims 3-5, 8-10, and 13-17, not separately argued.
DECISION
We affirm the Examiner's§ 101 rejection of claims 1, 3---6, 8-11, and
13-17.
We affirm the Examiner's§ 103 rejections of claims 1, 3-6, 8-11, and
13-17.
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(±).
AFFIRMED
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