Ex Parte Sharma et alDownload PDFPatent Trial and Appeal BoardMay 31, 201711520351 (P.T.A.B. May. 31, 2017) Copy Citation 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. 11/520,351 09/12/2006 Abhinay Sharma 16113-155001/GP-909-01-US 8794 26192 7590 06/02/2017 FISH & RICHARDSON P.C. PO BOX 1022 MINNEAPOLIS, MN 55440-1022 EXAMINER BROWN, ALVIN L ART UNIT PAPER NUMBER 3682 NOTIFICATION DATE DELIVERY MODE 06/02/2017 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): PATDOCTC@fr.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ABHINAY SHARMA and KAI CHEN Appeal 2015-001229 Application 11/520,351 Technology Center 3600 Before ANTON W. FETTING, NINA L. MEDLOCK, and BRADLEY B. BAYAT, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 Abhinay Sharma and Kai Chen (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1—9, 12—17, and 20-22, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). 1 Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed July 25, 2014) and Reply Brief (“Reply Br.,” filed October 29, 2014), and the Examiner’s Answer (“Ans.,” mailed September 3, 2014), and Final Action (“Final Act.,” mailed January 27, 2014). Appeal 2015-001229 Application 11/520,351 The Appellants invented a secure conversion tracking method. Specification para. 9. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A secure conversion tracking method, comprising: [1] receiving a conversion notification, the conversion notification including a unique identifier generated by an advertiser in response to a conversion action; [2] comparing, by one or more processors, the unique identifier to a set of unique identifiers that were received with previous conversion notifications; and [3] determining, by one or more processors, whether the conversion notification is valid based on the comparison, the conversion notification being valid when the unique identifier does not match any identifiers in the set of the unique identifiers, and the conversion notification being invalid when the unique identifier matches an identifier in the set of unique identifiers, where the method is performed by one or more processors. 2 Appeal 2015-001229 Application 11/520,351 The Examiner relies upon the following prior art: Dake US 6,928,426 B2 Aug. 9, 2005 Nov. 16, 2006 Oct. 16, 2008 May 31,2012 Brooks US 2006/0259468 A1 Collins US 2008/0255915 A1 Broman US 2012/0134478 A1 Claims 1—3, 12—14, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Collins and Broman. Claims 4—6, 8, 9, 15—17, 21, and 22 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Collins, Broman, and Dake. Claim 7 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Collins, Broman, Dake, and Brooks. Claims 1—9, 12—17, and 20-22 stand rejected under 35 U.S.C. § 101 as directed to non—statutory subject matter. The issues of obviousness turn primarily on whether Broman shows the need for fraud detection and the generic approach of testing whether a given customer had a history of fraud by comparing a customer attribute to those of known fraud practitioners, and whether doing so by generating and storing such attributes without submitting them was known. The issues of statutory subject matter turn primarily on whether generic fraud protection by comparing attributes is more than abstract conceptual advice. ISSUES 3 Appeal 2015-001229 Application 11/520,351 FACTS PERTINENT TO THE ISSUES The following enumerated Findings of Fact (FF) are believed to be supported by a preponderance of the evidence. Facts Related to Claim Construction 01. A “conversion” is said to occur when the user performs a conversion action at the advertiser’s website, such as purchase a product, create a new account, provide information, etc. Spec, para. 3. Facts Related to the Prior Art Collins 02. Collins is directed to advertising campaign management and optimization. Collins para. 3. 03. To facilitate tracking and collection of ad performance data from the Web properties, Collins maintains custom tags, program code, navigation code, etc. A tag may comprise a piece of code that is created by the system and placed on relevant webpages of a given website to allow automatic tracking and collection of data indicative of a customer session on the advertiser website. Collins para. 49. 04. A conversion counter is the simplest analytics data collection technique available. With conversion counter analytics, the advertiser places a tag on pages where revenue is generated. This data collection mechanism generates enough data to provide optimization on creative weighting. It should be further noted that 4 Appeal 2015-001229 Application 11/520,351 in one embodiment a direct accreditation method may be applied to the conversion counter. In the conversion counter approach, visitor state may be stored on the client device, e.g., as a client side cookie. Alternatively, the conversion counter approach may implement server-side storage of visitor state, which allows for improved performance and scalability at the cost of additional storage in a given pod. In another embodiment, a sampling method is utilized whereby only a random number of unique visitors, for example, 10 percent, are tracked, reducing data collection and storage requirements. Collins para. 104. Broman 05. Broman is directed to performing a one-to-many comparison of voice prints to determine if a particular caller voice print matches any one of many known voice prints in order to perform an action related to a financial transaction account. Broman para. 2. 06. Aside from credit card companies, many other entities receive calls from customers and desire a way to verify the true identity of the callers. This verification can be useful, for example, in determining whether to execute a particular transaction requested by a caller. Accordingly, a need exists for a more reliable way to minimize fraud in telephonic transactions or other transactions involving oral communications, or to screen callers for other purposes during those transactions. Broman para. 6. 07. A caller’s voice print represents an electronic recording of a caller's voice, and the known voice prints represent electronic 5 Appeal 2015-001229 Application 11/520,351 recordings of persons having a particular known characteristic. Bromanpara. 15. 08. Broman’s server compares the customer’s voice print with multiple known voice prints to determine any substantial matches, meaning that the customer’s voice print and one of the known voice prints are likely from the same person. The identification of any matches can be used for a variety of purposes, such as determining whether to authorize a transaction requested by the customer. By comparing the customer’s voice print with the multiple known voice prints, associated with persons having attempted fraudulent transactions, the system can determine whether this customer is likely attempting to interact with another person’s credit card account based upon any matches with the known voice prints. Bromanpara. 17. 09. Broman’s server can optionally use the results of processing to determine whether to authorize particular transactions for customers relating to the recorded voice prints in the processed files. For example, it can automatically and programmatically deny the requested transaction if any matches are found for the caller voice print in question. Broman para. 50. Dake 10. Dake is directed to improving file management within a computer and communication system. Dake 1:6—9. 11. A file management system typically comprises a client and a server. The client typically sends a file request to a server. The 6 Appeal 2015-001229 Application 11/520,351 server associates a unique identifier with the file name, identifies location information for the file, and stores it with the unique identifier. The server then sends the unique identifier back to the client. The client receives the unique identifier and uses it in lieu of the file name for subsequent file requests. A unique identifier is assigned to a file name to reduce bandwidth demands on the interconnect systems. Because a file name may comprise many characters, the interconnect system may have to transport a relatively large number of bits. To reduce this problem, the server may assign a unique identifier to each file name and send the unique identifier to the client. The unique identifier is typically smaller in length than the file name. For example, a unique identifier may have a length of 32 or 64 bits. The client may then use the unique identifier for subsequent file requests. Dake 2:15— 45. ANALYSIS Claims 1—3, 12—14, and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over Collins and Broman We adopt the Examiner’s findings and analysis from the Final Action 2— 4 and the Answer 7—8 and reach similar legal conclusions. In particular, we are not persuaded by Appellants’ argument that Broman fails to describe a conversion notification generated by an advertiser in response to a conversion action. App. Br. 6. Collins describes financial transactions in the form of advertising conversions into sales. Broman shows that it was 7 Appeal 2015-001229 Application 11/520,351 known that various financial transactions were susceptible to fraud and describes a generic manner of detecting such fraud by comparing some attribute, in the case of Broman, a voice print, of a customer to the same attribute from known fraudulent parties. Broman, thus, describes a transaction notification to a server generated by a merchant in response to a transaction. Thus, Broman shows the need for fraud detection and the generic approach of testing whether a given customer had a history of fraud by comparing a customer attribute to those of known fraud practitioners. It is not necessary for Broman to describe the specific context in Collins, as Broman describes a generic approach that one of ordinary skill would have immediately seen to be applicable to sales in Collins. The remaining claims are argued on the basis of claim 1. Claims 4—6, 8, 9, 15—17, 21, and 22 rejected under 35 U.S.C. § 103(a) as unpatentable over Collins, Broman, and Dake Claim 5 recites [] automatically generating a unique identifier; generating and storing a file having the automatically generated unique identifier as a filename in a web server directory of a website, the stored file being accessible to a verification process by the filename; [] providing, by one or more processors, the automatically generated unique identifier and conversion notification to a second device to initiate the verification process to confirm the conversion action based on a determination that the automatically generated unique identifier was previously 8 Appeal 2015-001229 Application 11/520,351 generated and stored, but not previously submitted with a conversion notification. Claim 5. We are persuaded by Appellants’ argument that Broman does not suggest “that a voice print could be ‘previously generated and stored, but not previously submitted,’ as recited by claim 5.” App. Br. 6. The Examiner makes no findings that this limitation is described, but only that some other unique identifier, not acoustically generated is used. Claims 6, 8, and 9 depend from claim 5. Claims 16, 17, 21, and 22 have limitations similar to claim 5. The remaining claims 4 and 15 are not separately argued. Claim 7 rejected under 35 U.S.C. § 103(a) as unpatentable over Collins, Broman, Dake, and Brooks This claim depends from claim 5. Claims 1—9, 12—17, and 20—22 rejected under 35 U.S.C. § 101 as directed to non—statutory subject matter The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, [] determine whether the claims at issue are directed to one of those patent-ineligible concepts. [] If so, we then ask, “[w]hat else is there in the claims before us?” [] To answer that question, [] consider the elements of each claim both individually and “as an ordered combination” to determine 9 Appeal 2015-001229 Application 11/520,351 whether the additional elements “transform the nature of the claim” into a patent-eligible application. [The Court] 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 amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice Corp., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. Although the Court in Alice made a direct finding as to what the claims were directed to, we find that this case’s claims themselves and the Specification provide enough information to inform one as to what they are directed to. Appellants argue claim 1 alone. Appellants thus waive arguments as to the remaining claims. The preamble to claim 1 recites that it is a secure conversion tracking method. The three steps in claim 1 result in a Boolean valid/invalid determination. The Specification, at paragraphs 4 and 5, recites that the invention relates to solving conversion fraud. Thus, all this evidence shows that claim 1 is directed to determining whether a transaction resulting from an ad (a conversion) is valid, i.e., fraud detection. The Examiner more broadly finds that the claims are directed to evaluating an advertising campaign and that is a method of organizing human activity and a fundamental economic practice. Ans. 5. 10 Appeal 2015-001229 Application 11/520,351 It follows from prior Supreme Court cases, and Bilski in particular, that the claims at issue here are directed to an abstract idea. Like the risk hedging in Bilski, the concept of fraud detection is a fundamental business practice long prevalent in our system of commerce. The use of fraud detection is also a building block of a market economy. Thus, fraud detection, like hedging, is an “abstract idea” beyond the scope of § 101. See Alice 134 S. Ct. at 2356. As in Alice, we need not labor to delimit the precise contours of the “abstract ideas” category in this case. It is enough to recognize that there is no meaningful distinction in the level of abstraction between the concept of risk hedging in Bilski and the concept of fraud detection at issue here. Both are squarely within the realm of “abstract ideas” as the Court has used that term. See Alice 134 S. Ct. at 2357. We conclude that the claims at issue are directed to a patent-ineligible concept. The introduction of a computer into the claims does not alter the analysis at Mayo step two. the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement[t]” an abstract idea “on ... a computer,” that addition cannot impart patent eligibility. This conclusion accords with the pre-emption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, [] wholly generic computer implementation is not generally the sort of “additional 11 Appeal 2015-001229 Application 11/520,351 featur[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice 134 S. Ct. at 2358 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer.” Id. at 2359. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer to received data, compare parameters, and determine matching values amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are well- understood, routine, conventional activities previously known to the industry. In short, each step does no more than require a generic computer to perform generic computer functions. The result of the claims is a Boolean determination, i.e., a mathematical result of true or false as to validity. The claims do no more than produce the result of a mathematical algorithm, the epitome of an abstract idea. Considered as an ordered combination, the computer components of Appellants’ method add nothing that is not already present when the steps are considered separately. Viewed as a whole, Appellants’ method claims simply recite the concept of fraud detection as performed by a generic computer. The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of fraud detection using some unspecified, generic computer. Under our 12 Appeal 2015-001229 Application 11/520,351 precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice 134 S. Ct. at 2360. As to the system claims, they are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “wam[ed] . . . against” interpreting § 101 “in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” Id. at 2360. We are not persuaded by Appellants’ argument that even if the claims involve the abstract idea ... as asserted by the Examiner (which the Applicant does not concede), the pending claims do not pre-empt all applications of the asserted Abstract idea. Rather, the pending claims recite specific combinations of elements. Reply Br. 1. Appellants essentially argue that an abstract idea, once articulated, loses its abstraction because the words used to articulate the idea are specific. This is not the case. Communicating an abstract concept does not make the concept non-abstract. We are not persuaded by Appellants’ argument that [t]his combination of features is directed to a real-world implementation that improves the ability of a computer system to provide “secure conversion tracking” that distinguishes between valid and invalid conversion notifications, without requiring the computer system to maintain secret keys, perform re-keying, or perform key-versioning. Id. Appellants essentially argue that because an abstract concept improves functioning, it is no longer abstract. But all abstract advice improves things 13 Appeal 2015-001229 Application 11/520,351 in its applied context. Appellants are arguing that applying this advice in a particular context removes the abstract nature. That the claims do not pre empt all forms of the abstraction or may be limited to the abstract idea in the e-commerce setting do not make them any less abstract. See OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360—1361 (2015). CONCLUSIONS OF LAW The rejection of claims 1—3, 12—14, and 20 under 35 U.S.C. § 103(a) as unpatentable over Collins and Broman is proper. The rejection of claims 5, 6, 8, 9, 16, 17, 21, and 22 under 35 U.S.C. § 103(a) as unpatentable over Collins, Broman, and Dake is improper. The rejection of claims 4 and 15 under 35 U.S.C. § 103(a) as unpatentable over Collins, Broman, and Dake is proper. The rejection of claim 7 under 35 U.S.C. § 103(a) as unpatentable over Collins, Broman, Dake, and Brooks is improper. The rejection of claims 1—9, 12—17, and 20—22 under 35 U.S.C. § 101 as directed to non—statutory subject matter is proper. DECISION The decision to reject claims 1—9, 12—17, and 20-22 is affirmed. 14 Appeal 2015-001229 Application 11/520,351 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv) (2011). AFFIRMED 15 Copy with citationCopy as parenthetical citation