Ex Parte STELMAN

Patent Trial and Appeal Board

Nov 7, 2018

14245120 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/245,120 04/04/2014 V ADIM L STELMAN
919 7590 11/09/2018
PITNEY BOWES INC.
INTELLECTUAL PROPERTY & PROCUREMENT LAW DEPT.
37 EXECUTIVE DRIVE
MSC 01-152
DANBURY, CT 06810
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.
G-633 8241
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
iptl@pb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte V ADIM L STELMAN
Appeal2017-008813 1
Application 14/245, 1202
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1--4. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
Appellant's claims relate "generally to systems and methods for data
analysis, and more particularly to systems and methods that can match
1 Our decision references Appellant's Appeal Brief ("Br.," filed
June 1, 2016), the Examiner's Answer ("Ans.," mailed October 7, 2016),
and Final Office Action ("Final Act.," mailed January 25, 2016).
2 Appellant identifies Pitney Bowes Inc., as the real party in interest (Br. 2).
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Application 14/245,120
closed account records to active account records for use in analyzing multi-
account customer locations across several time periods" (Spec. ,r 1 ).
Claims 1 and 3 are the independent claims on appeal. Claim 1,
reproduced below with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
1. A method for a processing device to generate a file that
matches inactive accounts to active accounts included in address
matching result output files from different time periods, each
address matching result including at least one group containing
at least one entity, the method comprising:
[a] initializing, by the processing device, a new file to contain the
matched inactive and active accounts;
[b] evaluating, by the processing device, each group from each
address matching result output file to place entities in each
respective group into a new group in the new file by:
[ c] generating a new group identifier and adding the
entities to the new file under the new identifier if none of the
group's entities are already in the new file;
[ d] making no changes to the new file if all of the group's
entities are already in the new file;
[ e] adding those entities not in the new file to the new file
under a group identifier for those entities from the group that are
already in the new file if some but not all of the groups [sic]
entities are already in the new file and all of the entities already
in the new file are under the same group identifier;
[ fJ adding those entities not in the new file to the new file
under a group identifier already in the new file using
predetermined rules to select the group identifier if some but not
all of the group's entities are already in the new file under
multiple different group identifiers; and
[g] outputting, by the processing device, the new file.
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REJECTIONS
Claims 1--4 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1--4 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Rowland (US 2006/0004595 Al, pub. Jan. 5, 2006) and
Cohen (US 2010/0153383 Al, pub. June 17, 2010).
ANALYSIS
Patent ineligible subject matter
Independent claims 1 and 3, and dependent claims 2 and 4
Appellant argues claims 1--4 as a group (see Br. 4--8). We select
independent claim 1 as representative. Claims 2--4 stand or fall with
independent claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "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., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
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claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "individually and 'as an ordered
combination'" to determine whether there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, 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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to "the concept of matching data and
reconciling such data" which relates to "to a fundamental economic practice
and/or mathematical relationship/formula (i.e., computerized matching of
data (e.g., using addresses))" (Final Act. 2, 5). More particularly, the
Examiner determined that the claims are directed to "the abstract idea of
generating a file that matches inactive accounts to active accounts in address
matching result files from different time periods" (Ans. 2). The Examiner
also determined that the additional elements or combination of elements in
the claims, other than the abstract idea, amount to "no more than: (i) mere
instructions to implement the idea on a computer, and/or (ii) recitation of
generic computer structure that serves to perform generic computer
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functions that are well-understood, routine, and conventional activities
previously known to the pertinent industry"; and that viewed as a whole,
these additional claim elements do not provide meaningful limitations to
transform the abstract idea into a patent-eligible application of the abstract
idea such that the claims amount to significantly more than the abstract idea
itself (Final Act. 3; see also Ans. 2--4 ).
Appellant argues that the present claims are not directed to an abstract
idea because "[ t ]he claims at issue are not directed to any of [the] examples
of abstract ideas within the meaning of the Alice opinion" (Br. 4). However,
the Supreme Court in Alice did not rigidly define or otherwise restrict the
universe of abstract ideas to one or more of: a building block of human
ingenuity, a fundamental economic practice, and an algorithm. See Alice
Corp., 134 S. Ct. at 2357 ("[W]e need not labor to delimit the precise
contours of the 'abstract ideas' category .... "). And, under step one of the
framework set forth in Alice, we agree with the Examiner that the invention
is broadly directed to the abstract idea of "computerized matching of data"
(see Final Act. 5; see also Ans. 2), and is similar to the steps that the Federal
Circuit determined were patent ineligible in Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (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") and CyberSource Corp.
v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (a method
that can be performed by human thought alone, or by a human using pen and
paper, is merely an abstract idea and is not patent-eligible under § 101 ).
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According to Appellant's Specification, the present invention "relates
generally to systems and methods for data analysis, and more particularly to
systems and methods that can match closed account records to active
account records for use in analyzing multi-account customer locations across
several time periods" (Spec. ,r 1 ). The Specification identifies that a known
four part matching process suffers from deficiencies related to companies
not keeping closed account data up-to-date, one company splitting into two
or more different locations, and equipment relocation (id. ,r 3). The present
invention, thus, addresses these deficiencies by beginning
with the most recent view of the customer and goes back in the
history of the match results generated using the known four part
process. The process generates new groupings of the active and
inactive entities of the same customer locations using different
rules for historical groups to determine in which new groupings
each old group should be placed. The new groupings group
together not only the current accounts of a business location but
also the accounts that used to belong to that location earlier
during the period being analyzed to allow for a complete analysis
of customer location.
(Id. ,r 4). And, taking independent claim 1 as representative, the claimed
subject matter is generally directed to creating a new file for the matched
accounts, i.e., "initializing," "evaluating ... each group from each address
... to place entities in each respective group into a new group in the new
file," and "outputting ... the new file." The method includes steps for
matching inactive accounts to active accounts, i.e., "evaluating," by:
generating a new group identifier and adding the entities to the
new file under the new identifier if none of the group's entities
are already in the new file; making no changes to the new file if
all of the group's entities are already in the new file; adding those
entities not in the new file to the new file under a group identifier
for those entities from the group that are already in the new file
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if some but not all of the groups [sic] entities are already in the
new file and all of the entities already in the new file are under
the same group identifier; [and] adding those entities not in the
new file to the new file under a group identifier already in the
new file using predetermined rules to select the group identifier
if some but not all of the group's entities are already in the new
file under multiple different group identifiers[.]
(Br.; Claim App'x i).
Accordingly, we find that independent claim 1 involves nothing more
than receiving data, analyzing data, and providing data, without any
particular inventive technology- activities squarely within the realm of
abstract ideas. See, e.g., Elec. Power Grp., 830 F.3d at 1353-54 (when
"[t]he focus of the asserted claims ... is on collecting information, analyzing
it, and displaying certain results of the collection and analysis," the claims
are directed to an abstract idea). See also Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims
reciting "generalized software components arranged to implement an
abstract concept [ of generating insurance-policy-related tasks based on rules
to be completed upon the occurrence of an event] on a computer" not patent
eligible).
Appellant argues that the current claims are not directed to an abstract
idea because they are similar to the claims in Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327 (Fed. Cir. 2016) (see Br. 6). More particularly,
Appellant argues that the present claims "are directed to a specific
improvement in the way computers operate embodied in the generation of a
file that matches inactive accounts to active accounts in address matching
result output files" (id.). However, we find the focus of independent claim 1
is not on any technological advancement, but rather on the implementation
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of the abstract idea, "for which computers are invoked merely as a tool."
See Enfzsh, 822 F.3d at 1336.
In Enfzsh, the court explained, "the first step in the Alice inquiry ...
asks whether the focus of the claims is on the specific asserted improvement
in computer capabilities ... or, instead, on a process that qualifies as an
'abstract idea' for which computers are invoked merely as a tool." Id. at
1335-36. Here, we find the present claims are plainly of the second
category, and the "focus of the claims," is on "computerized matching of
data" (Final Act. 5) by evaluating or analyzing addresses (see id.), or more
precisely, "generating a file that matches inactive accounts to active
accounts in address matching result files from different time periods"
(Ans. 2). Thus, we find the present claims are not similar to the "self-
referential table" in Enfish, which was a "specific improvement to the way
computers operate" or the "specific asserted improvement in computer
animation, i.e., the automatic use of rules of a particular type" held to be not
abstract in McRO.
Turning to the second step of the Mayo/Alice framework, rather than
reciting additional elements that amount to "significantly more" than the
abstract idea, exemplary independent claim 1, at best, adds only "processing
device," i.e., "a personal computer, server, mainframe or the like that
includes at least one processing device 12" (see, e.g., Spec. ,r 13), which
lacks an inventive concept. Although the steps of independent claim 1 may
be tied to a computer (see Br. 7), that is not sufficient by itself to transform
the abstract idea into patent-eligible subject matter. See, e.g., DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014)
("[ A ]fter Alice, there can remain no doubt: recitation of generic computer
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limitations does not make an otherwise ineligible claim patent-eligible. The
bare fact that a computer exists in the physical rather than purely conceptual
realm 'is beside the point.'" ( citation omitted)).
And, similar to Electric Power, we are not apprised of anything other
than off-the-shelf, conventional computer and display technology for
gathering, analyzing, and presenting the desired information to remove the
claim from the class of subject matter ineligible for patenting. As the court
explained in Electric Power, "merely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas." Elec. Power Grp., 830 F.3d at 1355.
Appellant last argues that even if the claims are directed to an abstract
idea, the claims are nonetheless patent-eligible because "they cover a
particular approach to organizing digital information for storage and quick
retrieval and present no risk of preempting any abstract idea" (Br. 7-8).
However, Appellant's preemption argument does not alter our§ 101
analysis. Preemption concerns are fully addressed and made moot where a
patent's claims are deemed to disclose patent-ineligible subject matter under
the two-part framework described in Mayo and Alice. 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." Id.
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In view of the foregoing, we are not apprised of Examiner error and,
thus, we sustain the Examiner's rejection under 35 U.S.C. § 101 of
independent claim 1, and claims 2--4, which fall with independent claim 1.
Obviousness
Independent claims 1 and 3, and dependent claims 2 and 4
We are persuaded by Appellant's argument that the Examiner erred in
rejecting independent claims 1 and 3 under 35 U.S.C. § 103(a), because
Rowland, upon which the Examiner relies, does not disclose or suggest
evaluating a group of entities from an address matching result output file
based on the steps recited by limitations [ c ]-[ fJ of independent claim 1, and
similarly recited by independent claim 3 (see Br. 8-9).
The Examiner maintains that the rejection is proper, and cites
Rowland, at paragraphs 55---60 and figures 7 and 8 (Final Act. 4, 7; see also
Ans. 5---6). However, we agree with Appellant that there is nothing in the
cited portions that discloses or suggests the argued limitations.
Rowland is directed "to a process of collecting and enhancing
commercial data" (Rowland ,r 3). Rowland describes "a method of data
integration comprising collecting information comprising primary data. The
primary data is tested for accuracy and processed to produce secondary data
and enhanced information comprising the primary data and the secondary
data" (id. ,r 8). In an entity matching embodiment, Rowland's"[ e ]ntity
matching driver 110 checks the incoming data 104 to see if it belongs to any
existing business in database 118" (id. ,r 55; see also Fig. 7). Rowland
discloses that its "[ e ]ntity matching driver 110 detects similarities in
incoming data and combines it into a single business" (id. ,r 56). If, for
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example, different address data is found, the different address data "and
other associated information is also reconciled into a complete single
business 704" (id. ,r 55). Rowland further discloses "incoming data 104 that
matches a business in database 118 is appended to that business through
entity matching driver 110" (id. ,r 57). When incoming data does not match
"any business [data] in database 118 is sourced through internal and external
data sources and matched to an emerging business or, as shown in FIG. 10,
is assigned an identification number and held in an single source repository
as learnings are gained on the entity" (id.). Rowland further discloses that
its
method includes cleaning and parsing and standardizing 1102,
performing candidate retrieval 1104, and evaluation and decision
making 1106. Cleaning and parsing 1102 includes identifying
key components of inquiry data 1108, normalizing and
standardizing name, address, and city 1110, performing name
consistency 1112, and performing address standardization 1114.
Candidate retrieval 1104 includes gathering possible match
candidates from a reference database 1116, using optimized keys
to improve retrieval quality and throughput 1118, and retrieval is
optimized based on data provided in the inquiry data,
observations of existing reference data and ongoing tuning 1120.
Evaluation and decision making 1106 includes evaluating
matches according to a consistent standard 1122, applying a
match grade 1124, applying a confidence code 1126, and
applying a confidence percentile 1128.
(Id. ,I 58).
We have reviewed the cited portions of Rowland, and agree with
Appellant that none of the cited portions of Rowland discloses or suggests
the argued limitations. Instead, we agree with Appellant that Rowland does
not disclose or suggest
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performing entity matching based on whether or not some but
not all of the groups [sic] entities are already in a new file and all
of the entities already in the new file are under the same group
identifier, or adding those entities not in the new file to the new
file under a group identifier already in the new file using
predetermined rules to select the group identifier if some but not
all of the group's entities are already in the new file under
multiple group identifiers as is recited in claims 1 and 3.
(Br. 9). Although we agree with the Examiner that Rowland's
"entity matching driver" detects similarities and differences in data and
reconciles the data into a complete a single business (Ans. 6 ( citing Rowland
,r,r 56-57)), we do not see, and the Examiner does not explain adequately
how or why Rowland discloses or suggests "adding those entities not in the
new file to the new file under a group identifier" in situations when "some
but not all of the groups entities are already in the new file," as required by
limitations [ d] and [ e] of independent claim 1, as similarly recited by
independent claim 3. The Examiner does not rely on Cohen to address this
limitation (see Final Act. 7).
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1 and 3 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the Examiner's rejection of claims 2 and 4,
which depend therefrom.
DECISION
The Examiner's rejection of claims 1--4 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1--4 under 35 U.S.C. § 103(a) is
reversed.
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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).
AFFIRMED
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