Ex Parte Taintor et al

Patent Trial and Appeal Board

May 23, 2018

13853884 (P.T.A.B. May. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/853,884 03/29/2013
96592 7590 05/25/2018
FIS/FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
901 NEW YORK A VENUE
WASHINGTON, DC 20001-4413
FIRST NAMED INVENTOR
Robert C. Taintor
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.
11360.0423-01000 6289
EXAMINER
SINGH, GURKANW ALJIT
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/25/2018 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):
jeffrey.berkowitz@finnegan.com
regional-desk@finnegan.com
michael. wrobel@fisglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte ROBERT C. TAINTOR
and GREGORY DAVID LEIBON
Appeal2017-002304
Application 13/853,884 1
Technology Center 3600
Before JASON V. MORGAN, NABEEL U. KHAN, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 50-69, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Technology
The application relates to "analyzing and optimizing the distribution
of work" based on "historical data." Spec. Abstract. For example, "one
industry that could benefit from optimizing work item queues is the banking
industry .... in dealing with potential fraud activities." Id. i-f 7.
1 According to Appellants, the real party in interest is FIS Financial
Compliance Solutions, LLC. App. Br. 3.
Appeal2017-002304
Application 13/853,884
Illustrative Claim
Claim 50 is illustrative and reproduced below:
50. A computer-implemented method performed by a system
comprising a database, a historical data processor, and a new data
processor, the method comprising:
storing historical data in the database comprising a
plurality of fraud activities of a first type, each fraud activity
having a fraud determination and an associated monetary value,
wherein the associated monetary value of each fraud activity is
associated with a related cost of investigation;
assigning, using a relative score generator of the historical
data processor, a relative score to each of the fraud activities of
the first type, based on at least the other fraud activities of the
first type;
calculating, using a cumulative monetary value calculator
of the historical data processor, a cumulative monetary value
associated with each particular relative score, the cumulative
monetary value for each relative score being a function of a
summation of the monetary values of at least the fraud activities
having the particular relative score;
determining, using a maximum value module of the
historical data processor, a highest cumulative monetary value
and a relative score corresponding to the highest cumulative
monetary value; and
determining, using a queue generator of the new data
processor, which of a set of potential fraud items to analyze,
based on a relative score associated with each of the set of
potential fraud items.
Rejection
Claims 50-69 stand rejected under 35 U.S.C. § 101 as being directed
to ineligible subject matter. Final Act. 4--8.
ISSUE
Did the Examiner err in concluding claim 50 sought to patent subject
matter that is ineligible under § 101?
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ANALYSIS
Section 101 defines patentable subject matter: "Whoever 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 therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable." Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas." Alice Corp. v. CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant 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), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule."
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter." Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
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In the second step, 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." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
The Supreme Court has "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." Id. (quotation omitted).
For computer-related technology, a claim may pass the second step if "the
claimed solution is necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer
[technology]." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014) (e.g., "a challenge particular to the Internet").
Here, the Examiner concludes the claims "are directed to the abstract
idea of gathering data and using the data with mathematical manipulation to
determine and manage fraud." Ans. 4. The Examiner points, for example,
to the "calculating" step doing a "summation of the monetary values" to get
the "cumulative monetary value" and "determining ... a highest cumulative
monetary value" and its corresponding relative score, then "determining ...
which of a set of potential fraud items to analyze, based on a relative score
associated with each." Id. The Examiner determines the claims are
"collecting information and comparing new and stored information and
using rules to identify options," which the Examiner analogizes to
SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 F. App'x 950
(Fed. Cir. 2014) (unpublished). Ans. 4--5. The Examiner further determines
that "[g]athering/acquiring data, using/manipulating/analyzing the data
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mathematically or in algorithms, and/or using the resulting created/
determined/calculated data is an abstract concept further similar to" a variety
of cited cases and PTO guidance memoranda. 2 Id. at 5.
Appellants contend "the pending claims are not akin to the concepts
found to be abstract in Alice, Bilski, and other cases relating to abstract
ideas." App. Br. 8. According to Appellants, the Examiner is "offering only
a string of case cites" but "the Examiner has made no attempt to compare
claims at issue to those claims already found to be directed to an abstract
idea in previous cases." Reply Br. 6 (quotation omitted). Appellants then
analogize their claims to other decisions, but do not expressly address the
claims of the decisions cited by the Examiner. Id.
To determine whether the Examiner correctly analogized the present
application, we take a more detailed look at the decisions cited by the
Examiner, including the claims. In Versata, representative claim 17 recited:
A method for determining a price of a product offered to a
purchasing organization comprising:
arranging a hierarchy of organizational groups comprising
a plurality of branches such that an organizational group below a
higher organizational group in each of the branches is a subset of
the higher organizational group;
arranging a hierarchy of product groups comprising a
plurality of branches such that a product group below a higher
product group in each of the branches in a subset of the higher
product group;
2 Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015);
In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607 (Fed Cir. 2016); OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015); Content
Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343
(Fed. Cir. 2014); Digitech Image Techs., LLC v Elecs.for Imaging, Inc., 758
F.3d 1344 (Fed. Cir. 2014); "July 2015 Update: Interim Eligibility Guidance
Quick Reference Sheet"; "July 2015 Update: Subject Matter Eligibility."
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storing pricing information in a data source, wherein the
pricing information is associated, with (i) a pricing type, (ii) the
organizational groups, and (iii) the product groups;
retrieving applicable pricing information corresponding to
the product, the purchasing organization, each product group
above the product group in each branch of the hierarchy of
product groups in which the product is a member, and each
organizational group above the purchasing organization in each
branch of the hierarchy of organizational groups in which the
purchasing organization is a member;
sorting the pricing information according to the pricing
types, the product, the purchasing organization, the hierarchy of
product groups, and the hierarchy of organizational groups;
eliminating any of the pricing information that is less
restrictive; and
determining the product price using the sorted pricing
information.
Versata, 793 F.3d at 1312-13 (white space added). Thus, the claims in
Versata included storing pricing information in a hierarchy, retrieving
pricing information, sorting pricing information, eliminating certain pricing
information, and determining a price using the sorted pricing information.
We agree with the Examiner that this is akin to the present application,
which stores historical data, sorts by relative score or cumulative monetary
value, and determines an item to analyze using a relative score.
In Versata, for the first step of the Alice/Mayo framework, the Federal
Circuit concluded:
Using organizational and product group hierarchies to determine
a price is an abstract idea that has no particular concrete or
tangible form or application. It is a building block, a basic
conceptual framework for organizing information, similar to the
claims involving collecting, recognizing, and storing data in
Content Extraction and the claims in CyberSource.
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Versata, 793 F.3d at 1333-34. For the second step, the Federal Circuit
determined that "the function performed by the computer at each step is
purely conventional," including "arranging a hierarchy of organizational and
product groups, storing pricing information, retrieving applicable pricing
information, sorting pricing information, eliminating less restrictive pricing
information, and determining the price." Id. at 1334. "All of these
limitations are well-understood, routine, conventional activities previously
known to the industry." Id. "Similarly, when considered as an ordered
combination, the components of each claim add nothing that is not already
present when the steps are considered separately." Id.
A second decision cited by the Examiner was OIP Technologies, in
which the Federal Circuit summarized claim 1 as "( 1) testing a plurality of
prices; (2) gathering statistics generated about how customers reacted to the
offers testing the prices; (3) using that data to estimate outcomes (i.e.
mapping the demand curve over time for a given product); and
( 4) automatically selecting and offering a new price based on the estimated
outcome." OIP Techs., 788 F.3d at 1361. Again, we agree with the
Examiner that this is akin to the present application, which gathers historical
data, uses that historical data to estimate value (whether through a relative
score or a cumulative monetary value), and selects an item to analyze based
on the estimated value. In OIP Technologies, the Federal Circuit determined
"the claims merely recite ... conventional computer activities or routine
data-gathering steps," including "storing test results in a 'machine-readable
medium'" and "'using a computerized system ... to automatically
determine' an estimated outcome and setting a price." Id. at 1363. "At best,
the claims describe the automation of the fundamental economic concept of
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offer-based price optimization through the use of generic-computer
functions." Id.
We agree with the Examiner's analogy to cases such as Versata and
OIP Technologies. As the Examiner explained, "[g]athering/acquiring data,
using/manipulating/analyzing the data mathematically or in algorithms,
and/ or using the resulting created/ determined/ calculated data is an abstract
concept further similar to Versata ... [and] OIP Technologies[,] ... whose
claims were held ineligible." Ans. 5 (emphasis added). The Federal Circuit
has held "the 'realm of abstract ideas' includes 'collecting information,
including when limited to particular content"'; "'analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, [which are] essentially mental processes"'; "'merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation) ... as an ancillary part of such collection and analysis"'; and
"a combination of these abstract-idea categories." Fair Warning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Here, claim 50 includes (1) storing historical data in a database,
(2) assigning a relative score to items in the database, 3 (3) summing the
values for a set within the database, 4 ( 4) determining a highest cumulative
3 We note that other than being "based on at least the other fraud activities of
the first type," the claim does not limit how the value of the relative score is
calculated or what it represents (e.g., likelihood of fraud vs. money or time).
4 We note that summing values for all historical data would be summing the
value of "at least the fraud activities having the particular relative score" and
would be "associated with each particular score."
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monetary value and a corresponding relative score, and (5) determining
which item to analyze based on a relative score. 5 This is no less abstract
than the abstract ideas in Versata (which involved storing data, sorting the
data, eliminating certain options, and determining the next price using the
sorted list) and OIP Technologies (which involved "gathering statistics";
"using that data to estimate outcomes"; and "automatically selecting and
offering a new price based on the estimated outcome"). Versata, 793 F.3d at
1312-13, 1333-34; OIP Techs., 788 F.3d at 1361. In this regard, the claims
here are also similar to SmartGene, in which the claims recited in part a
"knowledge base comprising a plurality of expert rules for evaluating and
selecting a therapeutic treatment" and "generating ... a ranked listing of
available therapeutic treatment regimens for [a] patient." SmartGene, 555 F.
App'x at 951-52; Ans. 4--5 (citing SmartGene). Just like Versata, OIP
Technologies, and SmartGene, the claims here are directed to the abstract
ideas of storing data, analyzing and sorting the data, and selecting from the
sorted list. See also Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1327 (Fed. Cir. 2017) ("We have previously held other patent claims
ineligible for reciting similar abstract concepts that merely collect, classify,
or otherwise filter data.").
Appellants also argue "the Office does not ... suggest that the ...
claims would monopolize every substantial application" of the abstract idea.
App. Br. 11. Monopolization, however, is not the test. "While preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility." Ariosa Diagnostics,
5 We note the determination of what to analyze is not necessarily tied to the
prior steps of calculating cumulative values or determining the highest.
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Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot." Id. Moreover, "[t]he Supreme Court and
this court have repeatedly made clear that merely limiting the field of use of
the abstract idea to a particular existing technological environment does not
render the claims any less abstract." Affinity Labs of Texas, LLC v. DirecTV,
LLC, 838 F.3d 1253, 1259 (Fed. Cir. 2016).
Appellants also argue the "claims impose requirements that would
make it impossible for a human to carry out" because the claims must be
"performed by specific components, namely, a 'database,' a 'historical
data processor' that includes a 'relative score generator,' a 'cumulative
monetary value calculator,' and a 'maximum value module,' and a 'new
data processor' that includes a 'queue generator."' App. Br. 15-16; Reply
Br. 10-11. We agree with the Examiner, however, that Appellants have not
explained how, for example, a human mind generating relative scores would
not comprise a "relative score generator." See Ans. 6. Regardless, the
Supreme Court is clear that "the mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention." Alice, 134 S. Ct. at 2358; see also Ans. 5-7.
Here, the Specification states the claimed processors can be "any one
or more processors of any kind of digital computer," including any "general"
or "special purpose" microprocessors. Spec. ,-r 69. Thus, the processors can
be any generic computing components. Similarly, the Specification explains
"[t]he techniques described above can be implemented in digital electronic
circuitry, or in computer hardware, firmware, software executing on a
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computer, or in combinations of them." Id. i-f 67; see also id. i-f 68.
Moreover, "[a] computer program can be written in any form of
programming language, including compiled or interpreted languages, and it
can be deployed in any form, including as a stand-alone program or as a
module, component, subroutine, or other unit suitable for use in a computing
environment." Id. i-f 67. Thus, to the extent the generators, calculators, and
modules must be hardware or software on a digital computer processor, they
can be any combination of hardware, firmware, or software, and can be
written in any programming language.
As the Federal Circuit has explained, "[a]n abstract idea ... on a
generic computer is still an abstract idea." BASCOM Glob. Internet Servs.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016); Smart
Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1374 (Fed.
Cir. 2017) ("When claims like the Asserted Claims are directed to an
abstract idea and merely require generic computer implementation, they do
not move into section 101 eligibility territory.") (quotations omitted). "The
mere fact that the inventor applied coined labels to conventional structures
does not make the underlying concept inventive." Intellectual Ventures I
LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017).
Here, "with 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." Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
For example, the human mind (with or without pen and paper) is capable of
storing historical data, assigning a relative score, calculating a summation,
determining a highest value and the corresponding relative score, and
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determining which of a set of potential fraud items to analyze. See also
Elec. Power, 830 F.3d at 1354 ("we have treated 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"). The Supreme Court is clear that "mental processes ... are not
patentable." Gottschalkv. Benson, 409 U.S. 63, 67 (1972).
For the same reasons, we are not persuaded by Appellants' arguments
that the claims are "inextricably tied to computer technology." App. Br.
9-10; Reply Br. 3-5. Neither the problem nor the solution is unique to
computers. As the Federal Circuit has said, "relying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible." OIP Techs., 788 F.3d at 1363. Moreover, as
discussed above, the Federal Circuit has already held that storing data,
sorting data, estimating outcomes, and selecting a new item based on
estimated outcomes are all well-understood, routine, conventional activities,
whether alone or in combination. E.g., Versata, 793 F.3d at 1334; OIP
Techs., 788 F.3d at 1363.
Accordingly, we sustain the Examiner's rejection of claim 50, and
claims 51---69, which Appellants do not substantively argue separately. See
App. Br. 7-16; 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
For the reasons above, we affirm the decision rejecting claims 50---69.
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(±).
AFFIRMED
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