Ex Parte Tavares et al

Patent Trial and Appeal Board

Jul 27, 2018

13032878 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/032,878 02/23/2011
20350 7590 07/31/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
UNITED ST A TES OF AMERICA
Silvio Tavares
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.
87188-097110US-798391 7781
EXAMINER
DELI CH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SILVIO TAVARES, SUSAN FAHY,
ROBERT TEDFORD, and KAREN HOMLER
Appeal2016-006756
Application 13/032,878
Technology Center 3600
Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 4--18, 21-35, and 38--48, which are all of the
claims pending in this application. 2 We have jurisdiction under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellants, the real party in interest is First Data Corporation
of Greenwood Village, Colorado. App. Br. 3.
2 Claims 2, 3, 19, 20, 36, and 37 have been canceled. Final Act. 2.
Appeal2016-006756
Application 13/032,878
INVENTION
Appellants' invention relates to electronic market tracking and
reporting systems and methods. Abstract. Claim 1 is illustrative and reads
as follows:
1. A method for market reporting according to point-of-
sale (POS) data, the method comprising:
aggregating POS datasets from a plurality of POS
terminals, each POS terminal being associated with terminal
data that is associated with at least one of a plurality of
merchant identifiers, and each POS terminal being configured
to collect transaction data as a function of transactions
effectuated via the POS terminal, the POS dataset for each of
the POS terminals comprising the terminal data and the
transaction data;
storing in a database of a computer system the aggregated
POS data from the POS terminals produced during a first
timeframe and a second timeframe;
receiving, by a processor of the computer system, a
reporting request for a market trend report corresponding to a
given market;
identifying, by the processor of the computer system, a
market dataset from the aggregated POS data for the first and
second timeframes;
classifying merchants into specific industries by mapping
at least one of the plurality of merchant identifiers to a specific
industry;
identifying, by the processor of the computer system,
same store data from the market dataset, wherein the same store
data comprises data aggregated from an identical set of POS
terminals or from a statistically insignificant change in a sample
set;
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calculating a reliable portion of the same store data, the
reliable portion comprising only data having a statistically
insignificant variability from a baseline;
generating, by the processor of the computer system,
market trend data from the reliable portion of the same store
data of the market dataset, wherein the market trend data
comprises a comparison between the same store data of the
market datasets for the first and second timeframes; and
outputting, by the processor of the computer system,
graphical report data as a function of the market trend data in
response to the reporting request that is usable by a user device
to display a market trend report having a header zone, a
headline zone, a first explanation zone, a graph zone, a second
explanation zone, and a footer zone, wherein the market trend
report, when displayed on a display of the user device, includes
a line graph for various types of growth comparisons of a given
market including dollar volume growth, average ticket item
growth, and transaction growth, wherein the line graph for the
various types of growth comparisons comprises separate trend
lines that correspond to a specific industry and which are
graphed as a growth percentage per month, wherein the y-axis
indicates the growth percentage and the x-axis indicates the
relevant time period.
REJECTI0N3
Claims 1, 4--18, 21-35, and 38--48 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to patent ineligible subject
matter. Final Act. 4--6.
3 In the Answer, the Examiner withdrew the rejection of claim 34 under
35 U.S.C. § 112, second paragraph, and the 35 U.S.C. § 103(a) rejections of
claims 1 and 4--17. Ans. 2.
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Application 13/032,878
ANALYSIS
We have reviewed the rejections of claims 1, 4--18, 21-35, and 38--48
in light of Appellants' arguments that the Examiner erred. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs. Any other arguments Appellants could have made, but chose
not to make, in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer and in the Action from which this appeal was taken. We
provide the following explanation for emphasis.
In Alice, the Supreme Court sets forth an analytical "framework 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. Pty, Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (2012)). The first step in the analysis is to "determine whether the
claims at issue are directed to one of those patent-ineligible concepts," such
as an abstract idea. Id. (citing Mayo, 566 U.S. at 77-78). If the claims are
directed to a patent-ineligible concept, the second step in the analysis is to
consider the elements of the claims "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). In other words, the second step is to
"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.
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(brackets in original) (quoting Mayo, 566 U.S. at 72-73). The prohibition
against patenting an abstract idea "'cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment' or
adding 'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) ( citation omitted).
Here, the Examiner concluded claim 1 4 is directed to the abstract idea
of mathematical relationships for generating trend data. Final Act. 4 ( citing
Digitech Image Tech., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344
(Fed. Cir. 2014)). The Examiner also concluded the additional elements or
combination of elements in the claim other than the abstract idea amount to
no more than mere instructions to implement the idea on a computer, and a
recitation of generic computer structure that serves to perform generic
computer functions. Id. at 4--5.
Appellants contend the Examiner erred because the claims are
"necessarily rooted in computer technology," as in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), because "they
necessarily require a special-purpose computer rather than a generic
computer." App. Br. 10 (citing In reAlappat, 33 F.3d 1526, 1545 (Fed. Cir.
1994) (en bane). As the Examiner pointed out (Ans. 4), Appellants' reliance
on Alappat is misplaced, as Alappat's programmed computer or "special
purpose computer" test (i.e., the rationale that an otherwise ineligible
algorithm or software could be made patent-eligible by merely adding a
generic computer to the claim for the "special purpose" of executing the
4 Appellants argue claims 1, 4--18, 21-35, and 38--48 as a group (App. Br.
10), and we choose claim 1 as representative of the group. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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algorithm or software) was superseded by the Supreme Court's Bilski and
Alice decisions. Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785
F.3d 616, 623 (Fed. Cir. 2015) ("[W]e note that Alappat has been
superseded by Bilski, 561 U.S. at 605---06, and Alice Corp. v. CLS Bankint'l,
134 S. Ct. 2347 (2014)"); Intellectual Ventures I LLC v. Capital One Bank
(USA), N.A., 792 F.3d 1363, 1366 (Fed. Cir. 2015) ("An abstract idea does
not become nonabstract by limiting the invention to a particular field of use
or technological environment, such as the Internet [or] a computer").
Appellants further argue that the claims require specific hardware not
present on general purpose computers, such as point of sale devices that
must be configured to collect transaction data from payment cards and other
payment media. Reply Br. 2. We disagree that the claims use special
purpose hardware. Although the claims recite certain point-of-sale ("POS")
data used by the processor include "POS datasets from a plurality of POS
terminals, each POS terminal being associated with terminal data that is
associated with at least one of a plurality of merchant identifiers, and each
POS terminal being configured to collect transaction data as a function of
transactions effectuated via the POS terminal" (e.g., App. Br. 17 (Claims
App'x)), the claims are not directed to, and do not recite, any technical
changes or improvements to" the POS terminals. See Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir.
2013) (admonishing that "the important inquiry for a§ 101 analysis is to
look to the claim"; "the complexity of the implementing software or the
level of detail in the specification does not transform a claim reciting only an
abstract concept into a patent-eligible system or method"). As our reviewing
court has explained, "[i]t is well-settled that mere recitation of concrete,
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tangible components is insufficient to confer patent eligibility to an
otherwise abstract idea. Rather, the components must involve more than
performance of "'well-understood, routine, conventional activities"
previously known to the industry."' In re TL! Commc 'ns LLC Patent
Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at
2359)). Here, the POS terminal is merely used to collect and provide data, a
well-known and routine computer function. See, e.g., buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (computer receives and
sends information over a network).
Moreover, in DDR Holdings, the Federal Circuit determined that,
although the patent claims at issue involved conventional computers and the
Internet, the claims nevertheless addressed the problem of retaining website
visitors who, if adhering to the routine, conventional functioning of the
Internet hyperlink protocol, would be transported instantly away from a
host's website after "clicking" on an advertisement and activating a
hyperlink. DDR Holdings, 773 F.3d at 1257. The court determined that
those claims were directed to statutory subject matter because they claim a
solution "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks." Id.
No such technological advance is evident in the claimed invention.
Unlike the situation in DDR Holdings, Appellants do not identify any
problem particular to computer networks and/or the Internet that claim 1
allegedly overcomes. Here, the claimed computer components operate
precisely in the expected manner of aggregating, storing, classifying,
identifying, calculating, generating, and outputting data.
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Appellants also contend the Examiner erred because the present
claims are distinguishable from those in Digitech, where the Court found
that the claim merely "recites a process of taking two data sets and
combining them into a single data set, the device profile." App. Br. 11.
Appellants argue that the collection and aggregation of POS data relates to
merely the first two steps of claim 1, and the claim further includes
numerous limitations extending beyond combining two or more datasets. Id.
at 12. Appellants argue that, "unlike the claims in Digitech, the recitation of
a processor of a computer system provides a physical, tangible device." Id.
For the reasons discussed above with regard to Appellants' arguments
related to DDR Holdings, and the reasons provided by the Examiner in the
Answer (Ans. 5), Appellants' arguments are not persuasive of error. We
agree with the Examiner that the additional elements of claim 1 merely
apply the abstract idea and require no more than a generic computer to
perform generic computer functions such as receiving data and inputs,
storing data, and outputting results. See id.
In the Reply Brief, Appellants argue that "[t]he recitations directed to
the outputting of graphical report data as a function of the market trend data
in response to the reporting request that is usable by a user device to display
a market trend report are strikingly similar to those found eligible in
Example 21 of the July 2015 guidelines, where an alert of a stock price is
transmitted to a user device for display on the user device." Reply Br. 4--5.
We disagree. Unlike claim 1 here, claim 2 in Example 21 recites
additional limitations that, when considered as an ordered combination,
amount to significantly more than the abstract idea. July 2015 Update
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Appendix 1: Examples5 at 4. In particular, the invention in Example 21
addresses the Internet-centric challenge of alerting a subscriber with time
sensitive information when the subscriber's computer is offline. The claim
addresses this challenge by transmitting the alert over a wireless
communication channel to activate the stock viewer application, which
causes the alert to display, and enables the connection of the remote
subscriber computer to the data source over the Internet when the remote
subscriber computer comes online. Id. Appellants point to no such
limitation(s) in claim 1. Outputting graphical report data that is usable by a
user device to display a market trend report does not amount to significantly
more than the abstract idea because it is insignificant post-solution activity.
See Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354--55
(Fed. Cir. 2016) (selecting information for collection, analysis and display is
insignificant extra-solution activity).
Appellants further contend the claims recite significant limitations that
preclude the claims from monopolizing, or "tying up" the abstract idea
(mathematical relationships for generating trend data). App. Br. 12-13.
Appellants' arguments do not persuade us of error. Although the
Supreme Court has described "the concern that drives this exclusionary
principle [i.e., the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption," Alice, 134 S. Ct. at 2354, characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing pre-emption as the sole test for patent eligibility. "The
Supreme Court has made clear that the principle of preemption is the basis
5 July 2015 Update Appendix 1: Examples, pp. 1-5, available at
https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-appl.pdf.
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for the judicial exceptions to patentability" and "[f]or this reason, questions
on preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 134 S. Ct. at 2354). Although "preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Id.
Appellants also contend the claims possess an "inventive concept"
because the claims are not subject to any substantive rejections under§§ 102
or 103. App. Br. 15. Appellants argue the claims are novel and non-
obvious. Id.
We are not persuaded of error. Even assuming claim 1 is novel and
nonobvious, a novel and nonobvious abstract idea is still patent ineligible.
See SAP Am., Inc. v. Investpic, LLC, 890 F.3d 1016, 1018 (Fed. Cir. 2018)
("Nor is it enough for subject-matter eligibility that claimed techniques be
novel and nonobvious in light of prior art, passing muster under 35 U.S.C.
§§ 102 and 103."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138,
1151 (Fed. Cir. 2016) ("[A] claim for a new abstract idea is still an abstract
idea."); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315
(Fed. Cir. 2016) (explaining that a jury's determination that certain prior art
did not anticipate or render obvious the asserted claims did "not resolve the
question of whether the claims embody an inventive concept at the second
step of Mayo/Alice").
In sum, the claimed elements, whether considered individually or as a
combination, simply disclose using generic components to perform an
abstract idea. That is not enough to transform the abstract idea into a patent-
eligible application of the idea. "It is well-settled that mere recitation of
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concrete, tangible components is insufficient to confer patent eligibility to an
otherwise abstract idea." TL! Commc 'ns, 823 F.3d at 613.
For the above reasons, we sustain the Examiner's§ 101 rejection of
representative claim 1, as well and the Examiner's§ 101 rejection of
grouped claims 4--18, 21-35, and 38--48, not argued separately.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 4--18, 21-
35, and 38--48.
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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