Ex Parte Tavares et al

Patent Trials and Appeals Board

Jan 24, 2019

13412451 - (D) (P.T.A.B. Jan. 24, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/412,451 03/05/2012
20350 7590 01/28/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
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.
87188-097170USP1-826865 6710
EXAMINER
DELI CH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
01/28/2019 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):
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, and
DENNIS CARLSON
Appeal2017-009694
Application 13/412,451 1
Technology Center 3600
Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-19, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
1 This application is a continuation-in-part of US 13/032,878, for which a
Decision on Appeal was entered on July 31, 2018. App. Br. 3.
2 According to Appellants, the real party in interest is The First Data
Corporation. App. Br. 3.
Appeal2017-009694
Application 13/412,451
INVENTION
Appellants' invention relates to financial data normalization systems
and methods. Abstract. Claim 1 is illustrative and reads as follows:
1. A method for normalizing point of sale (POS) sales data, the
method comprising:
aggregating, by a computer system, point of sale (POS)
datasets from a plurality of POS terminals, each POS terminal
being configured to collect transaction data as a function of
transactions effectuated via the POS terminal, wherein the POS
datasets for each transaction comprise a transaction amount, a
merchant classifier, and a transaction time, and wherein the POS
datasets comprise a percentage of transactions effectuated within
an overall market;
obtaining, by the computer system, an industry subset of
the aggregated POS datasets for a given timeframe based on the
merchant classifier, wherein the industry subset comprises
transactions for a given industry;
calculating a reliable portion of the industry subset, the
reliable portion comprising only data having a statistically
insignificant variability from a baseline;
calculating, by the computer system, a sales value for the
reliable portion of the industry subset;
applying, by the computer system, a time-based
fluctuation factor to the sales value to account for sales
fluctuations that are related at least in part to seasonality;
applying a normalization factor to the sales value based on
a percentage of the sales value in terms of dollars relative to a
size of the overall market to obtain an indexed sales value for the
given timeframe;
generating an interactive formatted graphical report
showing one or more of a trend of the indexed sales value or a
projected sales volume based on the indexed sales value,
wherein the interactive formatted graphical report is
automatically formatted using auto-graphics zones, and wherein
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the interactive formatted graphical report comprises a plurality
of selectable views with each of the plurality of selectable views
displaying a different subset of data when selected; and
transmitting the interactive formatted graphical report
over a wireless communication channel to a user device;
wherein the interactive formatted graphical report causes
the interactive formatted graphical report to display on the user
device such that each of the plurality of selectable views is
selectable by the user device to show each of the different subsets
of data;
wherein the time-based fluctuation factor is calculated by
using a time series of historical daily data from the POS datasets,
and wherein the time-based fluctuation factor is further
calculated by selecting a previous time frame, calculating daily
sales for the reliable portion of the industry subset for at least
some days in the time frame, and performing a statistical analysis
of the daily sales for those days to obtain the time-based
fluctuation factor.
REJECTION
Claims 1-19 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception, i.e. an abstract idea,
without significantly more. Final Act. 7-10.
ANALYSIS
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: "[l]aws of nature, natural phenomena, and abstract
ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
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and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
in petitioners' application explain the basic concept of hedging, or protecting
against risk.").
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, 561 U.S. at 611 );
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes ( Gottschalk v. 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. 175,
193 (1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); 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
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Application 13/412,451
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 (internal 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
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, 84 Fed. Reg. 50, 2019
Revised Patent Subject Matter Eligibility Guidance ("2019 Guidance").
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 interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
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practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)) (9th ed.
2018).
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 are
not "well-understood, routine, conventional" in the field (see MPEP
§ 2106.0S(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 2019 Guidance.
Here, Appellants contend the Examiner erred because "the present
claims are not "directed to" the use of mathematical algorithms or collecting
and comp[ar]ing information as indicated by the Office Action." 3 App. Br.
9.
Step 2A, Prong One - Recited Judicial Exception
Step 2A of the 2019 Revised Patent Subject Matter Eligibility
Guidance is a two-prong inquiry. In Prong One, we evaluate whether the
claim recites a judicial exception. For abstract ideas, Prong One represents a
change as compared to prior guidance because we determine whether the
claim recites mathematical concepts, certain methods of organizing human
activity, or mental processes.
3 Because we agree with at least one of the dispositive arguments advanced
by Appellants, we need not reach the merits of Appellants' other
contentions. See Beloit Corp. v. Valmet Oy, 742 F.2d 1421, 1423 (Fed. Cir.
1984) (finding an administrative agency is at liberty to reach a decision
based on "a single dispositive issue").
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Application 13/412,451
We conclude the following steps of independent claim 1 recite mental
processes that practically could be performed via pen and paper or in a
person's mind:
aggregating ... point of sale (POS) datasets from a
plurality of POS terminals, each POS terminal being configured
to collect transaction data as a function of transactions
effectuated via the POS terminal, wherein the POS datasets for
each transaction comprise a transaction amount, a merchant
classifier, and a transaction time, and wherein the POS datasets
comprise a percentage of transactions effectuated within an
overall market;
obtaining ... an industry subset of the aggregated POS
datasets for a given timeframe based on the merchant classifier,
wherein the industry subset comprises transactions for a given
industry;
calculating a reliable portion of the industry subset, the
reliable portion comprising only data having a statistically
insignificant variability from a baseline;
calculating ... a sales value for the reliable portion of the
industry subset;
applying ... a time-based fluctuation factor to the sales
value to account for sales fluctuations that are related at least in
part to seasonality;
applying a normalization factor to the sales value based
on a percentage of the sales value in terms of dollars relative to
a size of the overall market to obtain an indexed sales value for
the given timeframe; ...
wherein the time-based fluctuation factor is calculated by
using a time series of historical daily data from the POS
datasets, and wherein the time-based fluctuation factor is
further calculated by selecting a previous time frame,
calculating daily sales for the reliable portion of the industry
subset for at least some days in the time frame, and performing
a statistical analysis of the daily sales for those days to obtain
the time-based fluctuation factor.
App. Br. 18 (Claims App.).
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Application 13/412,451
Similarly, we conclude the following steps of independent claim 8
recite mental processes that practically could be performed via pen and
paper or in a person's mind:
obtaining an industry subset of the aggregated POS
datasets for a given timeframe based on the merchant classifier,
wherein the industry subset comprises transactions for a given
industry;
calculating a reliable portion of the industry subset, the
reliable portion comprising only data having a statistically
insignificant variability from a baseline;
calculating a sales value for the reliable portion of the
industry subset;
applying a time-based fluctuation factor to the sales value
to account for sales fluctuations that are related at least in part
to seasonality, wherein the time-based fluctuation factor is
calculated by using a time series of historical daily data from
the POS datasets, and wherein the time-based fluctuation factor
is further calculated by selecting a previous time frame,
calculating daily sales for the reliable portion of the industry
subset for at least some days in the time frame, and performing
a statistical analysis of the daily sales for those days to obtain
the time-based fluctuation factor;
applying a normalization factor to the sales value based
on a percentage of the sales value in terms of dollars relative to
a size of the overall market to obtain an indexed sales value for
the given timeframe;
App. Br. 20 (Claims App.).
We also conclude the following steps of independent claim 15 recite
mental processes that could practically be performed via pen and paper or in
a person's mind:
obtaining an industry subset of the aggregated POS data
for a given timeframe based on the merchant classifier, wherein
the industry subset comprises transactions for a given industry;
calculating a reliable portion of the industry subset, the
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Application 13/412,451
reliable portion comprising only data having a statistically
insignificant variability from a baseline;
calculating a sales value for the reliable portion of the
industry subset;
applying a time-based fluctuation factor to the sales value
to account for fluctuations between the given timeframe and
other timeframes, wherein the fluctuation factor is balanced
against a norm of 1 such that a fluctuation factor less than 1
suggests a month will have less spend than an average month
and a fluctuation factor great than 1 suggests a month will have
more spend than the average month;
applying a normalization factor to the sales value based
on a percentage of the sales value in terms of dollars relative to
a size of the overall market to obtain an indexed sales value for
the given timeframe;
using the indexed sales value to predict a projected sales
value for a future timeframe;
App. Br. 22 (Claims App.).
Because we conclude the independent claims recite an abstract idea,
we proceed to Prong Two to determine whether the claims are "directed to"
the judicial exception.
Step 2A, Prong Two -Practical Application
If a claim recites a judicial exception, in Prong Two we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception( s ); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the
claim is not directed to the judicial exception.
Here, claim 1 recites the additional elements of "a computer system,"
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a "generating" step, and a "transmitting step." Considering the claim as a
whole, the "generating" step applies or uses the abstract idea in a meaningful
way such that the claim as a whole is more than a drafting effort designed to
monopolize the exception. Thus, the abstract idea is integrated into a
practical application. Specifically, the "generating" step and associated
"wherein" clause recite the following:
generating an interactive formatted graphical report
showing one or more of a trend of the indexed sales value or a
projected sales volume based on the indexed sales value,
wherein the interactive formatted graphical report is
automatically formatted using auto-graphics zones, and wherein
the interactive formatted graphical report comprises a plurality
of selectable views with each of the plurality of selectable
views displaying a different subset of data when selected; and
wherein the interactive formatted graphical report causes
the interactive formatted graphical report to display on the user
device such that each of the plurality of selectable views is
selectable by the user device to show each of the different
subsets of data.
App. Br. 18-19 (Claims App.).
Claims 8 and 15 recite similar "generating" steps and associated
"wherein" clauses. Id. at 19-22.
Because claims 1, 8, and 15 integrate the recited judicial exception
into a practical application, they are not "directed to" a judicial exception
and, therefore, our inquiry ends.
For these reasons, under the 2019 Guidance, we are persuaded that the
Examiner erred in concluding claims 1-19 are judicially-excepted from
patentability.
Accordingly, we reverse the Examiner's§ 101 rejection of
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independent claims 1, 8, and 15, as well as the Examiner's rejection of
dependent claims 2-7, 9-14, and 16-19, which stand or fall with the
independent claims from which they depend.
DECISION
We reverse the decision of the Examiner rejecting claims 1-19.
REVERSED
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