Ex Parte WEINBERGER et al

Patent Trials and Appeals Board

Apr 26, 2019

14148199 - (D) (P.T.A.B. Apr. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/148,199 01/06/2014
126944 7590 04/30/2019
MasterCard
c/o Ballard Spahr LLP
999 Peachtree Street, Suite 1000
Atlanta, GA 30309
FIRST NAMED INVENTOR
Henry M. WEINBERGER
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.
37537.0027Ul- 1418
EXAMINER
SADANANDA, ABHIJIT B
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/30/2019 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):
uspatentmail@ballardspahr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HENRY M. WEINBERGER
and
BRUCE MACNAIR
Appeal 2018-003060
Application 14/148, 199 1
Technology Center 3600
Before JOSEPH L. DIXON, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1-18, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm. 2
1 Appellants identify MasterCard International Incorporated, as the real
party in interest. (Br. 2.)
2 Our Decision refers to the Specification ("Spec.") filed January 6, 2014,
the Final Office Action ("Final Act.") mailed February 7, 2017, the Appeal
Brief ("Br.") filed July 10, 2017, and the Examiner's Answer ("Ans.")
mailed November 16, 2017.
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CLAIMED INVENTION
The claims are directed to a method and apparatus for modeling a
virtual panel of consumer behavior from financial transactions that occur in
a payment network. (Spec. ,-J,-J 7, 12.) Appellants' method and apparatus
"use a selected set of financial accounts to create a virtual panel which
measures behavior from a sample of consumers that is representative of the
overall consumer population across key geographic, demographic, and
behavior dimensions." (Spec. ,-J 1.)
Claims 1, 7, and 13 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A virtual panel modeling method comprising:
retrieving records of financial transactions from a
specified time period, each record containing an account
identification code, an amount of a transaction, and an industry
segment;
filtering records with a processor using a behavior filter;
assigning each account a home geographic code with the
processor;
establishing, with the processor, percentage quotas for
geo-demographic cells usmg geo-demographic data
distributions;
selecting, with the processor, a number of accounts within
each geo-demographic cell to match the geo-demographic data
distributions;
scaling, with the processor, the number of accounts within
each geo-demographic cell in a virtual panel to match the geo-
demographic data distributions of the overall consumer universe;
and
saving the resulting virtual panel to a non-transitory
computer-readable storage medium.
(Br. 21-24 (Claims App'x).)
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REJECTIONS3 & REFERENCES
(1) Claims 1-18 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. (Final Act. 14-15.)
(2) Claims 1-18 stand rejected under 35 U.S.C. § 103 based on
Reed et al. (US 2004/0103017 Al, published May 27, 2004) ("Reed") and
William Mendenhall, Lyman Ott, and Richard L. Scheaffer, Elementary
Survey Sampling (Duxbury Press 1971) ("Mendenhall"). (Final Act. 16-21.)
ANALYSIS
Re} ection under 3 5 U.S. C. § 101
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner's § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[ w ]hoever 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.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt "the basic tools of scientific and technological
work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("Benson"); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
("Mayo"); Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S.Ct. 2347, 2354
3 Claims 1-18 were rejected under 35 U.S.C. § l 12(a) as failing to comply
with the written description requirement. (Final Act. 11-14.) However, this
rejection was withdrawn in the Examiner's Answer, and is no longer
pending on appeal. (Ans. 3.)
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(2014) ("Alice"). The rationale is that patents directed to basic building
blocks of technology would not "promote the [p ]rogress of [ s ]cience" under
the U.S. Constitution, Article I, Section 8, Clause 8, but instead would
impede it. Accordingly, laws of nature, natural phenomena, and abstract
ideas, are not patent-eligible subject matter. Thales Visionix Inc. v. U.S., 850
F.3d 1343, 1346 (Fed. Cir. 2017) ( citing Alice, 134 S.Ct. at 2354).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (134 S.Ct. at 2355). The first step is to determine whether
the claim is directed to a patent-ineligible concept. Id. ( citing Mayo, 566
U.S. at 76-77). If so, then the eligibility analysis proceeds to the second
step of the Alice/ Mayo test in which we "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, 134 S.Ct. at 2357 (quoting Mayo, 566 U.S. at 72, 79). There is no
need to proceed to the second step, however, if the first step of the
Alice/Mayo test yields a determination that the claim is directed to patent
eligible subject matter.
The Patent Office has recently revised its guidance for how to apply
the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50-57 (January 7, 2019) ("the Revised Guidance").
Under the Revised Guidance, we first look to whether the claim recites:
( 1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
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Procedure ("MPEP") § 2106.05(a)-(c), (e)-(h)). 84 Fed. Reg. at
51-52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception. 84 Fed. Reg.
at 54. When the judicial exception is so integrated, then the claim is not
directed to a judicial exception and is patent-eligible under§ 101. 84 Fed.
Reg. at 54. Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. 84 Fed. Reg. at 56; Alice,
134 S.Ct. at 2350, 2355.
Alice/May~tep 1 (Abstract Idea)
Step 2A-Prongs 1 and 2 identified in the Revised Guidance
Step 2A-Prong 1 (Does the Claim Recite a Judicial Exception?)
Turning to the first step of the Alice inquiry (Step 2A, Prong 1 of the
Revised Guidance), the Examiner finds independent claims 1, 7, and 13 "are
directed to using categories and correlations to organize, store, and transmit
information, which is an idea of itself' and is "similar to those [ abstract
ideas] identified in at least Electric Power Group, LLC v. Alstom, SA,
Content Extraction and Transmission, LLC v. Wells Fargo Bank, and
CyberSource Corp. v. Retail Decisions Inc." (Final Act. 14-15 (citing
Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App'x 988 (Fed.
Cir. 2014)); Ans. 4-5 (citing Electric Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350 (Fed. Cir. 2016); Content Extraction & Transmission LLC v.
Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343 (Fed. Cir. 2014);
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CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011)).)
Appellants argue independent claims 1, 7, and 13 together. (Br. 9,
14.) We select claim 1 as representative. Claims 7 and 13 stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv)(2017).
Appellants argue the Examiner's rejection "rests solely on conclusory
statements" and over-generalizes the claims, as "the Examiner has not
adequately explained and has provided no evidence .... [t]hat the claims are
actually directed to an abstract idea." (Br. 9, 13.) Appellants assert the
claims are not directed to an abstract idea such as "a method of organizing
human activity" or a "fundamental economic practice long prevalent in our
system of commerce." (Br. 10, 12-13.) Rather, Appellants argue the claims
are directed to creating and modeling a virtual panel using a payment card
infrastructure, and "creating a virtual panel on payment card infrastructure is
not similar to any idea previously found to be abstract." (Br. 11-12.)
Appellants also assert the claimed panel modeling "is not just the
computerization of some long-standing practice, but something that is
fundamentally 'rooted in computer technology' like DDR Holdings." (Br.
12-13.)
Appellants' arguments are not persuasive. At the outset, we note
Appellants' Specification and representative claim 1 describe a method that
"measures behavior from a sample of consumers that is representative of the
overall consumer population" to construct a virtual panel of consumer
purchase behavior. (See Spec. ,-J,-J 1, 7, 12, 15, 36.) The Specification
explains such "virtual panels may be used to create stable merchant
benchmarking products" and "influence the development of products and
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services from ... companies." (See Spec. ,i,i 4, 13.) For example,
representative claim 1 recites the following limitations: (1) "retrieving
records of financial transactions from a specified time period, each record
containing an account identification code, an amount of a transaction, and an
industry segment"; (2) "filtering records ... using a behavior filter"; (3)
"assigning each account a home geographic code"; ( 4) "establishing ...
percentage quotas for geo-demographic cells using geo-demographic data
distributions"; (5) "selecting ... a number of accounts within each geo-
demographic cell to match the geo-demographic data distributions"; ( 6)
"scaling ... the number of accounts within each geo-demographic cell in a
virtual panel to match the geo-demographic data distributions of the overall
consumer universe"; and (7) "saving the resulting virtual panel." (Br. 21
(Claims App'x).) These limitations, under their broadest reasonable
interpretation, recite conducting market research because the limitations all
recite collecting and examining consumers' transaction data, thereby
describing operations that would ordinarily take place when market research
is performed on target markets and customers.
For example, "retrieving records of financial transactions from a
specified time period" and "filtering records ... using a behavior filter"
(limitations (1) and (2)) describe data collection activities for gathering
consumer information, such as consumers' purchasing preferences. Further,
the geographic code "assigning," "establishing ... percentage quotas,"
"selecting ... a number of accounts," and "scaling ... the number of
accounts within each geo-demographic cell" (limitations (3)-(6)) describe
market research analysis for processing the collected consumer information
to obtain samples that are representative of particular populations in
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accordance with geo-demographic data distributions. Further, "saving the
resulting virtual panel" (limitation (7)) describes saving results of the market
research analysis.
Thus, Appellants' method for sampling consumer data and performing
market research is a known business activity and a fundamental economic
practice in our system of commerce, similar to concepts identified by the
courts as abstract ideas. That is, like the risk hedging in Bilski, the
intermediated settlement in Alice, and the offer-based price optimization in
OIP Technologies, the concept of market research is a fundamental business
practice long prevalent in our system of commerce. See Bilski v. Kappas,
561 U.S. 593, 612 (2010); Alice, 134 S.Ct. at 2354-56; OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015). The use of market
research is also a building block of market economies. We therefore
conclude representative claim 1, and grouped claims 7 and 13, recite a
fundamental economic practice, which is one of certain methods of
organizing human activity identified in the Revised Guidance, and thus an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52 (describing an
abstract idea category of"[ c Jertain methods of organizing human activity-
fundamental economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including ... advertising,
marketing or sales activities or behaviors; business relations)").
We are not persuaded by Appellants' additional argument that Alice
demonstrates that "support for an allegation that a claim is a method of
organizing human activity requires proof, such as references to historical
publications." (Br. 13.) First, we do not read Bilski and Alice as
establishing a rule that historical publications always are required to
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demonstrate a claim is a method of organizing human activity. Second, the
record in this case includes citations to publications showing market
research is a fundamental economic practice. See W. Mendenhall et al.,
ELEMENTARY SURVEY SAMPLING (1971) ("Mendenhall"); David A. Aaker et
al., MARKETING RESEARCH (7th ed. 2001) (both cited by the Examiner on
June 17, 2016). Appellants do not address these publications in their
argument. Thus, we do not find Appellants' argument persuasive.
Step 2A-Prong 2 (Integration into Practical Application)
Under Step 2A, Prong 2 of the Revised Guidance, we discern no
additional element ( or combination of elements) recited in Appellants'
representative claim 1 that integrates the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. at 54-55 ("Prong Two").
For example, Appellants' claimed additional elements (e.g., "processor" and
"computer-readable storage medium") do not: (1) improve the functioning of
a computer or other technology; (2) are not applied with any particular
machine ( except for a generic computer); (3) do not effect a transformation
of a particular article to a different state; and ( 4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP §§ 2106.05(a)-(c), (e)-(h).
For business-centric inventions such as Appellants' invention
involving market research, the "integration into a practical application"
prong of the Revised Guidance further requires consideration of whether the
claims purport to provide "a technical solution to a technical problem" as
required by the Federal Circuit's precedential decisions in (1) DDR
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Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)
and (2) Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir.
2016). See MPEP § 2106.05(a).
For example, the Federal Circuit found DDR 's claims are patent-
eligible under section 101 because DDR 's claims: (1) do not merely recite
"the performance of some business practice known from the pre-Internet
world" previously disclosed in Bilski and Alice; but instead (2) provide a
technical solution to a technical problem unique to the Internet, i.e., a
"solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also found Amdocs'
claims patent-eligible under section 101 because like DDR, Amdocs' claims
"entail[] an unconventional technological solution ( enhancing data in a
distributed fashion) to a technological problem (massive record flows which
previously required massive databases)" and "improve the performance of
the system itself." Amdocs, 841 F.3d at 1300, 1302.
Contrary to Appellants' argument that the claimed virtual panel
modeling "is fundamentally 'rooted in computer technology' like DDR
Holdings" (Br. 13), generating a virtual panel representative of particular
consumer populations does not provide any "technical solution to a technical
problem" as contemplated by the Federal Circuit in DDR and Amdocs. See
MPEP § 2106.05(a). Generating a virtual panel from collected consumer
data does not describe technological improvements, or improvements in
computer-related technology. Appellants' abstract idea of sampling
consumer data in a virtual panel for market research does not provide a
technical solution to a technical problem unique to the Internet, i.e., a
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"solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks."
DDR, 773 F.3d at 1257. Instead, the solution proposed by Appellants is
simply to improve sample selection for market research that may guide
business strategies.
Appellants also have not demonstrated that claim 1 recites a specific
improvement to the way computers operate or to the way computers store
and retrieve data in memory. See Enfzsh, LLC v. Microsoft Corp., 822 F.3d
1327, 1336, 1339 (Fed. Cir. 2016). Claim l's processor and computer-
readable storage medium are recited in a general, generic, and functional
manner that does not evince integration into a practical application
pertaining to "computer technology" as argued (see Br. 13). See In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607, 612-13 (Fed. Cir. 2016) (claims
reciting telephone units and a server "performing generic computer functions
such as storing, receiving, and extracting data," held to be an abstract idea).
As further recognized by the Examiner, claim 1 recites collecting,
analyzing, and storing data, similar to other claims (involving data collection
and analysis) identified by the courts as directed to abstract ideas. (Ans. 4-
5; see Electric Power Grp., 830 F.3d at 1353 (holding that "collecting
information, analyzing it, and displaying certain results of the collection and
analysis" are "a familiar class of claims 'directed to' a patent ineligible
concept"); Content Extraction, 776 F.3d at 1347 (claims were "drawn to the
abstract idea of 1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory").)
Appellants' claim 1, unlike claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and storage
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and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299,
1314-15 (Fed. Cir. 2016) ( finding claims not abstract because they "focused
on a specific asserted improvement in computer animation").
Additionally, the functions performed by the processor recited in
claim 1 automate actions that can be performed by humans using pen and
paper. (Ans. 6-7.) In particular, the records' collection and analysis steps in
claim I-including "retrieving records of financial transactions from a
specified time period," "filtering records," "assigning" home geographic
codes, "establishing ... percentage quotas for geo-demographic cells,"
"selecting ... a number of accounts within each geo-demographic cell to
match the geo-demographic data distributions," and "scaling ... the number
of accounts" to match geo-demographic data distributions-can be
performed manually (e.g., by a market researcher) using pen and paper,
without a computer or other machine. See CyberSource, 654 F.3d at 1372-
73 ("[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under§ 101."); see also In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes-or
processes of human thinking-standing alone are not patentable even if they
have practical application."); Benson, 409 U.S. at 67 ("Phenomena of nature
... , mental processes, and abstract intellectual concepts are not patentable,
as they are the basic tools of scientific and technological work" ( emphasis
added)). Additionally, mental processes remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. CyberSource, 654 F.3d at 1375 ("That purely
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mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
Thus, claim 1 does not integrate the judicial exception into a practical
application.
For these reasons, we determine claim 1, and grouped claims 7 and
13, are directed to a judicial exception, namely, the abstract idea of sampling
data for market research, which is a fundamental economic practice and
method of organizing human activity identified as an abstract idea in the
Revised Guidance.
Alice/May~tep 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
In the second step of the Alice inquiry, Appellants argue claim 1
recites significantly more than a judicial exception for the reasons that: (1)
the claimed invention "addresses the network-centric challenge of
processing virtual prepaid cards at locations that can only process physical
payment cards, by providing a solution that is necessarily rooted in computer
technology" (Br. 14); (2) similar to the claims in DDR Holdings, Appellants'
claim is "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of payment networks and
specifying how interactions between computer components are manipulated
to yield a desired result, which is non-routine and non-conventional" (Br.
15-16); and (3) the claimed processor is not a generic computer as it
"require[ s] specific programming" and has "improved functionality" (Br. 16
(citing In re Alappat, 33 F.3d 1526 (Fed. Cir. 1994)).
Appellants' arguments are not persuasive. At the outset, we note
Appellants' arguments are not commensurate with the language of claims 1,
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7, and 13. Neither claims 1, 7, and 13, nor Appellants' Specification
describe "processing virtual prepaid cards at locations that can only process
physical payment cards" (see Br. 14) or address a problem pertaining to
"point of sales devices that can only process physical payment cards at
payment networks" (see Br. 15). (Ans. 6.) Appellants also have not
explained what "problem specifically arising in the realm of payment
networks" is addressed by the claims. (See Br. 15-16.)
With respect to Appellants' technical solution arguments for the
second step of the Alice inquiry, we note that under current Federal Circuit
precedent, an "inventive concept" under Alice step 2 can be established by
showing, for example, that the patent claims:
(1) provide a technical solution to a technical problem unique
to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks"
(see DDR Holdings, 773 F.3d at 1257);
(2) transform the abstract idea into "a particular, practical
application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each
end user" (see BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1352, 1350
(Fed. Cir. 2016)); or
(3) "entail[] an unconventional technological solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([ e.g.,] massive record flows [that] previously
required massive databases)" and "improve the
performance of the system itself' (see Amdocs, 841 F .3d
at 1300, 1302).
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Similarly, as recognized by the Revised Guidance, an "inventive
concept" under Alice step 2 can also be evaluated based on whether an
additional element or combination of elements:
( 1) "adds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present;" or
(2) "simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present."
See Revised Guidance, 84 Fed. Reg. at 56.
In this case, however, we find no element or combination of elements
recited in Appellants' claim 1 that contains any "inventive concept" or adds
anything "significantly more" to transform the abstract concept into a patent-
eligible application. Alice, 134 S.Ct. at 2357. For example, Appellants'
abstract idea of sampling consumer data for market research is not rooted in
computer technology, as the claims in DDR Holdings. Nor does it provide
any technical solution to a technical problem as required by DDR.
Appellants also have not demonstrated their claimed generic processor is
able to perform functions that are not merely generic, as the claims in DDR.
See DDR Holdings, 773 F.3d at 1258. Appellants' claim I merely recites
data processing steps performable by a conventional computer connected to
storage or performable manually by market researchers. (Ans. 6-7.)
Appellants' abstract idea of sampling consumer data for market research
also does not provide any particular practical application as required by
BASCOM, or entail an unconventional technological solution to a
technological problem as required by Amdocs. Instead, Appellants'
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invention uses generically-claimed computing elements to perform the
abstract idea. (Ans. 7-8.) As our reviewing court has observed, "after Alice,
there can remain no doubt: recitation of generic computer limitations does
not make an otherwise ineligible claim patent-eligible." DDR Holdings, 773
F.3d at 1256 ( citing Alice, 134 S.Ct. at 2358).
We also are not persuaded the rejection provides no evidence that
claim elements are "conventional or routine." (See Br. 10, 14, 16.) The
Examiner has identified conventional techniques for sampling consumer
data for market research. 4 Further, the Examiner has identified that
Appellants' Specification describes generic processors and storage
performing generic data manipulation functions. (Ans. 7-8 ( citing Spec.
,-J,-J 20, 30).) "[T]he use of generic computer elements like a microprocessor
or user interface" to perform conventional computer functions "do not alone
transform an otherwise abstract idea into patent-eligible subject matter."
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir.
2016) (citing DDR Holdings, 773 F.3d at 1256); see also OIP Techs., 788
F.3d at 1363 ("relying on a computer to perform routine tasks more quickly
or more accurately is insufficient to render a claim patent eligible").
Appellants also argue claim 1 is patent eligible under § 101 because
the claim's elements achieve "useful results" and "cannot be separated from
the computer-implemented environment (e.g., specific tangible parts
programmed in specific ways to communicate very specific data) of the
claims." (Br. 16.) However, we do not see how the recitation of a
4 For example, the Examiner has identified Reed and Mendenhall as
disclosing techniques for sampling consumer data for market research. (See
Reed Abstract; Mendenhall 54-56.)
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processor, even in conjunction with the recited functions, "ensure[ s] 'that the
[claim] is more than a drafting effort designed to monopolize the [ abstract
idea]."' Alice, 134 S.Ct. at 2357 (brackets in original) (quoting Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. at 77).
Claim 1 uses a generic "processor" as a tool to perform the abstract idea.
(Ans. 7-8.) Additionally, as the Supreme Court emphasized in Bilski,
"although the machine-or-transformation test is not the only test for
patentability, this by no means indicates that anything which produces a
'useful, concrete, and tangible result,' State Street Bank & Trust Co. v.
Signature Financial Group, Inc., 149 F.3d 1368, 1373 (Fed.Cir. 1998), is
patentable." Bilski, 561 U.S. at 658-660 (Breyer, J., concurring). Thus,
"not every claim that recites concrete, tangible components escapes the
reach of the abstract-idea inquiry." In re TL! Commc 'ns, 823 F.3d at 611.
Here, Appellants' processor merely automates data collection and analysis.
See Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.),
687 F.3d 1266, 1278 (Fed. Cir. 2012) ("the fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter."); and Dealertrack, 674
F.3d at 1333-34 ("Simply adding a 'computer aided' limitation to a claim
covering an abstract concept, without more, is insufficient to render [a]
claim patent eligible.") ( citation omitted).
Appellants further argue the claims recite significantly more than a
judicial exception because the claims provide "a technical solution that is ...
novel and non-obvious." (Br. 14.) Appellants' argument is not persuasive
because it improperly conflates the test for § 101 with the separate tests for
§§ 102 and 103. See, e.g., Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
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1369, 1376 (Fed. Cir. 2016) ("under the Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility"); Diamond v. Diehr, 450 U.S. 175,
188-89 (1981) ("The 'novelty' of any element or steps in a process, or even
of the process itself, is of no relevance in determining whether the subject
matter of a claim falls within the § 101 categories of possibly patentable
subject matter."). Although the second step in the Alice/Mayo framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "'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, 573 U.S. at 217-18 ( quoting Mayo 566 U.S. 72-73).
Because Appellants' representative claim 1 is directed to a patent-
ineligible abstract concept, does not recite something "significantly more,"
and simply appends well understood, routine, and conventional activities
known in the industry under the second step of the Alice analysis, we sustain
the Examiner's rejection of representative claim 1, and grouped claims 7 and
13 under 35 U.S.C. § 101.
No separate arguments are presented for dependent claims 2-6, 8-12,
and 14-18, which fall with independent claims 1, 7, and 13.
37 C.F.R. § 41.37(c)(l)(iv). We, therefore, sustain the rejection under
35 U.S.C. § 101 of claims 2-6, 8-12, and 14-18.
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Rejection under 35 U.S.C. § 103
With respect to independent claims 1, 7, and 13, Appellants argue the
claims together. (Br. 18.) Therefore, we select independent claim 1 as the
representative claim for the group and will address Appellants' arguments
presented in the Appeal Brief. See 37 C.F.R. § 41.37(c)(l)(iv).
Appellants contend Reed's customer and prospect analytic records
( CARs and P ARs) are not "records of financial transactions from a specified
time period, each record containing an account identification code, an
amount of a transaction, and an industry segment" as recited in claim 1. (Br.
18.) Appellants also argue Reed does not teach "assigning each account a
home geographic code" as claimed. (Br. 19.) Appellants further assert a
skilled artisan would not combine "adaptive marketing to market offers to
customers based on their past interactions (Reed) with a stratified random
sampling used to design a survey or public opinion poll over a large
geographic area (Mendenhall) to result in a virtual panel modeling" because
"[t]he objectives of these references are different from each other and the
claimed invention." (Br. 17-18.) We do not agree.
We agree with and adopt the Examiner's findings as our own. (Ans.
9-15.) Particularly, we agree with the Examiner that Reed's customer
analytic records ( CARs) teach "records of financial transactions from a
specified time period" as claimed. (Ans. 12-14.) Particularly, Reed teaches
the customer records include "time series transaction data," "transaction
activity," and "average value per transaction" between a customer and a
company providing goods or services. (See Reed ,-J,-J 36, 42, 56, 60, 64.) The
transactions in Reed's customer records include data on loan and mortgage
balances, "promotions redeemed by the customer," and "products and
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services that a customer has previously purchased from [a] business." (See
Reed ,i,i 38, 40, 64, Fig. lB.) Thus, Reed's customer records are
commensurate with the description of "records of financial transactions" in
Appellants' Specification. (Spec. ,i,i 12, 31, 36.)5 Additionally, Reed's
records of financial transactions are retrieved "from a specified time period"
as claimed. (Ans. 12-13 (citing Reed ,i 36); Final Act. 16-17 (citing Reed
,i,i 37--40, 64).)
We are also not persuaded by Appellants' argument that "nowhere in
the Reed reference is CAR or PAR described as containing 'an account
identification code, an amount of a transaction, and an industry
segment" as recited in claim 1. (Br. 18.) We agree with the Examiner that
Reed's customer records include an "account identification code" as
claimed. (Ans. 13 (citing Reed ,i 36); Final Act. 16-17 (citing Reed ,i,i 27-
30, 37--40).) Particularly, Reed's customer records include "customer ids"
for a company's customers and for customer data "collected through
internal, external, and/or business partner data sources," "a household
identifier ... used to cross-reference a customer to a household," and
"household individual information such as name" (see Reed ,i,i 27, 30, 36-
37, 39), which is commensurate with the broad description of "account
identification code" in Appellants' Specification. 6
5 Appellants' Specification provides "[fJinancial transactions may include
credit, debit, charge, prepaid payment card, checking, savings, balance-
transfer transactions, and the like," such as "grocery transactions" and
"financial expenditures" in various merchant categories. (See Spec. ,i,i 12,
31, 36.)
6 Appellants' Specification mentions an "account identification code" but
does not particularly explain what the code is. (See Spec. ,i 8.) The Appeal
Brief's "Summary of Claimed Subject Matter" further points to "element
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Reed further teaches its customer records include "an amount of a
transaction" as claimed. (Ans. 13 (citing Reed ,i,i 36, 38, 40); see Reed
,i,i 3 6 ("summarize transaction information"), 3 8 ("The CAR may also
include .... information related to ... promotions redeemed by the
customer"), 40 ("the CAR also preferably includes fields representing
product ownership information .... [including] products and services that a
customer has previously purchased from the business").) Additionally, Reed
teaches its customer records include "an industry segment" as claimed.
(Ans. 13-14 (citing Reed ,i,i 37, 39); Final Act. 17 (citing Reed ,i,i 64-65).)
Reed's information pertaining to a customer's preferred brand and lifestyle
products is commensurate with the broad description of "industry segment"
in Appellants' Specification. 7
Thus, Reed teaches "retrieving records of financial transactions from a
specified time period, each record containing an account identification code,
an amount of a transaction, and an industry segment" as recited in claim 1.
(Ans. 12-14.)
Appellants further argue "Reed does not teach 'assigning each
account a home geographic code"' as "[n]o assignment is occurring in these
paragraphs [ (iJiJ 3 6-40 of Reed) ]-the paragraphs describe fields that
already exist in a CAR record." (Br. 19.) We agree with the Examiner,
however, that Reed assigns geographic codes when Reed creates the
customer records (CARs). (Ans. 14-15 (citing Reed ,i,i 11, 36, 46-47, 55-
3010 of FIG. 3, paragraph 0042," which describe financial transaction
accounts retrieved from a database. (Br. 4; see Spec. ,i 42, Fig. 3.)
7 Appellants' Specification describes "transactions or spending ... in a
given merchant category" and "the type of industry a financial transaction is
taking place at." (See Spec. ,i,i 31, 36.)
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59, 68-69, 72-73); Final Act. 17.) Particularly, Reed creates customer
records that associate customer data elements-including "identification
fields ... for household information such as a household identifier, address,
and phone number"-with a customer's account information. (See Reed
,-J,-J 36, 46.) Reed's household identifier and address are commensurate with
the description of "home geographic code" in Appellants' Specification. 8
Thus, Reed teaches "assigning each account a home geographic code" as
recited in claim 1. (Ans. 14-15.)
Appellants further argue Reed and Mendenhall are non-analogous to
one another and cannot logically be combined. (Br. 17-18.) Particularly,
Appellants assert a skilled artisan would not combine "adaptive marketing to
market offers to customers based on their past interactions (Reed) with a
stratified random sampling used to design a survey or public opinion poll
over a large geographic area (Mendenhall)" because "[t]he objectives of
these references are different from each other and the claimed invention."
(Br. 17.) Appellants argue Reed's objective is "to use market research to
target advertising," Mendenhall's objective is "designing surveys from
stratified random samplings," and the invention's objective is "to create a
virtual panel, which measures behavior from a sample of consumers that is
representative of overall consumer populations .... [which] is different from
a market research process, in that it is not market research, nor directed
8 Appellants' Specification provides "[ e Jach financial transaction account is
assigned a home geographic code, based on the location of the account
holder .... For example, the home geographic code may be assigned via
postal code (e.g., 'ZIP code')." (See Spec. ,-J 43.)
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toward target advertising." (Br. 17.) Appellants also argue the Examiner
has not provided adequate reasoning to combine the references. (Br. 1 7-18.)
We disagree with Appellants, as the Examiner has provided a
reasoned rationale to combine the teachings of Reed and Mendenhall, which
Appellants have not addressed or rebutted in a Reply Brief. (See Ans. 11
("one of ordinary skill would have recognized that applying the sampling
technique of Mendenhall to the adaptive marketing system of Reed would
result in an improved marketing system capable of acquiring a greater
amount of information at a given cost" and "the results of such a
combination are predictable because the level of ordinary skill demonstrated
by the references, specifically Mendenhall, clearly sets forth the ability to
apply the disclosed techniques in the field of invention") ( citing Mendenhall
53-54).) The Examiner also explains that Reed and Mendenhall "are
analogous with respect to one another and with respect to the claimed
invention because they all lie within the same field of endeavor-that is,
modeling information regarding a consumer population." (Ans. 9-10 ( citing
Reed ,-J,-J 1-13, Abstract; Mendenhall 53; Spec. ,-J,-J 1-6).) Appellants'
arguments have not addressed these specific findings by the Examiner. We
agree with the Examiner that Reed ( disclosing predictive modeling of
consumer behavior, see Reed ,-J,-J 1-13) and Mendenhall ( disclosing market
research methods for increasing the informational content of sampled data,
see Mendenhall 53-55) would have logically commended themselves to the
problem of modeling the financial behavior of a consumer population as
addressed in the present application. (Ans. 9-10; see Spec. ,-J,-J 1-6, 12-14.)
We also disagree with Appellants' argument that their invention does
not pertain to market research or target advertising. (See Br. 17.) Rather,
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Appellants' Specification provides that panels may be constructed by market
research companies to reveal consumer behavior and market trends, thereby
"directly influenc[ing] the development of products and services from ...
companies." (See Spec. ,i,i 2-6, 12-14.)
As Appellants' Brief has not shown error in the Examiner's proffered
prima facie case of obviousness under§ 103, we sustain the Examiner's
decision in rejecting representative independent claim 1, grouped
independent claims 7 and 13, and dependent claims 2-6, 8-12, and 14-18,
not separately argued, under 35 U.S.C. § 103.
DECISION
The Examiner's rejection of claims 1-18 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-18 under 35 U.S.C. § 103 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a)(l )(iv).
AFFIRMED
24