Ex Parte WIESMAN et al

Patent Trial and Appeal Board

Aug 21, 2018

13795169 (P.T.A.B. Aug. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/795, 169 03/12/2013
21839 7590 08/23/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Mark WIESMAN
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.
0076412-000105 1286
EXAMINER
NGUYEN, TIEN C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
08/23/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK WIESMAN,
THEUNIS JOHANNES GERBER, and
SUSAN MARIE MEYER
Appeal2017-005395
Application 13/795,169 1
Technology Center 3600
Before MARC S. HOFF, LARRY J. HUME, and JASON J. CHUNG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-10, 12-18, and 20-38, which are all claims pending in
the application. Appellants have withdrawn claims 11 and 19 from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is MasterCard
International Inc. App. Br. 2.
Appeal2017-005395
Application 13/795,169
STATEMENT OF THE CASE2
The Invention
Appellants' disclosed embodiments and claimed invention "relate[] to
the use of geofences to identify fraud factors, specifically using home
markets and geolocation to identify when a consumer is outside of a home
market to identify fraud factors to provide additional account security."
Spec. ,r 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A computer-implemented method for identifying
fraud factors, comprising:
receiving, by a receiving device and from a data provider
entity device, a plurality of data points;
storing, in a fraud database, the plurality of data points;
receiving, by the receiving device and from a financial
transaction processing entity device, a plurality of financial
transactions;
storing, in a transaction database, the plurality of
financial transactions;
receiving, by the receiving device, consumer data for a
plurality of consumers, comprising a plurality of mobile device
identifiers and a plurality of account identifiers associated with
the plurality of consumers;
2 Our decision relies upon Appellants' Appeal Brief ("App. Br.," filed
Aug. 15, 2016); Reply Brief ("Reply Br.," filed Feb. 13, 2017); Examiner's
Answer ("Ans.," mailed Dec. 15, 2016); Final Office Action ("Final Act.,"
mailed Mar. 24, 2016); and the original Specification ("Spec.," filed
Mar. 12, 2013).
2
Appeal2017-005395
Application 13/795,169
storing, in a consumer database, a plurality of consumer
data entries, wherein each consumer data entry is associated
with a consumer of the plurality of consumers and includes at
least a mobile device identifier of the plurality of mobile device
identifiers and an account identifier of the plurality of account
identifiers;
identifying, by a processing device, at least one home
market for each consumer data entry in the plurality of
consumer data entries based on usage patterns of a financial
account associated with the account identifier;
associating, in the consumer database, the identified at
least one home market with the corresponding consumer data
entry;
identifying, at a predetermined time, a geographic
location of a mobile device associated with the mobile device
identifier for each consumer data entry, wherein the geographic
location of the mobile device is received from a device of a
location identifying agency;
determining, by the processing device, that at least one
identified geographic location is located outside of a
predetermined distances from the at least one home market
associated with the corresponding consumer data entry;
storing, in the fraud database, a location data point for
each identified geographic location outside of a predetermined
distance from the at least one home market associated with the
corresponding consumer data entry, wherein the location data
point includes at least the identified geographic location, the
consumer associated with the corresponding consumer data
entry, and a time and/or date at which the geographic location
was identified;
identifying, by the processing device, at least one fraud
factor for detecting fraud in an electronic financial transaction,
wherein the at least one fraud factor is based on at least the
plurality of financial transactions, the plurality of data points,
and each location data point, and
3
Appeal2017-005395
Application 13/795,169
the electronic financial transaction is to either be
permitted or denied based at least in part upon the identified at
least one fraud factor;
receiving, by the receiving device, an authorization
request for the electronic financial transaction, wherein the
authorization request includes transaction information; and
transmitting, by a transmitting device, an authorization
response message indicating that processing of the electronic
financial transaction has been permitted or denied.
Rejection on Appea/3
Claims 1-10, 12-18, and 20-38 stand rejected under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter. Final Act. 2.
CLAIM GROUPING
Based on Appellants' arguments (App. Br. 9-25), we decide the
appeal of patent-ineligible subject matter Rejection RI of claims 1-10,
12-18, and 20-3 8 on the basis of representative claim 1. 4
ISSUE
Appellants argue (App. Br. 9-25; Reply Br. 2-7) the Examiner's
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
3 We note the Examiner states, "[c]laims 1-10, 12-18 and 20-38 are defined
over the prior arts." Final Act. 16.
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 4I.37(c)(l)(iv).
In addition, when Appellants do not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
4
Appeal2017-005395
Application 13/795,169
ineligible subject matter is in error. These contentions present us with the
following issue:
Under our governing case law concerning 35 U.S.C. § 101, did the
Examiner err in concluding claim 1 is directed to a judicial exception, i.e., an
abstract idea, without significantly more, and thus is patent-ineligible under
§ 101?
ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellants. To the extent Appellants have not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 4I.37(c)(l)(iv).
We disagree with Appellants' arguments with respect to claims 1-10,
12-18, and 20-38 and, unless otherwise noted, we incorporate by reference
herein and adopt as our own: ( 1) the findings and reasons set forth by the
Examiner in the action from which this appeal is taken, and (2) the reasons
and rebuttals set forth in the Examiner's Answer in response to Appellants'
arguments. We highlight and address specific findings and arguments
regarding claim 1 for emphasis as follows.
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo
5
Appeal2017-005395
Application 13/795,169
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Id. (internal quotation marks, citation, and bracketing
omitted). First, we "determine whether the claims at issue are directed to [a]
patent-ineligible concept[]." Id. at 2355. If so, 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." Id. at
2357 (quoting Mayo, 566 U.S. at 72, 79). While the two steps of the Alice
framework are related, the "Supreme Court's formulation makes clear that
the first-stage filter is a meaningful one, sometimes ending the § 101
inquiry." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). We note the Supreme Court "has not established a definitive rule
to determine what constitutes an 'abstract idea"' for the purposes of step one.
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing
Alice, 134 S. Ct at 2357).
However, our reviewing court has held claims ineligible as directed to
an abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
6
Appeal2017-005395
Application 13/795,169
at 71. Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, an idea of
itself, and mathematical formulas or relationships. Alice 134 S. Ct. at 2355-
57. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Id. at 2354 ("[W]e tread carefully in
construing this exclusionary principle lest it swallow all of patent law.").
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (internal citation
omitted). If the claims are not directed to a patent-ineligible concept, the
inquiry ends. See Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1262 (Fed. Cir. 2017). If the concept is directed to a patent-ineligible
concept, we proceed to the "inventive concept" step. For that second step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
Alice Step I -Abstract Idea
Our reviewing court has held claims ineligible as being directed to an
abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
7
Appeal2017-005395
Application 13/795,169
at 71. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Appellants generally contend the Examiner did not accurately
characterize the claimed subject matter (App. Br. 9), and also argues, "[a]
summary of Appellants' claims which fails to consider core features recited
therein and their character as a whole cannot be considered a fair
characterization of the subject matter to which Appellants' claims are
directed." App. Br. 10.
Along these lines, Appellants further assert, "when fairly summarized
by the Court, the claims at issue in DDR Holdings 5were not found to be
directed to an abstract concept. In light of the above-discussed court
decisions, Appellants respectfully submit that an accurate summarization of
the focus of the claims is essential to correctly answering the inquiry under
step 2A of Alice." Id.
In addition, Appellants contend:
Summarizing the recitations of Appellant's claims as
separately including "ideas" relating to "organizing" and
"comparing" information ignores certain technological features
of Appellant's claims as well as the technical solutions provided
thereby. It is respectfully submitted that the Office's
characterization of Appellant's claims as merely including " [ a ]n
idea of itself' fails to adequately encompass the subject matter
to which Appellant's claims are actually directed. For instance,
one skilled in the art reading the Examiner's summary of
5 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
8
Appeal2017-005395
Application 13/795,169
Appellant's claimed subject matter would have no
understanding that such claims offered technical solution.
Appellant respectfully submits that the present claims are
not abstract. Rather, Appellant respectfully submits that the
pending claims are inextricably tied to the technical fields of
information technology management, electronic transaction
processing and analytics, and identity protection in electronic
transaction processing. Appellant further respectfully submits
that the claims provide technical solutions to problems tied to
these technical fields. In particular, the present claims recite a
manner in which data is received, stored, processed and
ultimately implemented to result in the detection of fraudulent
electronic financial transactions and to cause the tangible
result of either permitting or denying processing of an
electronic financial transaction based upon the identification
of a fraud factor. Some of Appellant's claims recite that data
transmitted within an authorization request for the processing
of the electronic financial transaction is taken into account to
determine whether to process or deny processing of the
electronic financial transaction. Thus, the network
communications within the electronic financial transaction
processing system o(Appellant's claims are altered based
upon the process performed therein and ultimately,
Appellant's claims result in a determination as to whether
processing o(a financial transaction occurs or not.
App. Br. 11.
Appellants further rely upon the holding in Enfzsh 6 in arguing claim 1
is not directed to an abstract idea.
Analogous to Enfish, Appellant respectfully submits that
the pending claims are not directed to an "abstract idea" or any
method of applying such an idea "using" a generic computer as
a tool. Instead, Appellant respectfully submits that the pending
claims are directed to a technical solution for improving the
manner in which electronic transaction systems identify and
6 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
9
Appeal2017-005395
Application 13/795,169
prevent the occurrence of fraudulent transactions. Appellant's
claims are not merely an economic process to which a computer
is added "after the fact," as suggested by the Examiner. Instead,
Appellant's claims address a particular problem existing in a
particular type of network (i.e., a financial transaction network)
as would be apparent to one skilled in the art when reading
Appellant's claims in light of Appellant's Specification.
Additionally, as noted above, Appellant respectfully
submits that Appellant's claims solve a technical problem
arising from and tied to the technical fields of information
technology management, electronic transaction processing and
analytics, and identity protection in electronic transaction
processing. That is, but-for the existence of electronic
transaction processing, there would be no use for Appellant's
claimed technical solution. Accordingly, Appellant's claims are,
on their face, directed to computer and computer-network based
improvements to a problem arising because of the existence of
certain computer technology. Said another way, Appellant's
claims are not directed to an abstract idea ineligible for
patenting.
App. Br. 13-14.
In response, the Examiner determined claim 1 is directed to and
recites receiving information and using usage patterns of a financial account,
among other factors, to "organize/identify at least one home market for each
consumer data entry" and "at least one fraud factor for detecting fraud," as
well as comparing and determining identified geographic location
information and the home market, and concludes this has "been found to be
an abstract idea example by the courts including 'An Idea Of Itself." Ans. 5.
Under the "abstract idea" step we must evaluate "the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs, 838 F.3d at
1257 ( citation omitted).
10
Appeal2017-005395
Application 13/795,169
Turning to the claimed invention, claim 1 recites, "[a] computer-
implemented method for identifying fraud factors." Claim 1 (preamble).
Method claim 1 's limitations also require the steps of:
(a) "receiving ... data points";
(b) "storing ... data points";
( c) "receiving ... financial transactions";
(d) "storing ... financial transactions";
( e) "receiving ... consumer data ... comprising ...
mobile device [and] account identifiers";
( f) "storing ... consumer data entries";
(g) "identifying ... at least one home market ... based
on usage patterns of a financial account";
(h) "associating ... the ... home market with the
corresponding consumer data entry;"
(i) identifying ... a geographic location of a mobile
device ... for each consumer data entry";
(j) "determining ... that at least one identified
geographic location is located outside of a predetermined
distances from the at least one home market";
(k) storing ... a location data point for each identified
geographic location";
(1) "identifying ... at least one fraud factor ... wherein
... the electronic financial transaction is to either be permitted
or denied based at least in part upon the identified at least one
fraud factor"
'
(m) "receiving ... an authorization request for the
electronic financial transaction"; and
(n) "transmitting ... an authorization response message
indicating that processing of the electronic financial transaction
has been permitted or denied."
11
Appeal2017-005395
Application 13/795,169
Under step one (sometimes referred to as "Step 2A"), we agree with
the Examiner that the inventions claimed in each of independent claims 1,
12, 20, and 31 are directed to an abstract idea, i.e., comparing data to
organize and identify information and using rules to identify options related
to potentially fraudulent payment transactions, which we also conclude is an
idea of itself. See Ans. 3-5.
As the Specification discloses, " [ t ]he present disclosure relates to the
use of geofences to identify fraud factors, specifically using home markets
and geolocation to identify when a consumer is outside of a home market to
identify fraud factors to provide additional account security." Spec. ,r 1. 7
We find this type of activity, i.e., collecting and analyzing information to
detect misuse and notifying a user when misuse is detected, for example,
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
7 See also Spec. 44 ("Abstract"):
A method for identifying fraud factors includes: storing
data points; storing financial transactions; storing a plurality of
consumer data entries, each data entry associated with a
consumer and including a mobile device identifier and account
identifier; identifying a home market for a data entry based on
usage patterns of an associated financial account; identifying, at
a predetermined time, a geographic location of a mobile device
associated with the data entry; storing a location data point for
the geographic location if the geographic location is outside of a
predetermined distance from the home market, wherein the
location data point includes the identified geographic location,
the consumer associated with the data entry, and a time and/or
date at which the geographic location was identified; and
identifying a fraud factor for detecting fraud in a transaction,
the fraud factor based on the financial transactions, the data
points, and the location data point.
12
Appeal2017-005395
Application 13/795,169
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
13 7 5 (Fed. Cir. 2011) ("That purely mental processes can be unpatentable,
even when performed by a computer, was precisely the holding of the
Supreme Court in Gottschalk v. Benson."). 8
Our reviewing court has held other patent claims ineligible for reciting
similar abstract concepts. For example, while the Supreme Court has
enhanced the § 101 analysis since CyberSource in cases like Mayo and
Alice, they continue to "treat[ ] 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." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354).
In addition, our reviewing court has concluded that abstract ideas
include the concepts of collecting data, recognizing certain data within the
collected data set, and storing the data in memory. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed.
Cir. 2014). Additionally, the collection of information and analysis of
information ( e.g., recognizing certain data within the dataset) are also
abstract ideas. Elec. Power, 830 F.3d at 1353-54 (collecting information
and "analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category"). Similarly, "collecting, displaying, and
manipulating data" is an abstract idea. Intellectual Ventures I LLC v.
8 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
13
Appeal2017-005395
Application 13/795,169
Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017). Further, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is abstract. Digitech Image
Techs., LLC v. Elec.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014). Also, more recently, our reviewing court has also concluded that
acts of parsing, comparing, storing, and editing data are abstract ideas.
Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018).
In Fair Warning, our reviewing court held, for analogous subject
matter:
We find that, under step one, the claims of the '500 patent
are directed to an abstract idea. As the '500 patent specification
explains, the invention "relates to a system and method of
detecting fraud and/ or misuse in a computer environment based
on analyzing data such as in log files, or other similar records,
including user identifier data" .... The district court found that
"the '500 patent is directed to or drawn to the concept of
analyzing records of human activity to detect suspicious
behavior" .... We agree. The patented method, as illustrated
by claim 1 ... collects information regarding accesses of a
patient's personal ... information, analyzes the information
according to one of several rules (i.e., related to accesses in
excess of a specific volume, accesses during a pre-determined
time interval, or accesses by a specific user) to determine if the
activity indicates improper access, and provides notification if it
determines that improper access has occurred.
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1093 (Fed.
Cir. 2016) (internal citations omitted). We find the claims at issue in
FairWarning to be sufficiently analogous to the appealed claims to support
our agreement with the Examiner's conclusion that claim 1 is directed to an
abstract idea. Contrast App. Br. 14.
14
Appeal2017-005395
Application 13/795,169
Appellants also allege claim 1 is patent-eligible because it is
"inextricably tied to the technical fields of information technology
management, electronic transaction processing and analytics, and identity
protection in electronic transaction processing ... [ and] submits that the
claims provide technical solutions to problems tied to these technical fields."
App. Br. 11.
Appellants further argue:
Analogous to Enfzsh ... the pending claims are not
directed to an "abstract idea" or any method of applying such an
idea "using" a generic computer as a tool. Instead, Appellant
respectfully submits that the pending claims are directed to a
technical solution for improving the manner in which electronic
transaction systems identify and prevent the occurrence of
fraudulent transactions. Appellant's claims are not merely an
economic process to which a computer is added "after the fact,"
as suggested by the Examiner. Instead, Appellant's claims
address a particular problem existing in a particular type of
network (i.e., a financial transaction network) as would be
apparent to one skilled in the art when reading Appellant's
claims in light of Appellant's Specification.
App. Br. 13.
In Enfzsh, our reviewing court held claims directed to a self-referential
logical model for a computer database patent-eligible under step one of
Alice. Enfzsh, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id. at
1333. The court found the claims directed to "a specific improvement to the
way computers operate, embodied in the self-referential table" (id. at 1336),
and explained that the claims are "not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
15
Appeal2017-005395
Application 13/795,169
for a computer database" that functions differently than conventional
databases. Id. at 1337.
However, we find Appellants' claim 1 is distinguishable over the
claim considered by the court in Enfzsh, which was found to be "directed to
an improvement in the functioning of a computer." Enfish, 822 F.3d at
1338. The court in Enfzsh further noted, "[i]n contrast, the claims at issue in
Alice and Versata can readily be understood as simply adding conventional
computer components to well-known business practices." Id. We conclude
such is the case here.
Although Appellants urge that claim 1 is an improvement in computer
technology by providing "a technical solution for improving the manner in
which electronic transaction systems identify and prevent the occurrence of
fraudulent transactions" (App. Br. 13), we disagree. We find the claimed
steps of data receiving, storing, identifying, and associating of Appellants'
claim 1 do not positively recite any improved electronic or programmatic
method of processing, but instead are merely directed to comparing and
analyzing the informational content of the data and "transmitting ... an
authorization response message indicating that processing of the electronic
financial transaction has been permitted or denied." Claim 1.
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than identifying, collecting, storing, comparing, and
generating data, without any particular inventive technology- an abstract
idea. See Elec. Power Grp., 830 F.3d at 1354. 9
9 Merely automating previously manual processing by using computers does
not qualify as an eligibility-rejection-defeating improvement. Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).
16
Appeal2017-005395
Application 13/795,169
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of receiving, processing, storing, comparing, and
17
Appeal2017-005395
Application 13/795,169
generating data into a patent-eligible application of that abstract idea. See
Ans. 12-15. 10
We note the patent eligibility inquiry may contain underlying issues of
fact. Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016). In particular, "[t]he question of whether a claim
element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact."
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the claimed components
and processes, we note Appellant's Specification in paragraphs 34
through 47 and 71 through 80. For example:
[0075] Processor device 1004 may be a special purpose or a
general purpose processor device. The processor device 1004
may be connected to a communication infrastructure 1006, such
as a bus, message queue, network, multi-core message-passing
scheme, etc. The network may be any network suitable for
performing the functions as disclosed herein and may include a
local area network (LAN), a wide area network (WAN), a
wireless network (e.g., WiFi), a mobile communication
10 The Examiner further concludes the combination of elements in claim 1
amounts to nothing more than generic computer functions
merely used to implement the abstract ideas, such as the ideas
that could be done by a human analog (i.e., by hand or by
merely thinking). Thus, the devices of the claim are the tools
that merely used to implement the abstract ideas, so add nothing
significantly more than the abstract ideas. Thus, when viewed
either individually, or as an ordered combination, the additional
limitations do not amount to a claim as a whole that is
significantly more than the abstract idea (Step 2B: NO).
Ans. 13. We agree for the reasons discussed above.
18
Appeal2017-005395
Application 13/795,169
network, a satellite network, the Internet, fiber optic, coaxial
cable, infrared, radio frequency (RF), or any combination
thereof. Other suitable network types and configurations will be
apparent to persons having skill in the relevant art. The
computer system 1000 may also include a main memory 1008
(e.g., random access memory, read-only memory, etc.), and
may also include a secondary memory 1010. The secondary
memory 1010 may include the hard disk drive 1012 and a
removable storage drive 1014, such as a floppy disk drive, a
magnetic tape drive, an optical disk drive, a flash memory, etc.
Spec. ,r 75.
We agree with the Examiner that the claim limitations may be
construed broadly but reasonably as reciting conventional computer
components and techniques, particularly in light of Appellant's
Specification, as cited and quoted above. 11
With respect to the Step 2 analysis, we agree with the Examiner
because, as in Alice, the recitation of either a "computer-implemented
method for identifying fraud factors" using a "receiving device," a
"database," "processing device," and "transmitting device" (claims 1
and 12), or a "system for identifying fraud factors" having "a receiving
device," "financial transaction processing entity device," multiple
11 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using "the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant's specification." In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
19
Appeal2017-005395
Application 13/795,169
"database[s]," and "a processing device" (claim 20) and an additional
"transmitting device" ( claim 31) is simply not enough to transform the
patent-ineligible abstract idea here into a patent-eligible invention. See
Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention."). 12
Further, Appellants' reliance on DDR (App. Br. 19--20) in a Step 2
inventive concept analysis is misplaced as the recited claims do not improve
the computer. In DDR, which we point out is associated with analysis under
Step 1, i.e., the Abstract Idea analysis, the claims at issue involved, inter
alia, "web pages displays [with] at least one active link associated with a
commerce object associated with a buying opportunity of a selected one of a
plurality of merchants" (claim 1 of US 7,818,399). The Federal Circuit
found the claims in DDR to be patent-eligible under step one of the
Mayo/Alice test because "the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." DDR Holdings, 773 F.3d at 1257.
Specifically, the Federal Circuit found the claims addressed the "challenge
of retaining control over the attention of the customer in the context of the
Internet." Id. at 1258. We find the rejected claims are dissimilar to DDR's
web page with an active link, and the Specification does not support the
12 Appellant merely alleges, "[i]n the present matter, the Examiner suggests
that Appellant's claims recite known, conventional pieces of a 'generic
computer;' however, even if such a suggestion were true, Appellant
respectfully submits that, like the claims of Bascom Global, the present
claims provide an inventive concept by virtue of the non-conventional
arrangement and configuration of devices of an electronic transaction
processing system." App. Br. 21.
20
Appeal2017-005395
Application 13/795,169
view that the computer related claim elements are unconventional. See
Spec. ,r,r 34--47 and 71-80.
Accordingly, based upon the findings above, on this record, we are
not persuaded of error in the Examiner's conclusion that the appealed claims
are directed to patent-ineligible subject matter. Therefore, we sustain the
Examiner's § 101 rejection of independent claim 1, and grouped claims
2-10, 12-18, and 20-38, not argued separately, and which fall therewith.
See Claim Grouping, supra.
REPLY BRIEF
To the extent Appellants may advance new arguments in the Reply
Brief (Reply Br. 2-7) not in response to a shift in the Examiner's position in
the Answer, we note arguments raised in a Reply Brief that were not raised
in the Appeal Brief or are not responsive to arguments raised in the
Examiner's Answer will not be considered except for good cause (see 37
C.F.R. § 41.4I(b)(2)), which Appellants have not shown.
CONCLUSION
The Examiner did not err with respect to patent-ineligible subject
matter Rejection RI of claims 1-10, 12-18, and 20-38 under 35 U.S.C.
§ 101, and we sustain the rejection.
21
Appeal2017-005395
Application 13/795,169
DECISION
We affirm the Examiner's decision rejecting claims 1-10, 12-18,
and 20-38.
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
22