Ex Parte Zhou

Patent Trial and Appeal Board

Jul 25, 2018

13258348 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/258,348 09/21/2011
29150 7590 07/27/2018
LEE & HAYES, PLLC
601 W. RIVERSIDE A VENUE
SUITE 1400
SPOKANE, WA 99201
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Yarning Zhou
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.
AB1-0118US 7432
EXAMINER
CIVAN,ETHAND
ART UNIT PAPER NUMBER
3684
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y AMING ZHOU
Appeal2017-002665
Application 13/258,348 1
Technology Center 3600
Before ELENI MANTIS MERCADER, MATTHEW J. McNEILL, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
McNEILL, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1, 3, 6, 8, 11-14, 16, and 19-21, which are all the claims
pending in this application. Claims 2, 4, 5, 7, 9, 10, 15, 17, 18, and 22 were
cancelled. App. Br. 39--44. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellant, the real party in interest is Alibaba Group Holding
Limited. App. Br. 3.
Appeal2017-002665
Application 13/258,348
STATEMENT OF THE CASE
Introduction
Appellant's application relates to determining the credibility of an
online trading user by querying other users that have interacted with the
trading user. Abstract. Claim 1 illustrates the appealed subject matter and
reads as follows:
1. A method implemented by one or more computing
devices, the method comprising:
identifying a candidate user of a website as a user to be
evaluated in response to determining that a base score associated
with the candidate user is greater than a base score threshold;
intercepting a time segment as a referenced transaction
record from a historical transaction record of the user to be
evaluated through a time window, the historical transaction
record being stored in a database;
querying reference users corresponding to the user to be
evaluated from the referenced transaction record, the reference
users including trading users who have conducted online
transactions with the user to be evaluated within the time
segment;
determining that the user to be evaluated is suspicious of
credit speculation in response to determining that a percentage of
the reference users whose base scores are less than a
predetermined score is greater than or equal to a predetermined
percentage; and
upon determining that the user to be evaluated is
suspicious of the credit speculation, determining that the user to
be evaluated is an unreliable user in response to determining that
a majority of sales transactions with the user to be evaluated
acting as a seller involve transaction amounts less than a
predetermined monetary amount.
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Application 13/258,348
The Examiner's Rejection
Claims 1, 3, 6, 8, 11-14, 16, and 19-21 stand rejected under 35 U.S.C.
§ 101 as being directed to unpatentable subject matter. Non-Final Act. 3-7.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
contentions that the Examiner has erred. We disagree with Appellant's
contentions. Except as noted below, we adopt as our own: (1) the findings
and reasons set forth by the Examiner in the Non-Final Action from which
this appeal is taken; and (2) the reasons set forth by the Examiner in the
Examiner's Answer in response to Appellant's Appeal Brief. We concur
with the Examiner's conclusions. We highlight the following additional
points.
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355.
Assuming that a claim nominally falls within one of the statutory categories
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Application 13/258,348
of machine, manufacture, process, or composition of matter, the first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 2355-57. If the claim is directed to a judicial exception,
such as an abstract idea, the second step is to determine whether additional
elements in the claim "'transform the nature of the claim' into a patent-
eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This
second step is described as "a search for an "'inventive concept"'-i.e., an
element or combination of elements that is ' ... significantly more than ...
the [ineligible concept] itself."' Id. (alteration in original) (quoting Mayo,
566 U.S. at 72-73).
Alice Step One
"[T]he first step in the Alice inquiry ... asks whether the focus of the
claims is on the specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335-36 (Fed. Cir. 2016). "The abstract idea exception
prevents patenting a result where 'it matters not by what process or
machinery the result is accomplished."' McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v.
Morse, 56 U.S. (15 How.) 62, 113 (1854)). "We therefore look to whether
the claims ... focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that itself is
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the abstract idea and merely invoke generic processes and machinery."
McRO, 837 F.3d at 1314.
Appellant argues claim 1 is not directed to an abstract idea because it
recites features that are unique to a technological environment. App. Br. 15.
According to Appellant, it would be impossible for a human to perform the
method of claim 1 without the assistance of a computer. Reply Br. 5.
Claim 1 is generally directed to generating a credibility result for a
user by evaluating the user's transaction history, including the credibility of
other users with whom the primary user has interacted. The Examiner finds,
and we agree, claim 1 is directed to the abstract idea of generating a
credibility result for a user, and this method involves a series of mental steps
that could be performed with or without the assistance of a computer.
Non-Final Act. 4-5.
Appellant argues claim 1 cannot be performed without the assistance
of a computer. App. Br. 16. According to Appellant, pencil and paper could
not produce the actual effect of the invention. Id. at 15-16. Instead,
Appellant argues claim 1 is "necessarily rooted in technology and cannot be
performed by people without the assistance of a computer." Id. at 16.
Appellant has not persuaded us of Examiner error. Claim 1 recites a
"method implemented by one or more computing devices." The method is
directed to identifying a user to be evaluated, intercepting a transaction
record, querying reference users that have interacted with the user to be
evaluated, determining that the user is suspicious of credit speculation based
on the query results, and determining that the user is suspicious of credit
speculation based on the user's transaction history.
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We disagree with Appellant's characterization of this method as
"necessarily rooted in technology." Claim 1 recites a business method for
identifying users suspicious of credit speculation. The computer limitations
in claim 1 are merely tools to achieve this method. Indeed, Appellant
concedes that without the assistance of a computer, a person could evaluate a
paper copy of the historical transaction record of a user. See App. Br. 15.
Appellant further concedes a user could search through piles of papers,
determine reference users, and correspond with these reference users. Id.
The Federal Circuit in DDR Holdings found claims necessarily rooted in
computer technology to be patent eligible, but issued a relevant warning:
We caution, however, that not all claims purporting to
address Internet-centric challenges are eligible for patent. For
example, in our recently-decided Ultramercial opinion, the
patentee argued that its claims were "directed to a specific
method of advertising and content distribution that was
previously unknown and never employed on the Internet
before." But this alone could not render its claims patent-
eligible. In particular, we found the claims to merely recite the
abstract idea of "offering media content in exchange for
viewing an advertisement," along with "routine additional steps
such as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use
of the Internet."
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir.
2014) ( citations omitted).
The claims in DDR Holdings addressed a problem unique to the
Internet in a manner that was "not merely the routine or conventional use of
the Internet." Id. at 1259. In particular, rather than the expected behavior of
simply sending the website visitor to a third-party website, the claimed
invention behaved in a manner different than expected by sending a website
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visitor to a hybrid web page presenting information from a third-party with
the look and feel of the host website. Id. at 1258-59. In contrast, Appellant
has not identified any unconventional behavior by the recited computer
limitations in claim 1. Instead, claim 1 recites using conventional computer
techniques such as retrieving data from a database, comparing data, and
making determinations based on these comparisons. The nature of claim 1
as a whole is not to define a specific technological improvement, but to
recite the steps necessary to perform the abstract idea itself. Claim 1
employs "generic processes and machinery" to achieve results, and is not
focused on "a specific means or method that improves the relevant
technology." McRO, 837 F.3d at 1314.
Accordingly, we find claim 1 does not contain the specificity
necessary to show how the processors' operations differ from prior human
methods, and is therefore not directed to a technological improvement, but
the abstract idea itself. See McRO, 837 F.3d at 1314 ("The computer here is
employed to perform a distinct process to automate a task previously
performed by humans .... This is unlike Flook, Bilski, and Alice, where the
claimed computer-automated process and the prior method were carried out
in the same way.").
However, we note that "the decisional mechanism courts now apply is
to examine earlier cases in which a similar or parallel descriptive nature can
be seen - what prior cases were about, and which way they were decided."
Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir.
2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-
54 (Fed. Cir. 2016)). Here, a survey of other cases supports our finding that
claim 1 is directed to an abstract idea. That is, claim 1 is analogous to other
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cases where the Federal Circuit has found claims relating to computer-
implemented business methods to be directed to abstract ideas, for example,
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1374
(Fed. Cir. 2017) ("purchasing goods at a local point-of-sale system from a
remote seller"), Credit Acceptance Corp. v. Westlake Services, 859 F.3d
1044 (Fed. Cir. 2017) (providing financing packages to a customer for
products in a dealer's inventory based on customer financial information
transmitted to a server via a communication network), OIP Technologies,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015)
( automatic optimization of product pricing based on potential customer
responses to offers), and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed.
Cir. 2014) (performing a transaction performance guaranty service for online
commercial transactions).
Similarly, 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. Similarly, "collecting,
displaying, and manipulating data" is an abstract idea. Intellectual Ventures
I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017).
Also, the gathering and combining of data that does not require input from a
physical device is an abstract idea. Digitech Image Techs., LLC v. Elecs. for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Our reviewing court
has also concluded that "creating an index and using that index to search for
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and retrieve data" is an abstract idea. Intellectual Ventures I LLC v. Erie
Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017).
For these reasons, Appellant has not persuaded us the Examiner erred
in finding claim 1 is directed to an abstract idea.
Alice Step Two
The second step in the Alice analysis requires a search for an
"inventive concept" that "must be significantly more than the abstract idea
itself, and cannot simply be an instruction to implement or apply the abstract
idea on a computer." Bascom Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). There must be more than
"computer functions [that] are 'well-understood, routine, conventional
activit[ies]' previously known to the industry." Alice, 134 S. Ct. at 2359
(second alteration in original) (quoting Mayo, 566 U.S. at 73).
Appellant argues the claimed invention provides significantly more
than an abstract idea because claim 1 recites "a challenge that is particular to
and inherent in the Internet." App. Br. 21. According to Appellant,
although the claim recites a business challenge, this challenge is particular to
the Internet, which transforms the claim into something significantly more
than the abstract idea itself. Id. at 21-22 (citing DDR Holdings, 773 F.3d
1245).
Appellant has not persuaded us of Examiner error. As discussed
above, claim 1 is generally directed to generating a credibility result for a
user by evaluating the user's transaction history, and in particular the
credibility of other users with which the primary user has interacted.
Appellant argues the claims are akin to the claims in DDR Holdings that
were necessarily rooted in computer technology. See App. Br. 21-22. We
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disagree. In DDR Holdings, the Federal Circuit found claims drawn to
"generating a composite web page that combines certain visual elements of a
'host' website with content of a third-party merchant" provided a solution
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." 773 F.3d at 1248,
1257. In contrast, claim 1 solves a problem of identifying users suspicious
of credit speculation and determining that the users are unreliable. That is,
claim 1 addresses a business challenge that was previously addressed using a
manual process; it does not embody a solution to a computer-based problem.
Thus, as noted above, claim 1 is akin to the type of claim the Federal Circuit
admonished against in DDR Holdings. 773 F.3d at 1257 (differentiating the
claims at issue from claims that "merely recite the performance of some
business practice known from the pre-Internet world along with the
requirement to perform it on the Internet").
Moreover, our reviewing court has made it clear that merely making
the practice of an abstract idea more effective by implementing the idea on a
computer does not suffice to meet the inventive concept requirement of
Alice. See OIP Techs., 788 F.3d at 1363 ("[R]elying on a computer to
perform routine tasks more quickly or more accurately is insufficient to
render a claim patent eligible.").
Preemption
Finally, we note that preemption is the concern that drives the
exclusionary principle of judicial exceptions to patent-eligible subject
matter. Alice, 134 S. Ct. at 2354. However, preemption is not a separate test
of patent eligibility, but is inherently addressed within the Alice framework.
See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
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Cir. 2015) ("While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent
eligibility."). Accordingly, Appellant's argument that claim 1 does not
completely preempt "identifying a candidate user of a website as a user to be
evaluated, determining that the user to be evaluated is suspicious of credit
speculation, and determining that the user to be evaluated is an unreliable
user" (App. Br. 19), is not, by itself, persuasive of patent eligibility.
For these reasons, we are not persuaded the Examiner erred in
rejecting claim 1 as patent ineligible. Although Appellant nominally
addresses independent claims 6 and 14 separately, Appellant provides no
new arguments for these claims. See App. Br. 22-36. Thus, we are also not
persuaded the Examiner erred in rejecting claims 6 and 14 as patent
ineligible. We, therefore, sustain the rejection of independent claims 1, 6,
and 14. We also sustain the rejection of dependent claims 3, 8, 11-13, 16,
and 19-21, for which Appellant provides no separate argument. See App.
Br. 36.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 3, 6, 8, 11-
14, 16, and 19-21.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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