MasterCard International IncorporatedDownload PDFPatent Trials and Appeals BoardNov 8, 201914457831 - (D) (P.T.A.B. Nov. 8, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 14/457,831 08/12/2014 Kenny Unser P01331-US- UTIL (M01.282) 5871 125619 7590 11/08/2019 Mastercard International Incorporated c/o Buckley, Maschoff & Talwalkar LLC 50 Locust Avenue New Canaan, CT 06840 EXAMINER KHATTAR, RAJESH ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 11/08/2019 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): colabella@bmtpatent.com martin@bmtpatent.com szpara@bmtpatent.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte KENNY UNSER, JEAN-PIERRE GERARD, and KENT OLOF NIKLAS BERNTSSON ____________________ Appeal 2019-000411 Application 14/457,8311 Technology Center 3600 ____________________ Before J. JOHN LEE, DANIEL J. GALLIGAN, and DAVID J. CUTITTA II, Administrative Patent Judges. GALLIGAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of claims 1–8, which are all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.2 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mastercard International Incorporated. Appeal Br. 2. 2 Our Decision refers to Appellant’s Appeal Brief filed July 2, 2018 (“Appeal Br.”); Appellant’s Reply Brief filed October 19, 2018 (“Reply Br.”); Examiner’s Answer mailed August 23, 2018 (“Ans.”); and Final Office Action mailed November 2, 2017 (“Final Act.”). Appeal 2019-000411 Application 14/457,831 2 CLAIMED SUBJECT MATTER Claims 1 and 5 are independent claims. Claim 1 is reproduced below with bracketed lettering added for discussion purposes: 1. A computerized method comprising: [a] receiving a first data set, the first data set including a plurality of location and time profiles, each of said profiles corresponding to a respective individual represented in the first data set and representing movements by said respective individual; [b] receiving a second data set, the second data set including a plurality of transaction profiles, each of said transaction profiles corresponding to a respective account holder represented in the second data set, each of the transaction profiles reflecting payment card account transactions by the respective account holder who corresponds to each said transaction profile; said payment card account transactions each represented by data that includes time stamp data and location data; [c] analyzing said first and second data sets to propose matches of said location and time profiles with said transaction profiles; [d] assigning a respective score to each of said proposed matches, said respective scores indicating a degree of confidence as to whether a respective proposed match is correct; [e] said analyzing and assigning scores including, for each of said location and time profiles, determining first percentages for each said location and time profile, each of said first percentages being a percentage of data elements in each said location and time profile that are represented in a respective one of said transaction profiles; and [f] said analyzing and assigning scores including, for each of at least some of said transaction profiles, determining a second percentage for each said transaction profile, said second percentage being a percentage of transactions in each said transaction profile that are represented in a proposed matching one of said location and time profiles. Appeal 2019-000411 Application 14/457,831 3 REFERENCES Name Reference Date Ben Harush US 2008/0162580 A1 July 3, 2008 Colligan US 2010/0161720 A1 June 24, 2010 Liebmann US 2013/0204690 A1 Aug. 8, 2013 Burcham US 2015/0074204 A1 Mar. 12, 2015 REJECTIONS Claims 1–8 stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 2–4. Claims 1, 2, 4–6, and 8 stand rejected under 35 U.S.C. § 103 as being unpatentable over Burcham, Colligan, and Ben Harush. Id. at 4–9. Claims 3 and 7 stand rejected under 35 U.S.C. § 103 as being unpatentable over Burcham, Colligan, Ben Harush, and Liebmann. Id. at 9. PRINCIPLES OF LAW An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include the following implicit exceptions: laws of nature, natural phenomena, and abstract ideas. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In Alice, the Supreme Court set forth an analytical “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent- ineligible concepts.” Id. at 217. If the claim is “directed to” an abstract Appeal 2019-000411 Application 14/457,831 4 idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221. USPTO January 7, 2019 Revised Section 101 Memorandum The USPTO published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“January 2019 Guidance”). Under the January 2019 Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Appeal 2019-000411 Application 14/457,831 5 ANALYSIS 35 U.S.C. § 101 Appellant argues all the pending claims as a group, stating that “[a]ll of the pending claims shall stand or fall together,” and specifically addressing the limitations of claim 1. Appeal Br. 7. Accordingly, we select independent claim 1 as representative of Appellant’s § 101 arguments for all claims. See 37 C.F.R. § 41.37(c)(1)(iv). The Examiner determines claim 1 is directed to a judicial exception because the claimed subject matter recites an abstract idea. Final Act. 2–4; Ans. 3–5. The Examiner also determines claim 1 does not recite any additional elements that provide significantly more than the recited judicial exception. Final Act. 4; Ans. 5–6. Appellant presents several arguments against the § 101 rejection. The Examiner has provided a full response to Appellant’s arguments. See Ans. 3–6. We do not find Appellant’s arguments persuasive, as discussed in greater detail below. We analyze the claims under the January 2019 Guidance and adopt the nomenclature for the steps used in the January 2019 Guidance.3 Step 1 Section 101 provides that “[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 3 Our analysis applies the January 2019 Guidance as clarified by the most recent guidance from the Office. See October 2019 Patent Eligibility Guidance Update, referenced at 84 Fed. Reg. 55942–43 (October 18, 2019). Appeal 2019-000411 Application 14/457,831 6 the conditions and requirements of this title.” 35 U.S.C. § 101. Independent claim 1 recites a method. As such, the claim is directed to a statutory class of invention within 35 U.S.C. § 101, i.e., a process. Step 2A Prong 1 Under Step 2A, Prong 1 of the January 2019 Guidance, we must determine whether claim 1, being directed to a statutory class of invention, nonetheless falls within a judicial exception. The Examiner determines that claim 1 recites an abstract idea, specifically, steps in “a mental process (thinking) that ‘can be performed in the human mind, or by a human using a pen and paper.’” Final Act. 2–3; see also Ans. 3. The Examiner characterizes the recited steps in the mental process as steps for “collecting and comparing,” or analyzing, “known information.” Final Act. 3–4. We agree with the Examiner. Appellant argues the “claim concept identified by the Examiner” is “computer-related” and should be “deemed a non-abstract concept relating to the data processing arts.” Appeal. Br. 8. Appellant asserts that the claimed method “would never be performed except by computer.” Appeal Br. 7 (emphasis omitted). We are not persuaded. Both the Examiner and Appellant characterize claim 1 as directed to a process for analyzing information, i.e., “data analytics” (Appeal Br. 7; Reply Br. 2) or “collecting data [and] analyzing it” (Ans. 4; see also Final Act. 2–3). However, contrary to Appellant’s assertions that the claim is a computer-specific technique, the claimed steps of collecting and analyzing information describe a mental process, as identified by the Examiner. The Specification supports the Examiner’s determination that the claimed steps recite a mental process, e.g., Appeal 2019-000411 Application 14/457,831 7 observations, evaluations, judgements, and opinions. In particular, the Specification states that the focus of the claimed invention is to analyze payment card transaction data in conjunction with location profiles in order to “lead to possible or likely identities for an unknown individual.” Spec. 1:17–22. That is, the goal of the claimed method is to identify an unknown person. For example, the Specification describes that the claimed method can be used by law enforcement to identify unknown individuals. Id. at 1:6–10. To achieve that stated goal, the Specification discloses a process of analyzing information about the unknown individual’s movements, i.e., the time and location of the unknown individual, with the financial transaction information of account holders. Id. at 4:4–14, 5:27–31, 6:17–18. For example, law enforcement first has information regarding the “location and time/date information about [an unknown] suspected wrongdoer (e.g., times and locations of crimes committed by the [unknown] individual).” Id. at 9:13–16. Based on the crimes’ locations and times, additional information may be obtained about “payment cardholders whose patterns of payment card transactions may place them at the known or suspected past locations [of the crimes] and the known or suspected times of the suspect’s presence there.” Id. at 9:16–19. That is, the Specification describes that a suspect for a crime can be identified by correlating the time and location of the crime with a financial transaction that places a particular individual at the time and location of that crime. Indeed, detectives have long identified potential suspects by placing the potential suspects at the location of a crime at the time of the crime, e.g., by asking a potential suspect “Where were you the night the of the crime spree?” Such a correlation is a mental process because it describes a process of evaluating Appeal 2019-000411 Application 14/457,831 8 and matching information, namely, time and location information, which humans can perform in their minds. Claim 1 reflects the mental process described by the Specification. Limitations [a] and [b] recite steps to collect data that will be used in the ultimate evaluation. In particular, limitation [a] describes “a first data set” which identifies the locations, and respective times at the locations, of an unknown individual (who is to be identified). Limitation [b] describes “a second data set,” which includes respective transaction profiles (indicating the time and location of financial transactions) of known account holders. Identifying and collecting relevant information for an analysis or evaluation is a typical step in any mental process. Limitation [c] broadly recites analyzing data by matching the unknown individual’s locations at specific times with account holder transaction profiles that identify the time and location an account holder performs a transaction. Matching sets of information is a process that can be performed in the human mind. Limitations [d]–[f] recite a process for evaluating how likely, i.e., correct, a known account holder is the unknown individual. In particular, limitation [d] describes indicating confidence in a match between account holder and unknown individual based on evaluations described in limitations [e] and [f]. Limitations [e] and [f] determine the degree of overlap between the locations and times of the unknown individual with the locations and times for a particular account holder’s transactions. Determining accuracy based on the degree of correlation between data is an evaluation that can be performed in the mind or on pen and paper. Accordingly, claim 1 recites steps in a mental process and, thus, recites an abstract idea. Appeal 2019-000411 Application 14/457,831 9 Step 2A Prong 2 Next, we determine whether claim 1 is directed to the abstract concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept, i.e., integrated into a practical application. See, e.g., Alice, 573 U.S. at 223 (discussing Diamond v. Diehr, 450 U.S. 175, 177 (1981)). The Examiner determines that “the claimed steps are simply . . . applied on a computer without yielding any technology or computer functionality improvement.” Ans. 3. We agree with the Examiner. Appellant argues that the claim 1 provides “an improvement in the technical field of data analytics” (Appeal Br. 7) and an “improvement in a branch of the field of computerized data analytics” (Reply Br. 2). Appellant’s arguments do not persuade us that the claim integrates the abstract idea into a practical application by improving a computer technology or providing a technical solution to a technical problem. As discussed above, the problem identified by the Specification is a problem in identifying an unknown individual. Spec. 1:6–10 (“[L]aw enforcement authorities may lack the name of an individual suspected of wrongdoing . . . . It would be desirable in such situations if the authorities could gain leads as to the individual’s identity.”); see id. at 1:11–16, 14:21– 26. Identifying an unknown individual is not a problem specific to computers or computer-related-technology. Further, as described above, the solution to that problem evaluates information by finding matches between location and time data. And, as described above, such a solution encompasses a mental process, in which a human matches sets of time and location data to identify potential individuals. As such, the alleged improved Appeal 2019-000411 Application 14/457,831 10 technique for identifying an individual is an improvement to the abstract idea rather than an improvement to computer technology. Furthermore, the single mention of a computer is in the preamble, which recites a “computerized method” comprising the steps of the mental process discussed above. The remainder of the claim does not specify any features specific to a computer or to computer functionality. Additionally, none of the remaining indicia of integration listed by the January 2019 Guidance is present in claim 1. For example, the claim does not recite a particular machine and, instead, generically recites a “computerized method.” Nor does the claim recite the “[t]ransformation and reduction of an article ‘to a different state or thing.’” Bilski v. Kappos, 561 U.S. 593, 604 (2010) (emphasis added); MPEP § 2106.05(c). Claim 1’s method does not transform a physical object or substance. In this way, the claim is unlike the transformations found in some eligible claims. See, e.g., Diehr, 450 U.S. at 184 (a process that transforms rubber). Accordingly, claim 1 is directed to the identified abstract idea, specifically a mental process. Step 2B Next, we determine whether the claim includes additional elements that provide significantly more than the recited judicial exception, thereby providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72–73). The Examiner determines that the preamble’s recitation of a “computerized method” does not add significantly more than the judicial exception. Ans. 5–6; Final Act. 4. We agree with the Examiner. Appeal 2019-000411 Application 14/457,831 11 Appellant argues that there is “no basis in the record for concluding that the additional claim elements/combination do not amount to ‘significantly more’ than the ‘abstract idea’ allegedly recited in the claims.” Appeal. Br. 8. That is, Appellant argues the Examiner does not make “findings of fact as to each additional claim limitation, and to the combination of claim elements, as required by Berkheimer.” Reply Br. 2–3 (citing Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018)). We are not persuaded. Initially, Appellant has not identified the “additional claim elements” to which it refers. See Appeal Br. 8; see also Reply Br. 2–3. We decline to speculate as to what particular claim limitations Appellant considers “additional claim elements.” Further, the only claim language the Examiner does not identify as part of the abstract mental process is the preamble’s recitation of a “computerized method.” Ans. 5; see Final Act. 3. As the Examiner finds, the Specification itself discloses that the computerized method is implemented using a “conventional computer.” Ans. 5 (citing Spec. 7:7–8:21, Fig. 3). Indeed, the Specification states a “profile matching computer 302 may be conventional in its hardware aspects” and then describes common computing components executing software as expected. Spec. 7:7–8:13. We, thus, conclude that claim 1 does not provide an inventive concept because the additional elements recited in claim 1 do not provide significantly more than the recited judicial exception. Accordingly, claim 1 does not recite patent-eligible subject matter. Because claim 1 is representative of the independent claims, we conclude that independent claim 5 also does not recite patent-eligible subject matter. Further, Appellant has not proffered sufficient evidence or argument to persuade us Appeal 2019-000411 Application 14/457,831 12 that any of the limitations in dependent claims 2–4 and 6–8 provide a meaningful limitation that transforms the claims into a patent-eligible application. See Appeal Br. 7. Therefore, we sustain the rejection of claims 1–8 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. 35 U.S.C. § 103 Appellant argues the Examiner erred in finding the combination of Burcham, Colligan, and Ben Harush teaches said analyzing and assigning scores including, for each of said location and time profiles, determining first percentages for each said location and time profile, each of said first percentages being a percentage of data elements in each said location and time profile that are represented in a respective one of said transaction profiles; and said analyzing and assigning scores including, for each of at least some of said transaction profiles, determining a second percentage for each said transaction profile, said second percentage being a percentage of transactions in each said transaction profile that are represented in a proposed matching one of said location and time profiles, as recited in claim 1 and similarly recited in claim 5. Appeal Br. 10–11; Reply Br. 3. Specifically, Appellant argues the Examiner “fail[s] to cite any prior art” teaching the disputed limitations. Appeal Br. 10; see also Reply Br. 3. We are persuaded the Examiner erred. The Examiner does not find that any cited reference teaches or suggests the disputed limitations. See Final Act. 8, 14; Ans. 7. Instead, the Examiner finds that the limitations “are simply based on mathematical relationship[s] and a person of ordinary skill[] Appeal 2019-000411 Application 14/457,831 13 in the art would know how to determine these [claimed] percentages based on the available data.” Final Act. 8; see also id. at 14; Ans. 7. As an initial matter, we disagree with the Examiner that the recited limitations “do not further narrow the scope of the claim” because the “limitations are simply restating the data in an alternative way.” Final Act. 8, 14; Ans. 7. Claim 1 recites a method including steps of “determining first percentages for each said location and time profile” and “determining a second percentage.” Although the steps recite a process of evaluating and manipulating data, that process is affirmatively recited, e.g., “determining first percentages” and “determining a second percentage” using time and location data, and, so, the claim requires those steps to be performed. Furthermore, the Examiner has not provided the requisite rationale explaining why the recited mathematical evaluations, i.e., the determined percentages claimed, would have been obvious or why a skilled artisan would have been motivated to determine those percentages. See Final Act. 8, 14; Ans. 7. Because the Examiner’s obviousness conclusion is not supported by articulated reasoning supported by rational underpinning, we determine the Examiner erred in finding the combination of Burcham, Colligan, and Ben Harush teaches said analyzing and assigning scores including, for each of said location and time profiles, determining first percentages for each said location and time profile, each of said first percentages being a percentage of data elements in each said location and time profile that are represented in a respective one of said transaction profiles; and said analyzing and assigning scores including, for each of at least some of said transaction profiles, determining a second percentage for each said transaction profile, said second percentage being a percentage of transactions in each said Appeal 2019-000411 Application 14/457,831 14 transaction profile that are represented in a proposed matching one of said location and time profiles as recited in claim 1 and similarly recited in claim 5. Because we agree with at least one of the arguments advanced by Appellant, we need not reach the merits of Appellant’s other arguments. See Appeal Br. 9–10; Reply Br. 3. Dependent claims 2–4 and 6–8 stand with their respective independent claims. Therefore, we do not sustain the rejections of claims 1–8 under 35 U.S.C. § 103. CONCLUSION In summary: Claims Rejected 35 U.S.C. § References/Basis Affirmed Reversed 1–8 101 Eligibility 1–8 1, 2, 4–6, 8 103 Burcham, Colligan, Ben Harush 1, 2, 4–6, 8 3, 7 103 Burcham, Colligan, Ben Harush, Liebmann 3, 7 Overall Outcome 1–8 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation