Paulus, Wolfgang et al.Download PDFPatent Trials and Appeals BoardDec 2, 201914674960 - (D) (P.T.A.B. Dec. 2, 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. 14/674,960 03/31/2015 Wolfgang Paulus INTU1508654 9749 163860 7590 12/02/2019 Paradice and Li LLP/Intuit 1999 S. Bascom Ave. Suite 300 Campbell, CA 95008 EXAMINER ORTIZ ROMAN, DENISSE Y ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 12/02/2019 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): uspto@paradiceli.com william@paradiceli.com yip@paradiceli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte WOLFGANG PAULUS, LUIS FELIPE CABRERA, and MIKE GRAVES ____________ Appeal 2018-008123 Application 14/674,960 Technology Center 3600 ____________ Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1–10, 12–29, 31–48, and 50–57. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 Intuit, Inc. (Appeal Br. 2.) Appeal 2018-008123 Application 14/674,960 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to “providing emotional impact aware invoice management through a provided interactive business management system.” (Spec. ¶ 9.) Claims 1, 20, and 39 are the independent claims on appeal. Claim 1 is illustrative. It recites: 2 1. A method for providing emotional impact aware invoice management comprising: providing an interactive business management system; obtaining historical and/or current operational data associated with a business; storing the historical and/or current operational data associated with the business in a partitioned historical and/or current operational data section of a memory system; obtaining user profile data associated with a user of the interactive business management system; storing the user profile data associated with the user in a partitioned user profile data section of a memory system; providing one or more interchangeable invoice processing and presentation analytics modules, the one or more invoice processing and presentation analytics modules each implementing different emotional effect prediction analytics algorithms, wherein a first emotional effect prediction analytics algorithm is overwritten and replaced by a second emotional effect prediction analytics algorithm when a first interchangeable invoice processing and presentation analytics module including the first emotional effect prediction analytics algorithm is replaced by a second interchangeable invoice processing and presentation analytics module including the second emotional effect prediction analytics algorithm; 2 We note that claim 1, as shown in the Appeal Brief at pages 21–22, is similar but not identical to claim 1 in the Amendment filed September 25, 2017, and entered by the Examiner. Claim 1, as shown above, reflects the claim as entered by the Examiner. Appeal 2018-008123 Application 14/674,960 3 obtaining current invoice content data representing content of current invoices; providing the one or more invoice processing and presentation analytics modules access to the historical and/or current operational data associated with the business and/or the user profile data associated with the user, and the current invoice content data; analyzing, using a currently installed invoice processing and presentation analytics modules, the historical and/or current operational data associated with the business, the user profile data associated with the user, and the current invoice content data to predict an emotional effect on the user of the current invoices represented by the current invoice content data; generating predicted emotional effect data indicating the predicted emotional effect on the user of the current invoices represented by the current invoice content data; based, at least in part, on the predicted emotional effect data indicating the predicted emotional effect on the user of the current invoices represented by the current invoice content data, determining in what manner, and/or at what time, and/or in what order or grouping to present the invoices represented by the current invoice content data to the user; and providing the user with the invoices represented by the current invoice content data in the manner, and/or at the time, and/or in the grouping determined, based at least in part, on the predicted emotional effect on the user of the invoices represented by the current invoice content data. REJECTION Claims 1–10, 12–29, 31–48, and 50–57 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Appeal 2018-008123 Application 14/674,960 4 ANALYSIS Appellant does not separately argue the claims. We select claim 1 as representative. Claims 2–10, 12–29, 31–48, and 50–57 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). “Whoever 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.” 35 U.S.C. § 101. Section 101, however, “‘contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Alice applies a two-step framework, earlier set out 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, 573 U.S. at 217. Under the two-step framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79). Appeal 2018-008123 Application 14/674,960 5 With regard to step one of the Alice framework, we apply a “directed to” two prong test to: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] 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.” See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”). Here, the Examiner determines that claim 1 is “directed to [p]redicting emotional impact of invoices” and that the Federal Circuit has determined that cases related to similar concepts have been found to be directed to certain methods of organizing human activity. (Final Action 4–5 (citing, e.g., FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089 (Fed. Cir. 2016), Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015), Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), and Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)).) Appellant argues that the Examiner’s assertions are “overgeneraliza- tions which are not tethered to the claim limitations” and that the Examiner “fails to include consideration for the details and totality of Appellant’s claims.” (Appeal Br. 13–14.) Under step one of the Alice framework, we “look at 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) (quoting Elec. Power Grp., 830 F.3d at 1353). Appeal 2018-008123 Application 14/674,960 6 The ‘directed to’ inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon . . . . Rather, the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’ Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In other words, the first step of the Alice framework “asks whether the focus of the claims is on the specific asserted improvement in [the relevant technology] or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335–36; see also 2019 Guidance at 54–55. The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that the invention relates to “providing emotional impact aware invoice management through a provided interactive business management system.” (Spec. ¶ 9.) Claim 1 provides further evidence. Claim 1 recites “providing . . . invoice management comprising: providing an interactive business management system,” “obtaining . . . data,” “storing . . . data,” “providing . . . interchangeable invoice processing and presentation analytics modules,” “obtaining data,” “providing the . . . analytics modules access to the . . . data,” “analyzing . . . operational data . . . , user profile data . . . , and the current invoice content data to predict an emotional effect,” “generating predicted emotional effect data,” “based . . . on the predicted emotional effect data . . . , determining in what manner, and/or at what time, and/or in Appeal 2018-008123 Application 14/674,960 7 what order or grouping to present the invoices,” “and providing the user with the invoices . . . based at least in part, on the predicted emotional effect.” In short, claim 1 recites presenting data to a user in a manner tailored to the user based, at least in part, on information known about the user. The Federal Circuit has determined that a claim related to “customizing information based on (1) information known about the user and (2) [specific] data” is directed to an abstract idea. Intellectual Ventures I LLC, 792 F.3d at 1369. The claimed steps are accomplished by obtaining and storing data, providing modules/software to analyze the data, analyzing the data, generating data, determining data to present, and presenting the data. See, e.g., Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“[T]he claims of the asserted patents are 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.”); see also Bridge and Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 886–87 (Fed. Cir. 2019) (deciding media content to provide to a user by retrieving usage patterns for the user’s device, generating a user profile based on the usage patterns, and analyzing the data, including the user profile, determined to be directed to an abstract idea). In other words, claim 1 recites “advertising, marketing or sales activities or behavior; business relations,” i.e., certain methods of organizing human activity. (See 2019 Guidance at 52.) Although the providing step of claim 1 recites that a first algorithm is overwritten and replaced by a second algorithm when a first analytics module is replaced by a second analytics module, this is merely replacing one algorithm with another when replacing its associated analytics module. Appeal 2018-008123 Application 14/674,960 8 Even though this step may add a degree of particularity, none of the other steps recite technological implementation details. Instead, they describe functional results to be achieved by any means. Moreover, beyond the recitation of a generic “interactive business management system,” “analytics modules,” and a “data section of a memory system,” claim 1 does not recite any computer related components. Additionally, Appellant’s Specification makes clear that such interactive business management systems and related modules and memory were well known. (See Spec. ¶¶ 23–24.) We do not see how the recitations of an “interactive business management system,” “analytics modules,” and a “data section of a memory system,” 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, 573 U.S. at 221 (brackets in original) (quoting Mayo, 566 U.S. at 77.) Indeed, “the concept embodied by the majority of the limitations describes only the abstract idea.” Ultramercial, Inc., 772 F.3d at 715. In view of the above, we determine that claim 1 is directed to advertising, marketing or sales activities or behaviors, and business relations. (See Guidance at 52.) And further in view of the above, we agree with the Examiner that claim 1 is directed to the abstract idea of certain methods of organizing human activity. (See Final Action 4–5; see also Guidance at 52.) Nonetheless, Appellant argues “that the claims are directed to systems and methods that are designed to enhance user experiences of users using the claimed processes.” (Appeal Br. 15.) Appellant further argues “that User Experience Design is a recognized technical field, and that Alice indicates Appeal 2018-008123 Application 14/674,960 9 that claimed inventions that improve technical fields are eligible for patenting.” (Id. at 16.) We do not find this argument persuasive. In cases involving software innovations, such as we have here, the inquiry as to whether the claims are directed to an abstract idea “often turns on whether the claims focus 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.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish LLC, 822 F.3d at 1335–36). Even if we agree with Appellant that claim 1 is limited to a particular technological environment, i.e., the user experience, “limiting the claims to [a] particular technological environment . . . is, without more, insufficient to transform them into patent-eligible applications of the abstract idea at their core.” Elec. Power Grp., 830 F.3d at 1354. Moreover, the asserted improvement is to the information provided to the user, i.e., the content of the invoices. The “interactive business management system,” “analytics modules,” and “data section of a memory system,” are used merely as tools to perform the abstract idea. But “[n]o matter how much of an advance in the [marketing/sales/business relations] field the claims recite, the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). Step two of the Alice framework has been described “as a search for an ‘“inventive concept”’ –i.e., 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. at 72–73). Appeal 2018-008123 Application 14/674,960 10 Taking the claim elements separately, the functions performed by the generic “interactive business management system,” “analytics modules,” and “data section of a memory system,” are purely conventional. Obtaining and storing data, providing modules/software to analyze the data, analyzing the data, generating data, determining data to present, and presenting the data (here, in the form of invoices), are well-understood, routine, and conventional functions previously known to the industry. (See Final Action 6–7; see also Elec. Power Grp., 830 F.3d at 1356 (The claims “do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology. The claims therefore do not state an arguably inventive concept . . . .”), In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”).) Considered as an ordered combination, the generic computer components of Appellant’s claimed invention add nothing that is not already present when the limitations are considered separately. For example, claim 1 does not, as discussed above, purport to improve the functioning of the business management system, analytics modules, or memory itself. Nor does it effect an improvement in any other technology or technical field. At best, claim 1 improves the content of the information presented to the user. In other words, claim 1 amounts to nothing significantly more than an instruction to apply the abstract idea using generic computer components Appeal 2018-008123 Application 14/674,960 11 performing routine computer functions. That is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. Nor do we find persuasive Appellant’s argument that because there are no rejections of the appealed claims based on cited art, “the technical nature of [the claims is] new, and therefore not performed routinely by conventional computing systems.” (Appeal Br. 17.) Even if the claimed techniques are “[g]roundbreaking, innovative, or even brilliant,” that is not enough for patent eligibility. Ass’n for Molecular Pathology, 569 U.S. at 591. “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.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981). In view of the above, we are not persuaded that the Examiner erred in rejecting claim 1. Claims 2–10, 12–29, 31–48, and 50–57 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). CONCLUSION The Examiner’s rejection of claims 1–10, 12–29, 31–48, and 50–57 under 35 U.S.C. § 101 is affirmed. Specifically: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–10, 12–29, 31–48, 50–57 101 eligibility 1–10, 12–29, 31–48, 50– 57 Appeal 2018-008123 Application 14/674,960 12 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. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation