Shafi Rahman et al.

Patent Trials and Appeals Board

Oct 1, 2019

13531429 - (D) (P.T.A.B. Oct. 1, 2019)

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.
13/531,429 06/22/2012 Shafi Rahman 35006-695F01US 4620
76615 7590 10/01/2019
Mintz Levin/Fair Isaac
Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
EXAMINER
BEHNCKE, CHRISTINE M
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SHAFI RAHMAN, EESHAN MALHOTRA,
NEERAJ THAKARE, and AMY MARIES ESSELMAN
____________

Appeal 2018-0056311
Application 13/531,4292
Technology Center 3600
____________

Before ANTON W. FETTING, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–4, 6–18, and 20–26, which are all the claims pending
in the Application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Throughout this Decision, we refer to Appellants’ corrected Appeal Brief
(“App. Br.”) filed Jan. 16, 2018, Reply Brief (“Reply Br.”) filed May 9,
2018, the Final Office Action (“Final Act.”) mailed Feb. 14, 2017, and the
Examiner’s Answer (“Ans.”) mailed Mar. 9, 2018.
2 According to Appellants, the real party in interest is “Fair Isaac
Corporation.” App. Br. 2.
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CLAIMED INVENTION
Appellants’ invention “relates to determining groups of customers for
controlled provision of relevant offers on associated products in real time.”
Spec. ¶ 1. Independent claim 1, reformatted and reproduced below with
bracketed notations, is illustrative of the subject matter on appeal.
1. A method comprising:

[(a)] populating, by at least one data processor, a three
dimensional matrix with a first plurality of scores, the three
dimensional matrix including the first plurality of scores placed
according to a customer dimension, a product dimension, and a
time dimension, each score of the first plurality of scores
characterizing a likelihood of a corresponding customer to
purchase a respective product in an associated period of time;

[(b)] randomly determining, by at least one data
processor and from a second plurality of scores associated with
a spatial intersection of the three dimensional matrix at a
particular period of time, a first set of one or more scores of the
second plurality of scores;

[(c)] changing, by at least one data processor, the
randomly determined first set of one or more scores to zero in
spite of the likelihood associated with at least one randomly
determined score being more than zero; and

[(d)] providing, by at least one data processor, one or
more offers to one or more customers when one or more scores
that are within the first plurality of scores within the three
dimensional matrix and are associated with the one or more
customers are more than zero after the changing of the
randomly determined first set of one or more scores to zero, the
providing of the one or more offers to the one or more customer
occurring in real-time.

App. Br. 17, Claims Appendix (emphasis added).
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REJECTIONS
Claims 24–26 stand rejected under 35 U.S.C. § 112 (pre-AIA), second
paragraph, as being indefinite.
Claims 1–4, 6–18, and 20–26 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.

ANALYSIS
35 U.S.C. § 112, second paragraph
Appellants do not contest the rejection of claims 24–26 under
35 U.S.C. § 112, second paragraph. App. Br. 9. “Appellant has appealed
the final rejection of claims 1–4, 6–18, and 20–26 under 35 U.S.C. 101.”
See Reply Br. 4. Thus, we summarily sustain the rejection.

35 U.S.C. § 101
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
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas are not patentable.” E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See id. at 219
(“On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 68 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (internal citation omitted) (citing Benson and Flook); see,
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e.g., id. at 187 (“It is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.”).
If the claim is “directed to” an abstract 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.” Alice, 573 U.S. at 221. “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
After the mailing of the Answer and the filing of the Appeal Brief in
this case, the PTO published revised guidance on the application of § 101.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (USPTO Jan. 7, 2019) (“Guidance”). Revised Step 2A, Prong One, is an
evaluation of whether the claim recites (1) any judicial exceptions, including
certain groupings of abstract ideas (i.e., (a) mathematical concepts,
(b) certain methods of organizing human activity, and (c) mental processes).
If so, Revised Step 2A, Prong Two, is an evaluation of whether (2) the
judicial exception is integrated a practical application (see MPEP
§§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)). Only if a
claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, we at Step 2B look to whether the
claim (3) adds a specific limitation beyond the judicial exception that is not
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“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or (4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56.
In rejecting claim 1 under 35 U.S.C. § 101, the Examiner determined
claim 1 is “directed to providing targeted offers to customers based on each
customer’s likelihood of purchasing a particular product in a particular time
period which is an abstract idea similar to the concept found abstract in
Electric Power Group, LLC v. Alstom S.A.”3 Final Act. 3–4.
Appellants argue: “Similar to the claims at dispute in Enfish, claim 1
is directed to a structure that improves the way a computer operates.” App.
Br. 11. We are not persuaded for the reasons set forth below.

Does claim 1 recite a judicial exception?
There is no dispute that claim 1 is directed to a statutory category.
See Final Act. 3. As such, we first consider whether the claim recites a
judicial exception. Guidance, 84 Fed. Reg. at 51. The Guidance synthesizes
key concepts identified by the courts as abstract ideas into three primary
subject-matter groupings: mathematical concepts, certain methods of
organizing human activity, and mental processes. Id. at 52. The Guidance
provides that “[m]athematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations” are abstract
ideas. Id. We determine that claim 1’s controlled and optimal provision of

3 Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016).
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offers to customers on associated products recites a mathematical concept,
and therefore is an abstract idea.
Claim 1 recites a process comprising five steps: (a) “populating . . . a
three dimensional matrix with a first plurality of scores,4 the three
dimensional matrix including the first plurality of scores placed according to
a customer dimension, a product dimension, and a time dimension, each
score of the first plurality of scores characterizing a likelihood of a
corresponding customer to purchase a respective product in an associated
period of time;” (b) “randomly determining . . . from a second plurality of
scores associated with a spatial intersection of the three dimensional matrix
at a particular period of time, a first set of one or more scores of the second
plurality of scores;” (c) “changing . . . the randomly determined first set of
one or more scores to zero in spite of the likelihood associated with at least
one randomly determined score being more than zero;” and (d) “providing
. . . one or more offers to one or more customers when one or more scores
that are within the first plurality of scores within the three dimensional
matrix and are associated with the one or more customers are more than zero
after the changing of the randomly determined first set of one or more scores
to zero, the providing of the one or more offers to the one or more customer
occurring in real-time.” App. Br. 17, Claims Appendix.
Under the broadest reasonable interpretation, steps (b) and (c) of
claim 1 describe mathematical concepts. For example, “random determining
of the first set of one or more scores, [as recited in step (b)], can be

4 “A score can characterize a likelihood of a customer to purchase a
corresponding product in an associated time period.” Id. ¶ 3.

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performed using a pseudorandom number generation algorithm.” Spec. ¶ 45.
Step (c), which recites changing the randomly determined first set of one or
more scores to zero in spite of the likelihood associated with at least one
randomly determined score being more than zero, is described as a
mathematical calculation in the Specification. See Spec. ¶ 39, Fig. 3; see
also id. ¶ 51 (“changing the score to one can be implemented for x randomly
selected customers for each product, where x can be calculated according to
the equation/ formula: [x = {f* n * (vi / vtotal)}]”). Apart from steps (b) and
(c), which encompass mathematical algorithms and calculations, step (a) is
included in this abstract idea because it merely supports the calculations by
gathering historical purchase information. See Spec. ¶ 43 (“The scores
populated in the three dimensional matrix 400 can be generated using
historical purchase data associated with a plurality of customers and a
plurality of products.”). Together, such mathematical calculations have been
determined to be abstract ideas. See, e.g., In re Grams, 888 F.2d 835, 837
(Fed. Cir. 1989) (“Mathematical algorithms join the list of non-patentable
subject matter not within the scope of section 101.”); SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (holding that claims to
a “series of mathematical calculations” are directed to an abstract idea);
Diamond v. Diehr, 450 U.S. at 191 (“[a] mathematical formula . . . is not
accorded the protection of our patent laws, and this principle cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment”) (citation omitted); Blue Spike, LLC v. Google
Inc., No. 14-CV-01650-YGR, 2015 WL 5260506 (N.D. Cal. Sept. 8, 2015),
aff’d, No. 2016-1054, 669 Fed. Appx. 575, 2016 WL 5956746 (mem) (Fed.
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Cir. Oct. 14, 2016) (comparison of the results of the mathematical operations
itself is an abstract idea).
For all the above reasons, claim 1 recites an abstract idea.

Is claim 1“directed to” the recited judicial exception?
We look to whether the recited judicial exception of claim 1 is
integrated into a practical application. Guidance, 84 Fed. Reg. at 51. When
a claim recites a judicial exception and fails to integrate the exception into a
practical application, the claim is “directed to” the judicial exception. Id.
Claim 1 may integrate the judicial exception when, for example, it reflects
an improvement to technology or a technical field. Id. at 55.
In that regard, Appellants argue that similar to “Enfish, claim 1 is
directed to a structure that improves the way a computer operates . . . a
specific type of data structure-a three dimensional matrix-that is designed to
improve the way a computer stores and retrieves data in memory.” App.
Br. 11 (citing Spec. ¶¶ 36, 41, 43); see also Reply Br. 10–12. According to
Appellants, “the claimed three dimensional matrix enables . . . faster search
of stored data, more efficient storage of data other than structured text, and
no requirement to model each thing in the database as a separate table.” Id.
at 12.
The Examiner responds:
In contrast [to Enfish], Appellant’s claims are directed to a
method of providing offers to customers based evaluating data
stored in a matrix and not to configuring computer memory.
Representative claim 1 describes no creation of a logical table
including particular arrangements of rows and columns nor
does it describe any feature akin to storing information about
each column in one or more rows rendering the table self-
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referential. Rather, claim 1 describes the population of an
existing matrix with numerical values, changing some of those
values to zero, and providing offers to customers whose
corresponding numerical values are not zero. The claimed
process is dissimilar from the self-referential table for a
computer database in Enfish because where those claims were
directed to the design of a data structure, Appellant’s claims
merely involve the manipulation of data within an existing
structure.

Ans. 5. We agree with the Examiner.
Claim 1 does not reflect a technological improvement, but rather, is
“directed to a result or effect that itself is the abstract idea and merely
invoke[s] generic processes and machinery.” McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). Appellants have not
offered any persuasive evidence that the computer implementation improves
the functioning of the computer processor itself. None of cited paragraphs
36, 41, and 43 describe any improvement to the way a computer stores and
retrieves data in memory. See Ans. 6. In Enfish, the court noted that
“[s]oftware can make non-abstract improvements to computer technology
just as hardware improvements can.” Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1335 (Fed. Cir. 2016). The court put the question as “whether
the focus of the claims is on [a] 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.” Id. at 1335–36. The
court found that the “plain focus of the claims” there was on “an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity.” Id. at 1336. We find
the focus of the claim as a whole here is on an marketing task, because the
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claimed processors are merely invoked as tools to implement optimization
algorithms that “allow an automatic determining of best (for example, most-
optimal or most-relevant or most-effective) offers in real time, which can be
more efficient that [sic] a manual determining of best offers.” Spec. ¶ 22.
We use the term “additional elements” for “claim features, limitations,
and/or steps that are recited in the claim beyond the identified judicial
exception.” See Guidance, 84 Fed. Reg. at 55 n.24. Here, step (d) and the
“at least one data processor” recited in steps (a) through (c) are the
additional elements. Step (d), which recites providing offers to
corresponding customers by outputting the results of the analysis, merely
describes insignificant post-solution activity. The presence of a generic
processor (see Spec. ¶ 57 (e.g., general purpose computer)) does not
necessarily indicate a technical solution. The claimed invention, which
includes one or more data processors, merely uses a generic computer or
processor as a tool to execute the algorithms described in steps (b) and (c).
Although a computer is recited, claim 1 does not apply or use the abstract
idea in a “particular machine.” See Bilski, 561 U.S. at 604. A general-
purpose computer that merely executes the judicial exception using
conventional computer functions, as is the case here, is not a particular
machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716–17 (Fed. Cir.
2014), cited in MPEP § 2106.05(b). Thus, we agree with the Examiner that
claim 1 does not recite an improvement to computer technology. Ans. 6.
The claimed invention does not use the recited data processors in a way that
indicates that the judicial exception has been integrated into a practical
application.
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And, although a processor may perform calculations faster than a
human could manually, using a computer to achieve a solution more quickly
may not be sufficient to show an improvement to computer technology. See
Versata, 793 F.3d at 1334; see also MPEP § 2106.05(a)(II) (instructing
examiners that a “commonplace business method . . . being applied on a
general purpose computer” may not be sufficient to show an improvement).
Consequently, we determine that on the present record the subject
matter of independent claim 1 does not appear to integrate the recited
abstract idea into a practical application.

Does claim 1 provide an inventive concept?
To determine whether a claim provides an inventive concept, the
additional elements are considered—individually and in combination—to
determine whether they (1) add a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional” in the field or
(2) simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Guidance, 84 Fed. Reg. at 56.
Appellants argue that “the claimed technology is implemented in a
manner that is neither routine nor conventional, at least because, as
evidenced by the lack of any rejections under 35 U.S.C. §§ 102 or 103.”
App. Br. 15. To the extent that Appellants maintain that certain claim
limitations necessarily amount to “significantly more” than the abstract idea
because the limitations are allegedly patentable over the prior art, Appellants
misapprehend the controlling precedent. Although the second step in the
Alice framework is termed a search for an “inventive concept,” the analysis
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is not an evaluation of novelty or nonobviousness, but rather, a search for
“an element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.”’ Alice, 573 U.S. at 217–18 (alteration in original)
(quoting Mayo, 566 U.S. at 72–73). In other words, a novel and nonobvious
claim directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 89–90 (rejecting the suggestion that Sections 102, 103,
and 112 might perform the appropriate screening function and noting that in
Mayo such an approach “would make the ‘law of nature’ exception . . . a
dead letter”); see also Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016) (“[U]nder the Mayo/Alice framework, a claim
directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility . . . .”). “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 591 (2013). Indeed, “[t]he ‘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.” Diehr, 450 U.S. at 188–89.
Considering the elements in combination, Appellants have not shown
that the recited calculations improve operating efficiency or otherwise
operate in an unconventional way. Similar to Appellants’ claims, the
Federal Circuit has recognized that “an invocation of already-available
computers that are not themselves plausibly asserted to be an advance, for
use in carrying out improved mathematical calculations, amounts to a
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recitation of what is ‘well-understood, routine, [and] conventional.”’ SAP
Am., 898 F.3d at 1170 (alteration in original) (citing Mayo, 566 U.S. at 73).
Thus, the additional elements, individually and in combination, do not
provide an inventive concept.
Finally, Appellants’ argument as to the lack of preemption (App. Br.
9; Reply Br. 8) is also unpersuasive. See OIP Techs., 788 F.3d 1359, 1362–
63 (“[T]hat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”). Although “preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015); Ans. 12. “Where a patent’s claims are deemed
only to disclose patent ineligible subject matter” under the Alice framework,
“preemption concerns are fully addressed and made moot.” Id.
Accordingly, we sustain the rejection of independent claim 1 under
35 U.S.C. § 101, and claims 2–4, 6–18, and 20–26, which are not argued
separately. See App. Br. 15.
DECISION
The rejection under 35 U.S.C. § 112 (pre-AIA), second paragraph, is
affirmed.
The rejection under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED