Sony Joseph et al.

Patent Trials and Appeals Board

Oct 1, 2019

14292618 - (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.
14/292,618 05/30/2014 Sony Joseph 37202/573001; 1407737US 6087
57956 7590 10/01/2019
FBFK/Intuit
Robert Lord
9 Greenway Plaza
Suite 500
HOUSTON, TX 77046
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
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):
docketing@fbfk.law
jhathaway@fbfk.law
rlord@fbfk.law
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SONY JOSEPH and ILYA ALEXANDER IZRAILEVSKY

Appeal 2018-007076
Application 14/292,618
Technology Center 3600
____________

Before MAHSHID D. SAADAT, ALLEN R. MacDONALD, and
NABEEL U. KHAN, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–4, 6, 7, 9–12, 14, 15, 17–20, 22, and
23.2 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. 4.
2 Claims 5, 8, 13, 16, and 21 have been canceled previously.
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STATEMENT OF THE CASE
Introduction
Appellant’s invention relates to “categorizing a financial transaction
of a user.” Spec. ¶ 2.
Representative Claim
Representative claim 1 under appeal read as follows;
1. A method for categorizing a financial transaction,
comprising:
obtaining an uncategorized transaction record of
the financial transaction, wherein the uncategorized
transaction record comprises a transaction description;
selecting, by a computer processor and based on
the transaction description of the financial transaction, at
least a first business and a second business from a pre-
determined business list,
wherein the first business is in a first merchandise
category and has a first business qualifier,
wherein the second business is in a second
merchandise category and has a second business
qualifier, and
wherein each business qualifier is an attribute of a
business that is available from a public source;
obtaining a plurality of categorized transaction
records of a user;
calculating, by the computer processor, a first
business qualifier score representing a first frequency of
occurrence of the first business qualifier occurring in the
plurality of categorized transaction records;
calculating, by the computer processor, a second
business qualifier score representing a second frequency
of occurrence of the second business qualifier occurring
in the plurality of categorized transaction records;
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generating a comparison result based at least on
comparing the first business qualifier score and the
second business qualifier score and determining that the
first business qualifier score exceeds the second business
qualifier score;
identifying, based on the comparison result, that
the financial transaction is performed by the user and the
first business;
assigning the first merchandise category of the first
business to the uncategorized transaction record;
identifying a transaction time of the financial
transaction as an instance of a plurality of predetermined
recurring time points, wherein the uncategorized
transaction record further comprises the transaction time;
calculating a first temporal correlation score
representing a third frequency of occurrence of the first
merchandise category occurring in the plurality of
categorized transaction records at the plurality of pre-
determined recurring time points; and
calculating a second temporal correlation score
representing a fourth frequency of occurrence of the
second merchandise category occurring in the plurality of
categorized transaction records at the plurality of pre-
determined recurring time points,
wherein calculating the first temporal correlation
score and the second temporal correlation score is based
on a Bayesian probability, and
wherein generating the comparison result is further
based on comparing the first temporal correlation score
and the second temporal correlation score.

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Rejection on Appeal
Claims 1–4, 6, 7, 9–12, 14, 15, 17–20, 22, and 23 stand rejected under
35 U.S.C. § 101 as being directed to patent-ineligible subject matter. See
Ans. 3.
ANALYSIS
Appellant argues the pending claims as a group. Appeal Br. 9–22;
Reply Br. 2–5. As permitted by 37 C.F.R. § 41.37, we decide the Appeal
based on claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Arguments
The Examiner determines that the claims are directed to “a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.” Ans. 3. The Examiner adds that the claims are
directed to an abstract idea because they describe the concept of
“categorizing financial transaction[s] by calculating scores based on
frequency of occurrences and performing identification based on comparing
the scores, which corresponds to concepts identified as abstract ideas by the
courts.” Ans. 3–4, 7 (citing In re TLI Comm’cns LLC Pat. Litig., 823 F.3d
607, 611 (Fed. Cir. 2016) (classifying and storing data in an organized
manner); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (collecting information, analyzing it, and displaying certain
results of the collection and analysis); Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011) (collecting and
comparing known information); Content Extraction & Transmission LLC v.
Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (data
recognition and storage); CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1370 (Fed. Cir. 2011) (obtaining and comparing intangible data);
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Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350
(Fed. Cir. 2014) (organizing information through mathematical correlations);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 213 (2014) (mitigating
settlement risk); In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989)
(mathematical algorithm); In re Abele, 684 F.2d 902, 908 (CCPA 1982)
(mathematical algorithm)).
With respect to the additional elements and whether they amount to
significantly more than the judicial exception, the Examiner finds:
The claims recite additional limitation of a “computer
processor”, “financial management application”, “memory
storing instructions executable by the processor”', “generator”
and “module” to perform obtaining, selecting, calculating,
generating, identifying, assigning and tallying steps. The
“computer processor”, “financial management application”,
“memory storing instructions executable by the processor”',
“generator” and “module” are recited at a high level of
generality and are recited as performing generic computer
functions routinely used in computer applications. Generic
computer components recited as performing generic computer
functions that are well-understood, routine and conventional
activities amount to no more than implementing the abstract
idea with a computerized system. The use of generic computer
components to obtain, select, calculate, identify, assign and
tally data based on human instructions does not impose any
meaningful limit on the computer implementation of the
abstract idea. Thus, taken alone, the additional elements do not
amount to significantly more than the above-identified judicial
exception (the abstract idea)
Ans. 5. Based on these determinations, the Examiner concludes that the
claims are ineligible under § 101.
Appellant argues the Examiner ignores features recited in claim 1 and
improperly characterizes claim 1 as “categorizing [a] financial transaction by
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calculating scores based on frequency of occurrences and performing
identification based on comparing the scores.” See Appeal Br. 11–12.
Appellant also argues the Examiner’s comparison of claim 1 with other
claims previously deemed to be directed to an abstract idea is flawed, and
argues claim 1 is different from the claims identified in Alice, Digitech,
CyberSource, Content Extraction, Classen, Electric Power Group, TLI
Communications, Abele, and Grams because claim 1 requires calculating at
least two unique scores per candidate business (i.e., merchant) to resolve an
ambiguity in a single transaction record, and then assigning the correct
merchandise category to the single transaction record. See Appeal Br. 12–
16; see also Reply Br. 2. Appellant additionally argues claim 1 is directed to
an improvement to the operation of a computer, rather than an abstract idea,
because the process recited in claim 1 enables the computer to handle
ambiguous records and reduce the likelihood that a financial transaction with
an ambiguous description field will be improperly characterized. See
Appeal Br. 16–18.
Appellant further argues, when the limitations of claim 1 are
considered as an ordered combination, claim 1 resolves an ambiguity
associated with multiple business (i.e., merchants) arising from a description
field of a financial transaction through the calculations of unique scores for
each business, where the calculations are neither routine nor conventional.
See Appeal Br. 18–19; see also Reply Br. 3–4. As also argued by Appellant,
claim 1 recite significantly more than an abstract idea because claim 1
recites a process that can resolve an ambiguous transaction description field,
and thus, shows an improvement to another technology or technical field.
See Appeal Br. 20; see also Reply Br. 5. Appellant additionally argues that
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the arrangement of the elements of claim 1 successfully transforms any
abstract idea into a patent-eligible invention because there is no risk claim 1
will preempt any abstract idea. See Appeal Br. 20–22.
Principles of Law
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp., 573 U.S. at 216 (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To
determine whether a claim falls within one of these excluded categories, the
Court has set out a two-part framework. The framework requires us first to
consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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 January 2019, the USPTO published revised guidance on the
application of § 101. See USPTO, 2019 Revised Patent Subject Matter
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Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under
that 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 activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MANUAL OF PATENT EXAMINING PROCEDURE
(“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, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and 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.
See Guidance, 84 Fed. Reg. at 56.
Abstract Idea
To determine whether a claim recites an abstract idea, we (1) identify
the claim’s specific limitations that recite an abstract idea, and (2) determine
whether the identified limitations fall within certain subject matter
groupings, namely (a) mathematical concepts; (b) certain methods of
organizing human activity; or (c) mental processes.
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Independent claim 1 is directed to an abstract idea because the claim
recites a mental process, one of the abstract idea groupings listed in the
Guidance. See Guidance 84 Fed. Reg. at 52, 53 (listing “[m]ental processes
. . . including an observation, evaluation, judgment, opinion)” as one of the
“enumerated groupings of abstract ideas”).
The claims are directed to “a method, system and computer readable
medium to improve accuracy in categorizing financial transactions with
ambiguous transaction descriptions.” Spec. ¶ 12. The claimed method
includes the following:
(1) “obtaining an uncategorized transaction record of the financial
transaction, wherein the uncategorized transaction record comprises a
transaction description;”
(2)
selecting . . . based on the transaction description of the
financial transaction, at least a first business and a second
business from a pre-determined business list,
wherein the first business is in a first merchandise
category and has a first business qualifier,
wherein the second business is in a second merchandise
category and has a second business qualifier, and
wherein each business qualifier is an attribute of a
business that is available from a public source;
(3) “obtaining a plurality of categorized transaction records of a user;”
(4) “calculating . . . a first business qualifier score representing a first
frequency of occurrence of the first business qualifier occurring in the
plurality of categorized transaction records;”
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(5) “calculating . . . a second business qualifier score representing a
second frequency of occurrence of the second business qualifier
occurring in the plurality of categorized transaction records;”
(6) “generating a comparison result based at least on comparing the
first business qualifier score and the second business qualifier score
and determining that the first business qualifier score exceeds the
second business qualifier score;”
(7) “identifying, based on the comparison result, that the financial
transaction is performed by the user and the first business;”
(8) “assigning the first merchandise category of the first business to
the uncategorized transaction record;”
(9) “identifying a transaction time of the financial transaction as an
instance of a plurality of predetermined recurring time points, wherein
the uncategorized transaction record further comprises the transaction
time;”
(10) “calculating a first temporal correlation score representing a third
frequency of occurrence of the first merchandise category occurring in
the plurality of categorized transaction records at the plurality of pre-
determined recurring time points;” and
(11)
calculating a second temporal correlation score
representing a fourth frequency of occurrence of the second
merchandise category occurring in the plurality of
categorized transaction records at the plurality of pre-
determined recurring time points,
wherein calculating the first temporal correlation score
and the second temporal correlation score is based on a
Bayesian probability, and
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wherein generating the comparison result is further based
on comparing the first temporal correlation score and the
second temporal correlation score.
Appeal Br. 23–24 (Claims App.).
Here, apart from the claimed “computer processor,” every limitation
of claim 1 recites an abstract idea, namely a mental process (including an
observation, evaluation, judgement, opinion). The claimed method of
categorizing financial transactions with ambiguous transaction descriptions
does not require a machine, let alone a particular machine, to implement, and
therefore, fits squarely within the mental process category of the agency’s
guidelines. See Guidance, 84 Fed. Reg. at 52 (listing exemplary mental
processes including (1) an observation, (2) an evaluation, (3) a judgment,
and (4) an opinion).
Appellant’s argument that the Examiner failed to consider all the
limitations of claim 1 is not persuasive, as we agree with the Examiner did
consider each and every claim limitation, both individually and in
combination, including the “calculating” limitations recited in claim 1. See
Ans. 7. Appellant’s argument that claim 1 is unlike the claims at-issue in
Alice, Digitech, CyberSource, Content Extraction, Classen, Electric Power
Group, TLI Communications, Abele, and Grams is also not persuasive, as
the argument merely reiterates the limitations recited in claim 1 without
explaining how they distinguish claim 1 from the abstract ideas identified in
the aforementioned court cases.
Although claim 1 recites an abstract idea based on these mental
processes, we nevertheless must still determine whether the abstract idea is
integrated into a practical application, namely whether the claim applies,
relies on, or uses the abstract idea in a manner that imposes a meaningful
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limit on the abstract idea, such that the claim is more than a drafting effort
designed to monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54–
55. We, therefore, (1) identify whether there are any additional recited
elements beyond the abstract idea, and (2) evaluate those elements
individually and collectively to determine whether they integrate the
exception into a practical application. See Guidance, 84 Fed. Reg. at 54–55.
Here, the claimed “computer processor” is the only recited element
beyond the abstract idea, but this additional element does not integrate the
abstract idea into a practical application when reading claim 1 as a whole.
We are not persuaded that the claimed invention improves the computer or
its components’ functionality or efficiency, or otherwise changes the way the
computer functions. In other words, contrary to Appellant’s assertion (see
Appeal Br. 16–18), the claimed invention merely utilizes a computer
processor as a tool to improve the underlying method of categorizing
financial transactions with ambiguous transaction descriptions. Thus, the
claims here merely use generic computing components to categorize the
financial transactions, but does not improve the underlying computer, as was
the case in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d
1299 (Fed. Cir. 2016) or Enfish, LLC v. Microsoft Corp., 822 F.3d 1327
(Fed. Cir. 2016).
Further, the claimed “computer processor” does not integrate the
abstract idea into a practical application, as Appellant’s Specification
discloses that the recited element encompasses generic components. See,
e.g., Spec. ¶ 44. In addition, independent claim 9 recites a “financial
management application,” a “memory,” a “business qualifier score
generator,” a “temporal correlation score generator,” a “financial transaction
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categorization module,” and a “repository,” and independent claim 17 recites
a “computer readable medium,” which are not disclosed in the Specification
as requiring anything more than generic components. See, e.g., Spec. ¶¶ 13,
44–45. Simply adding generic hardware and computer components to
perform abstract ideas does not integrate those ideas into a practical
application. See Guidance, 84 Fed. Reg. at 55 (identifying “merely
includ[ing] instructions to implement an abstract idea on a computer” as an
example of when an abstract idea has not been integrated into a practical
application).
We have considered Appellant’s argument that claim 1 is directed to
an improvement to the operation of a computer but we are not persuaded by
this argument. Instead, as previously discussed, we agree with the
Examiner’s finding that the claimed method of categorizing financial
transactions with ambiguous transaction descriptions merely utilizes a
computer as a tool and does not improve the underlying operation of the
computer. See Ans. 7.
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
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Inventive Concept
Because we determine claim 1 is “directed to” an abstract idea, we
consider whether claim 1 recites an “inventive concept.” The Examiner
determined claim 1 does not recite an inventive concept because the
additional elements in the claim do not amount to “significantly more” than
an abstract idea. See Ans. 5, 7–8.
We agree. The additional element recited in the claims is a “computer
processor.” The claim recites this element at a high level of generality, and
Appellant’s Specification indicates that this element is a generic computer
component. See, e.g., Spec. ¶ 44. Using generic computer components to
perform abstract ideas does not provide the necessary inventive concept.
See Alice, 573 U.S. at 223 (“[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.”). Thus, this element, taken individually or together with the
other claim elements, does not amount to “significantly more” than the
abstract ideas themselves.
We have considered Appellant’s argument that claim 1 recites an
inventive concept because the claims is directed to an improvement to the
operation of a computer but it is not persuasive. Instead, as previously
discussed, we agree with the Examiner’s finding that the claimed method of
categorizing financial transactions with ambiguous transaction descriptions
merely utilizes a computer as a tool and does not improve the underlying
operation of the computer. See Ans. 7. Likewise, we are not persuaded by
Appellant’s argument that claim 1 recites calculations of unique scores that
are neither routine nor conventional. We note Appellant’s Specification
describes that a method for categorizing a financial transaction, including the
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steps of calculating business qualifier scores and temporal correlation scores,
can be performed by any type of computing score. See Spec. ¶¶ 31, 44; Fig.
2. Thus, Appellant’s Specification provides objective evidence that the
“calculating” operations recited in claim 1 are well-understood, routine, and
conventional operations.
Preemption
Appellant’s argument that the claims do not preempt any alleged
abstract idea and are, therefore, patent-eligible (see Appeal Br. 20–22) is
also not persuasive. The Federal Circuit has made clear that “the absence of
complete preemption does not demonstrate patent eligibility” of a claim.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015).
Conclusion
For at least the above reasons, we agree with the Examiner that claim
1 is “directed to” an abstract idea and does not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of claim 1 and the
remaining claims which fail to include additional elements that add
significantly more to the abstract idea, under 35 U.S.C. § 101.

DECISION
We affirm the Examiner’s rejection of claims 1–4, 6, 7, 9–12, 14, 15,
17–20, 22, and 23 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter.
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).

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In summary:
Claims
Rejected
Basis  Affirmed Reversed
1–4, 6, 7, 9–12,
14, 15, 17–20, 22,
23
§ 101  1–4, 6, 7, 9–12,
14, 15, 17–20,
22, 23

AFFIRMED