Ex Parte Anderson et al

Patent Trial and Appeal Board

Mar 27, 2018

12268773 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/268,773 1111112008
131244 7590 03/27/2018
Hunton & Williams LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania A venue, NW
Suite 800
Washington, DC 20037
FIRST NAMED INVENTOR
Russell Wayne Anderson
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www .uspto.gov
ATTORNEY DOCKET NO. CONFIRMATION NO.
47004.000555 8924
EXAMINER
BROWN,ALVINL
ART UNIT PAPER NUMBER
3682
MAILDATE DELIVERY MODE
03/27/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RUSSELL WAYNE ANDERSON, YINGXIA CHEN, ROBERT
SARKISSIAN, and XIAO FENG HE 1
Appeal2017-003268
Application 12/268,773
Technology Center 3600
Before ROBERT E. NAPPI, MONICA S. ULLAGADDI, and JASON M.
REPKO, Administrative Patent Judges.
NAPPI, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's final rejection of claims 25 through 44, 46 through 48 and 50.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is JPMorgan Chase Bank
N.A. App. Br. 1.
Appeal2017-003268
Application 12/268,773
INVENTION
Appellants' disclosed invention is directed to storing and
manipulating customer purchase information received from a plurality of
sources. The method includes generating a model of customer spending
patterns and validating the model using a portion of the customer data, using
the model to estimate past spending of an individual customer and offering
an additional account to a user based upon the estimated past spending. This
information can be used to generate marketing information. See Spec. 1-2,
11, 47, and 48. Claim 25 is representative of the invention and reproduced
below.
25. A method for modeling consumer behavior to estimate
consumer spending, comprising:
receiving, at a preference engine, individual and aggregated
consumer data including consumer bureau data, purchase data and
existing customer data;
splitting, by the preference engine, the individual and
aggregated consumer data into portions, the portions including a
development dataset and a validation dataset that is distinct from the
development dataset;
analyzing, by the preference engine, the development dataset to
determine spending behavior for at least one category of consumers;
generating, by the preference engine, a model of consumer
spending patterns for the at least one category of consumers based on
the spending behavior determined by the analysis of the development
dataset; and
validating, by the preference engine, the model using the
validation dataset,
wherein the model is used to measure past consumer spending
by an individual consumer over a previous period of time using a first
bank account of the individual consumer maintained by a first banking
entity, and to estimate past consumer spending by the individual
consumer over the previous period of time using one or more other
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Application 12/268,773
bank accounts of the individual consumer maintained by one or more
other banking entities different from the first banking entity,
the method further comprising offering an additional account
associated with the first banking entity to the individual consumer
based on the estimated past consumer spending by the individual
consumer using the one or more other bank accounts over the
previous period of time.
REJECTION AT ISSUE2
The Examiner has rejected claims 25 through 44, 46 through 48, and
50 under 35 U.S.C. § 101 for being directed to patent-ineligible subject
matter. Answer 2--4.
PRINCIPLES OF LAW
Patent-eligible subject matter is defined in§ 101 of the Patent Act,
which recites:
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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012). Although an abstract idea, itself, is patent-
2 Throughout this Decision we refer to the Appeal Brief filed March 8, 2016,
Reply Brief filed December 22, 2016, Final Office Action mailed October
29, 2015, Appellants' Specification submitted November 11, 2008, and the
Examiner's Answer mailed October 31, 2016.
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Application 12/268,773
ineligible, an application of the abstract idea may be patent-eligible. Alice,
134 S. Ct. at 2355. Thus, we must consider "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." Id. (citing Mayo, 566 U.S. at 78-80). The claim must contain
elements or a combination of elements that are "'sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[abstract idea] itself."' Id. (citing Mayo, 566 U.S. at 72-73).
The Supreme Court sets forth a two-part "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 2355.
Id.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo, 566 U.S. at 76-
77]. If so, we then ask, "[ w ]hat else is there in the claims
before us?" Id., at [77-78]. To answer that question, we
consider 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. Id., at [77-78]. We have described step
two of this analysis 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." Id., at [71-
73].
Our reviewing court has said the "relevant inquiry at step one [of the
Alice steps] is 'to ask whether the claims are directed to an improvement to
computer functionality versus being directed to an abstract idea."' In re TL!
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Commc'ns LLC Patent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (internal
citation omitted).
Under the second step of the Alice/Mayo framework, we examine the
claim limitations "more microscopically," (Electric Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016)), to determine whether
they contain "additional features" sufficient to "'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355, 2357
(quoting Mayo, 566 U.S. at 78). "Mere recitation of concrete, tangible
components is insufficient to confer patent eligibility to an otherwise
abstract idea. Rather, the components must involve more than performance
of well-understood, routine, conventional activit[ies] previously known to
the industry." In re TL! Commc 'ns LLC Patent Litig., 823 F.3d at 613
(citing Alice, 134 S. Ct. at 2359).
ANALYSIS
We have reviewed Appellants' arguments in the Briefs, the
Examiner's rejections, and the Examiner's response to Appellants'
arguments. Appellants' arguments have not persuaded us of error in the
Examiner's determination that the claims are unpatentable.
Appellants argue on pages 5 through 7 of the Appeal Brief and pages
2 through 5 of the Reply Brief that the Examiner has not established the
claims are directed to an abstract idea. Appellants argue that the Examiner
quotes independent claim 25 and makes statements that are irrelevant.
Appellants state "the Examiner never explains how 'generating ... a model
of consumer spending patterns' is related to 'using categories to organize,
store and transmit information."' App. Br. 5. Further, Appellants state
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the Examiner never explains how these limitations are related to
"organizing information through mathematical correlations."
The detailed limitations in the claim do not merely claim in the
abstract "organizing information through mathematical
correlations." Rather, the claim recites a very particular way to
"predict share of wallet and off-us spending, i.e., spending
exercised through another banking entity." Specification at
34:10-13. These are not merely abstract limitations that can be
substantively ignored when determining eligibility under § 101.
App. Br. 6.
The Examiner has found that the claims are directed to an abstract as
set forth on pages 3 and 4 of the Final Action. We concur with the
Examiner, and Appellants' arguments have not persuaded us that
representative claim 25 does not recite an abstract idea. Initially, we note
that Appellants' argument that the claim recites a way to "predict share of
wallet and off-us spending," is not commensurate with the scope of the
claim and is importing limitations from the Specification into the claim.
Further, Appellants' Specification describes a model as "a mathematical
representation of a behavior, phenomenon, process or physical system" and
one type of model is "designed to discriminate classes of objects from a set
of observations." Specification 9. Thus, when interpreted in light of the
Specification the claimed generating a model and using the model to
estimate data, is organizing information through mathematical correlations.
The Federal Circuit has explained that "examiners are to continue to
determine ifthe claim recites (i.e., sets forth or describes) a concept that is
similar to concepts previously found abstract by the courts." Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841F.3d1288, 1294 (Fed. Cir.
2016)n.2.
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In the instant case, the Examiner has equated the steps of the claims
with claims held to be abstract by the court is CyberSource. We concur.
The claim 25 limitations directed to: receiving purchase and customer data,
splitting the data, analyzing the dataset, generating a model, validating the
model, estimating spending using the model and making an offer based upon
the estimates; are limitations directed to gathering, organizing and analyzing,
information. Similar limitations were held to abstract in Electric Power
Group. See Electric Power Group at 1354 (holding that claims directed to a
process of gathering and analyzing information of a specific content are
directed to an abstract idea).
In Electric Power Group, the court stated "we have treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas."
Electric Power Group at 1353. Further, the court stated that "merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis."
Id. at 1354.
Claim 25 is also similar to the claims at issue in Content Extraction
and Transmission LLC. v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343,
1347 (Fed. Cir. 2014) (holding that the claims were "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.").
Thus, Appellants' arguments have not persuaded us the Examiner
erred in finding the claims are directed to an abstract idea as representative
claim 25 recites a concept similar to those held to be abstract by the courts.
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Appellants argue on pages 8 and 9 of the Appeal Brief and pages 5
through 7 of the Reply Briefthat the rejection under 35 U.S.C. § 101 is in
error as the claims recite significantly more. Specifically, Appellants assert
that the claim 25 limitation directed to the model being used to measure past
consumer spending and estimate past consumer spending as well as the
method of offering an additional account to a consumer amount something
more and as such the claim is directed to patent eligible subject matter. App.
Br. 8-9, Reply Br. 6-7.
We are not persuaded of error in the Examiner's rejection by these
arguments. As discussed above, under the second part of the Alice test, the
claims are considered to determine if the components involve more than
performance of well understood conventional activities. We do not find that
the limitations argued by Appellants, directed to using the models or making
an offer of an additional account involve anything more than known
conventional activities. Appellants' Specification states "[a] common
objective of scientific inquiry, engineering, and economics is to develop
'mechanistic' models that characterize the underlying mechanisms, causal
relationships, or fundamental 'laws' underlying the observed behavior" thus,
demonstrating that use of models is conventional. Specification 9. Further,
the step of extending an offer is a basic finincial and legal principal, which is
part of commerce and contracts. As such, the claim 25 limitations argued by
Appellants do not draw the claim to recite something more than the abstract
concept and we are not persuaded the Examiner erred in rejecting
representative claim 25, and claims 26 through 44, 46 through 48, and 50,
under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
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Application 12/268,773
DECISION
We affirm the Examiner's rejection of claims 25 through 44, 46
through 48, and 50 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). See
37 C.F.R. § 41.50(±).
AFFIRMED
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