Ex Parte Angell et al

Patent Trial and Appeal Board

Jun 23, 2017

11862323 (P.T.A.B. Jun. 23, 2017)

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.
11/862,323 09/27/2007 Robert Lee Angell END920070007US10 9846
37945 7590 06/27/2017
DTTKFW YFF
EXAMINER
YEE AND ASSOCIATES, P.C. BROWN, ALVIN L
P.O. BOX 802333
DALLAS, TX 75380 ART UNIT PAPER NUMBER
3682
NOTIFICATION DATE DELIVERY MODE
06/27/2017 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):
ptonotifs @yeeiplaw.com
mgamez @ yeeiplaw. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT LEE ANGELL and JAMES R. KRAEMER
Appeal 2016-001207
Application 11/862,3231
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL C. ASTORINO, and
MATTHEW S. MEYERS, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Robert Lee Angell, et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the Final Rejection of claims 1—25. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify International Business Machines Corporation
the real party in interest. App. Br. 2.
Appeal 2016-001207
Application 11/862,323
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer implemented method for ranking a potential customer
based on a set of risk assessment factors corresponding to the
potential customer, the computer implemented method comprising:
a computer processing external data associated with the
potential customer in a set of data models to generate, by a processor,
the set of risk assessment factors for the potential customer, wherein
the external data comprises dynamic customer data elements
generated in real-time as the potential customer is approaching a retail
facility, and wherein the external data is formed by analyzing data
received external to the retail facility;
the computer ranking the potential customer based on the set of
risk assessment factors and cohort data including a speed at which the
potential customer is walking and a determination that the potential
customer is loitering or pacing, wherein the ranking based on the set
of risk assessment factors corresponding to the potential customer
approaching the retail facility indicates whether the potential customer
poses a risk to the retail facility;
responsive to the computer determining that the ranking based
on the set of risk assessment factors corresponding to the potential
customer approaching the retail facility is greater than a threshold, the
computer identifying the potential customer as a desirable customer
and the computer initiating marketing incentives targeted to the
desirable customer, wherein the computer initiating the marketing
incentives further comprises the computer notifying an employee
associated with the retail facility to assist the desirable customer;
responsive to the computer determining that the ranking based
on the set of risk assessment factors corresponding to the potential
customer approaching the retail facility indicates the potential
customer is an undesirable customer, the computer initiating
marketing disincentives targeted to the undesirable customer, wherein
the computer initiating the marketing disincentives comprises the
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Application 11/862,323
computer creating a negative ambiance in an area of the retail facility
associated with the undesirable customer; and
responsive to the computer determining that the ranking based
on the set of risk assessment factors corresponding to the potential
customer approaching the retail facility indicates the potential
customer is a wanted criminal, the computer displaying a warning
message on a display device located outside the retail facility as the
wanted criminal approaches the retail facility, the computer locking
doors to the retail facility to deter the wanted criminal from entering
the retail facility, and the computer notifying police of a presence of
the wanted criminal at the retail facility, wherein the computer
displaying the warning message as the wanted criminal approaches
the retail facility comprises informing the wanted criminal that the
doors to the retail facility have been locked and that the police have
been notified of the presence of the wanted criminal at the retail
facility.
THE REJECTION
The following rejection is before us for review:
1. Claims 1—25 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 1—25 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter?
ANALYSIS
The Appellant argued the claims as a group. See App. Br. 11—15. We
select claim 1 as the representative claim for this group, and the remaining
claims 2—25 stand or fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv).
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Application 11/862,323
Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under § 101. “We must
first determine whether the claims at issue are directed to a patent-ineligible
concept,” such as an abstract idea. Alice, 134 S. Ct. at 2355 (emphasis
added.) Step two is “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, 134 S. Ct. at 2355 (alteration in original) (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1294
(2012) (emphasis added.)
With respect to the first step, the Examiner determined that
[t]he claimed invention is directed to generating] a set of risk
assessment factors for a potential customer and ranking the
potential customer based on the risk assessment factors and
cohort data. Generating a set of risk assessment factors for a
potential customer and ranking the potential customer based on
the risk assessment factors and cohort data are “certain methods
of organizing human activities” and mathematical
relationships/formulas. As noted above, certain methods of
organizing human activities and mathematical
relationships/formulas are examples of abstract ideas explicitly
referenced in Alice Corp.
Final Act. 5 (emphasis omitted.)
The Appellants challenge said determination on the grounds that
• “none of the claims recite a mathematical formula”;
• “all of the limitations of the independent claims taken together as an
ordered combination cannot be performed by a human ‘in real-time as
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Application 11/862,323
the potential customer is approaching a retail facility as recited in
the independent claims”;
• “Alice did not hold that ‘ranking a potential customer based on a set of
risk assessment factors corresponding to the potential customer’ as
recited in the independent claims is a method of organizing human
activity and, therefore, an ‘abstract idea.’”; and,
• “the Examiner did not provide citations to other case law or references
that show ‘ranking a potential customer based on a set of risk
assessment factors corresponding to the potential customer’ has been
held as or could be held as a method of organizing human activity that
is an abstract idea.”
App. Br. 13. The challenge is unpersuasive as to error in the rejection.
Claims to an abstract idea are not made less abstract simply because a
mathematical formula is not recited. Nor are claims to an abstract idea made
less abstract because a human cannot practice what is claimed.
The question under Alice step 1 is not whether a mathematical
formula is recited or not, or whether a human can practice what is claimed or
not, but whether claims are “directed to a patent-ineligible concept.” 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); see Genetic Techs. Ltd. v. Merial
L.L.C., 2016 WF 1393573, at *5 (Fed. Cir. 2016) (inquiring into “the focus
of the claimed advance over the prior art”).” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
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Application 11/862,323
In that regard, the Specification states that “the present invention is
directed to a computer implemented method, apparatus, and computer usable
program product for ranking a customer using dynamic customer data.”
Para. 3. The Specification explains that “[i]n the past, merchants frequently
had a personal relationship with their customers” (para. 4) and this helped a
merchant “determine whether a customer was a good customer” (para. 4).
But now “merchants and employees of retail businesses rarely recognize
regular customers.” Para. 5.
[CJurrent solutions do not utilize all of the potential dynamic
customer data elements that may be available for identifying
customers that should be marketed to, customers that should be
encouraged to shop at the retail facility, customers that should
not receive marketing content, and customers that should be
discouraged from shopping at the retail facility.
Para. 9.
The illustrative embodiments provide a computer
implemented method, apparatus, and computer usable program
product for ranking a potential customer. In one embodiment,
external data associated with the potential customer is
processed in a set of data models to generate a set of risk
assessment factors for the potential customer. The external data
comprises dynamic customer data elements generated in real­
time as the potential customer is approaching a retail facility.
The potential customer is ranked based on the risk assessment
factors. The ranking indicates whether the potential customer
poses a possible risk to the retail facility. In response to the
ranking indicating that the potential customer poses the possible
risk, actions are initiated to deter the potential customer from
entering the retail facility.
Para. 10.
The question is whether the claims as a whole “focus on a specific
means or method that improves the relevant technology” or are “directed to
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a result or effect that itself is the abstract idea and merely invoke generic
processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc.,
837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, the claims as a whole in
light of the Specification are focused on gathering data and generating
therefrom a set of risk assessment factors for a potential customer and then
based on said factor the potential customer is ranked, the ranking having
attendant consequences. Cf. In re TLI Commc ’ns LLC Patent Litig., 823
F.3d 607, 613 (Fed. Cir. 2016) (the claims’ focus “was not on an improved
telephone unit or an improved server.”) In light of Specification’s
description of the problem and solution, the advance over the prior art by the
claimed invention lies in the gathering of data and generating therefrom of a
set of risk assessment factors for a potential customer. This is the heart of
the invention. Cf. Intellectual Ventures I LLC v. Erie Indemnity Co., 850
F.3d 1315, 1328 (Fed. Cir. 2017) (“the heart of the claimed invention lies in
creating and using an index to search for and retrieve data ... an abstract
concept.”)
Given all this, in our view, the Examiner’s determination that “[t]he
claimed invention is directed to generate a set of risk assessment factors for
a potential customer and ranking the potential customer based on the risk
assessment factors and cohort data” (Final Act. 5) reasonably comports with
a reading of the claims as a whole in light of the Specification.
The next question is whether said “generat[ing] a set of risk
assessment factors for a potential customer and ranking the potential
customer based on the risk assessment factors and cohort data” (Final Act. 5)
to which the claims have been determined to be “directed to” is an abstract
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idea. The Appellants argue that said generating/ranking is not and has not
been shown to be “a method of organizing human activity and, therefore, an
‘abstract idea.’” (App. Br. 13). But
[t]he Supreme Court has not established a definitive rule to
determine what constitutes an “abstract idea” sufficient to
satisfy the first step of the Mayo/Alice inquiry. See id. at 2357.
Rather, both this court and the Supreme Court have found it
sufficient to compare claims at issue to those claims already
found to be directed to an abstract idea in previous cases.
Enfish, 822 F.3d at 1334. In that regard, we see little difference between the
claims here directed to “generat[ing] a set of risk assessment factors for a
potential customer and ranking the potential customer based on the risk
assessment factors and cohort data” and those in, for example, Bilski v.
Kappos, 130 S. Ct. 3218 (2010), directed to risk hedging.
With respect to the second step, the Examiner determined that
The steps or acts performed (utilizing a processor) in
independent method claim 1 are not enough to quality as
“significantly more” than the abstract idea itself, since the claim
[is] a mere instruction to apply the abstract idea. Furthermore,
there is no improvement to another technology or technical
field, no improvements to the functioning of the computer
itself, and no meaningful limitations beyond generally linking
the use of an abstract idea to a particular technical environment,
and the claims require no more than a generic computer to
perform generic computer functions that are well-understood,
routine and conventional.
Final Act. 5—6.
The Appellants argue that “the Examiner does not cite in the Final
Office Action dated November 20, 2014 to any prior art reference or
combination of prior art references that allegedly teaches or suggests the
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Application 11/862,323
limitations recited in the claims” (App. Br. 13), and therefore, the claims
necessarily are patent-eligible. Although novelty is a factor to be considered
when determining “whether the claims contain an ‘inventive concept’ to
‘transform’ the claimed abstract idea into patent-eligible subject matter”
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014), finding
of novelty or nonobviousness does not necessarily lead to the conclusion that
subject matter is patentable eligible. “Groundbreaking, innovative, or even
brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass ’n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
Here the Appellants have not shown novel features that transform the
abstract idea into patent-eligible subject matter.
The Appellants argue that “[independent claims 1, 13,21, and 23
transform the nature of the claims into a patent eligible application by
reciting an improvement in an existing technological process of risk
assessment and reduction.” App. Br. 13. The Appellants point to various
consequences from evaluating a potential customer based on his/her ranking,
particularly those limitations calling for, inter alia, a computer to “lock[ ]
doors to the retail facility to deter the wanted criminal from entering the
retail facility” (claim 1).
The Appellants do not adequately explain in what way the recited
computer transforms the claim, as a whole, into “significantly more” than a
claim to the abstract idea itself in effecting said consequences. The record
supports the Examiner’s view that no improvements to the functioning of the
computer itself is entailed. This is so because the Specification indicates
that the invention can be performed using conventional and generic
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Application 11/862,323
computers. See, e.g., para. 29. “We have repeatedly held that such
invocations of computers and networks that are not even arguably inventive
are ‘insufficient to pass the test of an inventive concept in the application’ of
an abstract idea.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1355 (Fed. Cir. 2016). See Alice, 134 S. Ct. at 2359 (“Taking the claim
elements separately, the function performed by the computer at each step of
the process is ‘[pjurely conventional.’”) (citing Mayo, 132 S. Ct. at 1298).
See Alice, 134 S. Ct. at 2359 (“Considered ‘as an ordered combination,’ the
computer components of petitioner’s method ‘ad[d] nothing . . . that is not
already present when the steps are considered separately.’”).
Lastly, the Appellants argue that “the claims are necessarily rooted in
computer technology in order to overcome a specific problem in risk
assessment and reduction.” App. Br. 14. But, as we have stated, the record
supports otherwise. Without more by the way of contrary evidence, of
which there is none at present, we are unpersuaded that the Appellants have
shown error in the rejection on the ground that the claims include an element
or a combination of elements sufficient to ensure that the claimed subject
matter amounts to significantly more than the abstract idea of “generat[ing] a
set of risk assessment factors for a potential customer and ranking the
potential customer based on the risk assessment factors and cohort data.”
The Appellants remaining arguments have been considered but are not
persuasive as to error in the rejection.
The rejection is sustained.
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DECISION
The decision of the Examiner to reject claims 1—25 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)(l)(iv).
AFFIRMED
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