Ex Parte Canis

Patent Trial and Appeal Board

Feb 22, 2019

14025054 (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/025,054 09/12/2013
132326 7590
Thompson Hine LLP
10050 Innovation Drive
Suite 400
Dayton, OH 45342-4934
02/26/2019
FIRST NAMED INVENTOR
Laure Canis
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.
PT1015USOO 5345
EXAMINER
CHEIN, ALLEN C
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
02/26/2019 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):
ipdocket@thompsonhine.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURE CANIS
Appeal2017-003463
Application 14/025,054 1
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
AMEE A. SHAH, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellant, the real party in interest is Amadeus S.A.S.
(Appeal Br. 3).
Appeal2017-003463
Application 14/025,054
STATEMENT OF THE CASE2
Laure Canis (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1-3, 6-10, 13, and 28-38, the only claims pending in the
application on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b ).
The Appellant invented a way of determining an expected value of an
action relating to an audit of a transaction. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of selecting which transactions of a plurality of
transactions to audit, the method comprising:
[ 1] receiving,
at a computer,
first data relating to a transaction,
[2] parsing,
the transaction being conducted by a first business
entity and relating to a travel product provided by
a second business entity;
with the computer,
the first data into a plurality of parameters,
each parameter having a value that defines a
characteristic of the transaction;
2 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed September 19, 2016) and Reply Brief ("Reply Br.," filed January
2, 2017), and the Examiner's Answer ("Ans.," mailed November 1, 2016),
and Final Action ("Final Act.," mailed April 29, 2016).
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[3] in response to the plurality of parameters matching a first set
of parameters corresponding to a first transaction type,
classifying the transaction as the first transaction type;
[ 4] in response to the plurality of parameters matching a second
set of parameters corresponding to a second transaction type,
classifying the transaction as the second transaction type;
[5] determining a preventive effect of auditing the transaction
by:
defining,
in a database of audit data,
a first plurality of transactions audited during a
first period of time,
defining,
in the database of audit data,
a second plurality of transactions audited during a
second period of time occurring after the first
period of time,
for the first plurality of transactions,
determining a first error rate equal to a first
percentage of audited transactions having pricing
errors,
for the second plurality of transactions,
and
determining a second error rate equal to a second
percentage of audited transactions having pricing
errors,
defining the preventive effect
based on a difference between the first error rate
and the second error rate;
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and
[7] determining whether to audit the transaction
based at least in part
on whether the transaction is classified as the first
transaction type or the second transaction type,
and
on the preventive effect.
Claims 1-3, 6-10, 13, and 28-38 stand rejected under 35 U.S.C. § 101
as directed to a judicial exception without significantly more.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
ANALYSIS
STEPP.
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat else
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
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is there in the claims before us? To answer that question, ...
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. [The Court] 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."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217-18 (2014)
( citations omitted, some alterations in the original) ( citing Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)). To perform this test, we must first determine what the claims are
directed to. This begins by determining whether the claims recite one of the
judicial exceptions ( a law of nature, a natural phenomenon, or an abstract
idea). Then, if the claims recite a judicial exception, determining whether
the claims at issue are directed to the recited judicial exception, or whether
the recited judicial exception is integrated into a practical application of that
exception. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept, because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
Method claim 1 recites receiving, parsing, and classifying transaction
data, determining data representing some preventative effect by defining
transaction data, and determining whether to audit the transaction data.
Parsing and classifying are rudimentary forms of analysis. Determining data
from other data and reaching some yes/no decision such as whether to
perform an audit are also rudimentary forms of analysis. Thus, claim 1
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recites receiving, analyzing, and modifying data. None of the limitations
recite technological implementation details for any of these steps, but instead
recite only functional results to be achieved by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. The next issue is whether it
recites the judicial exception of an abstract idea. To answer this, we next
determine whether it recites one of the concepts the Courts have held to be
lacking practical application, viz. mathematical concepts4, certain methods
of organizing human interactions 5, including fundamental economic
practices and business activities, or mental processes6•
The Examiner determines the claims to be directed to auditing
transactions, a fundamental business practice. Final Act. 3.
The preamble to claim 1 recites that it is a method of selecting which
transactions of a plurality of transactions to audit. The steps in claim 1 result
in deciding whether to audit transactions absent any technological
mechanism other than a conventional computer for doing so.
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1383 (Fed.
Cir. 2017); In re Marco Guldenaar Holding B. V., 2018 WL 6816331 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-1372 (Fed. Cir. 2011); Intellectual Ventures I
LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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As to the specific limitations, limitations 1--4 recite conventional
receiving, analyzing, and modifying of transaction data, which advise one to
apply generic functions to get to these results. Limitations 5---6 are the only
steps associated with performing what the claim produces and recite
performing steps of determining data that in tum determines a yes/no
decision, which is simply gathering information to make a decision. To
advocate gathering information to make a decision is conceptual advice for
results to be obtained and not a technological operation.
The Specification at paragraph 1 describes the invention as relating to
determining an expected value of an action relating to an audit of a
transaction. Thus, all this intrinsic evidence shows that claim 1 is directed to
determining whether to audit transactions, i.e. auditing as a management
control. This is consistent with the Examiner's determination.
The concept of auditing as a management control is a fundamental
business practice long prevalent in our system of commerce. The use of
auditing as a management control is also a building block of ingenuity in
control management. Thus, auditing as a management control is an example
of a conceptual idea subject to the Supreme Court's "concern that patent law
not inhibit further discovery by improperly tying up the future use of these
building blocks of human ingenuity." See Alice, 573 U.S. at 216 (citations
omitted). Claim 1 recites the idea of performing various conceptual steps
generically resulting in the auditing as a management control. As we
determined earlier, none of these steps recite specific technological
implementation details, but instead get to this result by advising one to
gather, parse, and classify transaction data to determine their effects and
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decide whether to perform an audit. Thus claim 1 is directed to auditing as a
management control, which is a fundamental business practice.
This in tum is an example of commercial or legal interactions as a certain
method of organizing human interactions because auditing is a fundamental
control management practice exercised by organizations to manage how well
its members adhere to policy and to track changes in ongoing operations.
The concept of auditing as a management control as advised to be done by
gathering, parsing, and classifying transaction data to determine their effects
and decide whether to perform an audit is abstract conceptual advice to
observe ongoing operations and categorize them in a manner that sheds light
on whether an audit would be helpful. The steps recited in claim 1 are part
of this data gathering and analysis.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (detecting credit-card
fraud based on past transactions which is a form of auditing).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of receiving, analyzing, and modifying
data mimic human thought processes of observation, evaluation, judgment,
and opinion, perhaps with paper and pencil, where the data interpretation is
perceptible only in the human mind. See In re TL! Commc 'ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claim 1, unlike the
claims found non-abstract in prior cases, uses generic computer technology
to perform data reception, analysis, and modification, and does not recite an
improvement to a particular computer technology. See, e.g., McRO, Inc. v.
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Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
(finding claims not abstract because they "focused on a specific asserted
improvement in computer animation"). As such, claim 1 is directed to the
abstract idea of receiving, analyzing, and modifying data, and not a
technological implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 is directed
to the abstract idea of auditing as a management control by advising one to
gather, parse, and classify transaction data to determine their effects and
decide whether to perform an audit.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, "all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas." Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. "[ A Jpplication[ s ]" of such
concepts "'to a new and useful end,"' we have said, remain
eligible for patent protection. Accordingly, in applying the
§ 101 exception, we must distinguish between patents that
claim the "'buildin[g] block[s]"' of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 ( citations omitted, alterations in the original).
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 ( citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Step 1 is a pure data gathering step. Limitations
describing the nature of the data do not alter this. Steps 2-7 recite generic
computer processing expressed in functional terms to be performed by any
and all possible means and so present no more than abstract conceptual
advice. All purported inventive aspects reside in how the data are
interpreted and the results desired, and not in how the process physically
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enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellant's claim 1 simply recites the concept of
auditing as a management control as performed by a generic computer. To
be sure, claim 1 recites doing so by advising one to gather, parse, and
classify transaction data to determine their effects and decide whether to
perform an audit. But this is no more than abstract conceptual advice on the
parameters for such auditing as a management control and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of the
computer itself. Nor does it effect an improvement in any other technology
or technical field. The Specification spells out different generic equipment8
and parameters that might be applied using this concept and the particular
steps such conventional processing would entail based on the concept of
auditing as a management control under different scenarios. They do not
describe any particular improvement in the manner a computer functions.
Instead, claim 1 at issue amounts to nothing significantly more than an
instruction to apply the abstract idea of auditing as a management control by
advising one to gather, parse, and classify transaction data to determine their
effects and decide whether to perform an audit using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
8 The Specification describes any type of computer. Spec. para. 93.
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None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other 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.
We conclude that claim 1 is directed to advising one to gather, parse, and
classify transaction data to determine their effects and decide whether to
perform an audit to achieve the functional result of auditing as a
management control as distinguished from a technological improvement for
achieving or applying that result. The claim does not integrate the judicial
exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept, because
the additional elements recited in the claim provides significantly more than
the recited judicial exception. Taking the claim elements separately, the
function performed by the computer at each step of the process is purely
conventional. Using a computer for receiving, analyzing, and modifying
data amounts to electronic data query and retrieval----one of the most basic
functions of a computer. All of these computer functions are generic,
routine, conventional computer activities that are performed only for their
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conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing
Patent Litigation, 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"). None of these activities are used in some
unconventional manner nor do any produce some unexpected result.
Appellant does not contend they invented any of these activities. In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, "even if a process of
collecting and analyzing information is 'limited to particular content' or a
particular 'source,' that limitation does not make the collection and analysis
other than abstract." SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (sequence of data retrieval, analysis, modification, generation, display,
and transmission), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC,
874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
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controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 1 does not provide an inventive concept, because
the additional elements recited in the claim does not provide significantly
more than the recited judicial exception.
REMAINING CLAIMS
The remaining method claims merely describe process parameters. We
conclude that the method claims at issue are directed to a patent-ineligible
concept itself, and not to the practical application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice, 573 U.S. at 226 (alteration in original). As a corollary, the claims are
not directed to any particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of auditing
as a management control, without significantly more.
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APPELLANT'S ARGUMENTS
As to Appellant's Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 3 and Answer 2-5 and reach
similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellant's argument that
a method and system for determining whether to audit a
transaction that, using an unconventional combination of steps
including determining the preventive effect of auditing the
transaction and determining whether to audit the transaction
based on the preventive effect, is not a concept reasonably tied
to the facts of a Federal Circuit or a Supreme Court case in
which claims were found to be directed to an abstract idea.
Reply Br. 2. The analysis supra supports the Examiner's finding that it is a
concept reasonably tied to the facts of a Federal Circuit or a Supreme Court
case in which claims were found to be directed to an abstract idea.
We are not persuaded by Appellant's argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Reply Br. 5---6. Initially, we remind Appellant that Bascom did not
find claims eligible on the substance, but rather that the Appellees did not
provide sufficient evidence to support a 12(b )( 6) motion to dismiss in which
facts are presumed in the non-movant's favor.
The key fact in Bascom was the presence of a structural change in
"installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
design gives the filtering tool both the benefits of a filter on a local computer
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and the benefits of a filter on the ISP server." Bascom, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
We are not persuaded by Appellant's argument that "[n]one of the
disclosed parameters of Edwards teaches a preventive effect of the audit, a
step that is neither conventional or generic as it relates to computerized
systems, and even less so taken in the claimed ordered combination." Reply
Br. 6-7. A preventative effect is an abstract idea, no more than abstract
conceptual advice as to what might not happen. An unconventional abstract
idea is still an abstract idea. "A claim for a new abstract idea is still an
abstract idea. The search for a § 101 inventive concept is thus distinct from
demonstrating§ 102 novelty." Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016).
CONCLUSIONS OF LAW
The rejection of claims 1-3, 6-10, 13, and 28-38 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.
DECISION
The rejection of claims 1-3, 6-10, 13, and 28-38 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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