Ex Parte CiureaDownload PDFPatent Trial and Appeal BoardNov 29, 201814070110 (P.T.A.B. Nov. 29, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/070,110 11/01/2013 Peter Ciurea 66945 7590 12/03/2018 KILPATRICK TOWNSEND & STOCKTONLLP/VISA Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 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. 79900-892375 6848 EXAMINER CHANG, EDWARD ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 12/03/2018 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): ipefiling@kilpatricktownsend.com KTSDocketing2@kilpatrick.foundationip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER CIUREA 1 Appeal2017-010091 Application 14/070, 110 Technology Center 3600 Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and PHILLIP A. BENNETT, Administrative Patent Judges. THOMAS, Administrative Patent Judge. DECISION ON APPEAL Appellant seeks our review under 35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims 21--40, all the pending claims in the present application. Claims 1-20 are canceled. See Claims Appendix. We have jurisdiction over the appeal under 35 U.S.C. § 6(b ). We AFFIRM. The present invention relates generally to authentication and risk analysis. See Abstract. 1 Appellant names Visa International Service Association as the real party in interest (App. Br. 3). Appeal2017-010091 Application 14/070, 110 Claim 21 is illustrative: 21. A method comprising: receiving, at a server computer, a request message associated with a transaction from an access device, the request including transaction data associated with the transaction; in response to receiving the request message from the access device, retrieving, by the server computer and from a database, search history data or search parameters relating to searches conducted by a user associated with the transaction, the user using a user communication device to contact a search engine to perform the searches over a communications network, the search history data or search parameters including one or more terms associated with the searches conducted by the user; after retrieving the search history data or search parameters from the database, determining, by the server computer, a risk parameter associated with the transaction, wherein the risk parameter is based on at least the search history data or search parameters and the transaction data included in the request message, wherein the risk parameter is determined based on a correlation between the transaction data and the one or more terms included in the search history data or search parameters relating to searches conducted by the user; determining, by the server computer, if the transaction is authorized using the risk parameter; and transmitting, by the server computer, a response message to the access device after determining if the transaction is authorized. Appellant appeals the following rejection: Claims 21--40 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to patent-ineligible subject matter (Final Act. 4--8). We review the appealed rejections for error based upon the issues identified by Appellant, and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). 2 Appeal2017-010091 Application 14/070, 110 ANALYSIS Re} ection under § 101 Issue: Did the Examiner err in finding that the claims are directed to patent-ineligible subject matter? Alice Corp. Pty. v. CLS Bankint'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. According to Alice step one, "[ w ]e 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. "If the claims are not directed to an abstract idea [or other patent- ineligible concept], the inquiry ends. If the claims are 'directed to' an abstract idea, then the inquiry proceeds to the second step of the Alice framework." McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016). In analyzing whether a claim is directed to an abstract idea, we look to other decisions where similar concepts were previously found abstract by the courts. See Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016). In this regard, with respect to independent method claim 21, and similarly, system claim 31, the Examiner determines that the claims are directed to the abstract idea of "organizing human activities and a fundamental economic practice" (Final Act. 4 ). The Examiner adds that "a memory and a processor are used to receive/retrieve data, process the data, and transmit the data" (id.) and "[ t ]hese particular behaviors are 'intrapersonal or interpersonal activities' of 'managing relationships or transactions between people, social activities, or behaviors"' (id. at 5). 3 Appeal2017-010091 Application 14/070, 110 We find that the Examiner's cogent analysis relying on judicial examples (see Ans. 5---6), shows the Examiner provided an adequate basis for determining that the claims are directed to an abstract idea. Appellant challenges the Examiner's determinations on the ground that "the Examiner has not cited a single court case with respect to step 2A of the Alice analysis ... [thus] the Examiner has failed to meet his burden of making a prima facie case" (App. Br. 6). In response, the Examiner determines, and we agree, "there is no requirement in the [M]ayo test[, step one,] to cite cases/evidence to support the rejection" (Ans. 3), nonetheless the Examiner cites "Electric Power Group" and concludes that, like the current invention, Electric Power Group "merely performed 'collecting information, analyzing it, and displaying certain results of the collection and analysis"' (id.). See, e.g., Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) ("collecting information, analyzing it, and displaying certain results of the collection and analysis" are "abstract-idea processes"). Appellant fails to direct our attention to any precedential cases that stand for the proposition that Examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. There is no such requirement. See, e.g., para. IV "July 2015 Update: Subject Matter Eligibility" to 2014 Interim Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014) ("The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Accordingly, courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases 4 Appeal2017-010091 Application 14/070, 110 resolve the ultimate legal conclusion on eligibility without making any factual findings" ( emphasis added)). Evidence may be helpful in certain situations where, for instance, facts are in dispute. But it is not always necessary. In any case, the Examiner persuasively cites to Electric Power Group. Here, the claimed sequence of steps in claim 21 cover employing a server computer to perform functions, such as receiving a request message/transaction data, retrieving search history data, determining a risk parameter, determining if transaction is authorized, and transmitting a response message (see claim 21 ). However, information collection and analysis, including when limited to particular content, is within the realm of abstract ideas. Elec. Power, 830 F.3d at 1353 (holding that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent-ineligible concept."). As such, the abstract idea here is not meaningfully different from the ideas found to be abstract in other cases. In rejecting claims 21--40 under 35 U.S.C. § 101, the Examiner analyzed the claims using the Mayol Alice two-step framework, consistent with the guidance set forth in the USPTO's "2014 Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014). Thus, the Examiner notified Appellant of the reasons for the rejection "together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application." 3 5 U.S.C. § 132. Therefore, contrary to Appellant's assertions, in doing so, the Examiner set forth a prima facie case of unpatentability such that the burden shifted to Appellant to demonstrate that the claims are patent-eligible. 5 Appeal2017-010091 Application 14/070, 110 Appellant further contends that "it is unclear as to how steps that could not possibly be performed by humans equate to organizing human activities" (App. Br. 7). In response, the Examiner concludes, and we agree, that "because series of organized human activities need to be performed in a computer environment does NOT mean it is NOT abstract idea of organizing human activities" (Ans. 3). Courts have similarly determined that various methods of organizing human activity fall "squarely within the realm of 'abstract ideas."' Alice, 134 S. Ct. at 2357 (discussing methods for risk hedging and intermediated settlement as non-limiting examples of organizing human activity). Among others, recent cases from the Federal Circuit also have "applied the 'abstract idea' exception to encompass inventions pertaining to methods of organizing human activity." In re TL! Commc'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (finding the claimed method of classifying and storing images in an organized manner was a well-established basic concept analogous to methods of organizing human activity); see Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015) (finding the claim at issue was directed to the abstract idea of budgeting, which was "not meaningfully different from the ideas found to be abstract in other cases before the Supreme Court and our court involving methods of organizing human activity"). See also, e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (finding claims directed to collecting data, recognizing certain data within the collected data set, and storing the recognized data drawn to an abstract idea and noting that "humans have always performed these functions"). 6 Appeal2017-010091 Application 14/070, 110 Appellant further contends that "the Examiner has ignored several important features of the claims" (App. Br. 15) "because the Examiner attempts to distill the claim into a gist or core principle" (id. at 16). Whichever way the concept is described, Appellant has not adequately shown that claim 21 is not directed to an abstract idea. Just because the claim includes more words than the phrase the Examiner uses as an articulation of the abstract idea is an insufficient reason to persuasively argue that claim 21 is not directed to an abstract idea. Stated differently, the identified abstract idea need not encompass every claim limitation. Otherwise, there would be no need for step two of the Alice inquiry. Alice, 134 S. Ct. at 2355. For the foregoing reasons, we agree with the Examiner that the claims are directed to an abstract idea. We now tum to the second step of the Alice framework: "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., 566 U.S. 66, 72-73 (2012)). The Examiner determines that "all the claims require no more than adding insignificant extra-solution activity to the judicial exception ... and performing of generic computer functions" (Final Act. 5). Appellant contends that "the claims at issue share substantial similarities to the claims of DDR Holdings" (App. Br. 10) and "in both DDR Holdings and Trading Technologies, embodiments of the invention utilize unconventional techniques to solve problems rooted in prior art systems" (id. 7 Appeal2017-010091 Application 14/070, 110 at 11-12). Appellant further contends that "[l]ike the claims at issue in McRO, ... [t]he claims are limited to 'a combined order of specific rules' that prevents preemption of any abstract concept" (id. at 13). Appellant also contends that similar to Amdocs, "the claims recite a nonconventional and non-generic arrangement of components while avoiding drawbacks present in other systems" (id. at 14). In response, the Examiner determines, and we agree, that "none of these cases were factually similar to the current invention ... [the] current invention is not 'necessarily rooted in computer technology' ... is not using rules to solve a technological problem ... does not recite a non-conventional and non-generic arrangement of components ... [ and] [ A Jppellant is NOT improving any technology ... but at best, it is, merely improving an abstract idea itself' (Ans. 4). Regarding DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014), the subject claim was held patent-eligible because it encompassed "an inventive concept" for resolving a "particular Internet- centric problem." Specifically, the invention in DDR Holdings allowed a host merchant website to maintain the look and feel of the host website when hyperlinking to outside merchants' product pages, i.e., "specify how interactions with the Internet are manipulated to yield a desired result." DDR Holdings, 773 F.3d at 1257-58. In contrast, we find Appellant's method performed by a server computer processor ( claim 21) does not provide a solution "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." DDR, 773 F.3d at 1257. Because we find all claims on appeal merely use a generic computer or 8 Appeal2017-010091 Application 14/070, 110 processor as a tool which is used in the way a computer normally functions, i.e., to analyzing data to make a determination, we conclude that the claims fail to impart any discernible improvement upon the computer or processor; nor do Appellant's claims solve "a challenge particular to the Internet" as considered by the court in DDR, 773 F.3d at 1256-57. Here, Appellant is merely using a generic computer to add an additional conventional feature, i.e., search history data, to another conventional method, i.e., approving/declining a transaction. Appellant is reminded that "relying on a computer to perform routine tasks rnore quickly or more accurately is insufficient to render a claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359 ("use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions" is not an inventive concept)). Thus, we find unavailing Appellant's arguments that the present claims are similar to DDR Holdings, given that no convincing "inventive concept" for resolving a "particular Internet-centric problem" is identified by Appellant. Furthermore, Appellant has not adequately explained how the claims are performed such that they are not routine, conventional functions of a generic computer. The claims at issue do not appear to require any nonconventional computer or database components, or even a "non- conventional and non-generic arrangement of known, conventional pieces," but merely call for performance of the claimed data collection, analysis, and transmitting "on a set of generic computer components." Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349--52 (Fed. Cir. 2016). As noted in Appellant's Specification, "risk analysis parameters 9 Appeal2017-010091 Application 14/070, 110 associated with search technology may be used to improve previously known and used methods of analyzing risk by improving the accuracy of risk scores by providing an additional risk analysis parameter" (Spec. ,r 22). In other words, the present claims merely use an additional piece of data, not improved technology, to determine risk. Thus, considering the features of the claims, individually and as an ordered combination, we find there are no additional elements that transform the nature of the claim into a patent- eligible application. Alice., 134 S. Ct. at 2355. Thus, we agree with the Examiner that the alleged improvement to the technical field appears to address the "abstract idea itself' (Ans. 4). We also are not persuaded by Appellant's argument that the Federal Circuit's decision in Trading Technologies International Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017) (nonprecedential), requires a legal conclusion of patent eligibility in this case (App. Br. 11). In Trading Technologies, the Federal Circuit accepted the lower court's findings, with respect to step two of Alice, that the claims provided "an inventive concept that allows traders to more efficiently and accurately place trades using this electronic trading system." 675 F. App'x at 1004. The Federal Circuit noted "[ t ]he court distinguished this system from the routine or conventional use of computers or the Internet, and concluded that the specific structure and concordant functionality of the graphical user interface are removed from abstract ideas, as compared to conventional computer implementations of known procedures." Id. Accordingly, the distinguishing feature under Alice step two for the claims in Trading Technologies was an advance in efficiency provided by an improved graphical user interface as compared to other computer processes. However, the claims here are unlike those in 10 Appeal2017-010091 Application 14/070, 110 Trading Technologies because Appellant's claims do not recite a graphical user interface. In addition, as discussed supra, Appellant has not provided persuasive evidence or technical reasoning that the method of claim 21 produces an advance in efficiency or technological improvement to the computer data processing system. We also are not persuaded by Appellant's argument that the Federal Circuit's decision in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016), requires a legal conclusion of patent eligibility in this case (App. Br. 13). In McRO, the Federal Circuit concluded that the claim, when considered as a whole, was directed to a "technological improvement over the existing, manual 3-D animation techniques" through the "use of limited rules specifically designed to achieve an improved technological result in conventional industry practice." McRO, 837 F.3d at 1316. Specifically, the Federal Circuit found that the claimed rules allow computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators; and the rules are limiting because they define morph weight sets as a function of phoneme sub-sequences. Id. at 1313 ( citations omitted). In contrast, here, Appellant has not identified any analogous improvement attributable to the claimed invention. Although determining a risk parameter based at least in part on search history data may improve a business process, it does not achieve an improved technological result. We see no parallel between the limiting rules described in McRO and the results- based rules recited in Appellant's claims. In addition, "[ w ]here a patent's claims are deemed only to disclose patent ineligible subject matter under the 11 Appeal2017-010091 Application 14/070, 110 Mayo framework, [] preemption concerns are fully addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Regarding Appellant's pointing out "the lack of a rejection under 35 U.S.C. § 103" (App. Br. 9), we note that a finding of novelty or non- obviousness does not require the conclusion that the claimed subject matter is patent-eligible. Although the second step in the Mayo/Alice framework is termed a search for an "inventive concept," the analysis is not an evaluation of novelty or nonobviousness, but, rather, is 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 Corp., 134 S. Ct. at 2355. "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). A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90. See also Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) ( "The '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."). Because Appellant's independent claims 21 and 31 2 are directed to a patent-ineligible abstract concept under the first step of Alice and do not recite something "significantly more" under the second step of the Alice analysis, we sustain the Examiner's rejection of these claims as well as 2 Alice also confirmed that if a patent's systems claims are no different in substance from its method claims, they will rise and fall together. 134 S. Ct. at 2360. 12 Appeal2017-010091 Application 14/070, 110 respective dependent claims 22-30 and 32--40 under 35 U.S.C. § 101 as being directed to non-statutory subject matter in light of Alice and its' progeny. For the foregoing reasons, Appellant's contentions are unpersuasive as to error in the rejection under 35 U.S.C. § 101. DECISION We affirm the Examiner's§ 101 rejection. 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 13 Copy with citationCopy as parenthetical citation