Ex Parte Ganor

Patent Trial and Appeal Board

Dec 20, 2017

13349648 (P.T.A.B. Dec. 20, 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.
13/349,648 01/13/2012 Shlomo COHEN GANOR P-75634-US 1080
49443 7590 12/22/2017
Pearl Cohen Zedek Latzer Baratz LLP
1500 Broadway
12th Floor
New York, NY 10036
EXAMINER
PRESTON, JOHN O
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
12/22/2017 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SHLOMO COHEN GANOR
Appeal 2016-0026911
Application 13/349,6482
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. FETTING, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s decision to reject claims 1—25. We have jurisdiction under
§ 6(b). We AFFIRM.
1 Our Decision references Appellant’s Specification (“Spec.,” filed Jan. 13,
2012), Appeal Brief (“Appeal Br.,” filed July 27, 2015), and Reply Brief
(“Reply Br.,” filed Jan. 7, 2016), as well as the Examiner’s Final Office
Action (“Final Act.,” mailed Feb. 13, 2015) and Answer (“Ans.,” mailed
Nov. 9, 2015).
2 Appellant identifies NICE Systems Ltd. as the real party in interest.
Appeal Br. 1.
Appeal 2016-002691
Application 13/349,648
SUBJECT MATTER ON APPEAL
The invention “relate[s] to correlating transaction events over a
transaction lifecycle.” Spec. 11. Claims 1,11, and 21—23 are the
independent claims on appeal. Independent claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A method, implemented using one or more processors and
associated memories, for correlating transaction events, the
method comprising:
receiving transaction events identifying actions executed
at a plurality of different types of source systems;
for each transaction event, determining by a processor
whether or not the transaction event is associated with the same
payment transaction for a single monetary transfer as a previous
transaction event using an equivalence relationship, wherein the
equivalence relationship defines events as being associated with
the same payment transaction when each of the events has a
subset of parameters that match exactly and a different subset of
parameters that match approximately and not exactly differing
within a predetermined range;
correlating transaction events determined to be associated
with the same payment transaction by grouping the transaction
events together to form the same payment transaction; and
outputting a list of the correlated transaction events over a
lifecycle of the same payment transaction.
REFERENCES
The Examiner relies on the following prior art in rejecting the claims
on appeal:
Palaghita et al. (“Palaghita”) US 2004/0064401 A1 Apr. 1, 2004
Greene et al. (“Greene”) US 2007/0038568 Al Feb. 15, 2007
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Application 13/349,648
REJECTIONS
The Examiner rejects the claims on appeal as follows:
claims 1—25 under 35 U.S.C. § 101 as non-statutory subject matter;
and
claims 1—25 under 35 U.S.C. § 103(a) as unpatentable over Palaghita
and Greene.3
ANALYSIS
Non-Statutory Subject Matter
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: “[ljaws of nature, natural phenomena, and abstract ideas” are
not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLSBankInt’l, 134 S. Ct.
2347, 2354 (2014). To “distinguish[] patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts,” the Supreme Court, in Alice, reiterated the
two-step framework previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), which, in the first
step, considers whether a claim is directed to a patent-ineligible concept,
e.g., an abstract idea, and, if so, considers, in the second step, whether the
elements the claim, individually and as an ordered combination, recite an
3 Although the heading of the rejection under 35 U.S.C. § 103(a) references
only claims 1—22, the body of rejection discusses of claims 1—25.
Final Act. 5—16. We consider the rejection to include claims 1—25, which is
consistent with Appellant’s understanding of the claims subject to this
rejection (Appeal Br. 5).
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inventive concept—an element or combination of elements sufficient to
ensure the claim amounts to significantly more than the abstract idea and
transform the nature of the claim into a patent-eligible concept. Alice,
134 S. Ct. at 2355 (citing Mayo, 132 S. Ct. at 1294, 1296—98).
In rejecting claims 1—25 under 35 U.S.C. § 101 as non-statutory
subject matter, the Examiner applies this two-step analysis. Final Act. 4.
Under the first step, the Examiner finds the claims are directed to the
abstract idea of “correlating transaction events associated with the same
payment transaction.” Id. at 2, 4. Under the second step, the Examiner finds
the claims do not recite additional elements amounting to significantly more
than the abstract idea because the additional elements are no more than mere
instructions to implement the idea on a computer via generic computer
structures performing generic computer functions that are well-understood,
routine, and conventional activities. Id. at 4.
Appellant argues the claims do not recite an abstract idea pursuant to
the first step of the patent-eligibility analysis. In particular, Appellant
contends that independent claim 1 recites a series of steps, including
determining an equivalence “when each of the events has a subset of
parameters that match exactly and a different subset of parameters that
match approximately and not exactly differing within a predetermined
range,” that is not a building block of the modem economy, a fundamental
tmth, or abstract. Appeal Br. 7—8. Appellant also contends that “correlating
transaction events associated with the same payment transaction” is not a
fundamental economic practice nor a method of organizing human activity.
Id. at 5—6. Appellant’s arguments are not persuasive of error.
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In determining that the claims are directed to an abstract idea, the
Examiner finds the claimed invention includes a series of steps that could be
performed by a human using a pen and paper. Ans. 15. As Appellant
acknowledges, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent eligible under § 101. CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372—73 (Fed. Cir. 2011);
Reply Br. 6. The Federal Circuit also has held that a mental process remains
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. CyberSource, 654 F.3d at
1375. Although the present claims recite that certain steps are performed by
a computer, the steps could be performed via human thought processes. For
example, a human could ascertain mentally whether a transaction event is
associated with the same payment transaction for a single monetary transfer
as a previous transaction event by determining whether each of the events
has a subset of parameters that match exactly and whether a different subset
of parameters that match approximately and not exactly differing within a
predetermined range. Given that the claimed invention is simply the
automation of a series of mental steps, Appellant does not apprise us of error
in the Examiner’s finding that the claims are directed to an abstract idea.
Appellant also argues that the claims are not directed to an abstract
idea because they are similar to the claims in DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) and Messaging Gateway
Solutions v. Amdocs, Inc., 2015 WF 1744343 (D. Del. 2015). Reply Br. 7.
More specifically, Appellant contends that, like the claimed inventions in
DDR Holdings and Messaging Gateway Solutions, the present invention
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addresses an issue unique to computer technology. Id. Namely, the claimed
invention correlates transaction data generated from actions executed at a
plurality of different types of source systems, which requires an application
of a more robust correlation than merely matching data fields exactly. Id.
Appellant’s argument is not persuasive.
Correlating data from a plurality of different types of sources is not a
computer problem; it is an analytics problem. Furthermore, making
correlations, including robust correlations, is not an issue unique to
computers. Even if the claims recite a robust correlation scheme, the
claimed steps are nevertheless a series of mental steps. As such, we fail to
see how the claimed invention is something other than the generic computer
implementation of mental steps for correlating information, which is
insufficient for patent-eligibility. CyberSource, 654 F.3d at 1375.
Appellant further argues that the claims recite an inventive concept
pursuant to the second step of the patent-eligibility analysis because they
recite a non-intuitive equivalence relationship. Appeal Br. 6, 8—9. More
particularly, Appellant asserts the additional elements relating to the
equivalence relationship are not mere instructions to perform the abstract
idea on a computer, but instead provide the very substance of the claims by
explaining how the correlation is accomplished, i.e., via the claimed
equivalence relationship that defines events as being associated with the
same payment transaction when the event has a subset of parameters that
match exactly and a different subset of parameters that match approximately.
Id. at 9. Appellant’s arguments do not apprise us of error.
Here, the claims recite a series of steps for correlating transaction
events, including the step of using an equivalence relationship defining
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events as being associated with the same payment transaction when the
event has a subset of parameters that match exactly and a different subset of
parameters that match approximately. These steps are instructions. The
claims also recite that a processor is used to perform the claimed
equivalence relationship. The claims, therefore, recite instructions to be
performed on a computer.
As such, the relevant question under the second step is whether the
claims recite more than instructions to perform the claimed steps on a
generic computer performing routine and conventional computer functions.
As the Examiner correctly finds, they do not. Final Act. 4. For instance,
Appellant’s Specification explains that “[p]rocessor(s) 118,108,114 and
132 may include, for example, a central processing unit (CPU), a digital
signal processor (DSP), a microprocessor, a controller, a chip, a microchip,
an integrated circuit (IC), or any other suitable multi-purpose or specific
processor or controller.” Spec. 124. Furthermore, considering the claim
elements separately, the function performed by the processor at each step is
conventional. In other words, each step is implemented via routine
computer functions such as receiving and processing data. Considered as an
ordered combination, the claim elements add nothing that is not already
present when the steps are considered separately. The elements do not
purport to improve the functioning of the computer itself or effect an
improvement in any other technology or technical field. Accordingly,
Appellant does not apprise us of error in the Examiner’s finding that the
claims are mere instructions to implement the abstract idea of “correlating
transaction events associated with the same payment transaction” on a
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generic computer, which is not an inventive concept under the second step.
Alice, 134 S. Ct. at 2360 (citing Mayo, 132 S. Ct. at 1297—98).
Furthermore, to the extent Appellant relies on the alleged novelty and
nonobviousness of the claimed equivalence relationship as the basis for the
equivalence relationship being an inventive concept, the determination of an
inventive concept is not an evaluation of novelty or nonobviousness.
Notwithstanding that‘“the § 101 patent-eligibility inquiry and, say, the
§ 102 novelty inquiry might sometimes overlap’ ... a claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (quoting Mayo, 132 S. Ct. at
1304). The question in the second step of the patent-eligibility analysis is
not whether a claimed element is novel, but rather, as set forth above,
whether the implementation of the abstract idea invol ves “more than
perfonnan.ce of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction & Transmission
LLCv. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347-48 (Fed. Cir. 2014)
(quoting Alice, 134 S. Ct. at 2359). Appellant does not explain, and we fail
to see, how the implementation of the recited steps, including the step of
using the claimed equivalence relationship, requires something apart from
generic computing components performing routine and conventional
computer functions.
With specific reference to independent claim 21, Appellant contends
that “determining ... for each incoming transaction event a corresponding
identity key by using said equivalence relation identity value function” is
significantly more than the abstract idea. Appeal Br. 9—10. We find this
argument unpersuasive for the essentially the same reasons we find
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unpersuasive Appellant’s argument that the claimed equivalence relationship
is an inventive step.
In view of the foregoing, Appellant does not apprise us of error in the
Examiner’s determination that the claims are directed to patent-ineligible
subject matter. Accordingly, we sustain the rejection of claims 1—25 under
35U.S.C. § 101.
Obviousness
We are persuaded by Appellant’s argument that Palaghita does not
disclose “for each transaction event, determining by a processor whether or
not the transaction event is associated with the same payment transaction for
a single monetary transfer as a previous transaction event using an
equivalence relationship,” as recited in independent claim 1. Appeal Br. 10-
12.
In rejecting independent claim 1, the Examiner relies on Palaghita for
teaching this limitation. Final Act. 5—6. In particular, the Examiner finds:
Palaghita teaches determining whether different documents are
associated with the same loan or transaction for a single
monetary transfer by associating different documents based on
their relation to a business entity’s line of business. The line of
business in Palaghita suggests a single monetary transfer that
may include one or more transaction events.
Ans. 16 (citation omitted).
Even if we agree with the Examiner that Palaghita’s disclosure of
associating one or documents with an entity’s line of business teaches
determining whether or not a transaction event is associated with the same
payment transaction for a single monetary transfer, Palaghita does not
disclose using an equivalence relationship to make this determination, as
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recited in the disputed limitation. Palaghita discloses organizing documents
into various categories, including line of business. Palaghita 32—33.
Palaghita further discloses that each category may be associated with one or
more variables for detecting fraud {id. 133), and that these variables include
mismatched or inconsistent information {id. 130). Palaghita therefore
teaches using different variables, including mismatched or inconsistent
information, i.e., an equivalence relationship, to detect fraud for a particular
category, but Palaghita does not teach using the equivalence relationship to
organize the documents into categories, i.e., determine whether or not the
transaction event is associated with the same payment transaction for a
single monetary transfer. As such, the Examiner has not established that
Palaghita discloses the disputed limitation of independent claim 1.
In view of the foregoing, we do not sustain the Examiner’s rejection
under 35 U.S.C. § 103(a) of independent claim 1 and claims 2—10 and 24
depending therefrom. Each of independent claims 11 and 21—23 includes a
limitation similar to the limitation of independent claim 1 discussed above,
and the Examiner’s rejection of independent claims 11 and 21—23 suffers
from the same deficiency as the Examiner’s rejection of independent
claim 1. Final Act. 9, 13—15. We, therefore, also do not sustain the
Examiner’s rejection of independent claims 11 and 21—23 and claims 12—20
and 25 depending therefrom.
DECISION
The Examiner’s decision to reject claims 1—25 under 35 U.S.C. § 101
is affirmed.
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The Examiner’s decision to reject claims 1—25 under 35 U.S.C.
§ 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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