Ex Parte Ingerman et al

Patent Trials and Appeals BoardMar 1, 2019

12231110 - (D) (P.T.A.B. Mar. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 12/231,110 08/29/2008 David Bruce Ingerman 27623 7590 03/01/2019 OHLANDT, GREELEY, RUGGIERO & PERLE, LLP ONE LANDMARK SQUARE, 10TH FLOOR STAMFORD, CT 06901 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. 384.8537USU 2798 EXAMINER LIU, CHIA-YI ART UNIT PAPER NUMBER 3695 MAIL DATE DELIVERY MODE 03/01/2019 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 DAVID BRUCE INGERMAN, NEEL LEE CHAUHAN, and JEFFREY LEWIS KAUFMAN Appeal2017-010369 Application 12/231, 110 Technology Center 3600 Before JOSEPH L. DIXON, DENISE M. POTHIER, and JOYCE CRAIG, Administrative Patent Judges. DIXON, Administrative Patent Judge. DECISION ON APPEAL Appeal2017-010369 Application 12/231, 110 STATEMENT OF THE CASE Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a rejection of claims 1-3, 5, 8-10, 12, 15-18, and 20-25. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. The claims are directed to an online universal credit application. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method implemented by a computer, comprising: presenting, by said computer, via an exchange of communications with a first device over a communications network, a first interface through which a creditor using said first device communicates with said computer, and in response to communications received from said creditor via said first interface, said computer performs actions of (i) accessing a credit application template to create a customized credit application customized by a creditor, said credit application being configured to dynamically respond to how a credit applicant fills out the credit application with conditional questions, so as to maximize a chance that the credit applicant can obtain an automated approval (ii) selecting a preexisting question for inclusion in said customized credit application, (iii) editing said preexisting question in said customized credit application, (iv) including a question other than said preexisting question in said customized credit application, and (v) storing said customized credit application in a memory; presenting, by said computer, via an exchange of communications with a second device over said communications network, a second interface through which a credit applicant using said second device communicates with said computer, and in response to communications received from said credit 1 Appellants indicated that Dun & Bradstreet, Inc. is the real party in interest. (App. Br. 2). 2 Appeal2017-010369 Application 12/231, 110 applicant via said second interface, said computer performs actions of (i) accessing said customized credit application from said memory, and (ii) providing information required by said customized credit application; transmitting to a credit evaluation service provider, via said communications network, said credit application after said credit application has been completed by said credit applicant; evaluating, by said computer, said information, to yield a credit report regarding said credit applicant; receiving from said credit evaluation service provider, via said communications network, said credit application with at least one of data regarding credit status of said credit applicant, and an automated credit score, viewing, by the creditor, on a display of said first device, data entered by said credit applicant in said credit application alongside information that said credit evaluation service provider has accumulated about credit status of said credit applicant, and accessing said credit report; and automatically applying to said credit application, as received from said credit evaluation service provider, decision rules to determine whether credit is to be extended to said credit applicant, wherein: said evaluating comprises accessing a database to obtain supplemental information regarding said credit applicant, and said credit report includes said supplemental information. App. Br. 25-26 (Claims Appendix). REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Walker Rudy et al. US 2002/0107765 Al US 2003/0125990 Al 3 Aug. 8,2002 July 3, 2003 Appeal2017-010369 Application 12/231, 110 Nelson et al. US 2004/0030649 Al Jepsen et al. US 2004/0088246 Al Cash et al. US 2006/0267999 Al Bird et al. US 2007/0011083 A 1 Jenich et al. US 2008/0109349 Al Colabucci US 2009/0144188 Al Novak et al. US 8,489,497 Bl REJECTIONS Feb. 12,2004 May 6, 2004 Nov. 30, 2006 Jan. 11, 2007 May 8, 2008 June 4, 2009 July 16, 2013 The Examiner made the following rejections: Claims 1-3, 5, 8-10, 12, 15-18, and 20-25 stand rejected under 35 U.S.C. Â§ 101. The claimed invention is directed to non-statutory subject matter because the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea. Claims 1-3, 5, 8-10, 12, 15-18, and 20-25 stand rejected under 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the applicant regards as the invention. Claims 1, 5, 8, 12, 15-18, and 20-25 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Jepsen in view of Colabucci, Cash, Walker, and Bird, and further in view of Novak. Claims 2, 3, 9 and 10 stand rejected under 35 U.S.C. Â§ I03(a) as being unpatentable over Jepsen in view of Colabucci, Cash, Walker, and Bird, and further in view of Novak, as applied to claims 1, 8 and 15 above, and further in view of Nelson. 2 2 Claims 4 and 11 were rejected by the Examiner, but claims 4, 6, 7, and 11 are canceled. 4 Appeal2017-010369 Application 12/231, 110 Claims 1, 5, 8, 12, 15-18, and 20-25 stand further rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Jepsen in view of Colabucci, Cash, Walker, and Bird, and further in view of Novak and further in view of Rudy. Claims 2, 3, 9, and 10 stand rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Jepsen in view of Colabucci, Cash, Walker, and Bird, and further in view of Novak, as applied to claims 1, 8 and 15 above, and further in view of Nelson. ANALYSIS 35 U.S.C. Â§ 101 An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. However, the Supreme Court has long interpreted 35 U.S.C. Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr, 450 U.S. 175, 185 (1981)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citing Mayo, 566 U.S. at 75-77). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 218-19 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting 5 Appeal2017-010369 Application 12/231, 110 against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding ... rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 (1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 187; see also id. at 192 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second 6 Appeal2017-010369 Application 12/231, 110 step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 (internal quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The PTO recently published revised guidance on the application of Â§ 101. USPTO's January 7, 2019 Memorandum, 84 Fed. Reg. 50, 2019 Revised Patent Subject Matter Eligibility Guidance ("2019 Guidance"). Under that guidance, we first look to whether the claim recites: ( 1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application ("Prong Two") (see MPEP Â§ 2106.05(a}-(c), (e}- (h)) (9th ed. 2018). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of 7 Appeal2017-010369 Application 12/231, 110 generality, to the judicial exception. See 2019 Guidance. With respect to independent claims 1, 8, and 15, Appellants present arguments directed to independent claim 1. Because we find the limitations to be similar for the three independent claims, we will address independent claim 1 as the illustrative claim and the same line of reasoning applies to independent claims 8 and 15 and their respective dependent claims. With respect to illustrative independent claim 1, Appellants contend the Examiner erred because the "formation of a dynamically generated customized credit application based upon comments from the applicant is not abstract." (App. Br. 6; see also App. Br. 14). We agree with Appellants that the Examiner's patent eligibility rejection errs in the conclusion regarding the abstract idea and the Examiner's corresponding analysis based thereon did not show that the claimed invention was not directed to patent eligible subject matter. The Examiner maintains the abstract idea is: The claim(s) is/are directed to the abstract idea of fundamental economic practice, in particular accessing credit application template to create customizing credit application, selecting editing and including question in the credit application, providing accessing transmitting the credit application, credit application being based on how a credit applicant fills out questions, viewing data entered alongside accumulated information [] applying decision rules on whether to extend credit to said credit applicant, [and] obtain[ing] supplemental information regarding said applicant. This concept is similar to the types of concepts court have found to be abstract ideas ( for example: comparing new and stored information and using rules to identify options (SmartGene: 17 see Section IV.B.4.); creating a contractual relationship (buySAFE: 14 see Section IV.C.3.); processing information through a clearinghouse (Dealertrack: 16 8 Appeal2017-010369 Application 12/231, 110 see Section IV.B.3.) *it is noted that these examples are intended to be illustrative and not limiting*) (Final Act. 2; Ans. 2). Under the 2019 Guidance, judicial exceptions include certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes). We find the Examiner has not shown the claimed invention is directed to a fundamental economic practice as described in the 2019 Guidance. Moreover, we find the Examiner's analysis based on the Examiner's statement of the abstract idea does not support the Examiner's conclusion of a lack of patent eligible subject matter. As a result, on the record before us, the invention as recited in illustrative independent claim 1 is not directed to a fundamental economic practice under the 2019 Guidance. Additionally, if claim one were directed to a fundamental economic practice or a mental process, the claimed invention, as a whole, integrates the judicial exception into a practical application. If a claim recites a judicial exception, in Prong Two we determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. If the recited judicial exception is integrated into a practical application, the claim is not directed to the judicial exception. Here, claim 1 recites the additional elements of "a computer," "a communications network", "dynamically respond to how a credit applicant 9 Appeal2017-010369 Application 12/231, 110 fills out the credit application" step, an "evaluating" step, a "receiving" step, a "evaluating" step, a "transmitting" step, and an "automatically applying" step. Considering the claim as a whole, interaction of all the steps using the communication network and the computer applies or uses the abstract idea in a meaningful way such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Thus, the abstract idea is integrated into a practical application. As a result, we cannot sustain the Examiner's conclusion of a lack of patent eligible subject matter of independent claims 1, 8 and 15 and their dependent claims based upon the Examiner's same deficient factual findings in the Final Action and the Examiner's Answer. 35 U.S.C. Â§ 112, second paragraph With respect to the indefiniteness rejection, the Examiner includes the rejection in the Examiner's Answer indicates that "The 112 2nd paragraph rejection is maintained." (Ans. 3--4; 23). The Examiner finds that the claim language "so as to maximize a chance that the credit applicant can obtain an automated approval" is not clear and this phrase "so as to" is meant to limit the metes and bounds of the claim. (Ans. 3). Appellants do not substantively respond to the Examiner's rejection and contend: "This rejection is not significant with respect to this Appeal. In the after final amendment filed on November 2, 2016 (not entered on other grounds) an amendment to the independent claims proposes deleting the words "so as" and changing the words "can obtain" to "obtains". Upon resolution of the issues presented herein, the Applicant has no objection to amending the independent claims in this manner to overcome this rejection." 10 Appeal2017-010369 Application 12/231, 110 (App. Br. 16). We agree with the Examiner that the language is not sufficiently definite so as to clearly define the metes and bounds of the claimed invention, and Appellants have not provided an argument thereto. Therefore, we summarily affirm the Examiner's rejection of the claims based upon indefiniteness. 35 U.S.C. Â§ 103 With respect to independent claims 1, 8, and 15, Appellants do not set forth separate arguments for patentability with respect to claims 1, 8, and 15, and Appellants address independent claim 1 as the representative claim for the group. (App. Br. 18). Therefore, we select independent claim 1 as the representative claim and will address Appellants' arguments thereto. See 37 C.F.R. Â§ 4I.37(c)(l)(iv). We do not consider arguments that Appellants could have made but chose not to make in the Brief so we deem any such arguments as waived. 37 C.F.R. Â§ 4I.37(c)(l)(iv). Appellants contend that: Claim 1 recites the technological solution of accessing a credit application template to create a customized credit application, which is customized by a creditor, wherein the credit application is configured to dynamically respond to how a credit applicant fills out the credit application with conditional questions, so as to maximize a chance that the credit applicant can obtain an automated approval. (Reply Br. 7; see also App. Br. 19). Appellants further contend: None of the prior art teaches or suggests this approach. In addition to all of the benefits discussed below, claim 1 has the advantage, discussed in paragraph [0031] of permitting a credit applicant to, in certain cases, enter a smaller amount of detailed information. As stated in paragraph [0031]: "For example, a 11 Appeal2017-010369 Application 12/231, 110 smaller company may be required to fill out a bank and trade section, whereas a larger company may not be required to do so." (App. Br. 19). Appellants argue "claim 1 not only provides the creditor with the ability to see, on a display, both the data entered by the credit applicant and the data accumulated by the credit evaluation service provider." (App. Br. 19). Appellants argue that the Examiner has applied four separate obviousness rejections with six and seven references, and consequently the Examiner's rejection must be based upon hindsight reconstruction. (App. Br. 17, 23-24). Appellants further rely upon there Specification at page 31 regarding permitting a credit applicant to enter a smaller amount of detailed information, but the Examiner points out this level of detail is not found in the claim language. (App. Br. 19; Reply Br. 7; Ans. 24). The Examiner finds that the express language of independent claim 1 does not support Appellants' argument because the proffered distinctions are not recited in the claims. (Ans. 23-24). Appellants' argument fails because it is not commensurate with the scope of the claim. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) ("[A]ppellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims."). See In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ("[The] proffered facts . . . are not commensurate with the claim scope and are therefore unpersuasive."). As a result, Appellants' arguments do not show error in the Examiner's factual findings or conclusion of obviousness of representative independent 1. Appellants also argue that Jepsen cannot be characterized as being customized for a lender. (App. Br. 21 ). But the Examiner identifies how Jepsen teaches this aspect of the disclosed invention and also finds that this 12 Appeal2017-010369 Application 12/231, 110 disputed language ("for the lender") is not even recited in independent claim 1. (Ans. 24 (citing Jepsen ,r,r 16, 43, 45--46, 57). Appellants also argue that claim 1 provides a series of significant advantages not disclosed or even remotely suggested by the prior art. (App. Br. 20; Reply Br. 7). Appellants argue that the prior art references do not automatically apply rules to the credit application (App. Br. 19-20; Reply Br. 8), but the Examiner identifies portions of the Jepsen and Cash references for this limitation. (Ans. 24--25). Therefore, this argument is not persuasive of error, and the Examiner further finds that automating a manual activity broadly is not a patentable distinction. (Ans. 25). We agree with the Examiner. In the Reply Brief, Appellants argue the Examiner relied upon hindsight in the obviousness rejection and the reliance upon paragraph 31 of the Specification. (Reply Br. 7). But Appellants' argument goes beyond the express claim language, emphasizing the aspect of how a credit applicant fills out the application. Finally, Appellants argue that Jepsen does not teach or suggest the emphasized limitations (App. Br. 21-22; Reply Br. 7-8), but Appellants do not address the other five or six references that the Examiner uses in combinations to supplement Jepsen's teachings for many of the disputed claim limitations. As a result, we find Appellants' general argument does not show error in the Examiner's factual findings or conclusion of obviousness of representative independent claim 1. CONCLUSIONS The Examiner did not err in rejecting claims 1-3, 5, 8-10, 12, 15-18, and 20-25 based upon indefiniteness under 35 U.S.C. Â§ 112, second 13 Appeal2017-010369 Application 12/231, 110 paragraph; the Examiner did not err in rejecting claims 1-3, 5, 8-10, 12, 15- 18, and 20-25 based upon obviousness under 35 U.S.C. Â§ 103; but the Examiner erred in rejecting claims 1-3, 5, 8-10, 12, 15-18, and 20-25 based upon a lack of patent eligible subject matter. DECISION For the above reasons, we sustain the Examiner's indefiniteness rejection of claims 1-3, 5, 8-10, 12, 15-18, and 20-25 under 35 U.S.C. Â§ 112, second paragraph, and we sustain the Examiner's obviousness rejection of claims 1-3, 5, 8-10, 12, 15-18, and 20-25 under 35 U.S.C. Â§ 103, but we reverse the Examiner's patent eligibility rejection of claims 1- 3, 5, 8-10, 12, 15-18, and 20-25 under 35 U.S.C. Â§ 101. Because we affirm at least one ground of rejection with respect to each claim on appeal, the Examiner's decision to reject claims 1-3, 5, 8-10, 12, 15-18, and 20-25 is affirmed. See 37 C.F.R. Â§ 4I.50(a)(l). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l)(iv). See 37 C.F.R. Â§ 41.50(Â±). AFFIRMED 14