Ex Parte Leibon et al

Patent Trial and Appeal Board

Aug 17, 2017

12908683 (P.T.A.B. Aug. 17, 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.
12/908,683 10/20/2010 Gregory David Leibon 11360.0453-00000 4355
96592 7590 08/21/2017
FIS/FINNEGAN, HENDERSON, FARABOW,
GARRETT & DUNNER LLP
901 NEW YORK AVENUE
WASHINGTON, DC 20001-4413
EXAMINER
OUELLETTE, JONATHAN P
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/21/2017 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):
jeffrey.berkowitz@finnegan.com
gabriel.azar@fisglobal.com
regional-desk @ finnegan. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY DAVID LEIBON, KATHERINE BECK HARRIS,
and MARK JEFFREY WAKS
Appeal 2016-005781
Application 12/908,6831
Technology Center 3600
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
SCOTT B. HOWARD, Administrative Patent Judges.
PER CURIAM
Opinion Concurring by Administrative Patent Judge HOWARD.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Final Rejection
of claims 1, 3—9, 11—17, and 19-23, which constitute all of the claims
pending in this application. Claims 2, 10, and 18 have been cancelled. App.
Br. 27, 29, 30. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify FIS Financial Compliance Solutions, LLC as the real
party in interest. App. Br. 3.
THE INVENTION
According to Appellants, the disclosed and claimed invention is
directed “to systems and methods for managing risk by detecting fraudulent
activity and more particularly to apparatus and methods for presenting
analytically-driven fraud detection information to a user via a user
interface.” Spec. 1:6—9.
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system for providing information regarding a suspect
activity identified as potentially fraudulent, the system
comprising:
a memory storing data describing a suspect activity, the
suspect activity including a plurality of attributes, each attribute
of the plurality of attributes including an actual value and being
associated with an expected value; and
an interface coupled to the memory and configured to:
receive an indication of the suspect activity; and
present a representation of differences, the
representation including a plurality of axes, each axis
indicating a set of potential values for a difference between
the actual value of, and the expected value associated with,
each attribute of the plurality of attributes of the suspect
activity.
REFERENCES
The prior art relied upon by the Examiner as evidence in rejecting the
claims on appeal is:
Varghese US 2009/0089869 A1 Apr. 2, 2009
Shao US 7,562,814 B1 July 21,2009
Moudgal US 7,769,682 B2 Aug. 3,2010
REJECTIONS
Claims 1, 3—9, 11—17, and 19-23 stand rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Final Act. 2—3.
Appeal 2016-005781
Application 12/908,683
Claims 1, 3—5, 7—9, 11—13, 15—17, 19, and 21—23 stand rejected under
pre-AIA 35 U.S.C. § 103(a) as being unpatentable over Varghese in view of
Moudgal. Final Act. 3—14.
Claims 6, 14, and 20 stand rejected under pre-AIA 35 U.S.C. § 103(a)
as being unpatentable over Varghese in view of Moudgal and Shao. Final
Act. 15-18.
ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
arguments that the Examiner erred. In reaching this decision, we have
considered all evidence presented and all arguments made by Appellants.
We are not persuaded by Appellants’ arguments regarding the pending
claims, and we incorporate herein and adopt as our own: (1) the findings
and reasons set forth by the Examiner in the action from which this appeal is
taken (Final Act. 2—25), and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellants’ arguments (Ans. 2—8). We
incorporate such findings, reasons, and rebuttals herein by reference unless
otherwise noted. However, we highlight and address specific findings and
arguments for emphasis as follows.
Section 101 Rejection
Patent-eligible subject matter is defined in § 101 of the Patent Act,
which recites:
Whoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and
useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
2
Appeal 2016-005781
Application 12/908,683
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in § 101: laws of nature, natural
phenomena, and abstract ideas. Alice Corp. Pty. Ltd. v. CLS Bank Int 7, 134
S. Ct. 2347, 2354 (2014); Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70-71, 132 S. Ct. 1289, 1293 (2012). Although an
abstract idea, itself, is patent-ineligible, an application of the abstract idea
may be patent-eligible. Alice, 134 S. Ct. at 2355. Thus, we must 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.” Id. (citing Mayo, 132
S. Ct. at 1298, 1297). The claim must contain elements or a combination of
elements that are “sufficient to ensure that the patent in practice amounts to
significantly more than a patent upon the [abstract idea] itself.” Id. (citing
Mayo, 132 S. Ct. at 1294).
The Supreme Court set forth a two-part “framework for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Id. at
2355.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. [Mayo,] 132 S. Ct., at
1296—1297. If so, we then ask, “[w]hat else is there in the claims
before us?” Id., at------- , 132 S. Ct., at 1297. To answer that
question, we 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. Id., at------- , 132 S. Ct.,
at 1298, 1297. We have 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
3
Appeal 2016-005781
Application 12/908,683
upon the [ineligible concept] itself.” Id., at------- , 132 S. Ct., at
1294.
Id.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim's
‘character as a whole’ is directed to excluded subject matter.” Affinity Labs
of Tex. v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016)); see also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed.
Cir. 2016). There is no definitive rule to determine what constitutes an
“abstract idea.” Rather, the Federal Circuit has explained that “both [it] 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 1327, 1334 (Fed. Cir. 2016); see also Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016)
(explaining that, in determining whether claims are patent eligible under
§101, “the decisional mechanism courts now apply is to examine earlier
cases in which a similar or parallel descriptive nature can be seen—what
prior cases were about, and which way they were decided”).
The Examiner finds, and we agree, that the claims are “directed to the
abstract idea of managing risk by detecting fraudulent activity, as described
... on pg. 1 of the Applicant's specification, which is a fundamental
economic practice.” Final Act. 2; see also id. at 20; Ans. 3. Consistent with
that determination, the preamble of claim 1 recites “[a] system for providing
information regarding a suspect activity identified as potentially fraudulent.”
App. Br. 27 (Claim App’x). The other independent claims contain a similar
preamble. See id. at 28, 30. As our reviewing courts have held, the concept
4
Appeal 2016-005781
Application 12/908,683
of managing risk is an abstract idea. See Bilski v. Kappos, 561 U.S. 593,
611—12 (2010) (managing risk by hedging is an abstract idea); Alice, 134 S.
Ct. at 2356 (claims directed to managing risk are an abstract idea); see also
Cybersource Corp. v. Retail Decisions, Inc., 654 F3d 1366 (Fed. Cir. 2011)
(claims directed to determining the validity of a credit card transaction over
the internet is an abstract idea);
Appellants argue the claims are not directed to an abstract idea
because, like the claims in DDR,2 3the claims are directed to using computer
technology to overcome a problem a arising specifically from computer
networks. App. Br. 22—23. According to Appellants:
Just like the claims in DDR Holdings, independent claim 1 thus
is eligible as it solves at least one technical problem (users having
to review large amounts of transactional information on a
computer) using at least one technical solution (an interface
configured to present a representation of differences including a
plurality of axes indicating a set of potential values for a
difference).
Id. at 23.
We are not persuaded by Appellant’s arguments. First, as our
reviewing court held in DDR, “not all claims purporting to address Internet-
centric challenges are eligible for patent.” 773 F.3d at 1258. As the Federal
Circuit recognized:
For example, in our recently-decided UltramerciaP] opinion,
the patentee argued that its claims were “directed to a specific
method of advertising and content distribution that was
previously unknown and never employed on the Internet before.”
772 F.3d at 1264. But this alone could not render its claims
patent-eligible. In particular, we found the claims to merely
2 DDR Holdings, LLC v. Hotels. Com LLP, 773 F.3d 1245 (Fed. Cir. 2014).
3 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed.Cir.2014).
5
Appeal 2016-005781
Application 12/908,683
recite the abstract idea of “offering media content in exchange
for viewing an advertisement,” along with “routine additional
steps such as updating an activity log, requiring a request from
the consumer to view the ad, restrictions on public access, and
use of the Internet.” Id. at 1265.
Id. Because Appellants have merely identified routine additional steps, they
are insufficient to render the claims patent-eligible.
Moreover, we disagree with that the claims in this case are directed to
a computer-centric problem similar to that in DDR. In DDR, the Court
found that the claims “do not merely recite the performance of some
business practice known from the pre-Internet world along with the
requirement to perform it on the Internet. Instead, the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” Id. at 1257. Unlike
the claims in DDR, the claims in this case are merely adopting a pre-existing
business practice, in this case detecting fraudulent activity, for use with
computer technology. See Ans. 3—6.
Instead of DDR, this case is similar to Electric Power, in which our
reviewing court found the claims patent-ineligible because “[t]he claims at
issue do not require any nonconventional computer, network, or display
components, or even a ‘non-conventional and non-generic arrangement of
known, conventional pieces, ’ but merely call for performance of the claimed
information collection, analysis, and display functions ‘on a set of generic
computer components’ and display devices.” Elec. Power 830 F.3d at 1355
(citing Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341, 1349—52 (Fed. Cir. 2016)). Similarly, the claims in this case
6
Appeal 2016-005781
Application 12/908,683
merely recite the use of generic computer components and conventional
computer networks. Such an arrangement is not patent eligible. Id.
The Examiner also determines that the claim limitations, viewed as a
whole, “do not provide meaningful limitation(s) to transform the abstract
idea into a patent eligible application of the abstract idea such that the
claim(s) amounts to significantly more than the abstract idea itself.” Final
Act. 2—3. Specifically, the Examiner determines the limitations of the
claims “are generic computer functions (i.e. storing data, obtaining data, and
displaying data) that are well-understood, routine, and conventional
activities previously known to the industry.” Id. at 21. Additionally, the
Examiner determines that the specific hardware limitations “do not add
meaningful limitations to the idea of managing risk by detecting fraudulent
activity beyond generally linking the system to a particular technological
environment, that is, implementation via computers.” Id. We agree with
and adopt the Examiner’s determinations.
Appellants argue that because the claims are not obvious, they
“exceed ‘well-understood, routine, conventional activities’ and thus involve
‘significantly more.’” App. Br. 23 (quoting Alice, 134 S. Ct. at 2359).
Appellants further argue that like the claims in SiRF,4 because the claimed
combination improves operation of the system, the claims amount to
significantly more than the judicial exception. Id. at 24. More specifically,
Appellants argue “[j]ust like in SiRF Tech, these claim elements provide
meaningful limitations upon computerized systems and method for
fraudulent activity detection, thus demonstrating that the claims are not
4 SiRF Tech. Inc. v. ITC, 601 F.3d 1319 (Fed. Cir. 2010).
7
Appeal 2016-005781
Application 12/908,683
merely directed to ‘detecting fraudulent activity.’ The claims thus improve
existing technology.” Id.
We are not persuaded by Appellants’ arguments. First, as discussed
infra, we are not persuaded that the Examiner erred in concluding the claims
would have been obvious to a person of ordinary skill in the art. And even
had we determined the Examiner erred, that alone would not be sufficient.
Although the second step in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but rather, 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,
134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1294). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 1566 U.S. at 89—91.
Nor are we persuaded by Appellants’ arguments directed to the
components providing increased efficiency.
While the claimed system and method certainly purport to
accelerate the process of analyzing audit log data, the speed
increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself. See Bancorp
Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.”).
Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016).
SiRF, relied on by Appellants, is consistent with FairWarning.
Although the court in SiRF held that the claim was directed to patentable
8
Appeal 2016-005781
Application 12/908,683
subject matter because the GPS was essential to the operation to the claimed
invention, the court also recognized that increased efficiency from using a
computer did not result in patent-eligible subject matter:
In order for the addition of a machine to impose a meaningful
limit on the scope of the claim, it must play a significant part in
permitting the claimed method to be performed, rather than
function solely as an obvious mechanism for permitting a
solution to be achieved more quickly, i.e., through the utilization
of a computer for performing calculations.
SiRF, 601 F.3d at 1333.
Accordingly, we sustain the Examiner’s rejection of claims 1, 3—9,
11—17, and 19-23 because they claim patent-ineligible subject matter.
Section 103 Rejections — Claims 1, 3, 4, 7—9, 11, 12, 15—17, 19,
and 23s
Appellants argue the Examiner erred in finding a person of ordinary
skill in the art would have modified Moudgal such that the interface would
“present a representation of differences, the representation including a
plurality of axes, each axis indicating a set ofpotential values for a
difference between the actual value of, and the expected value associated
with, each attribute of the plurality of attributes of the suspect activity,” as
recited in claim l.5 6 See App. Br. 9—16;7 Reply Br. 2—3. Specifically,
5 Appellants argue the claims as a group. Because the claims are not argued
separately, we decide the appeal of those claims based on representative
claim 1. See 37 C.F.R. § 41.37(c)(iv).
6 For ease of reference, we will refer to the preceding claim language as the
“disputed plurality of axes limitation.”
7 We note Appellants purported quotation of the language recited in claim 1
is inaccurate. Compare App. Br. 9, with id. at 27. We treat Appellants’
9
Appeal 2016-005781
Application 12/908,683
Appellants argue Moudgal teaches using a directed graph but the claims
recite using a graph with axes, such as a function graph. See App. Br. 9—16,
Reply Br. 2—3. Appellants aver although both a directed graph and a
function graph contain the word graph, they are different concepts. App. Br.
9—10. Appellants further argue the Examiner did not provide any reason for
the proposed modification, ignored claim language, and there is no logical
way to combine a directed graph with a plurality of axes. See App. Br. 9—
16, Reply Br. 2—3.
The Examiner finds Moudgal teaches that “by sampling a transaction
set over discrete intervals of time, a ‘weighted directed graph’ representation
can be established.” Ans. 4 (citing Moudgal 4:35—36). The Examiner
further finds “that the transactions represented in the directed graph are
representative of the potential dissimilarities among the transaction
patterns.” Ans. 5. Based on the above, the Examiner finds Moudgal teaches
“a representation indicating potential values for a difference between the
actual value of and the expected value of the transaction.” Id. (emphasis
omitted).
The Examiner further finds that it would have been obvious for a
person of ordinary skill in the art to modify the representation of Moudgal to
include the disputed plurality of axes limitation as recited in claim 1. See
Ans. 4—5. Specifically, the Examiner finds “[a]ny differences related merely
to the meaning and information conveyed through labels (i.e., the specific
type of representation) which does not explicitly alter or impact the steps of
argument as if they quoted and argued the claim language of the currently
amended claim.
10
Appeal 2016-005781
Application 12/908,683
the method and/or the elements of the system does not patentably distinguish
the claimed invention from the prior art.” Id. at 6.
During examination of a patent application, a claim is given its
broadest reasonable construction “in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Am. Acad, of Sci. Tech
Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (internal citations and quotations
omitted). There is a presumption that a claim term carries its ordinary and
customary meaning. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed.
Cir. 2007). An applicant may rebut this presumption, however, by acting as
his own lexicographer, providing a definition of the term in the specification
with “reasonable clarity, deliberateness, and precision.” See In re Paulsen,
30 F.3d 1475, 1480 (Fed. Cir. 1994). In the absence of such a definition,
limitations are not to be read from the specification into the claims. In re
Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
On the other side of the claim construction coin, as a general rule,
“there is a strong presumption against a claim construction that excludes a
disclosed embodiment.” See In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1324 (Fed. Cir. 2011). “This does not mean, however,
that each and every claim ought to be interpreted to cover each and every
embodiment.” PPG Broadband, Inc. v. Corning Optical Commc ’ns. RF,
LLC, 815 F.3d 747, 755 (Fed. Cir.2016) (quoting Baran v. Med. Device
Techs., Inc., 616 F.3d 1309, 1316 (Fed. Cir. 2010) (“It is not necessary that
each claim read on every embodiment.”)).
Based on the ordinary meaning of the words of the claims and the
Specification, the disputed plurality of axes limitation is broad enough to
encompass the type of data displayed in interface components 500, 600, 700,
11
Appeal 2016-005781
Application 12/908,683
800, and 900 of Figures 5—9, respectively, of the Specification. Appellants
identify those portions of the interface as corresponding to the disputed
plurality of axes limitation. See App. Br. 3—A (Summary of the Invention).
Consistent with Appellants’ representations, the Specification describes
those portions of the interface as having two axes representing information,
such as, in the case of Figure 5, serial number and date presented. See Spec.
38.
Applying the broadest reasonable construction of the claim term, we
agree with the Examiner. Moudgal Figures 10A—C shows “a set of financial
transactions recorded in a database of a financial institution for a calendar
year.” Moudgal 3:42-45. Although Moudgal Figures 11 A—11L show the
data represented in directed graph, we agree with the Examiner that the
choice of how to represent the data is a mere design choice and it would
have been obvious to a person of ordinary skill in the art to use a different
visual representation, such as with a plurality of axes.
The Supreme Court has determined the conclusion of obviousness can
be based on the interrelated teachings of multiple patents, the effects of
demands known to the design community or present in the marketplace, and
the background knowledge possessed by a person having ordinary skill in
the art. KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007); id. at 416
(“The combination of familiar elements according to known methods is
likely to be obvious when it does no more than yield predictable results.”).
Furthermore, “the analysis need not seek out precise teachings directed to
the specific subject matter of the challenged claim, for a court can take
account of the inferences and creative steps that a person of ordinary skill in
the art would employ.” Id. at 418. In other words, “if a technique has been
12
Appeal 2016-005781
Application 12/908,683
used to improve one device, and a person of ordinary skill in the art would
recognize that it would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his or her skill.”
Id. at 417.
The selection of how to display data is a matter of routine design
choice that acts in a predicable way. Appellants have not argued that it
would have been “uniquely challenging or difficult for one of ordinary skill
in the art” to make the modifications suggested by the Examiner. See
Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir.
2007) (citing KSR, 550 U.S. at 418). Therefore, we are not persuaded by
Appellants’ arguments that the Examiner erred in modifying the prior art
references. Because the combination is a mere obvious variation consistent
with the principles known in the art that would work as expected and there is
no evidence that the combination would provide unexpected results, that
combination would have been obvious to a person of ordinary skill in the art.
See In re Rice, 341 F.2d 309, 314 (CCPA 1965) (Absent “factual evidence
of any critical relationship in position or size, or of any difference in effect
or result. . . [s]uch [routine] changes in design of the various features are no
more than obvious variations consistent with the principles known in that
art.”); In re Larson, 340 F.2d 965, 968 (CCPA 1965) (“[T]he use of a one
piece construction instead of the structure .. . would be merely a matter of
obvious engineering choice.”).
Nor are we persuaded by Appellants’ arguments that the addition of
axes onto a directed graph serves no purpose. See Reply Br. 2 (purporting to
show the addition of axes on a directed graph). “The test for obviousness is
not whether the features of a secondary reference may be bodily
13
Appeal 2016-005781
Application 12/908,683
incorporated into the structure of the primary reference.” In re Keller, 642
F.2d 413, 425 (CCPA 1981). Instead, the relevant issue is “what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” Id. “Combining the teachings of references does
not involve an ability to combine their specific structures.” In re Nievelt,
482 F.2d 965, 968 (CCPA 1973); see also In re Mouttet, 686 F.3d 1322,
1332 (Fed. Cir. 2012) (“It is well-established that a determination of
obviousness based on teachings from multiple references does not require an
actual, physical substitution of elements.”).
Accordingly, we sustain the Examiner’s rejection of claim 1, along
with the rejections of claims 9 and 17, which are argued on the same
grounds, and dependent claims 3, 4, 7, 8, 11, 12, 15, 16, 19, and 23 which
are not separately argued.
Section 103 Rejections — Claims 5 and 13
Claims 5 and 13 are dependent claims that further recite that “the at
least one geometric shape includes a three dimensional shape.” App. Br. 27,
29 (Claims App’x). Appellants argue the Examiner erred in finding
Moudgal teaches that additional limitation. App. Br. 16—18. Specifically,
Appellants argue “Moudgal is similarly devoid of any teaching of at least
one geometric shape including a three dimensional shape. The Examiner
has failed to provide any articulated reasoning with a rational underpinning
to support the legal conclusion of obviousness.” App. Br. 18.
We are not persuaded by Appellants’ arguments that the Examiner
erred. The Examiner finds that a person having ordinary skill in the art
executing a routine design choice for the presentation of data would have
14
Appeal 2016-005781
Application 12/908,683
been motivated to modify Moudgal so that the “geometric shape includes a
three dimensional shape since the Applicant has not disclosed that
modifying the representation in this way solves any stated problem or is for
any particular purpose and it appears that the invention would perform
equally well with any desired representation of such differences.” Final Act.
7. Contrary to Appellants’ argument, the Examiner’s finding provides a
“rational underpinning to support the legal conclusion of obviousness.” In
re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR,
550 U.S. at 418.
Accordingly, we sustain the Examiner’s rejection of claims 5 and 13.
Section 103 Rejections — Claims 21 and 22
Claims 21 and 22 are dependent claims in which additional limitations
are directed to the displayed axes. App. Br. 31 (Claims App’x). Appellants
argue the Examiner erred in finding Moudgal teaches that additional
limitation. App. Br. 18—20. Specifically, Appellants rely on the same
arguments discussed above for claim 1. App. Br. 19.
The Examiner finds because “the Applicant has not disclosed that
modifying the representation in this way solves any stated problem or is for
any particular purpose and it appears that the invention would perform
equally well with any desired representation of such differences” that the
modifications in claims 21 and 22 “would have been an obvious matter of
design choice.” Final Act. 10, 12. For the same reasons discussed above for
claim 1, we are not persuaded the Examiner erred.
Accordingly, we sustain the Examiner’s rejection of claims 21 and 22.
15
Appeal 2016-005781
Application 12/908,683
Section 103 Rejections — Claims 6, 14, and 20
Claims 6, 14, and 20 are dependent claims that additional limitations
that, inter alia, further limit the shape of the at least one geometric shape.
App. Br. 28, 29, 31 (Claims App’x). Appellants argue the Examiner erred in
finding Shao teaches that additional limitation. App. Br. 20—21.
The Examiner finds “Shao teaches a fraud detection system that is
configured to detect fraudulent account applications by establishing a
graphical representation of the information contained in the account
application via links to historical account application records.” Final Act.
16. More specifically, the Examiner finds that Shao teaches analyzing a
graph “against the statistical model to determine if an anomaly is present and
to weight the degree of the anomaly for fraud detection.” Id. (citing Shao
2:23—42). The Examiner further finds “[t]he statistical model comprises a
neighborhood of links between identity-related fields within the historical
account applications, and wherein the method further comprises detecting
deviations from the normal identity patterns established in the statistical
model.” Id. (citing Shao cl. 17). Based on the teachings of Shao, the
Examiner finds it would have been obvious to a person of ordinary skill in
the art to use to statistical analysis of “Shao in order to correlate anomaly
detection to the actual likelihood of fraud through statistical analysis which
would thereby lead to a substantially improved fraud detection system.” Id.
The Examiner further finds that use of concentric circles as recited in the
claims would have been a matter of routine design choice. Id. at 16—18.
We are not persuaded by Appellants’ arguments which do not address
the teaching of the references as relied on by the Examiner. Although
Appellants argue Shao does not teach concentric circles, the Examiner did
16
Appeal 2016-005781
Application 12/908,683
not rely on Shao for that reason. Instead, the Examiner relied on Shao for
the statistical analysis—such as the use of the standard deviation.
Appellants have not argued that finding was erroneous.
As for the use of concentric circles, for the reasons discussed above
regarding claim 1, we agree with the Examiner that the selection of the
specific way of displaying the data is an obvious design choice.
Accordingly, we sustain the Examiner’s rejection of claims 6, 14, and
20.
DECISION
For the above reasons, we affirm the Examiner’s decisions rejecting
claims 1, 3—9, 11—17, and 19-23.
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). See 37
C.F.R. §41.50(f).
AFFIRMED
17
Appeal 2016-005781
Application 12/908,683
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GREGORY DAVID LEIBON, KATHERINE BECK HARRIS,
and MARK JEFFREY WAKS
Appeal 2016-005781
Application 12/908,683
Technology Center 3600
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
SCOTT B. HOWARD, Administrative Patent Judges.
HOWARD, Administrative Patent Judge, concurring.
In addition to the reasons given in the Decision of the Panel, I would
also affirm the rejection of the claims as unpatentable over the prior art
because the disputed claim limitations in each of the appealed claims are
directed to non-functional descriptive material/printed matter, and should not
be given patentable weight.
Our reviewing court guides that the patentability of an apparatus claim
“depends on the claimed structure, not on the use or purpose of that
structure.” Catalina Marketing Int 7., Inc. v. Coolsavings.com, Inc., 289 F.3d
801, 809 (Fed. Cir. 2002). “It is well settled that the recitation of a new
intended use for an old product does not make a claim to that old product
18
Appeal 2016-005781
Application 12/908,683
patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations
omitted).
Because Appellant has not contested any of the specific structural
differences between the apparatus of the pending claims and the
corresponding structure(s) found in the cited references the only purported
differences between the claims and the corresponding apparatus structure
found in the prior art is how the data is presented. That is, Appellants do not
argue that the use of an interface to present data is new; instead Appellants
argue that the specific representation of data was new and an improvement
over the prior art. See App. Br. 15—16.
Our reviewing court has held that nonfunctional descriptive
material—that is, printed matter—cannot lend patentability to an invention
that would have otherwise been anticipated by the prior art. In re Ngai, 367
F.3d 1336, 1339 (Fed. Cir. 2004); In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983) (noting that when descriptive material is not functionally related
to the substrate, the descriptive material will not distinguish the invention
from the prior art in terms of patentability); King Pharm., Inc. v. Eon Labs,
Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010) (“[T]he relevant question is
whether ‘there exists any new and unobvious functional relationship
between the printed matter and the substrate.’”) (citations omitted); see also
Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential) (“[T]he
nature of the information being manipulated does not lend patentability to an
otherwise unpatentable computer-implemented product or process.”); Ex
parte Mathias, 84 USPQ2d 1276, 1279 (BPAI 2005) (informative), affd,
191 Fed. App’x 959 (Fed. Cir. 2006) (“[Nonfunctional descriptive material
cannot lend patentability to an invention that would have otherwise been
19
Appeal 2016-005781
Application 12/908,683
anticipated by the prior art.”); Ex parte Curry, 84 USPQ2d 1272, 1274
(BPAI 2005) (informative), aff’d, (Federal Circuit 2006-1003) (June 12,
2006) (“Nonfunctional descriptive material cannot render nonobvious an
invention that would have otherwise been obvious.”). Although we will not
disregard any claim limitations and will assess the claimed invention as a
whole, we will follow the Federal Circuit’s guidance from the Gulack
decision and will “not give patentable weight to printed matter absent a new
and unobvious functional relationship between the printed matter and the
substrate.” In re Lowry, 32 F.3d 1579, 1582 (Fed. Cir. 1994) (discussing
Gulack).
“The first step of the printed matter analysis is the determination that
the limitation in question is in fact directed toward printed matter.” In re
Distefano, 808 F.3d 845, 848 (Fed. Cir. 2015). Material is printed matter if
it is “claimed for what it communicates.” Id., at 850. Because the disputed
limitation of claim 1 is directed to a specific representation of data, we find
the limitation to be printed material.
If a claim in a patent application claims printed material, “one must
then determine if the matter is functionally or structurally related to the
associated physical substrate, and only if the answer is ‘no’ is the printed
matter owed no patentable weight.” Distefano, 808 F.3d at 851. In this
case, the disputed limitation is directed to how data is represented on the
user interface. However, the claims do not require that anything is ever done
with the data. That is, the claims do not requires the data to be used in any
way.
This is analogous to various cases in which the material was found to
be printed matter and given no patentable weight. For example, in Curry we
20
Appeal 2016-005781
Application 12/908,683
found the data to be nonfunctional descriptive material when it “does not
functionally change either the data storage system or communication system
used in the method of claim 8184 USPQ2d at 1274 (BPAI 2005).
As we recognized in Curry, “if the prior art suggests storing a song on
a disk, merely choosing a particular song to store on the disk would be
presumed to be well within the level of ordinary skill in the art at the time
the invention was made.” Id. at 1275. Choosing a specific way to display
data is no different.
Concluding otherwise would result not only in Appellant’s identified
list of information distinguishing over the prior art, but equally would
distinguish every other unique set of information for display on an interface.
To give effect to Appellants’ argument, we would need to ignore our review
court’s concerns with repeated patenting. See King Pharm. Inc. v. Eon
Labs., Inc., 616 F3d 1267, 1279 (Fed. Cir. 2010) (“The rationale behind this
line of cases is preventing the indefinite patenting of known products by the
simple inclusion of novel, yet functionally unrelated limitations.”); cf. Ngai,
367 F.3d at 1339 (“If we were to adopt Ngai’s position, anyone could
continue patenting a product indefinitely provided that they add a new
instruction sheet to the product.”).
21