Ex Parte Lubking et al

Patent Trial and Appeal Board

Mar 9, 2018

13352813 (P.T.A.B. Mar. 9, 2018)

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.
13/352,813 01/18/2012 Colleen C. Lubking 05793.3038-01000 6956
121629 7590
Finnegan/Capital One
901 New York Ave., NW
Washington, DC 20001
EXAMINER
MILEF, ELDA G
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
CapOne_USPTO@finnegan.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 COLLEEN C. LUBKING, JOHN N. HENNEBERGER,
FREDERICK JOEL MASON JR., GEORGE W. PASLASKI JR.,
SHARADA MUTHUSUBRAMANIAN, and BRIAN DONOHUE
Appeal 2016-005771
Application 13/352,8131
Technology Center 3600
Before ST. JOHN COURTENAY III, ERIC S. FRAHM, and
SCOTT E. BAIN, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 31—33, 35—40, and 42^48, which constitute all
claims pending in the application. Claims 1—30, 34, and 41 have been
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Capital One Financial
Corporation. App. Br. 3.
Appeal 2016-005771
Application 13/352,813
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to selecting financial products for a
customer based on the customer’s “life status,” such as income level,
employment level, or family characteristics. Spec. Tflf 2, 5, 7. Claims 31,38,
and 45 are independent. Claim 31 is illustrative of the invention and the
subject matter of the appeal, and reads as follows (with disputed limitations
italicized):
31. A computer-implemented method for providing a
financial product to a customer, the method comprising:
creating one or more life statuses delineated by a set of
predetermined criteria,
wherein the set of predetermined criteria describes the one
or more created life statuses as corresponding to customer
information comprising one or more of home ownership status,
employment status, or income;
receiving the customer information associated with a
customer from a purchase database, an application database, a
call center database, an Internet database, or a public records
database;
analyzing, by a processor, the received customer
information using a filter that categorizes the customer into at
least one life status from the one or more created life statuses that
corresponds to the received information associated with the
customer;
analyzing, by the processor, a predetermined matrix that
relates the one or more created life statuses to a set of
corresponding financial products; and
selecting, by the processor, a first financial product for the
customer from the set of corresponding financial products in the
predetermined matrix based on the at least one analyzed life
status of the customer.
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App. Br. 27 (Claims App.) (emphasis added).
The Rejections on Appeal
Claims 31—33, 35—40, and 42-48 are rejected under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Final Act. 2.
Claims 31—33, 35—40, and 42-48 are rejected under pre-AIA 35
U.S.C. § 112, first paragraph as failing to comply with the written
description requirement. Final Act. 3.
Claims 31—33, 35—40, and 42-48 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Russell et al. (US
2002/0194120 Al; Dec. 19, 2002) (“Russell”) and Tarbox (US 6,154,732;
Nov. 28, 2000). Final Act. 4—8.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments presented in this appeal. Arguments which Appellants could
have made but did not make in the Briefs are deemed to be waived. See
37 C.F.R. § 41.37(c)(l)(iv). As to the rejection under pre-AIA 35 U.S.C.
§112, first paragraph, we are persuaded the Examiner erred. As to the
remaining rejections, however, we are not persuaded the Examiner erred on
the record before us, and we adopt as our own the findings and reasons set
forth in the rejections from which the appeal is taken and in the Examiner’s
Answer. We provide the following discussion for highlighting and
emphasis.
Rejection Under 35 U.S.C. §101
The Examiner concludes the claims are directed to ineligible subject
matter because they encompass “offering financial products to a customer,”
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which is a “fundamental economic practice and thus an abstract idea.” Final
Act. 2. The Examiner further finds the additional limitations such as
“generating an offer,” “receiving,” “analyzing,” and “selecting” do not
“make it less abstract” or transform the abstract idea into patent-eligible
subject matter, because these are “generic computer functions.” Ans. 3.
Appellants argue the Examiner has not performed sufficient analysis in
finding the claims abstract, and that even if the claims encompass an abstract
idea, they also include “novel elements not found in the prior art” that
transform the claims into something “significantly more” than an abstract
idea. App. Br. 12—15; Reply Br. 2—5. We, however, are not persuaded by
Appellants’ arguments.
Section 101 of the Patent Act provides “[wjhoever 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.” 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: “[ljaws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS
Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107 (2013)). The Court has
set forth a two-part inquiry to determine whether this exception applies.
First, we must “determine whether the claims at issue are directed to one of
those patent-ineligible concepts.” Alice, 134 S. Ct. at 2355. Second, if the
claim is directed to one of those patent-ineligible concepts, 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
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claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1297
(2012)). Put differently, we must search the claims for an “inventive
concept,” that is, “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).
Regarding step one of the Alice analysis, we discern no error in the
Examiner’s conclusion that the claims are directed to a “fundamental
economic practice” and constitute an abstract idea. Final Act. 2. As the
Examiner finds, claim 31 expressly is directed to a method “for providing a
financial product to a customer.”2 Final Act. 2; App. Br. 27. Independent
claims 3 8 and 45 include a similar limitation. Selecting the financial product
is, according to claim 38, done by comparing the customer’s life status (e.g.,
marital status, home ownership, etc.) to a set of potential financial products.
Id.', Ans. 2—3. The fact that these economic or business activities are
performed on a computer does not make the claims less abstract. See, e.g.,
OIP Techs. Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—63 (Fed. Cir.
2015) (observing that fundamental economic and conventional business
practices are often found to be abstract ideas, even if performed on a
computer).
Appellants do not persuasively rebut the foregoing findings regarding
the first step of Alice but, instead, focus their argument on the second step.
In the second step of our analysis under Alice,
2 Appellants argue all claims on appeal as a group, and we choose claim 31
as representative of the group. See 37 C.F.R. § 41.37(c)(l)(iv).
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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. 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].”
Alice Corp., 134 S. Ct. at 2357 (internal citations omitted). Appellants
contend the claimed steps of “creating one or more life statuses .. .
“analyzing customer information using a filter . . . and “analyzing a
predetermined matrix that relates [life statuses to financial products]” each
constitutes something “significantly more than merely ‘offering financial
products to a customer.’” App. Br. 14—15. We are not persuaded.
As the Examiner finds, the foregoing “creating” and “analyzing” steps
are generic computer functions (e.g., classifying information, analyzing
information) that are “well-understood, routine, and conventional activities.”
Ans. 3^4. Similarly, the recitations of a generic “processor” and “database”
do not add meaningful limitations. Id. Appellants argue that the Interim
Guidelines include examples of some computer-related claims found not to
be abstract, such as “comparing the blue noise mask to a gray scale image to
transform [it] into a halftoned image,” App. Br. 16, but Appellants do not
explain how such examples are purportedly similar to Appellants’ claims.
Appellants do not assert that the claimed invention attempts to “solve a
challenge particular to the Internet” or a computer-centric problem, or that it
improves the technical functioning of the computer itself. See Smart Sys.
Innovations, LLCv. Chi. Transit Auth., 873 F.3d 1364, 1375 (Fed. Cir.
2017). Although the steps recited in Appellants’ claims may be performed
faster or more efficiently with a computer, the speed increase coming from a
“general purpose computer, rather than the patented method itself,” does
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“not materially alter the patent eligibility of the claimed invention.”
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016).
Appellants further argue that the claims “do not pose a preemptive
risk” in the field. App. Br. 12—13 (citing Alice, 134 S. Ct. at 2354). This
argument also does not persuade us of error. Although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” FairWarning IP, 839 F.3d at 1098
(quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015)); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract.”). Where, as here, “a patent’s claims are deemed only to disclose
patent ineligible subject matter under the [Alice/Mayo] framework . . .
preemption concerns are fully addressed and made moot.” Ariosa, 788 F.3d
at 1379.
For the foregoing reasons, we sustain the rejection of claims 31—33,
35—40, and 42 48 as directed to ineligible subject matter.
Rejection Under Pre-AIA 35 U.S.C. § 112, First Paragraph
The Examiner rejects all pending claims for failing to satisfy the
written description requirement because “[sjupport could not be found in the
Specification for ‘creating one or more life statuses delineated by a set of
predetermined criteria.’” Final Act. 3 (emphasis added with original
emphasis omitted). Specifically, the Examiner finds that although the
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Specification describes “assigning],” “categorizing],” and “determining]”
a life status, it does not describe “creating” the life status itself. Id. The
Examiner explains that “creating” means “the act of bringing something into
existence.” Ans. 6—7.
Appellants argue one of ordinary skill in the art would understand that
“creating one or more life statuses delineated by a set of predetermined
criteria,” in the context of the invention, plainly refers to data classifications
within Appellants’ invention, not causing (creating) any of the real life
events themselves (such as being married, or being a homeowner). App. Br.
17—21. Accordingly, Appellants argue, the disputed limitation is supported
by portions of the Specification describing the delineation of life status data.
We are persuaded by Appellants’ argument.
The Specification describes life status as a “classification,” and
explains that “‘life status’ may refer to the customer’s current marital,
employment, housing, income, or educational status.” Spec. 1 5. The
Specification further states:
[a] filter allows computing platform 210 to assign to each
customer a life status based on the received customer
information. The filter assigns a life status to customers by
categorizing them based upon status criteria uploaded to the
financial product provider 200 through input module 220 and
stored in financial product database 600. The status criteria
describes a particular life status as corresponding to specified
customer information. For example, if the customer information
defined that the customer has a certain age, purchased a home,
and has employment with a salary over $100,000, then the filter
would categorize the customer with the life status of home-
owner.
Spec. 134 (emphasis added).
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We find the foregoing paragraph, in addition to others referenced by
Appellants, demonstrates that Appellants had possession of the elements in
the disputed limitation, at the time of the invention. See In re Kaslow, 707
F.2d 1366, 1375 (Fed. Cir. 1983) (written description requirement is
satisfied if “the disclosure of the application as originally filed reasonably
conveys to an artisan that the inventor had possession at that time of the
. . . claimed subject matter”) (emphasis added). Although the Specification
does not use the word “create,” the foregoing discussion demonstrates data
classifications or designations (“life statuses”) in the “computer-
implemented method” created by Appellants. Spec. 5, 34. Such “life
statuses” are, according to the Specification, defined by (“delineated by”)
particular criteria (“predetermined criteria”) that can include factors such as
income and home ownership. Id. Indeed, the Specification’s express
statement that “home-owner” or “retiree” can be a “life status” demonstrates
the claimed creation of life statuses (i.e., creating data classifications). Spec.
15.
The Examiner’s Answer seems to imply the belief that the claim is
indefinite. Ans. 6—7. There is not, however, an indefmiteness rejection
before us.
Accordingly, we cannot sustain the Examiner’s rejection of the claims
as failing to satisfy the written description requirement.
Rejection Under 35 U.S.C. §103
Appellants argue the Examiner erred in finding the prior art teaches or
suggests “creating one or more life statuses delineated by a set of
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predetermined criteria,” as recited in claim 31.3 App. Br. 23; Reply Br. 8—9.
Specifically, Appellants argue that Russell’s teaching of financial products
that are “life stage responsive” is not the same as the claimed “life statuses
delineated by a set of predetermined criteria,” and that Tarbox’s teaching of
“life cycle stage,” “factors,” and “criteria” relate to asset allocation itself, not
a “‘life status’ to be applied to a customer.” App. Br. 23—24. We, however,
are not persuaded by Appellants’ arguments.
As the Examiner finds, Russell teaches financial products that are
“life stage responsive” and take a customer’s “evolving needs into account.”
Russell 149; Ans. 7—8. Contrary to Appellants’ argument, the teachings of
Russell are not limited to the general idea of flexible products, but rather,
specifically refer to, for example, classifying customers based on “assets,”
“mortgage,” “career” and other factors. Id. We, like the Examiner, find one
of ordinary skill in the art would have understood such factors to be “life
statuses” as recited in claim 31.4 Indeed, Russell further teaches a
customer’s “eligibility” for certain financial products may change based
upon a changing of any of the foregoing factors, i.e., a customer no longer
satisfies predetermined criteria for a particular life status. Id.
3 For purposes of the obviousness rejections, Appellants argue all claims on
appeal as a group, and we choose claim 31 as representative of the group.
See 37 C.F.R. § 41.37(c)(l)(iv).
4 To the extent Appellants imply Russell does not teach or suggest
“creating” life statuses (because it only refers to such statuses as existing,
and not their creation), this argument would be inconsistent with Appellants’
argument against the written description rejection, see supra, and thus we
find it unpersuasive.
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Appellants further argue the cited prior art does not teach or suggest a
“predetermined matrix that relates the one or more created life statuses to a
set of corresponding financial products,” as recited in claim 31. Appellants
further contend the Examiner relies on Tarbox for this feature, but that
Tarbox only teaches classifying investments, not customers, “and then
customers are tunneled into those investments.” App. Br. 25. Again,
however, we are not persuaded of error.
As the Examiner finds, Russell teaches “the system [of financial
products] is life stage responsive.'''’ Ans. 7 (emphasis added); Russell 149.
As the Examiner further finds, a person of ordinary skill in the art would
understand that “life stage responsive” financial products would include
classifying customers in such “life stages.” Ans. 7. The Examiner
acknowledges that neither reference uses the term “matrix” to describe
relating (i.e., correlating) life statuses to financial products. Ans. 8. As the
Examiner finds, however, Tarbox teaches a “processor” using an “allocation
model” and “algorithms” to “correlate] the retirement needs and life cycle
stage of the customer with an appropriate group of investments.” Ans. 8
(citing Tarbox Figs. 1—4, col. 9, col. 12,11. 22—38). Moreover, Russell also
teaches “selecting by the processor, a first financial product for the customer
based on a set of corresponding financial products using a life stage
responsive system.” Ans. 7—8; Russell ^fl[ 20, 48^49.
We, like the Examiner, find that one of ordinary skill in the art would
have understood the scope of the disputed claim limitation as encompassing
the foregoing teachings, notwithstanding the absence of the phrase
“predetermined matrix.” The claims do not require the matrix to be in any
particular format or contain any particular number of entries, only that it
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relates “one or more” life statuses to a “set” of financial products.
Moreover, the Specification describes an embodiment in which the
“predetermined matrix or table” is a financial product database operating in
a “computing platform,” Spec. 134, just as in Russell and Tarbox.
Accordingly, for the foregoing reasons, we sustain the obviousness
rejections of claims 31—33, 35—40, and 42-48.
DECISION
We affirm the Examiner’s decision rejecting claims 31—33, 35—40,
and 42^18 under 35 U.S.C. § 101.
We reverse the Examiner’s decision rejecting claims 31—33, 35—40,
and 42 48 under pre-AIA 35 U.S.C. § 112, first paragraph.
We affirm the Examiner’s decision rejecting claims 31—33, 35—40,
and 42^48 under pre-AIA 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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