Ex Parte SANDERS et al

Patent Trial and Appeal Board

Nov 14, 2018

13608272 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/608,272 09/10/2012
131244 7590 11/14/2018
Hunton Andrews Kurth LLP/JPMorgan Chase
Intellectual Property Department
2200 Pennsylvania A venue, NW
Suite 800
Washington, DC 20037
FIRST NAMED INVENTOR
Shelley F. SANDERS
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.
47004.000757 1029
EXAMINER
SHORTER, RASHIDA R
ART UNIT PAPER NUMBER
3681
MAIL DATE DELIVERY MODE
11/14/2018 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 SHELLEY F. SANDERS, THEODORE BOWERS,
and
DEAN ILIJASIC
Appeal2017-009274
Application 13/608,272 1
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
JURGOV AN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1, 2, 4--13, 16-20, 22-31, and 34--36, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm. 2
1 Appellants identify JPMorgan Chase Bank, N.A., as the real party in
interest. (App. Br. 1.)
2 Our Decision refers to the Specification ("Spec.") filed September 10,
2012, the Final Office Action ("Final Act.") mailed January 26, 2017, the
Appeal Brief ("App. Br.") filed March 28, 2017, the Examiner's Answer
("Ans.") mailed May 16, 2017, and the Reply Brief ("Reply Br.") filed June
15, 2017.
Appeal2017-009274
Application 13/608,272
CLAIMED INVENTION
The claims are directed to a system and method "for providing
incentives to consumers to share their consumer information with third
parties," by "requesting permission from the consumer to share their
consumer information" and "offering the consumer a selected incentive in
exchange for their permission to share their consumer information."
(Abstract.)
Claims 1 and 19 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computer implemented method for storing and
manipulating incentive information for motivating an individual
to allow their personal information to be shared, the method
compnsmg:
storing, by a storage device, incentive information;
at least one computer processor creating an
organizational structure for an organization in the storage
device, wherein the organizational structure comprises a
plurality of categories, each category comprising a plurality of
sub-categories arranged in a hierarchy;
the at least one computer processor dynamically
determining a monitoring value rate corresponding to a number
of applicants that have opted out of allowing their personal
information to be shared;
the at least one computer processor dynamically
determining an opt-out rate goal for the organization;
the at least one computer processor dynamically
determining a level of interest in keeping an applicant from
opting out of sharing information, wherein the dynamic
determination is based on a the opt-out goal and the monitoring
value rate;
the at least one computer processor automatically
assigning weights to the incentive information based on the
level of interest;
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Application 13/608,272
the at least one computer processor using a link file
comprising a plurality of instructions to automatically assign
the incentive information to at least one of the plurality of
categories and the plurality of sub-categories; and
the at least one computer processor prompting an
electronic device associated with a customer service
representative with at least one incentive.
(App. Br. 16 (Claims App'x).)
REJECTION
Claims 1, 2, 4--13, 16-20, 22-31, and 34--36 stand rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter. (Final Act. 3-
6.)3
ANALYSIS
Patent eligibility is a question of law that is reviewable de nova.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Patentable subject matter is defined by 35 U.S.C. § 101 as follows:
[ w ]hoever 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.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt "the basic tools of scientific and technological
work." Gottschalk v. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty.
3 Additional claims 14, 15, 32, and 33 listed in the Examiner's rejection (see
Final Act. 3) were cancelled in an Amendment dated December 14, 2016
(i.e., before the Final Office Action of January 26, 2017).
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Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354 (2014). The rationale is that
patents directed to basic building blocks of technology would not "promote
the progress of science" under the U.S. Constitution, Article I, Section 8,
Clause 8, but, rather, would impede it. Accordingly, laws of nature, natural
phenomena, and abstract ideas are not patent-eligible subject matter. Thales
Visionix Inc. v. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 134
S. Ct. at 2354).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice. Alice, 134 S. Ct. at 2355. The first step is to determine
whether the claim is directed to a patent-ineligible concept. Alice, 134 S. Ct.
at 2355 ( citing Mayo, 566 U.S. at 76-77). If so, then the eligibility analysis
proceeds to the second step of the Alice/ Mayo test, in which we "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, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at
72, 79). The "inventive concept" may be embodied in one or more of the
individual claim limitations or in the ordered combination of the limitations.
Alice, 134 S. Ct. at 2355. The "inventive concept" must be significantly
more than the abstract idea itself, and cannot be simply an instruction to
implement or apply the abstract idea on a computer. Alice, 134 S. Ct. at
2358. "'[W]ell-understood, routine, [and] conventional activit[ies]'
previously known to the industry" are insufficient to transform an abstract
idea into patent-eligible subject matter. Alice, 134 S. Ct. at 2359 (citing
Mayo, 566 U.S. at 73).
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Application 13/608,272
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first part of the Alice/ Mayo analysis, the Examiner
determines claims 1 and 19 are directed to a business method of providing
incentives to encourage customers to share personal information with third
parties similar to fundamental economic and transactional practices
identified in Alice and Bilski v. Kappas, 561 U.S. 593 (2010) - concepts
that courts have characterized as an abstract idea. (Ans. 6-7, 10; Final Act.
3, 10.) The Examiner also finds claims 1 and 19 are directed to collecting
and analyzing data pertaining to clients' personal information and sharing
preferences-an abstract idea similar to data gathering and manipulation
techniques previously identified by the courts. (Ans. 3--4, 7 ( citing Electric
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); Content
Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d
1343, 1347 (Fed. Cir. 2014); Affinity Labs of Texas, LLC v. Amazon.com
Inc., 838 F.3d 1266 (Fed. Cir. 2016); and Digitech Image Techs., LLC v.
Elecs.for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014)); Final Act.
4.)
Appellants argue claims 2, 4--13, 16-20, 22-31, and 34--36 together
with claim 1 (App. Br. 8, 10, and 13). We select claim 1 as representative.
Claims 2, 4--13, 16-20, 22-31, and 34--36 stand or fall with claim 1 (see
37 C.F.R. § 4I.37(c)(l)(iv)).
Appellants contend the Examiner erred in rejecting the claims because
the claims are not directed to an abstract idea as identified by the Examiner;
rather, "the instant claims are rooted in computer technology, and are
novel," "there is no evidence that the claimed method has been used before,
and it [(the claimed method)] is also distinguishable because it uses 'a
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combined order of specific rule."' (Reply Br. 3, 5 ( citing McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1314--1315 (Fed. Cir.
2016)); App. Br. 8.) Appellants also contend their claims are not directed to
an abstract idea because "like in McRo, the claims do not preempt the
alleged abstract idea." (App. Br. 13-14; Reply Br. 5.)
We are not persuaded by Appellants' arguments. Appellants' claims
and Specification do not describe technological process improvements
similar to McRO. (Ans. 9-10.) Particularly, the court determined that
McRO's claim was not directed to an abstract idea because it "uses the
limited rules in a process specifically designed to achieve an improved
technological result" over "existing, manual 3-D animation techniques."
(See McRO, 837 F.3d at 1299, 1316.) In contrast, Appellants' claimed series
of steps in claim 1 address a business problem of determining incentives
acceptable to an organization, for motivating the organization's customers to
allow their personal information to be shared. (Ans. 9-1 O; Spec. 1: 10-13,
3: 1-8, 8: 1-2, and 12:4--6, Title, Abstract.) Appellants' claim 1 requires
determining an organization's monitoring value rate, opt-out rate goal, level
of interest in keeping an applicant from opting out of sharing information,
and weights for incentive information assigned to categories, followed by
"prompting an electronic device associated with a customer service
representative with at least one incentive." (See App. Br. 16 (Claim 1).) We
are not persuaded that Appellants' dynamic determination of rates and
interest level, and assignment of weights and incentive information, describe
a technological improvement, as advocated by Appellants. (See App. Br.
13-14.)
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Contrary to Appellants' arguments, the claims in McRO were drawn
to improvements in the operation of a computer performing a task, rather
than applying a computer system to perform known data storing and
processing steps ( e.g., determine a monitoring value rate, opt-out rate goal,
level of interest, and assigned incentive information weights, and prompting
an electronic device as in Appellants' claim 1). See McRO, 837 F.3d at
1314. Particularly, McRO's claims and Specification employ "rules that
define output morph weight set stream as a function of phoneme sequence
and time of said phoneme sequence" to "achieve an improved technological
result." See McRO, 837 F.3d at 1310, 1316. McRO's improved
technological result allows "computers to produce 'accurate and realistic lip
synchronization and facial expressions in animated characters' that
previously could only be produced by human animators." See McRO, 837
F.3d at 1313.
Appellants have not demonstrated their claimed method for
manipulating incentive information to motivate an individual to share
personal information, "improves the relevant technology" rather than being
"directed to a result or effect that itself is the abstract idea and merely
invoke[s] generic processes and machinery." See McRO, 837 F.3d at 1314
(citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir.
2016)). No technological advance is evident in Appellants' claims. (Ans. 5,
7-8.) The only portion of claim 1 that could be considered "technological"
is the generic storage device, electronic device, and "computer processor
using a link file comprising a plurality of instructions to automatically assign
the incentive information to at least one of the plurality of categories and the
plurality of sub-categories." The generically claimed "link file comprising a
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plurality of instructions" associates incentive information to one or more
categories via, e.g., a data table. (See Spec. 13:24--14:15, Fig. 7.)
Appellants have not demonstrated their claimed computer processor using
the link file is able to perform functions that are not merely generic for
processors running executable files. See DDR Holdings, LLC, v.
Hotels.com, L.P., 773 F.3d 1245, 1257-58 (Fed. Cir. 2014)
In fact, none of the steps and elements recited in Appellants' claims
provide, and nowhere in Appellants' Specification can we find, any
description or explanation as to how the claimed system and method for
manipulating incentive information are intended to provide: (1) a "solution
... necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks," as
explained by the Federal Circuit in DDR Holdings, 773 F.3d at 1257; (2) "a
specific improvement to the way computers operate," as explained in Enfzsh,
822 F.3d at 1336; or (3) an "unconventional technological solution ... to a
technological problem" that "improve[ s] the performance of the system
itself," as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288, 1300, 1302 (Fed. Cir. 2016).
Rather, Appellants' claims are directed to incentive marketing, which
is a fundamental economic concept, i.e., an abstract idea. (Ans. 6, 10; Final
Act. 10.) See Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007, 1013 (C.D.
Cal. 2014), aff'd, 622 F. App'x 915 (Fed. Cir. 2015) (quoting Tuxis Techs.,
LLC v. Amazon.com, Inc., No. CV 13-1771-RGA, 2014 WL 4382446, at *5
(D. Del. Sept. 3, 2014) (targeted marketing "has been practiced as long as
markets have been in operation.")); Content Extraction, 776 F.3d at 1347
( claims directed to "the mere formation and manipulation of economic
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relations" and "the performance of certain financial transactions" have been
held to involve abstract ideas). Appellants' claim 1 claims an improvement
to a business process where computers are invoked merely as a tool, which
qualifies as an abstract idea. (Ans. 7-9.) See Bancorp Services, L.L.C. v.
Sun Life Assurance Co. of Canada (US.), 687 F.3d 1266, 1278 (Fed. Cir.
2012) ("the 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."); and FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1095 (Fed. Cir. 2016) ("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.").
We also agree with the Examiner that the claims are directed to data
collection and analysis capable of being performed through human thought
and insignificant data input and output operations-an abstract idea similar
to data gathering and manipulation techniques previously identified by the
courts. (Ans. 3--4, 8, and 10.) Particularly, claim 1 seeks to change an
individual's state of mind by motivating the individual to not opt out of
sharing their personal information ( e.g., by offering an incentive). See
Content Extraction, 776 F.3d at 1347--48 (finding "[t]he concept of data
collection, recognition, and storage is undisputedly well-known," and
"humans have always performed these functions"); Electric Power Grp.,
830 F.3d at 1353-54 (collecting information and "analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, [are] essentially mental processes within the abstract-idea
category"). Additionally, mental processes remain unpatentable even when
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automated to reduce the burden on the user of what once could have been
done with pen and paper. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.").
Appellants also emphasize the claims "are novel-there are no prior art
rejections, so it is clear that like the defendants in McRo, there is no
evidence that the claimed method has been used before." (Reply Br. 5.)
However, the Supreme Court emphasizes: "[ t ]he 'novelty' of any element
or steps in a process, or even of the process itself, is of no relevance in
determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter." Diamond v. Diehr, 450
U.S. 175, 188-89 (1981) (emphasis added). Our reviewing court further
guides that"[ e ]ligibility and novelty are separate inquiries." Two-Way
Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed.
Cir. 2017); see also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1263 (Fed. Cir. 2016) (holding that "[e]ven assuming" that a particular
claimed feature was novel does not "avoid the problem of abstractness").
Further, with respect to Appellants' preemption argument (App. Br.
13-14 and Reply Br. 5---6), we note the McRO court explicitly "recognized
that 'the absence of complete preemption does not demonstrate patent
eligibility."' See McRO, 837 F.3d at 1315 (quoting Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). "Where 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.
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Accordingly, we agree with the Examiner claims 1 and 19 are directed
to an abstract idea.
Alice/Mayo-Step 2 (Inventive Concept)
Appellants also allege their claims, like the claims in BASCOM, recite
significantly more than an abstract idea because the claimed combination of
elements provides a technological "improvement in the manner in which
data is stored and accessed so that the appropriate incentive may be
provided." (Reply Br. 3--4 (citing BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)); App. Br. 8-10.)
Appellants also argue the claimed "use of the link file, in combination with
the dynamic determinations, results in an actual improvement to the
technology," providing a "technical solution that dynamically determines the
level of interest in keeping the applicant from opting out of sharing
information." (Reply Br. 3--4; App. Br. 10.)
We disagree. BASCOM's patent-eligible ordered combination of
claim limitations contain an "inventive concept [that] harnesses [a] technical
feature of network technology in a filtering system by associating individual
accounts with their own filtering scheme and elements while locating the
filtering system on an ISP [Internet Service Provider] server," thus
"improv[ing] the performance of the computer system itself' with a
"technology-based solution ... to filter content on the Internet that
overcomes existing problems with other Internet filtering systems." See
Bascom, 827 F.3d at 1350-52.
In contrast to BASCOM, Appellants' claims and Specification do not
identify a specific improvement to computer technology or to data storage
and access effected by the claims. (Ans. 4--5, 7.) For example, Appellants'
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Specification does not describe how the claimed "computer processor using
a link file" would improve the computer's operation. Further, the claimed
"determining" does not specify what dynamically determining would entail.
Furthermore, Appellants' claim 1 does not impose any bounds on the "level
of interest" or its dependence on opt-out rate goal and monitoring value rate.
Additionally, Appellants present no evidence as to how or why "the manner
in which level of interest is dynamically determined is not generic." (See
App. Br. 12.) Appellants' claim 1 also does not specify how the method for
manipulating incentive information would improve the "organization's
ability to gather and use[] information about its customers." (See App. Br.
9.) For example, the claimed "prompting an electronic device associated
with a customer service representative with at least one incentive" does not
specify how that incentive relates to the dynamically determined level of
interest, opt-out goal, or monitoring value rate. Further, the "computer
processor using a link file," and the "link file" are generically claimed.
Under similar circumstances, our reviewing court has held patent claims
ineligible. See Amdocs, 841 F.3d at 1301---02 (summarizing cases in which
claims were found to be ineligible subject matter); see also In re TL!
Communications LLC Patent Litigation, 823 F.3d 607, 615 (Fed. Cir. 2016)
("Such vague, functional descriptions of server components are insufficient
to transform the abstract idea into a patent-eligible invention.").
We therefore agree with the Examiner the claims merely recite
computer technology "at a high level of generality" performing conventional
computer functions for data collection and analysis. (Final Act. 3; Ans. 3,
IO; see Spec. 16:9--16; see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715-16 (Fed. Cir. 2014) ("[a]dding routine additional steps such as
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updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet does not transform
an otherwise abstract idea into patent-eligible subject matter.").) "[T]he use
of generic computer elements like a microprocessor or user interface" to
perform conventional computer functions "do not alone transform an
otherwise abstract idea into patent-eligible subject matter." FairWarning,
839 F.3d at 1096 (citing DDR Holdings, 773 F.3d at 1256).
Because Appellants' claims 1 and 19 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
these claims under 35 U.S.C. § 101. We also sustain the Examiner's§ 101
rejection of dependent claims 2, 4--13, 16-18, 20, 22-31, and 34--36, for
which no separate arguments are provided.
DECISION
The Examiner's rejection of claims 1, 2, 4--13, 16-20, 22-31, and 34--
36 under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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