Ex Parte Villars

Patent Trial and Appeal Board

Apr 13, 2018

13721216 (P.T.A.B. Apr. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131721,216 12/20/2012
21839 7590 04/17/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Curtis VILLARS
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.
007 6412-000099 8531
EXAMINER
GOLDBERG, IV AN R
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
04/17/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CUR TIS VILLARS
Appeal2017-000776 1
Application 13/721,216
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-11 and 13-23, which are all the claims pending in the
application. Appellant has canceled claim 12. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is MasterCard
International Inc. App. Br. 2.
Appeal2017-000776
Application 13/721,216
STATEMENT OF THE CASE2
The Invention
Appellant's disclosed embodiments and claimed invention relate "to
the identification of consumer spending behaviors in a geographic area,
specifically the aggregation of spending behaviors of consumers in a
geographic area based on purchasing and geographic centroids." Spec. i-f 1.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal (emphases added to contested prior-art claim limitations):
1. A method for identifying spending behaviors in a
geographic area, comprising:
electronically storing, in a geographic database of a
processing server, a plurality of geographic centroids, wherein
each geographic centroid corresponds to a centroid of a
predefined geographic area;
receiving, by a receiving device of the processing server,
a plurality of financial transactions involving each consumer of
a plurality of consumers from a financial transaction processing
server, wherein each financial transaction contains no
personally identifiable information for the each consumer of the
plurality of consumers;
identifYing, by a processing device of the processing
server, a geographic location of each financial transaction of
the plurality of financial transactions by receiving the
geographic location from a mobile communication device used
2 Our decision relies upon Appellant's Appeal Brief ("App. Br.," filed
April 4, 2016); Reply Brief ("Reply Br.," filed Oct. 21, 2016) (Examiner's
Answer ("Ans.," mailed Aug. 26, 2016); Final Office Action ("Final Act.,"
mailed Nov. 5, 2015); and the original Specification ("Spec.," filed
Dec. 20, 2012).
2
Appeal2017-000776
Application 13/721,216
in each financial transaction and storing the geographic
location in a transaction database;
calculating, by the processing device of the processing
server, for each consumer of the plurality of consumers, a
purchase centroid of the financial transactions involving the
consumer based on a centroid of the identified geographic
location of the financial transactions involving the consumer;
analyzing, by the processing device of the processing
server, for each consumer, spending behaviors based on the
financial transactions involving the consumer;
associating, by the processing device of the processing
server, the analyzed spending behavior for each consumer with
the corresponding purchase centroid;
associating, in the transaction database of the processing
device, the analyzed spending behaviors for each purchase
centroid with a predetermined number of geographic centroids
based on the distance from the purchase centroid to each of the
predetermined number of geographic centroids; and
aggregating, in a consumer database of the processing
device, each of the spending behaviors associated with each
geographic centroid of the plurality of geographic centroids
such that each corresponding geographic area is associated with
aggregated spending behaviors,
wherein the predetermined number of geographic
centroids is based upon concealing each consumer's
identification.
Prior Art
The Examiner relies upon the following prior art as evidence in
rejecting the claims on appeal:
Fiedler et al. ("Fiedler")
Taveau et al. ("Taveau")
Amaro et al. ("Amaro")
Favero et al. ("Favero")
US 6,883,708 Bl April 26, 2005
US 2011/0320345 Al Dec. 29, 2011
US 2013/0124263 Al May 16, 2013
US 8,655,726 Bl Feb.18, 2014
3
Appeal2017-000776
Application 13/721,216
Rejections on Appeal3
RI. Claims 1-11and13-23 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 14, 18.
R2. Claims 1, 2, 7-11, 13, 14, and 19-23 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Favero,
Amaro, and Applicant's Admitted Prior Art. Final Act. 22.
R3. Claims 1, 2, 6-11, 13, 14, and 18-23 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over the combination of Favero,
Amaro, Taveau, and Applicant's Admitted Prior Art. Final Act. 41.
R4. Claims 3-5 and 15-17 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Favero, Amaro, Fiedler, and
Applicant's Admitted Prior Art. Final Act. 44.
R5. Claims 6 and 18 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Favero, Amaro, Taveau, and
Applicant's Admitted Prior Art. Final Act. 48.
CLAIM GROUPING
Based on Appellant's arguments (App. Br. 12-24), we decide the
appeal of patent-ineligible subject matter Rejection RI of claims 1-11
and 13-23 on the basis of representative claim 1; and we also decide the
appeal of obviousness Rejection R2 of claims 1, 2, 7-11, 13, 14, and 19-23
on the basis of representative claim 1.
We decide the appeal of claims 1, 2, 6-11, 13, 14, and 18-23 rejected
under rejection R3, claims 3-5 and 15-17 rejected under rejection R4, and
3 The Examiner withdrew the 35 U.S.C. § 112 rejections. Final Act. 2.
4
Appeal2017-000776
Application 13/721,216
claims 6 and 18 rejected under rejection R5, not argued separately or with
specificity, infra. 4
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. We do not consider arguments
Appellant could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv).
We disagree with Appellant's arguments with respect to claim 1 and,
unless otherwise noted, we incorporate by reference 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, and (2) the reasons and rebuttals set forth in
the Examiner's Answer in response to Appellant's arguments. We highlight
and address specific findings and arguments regarding claim 1 for emphasis
as follows.
1. § 101 Rejection RI of Claims 1-3, 5-13, 16-28, and 30-35
Issue 1
Appellant argues (App. Br. 12-17) the Examiner's rejection of claim 1
under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter is
in error. These contentions present us with the following issue:
4 "Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately." 37 C.F.R. § 41.37(c)(l)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801F.2d1324, 1325 (Fed. Cir. 1986).
5
Appeal2017-000776
Application 13/721,216
Did the Examiner err in concluding claim 1 is patent-ineligible by
being directed to fundamental economic/business practices and methods of
organizing human activity without providing an improvement to the
underlying technology or functioning of the computer?
Analysis
Alice Framework
Section 101 provides that anyone who "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. 35 U.S.C. § 101.
The Supreme Court has repeatedly emphasized that patent protection should
not extend to claims that monopolize "the basic tools of scientific and
technological work." Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012);
Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
Accordingly, laws of nature, natural phenomena, and abstract ideas are not
patent-eligible subject matter. Id.
The Supreme Court's two-part Mayo/Alice framework guides us in
distinguishing between patent claims that impermissibly claim the "building
blocks of human ingenuity" and those that "integrate the building blocks into
something more." Alice, 134 S. Ct. at 2354. First, we "determine whether
the claims at issue are directed to a patent-ineligible concept." Id. at 2355.
If so, 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." Id. at 2357 (quoting Mayo, 566 U.S.
6
Appeal2017-000776
Application 13/721,216
at 72, 79). While the two steps 5 of the Alice framework are related, the
"Supreme Court's formulation makes clear that the first-stage filter is a
meaningful one, sometimes ending the § 101 inquiry." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). We note the
Supreme Court "has not established a definitive rule to determine what
constitutes an 'abstract idea'" for the purposes of step one. Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (citing Alice, 134 S.
Ct. at 2357).
Alice Step I -Abstract Idea
Our reviewing court has held claims ineligible as being directed to an
abstract idea when they merely collect electronic information, display
information, or embody mental processes that could be performed by
humans. Elec. Power Grp., 830 F.3d at 1353-54 (collecting cases). At the
same time, "all inventions at some level embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." Mayo, 566 U.S.
at 71. Under this guidance, we must therefore ensure at step one that we
articulate what the claims are directed to with enough specificity to ensure
the step one inquiry is meaningful. Alice, 134 S. Ct. at 2354 ("[W]e tread
carefully in construing this exclusionary principle lest it swallow all of
patent law.").
Appellant contends, the claimed subject matter "reflects a technical
solution to a technical problem .... The claims relate to the identification of
5 Applying this two-step process to claims challenged under the abstract
idea exception, the courts typically refer to step one as the "abstract idea"
step and step two as the "inventive concept" step. Affinity Labs of Tex., LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
7
Appeal2017-000776
Application 13/721,216
consumer spending behaviors in a geographic area, specifically the
aggregation of spending behaviors of consumers in a geographic area based
on purchasing and geographic centroids." App. Br. 7, 8. Appellant further
argues against the claims "reciting a mathematical formula" or "something a
human could do using a pen and paper." App. Br. 11-12.
Appellant furthermore argues:
The claimed invention as a whole must be considered.
Distilling an invention down to the "gist" or "thrust" of an
invention disregards the requirement of analyzing the subject
matter "as a whole." W.L. Gore & Assoc., Inc. v. Garlock, Inc.,
721F.2d1540, 220 USPQ 303 (Fed. Cir. 1983). Claim 1 occurs
at a single entity, the "processing server". Thus, the Office's
example of having a first company print a report (note that
printing is not a human function, but a computer function)
which takes out PII [6J and having a second person analyze the
data is two separate entities reviewing the data. Thus, as stated
previously, there is no way that a human can gather data
without PII, because by physically gathering the data, the
human would know where and who the data came from.
Furthermore, the data gathered in claim 1 has to do with
potentially millions of transactions in order to determine
spending behavior in a geographic region, which is impossible
for a human to do in an efficient manner to deliver accurate
results.
App. Br. 12. In addition, Appellant contends:
Further akin to Example 2 and the Court's opinion in DDR
Holdings, the Appellant's claims do not "merely recite the
performance of some business practice known from the pre-
[ computer] world with the requirement to perform it on [the
computer]." See Examples, P. 6. Appellant's claimed solution is
instead "necessarily rooted in computer technology in order to
6 Personally Identifiable Information (PII).
8
Appeal2017-000776
Application 13/721,216
overcome a problem specifically arising in the realm of
computer networks." Id.
App. Br. 13.
In response, the Examiner concludes the appealed claims are directed
to a judicial exception, i.e., an abstract idea without significantly more
because "the act of 'analyzing' spending behaviors of a consumer is a mental
process (e.g. thinking) that can be performed manually, or by a human using
a pen and paper." Ans. 3. The Examiner explains "In Electric Power Group,
the focus of claims on 'collecting information, analyzing it, and displaying
certain results of the collection and analysis' or 'analyzing information of a
specified content,' without any particular inventive technology, is directed to
an abstract idea." Id. The Examiner finds that each of the limitations can be
performed by a person or by a conventional computer. Ans. 4.
Under the "abstract idea" step we must evaluate "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, 838 F.3d at
1257 (citation omitted).
Turning to the claimed invention, claim 1 recites, " [a] method for
identifying spending behaviors in a geographic area." Claim 1 (preamble).
Method claim 1 's limitations also require various steps including receiving,
storing, identifying, analyzing, and aggregating information, i.e., receiving
financial transaction information; identifying a geographic location of each
financial transaction; calculating a purchase centroid for each consumer's
financial transactions; analyzing consumer spending behaviors based upon
the consumer's financial transactions; associating analyzed spending
behavior for each consumer with a corresponding purchase centroid;
9
Appeal2017-000776
Application 13/721,216
associating spending behaviors for each purchase centroid with
predetermined geographic centroids based upon distance; and aggregating,
in a database, spending behaviors "such that each corresponding geographic
area is associated with aggregated spending behaviors, wherein the
predetermined number of geographic centroids is based upon concealing
each consumer's identification." Claim 1.
The Examiner concludes claim 1 is directed to an abstract idea:
[A] ssociating transactions with a purchase area, then
associating the purchase area with a larger geographic area
[storing geographic centroids; receiving transactions involving
consumers; identifying geographic locations for each financial
transaction; calculating a purchase centroid of the financial
transactions; analyzing spending behaviors of the consumer;
associating the behavior for each consumer with the purchase
centroid; and aggregating each spending behavior with the
geographic centroids such that each geographic area is
associated with aggregated spending behaviors]. This is a
method of [organizing] human activity and accordingly, is
viewed as an abstract idea, similar to the idea of itself of mental
process (thinking) that can be performed in the human mind, or
by a human using a pen and paper.
Final Act. 14--15.
Under step one, we agree with the Examiner that the invention
claimed in independent claim 1 is directed to an abstract idea, i.e.,
fundamental economic and business practices, e.g., determining sales/
purchase patterns, and methods of organizing human activity. See Ans. 2--4.
As the Specification describes: "The present disclosure relates to the
identification of consumer spending behaviors in a geographic area,
specifically the aggregation of spending behaviors of consumers in a
geographic area based on purchasing and geographic centroids." Spec. i-f 1.
10
Appeal2017-000776
Application 13/721,216
We find this type of activity, i.e., identifying and aggregating consumer
spending behaviors in a geographic area based on purchasing and
geographic centroids could be carried out by a human 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."). 7
Our reviewing court has previously held other patent claims ineligible
for reciting similar abstract concepts. For example, while the Supreme
Court has enhanced the § 101 analysis since Cy her Source in cases like Mayo
and Alice, they continue to "treat[ ] analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category." Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146-47 (Fed. Cir. 2016)
(alteration in original) (quoting Elec. Power Grp., 830 F.3d at 1354). 8
In this regard, claim 1 is similar to claims our reviewing court has
found patent ineligible in Elec. Power Grp., 830 F.3d at 1353-54 (collecting
information and "analyzing information by steps people go through in their
7 CyberSource further guides that "a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under§ 101." CyberSource, 654 F.3d at 1373.
8 We find computing centroids, e.g., area centroids, to be known in the art
as involving the use of algorithms, as acknowledged by Appellant. See
Spec. i-f 50 ("Methods for calculating the purchase centroid 306 will be
apparent to persons having skill in the relevant art as discussed herein, such
as identifying the geographic location of each financial transaction including
the consumer and calculating the purchase centroid 306 using known
centroid calculation methods.").
11
Appeal2017-000776
Application 13/721,216
minds, or by mathematical algorithms, without more, [are] essentially
mental processes within the abstract-idea category").
Therefore, in agreement with the Examiner, we conclude claim 1
involves nothing more than receiving, identifying, calculating, storing,
analyzing and aggregating data, without any particular inventive technology
- an abstract idea. See Elec. Power Grp., 830 F.3d at 1354. We further
refer to Content Extraction, where the Federal Circuit has provided
additional guidance on the issue of statutory subject matter by holding
claims to collecting data, recognizing certain data within the collected data
set, and storing that recognized data in memory were directed to an abstract
idea and therefore unpatentable under § 101. Content Extraction &
Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed.
Cir. 2014).
Accordingly, on this record, and under step one of Alice, we agree
with the Examiner's conclusion the claims are directed to an abstract idea.
Alice Step 2 -Inventive Concept
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the "inventive concept" step. For that step
we must "look with more specificity at what the claim elements add, in order
to determine 'whether they identify an "inventive concept" in the application
of the ineligible subject matter' to which the claim is directed." Affinity
Labs, 838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353).
In applying step two of the Alice analysis, our reviewing court guides
we must "determine whether the claims do significantly more than simply
describe [the] abstract method" and thus transform the abstract idea into
12
Appeal2017-000776
Application 13/721,216
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any "additional
features" in the claims that constitute an "inventive concept," thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 134 S. Ct. at 2357. Those "additional features" must be
more than "well-understood, routine, conventional activity." Mayo, 566
U.S. at 79.
Evaluating representative claim 1 under step 2 of the Alice analysis,
we agree with the Examiner that it lacks an inventive concept that
transforms the abstract idea of identifying and aggregating spending
behaviors in a geographic area into a patent-eligible application of that
abstract idea. See Ans. 15. 9
We agree with the Examiner because, as in Alice, we find the
recitation of identifying spending behaviors in a geographic area by
calculating, analyzing and aggregating data (claim 1) is simply not enough
to transform the patent-ineligible abstract idea here into a patent-eligible
invention. See Alice, 134 S. Ct. at 2357 ("[C]laims, which merely require
generic computer implementation, fail to transform [an] abstract idea into a
patent-eligible invention."). 10
9 The Examiner finds:
The functions identified here - store, receive, identify,
compare, and store- are all conventional computer functions
and/or are part of the abstract idea of automating tasks that can
be performed mentally (a person looking at receipts of a
consumer, a person determining the geographic area).
Ans. 15.
10 Appellant merely alleges:
13
Appeal2017-000776
Application 13/721,216
Accordingly, based upon the guidance from our reviewing courts
above, on this record, we are not persuaded of error in the Examiner's
conclusion that the appealed claims are directed to patent-ineligible subject
matter. Therefore, we sustain the Examiner's § 101 rejection of independent
claim 1, and grouped claims 2-11 and 13-23, not argued separately, and
which fall therewith. See Claim Grouping, supra.
2. § 103 Rejection R2 of Claims l, 2, 7-11, 13, 14, and 19-23
Issue 2
Appellant argues (App. Br. 23-36) the Examiner's rejection of claim 1
under 35 U.S.C. § 103(a) as being obvious over the combination of Favero,
Amaro, and Applicant's Admitted Prior Art is in error. These contentions
present us with the following issues:
Further akin to Example 2 and the Court's opinion in DDR
Holdings, the Appellant's claims do not "merely recite the
performance of some business practice known from the pre-
[ computer] world with the requirement to perform it on [the
computer]." See Examples, P. 6. Appellant's claimed solution is
instead "necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of
computer networks." Id. The Appellant's claims provide
methods and systems for improving the manner in which
specific spend profiles are determined for consumers. Thus, the
present claims are similar to those of Example 2, for at least the
reasons set forth above (e.g., because they are rooted in and
require technology and provide a technical improvement
inseparable from the devices recited in the Appellant's claims).
App. Br. 13. We disagree with this contention because we find nothing in
Appellant's Specification or claim identifies an improvement in the
underlying conventional computer technology.
14
Appeal2017-000776
Application 13/721,216
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests " [a] method for identifying spending behaviors in a
geographic area" that includes, inter alia, the steps of "receiving ...
financial transactions ... wherein each financial transaction contains no
personally identifiable information for the each consumer of the plurality of
consumers;" "identifying ... a geographic location of each financial
transaction ... [and] storing the geographic location in a transaction
database;" "calculating ... a purchase centroid of the financial transactions;"
"associating ... the analyzed spending behavior for each consumer with the
corresponding purchase centroid;" "associating ... the analyzed spending
behaviors for each purchase centroid with a predetermined number of
geographic centroids;" "wherein the predetermined number of geographic
centroids is based upon concealing each consumer's identification," as
recited in claim 1?
(b) Did the Examiner further err in rejecting claim 1 by relying
upon improper motivation to combine the cited prior art in the manner
suggested?
Analysis
(a) The Reference Combination Teaches or Suggests all Limitations
Appellant argues, "the Favero patent discusses a method and system
for identifying a unique geographical area based upon the spending habits of
a single known consumer .... [and uses] personally identifiable
information (PII)." App. Br. 26. "In contrast to the system and method
disclosed in Favero, Appellant's claims are directed toward a technical
solution for identifying consumer spending behaviors within a geographical
15
Appeal2017-000776
Application 13/721,216
area based upon the geographic and purchasing centroids ... [and] offer
several advantages over the cited Favero patent." Id. (citing Spec. i-fi-14--7,
and 28).
Here, we find Appellant is arguing the references separately. We are
not persuaded by Appellant's arguments because the Examiner cites Amaro,
not Favero, for teaching or suggesting the recited negative limitation
involving avoidance of using "personally identifiable information." Ans. 15.
Appellant also argues "the geographic area derived from the process
disclosed in Favero is not the equivalent of a predefined geographic area as
recited in Appellant's claims, rather, it is an area determined based upon a
process of analyzing consumer data (i.e., the geographic area resulting from
Favero' s disclosed system and method)." App. Br. 27.
We are not persuaded by Appellant's arguments because we find
Favero's identification of a geographic location of a payee, and deriving a
consumer's shopping habits, teaches or at least suggests the disputed
limitation. Favero, col. 10, 11. 51---63.
Appellant also argues the prior art does not disclose "calculating ... a
purchase centroid." App. Br. 30-31. However, we are not persuaded by
Appellant's argument because Appellant's own Specification admits that
calculating a centroid is well known in the art. Spec. i1 50, Ans. 20-21.
Thus, on this record, we find a preponderance of the evidence
supports the Examiner's findings that the combination of Favero, Amaro,
and Applicant's Admitted Prior Art teach or suggest all the claim limitations
of claim 1.
16
Appeal2017-000776
Application 13/721,216
(b) The Examiner Provided Proper Motivation to Combine
Appellant states "[p ]lease note, that as stated above in the claim, each
of these financial transactions do not contain PII." App. Br. 24. Appellant
contends "Favero is using personally identifiable information (PII) and
thereby teaching away from a primary purpose of the present teachings of
the avoidance of using PII." App. Br. 26.
Regarding Appellant's motivation to combine argument, the Examiner
identifies the relevant portions of each of the references relied on throughout
the Final Action and Examiner's Answer. See Final Act. 22-35; Ans. 15-26.
To the extent that the Examiner relies on the knowledge of one of ordinary
skill in the art to combine the teachings of the references, this practice is
consistent with current case law. For example, the Supreme Court explains:
Often, it will be necessary for a court to look to 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, all in order to determine whether there was an
apparent reason to combine the known elements in the fashion
claimed by the patent at issue. To facilitate review, this analysis
should be made explicit. See In re Kahn, 441 F.3d 977, 988
(C.A.Fed.2006) ("[R]ejections on obviousness grounds cannot
be sustained by mere conclusory statements; instead, there must
be some articulated reasoning with some rational underpinning
to support the legal conclusion of obviousness"). As our
precedents make clear, however, 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.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
17
Appeal2017-000776
Application 13/721,216
Our reviewing court guides, "in general, a reference will teach away if
it suggests that the line of development flowing from the reference's
disclosure is unlikely to be productive of the result sought by the applicant."
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). Further, the Federal Circuit
has held '11 [a] reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant. '11 In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006) (quoting In re Gurley, 27 F.3d 551, 553 (Fed.
Cir. 1994)).
We are unpersuaded by Appellant's arguments because Favero does
not discredit using personally identifiable information. In fact, the Examiner
finds that Favero teaches that one can sweep out a certain distance from a
centered zip code, which at least suggests information that contains "no
personable identifiable information." Ans. 15.
In this case, the Examiner's conclusions of obviousness are clearly
articulated and are based on detailed factual findings that are supported by
the references of record. See Final Act. 28, 30-31, 34--35. We find the
Examiner provided sufficient articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness. See KSR 550
U.S. at 418.
Moreover, Appellant has not demonstrated that the Examiner's
proffered combination of references would have been "uniquely challenging
or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550
U.S. at 418). Nor has Appellant provided objective evidence of secondary
18
Appeal2017-000776
Application 13/721,216
considerations which our reviewing court guides "operates as a beneficial
check on hindsight." Cheese Sys., Inc. v. Tetra Pak Cheese and Powder
Sys., 725 F.3d 1341, 1352 (Fed. Cir. 2013).
Regarding Appellant's remaining arguments in the Appeal Brief, we
note the Examiner has addressed these arguments in the Answer. Ans. 15-
26. Furthermore, although Appellant files a Reply Brief, Appellant does not
address the Examiner's further findings and clarifications in the Answer
regarding the 103 rejections. Arguments not made are waived.
Accordingly, on this record, we are not persuaded of error in the
Examiner's reliance on the cited prior art combination to teach or suggest the
disputed limitations of claim 1, nor do we find error in the Examiner's
resulting legal conclusion of obviousness. Therefore, we sustain the
Examiner's obviousness rejection R2 of independent claim 1, and grouped
claims 2, 7-11, 13, 14, and 19-23 which fall therewith. See Claim
Grouping, supra.
3. § 103 Rejection R3 of Claims 1, 2, 6-11, 13, 14, and 18-23
The Examiner cumulatively rejects claim 1 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Favero, Applicant's Admitted
Prior Art, Amaro, and Taveau. Final Act. 41. The only limitation
alternatively rejected is "by receiving the geographic location from a mobile
communication device used in each financial transaction." Id.
Similar to the motivation argument in Rejection RI, supra, Appellant
argues Taveau discloses PII and therefore does not disclose the limitations of
claim 1. App. Br. 38-39. However, as explained above in regards to
19
Appeal2017-000776
Application 13/721,216
claim 1, the Examiner cites Amaro, not Taveau, for the concealed PII
limitation. Therefore, Appellant is again arguing the references separately.
In view of the lack of any other substantive arguments directed to
obviousness Rejection R3 of claims 1, 2, 6-11, 13, 14, and 18-23 under
§ 103 (see App. Br. 14-16), we sustain the Examiner's rejection of these
claims. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(l)(iv).
4. § 103 Rejection R4 of Claims 3-5 and 15-17
The Examiner rejects claims 3-5 and 15-17 under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Favero, Applicant's Admitted
Prior Art, Amaro, and Fiedler. Final Act. 44.
Appellants argue "The data collected by Favero is particular to a
specific consumer, and thus Favero does not disclose identifying the
geographic location of each financial transaction without PII." App. Br. 37.
However, as explained above in regards to claim 1, the Examiner cites
Amaro, not Favero, for the "without PII" limitation. 11 Therefore, Appellant
is again arguing the references separately.
In view of the lack of any other substantive arguments directed to
obviousness Rejections R4 of claims 3-5 and 15-17 under§ 103 (see App.
Br. 36-37), we sustain the Examiner's rejection of these claims. Arguments
not made are waived.
11 The negative limitation "wherein the predetermined number of
geographic centroids is based upon concealing each consumer's
identification" (i.e., without Personally Identifiable Information or PII) is
recited in independent claim 1, from which claims 3-5 depend, and also in
independent claim 13, from which claims 15-1 7 depend.
20
Appeal2017-000776
Application 13/721,216
5. § 103 Rejection R5 of Claims 6 and 18
The Examiner rejects claims 6 and 18 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Favero, Applicant's Admitted
Prior Art, Amaro, and Taveau. Final Act. 48.
Appellant argues "The data provided by Taveau specifically discloses
PII since a user profile is identified, as well as personal payment information
for each transaction." App. Br. 38.
However, as explained above in regards to claim 1, the Examiner cites
Amaro, not Taveau, for the concealed PII limitation. Therefore, Appellant is
again arguing the references separately.
In view of the lack of any other substantive arguments directed to
obviousness Rejections R5 of claims 6 and 18 under§ 103 (see App. Br. 37-
38), we sustain the Examiner's rejection of these claims. Arguments not
made are waived.
CONCLUSIONS
(1) The Examiner did not err regarding Rejection RI of claims 1-
11 and 13-23 under 35 U.S.C. § 101, as being directed to a patent-ineligible
judicial exception, and we sustain the rejection.
(2) The Examiner did not err with respect to obviousness
Rejections R2 through R5 of claims 1-11 and 13-23 under 35 U.S.C.
§ 103(a) over the cited prior art combinations of record, and we sustain the
rejections.
21
Appeal2017-000776
Application 13/721,216
DECISION
We affirm the Examiner's decision rejecting claims 1-11 and 13-23.
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
22