John Ryan. CaldwellDownload PDFPatent Trials and Appeals BoardSep 9, 201914936677 - (D) (P.T.A.B. Sep. 9, 2019) Copy Citation 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. 14/936,677 11/09/2015 John Ryan Caldwell 3552.2.13US2 1069 136265 7590 09/09/2019 Kunzler, PC. - MX 50 West Broadway 10th Floor Salt Lake City, UT 84101 EXAMINER BRADY, MARIE P. ART UNIT PAPER NUMBER 3681 NOTIFICATION DATE DELIVERY MODE 09/09/2019 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): docket@kunzlerlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte JOHN RYAN CALDWELL ________________ Appeal 2018-003473 Application 14/936,677 Technology Center 3600 ________________ Before JEAN R. HOMERE, BRADLEY W. BAUMEISTER, and JAMES B. ARPIN, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–13, 18–22, and 24–30.1 App. Br. 1. These claims stand rejected under 35 U.S.C. § 101 as being directed to patent- ineligible subject matter. Final Action mailed June 6, 2017 (“Final Act.”) 4– 6. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies MX Technologies, Inc. as the real party in interest. Appeal Brief filed November 6, 2017 (“App. Br.”) 2. Appeal 2018-003473 Application 14/936,677 2 CLAIMED SUBJECT MATTER Appellant describes the subject matter of the rejected claims as follows: Apparatuses, system, methods, and computer program products are presented for presenting content based on transaction data. A selection module selects a user for an offer in response to the user’s financial transaction data satisfying a transaction metric associated with the offer. A location module determines a target location for an offer based on a user’s financial transaction data. A location module monitors location data from one or more sensors for a user relative to a target location. An offer module dynamically provides an offer to a user in response to monitored location data from one or more sensors satisfying a target location. Abstract. Independent claim 1 represents the appealed claims.2 It is reproduced below with formatting modified for clarity and with emphasis added to the language that recites an abstract idea: 1. An apparatus comprising: [i] a processor; [ii] one or more sensors; [iii] an electronic display; and [iv] a non-transitory computer readable storage medium storing computer readable code executable by the processor to perform operations, the operations comprising: [a] accessing financial transaction data from a data source over the Internet for each user of a plurality of users, wherein each financial transaction in a user’s financial transaction data is associated with location 2 Appellant argues the claims together as a group. See App. Br. 5–11. Accordingly, we select independent claim 1 as representative. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2018-003473 Application 14/936,677 3 information indicating a location where the financial transaction occurred; [b] determining, for each user of the plurality of users, a total spend probability, the total spend probability indicating a likelihood that each user’s financial transaction data includes each of the user’s financial transactions aggregated from multiple entities, each user’s total spend probability determined as a function of a presence of financial transactions of a defined transaction type pair, a transaction type pair comprising at least two types of transactions that are correlated with each other within a predefined period, and a presence of financial transactions defined as key transactions, a key transaction comprising a transaction that is expected to occur for each user within a predefined period, wherein: the total spend probability is decreased in response to one or more of determining that a transaction of a defined transaction type pair is missing and an expected key transaction is missing; and the total spend probability is increased in response to one or more of determining that each transaction of a defined transaction type pair is present and an expected key transaction is present; [c] determining a user of the plurality of users that has a total spend probability that satisfies a total spend probability threshold associated with an offer; [d] selecting the user of the plurality of users that has a total spend probability that satisfies the total spend probability threshold for the offer; [e] determining a target location for the offer based on the location information associated with each financial transaction of the user's financial transaction data; [f] polling the one or more sensors at periodic intervals to monitor the user’s location relative to the Appeal 2018-003473 Application 14/936,677 4 target location based on location data received from the one or more sensors; [g] determining that the user’s location satisfies the target location; and [h] presenting the offer to the user on the electronic display responsive to the user’s location satisfying the target location. PRINCIPLES OF LAW A. SECTION 101 An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Court’s two-step framework, described in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental Appeal 2018-003473 Application 14/936,677 5 economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Court held that “a claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- Appeal 2018-003473 Application 14/936,677 6 eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. B. USPTO SECTION 101 GUIDANCE The United States Patent and Trademark Office (“USPTO”) recently published revised guidance on the application of 35 U.S.C. § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”). Under the 2019 Guidance, we first look to whether the claim recites the following: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)). 2019 Guidance, 84 Fed. Reg. 52–55. Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or Appeal 2018-003473 Application 14/936,677 7 (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 2019 Guidance, 84 Fed. Reg. 56. ANALYSIS Step 2A, Prong 1: Under step 2A, prong 1, of the 2019 Guidance, we first look to whether the claim recites any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes). 84 Fed. Reg. 52–55. Limitation [iv.b] recites, inter alia, determining a total spend probability. Limitation [iv.c] recites “determining a user of the plurality of users that has a total spend probability that satisfies a total spend probability threshold associated with an offer.” Limitation [iv.d] recites “selecting the user . . . that has a total spend probability that satisfies the total spend probability threshold for the offer.” Limitation [iv.e] recites “determining a target location for the offer based on the location information associated with each financial transaction of the user’s financial transaction data.” Limitation [iv.g] recites “determining that the user’s location satisfies the target location.” These limitations reasonably can be characterized as reciting mental processes that can be performed in the human mind or with the aid of pencil and paper. More specifically, these steps reasonably can be characterized as mental observations, evaluations, judgments, or opinions. The Appeal 2018-003473 Application 14/936,677 8 2019 Guidance expressly recognizes mental observations, evaluations, judgments, and opinions as patent-ineligible abstract ideas. Accordingly, each of limitations [iv.b], [iv.c], and [iv.g] reasonably can be characterized as reciting patent-ineligible subject matter. Limitation [iv.h] recites “presenting the offer to the user on the electronic display responsive to the user’s location satisfying the target location.” Presenting an offer to a person reasonably can be characterized as a commercial or legal interaction, including a proposal for an agreement in the form of a contract, legal obligation, advertising, marketing or sales activity. The 2019 Guidance expressly recognizes these forms of commercial and legal interactions as certain methods of organizing human activity that constitute abstract ideas. Accordingly, limitation [iv.h] reasonably can be characterized as reciting patent-ineligible subject matter. For these reasons, each of limitations [iv.b], [iv.c], [iv.g], and [iv.h] reasonably is characterized as reciting patent-ineligible subject matter. Step 2A, Prong 2: Under step 2A, prong 2, of the 2019 Guidance, we next analyze whether claim 1 recites additional elements that integrate the judicial exception into a practical application. 84 Fed. Reg. 52–55. Appellant argues that “the claims at issue recite a technological solution that improves the technological process of providing targeted content to users.” App. Br. 8. According to Appellant, [i]n particular, the elements of the claims at issue describe an improvement to the technological process of providing targeted content to users by accessing transaction data for the user over a computer network, determining that the likelihood that the transaction data includes each of the users transactions that are aggregated from multiple different sources satisfies a Appeal 2018-003473 Application 14/936,677 9 threshold value, determining content to provide to the user and a target location for providing the content, monitoring the user’s location on a periodic basis, and providing the content to the user in response to the user’s location satisfying the target location. In this manner, the claims at issue provide content, e.g., offers to a user that the user is likely to use, and in a location where a user is likely to use the content, which is not an abstract idea. App. Br. 9. This argument is unpersuasive. As noted above in the preceding section of this Analysis, the claim steps of making determinations, as well as the step of presenting the offer to the user, constitute recitations of abstract ideas. “It has been clear since Alice that a claimed invention’s use of the ineligible concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018); see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is needed is an inventive concept in the non-abstract application realm.”). Furthermore, limitation [iv.a] recites a step of accessing financial transaction data from a data source over the Internet, and limitation [iv.f] recites a step of polling one or more sensors at periodic intervals to monitor the user’s location. Both of these steps reasonably can be characterized as merely constituting insignificant pre-solution activity: An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered Appeal 2018-003473 Application 14/936,677 10 information by a series of steps in order to detect whether the transactions were fraudulent. MPEP § 2106.05(g). For these reasons, Appellant does not persuade us that claim 1 is directed to an improvement in the function of a computer or to any other technology or technical field. MPEP § 2106.05(a). Nor is claim 1 directed to a particular machine or transformation. MPEP §§ 2106.05(b), (c). Nor has Appellant persuasively demonstrated that claim 1 adds any other meaningful limitations. MPEP § 2106.05(e). Accordingly, Appellant has not persuaded us that claim 1 integrates the recited abstract ideas into a practical application within the meaning of the 2019 Guidance. 84 Fed. Reg. 52–55. Step 2B: Under step 2B of the 2019 Guidance, we next analyze whether claim 2 adds any specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field. 84 Fed. Reg. 56; MPEP § 2106.05(d). The Examiner finds that the claimed hardware components “are generic computing elements performing generic computing functions . . . in a routine and conventional manner that was well-known in the art at the time of the invention.” Final Act. 5 (citing Spec. ¶¶ 21, 33). Appellant disputes this determination. App. Br. 9–11. “[Appellant] asserts that the recited one or more location sensors, which are polled at periodic intervals to monitor the user’s location, are specialized computer hardware elements and are not merely generic computing elements that are used to facilitate performance of the abstract idea.” Id. at 9. Appellant further asserts, for example, that “the claims at Appeal 2018-003473 Application 14/936,677 11 issue are directed to utilizing specialized location sensors that are configured to collect location data at specified intervals to monitor a user’s location. The location sensors are more than mere generic computing hardware that is configured to perform generic computing functions.” Id. These arguments are unpersuasive. The fact that sensors are configured to collect location data at specified intervals does not necessarily mean that the sensors are specialized or more than off-the-shelf components. Appellant provides no persuasive evidence that generic sensors would be unsuitable or incapable of being polled at specified intervals to collect location data. To the contrary, Appellant’s Specification indicates that the generic sensors may be used: The one or more sensors may include GPS sensors, proximity sensors, wireless beacons, network adapters, and/or other sensors configured to determine location data for a user. The one or more sensors may comprise part of an information handling device 102 of the user, such as a smart phone, tablet computer, laptop computer, smart watch, or the like. In a further embodiment, a sensor may comprise a beacon in communication with the user’s information handling device 102 such that when the user comes within a communication proximity of the beacon, the beacon sends the location data of the beacon and/or the user’s information handling device 102 to the location module 204. Spec. ¶ 73. Appellant, likewise, does not provide persuasive evidence that there is anything specialized about the claimed “processor,” “electronic display,” or “non-transitory computer readable storage medium.” See Spec. ¶ 21 (describing known computer readable storage medium), ¶ 23 (“conventional procedural programming languages”), ¶ 25 (“These computer readable program instructions may be provided to a processor of a general purpose computer”), ¶ 33 (describing known displays). Thus, we agree with the Appeal 2018-003473 Application 14/936,677 12 Examiner’s determination that “[n]o specialized computing element is required.” Final Act. 9. And for these reasons, we determine that claim 1 does not recite additional elements that amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. 84 Fed. Reg. 52–55; MPEP § 2106.05(d). Accordingly, we sustain the Examiner’s rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. We, likewise, sustain the 101 rejection of claims 2–13, 18–22, and 24–30, which Appellant does not argue separately. App. Br. 5–11. DECISION The Examiner’s decision rejecting claims 1–13, 18–22, and 24–30 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)(1). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation