ORACLE INTERNATIONAL CORPORATION

Patent Trials and Appeals Board

Jan 24, 2022

2021002753 (P.T.A.B. Jan. 24, 2022)

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. 14/989,049 01/06/2016 Mohammad HAJIAN ORA160099 (O-396) 2080 51444 7590 01/24/2022 Kraguljac Law Group/Oracle P.O. Box 507 Cleveland, OH 44017 EXAMINER TORRICO-LOPEZ, ALAN ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 01/24/2022 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): DDay@KragLaw.com MPusti@KragLaw.com PTOMail@KragLaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte MOHAMMAD HAJIAN ____________ Appeal 2021-002753 Application 14/989,049 Technology Center 3600 ____________ Before NINA L. MEDLOCK, BRUCE T. WIEDER, and KENNETH G. SCHOPFER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL Appellant1 seeks review under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Oracle International Corporation. (Appeal Br. 2.) Appeal 2021-002753 Application 14/989,049 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to a “system and method for determining the priority of mixed-type attributes for customer segmentation.” (Spec., Title (typeface modified).) Claims 1, 11, and 18 are the independent claims on appeal. Claim 1 is illustrative. It recites: 1. A computer-implemented method performed by a computing device where the computing device includes at least a processor for executing instructions from a memory, the method comprising: retrieving at least one computerized data structure, stored in a computerized memory, having (i) sales data representing sales amounts for each customer of a plurality of customers and (ii) demographic attribute data representing a plurality of demographic attributes including both numerical attributes and non-numerical categorical attributes for each customer of the plurality of customers; grouping the plurality of customers, as represented by at least counts of the plurality of customers, (i) into a first group based on customers having a first similar target attribute of having high-spending amounts from the sales amounts, and (ii) into a second group based on customers having a second similar target attribute of having low-spending amounts from the sales amounts relative to the high-spending amounts, wherein the grouping is performed by applying a clustering algorithm to the sales data via at least one processor; generating a first set of bins where each bin is associated with a numerical attribute from the plurality of demographic attributes and a count of the plurality of customers having the numerical attribute; generating a second set of bins where each bin is associated with a non-numerical categorical attribute from the plurality of demographic attributes and a count of the plurality of customers having the non-numerical categorical attribute; filtering one or more demographic attributes from each of the first group and the second group by excluding the one or more Appeal 2021-002753 Application 14/989,049 3 demographic attributes associated with a count being lower than a threshold as determined from the counts in the first set of bins and the second set of bins; generating a corresponding pair of vector data structures for each of the plurality of demographic attributes that remain after the filtering, via the at least one processor, comprising (i) a first vector data structure based on the counts of the first group of customers distributed across the first set of bins and the second set of bins, and (ii) a second vector data structure based on the counts of the second group of customers distributed across the first set of bins and the second set of bins; generating a priority value for each of the demographic attributes to create a plurality of priority values by calculating a normalized distance measure, via the at least one processor, between each corresponding bin from the corresponding pair of vector data structures corresponding to a same demographic attribute of the plurality of demographic attributes; selecting a subset of the demographic attributes based on a ranking of the priority values; and based on the selected subset of demographic attributes, controlling a segmentation of the plurality of customers by generating and transmitting a computerized control message, via network communications, to an external segmentation tool to cause the external segmentation tool to be applied to the selected subset of the demographic attributes for customer segmentation of the plurality of customers for demand forecasting. REJECTION Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Appeal 2021-002753 Application 14/989,049 4 ANALYSIS The § 101 rejection Appellant does not present separate arguments for claims 1-20. We select claim 1 as representative. Claims 2-20 will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. Section 101, however, “contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 573 U.S. at 217. Under the two-step framework, it must first be determined if “the claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if “the elements of the claim . . . contain[] an ‘ “inventive concept” ’ sufficient to ‘transform’ the claimed abstract idea into a patent-eligible application.” Id. at 221 (citing Mayo, 566 U.S. at 72-73, 79). Appeal 2021-002753 Application 14/989,049 5 With regard to step one of the Alice framework, we apply a “directed to” two-prong test to: 1) evaluate whether the claim recites a judicial exception, and 2) if the claim recites a judicial exception, evaluate whether the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception,” i.e., whether the claim integrates the judicial exception into a practical application. See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”). The Examiner determines that claim 1 “recite[s] an abstract idea instructing how to segment demographic data based on prioritized demographic attributes.” (Final Action 3 (emphasis omitted).) The Examiner also determines that “[t]he recited limitations in the claim describing segmenting demographic data based on prioritized demographic attributes (i.e., the abstract idea) fall within the ‘Certain methods of organizing human activity’ grouping of abstract ideas which covers fundamental economic practices and marketing activities.” (Id. at 4.) Appellant argues that “[t]he Examiner’s rationale is a conclusory statement with no evidentiary basis. The rationale does not explain why or how any of the specific claim elements actually recite a type of organizing human activity or how any of the claim elements qualify as a fundamental economic practice.” (Appeal Br. 14.) Appellant argues that “[t]he invention does not fall within any of the enumerated sub-groupings of ‘certain methods of organizing human activity.’” (Id. at 16.) Appeal 2021-002753 Application 14/989,049 6 Under step one of the Alice framework, we “look at the ‘focus of the claimed advance over the prior art’ to determine if the claim’s ‘character as a whole’ is directed to excluded subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). The “directed to” inquiry . . . cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon . . . . Rather, the “directed to” inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether “their character as a whole is directed to excluded subject matter.” Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015). Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In other words, the first step of the Alice framework “asks whether the focus of the claims is on the specific asserted improvement in [the relevant technology] or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Id. at 1335-36; see also 2019 Guidance at 54-55. The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that the invention relates to a “system and method for determining the priority of mixed-type attributes for customer segmentation.” (Spec., Title (typeface modified).) Claim 1 provides further evidence. Claim 1 recites a “method comprising: retrieving at least one computerized data structure . . . having (i) sales data . . . and (ii) demographic attribute data,” “grouping the plurality of customers . . . (i) into a first group . . . and (ii) into a second group,” “generating a first set of bins where each bin is associated with a numerical Appeal 2021-002753 Application 14/989,049 7 attribute from the plurality of demographic attributes and a count of the plurality of customers having the numerical attribute,” “generating a second set of bins where each bin is associated with a non-numerical categorical attribute from the plurality of demographic attributes and a count of the plurality of customers having the non-numerical attribute,” “filtering one or more demographic attributes from each of the first group and the second group,” “generating a corresponding pair of vector data structures for each of the plurality of demographic attributes that remain after the filtering,” “generating a priority value for each of the demographic attributes,” “selecting a subset of the demographic attributes,” and “controlling segmentation of the plurality of customers by generating and transmitting a computerized control message . . . to an external segmentation tool.” In other words, claim 1 recites retrieving data, analyzing/manipulating data (grouping the plurality of customers, generating first and second data bins associated with demographic attributes, filtering demographic attributes, generating vector data structures for demographic attributes, generating priority values for demographic attributes, and selecting demographic attributes), and analyzing/transmitting data (generating and transmitting a control message). Retrieving, analyzing, manipulating, and transmitting data have been determined to be directed to an abstract idea. See, e.g., Univ. of Fla. Research Found., Inc. v. General Elec. Co., 916 F.3d 1363, 1368 (Fed. Cir. 2019) (claims “directed to the abstract idea of ‘collecting, analyzing, manipulating, and displaying data’”), FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (determining “that the ‘realm of abstract ideas’ includes ‘collecting information, including when limited to particular content’” as well as Appeal 2021-002753 Application 14/989,049 8 analyzing and presenting information), Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (treating as an abstract idea “1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data”), Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014) (claims directed to organizing, storing, and transmitting information determined to be directed to an abstract idea). The inquiry as to whether the claims are directed to an abstract idea “often turns on whether the claims focus on ‘the specific asserted improvement in computer capabilities . . . or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’” Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir. 2018) (quoting Enfish, LLC, 822 F.3d at 1335-36). Here, the computing device, i.e., the generically recited processor for executing instructions from a generically recited memory, the generically recited computerized memory, the generically recited network communications, and the generically recited external segmentation tool, are invoked merely as tools. Specifically, we note that claim 1 recites that the method is “performed by a computing device” that includes “a processor executing instructions from a memory.” But claim 1 does not recite how the computing device, memory, network communications, and segmentation tool retrieve the data structure, group the plurality of customers, generate the first and second data bins, filter demographic attributes, generate the vector data structures, generate a priority value for each of the demographic attributes, select demographic attributes, or generate and transmit a control Appeal 2021-002753 Application 14/989,049 9 message to the external segmentation tool. Nor does claim 1 recite how the control message “cause[s] the external segmentation tool to be applied to the selected subset of the demographic attributes for customer segmentation of the plurality of customers for demand forecasting.” Moreover, the segmentation tool is described only in terms of a functional result. In short, there is insufficient detail for how these steps are accomplished. See Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1342 (Fed. Cir. 2017). “As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). The “character of [the] information simply invokes a separate category of abstract ideas.” Id. Moreover, “[a] claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit.” In re Mohapatra, 842 F. App’x 635, 638 (Fed. Cir. 2021). As discussed above, the Examiner identifies claim 1 as reciting “segmenting demographic data based on prioritized demographic attributes” (Final Action 3), and thus, the abstract idea of certain methods of organizing human activity (id. at 4). We agree that retrieving sales and demographic attribute data, grouping customers, generating “bins” associated with demographic attributes and customers having the attributes, filtering demographic attributes from customer groupings, generating data structures based on customer counts and customer groupings across the bins, Appeal 2021-002753 Application 14/989,049 10 generating priority values for the demographic attributes, selecting demographic attributes, and controlling segmentation of customers by generating and transmitting a message to an (unspecified) external segmentation tool, recite marketing or sales activities or behaviors. These fall under the rubric of commercial or legal interactions, and thus are considered certain methods of organizing human activity. (See 2019 Guidance at 52.) Moreover, we do not find any indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record that attributes an improvement in computer technology or functionality to the claimed invention or that otherwise indicates that the claimed invention “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (See 2019 Guidance at 54-55.) Nonetheless, Appellant argues that “[g]enerating a subset of data for the external segmentation tool results in an improved input data set for controlling the external segmentation tool in an improved process using fewer computer resources of memory and processor time (spec [0010- 0011]).” (Appeal Br. 21-22; see also id. at 19-20.) Appellant argues that “[t]he reduction of processor time and memory time is absolutely an improvement to the performance and functionality of the computer.” (Id. at 22.) We do not find this argument persuasive. The computing device is simply relied upon to perform routine tasks, i.e., retrieving, analyzing, manipulating, and transmitting data. Claim 1 is Appeal 2021-002753 Application 14/989,049 11 “focused on providing information to [the user] . . . , not on improving computers or technology.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019). “Like Electric Power, the purported advance ‘is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.’” Id. at 1385 (quoting Elec. Power Grp., 830 F.3d at 1354). “ ‘[C]laiming the improved speed or efficiency inherent with applying the abstract idea on a computer’ [is] insufficient to render the claims patent eligible.” Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1364 (Fed. Cir. 2020) (quoting Intell. Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 1370 (Fed. Cir. 2015)). ENCO Sys., Inc. v. DaVincia, LLC, 845 F. App’x 953, 957 (Fed. Cir. 2021). Here, the elements of the abstract idea, at best, reduce the data set to be operated on. This is not an improvement to computer technology. See, e.g., BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018) (“[A]n improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality.”). “Even if we accept [Appellant’s] assertions, the claimed invention merely improves the abstract concept . . . using a computer only as a tool. This is not what the Supreme Court meant by improving the functioning of the computer itself nor is it consistent with [the Federal Circuit’s] precedent applying this concept.” Customedia Techs., LLC, 951 F.3d at 1363; see also Final Action 6 (“[T]here is no improvement to the functioning of the computer itself; instead, the claims simply provide an improved business process.”). Appeal 2021-002753 Application 14/989,049 12 Therefore, under prong one of the two prong test in the 2019 Guidance, claim 1 recites an abstract idea, i.e., certain methods of organizing human activity; and, under prong two, additional elements in claim 1 do not “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (See 2019 Guidance at 54.) As such, under step one of the Alice framework, claim 1 is directed to an abstract idea, and we move to step two. Step two of the Alice framework has been described “as a search for an ‘ “inventive concept” ’ -i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Alice, 573 U.S. at 217-18 (alteration in original) (quoting Mayo, 566 U.S. at 72-73).2 Appellant argues that “[t]he individual elements do not achieve what the ordered combination achieves: controlling an external segmentation tool with a filtered subset of attributes based on priority values as recited in the claim.” (Appeal Br. 26.) We do not find this argument persuasive. Taking the claim elements separately, the functions performed in claim 1 by the generically recited computing device, memory, network communications, and segmentation tool to retrieve, analyze, manipulate, and transmit data are purely conventional. Retrieving data, analyzing data, manipulating data, and transmitting data are well-understood, routine, and conventional functions previously known to the industry. See Elec. Power 2 We note “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, 899 F.3d at 1290. Appeal 2021-002753 Application 14/989,049 13 Grp., 830 F.3d at 1356 (The claims “do not include any requirement for performing the claimed functions of gathering, analyzing, and displaying in real time by use of anything but entirely conventional, generic technology. The claims therefore do not state an arguably inventive concept . . . .”); see also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (determining receiving, processing, and sending data to be well-known, generic computer-implemented steps), Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (determining claims requiring “arranging, storing, retrieving, sorting, eliminating, determining” to “involve the normal, basic functions of a computer” and to be “conventional, routine, and well-known”), In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”). Considered as an ordered combination, the generically recited computing device, memory, network communications, and segmentation tool add nothing that is not already present when the limitations are considered separately. For example, claim 1 does not purport to improve the functioning of the computing device, memory, network communications, and segmentation tool themselves. Nor does it effect an improvement in any other technology or technical field. Instead, claim 1 amounts to nothing significantly more than an instruction to apply the abstract idea using generic computer components performing routine computer functions. That is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26; see also Inventor Holdings, LLC v. Bed Bath & Appeal 2021-002753 Application 14/989,049 14 Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of receiving, analyzing, modifying, generating, displaying, and transmitting data recited an abstraction). Appellant’s other arguments have been considered but, except as noted below, are not persuasive. New ground of rejection As discussed above, we determine that the functions performed by the additional elements in claim 1 are well-understood, routine, and conventional. However, we recognize that “[t]he Examiner did not make any assertions that [the additional elements] are well-understood, routine, and conventional activities.” (Answer 12; see also Appeal Br. 25, Reply Br. 8-9.) Because of this deficiency in the Examiner’s rejection, we will reverse the rejection and, in view of the foregoing and pursuant to our authority under 37 C.F.R. § 41.50(b), enter a NEW GROUND OF REJECTION against claims 1-20 under 35 U.S.C. § 101, as directed to a judicial exception without significantly more. CONCLUSION The Examiner’s rejection of claims 1-20 under 35 U.S.C. § 101 is reversed. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter a NEW GROUND OF REJECTION against claims 1-20 under 35 U.S.C. § 101, as directed to a judicial exception without significantly more. Appeal 2021-002753 Application 14/989,049 15 Specifically: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1-20 101 Eligibility 1-20 1-20 This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). Section 41.50(b) provides that, “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) further provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THIS DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)