Connie Nichols et al.

Patent Trials and Appeals Board

Oct 1, 2019

12604326 - (D) (P.T.A.B. Oct. 1, 2019)

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.
12/604,326 10/22/2009 Connie Nichols 1421744.142US1 8286
21874 7590 10/01/2019
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
EXAMINER
LIU, I JUNG
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
10/01/2019 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CONNIE NICHOLS and COURTNEY ARMSTRONG
____________

Appeal 2018-006252
Application 12/604,3261
Technology Center 3600
____________

Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and
CARL L. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–6, which constitute all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is identified as Blackrock, Inc. Appeal Br. 2.

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STATEMENT OF THE CASE
The invention relates to a system for calculating estimated Social
Security benefits for married couples. Abstract; Spec. 1:12–15, 3:15–19,
6:4–17, Fig. 1. Claim 1, reproduced below, is exemplary of the subject
matter on appeal (emphasis added):
1. A system for calculating estimated Social Security benefits
for a married couple, the system comprising:
a benefits estimator server;
a rules database networked coupled to and separate from the
benefits estimator server configured to automatically update to reflect
change in rules regarding calculation of social security benefits
wherein the rules database is coupled to the benefits estimator server
via a network;
a user device coupled, via a network, to the benefits estimator
server via the Internet;
a user interface provided by the benefits estimator server, the
user interface being configured to receive input from the user device
and to display content on the a display provided on a display provided
on the user device;
a calculator provided by the benefits estimator server
configured to receive input data from the user interface and to receive
social security calculation rules from the rules database and is further
configured to output data to the user display based on the received
input data and social security calculation rules, wherein the input data
includes data regarding both a primary earner and a secondary
earner in a married couple, including an estimated age of death for
both the primary earner and the secondary earner, and wherein the
output data includes benefits for a plurality of Social Security benefits
categories for the married couple including:
a value when both the primary and the secondary earner take
benefits at age 62;
a value when both the primary and the secondary earner take
benefits at full retirement age;
a value when both the primary and the secondary earner take
benefits at age 70; and
a value when the married couple employs a hybrid approach
wherein the secondary earner collects a reduced benefit at age 62 and
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a spousal benefit at full retirement age, and wherein the primary
earner collects benefits at age 70.

Appeal Br. 16–17 (Claims Appendix).

THE REJECTIONS
Claims 1–6 are rejected under 35 U.S.C. § 101 because the claimed
invention is directed to patent-ineligible subject matter. Final Act. 2–7.

ANALYSIS
We have reviewed the Examiner’s rejection in light of Appellants’
contentions and the evidence of record. We concur with Appellants’
contentions that the Examiner erred in this case.
Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the
Patent Act, which recites:
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.
There are, however, three judicially created exceptions to the broad
categories of patent-eligible subject matter in 35 U.S.C. § 101: “‘[l]aws of
nature, natural phenomena, and abstract ideas.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quotation marks and citation
omitted); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
70 (2012) (brackets in original).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. See 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
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claim is “directed to.” See id. 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
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, 69 (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 (1854))); 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
Supreme 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 191–92 (“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 Supreme 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
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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-eligible application.” Alice, 573 U.S. at 221 (citation). “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. (quoting Mayo, 566 U.S. at 77, (alteration in original)).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The United States Patent and Trademark Office (“USPTO”) recently
published revised guidance on the application of § 101. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Guidance”). Under that guidance, we first determine whether the
claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity 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)).
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:
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(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
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 54–56.
Turning to Step 2B of the Guidance, “[t]he second step of the Alice
test is satisfied when the claim limitations ‘involve more than performance
of []well-understood, routine, [and] conventional activities previously
known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed.
Cir. 2018) (quoting Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) and
Alice, 573 U.S. at 225). “Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer, 881 F.3d at 1369.
We have reviewed Appellants’ claims and contentions in detail and in
light of current precedent and guidance (supra). We find Appellants have
raised a dispositive issue with respect to the Examiner’s Step 2B Eligibility
Analysis. Accordingly, we need not present a detailed claim construction or
analysis under the 2019 Revised Guidance Step 2A. We need address only
whether the Examiner has provided a proper rejection under Step 2B.

The § 101 Rejection of claims 1–6
In the Final Action, the Examiner determines the claims are ineligible
because they are directed to the abstract idea of calculating social security
benefits which constitutes a mathematical relationship. Final Act. 2–3. The
Examiner further determines the high level generic computer functions do
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not add significantly more to render the claims patent eligible. Id. at 5–6.
According to the Examiner, “[t]he benefit estimator server is recited at a
high level of generality and its broadest reasonable interpretation comprises
only a microprocessor, memory and estimator to simply perform the generic
computer functions of receiving and processing information. Generic
computers performing generic computer functions, alone, do not amount to
significantly more than the abstract idea.” Id. at 3. The Examiner
determines that “a user device as recited is a generic computer component
that performs functions (i.e., calculate data and output data) that are well-
understood, routine, and conventional activities previously known to the
industry” and “which do not add meaningful limitations to the idea of
calculating estimated Social Security benefits for a married couple beyond
generally linking the system to a particular technological environment, that
is, implementation via computers.” Id. at 4–5.
Appellants argue the Examiner ignores that claim 1 recites “at least
three separate computing devices . . .” and argue that “claim 1 set[s] forth a
novel computing system (as demonstrated by the lack of any prior art
references teachings or suggesting such [a] system) having at least three
separate computing devices providing an improved database architecture
enabling flexibility in data management for estimating social security
benefits.” Id. at 8 (citing Spec., Fig. 1). In particular, Appellants argue
“[b]ased on the above architecture of the present application, the claims set
forth a computer system that is beyond a mere abstract idea as it is clearly
directed to an improvement in computer-related technology via the novel
computing system. . . .” Id. at 10.
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Appellants further argue the Examiner does not present the required
prima facie case for the rejection. Id. at 13–14.
In the Answer, the Examiner states:
In the current claim limitation, the database is a generic database. The
appellant has not improved the database or the server. In the current
limitation, the computing devices are generic computing devices. The
appellant’s has not improved the computing devices. The appellant has
not improved the conventional calculator. Moreover, it is to be noted
that unlike rejections under 102 and 103 which are evidenced base,
rejections under Alice 101 is not evidence based but rather is a matter
of law and such, no tangible evidence or examples are required.

Ans. 2–3.
In the Reply Brief, Appellants reiterate that the Examiner
oversimplifies the claim, and points out the significance of the “at least three
separate computing devices.” Reply Br. 3–4. Appellants argue:
It is not proper for the Examiner to make a boilerplate rejection
by asserting a claimed feature is well-understood, routine and
conventional absent any support. As explained in the USPTO
memorandum issued April 19, 2018, and responsive to Berkheimer v.
HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), if the Examiner believes the
claimed elements are routine and conventional, the Examiner is
mandated to factual support that it is indeed common knowledge in the
field as the Federal Circuit held that “[w]hether something is well-
understood, routine, and conventional to a skilled artisan at the time of
the patent is a factual determination.” Id. at 1369[.]
Appellant has argued and explained to the Examiner in its Appeal
Brief that the claimed feature of having at least three separate
computing devices providing an improved database architecture
enabling flexibility in data management for estimating social security
benefits is unique and advantageous and certainly not “well-
understood, routine and conventional.” Nevertheless, the Examiner
continues to maintain the position that it is merely a “generic database”
without any factual support.

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Reply Br. 4–5.
In this case, the Examiner makes factual findings about elements of
the claims and asserts “[t]here is no requirement to provide evidence.
Unlike 102 and 103, which is evidenced based, 101 is a question of law and
evidence is not required.” Ans. 3–5. Appellants argue that “the claimed
features of independent claim 1 are not ‘routine and conventional’ and the
examiner has certainly not meet his burden to prove otherwise.” Reply Br.
5.
We agree with Appellants, because the Examiner has not provided
sufficient evidence required by Berkheimer to support the “routine and
conventional” factual findings. See Berkheimer, 881 F.3d at 1369. In
particular, the Memorandum of Changes in Examination Procedure
Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility
Decision (Berkheimer v. HP, Inc.) (“Berkheimer Memorandum”) requires
the information listed below:
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s). . . .
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element(s). . . .

Berkheimer Memorandum at 3–4. But the Examiner has not provided any of
the four categories of information required by the Berkheimer
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Memorandum. Rather, the Examiner merely provides conclusory and high-
level general statements (Final Act. 3–5; Ans. 2–6), which are insufficient
for meeting the requirements set forth in Berkheimer. See Berkheimer 881
F.3d 1369–1370. We additionally note the Examiner’s Answer was mailed
on March 22, 2018, over a month after the February 8, 2018 Berkheimer
decision.
Because the Examiner erred with respect to Step 2B of the Guidance
and Berkheimer requirements, we are constrained on this record to reverse
the Examiner’s rejection of independent claim 1, and corresponding
dependent claims 2–6 on procedural grounds.

DECISION
We reverse the Examiner’s decision rejecting claims 1–6 under
35 U.S.C. § 101.

REVERSED