Ex Parte Beckers

Patent Trial and Appeal Board

Aug 15, 2017

12044376 (P.T.A.B. Aug. 15, 2017)

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.
12/044,376 03/07/2008 J. Randall Beckers 1353.1006 7193
21171 7590 08/17/2017
STA AS fr HAT SFY T T P
EXAMINER
SUITE 700 MCCORMICK, GABRIELLE A
1201 NEW YORK AVENUE, N.W.
WASHINGTON, DC 20005 ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
08/17/2017 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
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ptomail @ s-n-h.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. RANDALL BECKERS
Appeal 2015-006274
Application 12/044,376
Technology Center 3600
Before ANTON W. FETTING, CYNTHIA L. MURPHY, and
MATTHEW S. MEYERS, Administrative Patent Judges.
FETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
J. Randall Beckers (Appellant) seeks review under 35 U.S.C. § 134 of
a Final Rejection of claims 1—17, 20, 21, 24, and 25, the only claims pending
in the application on appeal. An oral hearing was held on July 11, 2017.
We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed June 26, 2014) and Reply Brief (“Reply Br.,” filed October 14,
2014), and the Examiner’s Answer (“Ans.,” mailed August 4, 2014), and
Final Action (“Final Act.,” mailed December 26, 2013).
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Application 12/044,376
The Appellant invented a way of retraining a worker when a job loss
occurs. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. An apparatus, comprising: a computer configured to execute
an operation including:
[1] receiving an input request from a working individual;
[2] identifying, by the working individual, a desired new job for
which the working individual would want to receive re-training
in an event of a job loss;
[3] assessing re-training potential of the working individual for
the desired new job;
[4] determining a probability of a job loss of the working
individual when the input request is determined to be accepted
in accordance with the assessing of the re-training potential of
the working individual;
[5] determining a cost of re-training of the working individual
for the desired new job;
[6] determining a cost of time required for the re-training of the
working individual for the desired new job;
[7] determining a cost of a job search of the desired new job for
the working individual;
and
[8] adjusting each cost determined for inflation,
and
[9] wherein a periodic payment to be paid at least in part by the
working individual is determined
for benefit of the working individual to receive the re­
training corresponding to the desired new job and living
expenses when the job loss occurs,
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and
[10] wherein an amount of the periodic payment is presented to
the working individual,
[and]
information of a contract is stored when the amount of
the periodic payment is accepted by the working
individual,
[and]
[11] wherein
suggestions for alternate jobs that the working individual
can be retrained to perform are presented to the working
individual when the periodic payment is not accepted by
the working individual,
and
the amount of the periodic payment is adjusted to
correspond with a different desired new job selected from
the alternate jobs by the working individual when the
periodic payment is not accepted by the working
individual;
and
[12] wherein the working individual obtains funds to receive
the re-training and living expenses when the job loss occurs.
The Examiner relies upon the following prior art:
Claims 1—17, 20, 21, 24, and 25 stand rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
Renes
Wenger
Annappindi
US 2003/0074231 A1 Apr. 17, 2003
US 2003/0233242 A1 Dec. 18, 2003
US 2005/0125259 A1 June 9, 2005
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Claims 1—17, 20, 21, 24, and 25 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Annappindi, Renes, and Wenger.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice. The issues of
obviousness turn primarily on whether it was predictable to incorporate
Wenger’s practices in an insurance product coverage.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Annappindi
01. Annappindi is directed to calculation and utilization of
unemployment risk scores in the unemployment insurance
industry. Annappindi para. 2.
02. Annappindi describes a scientifically calculated unemployment
score for employees based on their personal employment
characteristics and national employment and unemployment data
that indicates the employee's likelihood of becoming unemployed
in a given period. Annappindi para. 20.
03. Annappindi describes an example in which selecting and
combining the category variables “semi-skilled” for occupation,
“high-school” for education, “construction” for industry, and
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“Midwest” for region creates a unique risk class which has a class-
specific unemployment rate of 8.80%, compared to the national
unemployment rate of 6.0%. In Class Example 2, when the
category variables selection is changed to create a new unique
class consisting of “managerial,” “college,” “financial,” and
“northeast,” essentially representing a risk-class of employees
with these attributes, the unemployment rate computes to 5.30%.
In Class Example 3 the unemployment rate for another risk class
consisting of employees with attributes of farming, below high
school, agriculture, and pacific computes to 11.10%. The third
example would therefore represent the class with the highest
likelihood of unemployment. Annappindi para. 93.
Renes
04. Renes is directed to insurance covering financial consequences of
termination of contracts, be it through breach or mutual consent of
the contracting parties or for other reasons. Renes para. 1.
05. Renes describes, in determining the amount to be charged, the
software can determine the amount to be charged a prospective
participant based, at least in part, on the prospective participant’s
age and the prospective participant’s partner’s age. The software
can also determine the amount to be charged based, in part, on the
prospective participant’s projected earnings or on the prospective
participant’s partner’s projected earnings. Renes para. 35.
06. Renes describes the amount to be charged a participant changing
in view of changed circumstances in the participant’s life or
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environment. For example, the computer software can receive and
interpret information such as prevailing interest rates, the inflation
rate, the deflation situation, the economic perspective, or, on a
more personal level, educational achievement of the participant or
the participant's partner or child, birth of a child, death of a child,
disability of a participant, disability of a partner, return on
investment of investments made with the periodic amounts, and
any combination thereof. Renes para. 36.
Wenger
07. Wenger is directed to supplying employment training and analysis
services that are designed to assist in reintegrating eligible
veterans and other unemployed individuals into meaningful
employment within the labor force. Wenger para. 1.
08. Wenger describes an internet-based planning and evaluation tool
known as the Academic Credit for Employment and Training (or
“ACET”) Auditor. The ACET Auditor provides unique
information, credit auditing and record keeping services to assist
veterans and others with opportunity identification and analysis
during career planning. The method and system audits personal
transcripts and employment records against credits or program
requirement and provides a report on the advanced standing that
veterans can achieve at particular institutions based on their
military, employment and training records. This method and
system makes it possible for veterans and others to compare any
number of career options, including the time/cost of training, as
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they develop a comprehensive employment development plan. It
allows them to engage in this auditing process at many times in
their careers. The audit report issued by the system details
requirements and costs involved with pursuing specific careers at
learning institutions, schools, programs and other training
programs approved by state educational boards under of the
United States Code. It details credit awards that are possible in
many fields of study and it supplies core training for veterans.
The system focuses on a variety of high need fields such as
teaching, engineering and nursing, and encourages veterans to
engage in opportunity analysis as they map their training and
employment plans. Personal transcript analysis and credit
auditing services provided by the system deliver information on
possible credit awards for advanced standing status in academic
programs and certification programs at local and regional
institutions of higher education. Record keeping systems provide
a platform for mapping and recording life-long education and
employment plans and achievements for each veteran or other
individual who chooses to participate in and take advantage of this
system. By virtue of this program, ACET Auditor provides
training to develop job skills and enhance job readiness. It offers
links to training and job listings in expanding industries. It
supplies links to vital information on placement and training
options during opportunity identification stages of employment
planning and offers ongoing access to personal employment
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record-keeping systems and supplies online systems for post­
placement follow-up. Wenger para. 6.
ANALYSIS
Claims 1—17, 20, 21, 24, and 25 rejected under 35 U.S.C. §101
as directed to non—statutory subject matter
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First,. . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us?” To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis 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 Corp., Pty. Ltd. v CLS Bank Inti, 134 S. Ct. 2347, 2355 (2014)
(citations omitted) (quoting Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 72—73, 78, 79 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept.
While the Court in Alice made a direct finding as to what the claims
were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
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The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in a working individual obtaining funds to receive re­
training and living expenses when a job loss occurs. The Specification at
paragraph 2 recites that the invention relates to a way of retraining a worker
when a job loss occurs. Thus, all this evidence shows that claim 1 is
directed to retraining a worker when a job loss occurs, i.e., unemployment
insurance.
It follows from prior Supreme Court cases, and Bilski v Kappos, 561
U.S. 593 (2010), in particular, that the claims at issue here are directed to an
abstract idea. Like the risk hedging in Bilski, the concept of unemployment
insurance is a fundamental business practice long prevalent in our system of
commerce. The use of unemployment insurance is also a building block of
social insurance. Thus, unemployment insurance, like hedging, is an
“abstract idea” beyond the scope of § 101. See Alice, 134 S. Ct. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of unemployment insurance at issue
here. Both are squarely within the realm of “abstract ideas” as the Court has
used that term. See Alice, 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (holding that “collecting information, analyzing
it, and displaying certain results of the collection and analysis” are “a
familiar class of claims ‘directed to’ a patent ineligible concept”); see also In
re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
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FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data collection, analysis, and
computation and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314—15 (Fed. Cir. 2016) (finding claims not abstract because
they “focused on a specific asserted improvement in computer animation”).
The wherein clause reciting obtaining funds is not a step as such and does
not recite any technological basis for its occurrence in any event, and so is
no more than another abstract conceptual advice. As such, claim 1 is
directed to the abstract idea of receiving, analyzing, and computing data.
The remaining claims merely describe particular parameters
employed. We conclude that the claims at issue are directed to a patent-
ineligible concept.
The introduction of a computer into the claims does not alter the
analysis under Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply if” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
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process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, identify, analyze data amounts to electronic data query
and retrieval—one of the most basic functions of a computer. The limitation
of “wherein the working individual obtains funds to receive the re-training
and living expenses when the job loss occurs” is not a step, but a recitation
of an aspiration for the individual to achieve as a result of the steps, which is
not a step performed by the computer and is perceptible only in the human
mind during the steps and accordingly afforded no patentable weight. All of
these computer functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant’s method claims
simply recite the concept of unemployment insurance as performed by a
generic computer. To be sure, the claims recite doing so by advising one to
use data regarding an individual’s state and background to determine various
costs associated with training and job search and then advising subsequent
payment. But this is no more than abstract conceptual advice on the
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parameters for such insurance and the generic computer processes necessary
to process those parameters, and do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 12 pages of specification do not
bulge with disclosure, but only spell out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of insuring
against job loss under different scenarios. They do not describe any
particular improvement in the manner a computer functions. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of unemployment insurance using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] . . . against” interpreting § 101
“in ways that make patent eligibility ‘depend simply on the
draftsman’s art.’”
Alice, 134 S. Ct. at 2360 (citation omitted).
We are not persuaded by Appellant’s argument that
the claims recite features of a particular method having a
practical application including optimized determination of a
periodic payment amount for re-training a working individual
(worker) for a desired job identified by the working individual
for benefit of the working individual to receive the re-training
corresponding to the desired new job and living expenses.
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Reply Br. 3. A payment determination is a quantitative mathematical
algorithm, which by itself has long been held to be an abstract idea. See
RecogniCorp, LLCv. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir.
2017) (“A process that started with data, added an algorithm, and ended with
a new form of data was directed to an abstract idea.”); see also Gottschalk v.
Benson, 409 U.S. 63, 71—72 (1972). As we find supra, the wherein clause
regarding payment is not part of the sequence of steps defined by the claim,
and even if it were, a step of payment is itself an abstract concept absent any
particular payment implementation. Payment may be no more than storing
bits in memory or writing an IOU, or even a mental promise. The concept of
paying someone is itself an abstraction for the various manners in which one
might be compensated.
We are not persuaded by Appellant’s argument that the claims recite
specific programming. Reply Br. 4. Conventional programming is not
inventive matter. Elec. Power Group, 830 F.3d at 1354—55.
We are not persuaded by Appellant’s argument that
[i]n addition to “determining a periodic payment for retraining
funds and living allowance”, the claimed invention provides a
way for a working individual to obtain economic assistance
(i.e., retraining, living expenses) in a manner that is controlled
by the working individual for his/her benefit. Contrary to
typical practice of general premium payments, the claimed
invention enables a determination based on factors controlled
by the working individual (identified “a desired job” in which
to receive re-training, selection from “suggestions for alternate
jobs”, in claim 1). The claimed determination is limited to
determination of a periodic payment for retraining funds and
living allowance consistent with “identifying, by the working
individual, [of] a desired new job [in which] to receive re­
training”, for example.
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Claim 1 sets forth additional operations including
“assessing re-training potential of the working individual for a
desired new job identified by the working individual”,
“determining a probability of a job loss”, providing
“suggestions for alternate jobs”, “adjusting] the amount of the
periodic payment to correspond with a different desired new job
selected from the alternate jobs.” These operations sufficiently
confine the determination to a particular application of
providing coverage in an event of a job loss and do not cover
“fundamental economic practice.”
Reply Br. 4—5. Appellant contends no more than that insurance premiums
are computed based upon novel criteria. The criteria used as parameters in a
mathematical algorithm are part of that algorithm and so are equally abstract
and ineligible. That the insurance proceeds might be used for some useful
purpose, absent any implementation as to how the process are converted into
something that actually results in that purpose, is both outside the scope of
the claim and no more than an aspiration. That the insurance is cabined to a
particular risk is no more than saying that the algorithm parameters are so
cabined. Little is more abstract than the concept of risk assumption, i.e.,
insurance.
We are not persuaded by Appellant’s argument that
[t]he specific determination of a periodic payment amount for
re-training and living expenses as claimed enables a working
individual to receive economic assistance and retraining that
can be controlled by the working individual when a non-cause
related job loss occurs and thus, provides a benefit to insurance
industry in providing user-controlled determination of payment
amount for coverage.
Reply Br. 5. What a payment is large enough to pay for is of no patentable
consequence. Simply providing a payment does not cause such things to
occur. The claim steps as such do no more than compute the amount, and do
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not actually do anything with that computation. The wherein clause
suggests an aspiration to provide that amount subsequent to the end of the
claimed process, in the event of a subsequent insurable loss. To the extent
Appellant contends that simply providing user control over the computation
is non-abstract, Appellant provides no coherent argument as to why this is
so. An abstract concept remains abstract no matter who conceives it and
manipulates its parameters.
Claims 1—17, 20, 21, 24, and 25 rejected under 35 U.S.C. § 103(a)
as unpatentable over Annappindi, Renes, and Wenger
The Examiner finds that Annappindi describes the unemployment
insurance limitations and Wenger describes the recited factors for
determining cost of training. Renes is applied for the sole inflation
protection limitation. There is no dispute that the art describes these as such.
The issue is whether it was predictable to incorporate Wenger’s costs in an
insurance product coverage.
As Renes explicitly describes the need for retraining in the event of
unemployment, the only issue is whether what the payments for
unemployment insurance is computed to cover is of patentable weight, and if
so, whether it was predictable to include the costs Wenger describes in the
computation. We find that first, what unemployment insurance is computed
to cover is undeserving of patentable weight, as this is discemable only in
the human mind. In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969). But
even granting this weight, Wenger shows it was predictable to include the
need for retraining in the scope of the insurable loss in an unemployment
insurance instrument such as that in Annappindi. Although Wenger does not
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describe using its costs in an insurance computation, the fact that Wenger
describes these costs as arising in an unemployment context and Annappindi
describes unemployment insurance is sufficient to suggest to one of ordinary
skill in the insurance and risk assumption arts including the costs of
retraining in what an unemployment insurance contract covers.
As to the remaining claims, the arguments for them simply recite the
added limitations and allege they are not found. This is insufficient to act as
a separate argument under 37 C.F.R. § 41.37. As our reviewing court held,
we hold that the Board reasonably interpreted Rule 41.37 to
require more substantive arguments in an appeal brief than a
mere recitation of the claim elements and a naked assertion that
the corresponding elements were not found in the prior art.
In re Lovin, 652 F.3d 1349, 1357 (Fed Cir 2011).
CONCLUSIONS OF LAW
The rejection of claims 1—17, 20, 21, 24, and 25 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter is proper.
The rejection of claims 1—17, 20, 21, 24, and 25 under 35 U.S.C.
§ 103(a) as unpatentable over Annappindi, Renes, and Wenger is proper.
DECISION
The rejection of claims 1—17, 20, 21, 24, and 25 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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