Ex Parte Crocker et al

Patent Trial and Appeal Board

Jul 13, 2018

12410363 (P.T.A.B. Jul. 13, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/410,363 03/24/2009
21186 7590 07/17/2018
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
UNITED ST A TES OF AMERICA
Larry E. Crocker
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.
2894.00lUS 1 3055
EXAMINER
SHANKER, TIJLIE MEYERS
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
07/17/2018 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):
uspto@slwip.com
SLW@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LARRY E. CROCKER and
WILLIAM SEAN HARRISON
Appeal2017-004343
Application 12/410,363
Technology Center 3600
Before JOSEPH L. DIXON, CATHERINE SHIANG, and
BETH Z. SHAW, Administrative Patent Judges.
DIXON, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-004343
Application 12/410,363
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-15 and 18-21. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
The claims are directed to systems and methods for enforcing
fiduciary compliance and calculating a fiduciary compliance score based on
the cumulative task score and the client efficiency score. (Spec. Abs.).
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for enforcing compliance with a fiduciary
responsibility related to administration of a retirement plan, the
method comprising:
accessing a compliance requirement corresponding to a
fiduciary responsibility related to administration of the
retirement plan by a fiduciary;
extracting a compliance task from the compliance
requirement;
determining a due date for the compliance task based on a
date associated with the compliance requirement;
storing the compliance task in a compliance task database,
the storing done at least in part through use of one or more
processors within a computer system communicatively coupled
to the compliance task database;
monitoring, automatically via instructions stored within
the computer system and using the one or more processors to
execute the instructions, compliance activity related to the
compliance task;
sending, from the computer system, an automatically
generated alert, the alert automatically generated based on
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Application 12/410,363
detecting, via the monitoring, that the compliance task meets a
specified alerting condition;
receiving, on the computer system using instructions
executed on the one or more processors, a response to the alert
and determining, via instructions executed on the one or more
processors, whether any follow up action needs to be taken;
calculating, automatically by instructions executed on the
one or more processors within the computer system, a cumulative
task score, wherein the instructions for calculating the
cumulative task score include an algorithm that modifies a task
score by a task type modifier for each compliance task, and
wherein the task score for the compliance task is based on a point
value associated with the compliance task;
calculating, automatically by instructions executed on the
one or more processors within the computer system, a client
efficiency score associated with the compliance task, the client
efficiency score calculated based at least in part on a client
response factor and a client commit factor extracted from the
monitored compliance activity, wherein the instructions for
calculating the client efficiency score include an algorithm that
modifies the client response factor by a task type modifier before
factoring in the client commit factor for each compliance task in
the monitored compliance activity; and
calculating, automatically by instructions executed on the
one or more processors within the computer system, a fiduciary
compliance score based on the cumulative task score and the
client efficiency score.
REFERENCES
No prior art relied upon by the Examiner in rejecting the claims on
appeal.
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Application 12/410,363
REJECTION
The Examiner made the following rejection:
Claims 1-15 and 18-21 stand rejected under 35 U.S.C. § 101 because
the claimed invention is not directed to patent eligible subject matter.
ANALYSIS
35 us.c. § 101
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent ineligible subject matter. See Final Act. 2-5, 5-9; Ans.
2-12. In particular, the Examiner finds the claims are directed to the
abstract idea of "retrieving and comparing information and determining
whether information meets specified conditions, and if so executes follow-
up actions." (Final Act. 3). The Examiner further finds that this is "in
essence the comparing of information and the use of rules to determine what
compliance workflow to perform." (Final Act. 3). Additionally, the
Examiner finds "while related to different subject matter, the current claims
are similar to concepts relating to performing mathematical calculations
found by the courts to be abstract, such as managing a stable value protected
life insurance policy by performing calculations and manipulating the
results." (Final Act. 3). Additionally, Examiner finds:
The current claims, while related to different subject matter are
considered to be similar to the abstract idea of SmartGene, Inc.
v. ABL (Fed. Cir. 2014) where it was found that the comparing
of information and using rules to identify options was a patent
ineligible abstract idea. In the pending claims, applicant is
(retrieving and comparing information and determining whether
information meets specified conditions, and if so executes
follow-up actions.) This is in essence the comparing of
information and the use of rules to determine what compliance
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workflow to perform. Additionally, while related to different
subject matter, the current claims are similar to concepts relating
to performing mathematical calculations found by the courts to
be abstract, such as managing a stable value protected life
insurance policy by performing calculations and manipulating
the results. Bancorp Servs. LLC v. Sun Life Assurance Co. (Fed.
Cir. 2012).
(Final Act. 3). Lastly, the Examiner asserts that:
the claims are directed to a fundamental economic practice and
method of organizing human activity. The present claim set is
directed to a fundamental economic practice as monitoring
compliance with fiduciary responsibilities describes a concept
relating to legal obligations between two parties. Further, the
claims could further be considered a method of organizing
human activity, as the claims relate to managing relationships
between people, similar to those in BuySAFE, Bilski, Alice Corp.,
and Dealertrack. Thus, the claims are directed towards an
abstract idea.
(Final Act. 3).
Appellants disagree with the Examiner's analysis and findings and
contend that the pending claims are "not comparable to either the abstract
ideas represented in Smartgene or Bancorp and the claims recite a patent
eligible application within the fiduciary compliance field that improves the
functioning of computer technology." (App. Br. 9). Appellants further
contend that "the claims are focused on monitoring and scoring actions taken
in fulfilling a fiduciary responsibility to produce an objective measure of
compliance." (App. Br. 10). Finally, Appellants contend more than a
generic computing system or a generic computer and "recited combination
of elements in the pending claims improve the functioning of computer
technology in monitoring and objectively scoring performance of fiduciary
duties in management of a retirement plan." (App. Br. 10).
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Appellants expand upon each of the Examiner's separate contentions
and argue that none of the pending claims are directed to the very limited
abstract idea found to be ineligible in the non-precedential Smartgene and
Bancorp cases. (App. Br. 10-14). Additionally, Appellants identify that
the Examiner's discussion in the Final Action did not correspond to the
express claim language. (App. Br. 14).
Appellants contend that:
the claims at issue are not directed to a fundamental practice long
prevalent in our system of commerce[, but] ... the claims at issue
are directed to a specific set of operations for monitoring and
objectively evaluating (e.g., scoring) compliance with fiduciary
duties related to administration of a retirement plan. This is
neither a method of organizing human activity nor a fundamental
economic practice like risk management or intermediated
settlement.
(App. Br. 14-15)(emphasis omitted).
Appellants contend that the "recited operations do not define some
fundamental economic practice long prevalent in our system of commerce
because they are not, in and of themselves, economic in nature." (App. Br.
15). Appellants further argue that:
support for an allegation that a claim is a fundamental economic
practice requires proof, such as references to old publications and
historical publications. The Examiner has provided no such
proof. In fact, the Examiner has not articulated any rejections of
the claims at issue under either 35 U.S.C. § 102 or 35 U.S.C.
§ 103, much less provided any references to old publications or
historical publications that would suggest that the recited
combination of operations amounts to a fundamental economic
practice. It is not clear how a combination of computerized
operations, which cannot be shown ever to have been performed
before can be found to constitute a fundamental economic
practice long prevalent in our system of commerce or be
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considered a mere method of organizing human activity not
eligible for patent protection.
(App. Br. 15).
The Examiner attempts to clarify in the Examiner's Answer and more
closely parallel the claim language in the Examiner's response to the
argument section, but the Examiner does not specifically provide evidence to
support the Examiner's findings. (Ans. 3-8). The Examiner responds to
Appellants' argument that the claims at issue are not directed to a
fundamental practice long prevalent in our system of commerce. (Ans. 7-8).
Specifically, the Examiner finds:
Appellant's argument that the examiner has not provided any
proof and points to the lack of a prior art rejection is
unpersuasive, as "The term 'fundamental' is used in the sense of
being foundational or basic, and not in the sense of necessarily
being 'old' or 'well-known."' Moreover, the courts consider the
determination of whether a claim is eligible to be question oflaw.
Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any
factual findings. For example, Alice Corp., Myriad, Mayo, Bilski,
Diehr, Flook and Benson relied solely on comparisons to be
exceptions in past decisions and did not cite any evidence.
(Ans. 8).
In the Reply Brief, Appellants contend that the Examiner is splitting
the alleged abstract idea into two which does not align with the USPTO
Guidelines. Appellants argue "the entire abstract idea identified by the
Examiner must be compared and found similar an abstract idea from a
previous court case. The entire point of the abstract idea judicial exception
is to prevent Applicants from broadly excluding innovation within an entire
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technology area." (Reply Br. 3). Appellants present separate arguments to
the two parts of the abstract idea. (Reply Br. 3---6). Appellants contend:
these are not fundamental mathematical truths or even well-
known calculations, but rather just a mathematical description of
a particular method of objectively accessing compliance with
fiduciary responsibilities involving, inter alia, monitoring
compliance tasks and scoring aspects such as efficiency in
performing said tasks. Accordingly, Appellants respectfully
submit that the Examiner clearly errors in asserting that even the
second part of the alleged judicial exception involves nothing
more than a fundamental mathematical relationship or equation.
(Reply Br. 6).
Section 101 of the Patent Act provides "[ w ]hoever 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. That provision "'contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). According to the Supreme Court:
[W]e 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, we 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, we 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 .... We have
described step two of this analysis as a search for an "'inventive
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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., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and
the Alice step-two inquiry as looking more precisely at what the claim
elements add-whether they identify an "inventive concept" in the
application of the ineligible matter to which the claim is directed. See
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed.
Cir. 2016); Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).
According to the Federal Circuit, "[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'! Ass 'n, 776 F.3d 1343, 1347--48 (Fed. Cir. 2014) and Alice,
134 S. Ct. at 2359).
We have reviewed the Examiner's rejection in light of Appellants'
contentions and the evidence of record. We concur with Appellants'
contention that the Examiner erred in this case. 1 Appellants argue with
respect to the Alice step-two analysis, the Examiner has not provided any
1 Appellants raise additional arguments. Because the identified issue is
dispositive of the appeal, we do not reach the additional arguments.
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evidence to support the Examiner's assertion that the claimed limitations
perform well-understood, routine, and conventional functions or steps. (See
App. Br. 9--15; Reply Brief 3-8).
The Examiner responds that "the courts consider the determination of
whether a claim is eligible to be question of law. Accordingly, courts do not
rely on evidence that a claimed concept is a judicial exception." (Ans. 8).
However, as the Berkheimer court held, "[ w ]hether 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.
Therefore, we are constrained by the record to reverse the Examiner's
rejection of claims 1-15 and 18-21 on procedural ground.
CONCLUSION
The Examiner erred in rejecting claims 1-15 and 18-21 based upon a
lack of patent eligible subject matter under 35 U.S.C. § 101.
DECISION
For the above reasons, we reverse the Examiner's rejection of claims
1-15 and 18-21 based upon a lack of patent eligible subject matter under 35
U.S.C. § 101.
REVERSED
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