Ex Parte De Sena et al

Patent Trial and Appeal Board

Nov 7, 2018

12335217 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/335,217 12/15/2008
27667 7590
HA YES SOLOWAY P.C.
4640 E. Skyline Drive
TUCSON, AZ 85718
11/09/2018
FIRST NAMED INVENTOR
Francis E. De Sena
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.
GLH 08-907358 9677
EXAMINER
IWARERE, OLUSEYE
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
admin@hayes-soloway.com
nsoloway@hayes-soloway.com
dlandau @hayes-soloway.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRANCIS E. DE SENA, FRANK FAZIO, and JEFF E. NANTAIS
Appeal2017-002743
Application 12/335,217
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Francis E. De Sena, Frank Fazio, and JeffE. Nantais (Appellants) seek
review under 35 U.S.C. § 134(a) of the Examiner's Final Rejection of claims
42-79, the only claims pending in the application on appeal. Claims 1--41
have been cancelled. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed April 8, 2016) and Reply Brief ("Reply Br.," filed December 6,
2016), and the Examiner's Answer ("Ans.," mailed October 7, 2016), and
Final Action ("Final Act.," mailed August 10, 2015).
Appeal2017-002743
Application 12/335,217
The Appellants invented a form of mortgage transaction management
and reporting. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 42, which is reproduced below (bracketed matter and some
paragraphing added).
42. A computer-implemented method of providing mortgage
reporting and management through a network, the method
compnsmg:
[1] receiving, by a processor, and storing, in computer-readable
media at least partially accessible through the electronic
network,
mortgage information associated with a mortgage;
[2] generating, by the processor, at least one mortgage report
using said mortgage information;
[3] issuing said at least one mortgage report;
[ 4] displaying a real-time status of said mortgage;
[5] provisioning real-time interactive input through the
network, by a plurality of authorized parties,
and
to update said mortgage information and said real-time
status,
each of said plurality of authorized parties having
predefined privileges for accessing and updating data;
[ 6] responding to authorization from a solicitor,
by generating, storing and issuing a certified, secure
mortgage registration report
in real-time to said plurality of authorized parties.
Claims 42-79 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
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ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
Method claim 42 recites receiving mortgage data, generating and issuing
a report, displaying a real time status of a mortgage, providing real time
interactive input to update mortgage data, and storing and issuing a report in
real time in response to authorization. Thus, claim 42 recites receiving,
analyzing, modifying, displaying, and transmitting data. None of the
limitations recite implementation details for any of these steps, but instead
recite functional results to be achieved by any and all possible means. Data
reception, analysis and modification, and display and transmission are all
generic, conventional data processing operations to the point they are
themselves concepts awaiting implementation details. The sequence of data
reception-analysis-modification-display-transmission is equally generic and
conventional. The ordering of the steps is therefore ordinary and
conventional. The remaining claims merely describe parameters for
reporting and the parties soliciting the reports, with no implementation
details.
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
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Application 12/335,217
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 Intl, 134 S.Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to financial reporting. Final Act. 2.
Although the Court in Alice made a determination 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.
The preamble to claim 42 recites that it is a method of providing
mortgage reporting and management through a network. The steps in claim
42 result in generating a mortgage registration report. The Specification at
paragraph 1 recites that the invention relates to mortgage transaction
management and reporting. Thus, all this evidence shows that claim 42 is
directed to mortgage transaction reporting, i.e., financial reporting. This is
consistent with the Examiner's finding.
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It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
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 financial
reporting is a fundamental economic practice long prevalent in our system of
commerce. The use of financial reporting is also a building block of
ingenuity in business management. Thus, financial reporting, like hedging,
is an "abstract idea" beyond the scope of§ 101. See Alice, 134 S. Ct. at
2356.
As in Alice Corp. Pty. Ltd., 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 financial
reporting 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. 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 TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 42, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, display, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
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F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 42 is directed to the abstract idea of receiving, analyzing,
displaying, and transmitting data.
The remaining claims merely describe parameters for reporting and the
parties soliciting the reports. 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
at Mayo step two.
the 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 it"' 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 preemption
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
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.
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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, analyze, modify, display, and transmit data amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. The limitation of the updates being in real time is not a step, but a
recitation of frequency of reporting, viz. a desired outcome, which is
aspirational. 2 The limitation of "each of said plurality of authorized parties
having predefined privileges for accessing and updating data" is also not a
step, but a recitation of attributes users might have, which is again
aspirational. Further, nothing in the claim recites how the predefined
privileges for accessing and updating data affects or is affected by the steps.
And assigning predefined privileges for accessing and updating data has
been conventional since the inception of multi-user systems such as UNIX.
All of these computer functions are well-understood, routine, conventional
activities previously known to the industry. See Elec. Power Grp. v. Alstom
S.A., supra. See also In re Katz Interactive Call Processing Patent
Litigation, 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"). In short, each step does no more than require a
generic computer to perform generic computer functions. As to the data
operated upon, "even if a process of collecting and analyzing information is
2 Neither the claims nor the Specification define or provide guidance as to
how "real time" relates to timing and frequency. The Specification
describes only what the claim does, viz. presenting inputs in real time (para.
38) and viewing in real time (para. 39), without explaining what that means.
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'limited to particular content' or a particular 'source,' that limitation does
not make the collection and analysis other than abstract." SAP America Inc.
v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018)
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-display-transmission is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F .3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
Viewed as a whole, Appellants' method claims simply recite the concept
of financial reporting as performed by a generic computer. To be sure, the
claims recite doing so by advising one to receive data and report on a
mortgage, and display real time status, accept rea time inputs, and generate
real time reports. But this is no more than abstract conceptual advice on the
parameters for such financial reporting and the generic computer processes
necessary to process those parameters, and do not recite any particular
implementation, particularly as to the meaning and implementation of real
time operation.
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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 26+ pages of specification spell
out different generic equipment3 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of financial reporting 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 financial reporting 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 "warn[ ed] . . . against" interpreting §
101 "in ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice, 134 S. Ct. at 2360.
We are not persuaded by Appellants' argument that
there are currently two independent claims on file, method
claim 42 and system claim 58. Both of these claims include the
3 The Specification at paragraph 104 describes the system as being executed
by an appropriately programmed computer processor or similar device.
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features of a physical computer system where data is updated
and displayed in real-time, by "a plurality of authorized parties
... each of said plurality of authorized parties having predefined
privileges for accessing and updating data". A generic
computer system consisting of a number of interconnected
computers can be used to communicate data between parties.
But such a generic computer system would not be effective in
the process of mortgage management. This explains why, until
Appellant had conceived the claimed invention, there was no
system for managing mortgages which had any significant
presence in the marketplace. The claimed invention in contrast,
sets out that the different parties authorized to access the
systems, have different pre-defined privileges for accessing and
updating data. Adding these restrictions to the functionality of
the computers in the system turns the otherwise unuseful
computer system, into a system that is useful for the
management of mortgage reports. The claimed invention does
not simply use generic computers in a conventional way, to
automate the process of what was previously done by hand.
App. Br. 13. As we determined supra, the claims and Specification provide
no definition or guidance for how frequently real time update occurs. In any
event, absent implementation details this is abstract conceptual advice to
perform operations in real time. Similarly, the claims do not recite the
authorization for parties or how such authorization affects operation is
implemented, and so is also abstract conceptual advice to use authorization
as access control. Appellants do not explain why a generic computer system
would not be effective in the process of mortgage management, and the
Specification does not support this argument, as we find supra. The
Specification only requires an appropriately programmed processor. As the
specific programming implementation is unrecited, this allows for any and
all forms of such programming. Appellants do not explain why a computer
providing mortgage reports but absent such authorization features is not
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useful, and indeed the Background section of the Specification describes
using such reports historically. Adding authorization may marginally
improve utility, but again, the claims only recite abstract conceptual advice
to do so. More to the point, nothing in the claims recites how the predefined
privileges for accessing and updating data affects or is affected by the steps,
and so independent claims 42 and 58 do not recite "adding these restrictions
to the functionality of the computers." Id.
We are not persuaded by Appellants' argument that
Examiner has not provided any substantial elaboration on how
an "abstract idea" is defined, other than asserting that the
claims "essentially amount to an abstract idea of
financial/mortgage reporting". Appellant has great difficulty
seeing how a claim which recites multiple electrical devices
(i.e.[,] computers) interconnected over a physical
communication network can be considered to be a mere "idea".
App. Br. 13. We provide this analysis supra.
We are not persuaded by Appellants' argument that
there are practical, physical outcomes to Appellant's claimed
system, in the electronic display of information in real-time,
and the generation of certified, secure reports. Both are
generated by the claimed system, and both provide a physical,
tangible result which sets the claimed invention apart from
other pure software applications which simply process
calculations. Thus, the invention is just as tangible and physical
as any other patentable machine. An artisan may produce paper
by hand, using a mortar and pestle, but surely a paper making
machine is patentable. In the same way, Appellant submits that
the claimed method and system are just as physical and
tangible, and should be found allowable.
App. Br. 14. Again, simply using a tangible generic computer with display
and printer to implement an abstract idea does not produce a non-abstract
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outcome for patentability purposes. "When claims like the Asserted Claims
are directed to an abstract idea and merely require generic computer
implementation, they do not move into section 101 eligibility territory."
Smart Systems Innovations, LLC v. Chicago Transit Authority, 873 F.3d
1364 (2017) (citations and internal quotations omitted).
Intellectual Ventures argues that the "interactive interface" is
a specific application of the abstract idea that provides an
inventive concept. But nowhere does Intellectual Ventures
assert that it invented an interactive interface that manages
web site content. Rather, the interactive interface limitation is
a generic computer element.
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1370 (2015).
Because the claims are directed to an abstract idea, the claims
must include an "inventive concept" in order to be patent-
eligible. No such inventive concept is present here. Instead, the
claims "add" only generic computer components such as an
"interface," "network," and "database." These generic computer
components do not satisfy the inventive concept requirement.
Mortgage Grader, Inc. v. First Choice Loan Services Inc., 811 F.3d 1314,
1324--25 (2016)(internal citations and quotation marks omitted).
We are not persuaded by Appellants' argument that the claims would not
preempt the idea. App. Br. 15. "Where a patent's claims are deemed only to
disclose patent ineligible subject matter under the Mayo [/Alice] framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015).
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We are not persuaded by Appellants' argument that
features of a physical computer system where data is updated
and displayed in real-time, by "a plurality of authorized parties
... each of said plurality of authorized parties having predefined
privileges for accessing and updating data" at the very least is
unconventional given that there are no outstanding novelty or
obviousness objections in view of the prior art.
App. Br. 15. "A claim for a new abstract idea is still an abstract idea. The
search for a § 101 inventive concept is thus distinct from demonstrating
§ 102 novelty." Synopsys, Inc. v. Mentor Graphics Corporation, 839 F.3d
1138, 1151 (Fed. Cir. 2016).
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). App. Br. 16-17. In DDR Holdings, the
Court evaluated the eligibility of claims "address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host's website after 'clicking' on an
advertisement and activating a hyperlink." Id. at 1257. There, the Court
found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no "pre-Internet analog." Id. at 1258. The Court cautioned,
however, "that not all claims purporting to address Internet-centric
challenges are eligible for patent." Id. For example, in DDR Holdings
the Court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258-59 (citing
Ultramercial, 772 F.3d 7 0 9, 715-16 (Fed. Cir. 2014)). As noted there,
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the Ultramercial claims were "directed to a specific method of advertising
and content distribution that was previously unknown and never
employed on the Internet before." Id. at 1258 (quoting Ultramercial, 772
F .3 d at 715-16). Nevertheless, those claims were patent ineligible because
they "merely recite[d] the abstract idea of 'offering media content in
exchange for viewing an advertisement,' along with 'routine additional
steps such as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use of the
Internet."' Id.
Appellants' asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website;" "restricting general public access to said
media product;" "receiving from the consumer a request to view [a]
sponsor message;" and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." 772 F.3d at 712. Similarly, Appellants' asserted claims recite
receiving, analyzing, modifying, displaying, and transmitting data. This is
precisely the type of Internet activity found ineligible in Ultramercial.
Appellants contend
the claims of the invention set out specific technical changes
(i.e., each party being assigned different, predetermined
privileges for accessing and updating data) which are required
to provide the needed functionality. The prior art did attempt to
take an abstract business method from the pre-Internet world
and implement it on a computer, but those attempts failed.
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App. Br. 16-17. First the recited changes are advisory only as results to be
achieved. No technological implementation details are recited, and they are
specific only in the sense they are specified with words. The scope of each
party being assigned different, predetermined privileges for accessing and
updating data is open to any and all methods of implementation, and again,
independent claims claim 42 and 58 do not recite how those privileges affect
or are effected by the recited steps.
We are not persuaded by Appellants' argument that several District
Court and Patent Trial and Appeal Board cases held certain claims non-
abstract. As those cases are factually different and are not controlling in the
instant case, they are not persuasive.
CONCLUSIONS OF LAW
The rejection of claims 42-79 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
DECISION
The rejection of claims 42-79 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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