Ex Parte Dunne et al

Patent Trials and Appeals Board

Mar 19, 2019

13844316 - (D) (P.T.A.B. Mar. 19, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/844,316 03/15/2013
23400 7590 03/21/2019
POSZ LAW GROUP, PLC
12040 SOUTH LAKES DRIVE
SUITE 101
RESTON, VA 20191
FIRST NAMED INVENTOR
Richard Christopher Dunne
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.
23_003 1703
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
03/21/2019 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):
mailbox@poszlaw.com
dposz@poszlaw.com
tvarndell @poszlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD CHRISTOPHER DUNNE and
THOMAS RICHARD KMAK
Appeal2018-002126
Application 13/844,316 1
Technology Center 3600
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR., and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a). We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 The identified real party in interest is BDELLIUM, INC. Appeal Brief 4.
Appeal2018-002126
Application 13/844,316
STATEMENT OF THE CASE
Introduction
The Application is directed to a system and method for aiding design
of defined contribution retirement plans. Specification 2; Abstract. 2 Claims
1, 4--73, and 112 are pending. Appeal Brief 6. Claim 1, the sole
independent claim, is reproduced below for reference:
1. A method, implemented over a network comprising a
processor-based input device, a processor-based analysis device,
and a database which stores information as data, of evaluating a
plurality of plan designs, each such plan design consisting of a
plurality of parameters that would govern operation of a
retirement plan, the method comprising the steps of:
transferring, over the network, by the processor-based
input device, to the processor-based analysis device, input data
related to future retirement income of a plurality of eligible
participants eligible to participate in the selected retirement plan;
transferring by the processor-based analysis device to the
database the input data, and storing the input data in the database;
using data stored in the database, undertaking processing
steps, by the processor-based analysis device, that determine, for
each eligible participant in the plurality of eligible participants, a
target retirement expenditure that is an amount of money a
respective eligible participant desires to be able to spend during
a specified retirement period;
storing the plurality of target retirement expenditures in
the database;
undertaking processing steps, by the processor-based
analysis device, that produce a plurality of plan design
assessments by performing an evaluation cycle for each of the
plurality of plan designs, the evaluation cycle including:
using data stored in the database, undertaking processing
steps, by the processor-based analysis device, that determine, for
each eligible participant in the plurality of eligible participants
2 All Specification references herein are to the Substitute Specification filed
August 13, 2013.
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Application 13/844,316
and for a selected plan design from the plurality of plan designs,
a fundable retirement expenditure that is an amount of money a
respective eligible participant can actually afford to spend during
the same specified retirement period;
storing the plurality of fundable retirement expenditures in
the database;
using data stored in the database, undertaking processing
steps, by the processor-based analysis device, that determine, for
each eligible participant in the plurality of eligible participants
and for the selected plan design, a retirement security assessment
that is a measurement of a relationship between a respective
eligible participant's fundable retirement expenditure
determined for the selected plan design given the selected plan
design's parameters, and the respective eligible participant's
target retirement expenditure;
storing the plurality of retirement security assessments in
the database;
using data stored in the database, undertaking processing
steps, by the processor-based analysis device, that determine, for
each eligible participant in the plurality of eligible participants
and for the selected plan design, an employer cost assessment
that is an analysis of the cost to an employer of implementing the
selected plan design, given the selected plan design's parameters,
in respect of each of the plurality of eligible participants;
storing the plurality of employer cost assessments in the
database;
using data stored in the database, undertaking processing
steps, by the processor-based analysis device, that determine, for
each eligible participant in the plurality of eligible participants
and for the selected plan design, a participant cost assessments
that is an analysis of the cost to an eligible participant of
participating under the selected plan design, given the selected
plan design's parameters;
storing the plurality of participant cost assessments in the
database;
using data stored in the database, undertaking processing
steps, by the processor-based analysis device, that produce a plan
design assessment for the selected plan design, the plan design
assessment being an aggregated analysis of the respective
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Application 13/844,316
retirement security assessments, employer cost assessments and
participant cost assessments of the plurality of eligible
participants with respect to the selected plan design; and
storing the plurality of plan design assessment in the
database;
using data stored in the database, undertaking processing
steps, by the processor-based analysis device, that produce an
impact analysis that compares the plurality of plan design
assessments of the plurality of plan designs;
storing the impact analysis in the database; and
outputting by the processor-based analysis device an
indicator to select a particular plan design when the impact
analysis indicates that the particular plan design is preferable to
other plan designs in view of the retirement plan's retirement
security objectives and cost constraints.
Rejection3
Claims 1, 4--73, and 112 stand rejected under 35 U.S.C. § 101 as
being patent ineligible. Final Action 2-5.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
arguments. Arguments Appellants could have made but chose not to make
are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We adopt the
Examiner's findings and conclusions as our own, and we add the following
primarily for emphasis.
The Examiner determines claim 1 is directed to patent ineligible
subject matter under 35 U.S.C. § 101, "because the claimed invention is
directed to a judicial exception (i.e., a law of nature, a natural phenomenon,
3 The Examiner has withdrawn the obviousness rejection of the pending
claims. See Answer 2.
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or an abstract idea) without significantly more." Answer 6; see also Alice
Corp. v. CLS Bank Int 'l, 573 U.S. 208, 217 (2014) ( describing the two-step
framework "for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts").
After the mailing of the Answer and the filing of the Briefs in this
case, the US PTO published revised guidance on the application of§ 101
("Guidance"). See USPTO's 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum"). Pursuant to the
Guidance "Step 2A," the office first looks to whether the claim recites:
( 1) Prong One: 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) Prong Two: 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, does the Office then (pursuant to the
Guidance "Step 2B") look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
are 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 Memorandum.
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A. Step 2A
Prong One
Appellants argue the Examiner errs in determining claim 1 recites an
abstract concept, because "the claimed embodiments are in fact not directed
to activities that can be characterized as an abstract idea directed to a
fundamental economic practice." Appeal Brief 18. Appellants contend,
instead, "independent claim 1 describes a method of evaluating a plurality of
plan designs" (Appeal Brief 13), and "[i]n the [A]ppellant[s'] August 28,
2015 response, the [ A Jppellant[ s] further stated that 'defined contribution
plan design and evaluation of plan parameters are not old and well
established principles"' (Appeal Brief 18). Appellants further contend claim
1 does not fall in the category of "a method of organizing human activity,"
because "the claimed method which is directed to evaluating retirement plan
designs cannot reasonably be interpreted as directed to satisfying or avoiding
a legal obligation .... [and] is not directed in any way to advertising,
marketing, or sales activities and behaviors." Appeal Brief 24.
Claim 1 recites, inter alia, a method of evaluating a plurality of plan
designs, each such plan design consisting of a plurality of parameters that
would govern operation of a retirement plan. Further, the recited the method
comprises the steps of transferring input data related to future retirement
income of a plurality of eligible participants eligible to participate in the
selected retirement plan, transferring the input data, and storing the input
data in the database, determining for each eligible participant in the plurality
of eligible participants, a target retirement expenditure that is an amount of
money a respective eligible participant desires to be able to spend during a
specified retirement period, storing the plurality of target retirement
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expenditures, and producing a plurality of plan design assessments by
performing an evaluation cycle for each of the plurality of plan designs. The
claim further requires the process includes determining, for each eligible
participant in the plurality of eligible participants and for a selected plan
design from the plurality of plan designs, a fundable retirement expenditure
that is an amount of money a respective eligible participant can actually
afford to spend during the same specified retirement period, storing the
plurality of fundable retirement expenditures, determining, for each eligible
participant in the plurality of eligible participants and for the selected plan
design, a retirement security assessment that is a measurement of a
relationship between a respective eligible participant's fundable retirement
expenditure determined for the selected plan design given the selected plan
design's parameters, and the respective eligible participant's target
retirement expenditure, storing the plurality of retirement security
assessments, determining, for each eligible participant in the plurality of
eligible participants and for the selected plan design, an employer cost
assessment that is an analysis of the cost to an employer of implementing the
selected plan design, given the selected plan design's parameters, in respect
of each of the plurality of eligible participants, storing the plurality of
employer cost assessments, determining, for each eligible participant in the
plurality of eligible participants and for the selected plan design, a
participant cost assessments that is an analysis of the cost to an eligible
participant of participating under the selected plan design, given the selected
plan design's parameters, storing the plurality of participant cost
assessments, using data stored in the database, undertaking processing steps,
by the processor-based analysis device, that produce a plan design
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Application 13/844,316
assessment for the selected plan design, the plan design assessment being an
aggregated analysis of the respective retirement security assessments,
employer cost assessments and participant cost assessments of the plurality
of eligible participants with respect to the selected plan design, and storing
the plurality of plan design assessment in the database. Moreover, the claim
recites producing an impact analysis that compares the plurality of plan
design assessments of the plurality of plan designs, storing the impact
analysis, and outputting an indicator to select a particular plan design when
the impact analysis indicates that the particular plan design is preferable to
other plan designs in view of the retirement plan's retirement security
objectives and cost constraints.
Pursuant to the Guidance, we are not persuaded the Examiner errs in
determining claim 1 recites the "management of a defined contribution plan,
evaluation and selection of defined contribution plan features and
provisions, and managing business relations which is a fundamental
economic practice," and is thus the abstract concept of "certain methods of
organizing human activity." Answer 3.4 As acknowledged by Appellants,
the above cited limitations of independent claim 1 recite "detailed steps for
evaluating plan design parameters governing operation of a selected
retirement plan" (Appeal Brief 19), and include data processing steps to
transfer, determine, store, and output data in order to indicate a preferable
4 We note the Examiner additionally determines the claims recite "an idea of
itself." See Answer 6. The Guidance, however, no longer includes this
category of abstract concepts. See Memorandum, Section I ( Groupings of
Abstract Ideas), 84 Fed. Reg. at 52. For purposes of clarity, predictability,
and consistency, we limit our analysis to the Guidance. See Memorandum,
84 Fed. Reg. at 50.
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retirement plan design. These steps follow rules or instructions to structure a
retirement program (i.e., a form of business relations or agreements); thus,
the claim limitations are "[ c ]ertain methods of organizing human activity."
Memorandum, Section I (Groupings of Abstract Ideas), 84 Fed. Reg. at 52-
53. We further note the claim recitations of "performing an evaluation cycle
for each of the plurality of plan designs" and "produc[ing] an impact
analysis" are steps of evaluation and judgement, and thus recite the abstract
concept of"[ m ]ental processes." Id.
We find Appellants' arguments to the contrary unpersuasive. First,
we note Appellants' arguments improperly refer to documents filed with the
Office before initiation of this appeal. See, e.g., Appeal Brief 18-19; see
also MPEP § 1205.02 ("Thus, the brief should not incorporate or reference
previous responses."). Second, Appellants misstate the relevant law by
arguing a fundamental economic practice must be "old and well established"
(Appeal Brief 18) or must be "so pervasive, and so difficult to replace, that
its absence would cause some critical aspect of society to cease to function"
(Reply Brief 9). "[A] claim for a new abstract idea is still an abstract idea."
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014) ("We do not agree with Ultramercial that the addition of merely
novel or non-routine components to the claimed idea necessarily turns an
abstraction into something concrete."). Here, claim 1 recites an abstract
concept because it includes limitations that "fall[] within the subject matter
groupings of abstract ideas enumerated in Section I of the 2019 Revised
Patent Subject Matter Eligibility Guidance," as discussed above.
Memorandum, Section III(A)(l) (Prong One: Evaluate Whether the Claim
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Recites a Judicial Exception), 84 Fed. Reg. at 54. Third, Appellants'
argument regarding preemption does not show Examiner error (see Appeal
Brief 24), as any questions on preemption in the instant case have been
resolved by the analysis herein, the Final Action, and the Examiner's
Answer. See Answer 5; Two-Way Media Ltd. v. Comcast Cable Commc 'ns,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) ("[W]here a patent's claims are
deemed only to disclose patent ineligible subject matter under the Alice
framework, as they are in this case, preemption concerns are fully addressed
and made moot.").
Accordingly, claim 1 "recites a judicial exception" pursuant to Step
2A, Prong One of the Guidance. Memorandum, 84 Fed. Reg. at 54.
Prong Two
We are also not persuaded the Examiner's rejection is in error
pursuant to Step 2A, Prong Two of the Guidance. Appellants present no
evidence showing that "the pending claims provide a technologically unique
solution" because the "networked, distributed, execution of the steps of
independent claim 1 means that the time required to complete all of the
necessary determinations is not discemably longer for a retirement plan with
an exceptionally large number of eligible participants, compared to one with
relatively few eligible participants." Reply Brief 16; see also Final Action
47. Nor do Appellants show such features would integrate the judicial
exception into a practical application. Rather, we agree with the Examiner
that claim 1 does not provide a technological improvement, as the recited
network components "provide a generically computer-implemented solution
to a business-related or economic problem." Answer 5; see also Answer 10;
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Appeal Brief 23 ("the concrete processing steps described above related to
evaluating plan design parameters to maximize savings by participants in a
selected retirement plan"). The claim recites the mental steps/organizing
human activity of evaluating retirement plan designs; the recited network
and computers "do[] no more than generally link the use of a judicial
exception to a particular technological environment." Memorandum, 84
Fed. Reg. at 55; see also Answer 5---6, 10; Alice, 573 U.S. at 226 ("Nearly
every computer will include a 'communications controller' and 'data storage
unit' capable of performing the basic calculation, storage, and transmission
functions," so that "none of the hardware recited by the system claims
'offers a meaningful limitation beyond generally linking "the use of the
[ method] to a particular technological environment," that is, implementation
via computers.""' ( alteration in original) ( citation omitted)).
Accordingly, we determine claim 1 does not integrate the judicial
exception into a practical application. See Memorandum, 84 Fed. Reg. at
54. As the "claim recites a judicial exception and fails to integrate the
exception into a practical application" (id. at 51 ), "the claim is directed to
the judicial exception" (id. at 54).
B. Step 2B
We agree with the Examiner that the claimed elements and
combination of elements do not amount to significantly more than the
judicial exception itself. See Answer 5---6, 8-10; Memorandum,
Section III(B) (Step 2B), 84 Fed. Reg. at 56. The claimed additional
elements only recite generic components and steps that are well-understood,
routine, and conventional. See Final Action 4--5; Specification ,r,r 3-20, 34,
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59---62; Alice, 573 U.S. at 226; buySAFE, Inc. v. Google, Inc., 765 F.3d
1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the
information over a network-with no further specification-is not even
arguably inventive."); BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1290 (Fed. Cir. 2018) ("It has been clear since Alice 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.").
Accordingly, we agree with the Examiner that claim 1 is patent
ineligible. See Answer 6.
CONCLUSION
We sustain the Examiner's rejection of independent claim 1.
Appellants advance no further argument on the remaining dependent claims.
See Appeal Brief 30. Accordingly, we sustain the Examiner's rejections of
all pending claims for the same reasons discussed above.
DECISION
The Examiner's decision rejecting claims 1, 4--73, and 112 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)(l )(iv).
AFFIRMED
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