Ex Parte Lavoie et alDownload PDFPatent Trial and Appeal BoardJan 26, 201711138748 (P.T.A.B. Jan. 26, 2017) Copy Citation 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. 11/138,748 05/26/2005 James Richard Lavoie 1016-8 8821 46302 7590 01/30/2017 RYAN, MASON & LEWIS, LLP 1175 Post Road East 2nd Floor Westport, CT 06880 EXAMINER AKINTOLA, OLABODE ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 01/30/2017 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 following e-mail address(es): ctoffice@rml-law.com kmm@rml-law.com car@rml-law.com PTOL-90A (Rev. 04/07) Appeal 2016-000782 Application 11/138,748 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JAMES RICHARD LAVOIE, IAN MITCHELL, THOMAS SANTOS, and DONALD L. STANFORD Appeal 2016-000782 Application 11/138,748 Technology Center 3600 Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and MEREDITH C. PETRA VICK, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE1 James Richard Lavoie, Ian Mitchell, Thomas Santos, and Donald L. Stanford (Appellants) seek review under 35 U.S.C. § 134 of a final rejection of claims 1—21, the only claims pending in the application on appeal. This is 'Our decision will make reference to the Appellants’ Appeal Brief (“App. Br.,” filed June 3, 2015) and Reply Brief (“Reply Br.,” filed October 19, 2015), and the Examiner’s Answer (“Ans.,” mailed August 21, 2015), and Final Action (“Final Act.,” mailed December 9, 2014). 1 Appeal 2016-000782 Application 11/138,748 the second time this application has come up for appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellants invented a way of recording, managing, and evaluating intellectual capital. Specification 1:5—7. 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. A method for managing intellectual capital in an enterprise, comprising: [1] obtaining a description of a plurality of innovations of said enterprise; [2] providing said descriptions to a plurality of employees; [3] assigning a limited pool of virtual investment units to each of said plurality of employees in a record associated with each of said plurality of employees in a memory; [4] allowing said plurality of employees to invest said pools of virtual investment units in one or more of said plurality of innovations, wherein each investment is based on a perceived value of said corresponding innovation to said employee, wherein said limited pool of virtual investment units assigned to each of said plurality of employees requires each employee to prioritize said virtual investment units among said plurality of innovations such that an investment in a first innovation by a given employee results in fewer virtual investment units in said record corresponding to said given employee available for said given employee to invest in additional innovations; 2 Appeal 2016-000782 Application 11/138,748 [5] prioritizing, with at least one processor, said plurality of innovations based on said investments recorded in said records in said memory, wherein said step of prioritizing said plurality of innovations based on said investments further comprises prioritizing said plurality of innovations based on forward progress of said plurality of innovations. Claims 1—21 stand rejected under 35 U.S.C. § 101 as directed to non— statutory subject matter. ISSUES The issues of statutory subject matter turn primarily on whether financial analysis per se is more than an abstract idea. ANALYSIS 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, “[wjhat else is there in the claims before us?” [] To answer that question, [jconsider 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 [“Jinventive concept[”]—i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to 3 Appeal 2016-000782 Application 11/138,748 significantly more than a patent upon the [ineligible concept] itself.” Alice Corp., Pty. Ltd. v CLS Bank Inti, 134 S.Ct. 2347, 2355 (2014) (citing Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. The Examiner finds that the claims are directed to allowing employees to invest virtual investment units in one or more plurality of innovations, a form of organizing human activities. Final Act. 2. We agree and adopt this finding, and also make the further findings. 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. The preamble to claim 1 recites that it is a method for managing intellectual capital in an enterprise. The five steps in claim 1 result in prioritizing a list of investments. The Specification at 1:5—7 recites that the invention relates to recording, managing and evaluating intellectual capital. Thus, all this evidence shows that claim 1 is directed to analyzing intellectual property as capital, i.e. financial analysis. It follows from prior Supreme Court cases, and Bilski in particular, that the claims at issue here are directed to an abstract idea. Like the risk hedging in Bilski, the concept of financial analysis is a fundamental business practice long prevalent in our system of commerce. The use of financial analysis is also a building block of capitalism. Thus, financial analysis, like 4 Appeal 2016-000782 Application 11/138,748 hedging, is an “abstract idea” beyond the scope of §101. See Alice Corp. Pty. Ltd., 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 analysis at issue here. Both are squarely within the realm of “abstract ideas” as the Court has used that term. See Alice Corp. Pty. Ltd., 134 S.Ct. at 2357. The remaining claims merely describe parameters used in the analysis. 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. [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 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, [Jwholly 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.” 5 Appeal 2016-000782 Application 11/138,748 Alice Corp. Pty. Ltd., 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 Corp. Pty. Ltd., 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 obtain, provide, and assign data and prioritize lists amounts to electronic data query and retrieval—one of the most basic functions of a computer. The limitation of allowing investments is not a step, but a recitation of permission, having nothing to do with a computer. 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 Appellants’ method add nothing that is not already present when the steps are considered separately. Viewed as a whole, Appellants’ method claims simply recite the concept of financial analysis as performed by a generic computer. 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. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea of financial analysis using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent- eligible invention. See Alice Corp. Pty. Ltd., 134 S.Ct. at 2360. 6 Appeal 2016-000782 Application 11/138,748 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 Corp. Pty. Ltd., 134 S.Ct. at 2360. We are not persuaded by Appellants’ argument that the claims are not directed to an abstract idea (App. Br. 4—6) for the reasons we find supra. We are not persuaded by Appellants' argument that prioritizing investments based on recorded investments is an improvement to a technical field. App. Br. 7. Prioritizing any financial information is part of financial analysis and is only technical in the sense that mathematical abstractions are in some sense technical. Mathematical algorithms are the quintessential exemplar of non-statutory abstract subject matter. See Gottschalk v Benson, 409 U.S. 63 (1972). We are not persuaded by Appellants' argument that the claims recite features which provide a solution necessarily rooted in computer- implemented enterprise management of intellectual capital. As we find supra, all of the steps are well defined, primitive data processing steps and can equally be carried out with paper and pencil. We are not persuaded by Appellants' argument that Applicants submit that improved techniques for prioritizing enterprise innovations provides the enterprise with a valuable relative assessment of each innovation, based on the employee 7 Appeal 2016-000782 Application 11/138,748 virtual investments, which may be used to guide the pursuit of each innovation, resulting in improvements to the functioning of computer-implemented management of enterprise intellectual capital. App. Br. 8—9. This argument only shows that many abstract ideas are useful. The aphorism that a stitch in time saves nine reduces time spent recovering from errors, yet is still no more than conceptual advice. Prioritizing data may save time, but does not affect the operation of a machine. We are not persuaded by Appellants’ argument that the claims use a particular machine (App. Br. 9). The claims are no more than a directive to perform the abstract idea on a general purpose computer. We are not persuaded by Appellants’ argument that the data represent physical things and that prioritization is a transformation. Id. Representation as such is an abstraction. CONCLUSIONS OF LAW The rejection of claims 1—21 under 35 U.S.C. § 101 as directed to non— statutory subject matter is proper. DECISION The rejection of claims 1—21 is affirmed. 8 Appeal 2016-000782 Application 11/138,748 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 9 Copy with citationCopy as parenthetical citation