Ex Parte Lavoie et al

Patent Trial and Appeal Board

Jan 26, 2017

11138748 (P.T.A.B. Jan. 26, 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.
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
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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).
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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;
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[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
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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
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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.”
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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.
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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
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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.
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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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