Ex Parte Lavoie et al

Patent Trials and Appeals Board

Jan 14, 2019

12635568 - (D) (P.T.A.B. Jan. 14, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/635,568 12/10/2009
133759 7590 01/16/2019
Sheppard Mullin Richter & Hampton LLP
650 Town Center Drive, 4th Floor
Costa Mesa, CA 92626
FIRST NAMED INVENTOR
Andre G. Lavoie
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.
64NV-215670 9582
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
01/16/2019 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):
dmipdocketing@sheppardmullin.com
SheppardMullin_Pair@firsttofile.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDRE G. LAVOIE and DARREN J. CHUN
Appeal2017-007053
Application 12/635,568
Technology Center 3600
Before MURRIEL E. CRAWFORD, AMEE A. SHAH, and
MATTHEWS. MEYERS, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL 1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 1-9, 12-14, 18-26, 29-31, and 35--47 under
35 U.S.C. § 101 as being directed to a judicial exception without
significantly more. We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE and enter a NEW GROUND OF REJECTION
pursuant to 37 C.F.R. § 41.50(b).
1 Throughout this decision, we refer to the Appellants' Appeal Brief ("Br.,"
filed Nov.21, 2016) and Specification ("Spec.," filed Dec. 10, 2009, as
amended Feb. 7, 2012), and to the Examiner's Answer ("Ans.," mailed
Jan. 27, 2017) and Final Office Action ("Final Act.," mailed May 12, 2016).
2 According to the Appellants, the real party in interest is "Thomson Reuters
Global Resources (TRGR)." Appeal Br. 2.
Appeal2017-007053
Application 12/635,568
STATEMENT OF THE CASE
The Appellants' invention "relates generally to a computer-
implemented system and method for facilitating the creation, management,
and valuation of securities research within the financial services industry."
Spec. ,r 1.
Claims 1 and 18 are the independent claims on appeal. Claim 1
(Claims App. 29) is exemplary of the subject matter on appeal and is
reproduced below.
1. A computer-implemented method for creating,
managing, and valuing securities research, the method being
implemented by a computer having one or more physical
processors programmed by computer program instructions that,
when executed by the one or more physical processor, cause the
computer to perform the method, the method comprising:
receiving, by the computer, sell-side research content that
includes a plurality of information items comprising at least a
first content piece from a sell-side entity;
receiving, by the computer, a first feedback on the first
content piece from one or more buy-side entities, wherein the
first feedback comprises a rating score for the first content piece;
storing, by the computer, the first feedback on the first
content piece in a memory associated with the computer;
receiving, by the computer, via a user interface, a
command to access the first content piece of the sell-side
document;
in response to the received command, causing, by the
computer, the first content piece to be launched in an instance of
an application, separate from and executing within the user
interface, that generated the first content piece;
determining, by the computer, a number of times the first
content piece has been accessed;
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Application 12/635,568
storing, by the computer in the memory, information
indicative of the number of times the first content piece has been
accessed;
providing, by the computer, the sell-side entity access to
the first feedback and the information indicative of the number
of times the first content piece has been accessed stored in the
memory associated with the computer; and
allocating, by the computer, a commission for the sell-side
entity based on the first feedback.
ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLSBankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 78-79 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts." Alice, 134 S. Ct. at 2355. The first
step in that analysis is to "determine whether the claims at issue are directed
to one of those patent-ineligible concepts." Id. (emphasis added) (citing
Mayo, 566 U.S. at 79). If so, the second step is to consider the elements of
the claims "individually and 'as an ordered combination'" to determine
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Application 12/635,568
whether the additional elements "'transform the nature of the claim' into a
patent-eligible application." Id. (quoting Mayo, 566 U.S. at 78-79).
Although "claim construction is not an inviolable prerequisite" to an
analysis under § 101, "a full understanding of the basic character of the
claimed subject matter" is, nevertheless, needed to evaluate questions of
subject-matter eligibility. Bancorp Servs., LLC v. Sun Life Assur. Co. of
Canada (US.), 687 F.3d 1266, 1273-74 (Fed. Cir. 2012). See also McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1311 (Fed. Cir. 2016)
("As an initial matter, we note that, in this case, claim construction is helpful
to resolve the question of patentability under § 101. ")
In the present Appeal, we are unable to ascertain such an
understanding of the claimed subject matter and, therefore, we do not assess
the merits of the rejection under§ 101. Rather, for the reasons given below,
and pursuant to our authority under 37 C.F.R. § 4I.50(b) to enter a new
ground of rejection, we determine that the claims are indefinite under
35 U.S.C. § 112, second paragraph. Accordingly, the rejection under§ 101
must fall, proforma, because it is necessarily based upon speculative
assumption as to the meaning of the claims. See In re Steele, 305 F.2d 859,
862-63 (CCPA 1962) (addressing an obviousness rejection). This
determination does not reflect on the merits of the underlying rejection based
upon§ 101.
NEW GROUND OF REJECTION UNDER 35 U.S.C. § 112
Claims 1-9, 12-14, 18-26, 29-31, and 35--47 are rejected under pre-
AIA 35 U.S.C. § 112, second paragraph.
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Application 12/635,568
The text ofpre-AIA 35 U.S.C. § 112, second paragraph, requires
"[ t ]he specification shall conclude with one or more claims particularly
pointing out and distinctly claiming the subject matter which the
[Appellants] regard[] as the invention." "As the statutory language of
'particular[ity ]' and 'distinct[ ness ]' indicates, claims are required to be cast
in clear- as opposed to ambiguous, vague, indefinite-terms." In re
Packard, 751 F.3d 1307, 1313 (Fed. Cir. 2014). Claims are in compliance
with 35 U.S.C. § 112(b)/second paragraph if"the claims, read in light of the
specification, reasonably apprise those skilled in the art both of the
utilization and scope of the invention, and if the language is as precise as the
subject matter permits." Hybritech Inc. v. Monoclonal Antibodies, Inc., 802
F.2d 1367, 1385 (Fed. Cir. 1986) (citing Shatterproof Glass Corp. v. Libbey-
Owens Ford Co., 758 F.2d 613, 624 (Fed. Cir. 1985)). Thus, the test for
determining the question of indefiniteness may be formulated as whether the
claims "set out and circumscribe a particular area with a reasonable degree
of precision and particularity." In re Moore, 439 F.2d 1232, 1235 (CCPA
1971 ). With regard to the reasonableness standard, one must consider the
language in the context of the circumstances. Packard, 751 F.3d at 1313.
Language is an imprecise method of drawing boundaries delineating patent
rights, thus unreasonable precision cannot be demanded. Id. On the other
hand, the claims must notify the public of what they are excluded from
making and using. Id. For this reason, while exact precision is not required,
an applicant is required to use language as precise as the subject matter
reasonably permits. Id.
Independent claims 1 and 18 include the limitation of instructions
that, when executed, cause a computer to, "in response to the received
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Application 12/635,568
command, cause the first content piece to be launched in an instance of an
application, separate from and executing within the user interface, that
generated the first content piece." Appeal Br. 33 (Claims App.); see also id.
at 29. The Appellants cite to the Specification at paragraph 7 5 and Figure 8
as support for this limitation. See id. at 3--4. Paragraph 75 of the
Specification provides for the usage module to track and record usage such
that "the total number of times an asset has been read ( e.g., accessed or
launched)." Figure 8 depicts components of a sell-side report (see Spec.
i124) and shows the phrase ""ACCESS/LAUNCH CUSTOM CHART
ASSET." There are no specific definitions for the terms "content piece" or
"launch" in the Specification, including the claims, and no description of
how the computer causes a piece to be "launched."
The dictionary meaning of "launch" in this context can be to start, put
into operation or motion, or to load into a computer and run. Merriam-
Webster Online Dictionary, available at https://www.merriam-
webster.com/dictionary/launch, last visited Dec. 17, 2018. Paragraph 73 of
the Specification provides that "[ w ]hen research report 800 is accessed by a
user, the user may access or launch one or more of the individual assets
comprising research report 800," and that "a user may launch an asset ( e.g.,
custom chart asset 804 ), modify it, and then save it as a new asset for later
use." Paragraph 74 provides for a user to "access/launch an asset in a
dynamic document by, for example, double-clicking on ( or otherwise
selecting) any portion of the asset," and that "[a] user may dynamically
launch an asset by selecting its corresponding icon (or other representation)
from the asset list." Thus, in light of the Specification, to launch a content
piece appears to mean to open an asset such as a document or file.
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However, it is not clear how the computer causes the content piece to
be launched/opened "in an instance of an application, separate from and
executing within the user interface, that generated the first content piece."
Based on a review of the Specification, a user causes a content to be
launched. See supra; Spec. ,r,r 73, 74. But we do not see how-
technologically or by what steps - the computer causes a content piece to be
launched in an application, separate from and executing within the user
interface, that generated the first content piece, as claimed. Paragraph 7 4
provides that "[ a ]n instance of the application used to create the asset may be
launched in the user interface (e.g., via a plug-in)," but does not discuss
launching a content piece in an instance of the application. Paragraph 7 4
also provides that "a larger picture/view of the asset may be launched in the
viewer, but without dynamic capabilities," but does not discuss how the
piece is launched by a computer "in an instance of an application, separate
from and executing within the user interface, that generated the first content
piece," as claimed. As such, the limitation is not clear as to what it entails,
and we cannot ascertain the scope of the invention.
Therefore, we enter a new ground of rejection of independent claims 1
and 18, along with dependent claims 2-9, 12-14, 19-26, 29-31, and 35--47,
under 35 U.S.C. § 112, second paragraph, for failure to particularly point out
and distinctly claim the subject matter regarded as the invention.
DECISION
We REVERSE the Examiner's decision rejecting claims 1-9, 12-14,
18-26, 29-31, and 35--47,proforma.
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Application 12/635,568
We ENTER A NEW GROUND OF REJECTION for claims 1-9, 12-
14, 18-26, 29-31, and 35--47 under 35 U.S.C. § 112(b).
This Decision contains a new ground of rejection pursuant to 37
C.F.R. § 4I.50(b). 37 C.F.R. § 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." 37 C.F.R. § 4I.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to the
Examiner ....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same Record ....
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).
REVERSED; 37 C.F.R. § 4I.50(b).
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