Ex Parte Lindauer et al

Patent Trial and Appeal Board

Mar 9, 2018

13345207 (P.T.A.B. Mar. 9, 2018)

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.
13/345,207 01/06/2012 Jason M. LINDAUER JRL-4010-222 1185
23117 7590 03/13/2018
NIXON & VANDERHYE, PC
901 NORTH GLEBE ROAD, 11TH FLOOR
ARLINGTON, VA 22203
EXAMINER
CAMPBELL, KELLIE L
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/13/2018 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):
PTOMAIL@nixonvan.com
pair_nixon @ firsttofile. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JASON M. LIND AUER and JEFFREY SMITH
Appeal 2016-007800
Application 13/345,2071
Technology Center 3600
Before NINA L. MEDLOCK, BRUCE T. WIEDER, and
BRADLEY B. BAYAT Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1—12 and 14—33. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is Nasdaq, Inc. (Appeal
Br. 3.)
Appeal 2016-007800
Application 13/345,207
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “relates to computer-assisted targeting
of potential investors.” (Spec. 11.)
Claims 1, 17, and 33 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A computer-implemented method for targeting potential
investors for a company, comprising:
obtaining, by a computer server, investment
characteristics information associated with each of a first number
of potential investors;
determining, by the computer server, asset characteristics
information associated with the company interested in attracting
investment;
analyzing, by the computer server, the investment
characteristics information associated with each of the first
number of potential investors and the asset characteristics
information associated with the company,
wherein the analyzing step includes determining a total
compatibility score for each of the first number of potential
investors that is based on:
a first quantitative fit parameter corresponding to a
degree of compatibility between the investment
characteristics information associated with each of the first
number of potential investors with the asset characteristics
information associated with the company that is based on
quantitative metrics,
a second total impact parameter corresponding to an
amount of money that each of the first number of potential
investors can use to invest in the company, and
a third quality rating parameter for each of the first
number of potential investors corresponding to a
desirability of targeting the potential investor as a meeting
candidate based on one or more of the following potential
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investor attributes: investment time horizon for the
potential investor, receptiveness of the potential investor
to meeting with a representative of the company to discuss
a potential investment in the company, and activism
history of the potential investor in companies other than
the company interested in attracting investment from the
potential investor;
identifying a second smaller number of potential investors
from the first number of potential investors based on the total
compatibility scores;
providing the second smaller number of potential investors
to the company for prioritized investment targeting efforts on
potential investors having higher respective total compatibility
scores because the second smaller number of potential investors
are higher probability candidates to target to obtain investment
monies from than the first number of potential investors.
REJECTION
Claims 1—12 and 14—33 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-step framework, earlier set
out in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66 (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.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if “the elements of the claim
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. . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Id. at 2357 (citing Mayo,
566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that “[t]he claims are directed to the abstract idea of a
fundamental economic practice (i.e. matching investors with potential
investments) and/or a method of organizing human activity (i.e. deciding
potential investors to visit for a roadshow).” (Final Action 5—6.)
Appellants disagree and argue that
the claims relate to an electronic processing system that uses an
electronic data network that permits one or more server
computers to extract, organize, and analyze enormous amounts
of digital data concerning companies and potential investors in
order to efficiently and effectively target or match a compatible
and desirable investor with a particular company where both
investor and company have a high likelihood of desiring and
being satisfied with the match.
(Appeal Brief 12.)
As an initial matter, we note that claim 1 does not recite “an electronic
data network” or operating on “enormous amounts of digital data.”
Appellants’ arguments in this regard are not commensurate with the scope of
the claim and, thus, are not persuasive of error.
Appellants further argue that “the office action fails to address any of
the specific features recited in the body of claim 1.” {Id. at 15.)
In making the “directed to” inquiry under step one of the Alice
framework, we “look at the ‘focus of the claimed advance over the prior art’
to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d
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1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016)). Thus, although we consider the
claim as a whole, the “directed to” inquiry focuses on the claim’s “character
as a whole.”
In that regard, the Specification discloses “a computer-implemented
method for targeting potential investors for a company.” (Spec. 1 6.)
Further, claim 1 recites a “method for targeting potential investors for a
company, comprising:” “obtaining . . . investment characteristics
information associated with each of a first number of potential investors,”
“determining . . . asset characteristics information associated with the
company,” “analyzing . . . the investment characteristics information . . . and
the asset characteristics information,” “determining a total compatibility
score,” “identifying a second smaller number of potential investors from the
first number of potential investors based on the total compatibility scores,”
and “providing the second smaller number of potential investors to the
company for prioritized investment targeting efforts.”
“An abstract idea can generally be described at different levels of
abstraction,” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). However, that need not and, in this case does not, “impact the
patentability analysis.” See id. at 1241. “The focus of the asserted claims
... is on collecting information, analyzing it, and displaying certain results
of the collection and analysis.” Elec. Power Grp., 830 F.3d at 1353. “[W]e
have treated collecting information, including when limited to particular
content (which does not change its character as information), as within the
realm of abstract ideas.” Id. “In a similar vein, we have treated analyzing
information by steps people go through in their minds, or by mathematical
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algorithms, without more, as essentially mental processes within the
abstract-idea category.” Id. at 1354. “And we have recognized that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.”
Id. “Here, the claims are clearly focused on the combination of those
abstract-idea processes.” Id.
Additionally, the claimed invention is directed to “targeting potential
investors” by analyzing information to identify “investors to the company
for prioritized investment targeting efforts.” (Claim 1.) Targeting desirable
investors by analyzing information is similar to other concepts that have
been determined to be abstract. See, e.g., Intellectual Ventures ILLCv.
Capital One Bank (USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 2015)
(tailoring information presented to a user based on particular information);
see also Morsa v. Facebook, Inc., 77 F. Supp.3d 1007, 1013 (C.D. Cal.
2014) (matching customers with a particular product or service), affd, 622
F. App’x915 (Fed. Cir. 2015).
That the claims involve “computing an all-encompassing score based
on . . . three criteria” (Appeal Br. 13), i.e., the three recited parameters in
claim 1, does not make the claimed invention any less abstract. A method,
like the claimed method, “that employs mathematical algorithms [e.g.,
determining a total compatibility score] to manipulate existing information
to generate additional information is not patent eligible.” See Digitech
Image Techs, LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed.
Cir. 2014).
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Appellants seek to analogize the present claims to those in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) because
“the claimed solution is technical and specific” and “the claimed solution is
one that is necessarily rooted in computer technology (as in the DDR case).”
(Appeal Br. 16.) But unlike the claims here, the claims in DDR Holdings
“specify how interactions with the Internet are manipulated to yield a desired
result — a result that overrides the routine and conventional sequence of
events ordinarily triggered by the click of a hyperlink.'1'’ DDR Holdings,
773 F.3d at 1258 (emphasis added). In other words, the invention claimed in
DDR Holdings does more than “simply instruct the practitioner to
implement the abstract idea with routine, conventional activity.” See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); see
also DDR Holdings, 773 F.3d at 1259.
Appellants further seek to analogize the present claims to those in
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016). (See Reply Br. 3—6.) In Bascom, the court
determined that “an inventive concept can be found in the non-conventional
and non-generic arrangement of known, conventional pieces.” Bascom,
827 F.3d at 1350. Specifically, Bascom’s content filter could be “installed
remotely in a single location” and “this particular arrangement of elements is
a technical improvement over the prior art ways of filtering.” Id.
Appellants, although reciting the entirety of claim 17, do not direct us
to what is alleged to be the “non-conventional and non-generic arrangement
of known, conventional pieces.” (See Reply Br. 4—5.) Rather, Appellants
argue that “there is no prior art that describes [the claimed] combination of
computer functions.” {Id. at 5.) This, however, is an argument that the
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claimed invention is not found in the prior art. But “[t]he ‘novelty’ of any
element or steps in a process, or even of the process itself, is of no relevance
in determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.” Diamond v. Diehr,
450 U.S. 175, 188-89 (1981).
In view of the above, we are not persuaded that the Examiner erred in
determining that claim 1 (or claim 17) is directed to an abstract idea.
Step two of the Alice framework has been described “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, 134 S. Ct. at 2355
(citing Mayo, 566 U.S. at 72—73).
The introduction of a computer into the claim does not alter the
analysis at 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 if ” 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 “implemen[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 featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Id. at 2358 (citations omitted).
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“[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.” Id. at 2359. They do not. Claim 1 relates to a method
for collecting/obtaining data, analyzing/identifying data, and
providing/displaying data.
Taking the claim elements separately, the function performed by the
computer at each step is purely conventional. Collecting/obtaining data,
analyzing/identifying data, and providing/displaying data are basic computer
functions. Moreover, the Specification discloses that the invention can be
implemented using generic computer components. (See, e.g., Spec. ]Hf 35—
38.) In short, each step does no more than require a generic computer to
perform routine 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. The claim does not, for example, purport to
improve the functioning of the computer itself. Nor does it effect an
improvement in any other technology or technical field. Instead, the claim
at issue amounts to nothing significantly more than an instruction to collect,
analyze, and display data using a generic computer. That is not enough to
transform an abstract idea into a patent-eligible invention. See Alice,
134 S. Ct. at 2360.
Nonetheless, Appellants argue that “[t]he computer server is
structured via programming or the like to perform the analysis in a very
specific and detailed way to determine a total compatibility score for each of
the first number of potential investors.” (Appeal Br. 18—19.) According to
Appellants, “[t]hat detailed analysis includes calculating three different
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parameters” and “[t]hese significant claim limitations add ‘something more’
and prevent the claim from reading on all implementations of the ‘abstract
idea.’” {Id. at 19; see also id. at 23.)
We disagree. The claim is “directed to nothing more than the
performance of an abstract business practice . . . using a conventional
computer. Such [a claim is] not patent-eligible.” See DDR Holdings,
773 F.3d at 1256.
Nor do we find Appellants’ preemption argument persuasive of error.
Preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73],
CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), affd, 134 S. Ct. 2347 (2014). Moreover,
“[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo 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).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
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Appellants also argue that “[f]urther evidence that the claims recite an
inventive concept (e.g., significantly more than the alleged abstract idea to
which the claims are directed) is found in the fact that the Examiner has
withdrawn all prior art rejections.” (Appeal Br. 21.) As discussed above,
however, “[t]he ‘novelty’ of any element or steps in a process, or even of the
process itself, is of no relevance in determining whether the subject matter of
a claim falls within the § 101 categories of possibly patentable subject
matter.” Diehr, 450 U.S. at 188—89.
In view of the above, we are not persuaded that the Examiner erred in
rejecting independent claim 1 under § 101. Independent claims 17 and 33
contain similar language and for similar reasons we are not persuaded that
the Examiner erred in rejecting claims 17 and 33 under § 101. Therefore,
we sustain the rejection of independent claims 1,17, and 33, as well as
dependent claims 2—12, 14—16, and 18—32, which are not argued separately.
DECISION
The Examiner’s rejection of claims 1—12 and 14—33 under 35 U.S.C.
§ 101 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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