Ex Parte Lindauer et alDownload PDFPatent Trial and Appeal BoardMar 9, 201813345207 (P.T.A.B. Mar. 9, 2018) 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. 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 2 Appeal 2016-007800 Application 13/345,207 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 3 Appeal 2016-007800 Application 13/345,207 . . . 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 4 Appeal 2016-007800 Application 13/345,207 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 5 Appeal 2016-007800 Application 13/345,207 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). 6 Appeal 2016-007800 Application 13/345,207 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 7 Appeal 2016-007800 Application 13/345,207 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). 8 Appeal 2016-007800 Application 13/345,207 “[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 9 Appeal 2016-007800 Application 13/345,207 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. 10 Appeal 2016-007800 Application 13/345,207 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 11 Copy with citationCopy as parenthetical citation