Ex Parte Ohnemus et al

Patent Trial and Appeal BoardFeb 4, 2019

11071978 (P.T.A.B. Feb. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/071,978 03/03/2005 29053 7590 02/06/2019 NORTON ROSE FULBRIGHT US LLP 2200 ROSS A VENUE SUITE 3600 DALLAS, TX 75201-7932 FIRST NAMED INVENTOR Peter Ohnemus 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. TRCP.P0014US/l 1605367 2531 EXAMINER EVANS, KIMBERLYL ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 02/06/2019 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): doipdocket@nortonrosefulbright.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER OHNEMUS, HENRIK STEFFENSEN, DAVID LEASON, and DOMINIQUE HABEGGER Appeal2017-011779 1 Application 11/071,978 Technology Center 3600 Before CARLA M. KRIVAK, HUNG H. BUI, and ADAM J. PYONIN, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. Â§ 134(a). We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 The real party in interest is listed as "Thomson Reuters Global Resources." App. Br. 2. Appeal 2017-011779 Application 11/071,978 STATEMENT OF THE CASE Introduction The Application is directed to providing "a configurable user interface to a ratings system which presents integrated ratings of financial and non- financial information regarding companies of interest," which "enable[ s] users to explore complex, multivariate data of a company, optionally in relation to the company's sector, industry or in relation to other benchmark(s)." Spec. 6:21-26. Claims 20-28 are pending. App. Br. 17-19. Claim 20, the sole independent claim, is reproduced below for reference: 20. A computer-implemented method for constructing a multivariate presentation of variables concerning a rating of a company, each variable having a unique set of underlying parameters, comprising: associating on at least one computer in a distributed computer network the parameters of each variable with plural discrete indicators, the indicators including a first portion which relate to financial data of the company and a second portion which relate to non-financial data of the company, at least one indicator having a state setting; processing each state setting so as to assign either a quantified data value that has been (a) predefined to said indicator, or (b) calculated using other indicators, among the plural indicators, having a related status to that said indicator; computing within at least one processor of the at least one computer a numeric grade for each variable concerning the company on a scale that starts at zero by applying a formula that weights the value assigned to each of the plural discrete indicators associated with the parameters of each said variable including the quantified data value assigned to each of the plural discrete indicators having a state setting; computing within the at least one processor of the at least one computer an overall numeric grade from the computed numerical grades, wherein the overall numeric grade represents 2 Appeal 2017-011779 Application 11/071,978 an overall rating of the company based on the computed numerical grades for each variable concerning the company; defining on a display screen of the at least one computer an origin having the value of zero; extending from the origin at least three axes on the display screen, the axes being generally equidistant from each other and arranged as a two dimensional chart, one of the axes representing the overall numeric grade and the remaining axes representing a respective one of each of the variables; plotting on the display screen the numeric grade of each of the variables concerning the company and the computed overall numeric grade as a point on a respective axis, thereby displaying plotted points; and using the plotted points to interpolate first segments between the points plotted on respective axes on the display screen, wherein the interpolated first segments are plotted on the display screen and disposed about the origin in generally surrounding relation to the origin and wherein a plurality of the first segments are interpolated between the plotted points that correspond to the numeric grades of the respective variables concerning the company and wherein two of the first segments are interpolated between the plotted point corresponding to the overall numeric grade and two of the plotted points corresponding to the numeric grades of two respective variables. Rejection2 Claims 20-28 stand rejected under 35 U.S.C. Â§ 101 as being patent ineligible. Final Act. 9. Procedural History The Examiner determines the claims are patent ineligible under 35 U.S.C. Â§ 101 because the claims are directed to an abstract idea and do not 2 In the Answer, the Examiner withdraws the rejection of claims 20-28 under 35 U.S.C. Â§ 103(a) as being obvious. Ans. 3. 3 Appeal 2017-011779 Application 11/071,978 include additional elements that are sufficient to amount to significantly more than the abstract idea. Final Act. 9-15; Answer 5-17; see also Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347, 2355 (2014) (Describing the two-step framework "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts."). Appellants argue the Examiner's rejection is in error, because "[c]laims 20-28 are not directed to an abstract idea" (App. Br. 4), and "even assuming, arguendo, that the claims are directed to an abstract idea, the ordered combination of elements in claims 20-28 are patent eligible under 35 U.S.C. Â§ 101" (Reply Br. 4). After the mailing of the Answer and the filing of the Briefs in this case, the US PTO published revised guidance on the application ofÂ§ 101 ("Guidance"). USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance ("Memorandum"). Under the Guidance "Step 2A," the office first looks to whether the claim recites: ( 1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a}-(c), ( e }-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then (pursuant to the Guidance "Step 2B") look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.05(d)); or 4 Appeal 2017-011779 Application 11/071,978 ( 4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum. Pursuant to the Guidance, we are persuaded the claims are not properly rejected as patent ineligible. We discuss our analysis under the Guidance with respect to independent claim 20. ANALYSIS We agree with the Examiner that claim 20 recites an abstract idea pursuant to step one of the Alice framework (and, commensurately, Step 2A, Prong One, of the Guidance). See Final Act. 9; Memorandum, Section III (A) (1) (Prong One: Evaluate Whether the Claim Recites a Judicial Exception). Particularly, claim 20 recites determining a rating for a company based on both financial and non-financial data. Thus, the claim recites "fundamental economic principles or practices," or "commercial or legal interactions," which are "[ c ]ertain methods of organizing human activity." Memorandum, Section I (b ); see also Specification 1-2. The claim further recites a method of assigning values and using a formula to calculate grades; thus, the claim includes "[ m ]athematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations," additionally. Memorandum, Section I (a). As such, the claim "falls within the subject matter groupings of abstract ideas." Memorandum, Section III (A) (1 ); see also RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to another abstract idea ... does not render the claim non-abstract."). 5 Appeal 2017-011779 Application 11/071,978 Upon determining the claim recites an abstract idea, the claim is evaluated as to whether, as a whole, it "integrates the recited judicial exception into a practical application of the exception." Memorandum, Section III (A) (2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application). We determine that, pursuant to Prong Two of the Guidance, claim 20 is patent eligible. Claim 20 includes additional elements such as displaying the calculated information by plotting a graph having at least three axes, and interpolating the values of the information between respective axes. This specific manner of providing a graphical user interface results in a method of "improving the evaluation and presentation of rating data," such that the claim as a whole integrates the process into a practical application. Reply Br. 6; Spec. 2: 12-13 ("It would be an improvement in the field to provide board members and executive management teams with an integrated view of companies of interest."); see also Spec. 6; Memorandum, Section II. (' 'Directed To'' a Judicial Exception). Accordingly, the claim is patent eligible because is not directed to a judicial exception under Step 2A of the Guidance. See Memorandum, Section III (A) (2). We note the Memorandum provides the analysis herein "does not end the inquiry," because "[t]he claims must also satisfy the other conditions and requirements for patentability, for example, under section 102 (novelty), 103 (nonobviousness), or 112 (enablement, written description, definiteness)." Memorandum fn. 21. Such further inquiry, however, is not before us. Our review in this appeal is limited only to the above rejections and the issues raised by Appellants. 37 C.F.R. Â§ 41.50; see also MPEP Â§ 1213.02 ("The 6 Appeal 2017-011779 Application 11/071,978 Board's primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims."). Based on the foregoing, we do not sustain the Examiner's rejection of independent claim 20, or of the claims dependent thereon. DECISION The Examiner's decision rejecting claims 20-28 is reversed. REVERSED 7