Ex Parte PaiDownload PDFPatent Trial and Appeal BoardOct 17, 201713756037 (P.T.A.B. Oct. 17, 2017) 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. 13/756,037 01/31/2013 Yogish Pai 37202/512001; 126740 4213 57956 7590 10/19/2017 OSHA - LIANG L.L.P. (INTUIT) TWO HOUSTON CENTER 909 FANNIN STREET, SUITE 3500 HOUSTON, TX 77010 EXAMINER MAGUIRE, LINDSAY M ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 10/19/2017 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): docketing@oshaliang.com lord@oshaliang.com hathaway@oshaliang.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte YOGISH PAI Appeal 2016-0006991 Application 13/756,0372 Technology Center 3600 Before HUBERT C. LORIN, NINA L. MEDLOCK, and BRUCE T. WIEDER, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 2—13 and 15—26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our decision references Appellant’s Appeal Brief (“Br.,” filed April 24, 2015) and the Examiner’s Answer (“Ans.,” mailed August 6, 2015) and Final Office Action (“Final Act.,” mailed November 17, 2014). 2 Appellant identifies Intuit Inc. as the real party in interest. Br. 3. Appeal 2016-000699 Application 13/756,037 CLAIMED INVENTION Appellant’s claimed invention “relates to a method to generate a suggested calculation configuration in a software application for a geographical region” (Spec. 11). Claims 2 and 15 are the independent claims on appeal. Claim 2, reproduced below, is illustrative of the claimed subject matter: 2. A method to generate a suggested calculation configuration in a software application for a geographical region, comprising: obtaining a plurality of calculation configurations generated by a plurality of users according to a regulatory requirement of the geographical region, wherein each of the plurality of calculation configurations comprises a configuration entry that is used by the plurality of users to configure a plurality of instantiations of the software application for performing a pre determined task, and wherein performing the pre-determined task within the geographical region comprises at least calculating a result based on the configuration entry; generating, by a computer processor, a statistical measure of the plurality of users and a number of times the pre-determined task is performed by the plurality of users; generating, by the computer processor and in response to the statistical measure exceeding a pre-determined threshold, a suggested calculation configuration to represent the plurality of calculation configurations; and presenting, in response to at least determining that a new user of the software application is within the geographical region, the suggested calculation configuration to the new user, wherein the suggested calculation configuration is used by the new user to configure a new instantiation of the software application for performing the predetermined task within the geographical region, wherein the software application comprises a payroll software application, wherein the calculation configuration comprises a payroll calculation configuration, and 2 Appeal 2016-000699 Application 13/756,037 wherein performing the pre-determined task within the geographical region further comprises generating, based on the regulatory requirement, at least one selected from a group consisting of a pre-tax deduction amount, a tax withholding amount, and a post-tax deduction amount. REJECTION Claims 2—13 and 15—26 are rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. ANALYSIS Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[ljaws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Banklnt’l, 134 S. Ct. 2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1300 (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 Corp., 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. If the claims are not directed to patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination”’ to determine whether there are additional 3 Appeal 2016-000699 Application 13/756,037 elements that ‘“transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1297). The Court acknowledged in Mayo, that “all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. Therefore, the Federal Circuit has instructed that claims are to be considered in their entirety to determine “whether their character as a whole is directed to excluded subject matter.” McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). Appellant argues here that the § 101 rejection cannot be sustained because the Examiner has provided no evidence to support the finding that the claims are directed to an abstract idea (Br. 6—9). Appellant asserts that the Supreme Court, in Alice, cited authority (i.e., two textbooks and a law review article), and found “through evidence” that “intermediated settlement” is a fundamental economic practice and, therefore, an abstract idea {id. at 8). And Appellant ostensibly maintains that because the Examiner fails to cite any supporting references, the Examiner has failed to provide the “substantial evidence” required to establish a prima facie case that the claims are directed to an abstract idea (id. at 8—9). As an initial matter, we find nothing in Alice that requires the Office to identify specific references to support a finding that a claim is directed to an abstract idea. Nor, contrary to Appellant’s suggestion (id. at 7), did this Board hold, in Ex parte Renald Poisson, Appeal 2012-011084 (PTAB February 27, 2015), that there is any such requirement. Instead, the Federal Circuit has repeatedly noted that “the prima facie case is merely a 4 Appeal 2016-000699 Application 13/756,037 procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for rejection, “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to meet the notice requirement of § 132. Id.', see also Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when [the] rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”). Here, in rejecting the pending claims under § 101, the Examiner analyzed the claims using the Mayo!Alice two-step framework, consistent with the guidance set forth in the USPTO’s June 25, 2014 “Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty., Ltd. v. CLS Bank International, et alC Specifically, the Examiner notified Appellant that claims 2—13 and 15—26 are directed to “generating a suggested calculation configuration in a software application for a geographical region,” i.e., to a fundamental economic practice, and therefore, to an abstract idea; and that the limitations (beyond the abstract idea) do not amount to “significantly more” than the abstract idea itself but instead are “merely instructions to implement the abstract idea on a 5 Appeal 2016-000699 Application 13/756,037 computer and require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry” (Final Act. 2—3). The Examiner, thus, notified Appellant of the reasons for the rejection “together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” 35 U.S.C. § 132. And, we find that, in doing so, the Examiner set forth a proper rejection under § 101 such that the burden then shifted to Appellant to demonstrate that the claims are patent-eligible. We also are not persuaded of Examiner error by Appellant’s argument that the Examiner failed to properly consider the second step of the Mayo/'Alice framework (Br. 9—10). Appellant maintains that even if the claims are directed to an abstract idea, the claims are nonetheless directed to patent-eligible subject matter because “independent claims 2 and 15 include an inventive concept sufficient to transform any judicial exception found in the claims into patent-eligible subject matter” {id. at 9). In this regard, Appellant asserts that, similar to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), claim 2 is “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of software applications specifically configured for geographic regions”; that “claim 2 [explicitly recites] ‘at least determining that a new user of the software application is within the geographical region’ and ‘the suggested calculation configuration is used by the new user to configure a new instantiation of the software application for performing the pre-determined task within the geographical region’”; and that, as such, “claim 2 includes a claimed solution for overcoming a problem specifically 6 Appeal 2016-000699 Application 13/756,037 arising in the realm of configuring software applications for users within a specific geographic region” (Br. 10). Appellant asserts that claim 15 also includes explicit limitations that are necessarily rooted in computer technology to overcome a problem arising in the realm of configuring software applications for users within a specific geographical region. Appellant’s arguments are not persuasive of Examiner error at least because claim 2 does not require configuring a software application for performing a predetermined task within a specific geographical region. Instead, claim 2 merely calls for collecting information, i.e., a plurality of calculation configurations generated by a plurality of users; analyzing the collected information to identify a suggested calculation configuration to represent the plurality of calculation configurations; and presenting the suggested calculation configuration to a new user of the software application within the geographical region — activities squarely within the realm of abstract ideas. See, e.g., Elec. Power Grp. LLC v. Alstom, S. A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (holding that the claims at issue were directed to an abstract idea where “[t]he advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions.”); see also Content Extraction & Transmission v. Wells Fargo Bank, N.A., 776 F.3d 1343 (Fed. Cir. 2014). There is no indication in the Specification that any specialized computer hardware or other inventive computer components are required. In fact, the Specification explicitly discloses that “[ejmbodiments of the invention may be implemented on virtually any type of computer regardless of the platform being used” (see Spec. 166). In other words, the claims 7 Appeal 2016-000699 Application 13/756,037 merely employ generic computer components to perform generic computer functions, i.e., receiving, analyzing, and displaying information, which is not enough to transform an abstract idea into a patent-eligible invention. We are not persuaded that the Examiner erred in rejecting claims 2—13 and 15—26 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection.3 DECISION The Examiner’s rejection of claims 2—13 and 15—26 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 3 Because we find that claims 15—26 are patent-ineligible in view of the Mayo/Alice two-step test, we need not, and do not, consider Appellant’s argument that the Examiner erred in determining that the claims are directed to patent-ineligible data structures. 8 Copy with citationCopy as parenthetical citation