Ex Parte Pai

Patent Trial and Appeal Board

Oct 17, 2017

13756037 (P.T.A.B. Oct. 17, 2017)

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
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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
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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
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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
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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
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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
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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.
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