Ex Parte Spradling et alDownload PDFPatent Trials and Appeals BoardFeb 13, 201912977631 - (D) (P.T.A.B. Feb. 13, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/977,631 12/23/2010 90879 7590 02/15/2019 Thomson Reuters c/o Intellectual Property 3 Times Square New York, NY 10036 FIRST NAMED INVENTOR Lee Scott Spradling 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. TRGR(R&G)_OOl_US3 9701 EXAMINER DANZIG,REVAR ART UNIT PAPER NUMBER 3687 NOTIFICATION DATE DELIVERY MODE 02/15/2019 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): IPDocketing@thomsonreuters.com IPDocketing@clarivate.com docketing@thomsonreuters.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LEE SCOTT SPRADLING, STEPHEN WILSON LINDSEY, MARRIETTE LOUISE KERSHNER, JASON ROBERT PENNEMAN, and SHANE EUGENE JIMMERSON 1 Appeal2017-006765 Application 12/977,631 Technology Center 3600 Before ERIC B. CHEN, KARA L. SZPONDOWSKI, and ADAM J. PYONIN, Administrative Patent Judges. CHEN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) from the final rejection of claims 1-9, 22-36, 38-57, and 59-64. Claims 10-21 have been withdrawn from consideration and claims 37 and 58 have been cancelled. (App. Br. 2.) We have jurisdiction under 35 U.S.C. § 6(b ). We reverse. 1 According to Appellants, the real party in interest is Thomson Reuters Global Resources. (App. Br. 2.) Appeal2017-006765 Application 12/977 ,631 STATEMENT OF THE CASE Appellants' invention relates to a professional services audit tool. (Abstract.) Claim 1 is exemplary: 1. A computer-implemented method for planning and performing an audit, the method comprising: presenting by a display, a plurality of inquiries to a user comprising a plurality of audit items and a set of risk levels associated with the plurality of audit items, the plurality of audit items comprising in part, a set of assertions associated with a set of assertion categories, the set of assertion categories comprising assertions pertaining to classes of transactions and events for the period under audit, assertions pertaining to account balances at the period end and assertions pertaining to presentation and disclosure, the set of risk levels further being associated with a plurality of audit risks comprising inherent risk, control risk and assessed risk of material misstatement; processing a set of responses to the presenting step, the processing including executing a response code set by a computer, said processing comprising associating a selected risk level from the set of risk levels to a given response from the set of responses input; generating automatically at least one customizable audit plan and one or more alternative audit plans for conducting the audit based at least in part on the processing step, the audit plan comprising a plurality of audit procedures associated with an audit area, the generating including executing an audit code set by the computer; presenting to the user, by the display, the at least one customizable audit plan and one or more alternative audit plans; presenting one or more electronic documents associated the at least one customizable audit plan and one or more alternative audit plans, said one or more electronic documents maintained on one or more external engagement management systems, a given electronic document comprising a smart document. 2 Appeal2017-006765 Application 12/977 ,631 Claims 1-9, 22-36, 38-57, and 59-64 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. ANALYSIS We are persuaded by Appellants' arguments (App. Br. 9-10) that the Examiner has not satisfied the proper burden for making a prima facie case for patent ineligibility under 35 U.S.C. § 101. The Examiner determined that claims 1, 22, and 43 "are directed to the abstract idea of planning and performing an audit by performing the steps of presenting audit items and their associated risk levels, generating an audit plan comprising audit procedures, and generating a storable work paper" (Ans. 2-3) and "[t]hese elements claim the abstract idea of "an idea 'of itself"' (id. at 4). Moreover, the Examiner determined that "in Ultramercial, the steps of displaying an advertisement in exchange for access to copyrighted media was called an 'idea', but could also be considered organizing human activity because the claim describes advertising" and [ s ]everal cases have found concepts relating to processes of comparing data that can be performed mentally abstract, such as comparing information regarding a sample or test subject to a control or target data (Myriad CAFC), collecting and comparing known information (Classen), diagnosing an abnormal condition by performing clinical tests and thinking about the results (In re Grams), obtaining and comparing intangible data (Cybersource). (Id. at 5.) We agree that the Examiner has not satisfied the proper burden for a prima facie case. An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. § 101. 3 Appeal2017-006765 Application 12/977 ,631 However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Bank Int 'l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 ( 1981) ); "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores" (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). 4 Appeal2017-006765 Application 12/977 ,631 In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 192 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract ... is not accorded the protection of our patent laws, ... and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum to the second step of the Alice and Mayo framework, where "we must examine the elements of the claim to determine whether it contains an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent- eligible application." Alice, 573 U.S. at 221 (quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. (quoting Mayo, 566 U.S. at 77). "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The PTO recently published revised guidance on the application of § 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent 5 Appeal2017-006765 Application 12/977 ,631 Subject Matter Eligibility Guidance ("Memorandum"). Under that guidance, we first look 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 § 2106.0S(a}-(c), (e}-(h)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then 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 § 2106.0S(d)); or (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. Although the Examiner generally states that independent claims 1, 22, and 43 "are directed to the abstract idea of planning and performing an audit by performing the steps of presenting audit items and their associated risk levels, generating an audit plan comprising audit procedures, and generating a storable work paper" with citations to multiple Federal Circuit cases, this statement neither: (a) identifies the specific limitations in the claims under examination that the Examiner believes recites an abstract idea; nor (b) determines whether the identified limitations fall within the subject matter groupings of abstract ideas of mathematical concepts, certain methods of 6 Appeal2017-006765 Application 12/977 ,631 organizing human interactions, or mental processes. See Memorandum 16. In particular, the Examiner neither accounts for all the limitations recited in claims 1, 22, and 43, nor adequately articulates why the claimed concepts are analogous to the facts of Ultramercial, Myriad, Classen, Grams, or Cybersource. Accordingly, we are persuaded by Appellants' arguments that: the present rejection fails to properly identify the basis for determining that independent claims 1, 22 and 43, as well as the dependent claims thereon, are indeed directed to an abstract idea. The Examiner, in making the assertion, fails to at least identify where planning and performing an audit has been established as an abstract idea in objective evidence. (App. Br. 9-10.) Thus, we do not sustain the rejection of claims 1, 22, and 43 under 35 U.S.C. § 101. Claims 2-9, 23-36, 38--42, 44--57, and 59-64 depend from independent claims 1, 22, and 43. We do not sustain the rejection of claims 2-9, 23-36, 38--42, 44--57, and 59-64 under 35 U.S.C. § 101 for the same reasons discussed with respect to independent claims 1, 22, and 43. DECISION The Examiner's decision rejecting claims 1-9, 22-36, 38-57, and 59- 64 under 35 U.S.C. § 101 is reversed. REVERSED 7 Copy with citationCopy as parenthetical citation