Ex Parte Spradling et al

Patent Trials and Appeals Board

Feb 13, 2019

12977631 - (D) (P.T.A.B. Feb. 13, 2019)

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 Claims 10-21 have been withdrawn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