Ex Parte STIFF et al

Patent Trial and Appeal BoardSep 21, 2018

13854350 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/854,350 04/01/2013 21967 7590 09/24/2018 Hunton Andrews Kurth LLP Intellectual Property Department 2200 Pennsylvania Avenue, N.W. Washington, DC 20037 UNITED ST A TES OF AMERICA FIRST NAMED INVENTOR Geoffrey S. STIFF 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. 52493.000658 1326 EXAMINER RANKINS, WILLIAM E ART UNIT PAPER NUMBER 3694 MAIL DATE DELIVERY MODE 09/24/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GEOFFREY S. STIFF, HOLLY R. SNYDER, JOEL A. PROUGH, and BRIAN E. SPRINGER Appeal2017-006643 Application 13/854,350 Technology Center 3600 Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and BRUCE T. WIEDER, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. Â§ 134(a) of the Examiner's final decision rejecting claims 28-29 and 31--47. We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b ). BACKGROUND Appellants' invention is directed to a system and process for providing multiple income start dates for annuities. Spec. 1. Appeal2017-006643 Application 13/854,350 Claim 28 is illustrative: 28. A computational device that issues an annuity structure having multiple income start dates, the annuity structure comprising a base portion segment and at least one secondary portion segment, the computational device compnsmg: a data storage containing data relating to one or more annuity structures; an input that receives an electronic request, via a network, for an annuity structure having multiple income start dates; a processor, coupled to the data storage and the input and programmed to: automatically generate, responsive to the electronic request and by the processor, an annuity structure comprising: a base portion segment, where the base portion segment is a functional annuity having a first annuity schedule; and a secondary portion segment, where the secondary portion segment is a functional annuity having a second annuity schedule; where the base portion segment and the secondary portion segment each operate as its own annuity; the base portion segment and the secondary portion segment being each included in a single contract; and electronically issue, by the processor, the annuity structure to an annuity holder; and the annuity structure has an annuity commencement date of the base portion segment under the contract; the annuity structure having an annuity commencement date of the secondary portion segment under the contract; the base portion segment constituted by an accumulation period followed by a payout period; and the secondary portion segment constituted by an accumulation period followed by a payout period. 2 Appeal2017-006643 Application 13/854,350 Appellants appeal the following rejection(s): Claims 28, 29, and 31--47 under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. PRINCIPLES OF LAW An invention is patent-eligible if it claims a "new and useful process, machine, manufacture, or composition of matter." 35 U.S.C. Â§ 101. The Supreme Court, however, has long interpreted Â§ 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347, 2354 (2014). In determining whether a claim falls within the excluded category of abstract ideas, we are guided in our analysis by the Supreme Court's two- step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)). In accordance with that framework, we first determine whether the claim is "directed to" a patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356 ("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."); 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."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing respondents' claims according to the above statements from our cases, we think that a physical and chemical process for molding precision synthetic rubber products falls within the Â§ 101 categories of possibly patentable subject matter."); Parker v. Flook, 437 U.S. 584, 594-595 (1978) 3 Appeal2017-006643 Application 13/854,350 ("Respondent's application simply provides a new and presumably better method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S. 63, 64 (1972) ("They claimed a method for converting binary-coded decimal (BCD) numerals into pure binary numerals."). The patent-ineligible end of the spectrum includes fundamental economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611; mathematical formulas, Parker, 437 U.S. at 594-95; and basic tools of scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent- eligible side of the spectrum are physical and chemical processes, such as curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores," and a process for manufacturing flour, Gottschalk, 409 U.S. at 69. If the claim is "directed to" a patent-ineligible abstract idea, we then consider the elements of the claim-both individually and as an ordered combination-to assess whether the additional elements transform the nature of the claim into a patent-eligible application of the abstract idea. Alice, 134 S. Ct. at 2355. This is a search for an "inventive concept"-an element or combination of elements sufficient to ensure that the claim amounts to "significantly more" than the abstract idea itself. Id. In addition, the Federal Circuit has held that if a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent-eligible under Â§ 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible underÂ§ 101."). 4 Appeal2017-006643 Application 13/854,350 Claims involving data collection, analysis, and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and displaying certain results of the collection and analysis" are "a familiar class of claims 'directed to' a patent ineligible concept"); see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016). Claims that recite an improvement to a particular computer technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (determining claims not abstract because they "focused on a specific asserted improvernent in computer animation"). ANALYSIS Rejection under 35 US.C. Â§101 The Examiner determines that the claims are directed to the abstract idea of generating and issuing an annuity structure and is similar to concepts identified by the courts as certain methods of organizing human activity such as generating rule based tasks for processing an insurance claim. Final Act. 4. The Examiner also determines that the claims recite storing, receiving and processing data. Ans. 4. The Examiner finds that the additional elements other than the abstract idea are no more than instructions to implement the idea on a computer, and/or recite generic computer structure that serves to perform 5 Appeal2017-006643 Application 13/854,350 generic computer functions that are well-understood, routine and conventional activities previously known. Final Act. 4. We agree. We are not persuaded of error on the part of the Examiner by Appellants' argument that the Examiner erred because the claims do not recite a mathematical algorithm or a fundamental economic or longstanding commercial practice because the Examiner did not determine that the claims were directed to a mathematical algorithm or a fundamental economic or longstanding practice. We also agree with the Examiner that the claims are not rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks such as the claims in DDR Holdings LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) as argued by Appellants. In DDR, the Comi noted that a claim may amount to more than anv abstract idea recited in the clairns when it addresses a business - ,,/ - - - - - challenge, such as "retaining website visitors," ,vhere that challenge is particular to a specific technological environment, such as the Internet. Appellants contend that the claim addresses a business challenge of issuing an annuity stmcture having rnuhiple income start dates that is particular to a specific type of annuities processing technology. Br. 6. Appellants also contend that the claims are directed to a particular solution to provide a system and process for purchasing, creating and using portional annuities to assist consumers in financial planning, including tax, retirement and estate planning. Reply 3. In DDR, the court stated that "the [] patent's claims address the problern of retaining website visitors that; if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly 6 Appeal2017-006643 Application 13/854,350 transpmi.ed away from a host's website after 'clicking' on an advertisernent and activating a hyperlink." DDR Holdings, 773 F.3d at 1257. This was done in the claim by serving a composite page with content based on the link that was activated to serve the page. In contrast1 claim 28 perfonns a process that is directed to issuing an annuity structure by collecting, analyzing and displaying data but does not recite how the various computer elements recited technically perform these functions and thus is not directed to solving a technical problem. That this process of issuing an annuity structure by collecting, analyzing and displaying data is assisted by generic computer elements is insufficient to transform the abstract idea recited in the claim into patent eligible subject matter. And, unlike the situation in DDR Holdings, we find no indication in the record, nor do Appellants point us to any indication, that a computer network or processor is used other than in its normal, expected, and routine manner, e.g., for collecting, analyzing and displaying data. We also do not agree with Appellants that the claims are directed to non-generic arrangement of known conventional pieces similar to the claims in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 837 F.3d 1341, 1350 (Fed. Cir. 2016). Reply 4-5. In BASCOJ\1, the Federal Circuit held "[t]he inventive concept described and claimed in the '606 patent is the installation of a filtering tool at a specific location, remote from end-users, with customizable filtering features specific to each end user." BASCOl'vf, 827 F.3d at 1350. ln determining this feature to be an inventive concept, the Federal Circuit explained that the remote location of a filtering tool having customizable user-specific filtering features provides the filtering tool both the benefits of 7 Appeal2017-006643 Application 13/854,350 a filter on a local computer and the benefits of a fiHer on the ISP server and is a technical improvement over prior art ways of filtering content Id. at 1350-51. Notably, the Federal Circuit specifically determined that "the claims may be read to 'improve[] an existing technological process."' Id. at 1351 (citing Alice, 134 S. Ct. at 2358). There is no technical improvements in the an-angements of the data storage, network and processor recited in claim 28. vV e do not agree with the Appellants that the determination that the claims are directed to an abstract idea is made without support or analysis. Br. 7. Consideration of evidence in rnaking a determination under the first step of the Alice framework has merit See Apple, Inc. v. Ameranth, Inc., 842 F.2d 1229 (Fed. Cir. 2016). But there is no requirement that examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. Accordingly, courts do not t.._., "'' necessarily rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings. Evidence may be helpful in ceiiain situations where, for instance, facts are in dispute. But it is not always necessary. It is not necessary in this case because the clairns are clearly directed to the collection, analysis and display of data. In addition, we conclude that the Examiner's analysis, which Appellants acknowledge they have read, is sufficient to place Appellants on notice as to step 1 of Alice as required under 35 U.S.C. Â§ 132 and thus supplies the requisite analysis to suppmi the rejection. See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011). Appellants' understanding of the Examiner's 8 Appeal2017-006643 Application 13/854,350 rejection on this point was manifested by their response to the Office Action. We conclude the Examiner's analysis was more than sufficient to meet this burden as to Alice step L \Ve are not persuaded of error on the part of the Examiner by Appellants argument that the claims require a processor and therefore include significantly more than the abstract idea. Br. 8. Relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2359). Appellants do not convince us of Examiner error by the argument that the claims are admittedly novel and nonbovious. Br. 8. To the extent Appellants maintain that the limitations of clairn 1 necessarily amount to "significantly more" than an abstract idea because the claimed apparatus is allegedly patentable over the prior art, Appellants misapprehend the controlling precedent. Although the second step in the Alice/A1ayo frame,vork is termed a search for an "inventive concept," the analysis is not an evaluation of novelty or non-obviousness, but rather, a search for '"an element or combination of elements that is sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself"' Alice, 134 S. Ct. at 2355. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent- ineligible. /Â·/ee Mayo, 566 U.S. at 90. We are not persuaded of error on the part of the Examiner by Appellants argument that the claims do not preempt the abstract idea. Br. 9. While preemption may signal patent ineligible subject matter, the absence of 9 Appeal2017-006643 Application 13/854,350 complete preemption does not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc., 788 F.3d at 1362-63, cert, denied, 136 S. Ct. 701, 193 (2015) ("[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e-commerce setting do not make them any less abstract."). And, "[w]here a patent's claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot." Ariosa, 788 F.3d at 1379. In view of the foregoing, we will sustain the Examiner's rejection of claim 28. We will sustain the rejection as it is directed to the remaining claims as Appellants have not argued the separate eligibility of these claims. DECISION We affirm the Examiner's 35 U.S.C. Â§ 101 rejection of claims 28-29 and 31--47. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). See 37 C.F.R. Â§ 1.136(a)(l). AFFIRMED 10