Ex Parte StoneDownload PDFPatent Trials and Appeals BoardJul 1, 201912817806 - (D) (P.T.A.B. Jul. 1, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/817,806 06/17/2010 23460 7590 07/03/2019 LEYDIG VOIT & MA YER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON A VENUE CHICAGO, IL 60601-6731 FIRST NAMED INVENTOR Stephen J. Stone 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. 706489 6363 EXAMINER MAGUIRE, LINDSAY M ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 07/03/2019 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN J. STONE Appeal2018-000635 Application 12/817,806 Technology Center 3600 Before MAHSHID D. SAADAT, BETH Z. SHAW, and JAMES W. DEJMEK, Administrative Patent Judges. SAADAT, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 1, 2, 4, 6-9, 11-16, and 18-21, which constitute all the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is American International Group, Inc. Br. 1. Appeal2018-000635 Application 12/817,806 STATEMENT OF CASE Introduction Appellant's Specification describes "systems, methods, and computer program products for administering a guaranteed benefit of an investment product." Spec. ,r 4. Representative Claim Representative claim 1 under appeal reads as follows; 1. A computer-implemented system for administering an investment product having an account a term including a p 1 umlity of time periods and a guaranteed benefit comprising: a physical computer-readable medium including an investment product benefit calculating program; and a processor adapted to execute the investment product benefit program contained in the physical computer-readable medium; a web-enabled interface operably arranged with the processor, the web-enabled interface adapted to receive, periodically, market information from a market information source over the internet, the market information comprising at least one market-based interest rate; wherein the investment product program includes a calculating module having computer executable instructions adapted to determine, periodically, a guaranteed withdrawal amount that can be withdrawn from the account in one time period under the guaranteed benefit of the investment product without affecting the guaranteed withdrawal amounts of subsequent time periods, the guaranteed withdrawal amount determined based upon a formula including a benefit rate, the benefit rate including a variable component that varies as a function of said at least one market-based interest rate, said at least one market-based interest rate being correlated to cost changes of a hedging investment activity for funding the guaranteed withdrawal amount, said at least one market-based 2 Appeal2018-000635 Application 12/817,806 interest rate being set according to the market information received from the market information source. Rejection on Appeal Claims 1, 2, 4, 6-9, 11-16, and 18-21 stand rejected under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter. See Final Act. 2. ANALYSIS The Examiner determines that the claims are directed to "a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more" by reciting method steps related to "administering an investment product." Final Act. 2. Applying the first part of the Alice analysis, the Examiner finds the claims "are drawn to the abstract idea of administering an investment product with the steps of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) performing calculations and storing that recognized data in a memory," which are "undisputedly well known." Id. Applying the second part of the Alice analysis, the Examiner finds the claims do not amount to significantly more than the abstract idea itself because the claims "contain no limitations either individually or as an ordered combination--that transform the abstract idea into a patent-eligible application." Id. Appellant argues that the claimed invention is not directed to an abstract idea because claim 1 "is directed to a statutory class of invention as recognized in Section 101, namely a machine" or "a computer-implemented system." Br. 6. According to Appellant, "[c]laim 1 recites additional elements that amount to significantly more than a judicial exception" by including "features that apply its claimed concepts to a new and useful end." 3 Appeal2018-000635 Application 12/817,806 Br. 6. Referring to paragraph 3 of the Specification, Appellant explains "[t]he claimed approach helps an insurance provider periodically adjust the guaranteed benefit according to the cost associated with hedging the guarantee," which "is a significant improvement over any existing technological system/process known at the time of the invention." Br. 6-7. Appellant further asserts the recited features are "rooted in computer technology in order to satisfy persistent needs specifically arising in the field of investment products." Br. 7. Appellant argues independent claims 8 and 15 are patent-eligible by presenting arguments similar to those outlined above regarding claim 1. Br. 8-12. Principles of Law Section 101 of the Patent Act provides that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the Supreme Court has long recognized an implicit exception to this section: "Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is "directed to one of those patent-ineligible concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). 4 Appeal2018-000635 Application 12/817,806 That is, we examine the claims for an "inventive concept," "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, 573 U.S. at 217-18 ( alteration in original) ( quoting Mayo, 566 U.S. at 72-73). In January 2019, the USPTO published revised guidance on the application of§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Guidance"). 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 activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) §§ 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018)). 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 is not well-understood, routine, and conventional in the field (see MPEP § 2106.05(d)); or ( 4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. 5 Appeal2018-000635 Application 12/817,806 Abstract Idea To determine whether a claim recites an abstract idea, we (1) identify the claim's specific limitations that recite an abstract idea, and (2) determine whether the identified limitations fall within certain subject matter groupings, namely (a) mathematical concepts2; (b) certain methods of organizing human activity3; or ( c) mental processes. 4 Under step 2A, prong 1, of the Guidance ( consistent with the Alice analysis), we must determine "whether the claims at issue are directed to one of those patent-ineligible concepts," including the abstract ideas enumerated in the Guidance. Claim 1 recites, in part, "receive, ... , market information," and employing the "calculating module ... to calculate, periodically, a guaranteed withdrawal amount that can be withdrawn from the account in one time period under the guaranteed benefit of the investment product without affecting the guaranteed withdrawal amounts of subsequent time periods." Claims 8 and 15 recite similar elements. Consistent with the Examiner's finding, the above-mentioned elements recite a concept of facilitating a guaranteed withdrawal amount 2 Mathematical concepts include mathematical relationships, mathematical formulas or equations, and mathematical calculations. See Guidance, 84 Fed. Reg. at 52. 3 Certain methods of organizing human activity include fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See Guidance, 84 Fed. Reg. at 52. 4 Mental processes are concepts performed in the human mind including an observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg. at 52. 6 Appeal2018-000635 Application 12/817,806 based on a formula that relates to at least one market-based interest rate, which is correlated to cost changes of a hedging investment activity. Hedging and mitigating risk are examples of fundamental or long-standing economic practices. The Guidance identifies "fundamental economic principles or practices" as an example of certain methods of organizing human activity, which is an enumerated category of abstract ideas. See Guidance, 84 Fed. Reg. at 52. Further, the fact that the hedging and mitigating risk steps are performed by instructions executed on one or more computing devices does not impart patent eligibility on the claims, because the recitation of "computer-implemented system," "processor," "web- enabled interface," and calculating module" merely amounts to a statement to use a computing system to receive market information and calculate a guaranteed withdrawal amount. "[I]f a patent's recitation of a computer amounts to a mere instruction to 'implemen[t]' an abstract idea 'on ... a computer,' that addition cannot impart patent eligibility." Alice, 573 U.S. at 223 ( quoting Mayo, 566 U.S. at 84). Thus, claims 1, 8, and 15, as well as the corresponding dependent claims, recite an abstract idea. Notwithstanding Appellant's argument that the claimed approach improves the existing systems for adjusting the guaranteed benefit are directed to technical aspects of determining a guaranteed withdrawal, rather than the hedging and mitigating risk processes themselves, Appellant's argument does not change the fact that the claims recite a concept of fundamental economic practices, and thus, recite an abstract idea. 5 5 The Examiner also finds the claims recite performing calculations to determine the guaranteed withdrawal amount "which is something that can be accomplished by the human mind with pen and paper, given enough . " A 4 time. ns. . 7 Appeal2018-000635 Application 12/817,806 Although claim 1 recites an abstract idea based on certain method of organizing human activity- specifically a fundamental economic practice, under step 2A, prong 2, of the Guidance, we must still determine whether the abstract idea is integrated into a practical application, namely whether the claim applies, relies on, or uses the abstract idea in a manner that imposes a meaningful limit on the abstract idea, such that the claim is more than a drafting effort designed to monopolize the abstract idea. See Guidance, 84 Fed. Reg. at 54--55. We, therefore, (1) identify whether there are any additional recited elements beyond the abstract idea, and (2) evaluate those elements individually and collectively to determine whether they integrate the exception into a practical application. See id. Here, the processor, the interface, and the calculating module, as well as executing the program, are the only recited elements beyond the abstract idea, but these additional elements do not integrate the abstract idea into a practical application when reading claims 1, 8, and 15 as a whole. Therefore, we are not persuaded that the claimed invention improves the computer or its components' functionality or efficiency, or otherwise changes the way those devices function. In another words, contrary to Appellant's assertion (Br. 7), the claimed invention here merely uses generic computing components to calculate a guaranteed withdrawal amount based on collected market information-a generic computer implementation that is not only directed fundamental economic practices, but also does not improve a display mechanism as was the case in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016). The written description discloses that the recited processor, interface, and calculating module encompass generic components such as a general- 8 Appeal2018-000635 Application 12/817,806 purpose computer, memory, and network. See, e.g., Spec. ,r 31 (Describing the computing environment as including "any type of computer system based on: a microprocessor, a mainframe computer, a digital signal processor, a portable computing device, a personal organizer, a device controller, or a computational engine within an appliance."). See also Spec. ,r 56. Simply adding generic hardware and computer components to perform abstract ideas does not integrate those ideas into a practical application. See Guidance, 84 Fed. Reg. at 55 (identifying "merely includ[ing] instructions to implement an abstract idea on a computer" as an example of when an abstract idea has not been integrated into a practical application). Thus, the claimed limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not (1) improve the functioning of a computer or other technology, (2) are not applied with any particular machine (except for a generic computer), (3) do not effect a transformation of a particular article to a different state, and ( 4) are not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05(a}-(c), (e}-(h). Inventive Concept Because we determine claims 1, 8, and 15 are "directed to" an abstract idea, we consider whether the claims recites an "inventive concept." The Examiner determined the claims do not recite an inventive concept because the additional elements in the claims do not amount to "significantly more" 9 Appeal2018-000635 Application 12/817,806 than an abstract idea and do not involve "well-understood, routine, and conventional activities." See Final Act. 2; Ans. 4--5. We agree. The additional elements recited in the claim include processor, interface, and calculating module, which are recited at a high level of generality, and the written description indicates that these elements are generic computer components. See, e.g., Spec. ,r,r 31 and 56. Using generic computer components to perform abstract ideas does not provide the necessary inventive concept. See Alice, 573 U.S. at 223 ("[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention."). Thus, these elements, taken individually or together, do not amount to "significantly more" than the abstract ideas themselves. Consistent with the Examiner's findings, we see nothing in the claims or the Specification suggesting that these additional elements are anything but generic computer components that perform well-understand, routine, and conventional activities. See Ans. 5. As such, Appellant's claims can be distinguished from patent-eligible claims such as those in BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (Br. 11 ), that are directed to "solving a technology-based problem" (BASCOM, 827 F.3d at 1349-52) and "enhancing data in a distributed fashion" (Amdocs, 841 F.3d at. 1300--01). Conclusion For at least the above reasons, we agree with the Examiner that claims 1, 8, and 15 are "directed to" an abstract idea and does not recite an "inventive concept." Accordingly, we sustain the Examiner's rejection of 10 Appeal2018-000635 Application 12/817,806 claims 1, 8, and 15 and the remaining claims that fail to include additional elements that add significantly more to the abstract idea, under 35 U.S.C. § 101. DECISION We affirm the Examiner's rejection of claims 1, 2, 4, 6-9, 11-16, and 18-21 under 35 U.S.C. § 101. 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) (2015). AFFIRMED 11 Copy with citationCopy as parenthetical citation