Ex Parte Wilce et al

Patent Trial and Appeal Board

May 31, 2018

12748534 (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/748,534
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
FILING DATE FIRST NAMED INVENTOR
03/29/2010 Scot D. Wike
06/04/2018
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.
GOLDll-00050 5481
EXAMINER
OYEBISI, OJO 0
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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):
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOT D. WILCE, VINCENT A. GEORGE, HIEN Q. NGUYEN,
DONNA L. CONTI, PA TRICK E. HARRIS, and
DONNA M. MANSFIELD
Appeal 2016-006991
Application 12/748,534
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134 of the Examiner's
final decision rejecting claims 30-32, 34--42, and 44--49. We have
jurisdiction over the appeal under 35 U.S.C. § 6(b).
1 The real party in interest is Goldman, Sachs & Co. App. Br. 2.
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Application 12/748,534
BACKGROUND
Appellants' invention is directed to a system and method to facilitate
generation and/or negotiation of an agreement document via an agreement
modeling system. Spec. 1.
Claim 30 is illustrative:
30. A processor-implemented method of generating an
agreement document associated with an agreement between a
user and a counter-party, comprising:
receiving into a storage element agreement data from a
user via a display engine;
determining with a fact engine an agreement type based
on the agreement data;
determining one or more scopes associated with the
agreement data;
initializing a scope stack by placing the determined one
or more scopes in the scope stack;
dynamically evaluating the scope stack with an
evaluation engine via a processor using an agreement model
based on rules and expressions to generate a result; and
generating with a creation engine an agreement document
based on the agreement data and the generated result.
Appellants appeal the following rejection:
Claims 30-32, 34--42, and 44--49 under 35 U.S.C. § 101 as failing to
recite patent-eligible 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. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
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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, 76-78 (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 § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("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
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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 § 101. Cy her Source
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 under§ 101.").
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);
Fair Warning 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)
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( dete1mining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
ANALYSIS
Rejection under 35 U.S.C. § 1 OJ
The Examiner held that claim 30 is directed to generating an
agreement document which is a fundamental economic practice and thus an
abstract idea. Non-Final Act. 4. The Examiner also held that claim 30
recites steps that are simply a mental process that can be performed in the
human mind or by using a pen and paper. Ans. 3.
We agree with the Examiner. In addition, claim 30 is directed to
receiving data from a user, storing data, determining an agreement type,
determining one or more scopes, placing the data in a scope stack,
dynamically evaluating the scope stack and generating an agreement. As
such, claim 30 is directed to collecting information, analyzing it, and
displaying certain results of the collection and analysis and as such is
directed to an abstract idea on this basis as welL
The Examiner found that the claim 30 does not include limitations
that are "significantly more" than the abstract idea because claim 30 does
not include an improvement to another technology or technical field or to the
functioning of the computer itself. The Examiner noted that the limitations
in claim 30 are done by the generically recited storage devices and computer
processors. Non-Final Act. 4.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that claim 30 does not claim the mere concept of
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generating an agreement document but rather recite a specific process that
uses specific data in a manner never done before in that it uses agreement
data, a scope stack, and an agreement model to generate an agreement
document. App. Br. 11. In making this assertion, the Appellants list some
limitations in the claim, but fail to specify the manner in which those
limitations should inform any modifications to the Examiner's
characterization. Absent more specific assertions made by the Appellants,
we are unpersuaded the Examiner has erred in this regard.
To the extent that the Appellants are arguing that the claim recites
subject matter that is significantly more than the abstract idea articulated by
the Examiner because the claimed process has never been done before and is
novel, we note that Appellants misapprehend the controlling precedent.
Although the second step in the A lice/Afayo framework 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,,
l 34 S. Ct at 2355. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See lvfayo, 566 U.S. at 90.
This also applies to Appellants' argument that the Appellants are unaware of
any conventional pre-Internet approach that allowed someone to use a
device in order to perform the steps recited in claim 30 and that claim 30 is
patent eligible because there are no pending prior art rejections.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that claim 30 is not attempting to tie-up an exception
so that others cannot practice it. "\Vhile preemption rnay signal patent
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ineligible subject matter, the absence of 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. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir.), cert. denied, 136
S. Ct. 701 (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.
Appellants further argue that "dynamically evaluating a scope stack
with an evaluation engine via a processor using an agreement model based
on rules and expressions to generate a result allows a computer to handle
fluid environments in which agreements are generated, which amounts to an
innovation in computer technology that adds significantly more to the
alleged abstract idea." App. Br. 16. The Federal Circuit stated in Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) that the
claims at issue focused not on asserted advances in uses to which existing
computer capabilities could be put, but on a specific type of data structure,
i.e., a self-referential table for a computer database, designed to improve the
way a computer carries out its basic functions of storing and retrieving data.
The alleged improvement that Appellants tout does not concern an
improvement to computer capabilities but instead relates to an alleged
improvement in how agreements are formed, i.e., by evaluating a scope
stack using rules and expressions for which a computer is used as a tool in
its ordinary capacity. In this regard, there is no indication that any
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specialized hardware is required or that the invocation of the Internet is
recited in claim 30 that otherwise adds any inventive concept.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the Examiner failed to consider all claim
elements. Specifically, Appellants argue that the Examiner did not consider
the recitations regarding specific data, specific engines, and specific
operations that go beyond the mere concept of generating an agreement.
The recitations related to the specific data, specific engines, and specific
operations, however, are recitations that are part of the abstract idea itself of
generating an agreement. In addition, these steps are part of the abstract idea
of collecting and analyzing data.
In view of the foregoing, we will sustain the Examiner's rejection of
claim 30.
In regard to claims 31, 36, 38, 41, 46, and 48 we are not persuaded
that the recitation in these claims is not a function of the abstract idea of
generating an agreement document. In particular, the recitation of
transmitting the generated agreement document as in claims 3 1 and 41 is a
function of the abstract idea of generating an agreement document. In
addition the recitation of performing the generating via specific data as is
recited in claims 36 and 46 and generating a final agreement is also part of
the abstract idea of generating an agreement. Likewise the recitations of
receiving, processing, generating and transmitting in claims 3 8 and 48 are
also part of the abstract idea of generating an agreement. In addition, the
added recitations in these claims are also recitations of collecting, analyzing,
and storing data which we stated above was an abstract idea. While the
Appellants argue that the steps are not purely conventional which is
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presumably an argument that the claims recite "significantly more," the
Appellants have not directed our attention to how the steps performed by the
processor are any more than the conventional steps of collecting, analyzing,
and storing of data. To the extent that Appellants are arguing that these
claims recite novel subject matter, as we stated above, an invention can be
novel but still not recite significantly more than an abstract idea.
In view of the foregoing, we will sustain the Examiner's rejection of
claims 31, 36, 38, 41, 46, and 48 as well.
We will also sustain the rejection as it is directed to the remaining
claims because the Appellants have not argued the separate eligibility of
these claims.
DECISION
We affirm the Examiner's § 101 rejection.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l) (2009).
ORDER
AFFIRMED
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