FiscalNote, Inc.

Patent Trials and Appeals Board

Apr 29, 2021

2020003399 (P.T.A.B. Apr. 29, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/494,390 04/21/2017 Vladimir Eidelman 13204.0002-00000 4040
22852 7590 04/29/2021
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
04/29/2021 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):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte VLADIMIR EIDELMAN, BRIAN GROM,
DANIEL ARGYLE, and JERVIS PINTO 1
_____________

Appeal 2020-003399
Application 15/494,390
Technology Center 3600
______________

Before ERIC S. FRAHM, JOHN A. EVANS, and
NORMAN H. BEAMER, Administrative Patent Judges.

EVANS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE

This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of Claims 1 and 4–30. Appeal Br. i. We have
jurisdiction over the pending claims under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). The Appeal Brief identifies FiscalNote, Inc., as the
real party in interest. Appeal Br. 1.
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INVENTION
The invention is directed to a hybrid prediction system. See Abstract.
Claims 1 and 28–30 are independent. Illustrative Claim 1, is reproduced
below with some formatting added.
1. A hybrid prediction system for aggregating electronic
data from at least one Internet server and proprietary data, to
identify and initially predict an outcome of a future
policymaking event decided by a plurality of policymakers and
to subsequently update the initial prediction, the system
comprising:
at least one processor configured to execute instructions;
and
a memory storing the instructions to:
generate and transmit, to a data input terminal, a
first interactive interface configured to receive a query;
receive the query from the data input terminal
using the first interactive interface;
identify, based on the query, at least one future
policymaking event;
access data scraped from the Internet, the data
being associated with the at least one future
policymaking event;
store the scraped data;
determine, from the scraped data, initial
predictions of how the plurality of policymakers will
decide with respect to the at least one future
policymaking event;
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aggregate the predictions to determine an initial
prediction of the outcome of the at least one future
policymaking event;
generate, from the scraped data, initial likelihoods
associated with the predictions;
aggregate the likelihoods to determine an initial
likelihood indication associated with the initial
prediction;
generate a second interactive interface with the
initial prediction and the initial likelihood and configured
to receive user input related to the at least one
policymaker;
transmit the initial prediction and the initial
likelihood indication to the data input terminal by
transmitting the second interactive interface;
using the second interactive interface, receive user
input from the data input terminal including proprietary
information, the proprietary information being related to
at least one policymaker and privy to the user;
store the proprietary information;
in response to receiving the user input, determine,
using the scraped data and the proprietary information, at
least one subsequent prediction for at least one
policymaker and at least one subsequent likelihood
associated with the at least one subsequent prediction;
aggregate the at least one subsequent likelihood to
determine a subsequent likelihood indication reflecting a
change in the initial likelihood associated with the initial
prediction;
generate a third interactive interface with the
subsequent likelihood indication; and
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transmit the subsequent likelihood indication to the
data input terminal by transmitting the third interactive
interface.

PRIOR ART
Name2 Reference Date
Bonica US 2015/0106170 A1 Apr. 16, 2015
Smith, “Predicting Congressional Votes Based on Campaign Finance
Data,” IEEE 2012 11th international Conference on Machine Learning and
Applications.
Nate Silver, “How the FiveThirtyEight Senate Forecast Model Works,”
Sept. 17, 2014 (“FiveThirtyEight”).3
Rasmussen, “Rasmussen Account Benefits,” March 21, 2015.4

REJECTIONS5 AT ISSUE6
1. Claim 23 (and claims dependent therefrom) stands rejected under 35
U.S.C. § 112(a), as failing to comply with the written description
requirement. Final Act. 3–5.

2 All citations herein to the references are by reference to the first named
inventor/author only.
3 The Examiner has not supplied further bibliographic details to the Board.
4 The Examiner has not supplied further bibliographic details to the Board.
5 The present application, filed on or after March 16, 2013, is being
examined under the first inventor to file provisions of the AIA. Final Act. 2.
6 Throughout this Decision, we refer to the Appeal Brief (“Appeal Br.”) filed
October 14, 2019, the Reply Brief (“Reply Br.”) filed April 2, 2020, the
Final Office Action (“Final Act.”) mailed May 1, 2019, the Examiner’s
Answer (“Ans.”) mailed February 3, 2020, and the Specification (“Spec.”)
filed April 21, 2017.
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2. Claims 1 and 4−30 stand rejected under 35 U.S.C. § 103 as obvious
over FiveThirtyEight, Bonica, Rasmussen, and Smith. Final Act. 6–
30.

ANALYSIS7
We have reviewed the rejections of Claims 1 and 4–30 in light of
Appellant’s arguments that the Examiner erred. We review the appealed
rejections for error based upon the issues identified by the Appellant and in
light of the arguments and evidence produced thereon. Ex parte Frye, 94
USPQ2d 1072, 1075 (BPAI 2010) (precedential), cited with approval in In
re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the
Board’s practice to require an applicant to identify the alleged error in the
examiner’s rejections.”). We have considered in this decision only those
arguments Appellant actually raised in the Briefs. Any other arguments

7 A final rejection in this case was issued May 1, 2019. Earlier during
prosecution, the Examiner entered, and then withdrew, a rejection under 35
U.S.C. § 101. Subsequent to these actions, the USPTO published revised
guidance on the application of 35 U.S.C. § 101. See USPTO January 7,
2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (“January 2019 Memorandum”). The Office
issued a further memorandum on October 17, 2019 (the “October 2019
Memorandum”) clarifying guidance of the January 2019 Memorandum in
response to received public comments. See https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf. Moreover, “[a]ll
USPTO personnel are, as a matter of internal agency management, expected
to follow the guidance.” January 2019 Memorandum at 51; see also October
2019 Memorandum at 1. Should further prosecution obtain in this case, we
suggest the Examiner consider application of these guidance documents to
the claims.

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which the Appellant could have made but chose not to make in the Briefs are
deemed to be forfeited. See 37 C.F.R. § 41.37(c)(1)(iv). We consider
Appellant’s arguments as they are presented in the Appeal Brief and the
Reply Brief.
CLAIMS 23–27: WRITTEN DESCRIPTION.
Claim 23 recites, inter alia, “determine whether the subsequent
likelihood indication influences a prediction about how at least some of the
other policymakers are likely to vote or make the determination.” The
Examiner finds the Specification discusses, in very general terms, some
factors that may tend to make a first judge have influence over a second
judge. Final Act 4. (citing Spec., ¶¶ 216, 328). However, the Examiner
finds the Specification fails to provide specific disclosure as to how such
determination is made. Id.
Appellant contends the Specification provides the required specificity.
Appeal Br. 20 (citing Spec., ¶¶ 204–219). Appellant argues the Office
disregards the disclosure that “that a certain judge might be more likely to
have influence over other judges” and a “gravitas score may further be
calculated based on an interconnectedness network, for example, . . . based
on the number of connections and closeness of those connections within the
network.” Id. (quoting Spec., ¶¶ 210, 211).
The Examiner finds the Specification fails to disclose a specific
algorithm for making the claimed calculation. Ans. 4.
Appellant contends “Appellant’s specification sets forth detailed steps
to ‘identify interconnected data matches.’” Reply Br. 3.
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We are not persuaded Appellant sets forth an algorithm with the
specificity required to perform the claimed calculations. In view of the
foregoing, we sustain the rejection of Claims 23–27 under 35 U.S.C.
§ 112(a).
CLAIMS 1 AND 4-30: OBVIOUSNESS OVER FIVETHIRTYEIGHT,
BONICA, RASMUSSEN, AND SMITH.
Appellant contends the Examiner has failed to establish that Silver
(i.e., the “FiveThirtyEight” reference) is prior art. Appeal Br. 23.
The Examiner finds “it is abundantly clear to one of ordinary skill in
the art that websites can be accessed using the Internet.” Ans. 5. Moreover,
the Examiner finds “[t]he first page of FiveThirtyEight [i.e., “Silver”] even
has the exact date and time when it was published.” Id.
Our review of Silver finds a problem with the dates. The upper left
corner of the first page of the document is printed with the legend “Sep. 17,
2014 at 7:30 AM.” This date is prior to the April 22, 2016 priority date of
the present application. However, Silver further discloses: “UPDATE
(Sept. 21, 2016; 9 a.m.).” This 2016 date is after the application priority.
Thus any material added to Silver by the update is not prior art against the
application. The Examiner fails to distinguish prior art from non-prior art
disclosure. We, therefore, must find that Silver is not prior art against the
present application.
In view of the foregoing, we decline to sustain the rejection of Claims
1 and 4–30 under 35 U.S.C. § 103.

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CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
23–27 112(a) Written
Description
23–27
1, 4–30 103 Silver, Bonica,
Rasmussen, and
Smith
1, 4–30

Overall
Outcome
23–27 1, 4–22,
28–30

TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED IN PART