Praedicat, Inc.Download PDFPatent Trials and Appeals BoardDec 13, 20212021001789 (P.T.A.B. Dec. 13, 2021) Copy Citation 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. 15/299,237 10/20/2016 David LOUGHRAN PR005US2 2969 139810 7590 12/13/2021 Praedicat, Inc. 5760 West Jefferson Blvd. Los Angeles, CA 90016 EXAMINER BRIDGES, CHRISTOPHER ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 12/13/2021 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): stephen.jones@praedicat.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DAVID LOUGHRAN, ROBERT THOMAS REVILLE, GRANT CAVANAUGH, and NARESH CHEBOLU ____________ Appeal 2021-001789 Application 15/299,237 Technology Center 3600 ____________ Before ANTON W. FETTING, NINA L. MEDLOCK, and AMEE A. SHAH, Administrative Patent Judges. FETTING, Administrative Patent Judge. DECISION ON APPEAL Appeal 2021-001789 Application 15/299,237 2 STATEMENT OF THE CASE1 David Loughran, Robert Thomas Reville, Grant Cavanaugh, and Naresh Chebolu (Appellant2) seek review under 35 U.S.C. § 134 of a final rejection of claims 1 and 3−11, the only claims pending in the application on appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b). The Appellant invented computer user interfaces for latent risk assessment. Specification para. 2. An understanding of the invention can be derived from a reading of exemplary claim 1, which is reproduced below (bracketed matter and some paragraphing added). 1. A method of a computing device including a display and an input device, the method comprising: [1] displaying, on the display, a risk assessment user interface including: [1.1] an agent selector indicating selection of a plurality of agents including a first agent and a second agent according to batch input from a configuration file, and [1.2] a first curve indicating expected losses due to both the first agent and the second agent at a first probability level, [1.3] wherein the first curve is generated based on a plurality of simulated claims, each respective claim of the 1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,” filed July 21, 2020) and the Examiner’s Answer (“Ans.,” mailed October 27, 2020), and Final Action (“Final Act.,” mailed February 21, 2020). 2 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Praedicat, Inc. (Appeal Br. 2). Appeal 2021-001789 Application 15/299,237 3 plurality of simulated claims being associated with an agent of the plurality of agents, a date, and a settlement amount; [2] while the risk assessment user interface is displayed, receiving first user input de-selecting the second agent via an application programming interface; and [3] after receiving the first user input, [3.1] aggregating expected losses due to respective claims of the plurality of simulated claims that are associated with the first agent, excluding respective claims of the plurality of simulated claims that are associated with the second agent, and [3.2] updating the first curve in the risk assessment user interface to indicate the aggregated expected losses due to the first agent and not the second agent. Claims 1 and 3−11 stand rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ISSUES The issues of eligible subject matter turn primarily on whether the claims recite more than abstract conceptual advice of results desired. Appeal 2021-001789 Application 15/299,237 4 ANALYSIS STEP 13 Claim 1, as a method claim, nominally recites one of the enumerated categories of eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it is directed to a judicial exception without significantly more. STEP 2 The Supreme Court: set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, . . . determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, “[w]hat else is there in the claims before us? To answer that question, . . . consider 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. [The Court] described step two of this analysis as a search for an “‘inventive concept’”—i.e., 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 Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine what the claims are directed to. This begins by determining whether the claims recite one of the judicial exceptions (a law of nature, a natural phenomenon, or an abstract idea). Then, if the claims recite a judicial exception, determining 3 For continuity of analysis, we adopt the steps nomenclature from 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Appeal 2021-001789 Application 15/299,237 5 whether the claims at issue are directed to the recited judicial exception, or whether the recited judicial exception is integrated into a practical application of that exception, i.e., that the claims “apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg. at 54. If the claims are directed to a judicial exception, then finally determining whether the claims provide an inventive concept because the additional elements recited in the claims provide significantly more than the recited judicial exception. STEP 2A Prong 1 At a high level, and for our preliminary analysis, we note that method claim 1 recites displaying data representing a user interface, receiving data input, aggregating loss data, and updating curve data. Aggregating loss data and updating curve data are data analysis by mathematical algorithms. Thus, claim 1 recites displaying, receiving, and analyzing data. None of the limitations recites technological implementation details for any of these steps, but instead recite only results desired by any and all possible means. From this we see that claim 1 does not recite the judicial exceptions of either natural phenomena or laws of nature. Under Supreme Court precedent, claims directed purely to an abstract idea are patent ineligible. As set forth in the Revised Guidance, which extracts and synthesizes key concepts identified by the courts, abstract ideas include (1) mathematical concepts,4 (2) certain methods of organizing 4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v. Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio Appeal 2021-001789 Application 15/299,237 6 human activity,5 and (3) mental processes6. Among those certain methods of organizing human activity listed in the Revised Guidance are fundamental economic principles or practices. Like those concepts, claim 1 recites the concept of managing economic risk. Specifically, claim 1 recites operations that would ordinarily take place in advising one to display risk associated with one agent after deselecting another agent. The advice to display risk associated with one agent after deselecting another agent involves displaying a risk assessment user interface, which is an economic risk mediation act, and updating the first curve in the risk assessment user interface, which is an act ordinarily performed in the stream of risk mediation. For example, claim 1 recites “displaying . . . a risk assessment user interface,” which is an activity that would take place whenever one is mediating risk. Similarly, claim 1 recites “updating the first curve in the risk assessment user interface,” which is also characteristic of mediating risk. The Examiner determines the claims to be directed to a series of steps to assess risk, i.e., calculate future expected losses. Final Act. 2. The preamble to claim 1 does not recite what it is to achieve, but the steps in claim 1 result in managing economic risk by displaying risk Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018). 5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir. 2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed. Cir. 2018). 6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Appeal 2021-001789 Application 15/299,237 7 associated with one agent after deselecting another agent absent any technological mechanism other than a conventional computer for doing so. As to the specific limitations, limitation 2 recites receiving data. Limitations 1 and 3 recite generic and conventional displaying, receiving, and analyzing of economic risk data, which advise one to apply generic functions to get to these results. The limitations thus recite advice for displaying risk associated with one agent after deselecting another agent. To advocate displaying risk associated with one agent after deselecting another agent is conceptual advice for results desired and not technological operations. The Specification at paragraph 2 describes the invention as relating to computer user interfaces for latent risk assessment. Thus, all this intrinsic evidence shows that claim 1 recites managing economic risk. This is consistent with the Examiner’s determination. This in turn is an example of fundamental economic principles or practices as a certain method of organizing human activity because managing economic risk is a fundamental economic principle or practice. The concept of managing economic risk by displaying risk associated with one agent after deselecting another agent is one idea for identifying risk components. The steps recited in claim 1 are part of how this might conceptually be premised. Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. See Bilski above. Alternately, this is an example of concepts performed in the human mind as mental processes because the steps of displaying, receiving, and analyzing data mimic human thought processes of observation, evaluation, Appeal 2021-001789 Application 15/299,237 8 judgment, and opinion, perhaps with paper and pencil, where the data interpretation is perceptible only in the human mind. See In re TLI 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). Claim 1, unlike the claims found non-abstract in prior cases, uses generic computer technology to perform data display, reception, and analysis and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused on a specific asserted improvement in computer animation”). As such, claim 1 recites displaying, receiving, and analyzing data, and not a technological implementation or application of that idea. Alternately, this is an example of a mathematical concept because the steps of aggregating loss data and updating a computed curve perform a mathematical algorithm. The remaining steps are mere data gathering and incidental post processing steps. From this we conclude that at least to this degree, claim 1 recites managing economic risk by displaying risk associated with one agent after deselecting another agent, which is fundamental economic principles or practices, one of certain methods of organizing human activity identified in the Revised Guidance, and, thus, an abstract idea. STEP 2A Prong 2 The next issue is whether claim 1 not only recites, but is more precisely directed to this concept itself or whether it is instead directed to Appeal 2021-001789 Application 15/299,237 9 some technological implementation or application of, or improvement to, this concept i.e. integrated into a practical application.7 At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law. At some level, “all inventions ... embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.” Thus, an invention is not rendered ineligible for patent simply because it involves an abstract concept. “[A]pplication[s]” of such concepts “ ‘to a new and useful end,’ ” we have said, remain eligible for patent protection. Accordingly, in applying the § 101 exception, we must distinguish between patents that claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those that integrate the building blocks into something more. Alice, 573 U.S. at 217 (citations omitted). Taking the claim elements separately, the operation performed by the computer at each step of the process is expressed purely in terms of results, devoid of implementation details. Step 2 is a pure data gathering step. Limitations describing the nature of the data do not alter this. Step 1 recites basic conventional data operations such as displaying, updating, and storing data. Step 3 recites generic computer processing expressed in terms of results desired by any and all possible means and so present no more than conceptual advice. All purported inventive aspects reside in how the data are interpreted and the results desired, and not in how the process physically enforces such a data interpretation or in how the processing technologically achieves those results. Viewed as a whole, Appellant’s claim 1 simply recites the concept of managing economic risk by displaying risk associated with one agent after 7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). Appeal 2021-001789 Application 15/299,237 10 deselecting another agent as performed by a generic computer. This is no more than conceptual advice on the parameters for this concept and the generic computer processes necessary to process those parameters, and do not recite any particular implementation. Claim 1 does not, for example, purport to improve the functioning of the computer itself. Nor does it effect an improvement in any other technology or technical field. The 16+ pages of specification do not bulge with disclosure, but only spell out different generic equipment8 and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of managing economic risk by displaying risk associated with one agent after deselecting another agent under different scenarios. They do not describe any particular improvement in the manner a computer functions. Instead, claim 1 at issue amounts to nothing significantly more than an instruction to apply managing economic risk by displaying risk associated with one agent after deselecting another agent using some unspecified, generic computer. Under our precedents, that is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26. None of the limitations reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field, applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, effects a transformation 8 The Specification describes a system that includes a CPU, storage, memory, and display. Spec. para. 58. Appeal 2021-001789 Application 15/299,237 11 or reduction of a particular article to a different state or thing, or applies or uses the judicial exception in some other 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. We conclude that claim 1 is directed to achieving the result of managing economic risk by advising one to display risk associated with one agent after deselecting another agent, as distinguished from a technological improvement for achieving or applying that result. This amounts to fundamental economic principles or practices, which fall within certain methods of organizing human activity that constitute abstract ideas. The claim does not integrate the judicial exception into a practical application. STEP 2B The next issue is whether claim 1 provides an inventive concept because the additional elements recited in the claim provide significantly more than the recited judicial exception. The introduction of a computer into the claims does not generally alter the analysis at Mayo step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea “while adding the words ‘apply it’” is not enough for patent eligibility. Nor is limiting the use of an abstract idea “‘to a particular technological environment.’” Stating an abstract idea while adding the words “apply it with a computer” simply combines those two steps, with the same deficient result. Thus, if a patent’s recitation of a computer amounts to a mere instruction to “implement[t]” an abstract idea “on . . . a computer,” that addition cannot impart patent eligibility. This conclusion accords with the preemption concern that undergirds our § 101 jurisprudence. Given the ubiquity of Appeal 2021-001789 Application 15/299,237 12 computers, wholly generic computer implementation is not generally the sort of “additional feature[e]” that provides any “practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.” Alice, 573 U.S. at 223–24 (citations omitted). “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea [] on a generic computer.” Alice, 573 U.S. at 225. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a computer for displaying, receiving, and analyzing data amounts to electronic data query and retrieval—one of the most basic functions of a computer. All of these computer functions are generic, routine, conventional computer activities that are performed only for their conventional uses. See Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming”). None of these activities is used in some unconventional manner nor does any produce some unexpected result. Appellant does not contend it invented any of these activities. In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, “even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., 898 F.3d at 1168. Appeal 2021-001789 Application 15/299,237 13 Considered as an ordered combination, the computer components of Appellant’s claim 1 add nothing that is not already present when the steps are considered separately. The sequence of data display-reception-analysis is equally generic and conventional. See Ultramercial, 772 at 715 (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is therefore ordinary and conventional. We conclude that claim 1 does not provide an inventive concept because the additional elements recited in the claim do not provide significantly more than the recited judicial exception. REMAINING CLAIMS Claim 1 is representative. The remaining method claims merely describe process parameters. We conclude that the method claims at issue are directed to a patent-ineligible concept itself, and not to the practical application of that concept. As to the structural claims, they: are no different from the method claims in substance. The method claims recite the abstract idea implemented on a generic computer; the system claims recite a handful of generic computer components configured to implement the same idea. This Court has long “warn[ed] ... against” interpreting § 101“in ways that make patent eligibility ‘depend simply on the draftsman’s art.’” Appeal 2021-001789 Application 15/299,237 14 Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any particular machine. LEGAL CONCLUSION From these determinations we further determine that the claims do not recite an improvement to the functioning of the computer itself or to any other technology or technical field, a particular machine, a particular transformation, or other meaningful limitations. From this we conclude the claims are directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by the fundamental economic principles or practices of managing economic risk by advising one to display risk associated with one agent after deselecting another agent, without significantly more. APPELLANT’S ARGUMENTS As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s determinations and analysis from Final Action 2–7 and Answer 3–5 and reach similar legal conclusions. As there is no Reply Brief, we particularly note the following. We are not persuaded by Appellant’s argument that: Although the claimed user interface is referred to in claim 1 as a “risk assessment” user interface, the claim does not recite the practice of risk assessment. Although the Office Action presents the claims as reciting risk assessment with incidental recitations of a user interface, this misrepresents the claim. Claim 1 recites a user interface with elements related to risk assessment but does not set forth and describe risk assessment. Appeal Br. 5–6. Appellant mischaracterizes the issue. As we determine above, claim 1 recites several limitations that each is part of risk assessment and mitigation. The claim recites no technological implementation details Appeal 2021-001789 Application 15/299,237 15 for its operations, which are conventional display, reception and analysis of data. To the extent Appellant argue that providing an interface is eligible, this is insufficient. As with the interface in Trading Technologies, “the claims are focused on providing information to traders in a way that helps them process information more quickly, not on improving computers or technology. . . . The “tool for presentation” here . . . is simply a generic computer.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384–85 (Fed. Cir. 2019)(citations omitted). The claim as a whole is directed to the judicial exception of the abstract idea of certain methods of organizing human activity as exemplified by the fundamental economic principles or practices of managing economic risk by advising one to display risk associated with one agent after deselecting another agent, without significantly more. We are not persuaded by Appellant’s argument that “the claim cannot be practically performed in the human mind.” Appeal Br. 6. Appellant presents no evidence to support this conclusory argument. It is apparent on its face that claim 1 could readily be performed with paper and pencil with a sufficiently simple and minimal data set. To the extent Appellant argues the mind could not do so efficiently, this is not sufficient. [W]e do not rely on the pen and paper test to reach our holding of patent eligibility in this case. At the same time, we note that, in viewing the facts in FairWarning’s favor, the inability for the human mind to perform each claim step does not alone confer patentability. As we have explained, “the fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” FairWarning, 839 F.3d at 1098 (citations omitted). Appeal 2021-001789 Application 15/299,237 16 Although Appellant argues claims 10 and 11 separately, Appellant relies on the above arguments for these claims as well. CONCLUSIONS OF LAW The rejection of claims 1 and 3−11 under 35 U.S.C. § 101 as directed to a judicial exception without significantly more is proper. CONCLUSION The rejection of claims 1 and 3−11 is affirmed. In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1, 3−11 101 Eligibility 1, 3−11 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) (2011). AFFIRMED Copy with citationCopy as parenthetical citation