William P. Henson et al.

Patent Trials and Appeals Board

Sep 24, 2019

12474679 - (D) (P.T.A.B. Sep. 24, 2019)

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.
12/474,679 05/29/2009 William P. Henson 10918-1-3/0289221/
AMF#107
2036
30448 7590 09/24/2019
AKERMAN LLP
P.O. BOX 3188
WEST PALM BEACH, FL 33402-3188
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/24/2019 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):
ip@akerman.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM P. HENSON, ROBERT S. JAKACKI,
NORTON H. REAMER, and ALEXANDER G. VON YORK
____________

Appeal 2018-001302
Application 12/474,6791
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and PHILIP
J. HOFFMANN, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 21−24 and 32−53. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Asset
Management Finance LLC. Brief 3.
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THE INVENTION
Appellant claims a revenue share interest method for financing an
asset management firm or any other financial services firm. Spec. ¶ 1, Title.
Claim 21 is representative of the subject matter on appeal.
21. A programmable computer system for evaluating financing for an
asset management firm, the computer system comprising:
a processor and associated memory, wherein the processor is
programmed to:
input, to a model in the computer system, a set of assumptions
to define the financing, the assumptions relating to revenue share
interest percentage and to at least one of: management fee and
revenue items, term of financing proposed consideration, financing
provider costs, financing provider capital requirements, and financing
provider return requirements; wherein a revenue share interest is
obtained in the asset management
firm, excluding an ownership interest during the term of the revenue
share interest, wherein the revenue share interest is a portion of the
revenue derived from asset management, and not using debt;
input, to the model in the computer system, information
associated with the asset management firm;
generate at least one cash flow analysis with the model in the
computer system, the cash flow analysis comprising a deterministic,
Monte Carlo, or historical sampling analysis; and
determine whether the results of at least one cash flow analysis
comply with financing guidelines.

THE REJECTION
Claims 21−24 and 32−53 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 21−24 and 32−53 are rejected under 35 U.S.C. 112, first
paragraph, as failing to comply with the written description requirement.
Claims 21−24 and 32−53 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite for failing to distinctly claim the subject matter
which the inventor regards as the invention.
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ANALYSIS
35 U.S.C. §112, FIRST PARAGRAPH REJECTION
The Examiner rejects claims 21−24 and 32−53 under the first
paragraph of 35 U.S.C. §112 for failing to comply with the written
description requirement. The Examiner directs our attention to the following
recitation in claim 21:
return requirements; wherein a revenue share interest is
obtained in the asset management firm, excluding an ownership
interest during the term of the revenue share interest, wherein
the revenue share interest is a portion of the revenue derived
from asset management, and not using debt.
Claim 21.
The Examiner finds that there is not sufficient disclosure or details in
the Specification on how one of ordinary skill in the art can practice such
non-ownership and non-debt involved revenue share interest. According to
the Examiner, there is not enough detail on how one can perform the
claimed “not using debt.” As such, according to the Examiner, the ability of
one skilled in the art to make and use the claimed invention does not satisfy
the written description requirement. We do not agree.
The Specification discloses that in the past, revenue sharing
techniques have been combined with ownership during the term of the
revenue share interest to secure financing for asset management firms. In
return for financing, the asset management firm, the financing entity gained
partial or total ownership of the asset management firm. The problem was
that when such ownership is passed to the financing entity, the autonomy of
the asset management firm is lost. Spec. ¶6. The present invention uses
revenue share interests, with no ownership interest and no debt to finance the
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asset management firm. Spec. ¶8. Under the terms of the financing
agreement, the financing provider agrees to give money to the entity in
return for the entity paying the financing provider a share of the entity’s
future revenue. This arrangement allows the financing provider to share in
the revenue of the asset management firm without creating an obligation of
the asset management firm to pay the financing provider. If there is no
revenue, there is no obligation to pay and therefore debt is no used. In view
of these disclosures, we agree with the Appellant that there is written
description support for the recitation of “not using debt.”

35 U.S.C. §112, SECOND PARAGRAPH REJECTION
In making this rejection, the Examiner argues that it is unclear what
not using debt means, and that this recitation is inconsistent and unclear
claim language. The Examiner contends that “not using debt” may broadly
be interpreted as an obligation to pay, which would be in direct contradiction
to not using debt. Final Act. 11.
In our view, Appellant has provided sufficient details for this
recitation. In the claimed arrangement, the financing provider has no
ownership or other controlling interest in the asset management firm and no
debt is used. The Specification defines “no debt” as no fixed payment
schedule, no interest, no amortization and no obligation to repay a principal
amount. Spec. ¶22. We agree with the Appellant that when the claim is
read in light of the Specification, the recitation of “no debt’ is clear. Brief 8.
In view of the foregoing, we will not sustain this rejection as it is
directed to claim 21. We will not sustain this rejection of the remaining
claims for the same reason.

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35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 21−24 and 32−53 U.S.C.
§ 101.
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, . . . 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. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217-218 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012))
(citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether ‘their character
as a whole is directed to excluded subject matter.’” See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
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on a process that itself qualifies as an “abstract idea” for which computers
are invoked merely as a tool. See id. at 1335–36.
In so doing we apply a “directed to” two-prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 FR 50, pp 50–57 (Jan. 7, 2019).
The Examiner determines that the claims are directed to creating a
contractual relationship which has been found to be abstract. Final Act. 14.
The Examiner also determines that the claims are interpreted as comparing
cash flow analysis results (new information) and stored guidelines for
determining compliance. Comparing new and stored information and using
rules to identify options and organizing information through mathematical
correlations is an abstract idea. Final Act. 15.
The Specification discloses that the claimed invention is directed to
methods of financing an asset management firm. Spec. ¶8. A finance
provider enters into an agreement with the entity (asset management firm).
Spec. ¶9. Therefore, the Specification supports the Examiner’s
determination that the claims recite creating a contractual relationship. The
Specification also discloses that the financing provider’s decision to enter
into the agreement with the entity may be informed, evaluated, and priced by
use of an analytical model with probabilistic aspects. The model may
receive, as inputs, assumptions relating to the agreement terms, and factors
impacting asset value over time. Spec. ¶11. As such, the Specification also
supports the Examiner’s determination that the claims are directed to
comparing new and stored information and using rules to identify options
and organizing information through mathematical correlations.
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The recitations of claim 21 also support the determination that the
claims recite creating a contractual relationship by reciting “evaluating
financing for an asset management firm,” “input, to a model . . . a set of
assumptions to define the financing,” “the assumptions relating to . . .
management fee and revenue items, terms of financing, proposed
consideration, financing provider costs, financing provider capital
requirements and financing provider return requirements.” Claim 21 also
supports the determination that the claims are directed to comparing new and
stored information and using rules to identify options and organizing
information through mathematical correlations by reciting “input, to a model
. . . a set of assumptions” “input, to the model . . . information,” “generate at
least one cash flow analysis with the model,” and “determine whether the
results . . . comply with financing guidelines.”
We thus agree with the Examiner that claim 21 recites a method of
creating a contractual relationship and a method that compares new and
stored information, and uses rules to identify options and organize
information through mathematical correlations, which are both judicial
exceptions.
Turning to the second prong of the “directed to test,” claim 1 merely
requires a “computer system comprising: a processor and associated
memory.” The recitation of these words do not impose “a meaningful limit
on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Guidance, 84 Fed. Reg.
at 53. We find no indication in the Specification, nor do Appellant directs us
to any indication, that the operations recited in independent claim 21 invoke
any inventive programming, require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, or that the
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claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.”). In fact, the
Specification discloses that a computer or computer system may be a
wireless or wireline variety of a microcomputer, laptop, personal assistant,
wireless email device, cellular phone, pager, processor or any other
programmable device capable of configuration for transmitting and
receiving data over a network thereby disclosing that the computer system
claimed is a generic computer. Spec. ¶63. The memory is likewise
disclosed as generic as it can be any means for storing software including a
hard disk, an optical disk, floppy disk, ROM, RAM, PROM, EEPRPM and
other computer-readable media.
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes any improvement in computer technology and/or
functionality to the claimed invention or that otherwise indicates that the
claimed invention integrates the abstract idea into a “practical application,”
as that phrase is used in the revised Guidance. See Guidance, 84 Fed. Reg.
at 55.
In this regard, the recitations do not affect an improvement in the
functioning of a computer, memory or other technology, and do not recite a
particular machine or manufacture that is integral to the claims, and do not
transform or reduce a particular article to a different state or thing. Id.
Thus, the claim is directed to judicial exceptions. These judicial exceptions
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are not integrated into a practical application and thus claim 21 is directed to
an “abstract idea.”
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas, the claims must include an
“inventive concept” in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 573 U.S. at 217−18 (alteration in original) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
The Examiner finds that the claims recite no improvement to another
technology or another technical filed or device or functioning of the
computer system itself, and do not amount to significantly more than the
abstract idea. The alleged improvement lies in the drafting of the agreement.
Final. Act. 15. The Examiner finds:
It is noted that a cash flow analysis is a mathematical
algorithm considered abstract by itself. Performing an
algorithm with a computer does not add meaningful limitation
to the method of creating a revenue sharing agreement. These
generic computing elements do not amount to significantly
more than the judicial exception.
Final Act. 15.
The introduction of a computer into the claims does not alter the
analysis at Alice 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”
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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
“implemen[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 computers,
wholly generic computer implementation is not
generally the sort of “additional featur[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 (alterations in original) (citations omitted).
Instead, “the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea . . . on a
generic computer.” Id. 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 to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval—one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; 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”). 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
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particular ‘source,’ that limitation does not make the collection and analysis
other than abstract.” SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022
(Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately.
The claims do not, for example, purport to improve the functioning of
the computer itself. As we stated above, the claims do not affect an
improvement in any other technology or technical field. The Specification
spells out different generic equipment and parameters that might be applied
using this concept and the particular steps such conventional processing
would entail based on the concept of information access under different
scenarios. See, e.g., Spec. ¶ 63. Thus, the claims at issue amount to nothing
significantly more than instructions to apply the abstract idea of information
access 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 226.
We have reviewed all the arguments (Brief 11−22) Appellant has
submitted concerning the patent eligibility of the claims before us that stand
rejected under 35 U.S.C. § 101. We find that our analysis above
substantially covers the substance of all the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that there is no evidence that the claims are merely
directed to an agreement or contractual relationship. Brief 14.
First, the Examiner did not determine that the claims were merely
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directed to an agreement or contractual relationship. The Examiner
acknowledged that there were other recitations in claim 21, for example, a
“computer system comprising a processor and associated memory.” The
Examiner addressed these “additional recitations” in the second step of the
Alice analysis where it is determined whether there is something recited in
the claims that is significantly more than the abstract idea.
Second, we agree that while, at times, an Examiner should provide
evidentiary support before a conclusion is made that a claim is directed to an
abstract idea, the need for such a showing is evaluated on a case-by-case
basis. Although, sometimes evidence may be helpful, e.g., where facts are
in dispute, we are unpersuaded that there is a categorical rule that evidence
is always needed. See Mortgage Grader, Inc. v. First Choice Loan Services,
Inc., 811 F.3d 1314, 1325–26 (Fed. Cir. 2016) (“[I]t is also possible, as
numerous cases have recognized, that a § 101 analysis may sometimes be
undertaken without resolving fact issues.”). To that end, we are not
persuaded that it is needed here where the Specification and the claim
recitations support the Examiner’s determinations and there is no genuine
factual dispute.
We are not persuaded of error on the part of the Examiner by
Appellants argument that the Examiner has oversimplified its analysis by
ignoring both the combination of claimed operations and the substance of
the operations, essentially abstracting the claims to meaningless operations.
Brief 14. However, the Examiner’s characterization here is fully consistent
with the Specification, as discussed above. That independent claim 21
includes more words than the phrase the Examiner used to articulate the
abstract idea to which the claim is directed is an insufficient basis to
persuasively argue that the claim language has been mischaracterized or that
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the Examiner has otherwise failed to consider all of the limitations of the
claim. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016):
An abstract idea can generally be described at different
levels of abstraction. As the Board has done, the claimed
abstract idea could be described as generating menus on a
computer, or generating a second menu from a first menu and
sending the second menu to another location. It could be
described in other ways, including, as indicated in the
specification, taking orders from restaurant customers on a
computer.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the specific ordered combination of operations do
not preempt all techniques of evaluating financing of an asset management
firm. Brief 15. While preemption may signal patent 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. 2015), 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.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that the claims focus on a specific means or methods
that improves the relevant technology and provides a significant
improvement over previous techniques. Brief 16. Appellant specifically
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argues that in previous techniques financing entities gained ownership in the
asset management firm which was undesirable and unworkable because the
asset management firm forfeited autonomy. We do not agree with the
Appellant that the claimed recitations improve relevant technology and are
necessarily rooted in technology to provide solutions that overcome
technological problems within a computer network. Appellant may be
correct that the recitations in claim 21 provide improvements over previous
techniques. However these improvements are improvements to the
financing of asset management firms not improvements to the computer
used or any other technology. In addition, while there are advantages to
performing the method using computer technology, this, however, does not,
in itself, remove the claimed subject matter from the realm of the abstract as
“necessarily rooted in technology.” See Alice, 134 S.Ct. at 2352 (holding a
“computerized scheme for mitigating ‘settlement risk’ “as unpatentable
subject matter); In re TLI Commc’ns Patent Litig., 823 F.3d 607, 612-13
(Fed. Cir. 2016) (holding unpatentable a method for recording imaging with
a phone, storing the images digitally, transmitting to a server and sorting
based on classification information).
We are unpersuaded of error on the part of the Examiner by
Appellant’s arguments that there is an expanding body of case law
supporting the eligibility of software enabled patents. Appellants, provides
citation to various cases, but because the Appellant does not explain how the
cases are relevant to the recitation in claim 21, this argument is not
persuasive. Brief 19.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 21. We will also sustain the rejection as it is directed to the remaining
claims because Appellant has not argued the separate eligibility of these
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claims.
CONCLUSIONS OF LAW
We conclude that the Examiner did err in rejecting the claims under
35 U.S.C. §112, first and second paragraphs.
We conclude the Examiner did not err in rejecting appealed claims
under 35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 21–24 and 32−53 under
35 U.S.C. §101 is affirmed.
The decision of the Examiner to rejection claims 21−24 and 32−53
under 35 U.S.C. §112, first paragraph and second paragraph is not affirmed.
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