Dana Bowers

Patent Trials and Appeals Board

Sep 30, 2019

14225217 - (D) (P.T.A.B. Sep. 30, 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.
14/225,217 03/25/2014 Dana Bowers 2010918-0003 1047
24280 7590 09/30/2019
CHOATE, HALL & STEWART LLP
TWO INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
GARCIA-GUERRA, DARLENE
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
09/30/2019 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):
jnease@choate.com
patentdocket@choate.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DANA BOWERS
____________

Appeal 2018-008784
Application 14/225,2171
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, KENNETH G. SCHOPFER, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1–22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 The Appellant identifies Venminder, Inc. as the real party in interest.
Appeal Br. 2.
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ILLUSTRATIVE CLAIM
1. A computer-implemented method for managing
contracts between a financial institution and its vendors, the
method comprising the steps of:
(a) providing, by a processor of a computing device, a
first graphical user interface configured to display, for a given
financial institution, a listing of vendor products and, upon
selection of a listed vendor product by a user, to display details
regarding the selected vendor product;
(b) providing, by the processor, a second graphical user
interface configured to facilitate uploading, by the user, of one
or more contract documents associated with the selected vendor
product, wherein the one or more contract documents, upon
upload by the user, are transmitted, by the processor, to a
centralized or decentralized storage server, and/or are analyzed,
by the processor, and/or prepared, by the processor, for review
by the user;
(c) providing, by the processor, a third graphical user
interface configured to guide a user in preparation of a vendor
oversight report associated with the selected vendor product;
(d) displaying, by the processor, a graphical user
interface widget configured to allow selection of a risk level
associated with the selected vendor product, the widget
configured such that selection of a risk level results in display,
by the third graphical user interface, of a listing of suggested
compliance documents for use in the preparation of the vendor
oversight report, the listing of suggested compliance documents
being associated with the selected risk level; and
(e) generating an examination report.
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CITED REFERENCES
Cullen III et al. US 2004/0039681 A1 Feb. 26, 2004
(hereinafter “Cullen”)
King et al. US 2008/0183519 A1 July 31, 2008
(hereinafter “King”)
Ray US 2009/0299812 A1 Dec. 3, 2009
Fuad US 2013/0117196 A1 May 9, 2013
Wakely et al. US 8,533,027 B1 Sept. 10, 2013
(hereinafter “Wakely”)
REJECTIONS
I. Claims 1–22 are rejected under 35 U.S.C. § 101 as ineligible
subject matter.
II. Claims 1–5, 9–18, and 22 are rejected under 35 U.S.C. § 103 as
unpatentable over Fuad, Wakely, and Yan.
III. Claims 6 and 8 are rejected under 35 U.S.C. § 103 as
unpatentable over Fuad, Wakely, Yan, and Ray.
IV. Claim 7 is rejected under 35 U.S.C. § 103 as unpatentable over
Fuad, Wakely, Ray, Yan, and King.
V. Claims 19–21 are rejected under 35 U.S.C. § 103 as
unpatentable over Fuad, Wakely, Yan, and Cullen.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
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ANALYSIS
Subject-Matter Eligibility
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014). Accordingly,
evaluating ineligible subject matter, under these judicial exclusions, involves
a two-step framework for “distinguish[ing] between patents that claim the
buildin[g] block[s] of human ingenuity and those that integrate the building
blocks into something more, thereby transform[ing] them into a patent-
eligible invention.” Id. (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 88–89 (2012)). The first step determines whether
the claim is directed to judicially excluded subject matter (such as a so-
called “abstract idea”); the second step determines whether there are any
“additional elements” recited in the claim that (either individually or as an
“ordered combination”) amount to “significantly more” than the identified
judicially excepted subject matter itself. Id. at 217–18.
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The USPTO recently published revised guidance on the application of
§ 101, in accordance with judicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (“2019
Revised Guidance”). Under the 2019 Revised Guidance, a claim is “directed
to” an abstract idea, only if the claim recites any of (1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes — without integrating such abstract idea into a “practical
application,” i.e., without “apply[ing], rely[ing] on, or us[ing] 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.” Id. at 52–55. The considerations
articulated in MANUAL OF PATENT EXAMINING PROCEDURE § 2106.05(a)–(c)
and (e)–(h) (“MPEP”) bear upon whether a claim element (or combination
of elements) integrates an abstract idea into a practical application. Id. at 55.
A claim that is “directed to” an abstract idea constitutes ineligible subject
matter, unless the claim recites an additional element (or combination of
elements) amounting to significantly more than the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited, Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
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additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
The Appellant argues claims 1–22 as a group. Appeal Br. 7–15.
Claim 1 is selected for analysis herein. See 37 C.F.R. § 41.37(c)(1)(iv).
Neither the Examiner nor the Appellant questions the satisfaction of
Step 1 of the 2019 Revised Guidance — i.e., that the claims are drawn to
subject matter within the scope of § 101.
With regard to the inquiry of Step 2A, Prong One, the Final Office
Action addresses the following limitations of independent claim 1:
“providing” “a listing of vendor products”; “uploading” “one or more
contract documents associated with the selected vendor product”; “guide a
user in preparation of a vendor oversight report associated with the selected
vendor product”; “allow selection of a risk level associated with the selected
vendor product”; “display” “a listing of suggested compliance documents for
use in the preparation of the vendor oversight report”; and “generating an
examination report.” See Final Action 12–13. According to the Examiner,
these limitations describe the concept of “contract management,” which the
Examiner regards as an “abstract idea.” Id. at 12.
Viewed through the lens of the 2019 Revised Guidance, 84 Fed. Reg.
at 52, the identified claim limitations depict the claimed subject matter as
one of the ineligible “[c]ertain methods of organizing human activity” that
include “commercial or legal interactions (including agreements in the form
of contracts; legal obligations; advertising, marketing or sales activities or
behaviors; business relations).” Notably, claim 1 recites a “method for
managing contracts between a financial institution and its vendors,”
including steps for preparing a “vendor oversight report.” Further,
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according to the Specification: “This invention relates generally to systems
and methods for managing client/vendor relationships. More particularly, in
certain embodiments, the invention relates to systems and methods for
managing contracts between a financial institution and its vendors and for
preparation of associated vendor oversight reports.” Spec. 1, ll. 9–12.
Furthermore, our reviewing court has regarded claims that broadly recite
processes for evaluating and creating commercial documents to constitute
judicially excepted subject matter. See Credit Acceptance Corp. v. Westlake
Servs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (“Each of the claims is directed
to the abstract idea of processing an application for financing a purchase.”)
The Appellant acknowledges that “The methods and systems of
claims 1 and 22 utilize a particular set of elements in a novel specific
arrangement to produce a tangible product, namely an examination report
document.” Appeal Br. 10. Yet, the Appellant contends that the claims
are clearly not abstract in the way that a method of simply
applying a fundamental economic principle (Alice), a risk
hedging method (Bilski v. Kappos, 561 U.S. 593 (2010)), or a
formula for numeric conversion (Gottschalk v. Benson, 409
U.S. 63 (1972)) is abstract, where the invention not just
involves an abstract concept, but arguably is the abstract
concept.
Id. This argument is not persuasive. The rejection does not regard the
judicially excepted subject matter as being a “fundamental economic
principle.” See id. Furthermore, the analytical framework described in
Alice, 573 U.S. 217–18, and articulated in the 2019 Revised Guidance, 84
Fed. Reg. at 53–55, contemplates that claimed subject matter might contain
non-abstract features and, nevertheless, recite an abstract idea (per Step 2A,
Prong One) and be directed to an abstract idea (per Step 2A, Prong Two).
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Accordingly, we are not persuaded of error in the rejection, in regard
to Step 2A, Prong One of the 2019 Revised Guidance.
Turning to Step 2A, Prong Two, unless a claim that recites a judicial
exception (such as an abstract idea) “integrates the recited judicial exception
into a practical application of that exception,” the claim is “directed to” the
judicial exception. Id. at 53. The analysis of such an “integration into a
practical application” involves “[i]dentifying . . . any additional elements
recited in the claim beyond the judicial exception(s)” and “evaluating those
additional elements individually and in combination to determine whether
they integrate the exception into a practical application.” Id. at 54–55.
Among the considerations “indicative that an additional element (or
combination of elements) may have integrated the exception into a practical
application” is whether “[a]n additional element reflects an improvement in
the functioning of a computer, or an improvement to other technology or
technical field.” Id. at 55 (footnote omitted). “[W]hether an additional
element or combination of elements integrate the exception into a practical
application should be evaluated on the claim as a whole.” Id. at 55 n.24.
In regard to the inquiries of Step 2A, Prong Two, the Appellant
argues:
[T]he present embodiments improve the technological process
of processing electronic documents, e.g., contracts between a
financial institution and its vendors, e.g., for generating an
examination report document. The present claims do not rely
on computerization for patentability. Instead, the components
of the methods and their specific implementation and
arrangement are at the center of the claimed embodiments.
Appeal Br. 11.
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Although the Appellant does not identify any specific proposed
“additional element[s]” that might integrate the identified judicial exception
into a “practical application” (see 2019 Revised Guidance, 84 Fed. Reg. at
54–55), the Appellant relies upon features that involve the processing of
contract documents and preparing a report based upon the contracts —
limitations that are part of the judicial exception at issue in claim 1, as
discussed above. Accordingly, the Appellant’s argument based upon a
proposed technological improvement does not invoke any “additional
element” as the 2019 Revised Guidance requires. Id.
The Appellant also argues that, similar to claims addressed in DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising
in the realm of computer networks. The methods and systems
described in the claims rely on computer networks and
databases to provide and manipulate large amounts of data in a
variety of formats and generate, by the system, a unique and
customizable report for each vendor. . . . [T]he present claims
1 and 22, and their dependent claims, address a challenge that is
particular to computational networks and databases, such as the
processing and manipulation of certain electronic information
and documents is a specific manner.
Appeal Br. 10.
Yet, the Appellant does not indicate how the claimed subject matter
might “manipulate[ ]” the operation of computer technology, in order to
“override[ ] the routine and conventional sequence of events ordinarily
triggered by” the implementation of such technology, like the technology at
issue in DDR Holdings, 773 F.3d at 1258. The Appellant provides no
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explanation of how the computer functionality of claim 1 would do anything
other than “operat[e] in its normal, expected manner.” Id.
In addition, the Appellant argues that claim 1 “prevent[s] preemption
of the alleged abstract idea, i.e., all methods for vendor contract
management.” Appeal Br. 11. Although preemption is a fundamental
concern of subject-matter eligibility principles, the proper analysis of
preemption requires the framework that the Supreme Court has prescribed.
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (“[Q]uestions on preemption are inherent in and resolved by
the § 101analysis.”) “While preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Therefore, we are not persuaded of any error, with respect to Step 2A,
Prong Two, of the 2019 Revised Guidance.
Turning to Step 2B of the 2019 Revised Guidance (id. at 56), a claim
that recites a judicial exception (such as an abstract idea) might,
nevertheless, be patent-eligible, if the claim contains “additional elements
amount[ing] to significantly more than the exception itself” — i.e., “a
specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present.” 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.”)
The Appellant argues that “[t]he present claims . . . process documents
in a highly specific manner and, e.g., generate customized reports.” Appeal
Br. 14. Although the Appellant does not specify which claim elements
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might satisfy the Step 2B inquiry, the referenced processing of documents
and generation of reports involve the same limitations identified, above, as
describing the judicially excepted abstract idea. Such elements may not be
relied upon to establish “significantly more” than a judicial exception. See
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018)
(“It has been clear since Alice that a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.”)
Although identified by the Examiner as part of the judicially excepted
concept (see Final Action 13), the Examiner, alternatively, indicates that the
claim 1 limitation of “generating an examination report” provides extra-
solution activity only that does not amount to significantly more than the
judicially excepted concept (id. at 14 (“[T]he output step is considered extra-
solution activity”)). The Appellant “disagrees and submits that the
automatic generation of reports by the system is not ‘mere data gathering,’
‘selecting a particular data source or type of data to be manipulated’ or an
‘insignificant application,’ (see MPEP 2106.05) but an integral part of the
novel technological solution.” Appeal Br. 13.
Regardless of whether the “generating an examination report”
limitation might be part of the identified judicial exception, this limitation is
the sort of post-solution activity, added to an already completed process, that
does not give rise to patent-eligibility. See Parker v. Flook, 437 U.S. 584,
590 (1978) (“A competent draftsman could attach some form of post-
solution activity to almost any mathematical formula; the Pythagorean
theorem would not have been patentable, or partially patentable, because a
patent application contained a final step indicating that the formula, when
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solved, could be usefully applied to existing surveying techniques.”) The
Specification, which describes “generating an examination report” as mere
file storage, supports this position:
[T]he method 600 may include generating an examination
report in accordance with an embodiment of the invention (step
620). The report may be generated, for example, as a PDF
(“portable document format”) file. In some implementations,
the report may be generated as a compressed file (e.g., a ZIP
(archive file format) file).
Spec. 22, ll. 6–10.
In view of the foregoing we are also not persuaded of error in the Step
2B analysis of claim 1, such that we sustain the rejection of independent
claims 1 and 22, along with dependent claims 2–21, under 35 U.S.C. § 101.
Obviousness
The rejection of claims 1–5, 9–18, and 22 is based upon the
combination of Fuad, Wakely, and Yan. Final Action 18–47. The Appellant
argues claims 1–5, 9–18, and 22 as a group. Appeal Br. 15–17. Claim 1 is
selected for analysis herein. See 37 C.F.R. § 41.37(c)(1)(iv).
The Appellant argues that the rejection fails to “indicate how the[ ]
two complex processes” of Fuad and Wakely “could be combined and
integrated without significant modification that goes far beyond simple
substitution.” Appeal Br. 16. Further, the Appellant contends that
combining Fuad and Wakely with Yan would be similarly unworkable,
stating: “The methods described in the references are complex and distinct,
and are not amenable to simple substitution. The Examiner has not shown
how the references could be combined and render the present claims obvious
without undue experimentation.” Id. at 17.
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Yet, the Appellant does not identify the reason for any alleged
incompatibility among Fuad, Wakely, and Yan — each of which is a
computer-implemented technique for analyzing and monitoring contractual
performance:
In this case, Fuad discloses a system and method for
governance, risk management, and compliance system. The
disclosure is directed to a method for monitoring compliance
with contract criteria. Wakely describes a user interface and
processes are provided to monitor contracts for the delivery of
products and/or services to different customers. The user
interface provides a comprehensive visual display such that a
user can view multiple contracts and a variety of performance
information for each contract. Yan describes an approach to
identifying and evaluating risks in a contract document
including a method implemented at least in part by one or more
computing devices for analyzing a contract document to
identify risks.
Answer 15.
Furthermore, “[t]he test for obviousness is not whether the features of
a secondary reference may be bodily incorporated into the structure of the
primary reference”; “[r]ather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.” In re
Keller, 642 F.2d 413, 425 (CCPA 1981). See also In re Etter, 756 F.2d 852,
859 (Fed. Cir. 1985) (en banc) (“Etter’s assertions that Azure cannot be
incorporated in Ambrosio are basically irrelevant, the criterion being not
whether the references could be physically combined but whether the
claimed inventions are rendered obvious by the teachings of the prior art as a
whole.”); In re Sneed, 710 F.2d 1544, 1550 (Fed. Cir. 1983) (“[I]t is not
necessary that the inventions of the references be physically combinable to
render obvious the invention under review.”); In re Nievelt, 482 F.2d 965,
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968 (CCPA 1973) (“Combining the teachings of references does not involve
an ability to combine their specific structures.”)
The Appellant also questions the sufficiency of the Examiner’s
reasons for combining/modifying the references, stating that the Examiner
“has pointed to nothing in the references that would teach or otherwise
motivate a person of ordinary skill to modify Fuad with Wakely.” Appeal
Br. 16. Similarly, the Appellant argues that “the Examiner has pointed to
nothing in the references that would teach or otherwise motivate a person of
ordinary skill to modify the Fuad-Wakely combination with Yan.” Id.
Yet, “[t]he suggestion to combine may be found in explicit or implicit
teachings within the references themselves, from the ordinary knowledge of
those skilled in the art, or from the nature of the problem to be solved.”
WMS Gaming Inc. v. Int’l Game Tech., 184 F.3d 1339, 1355 (Fed. Cir.
1999); see also Answer 14. Moreover, the Appellant does not indicate why
the Examiner’s stated reasons for combining/modifying the references might
be deficient:
It would have been obvious to one of ordinary skill in the art
before the effective filing date of the claimed invention to
modify Fuad to include the teachings of Wakely, since the
claimed invention is merely a combination of old elements, and
in the combination each element merely would have performed
the same functions as it did separately, and one of ordinary skill
in the art would have recognized that the results of the
combination were predictable. The combination provides a
more robust method by providing a comprehensive tool to
significantly assist organizations in their quest to successfully
implement a contract compliance system, thereby allowing
companies to determine if contracts are in compliance with the
criteria set forth in the contract.
. . .
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It would have been obvious one of ordinary skill in the art
before the effective filing date of the claimed invention to
modify the Fuad-Wakely combination to include the teachings
of Yan, since the claimed invention is merely a combination of
old elements, and in the combination each element merely
would have performed the same functions as it did separately,
and one of ordinary skill in the art would have recognized that
the results of the combination were predictable. The
combination provides a more comprehensive method by
allowing companies to analyze what risks it is undertaking by
way of the contracts into which it enters.
Final Action 24–25, 28.
In view of the foregoing, the Appellant does not persuade us of error
in the rejection of claims 1–5, 9–18, and 22. Because the Appellant also
relies upon the arguments addressed above, with regard to claims 6–8 and
19–21, we sustain the rejection of claims 1–22 under 35 U.S.C. § 103.
DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–22 under 35
U.S.C. § 101.
We AFFIRM the Examiner’s decision rejecting claims 1–22 under 35
U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED