Ex Parte Bagarella et al

Patent Trial and Appeal Board

Jan 2, 2018

13224510 (P.T.A.B. Jan. 2, 2018)

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.
13/224,510 09/02/2011 Adam Bagarella RCI-0001 9600
29344 7590 01/04/2018
ONFT T O Rr MFT T O T T P
EXAMINER
Three Burlington Woods Drive
Suite 203
DONLON, RYAN D
Burlington, MA 01803-4532 ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
01/04/2018 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):
mail@omiplaw.com
docketing @ omiplaw .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADAM BAGARELLA and DAVID W. SAMPSON1
Appeal 2016-005904
Application 13/224,510
Technology Center 3600
Before JAMES R. HUGHES, JOHN P. PINKERTON, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Rabican Companies,
Inc.
Appeal 2016-005904
Application 13/224,510
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Decision rejecting claims 1-24 and 26 40. Claim 25 has
been canceled. Final Act. 1-2; App. Br. 3—4.:2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
Appellants ’ Invention
The invention generally relates to systems and methods of facilitating
financial transactions (pledges of monetary value) utilizing a computer
system (user interface and server). An exemplary method provides a
graphical user interface displaying selectable performance metrics associated
with a donation generating event and an input for a pledge (having a
monetary value). A computer server receives, via a computer network, a
selected performance metric and pledge input, which further comprise a
pledge attribute information package, including a subject of the performance
metric, the performance metric, and the pledge. The system stores the
pledge attribute information and periodically queries (and obtains) a
measured value for the selected performance metric, which is stored by the
system. The system then calculates a variable pledge amount by applying
the pledge of monetary value to the measured value of the selected
performance metric. Spec. 1:8-9; 2:15-7:12; Abstract.
2 We refer to Appellants’ Specification (“Spec.”) filed Sept. 2, 2011
(claiming benefit of US 61/379,550 filed Sept. 2, 2010); Appeal Brief
(“App. Br.”) filed Nov. 30, 2015; and Reply Brief (“Reply Br.”) filed May
18, 2016. We also refer to the Examiner’s Answer (“Ans.”) mailed Mar. 18,
2016, and Final Office Action (Final Rejection) (“Final Act.”) mailed July
15, 2015.
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Application 13/224,510
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A method of facilitating pledges of monetary value
between a pledgee and pledgor, the method comprising the steps
of:
providing, at a computer server, a graphical user interface
having a plurality of selectable performance metrics provided
from a donation generating event, and further having at least one
input for a pledge of monetary value;
receiving, at a computer server via a computer network, a
selected performance metric of the plurality of performance
metrics and the at least one input for a pledge of monetary value,
wherein the receiving the selected performance metric and the at
least one input for a pledge of monetary value comprises
receiving an information package of pledge attributes, the
package of pledge attributes comprising a subject of the
performance metric, the performance metric, and the pledge of
monetary value;
storing the received selected performance metric and the
received input of a pledge of monetary value at a computer
readable memory of a computer server system;
periodically querying and obtaining, at a computer server,
a measured value of the selected performance metric and storing
said measured value in the computer readable memory of the
computer server system; and
calculating, at an automated programmed computer
server, a variable pledge amount by applying said pledge of
monetary value to the measured value of the selected
performance metric and storing the pledge amount in the
computer readable memory of the computer server system.
Rejection on Appeal
The Examiner rejects claims 1-24 and 26^10 under 35 U.S.C. § 101
as being directed to patent-ineligible subject matter.
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ISSUE
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issue before us follows:
Did the Examiner err in rejecting claims 1-24 and 26 40 under 35
U.S.C. § 101 as not being directed to patent-eligible subject matter?
ANALYSIS
Appellants argue independent claims 1 and 40 together as a group and
do not separately argue dependent claims 2-24 and 26-39. See App Br. 7-
15. We select independent claim 1 as representative of Appellants’
arguments with respect to claims 1-24 and 26^40. 37 C.F.R.
§ 41.37(c)(l)(iv).
The Examiner rejects the claims and, in particular, claim 1 as being
directed to patent-ineligible subject matter in that the claims as a whole
are directed to fundraising or collecting money which is
fundamental economic practice . . . and [a] method of organizing
human activities (fundraising, performance statistics, and
pledges). The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception....
The[ ] steps of facilitating fundraising and pledges (donation
related) and enabling a program for effecting the scheme (e.g.,
providing, receiving, storing, query, calculation, etc.) is [an]
abstract idea (see In re Alice Corp.) because [it] would be routine
in any computer implementation, and the claim does not effect
an improvement to another technology or technical field; the
claim does not amount to an improvement to the functioning of
a computer itself.
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As such, the claim, when considered as a whole, is nothing
more than the instruction to implement the abstract idea (i.e.
using Internet to facilitate collecting donation) in a particular,
albeit well-understood, routine and conventional technological
environment.
Final Act. 2-3; see Ans. 2-7. Appellants contend that the claims as a whole
are not directed to an abstract idea or patent-ineligible concept because
“[cjlaim 1 does not set forth a basic concept that is similar to any abstract
idea previously identified by way of example by U.S. courts” and “[cjlaim 1
also does not set forth a fundamental economic practice previously identified
by way of example by U.S. courts. The subject matter of claim 1, for
example, is not similar to hedging in an energy risk management method in
Bilski [v. Kappos, 561 US 593 (2010)].” App. Br. 9. Appellants further
contend that “claim 1 as a whole amounts to significantly more than [a
judicial] exception” because, like the claims in DDR Holdings,
the claimed solution is necessarily rooted in computer
technology in order to overcome a problem “specifically arising
in the realm of computer networks,” or more specifically, to
overcome a problem specifically arising in post-Internet
technology, and not “merely reciting the performance of some
business practice known from the pre-Internet world along with
the requirement to perform it on the Internet.”
App. Br. 9-10 (quoting DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014)). See App. Br. 10-13; Reply Br. 2-6.
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “‘long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty.
Ltd. v. CLS Bank Int 7, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
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Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 77-80 (2012), “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts.” Alice, 134 S. Ct.
at 2355. The first step in that analysis is to “determine whether the claims at
issue are directed to one of those patent-ineligible concepts” {id.), e.g., to an
abstract idea. If the claims are not directed to an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’
to determine whether the additional elements ‘transform the nature of the
claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting
Mayo 566 U.S. at 78, 79).
The Court acknowledged in Mayo that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 566 U.S. at 71. We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Turning to the first step of the eligibility analysis, the Examiner finds
claim 1 is directed to the abstract idea of “fundraising or collecting money
which is fundamental economic practice” and “organizing human activities
(fundraising, performance statistics, and pledges)” utilizing a conventional
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computer system. Final Act. 2-3; see Ans. 2-7. We agree with the
Examiner that Appellants’ claim 1 (and the other pending claims) are
directed to a patent-ineligible abstract idea.
Instead of using a fixed definition of an abstract idea and analyzing
how claims fit (or do not fit) within the definition, “the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen — what prior cases were about,
and which way they were decided.” Amdocs (Isr.) Ltd. v. Openet Telecom,
Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLCv.
Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016)). As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs, of Texas, LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016) (citation omitted).
Here, Appellants’ claims generally relate to utilizing a computer
system for calculating a variable donation (pledge) amount by applying
(multiplying) a monetary pledge amount by a particular measured statistical
value (performance metric), as found by the Examiner {supra). This is
consistent with how Appellants describe the claimed invention. See Spec.
2:15-21 (the invention provides “systems and methods for conducting
fundraising activities over networks” and “a model around performance-
based donations in which donors can pledge monetary amounts against
performance metrics that arise out of any event that produces quantifiable
metrics.”). More particularly, in claim 1 (and as commensurately recited in
independent claim 40), a computer server provides a graphical user interface
(GUI) allowing a user to select a particular metric and enter a corresponding
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pledge amount; the server stores the data; the server queries the selected
metric and returns a resulting statistical value; and the server calculates “a
variable pledge amount by applying said pledge of monetary value to the
measured value of the selected performance metric.”
Our reviewing court has said that abstract ideas include collecting and
analyzing or manipulating monetary and statistical information. See OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015)
(finding claims directed to price optimization on a generic computer to be an
abstract idea); Elec. Power, 830 F.3d at 1354 (collecting and analyzing
information (e.g., recognizing certain data within the dataset) are abstract
ideas).
Here, the selection of a metric, entering of a pledge, and determination
of a variable donation (pledge) utilizing collected data and statistical
information is similar to the abstract ideas of collecting, analyzing, and
manipulating information to automatically determine pricing found
ineligible for patent protection in OIP Techs., 788 F.3d at 1362. In other
words, the instant claims are akin to the claims for collecting, analyzing, and
manipulating information (data) found to be abstract in Elec. Power,
830 F.3d at 1354, and in particular, collecting, analyzing, and manipulating
financial information found to be abstract in OIP Techs., 788 F.3d at 1362.
In OIP Techs., the Federal Circuit explained that the “concept of ‘offer
based pricing’ is similar to other ‘fundamental economic concepts’ found to
be abstract ideas by the Supreme Court and this court.” OIP Techs.,
788 F.3d at 1362 (citing Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611
(risk hedging); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014) (using advertising as an exchange or currency); Content
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Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass ’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (data collection); Accenture Global Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1346 (Fed. Cir. 2013)
(generating tasks in an insurance organization)). Thus, we agree with the
Examiner that the claims are directed to an abstract idea of facilitating
fundraising by determining a variable pledge. Notably, this characterization
is consistent with Appellants’ description of the claimed invention {supra).
Having found Appellants’ claims are directed to an abstract concept
under Alice's step 1 analysis, we next address whether the claims add
significantly more to the alleged abstract idea. As directed by our reviewing
Court, we search for an ‘“inventive concept’ sufficient to ‘transform the
nature of the claim into a patent-eligible application.’” McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016)
(quoting Alice, 134 S. Ct. at 2355). The implementation of the abstract idea
involved must be “more than performance of ‘well-understood, routine,
[and] conventional activities previously known to the industry.’” Content
Extraction, 776 F.3d at 1347^18.
Here, the Examiner found that Appellants’ claims do not add
significantly more. See Final Act. 2-3; Ans. 2-7. Appellants, on the other
hand, contend the claims amount to more than the judicial exception because
the claims are analogous to the claims of DDR Holdings. See App. Br. 9-
13; Reply Br. 2-6 (citing a number of district court case purportedly
supporting Appellants’ interpretation of DDR Holdings). Appellants
misconstrue DDR Holdings, and we disagree with Appellants’ arguments.
As explained by our reviewing Court in OIP Techs., “the automation
of the fundamental economic concept of offer-based price optimization
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through the use of generic-computer functions” does not “transform the
claimed abstract idea into a patent-eligible application” (quotations omitted)
and “relying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.” OIP Techs.,
788 F.3d at 1363.
In DDR Holdings, the court held that a claim may amount to more
than any abstract idea recited in the claims when it addresses and solves
problems only encountered with computer technology and online
transactions, e.g., by providing a composite web page rather than adhering to
the routine, conventional functioning of Internet hyperlink protocol. See
DDR Holdings, 773 F.3d at 1257-59. In contrast, claim 1 performs a
process that collects, analyzes, and manipulates information (i.e., data) (user
pledges, user selected metrics, queried statistics corresponding to the
selected metrics) to determine a variable pledge (a donation) based on the
user pledges and queried statistics (i.e., data analysis and manipulation)
utilizing a conventional computer. See Final Act. 2-3; Ans. 2-7; Spec. 1:8-
9; 2:15-7:12; cf. App. Br. 9-13; Reply Br. 2-6.
Data collection, analysis, and manipulation are not technical problems
as discussed in DDR; they are organization and/or efficiency problems. See
Spec. 1:8—4:10; App. Br. 12. Collecting pledge and metric information,
collecting statistics, and utilizing the collected information to determine a
user’s donation (variable pledge) is a commercial solution to the efficiency
problem, not a technical solution. This commercial solution may be assisted
using a general-purpose computer to perform the data collection, analysis,
and manipulation processes, but does not arise specifically in the realm of
computer networking or improve how the computer itself functions. As we
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previously explained, the instant claims are more akin to the claims for
analyzing information found to be abstract in OIP Techs., 788 F.3d at 1362,
and Elec. Power, 830 F.3d at 1353.
We agree with the Examiner that the additional limitations, separately,
or as an ordered combination, do not provide meaningful limitations (i.e., do
not add significantly more) to transform the abstract idea into a patent-
eligible application. See e.g., Final Act. 2-3. Indeed, the claim merely
recites processes for collecting and manipulating data, e.g., providing a GUI
and utilizing database operations. Such steps are all routine and
conventional and well-understood computer functions of a general
processor. The Specification supports this view in discussing the processes
implemented in software operating on generic computers to perform the
recited data presentation, collection, and manipulation steps. See Spec. 4:1-
12; 14:1-16:15. “[T]he use of generic computer elements like a
microprocessor” to perform conventional computer functions “do[es] not
alone transform an otherwise abstract idea into patent-eligible subject
matter.” Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096
(Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256).
Moreover, we find this type of activity, i.e., receiving, collecting,
processing, analyzing, and manipulating data and determining a value,
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out within the human mind
alone or by a human with pen and paper. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental
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processes can be unpatentable, even when performed by a computer, was
precisely the holding of the Supreme Court in Gottschalkv. Benson”)?
For at least the reasons discussed above, we are not persuaded of
Examiner error in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we
sustain the Examiner’s rejection under § 101 of independent claims 1 and
40, and also dependent claims 2-24 and 26-39, which fall with claim 1.
CONCLUSION
On this record, Appellants have not shown by a preponderance of the
evidence that the Examiner erred in rejecting claims 1-24 and 26-40 under
35 U.S.C. § 101.
DECISION
We affirm the Examiner’s rejection of claims 1-24 and 26 40.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
3 CyberSource further guides that “a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101.” CyberSource, 654 F.3d at 1373.
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