Ex Parte Ballow et al

Patent Trial and Appeal Board

May 25, 2018

13035728 (P.T.A.B. May. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/035,728 02/25/2011 John J. Ballow
28164 7590 05/25/2018
BGL/ Accenture - Chicago
BRINKS GILSON & LIONE
PO BOX 10395
CHICAGO, IL 60610
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
10022/1907 3434
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
05/25/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN J. BALLOW, BRIAN F. MCCARTHY, and
ROLAND BURGMAN
Appeal2016-006758 1
Application 13/035,7282
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
FINAMORE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellants appeal from the
Examiner's decision to reject claims 8-14. We have jurisdiction under
§ 6(b ). We AFFIRM.
1 Our Decision references Appellants' Specification ("Spec.," filed Feb. 25,
2011), Appeal Brief ("Appeal Br.," filed Nov. 5, 2015), and Reply Brief
("Reply Br.," filed June 27, 2016), as well as the Examiner's Final Office
Action ("Final Act.," mailed Apr. 7, 2015), Advisory Action ("Adv. Act.,"
mailed June 10, 2015), and Answer ("Ans.," mailed Apr. 25, 2016).
2 Appellants identify Accenture Global Services Limited as the real party in
interest. Appeal Br. 3.
Appeal2016-006758
Application 13/035,728
SUBJECT MATTER ON APPEAL
The invention "relates generally to business performance
management, and more particularly to a system and method for evaluating a
company's performance based on the decomposition and mapping of total
return to shareholders, and preparing financial statements indicative of the
company's performance." Spec. ,r 3. Claim 13, reproduced below, is the
sole independent claim on appeal and representative of the claimed subject
matter:
13. A computer system comprising:
a source system of a company comprising a source system
data processor and a source system memory;
a business performance management (BPM) system;
an information hub configured to provide support for
collaboration of business units, workflow process management,
security, and system administration, wherein the source system
is integrated by the information hub with the BPM system;
the BPM system comprising:
a database comprising financial data provided by
the information hub;
a data processor in communication with the
database;
a non-transitory recording medium storing
executable instructions readable by the data processor, the
instructions being stored on said recording medium, the
instructions when executed by the data processor cause the
data processor to:
calculate with the data processor supplemental
financial metrics Net Operating Profit After Tax
(NO PLAT), Weighted Average Cost of Capital (W ACC),
a Return on Invested Capital (ROIG), a value of Invested
Capital of the company with optional adjustments for
operating leases, goodwill and stock options, and a Market
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Value of Debt with adjustments for off balance sheet
financing;
retrieve financial metrics from balance sheets and
income statements stored in the database;
calculate a set of enhanced business reporting
metrics including a total return to shareholder (unadjusted
TRS) value adjusted to obtain an adjusted TRS, wherein
the unadjusted TRS value is adjusted for market
fluctuation by applying the supplemental financial metrics
and the retrieved financial metrics;
generate supplemental financial reports using the
enhanced business metrics; and
display, in a graphical display in communication
with the data processor, the supplemental financial reports,
wherein the graphical display displays the supplemental
financial reports comprising: right, left, top and bottom
reg10ns;
right, left, top and bottom edges that define the
border of the supplemental financial reports, wherein said
supplemental financial reports comprise:
a Statement of Enterprise Value (EV),
wherein the left region displays a description of
each value displayed in the Statement of EV,
including market value of equity, market value of
debt, Economic Profit of Current Value (EPCV) in
perpetuity, enterprise value, current value (CV) and
future value (FV), wherein the right region displays
values for each of the descriptions displayed in the
left region of the Statement of EV, including values
for a prior year, change from a previous year to the
prior year, percentage change from the previous
year to the prior year, a current year, change from
the prior year to the current year, and percentage
change from the prior year to the current year;
a Statement of Total Return to Shareholders
(TRS) unadjusted, wherein the left region displays
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the description of each value displayed in the
Statement of TRS, including the EPCV in
perpetuity, a change in market value of equity,
dividends paid in the period, Invested Capital,
Capital subordinate to Debt, Future Value in Market
Value of Equity, The Number of Shares
Outstanding, Dividends per share, wherein the right
region displays values for each of the descriptions
displayed in the left region of the Statement ofTRS,
including values for the prior year, the change from
the previous year to the prior year, the percentage
change from the previous year to the prior year, the
current year, the change from the prior year to the
current year, and the percentage change from the
prior year to the current year, wherein unadjusted
TRS=( (EPCV in perpetuity+ Invested
Capital-Capital subordinate to Debt+Future Value
in Market Value of Equity)/The Number of Shares
Outstanding)+Dividends per share, and wherein the
Future Value in Market Value of Equity= Market
Value of Equity+Debt-NOPLAT/WACC-Excess
Cash; and
a Statement of TRS adjusted, wherein the left
region displays the description of each value
displayed in the Statement of TRS adjusted,
including an expected TRS value, a predefined
industry-based market index, a beta value for the
company, the unadjusted TRS, wherein the right
region displays values for each of the descriptions
displayed in the left region of the Statement of TRS
adjusted, including values for the prior year, the
percentage change from the previous year to the
prior year, the current year, and the percentage
change from the prior year to the current year,
wherein adjusting the unadjusted TRS comprises
deducting the expected TRS value based on market
movement from the unadjusted TRS value to obtain
an adjusted TRS value;
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wherein the source system memory comprises
extraction, transformation and loading (ETL) executable
instructions that when executed by the source system data
processor causes the source system data processor to
copy the set of enhanced business reporting
metrics to the source system,
provide strategic analysis in planning-
modeling to support collaboration of business units,
workflow process management, security, and
system administration of the company, manage
business performance as the business performance
effects the company's current value, future value,
financing or TRS value,
adapt operations as the reporting metrics
indicate including setting operational targets
including cascade targets to lower level
metrics-organization activities, and
determine technology to raise business
performance standards.
REJECTI0N3
The Examiner rejects claims 8-14 under 35 U.S.C. § 101 as
non-statutory subject matter.
3 After the Final Office Action, Appellants amended the claims and, in doing
so, canceled claim 7. Response filed June 8, 2015. The Examiner entered
this amendment and withdrew the provisional rejection of claims 7-14 on
the ground of nonstatutory obviousness-type double patenting. Adv. Act. 1.
Given that the double patenting rejection is withdrawn, we consider the
Examiner's reference to claim 7 and the double patenting rejection in the
Answer to be an oversight (Ans. 6).
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ANALYSIS
Appellants argue claims 8----14 as a group. Appeal Br. 6----16;
Reply Br. 4-8. \Ve select independent claim 13 as representative. The
remaining claims of the group stand or fall with independent claim 13.
37 C.F.R. § 4I.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014) (quotingAss'nfor Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). To "distinguish[] patents that
claim laws of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts," the Supreme Court, in
Alice, reiterated the two-step framework previously set forth in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289
(2012), which, in the first step, considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea, and, if so, considers, in the
second step, whether the claim recites an inventive concept-an element or
combination of elements sufficient to ensure the claim amounts to
significantly more than the abstract idea and transform the nature of the
claim into a patent-eligible application. Alice, 134 S. Ct. at 2355 (citing
Mayo, 132 S. Ct. at 1294, 1296-98).
In rejecting claim 13 under 35 U.S.C. § 101 as non-statutory subject
matter, i.e., subject matter judicially excepted from statutory subject matter,
the Examiner analyzes the claim using this two-step framework.
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Final Act. 4--5. Pursuant to the first step, the Examiner determines the claim
is directed to a business reporting methodology, which is an idea of itself
and/ or a mathematical relationship or formula and, therefore, an abstract
idea. Id. at 4. The Examiner further determines the concept of business
reporting is similar to other concepts the courts have held to be abstract
ideas, such as manipulating information using mathematical correlations,
comparing new and stored information and using rules to identify options,
and/or a mathematical procedure for converting one form of numerical
representation to another. Adv. Act. 2.
Under the second step, the Examiner determines the claim does not
recite significantly more than the abstract idea because the additional
elements, alone or in combination, amount to no more than mere instructions
to implement the abstract idea on a computer and/or the recitation of generic
computer structure that serves to perform generic computer functions that
are well-understood, routine, and conventional activities previously known
in the industry. Final Act. 4--5; Adv. Act. 2. The Examiner further
determines the claim does not recite an improvement to a technical field or
to the underlying apparatus. Adv. Act. 2.
As an initial matter, we are unpersuaded of error by Appellants'
assertion that we should reverse the Examiner's rejection under 35 U.S.C.
§ 101 because the Answer seems to apply to only canceled claim 7.
Reply Br. 4--5. The Examiner's response to Appellants' arguments rebutting
the§ 101 rejection does not refer to claim 7, and the Examiner's response is
not exclusive to claim 7. More importantly, the Examiner considers all of
the claims in the Final Office Action (Final Act. 4--5), and the Examiner
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expressly mentions the limitations of claim 13 in the Advisory Action
(Adv. Act. 2).
Also as a preliminary matter, we are unpersuaded of error by
Appellants' argument that claim 13 would not tie up the abstract idea of
business reporting so as to preempt others from using it. Appeal Br. 15-16;
Reply Br. 5---6. Even if claim 13 recites specific limitations and does not
preempt all uses of the abstract idea, preemption is not the test for
determining whether the subject matter of a claim is judicially excepted from
statutory subject matter. Said differently, although preemption may be the
basis for excluding abstract ideas from eligible subject matter, preemption is
not the test for patent eligibility. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015) ("The Supreme Court has made clear
that the principle of preemption is the basis for the judicial exceptions to
patentability. For this reason, questions on preemption are inherent in and
resolved by the§ 101 analysis." (citation omitted)). Accordingly, we
consider Appellants' arguments under the two-step patent-eligibility
analysis.
Pursuant to the first step of the analysis, Appellants argue the
Examiner ignores the specific claim language in determining that claim 13 is
directed to an abstract idea. Reply Br. 6-7. Appellants also argue the claim
is directed to technology infrastructure, not to an abstract idea.
Appeal Br. 10-11. Appellants' arguments do not apprise us of error.
In determining whether a claim is directed to excluded subject matter,
e.g., an abstract idea, under the first step of the patent-eligibility analysis, the
Federal Circuit has explained that "the 'directed to' inquiry applies a stage-
one filter to claims, considered in light of the specification, based on
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whether 'their character as a whole is directed to excluded subject matter.'"
Enjzsh, LLC v. A1icrosoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). For computer-implemented inventions in particular, such
as the present invention, "the first step in the A.lice inquiry ... asks whether
the focus of the claims is on the specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an "abstract idea'
for which computers are invoked merely as a tool." Id. at 1335-36.
Here, claim 13 recites: calculating supplemental financial metrics;
retrieving financial metrics from a database; calculating a set of enhanced
business reporting metrics; generating supplemental financial reports using
the enhanced business metrics; displaying the supplemental financial reports
in a particular arrangement; copying the enhanced business metrics to a
source system; providing strategic analysis in planning-modeling; adapting
operations as the reporting metrics indicate; and determining technology to
raise business performance standards. Thus, the claimed invention provides
enhanced business metrics which are used to improve business performance.
Similarly, as set forth above, the Specification explains that the
invention "relates generally to business performance management, and more
particularly to a system and method for evaluating a company's performance
based on the decomposition and mapping of total return to shareholders, and
preparing financial statements indicative of the company's performance."
Spec. ,r 3. The Specification further describes the invention as "a
computer-implemented method for the [enhanced business reporting]
methodology for preparing corporate financial statements incorporating
financial metrics to measure the performance of a company." Id. ,r 16.
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Claim 13 further recites a computer system for carrying out the
claimed steps, and the computer system comprises: a source system,
including a source system data processor and a source system memory; a
business performance management (BPM) system including a database, a
data processor, a non-transitory recording medium, and a graphical display;
and an information hub. Although we agree with Appellants that claim 13
recites computer infrastructure, the Specification describes "an exemplary
system for implementing the invention includes a general purpose
computing device in the form of a computing environment 20." Spec. ,r 34.
Moreover, the Specification does not describe an improvement to the
computer infrastructure, but instead explains that the invention fulfills the
need for accurate measurement of key drivers of both current and future
value from an external perspective, as well as the need for financial
statements that better inform management and shareholders of a company's
performance. Id. ,r,r 11, 15.
In light of the above, the claimed invention uses the recited computer
infrastructure to perform the steps that provide for enhanced business
reporting. The focus of the claimed invention is not on an improvement in
computer capabilities, but rather on enhanced business reporting.
Appellants, therefore, do not apprise us of error in the Examiner's
determination that the character of claim 13, as a whole, is directed to the
abstract idea of business reporting.
Seeing no error in the Examiner's determination that claim 13 is
directed to an abstract idea under the first step of the patent-eligibility
analysis, we tum to Appellants' arguments under the second step.
Appellants contend claim 13 recites significantly more than the abstract idea
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because it improves the information technology infrastructure.
Appeal Br. 12-14. We disagree.
As set forth above, the Specification does not describe an
improvement to the computer infrastructure, but instead explains that the
invention fulfills the need for accurate measurement of key drivers of both
current and future value from an external perspective, as well as the need for
financial statements that better inform management and shareholders of a
company's performance. Id. ,r,r 11, 15. In other words, claim 13 recites an
improved business reporting methodology that is implemented via
computers, but does not recite an improvement the computer infrastructure
that implements the methodology. Ans. 4.
Appellants also argue that the Examiner erred in determining claim 13
does not include specific limitations other than what is well-known, routine,
and conventional in the industry because claim 13 is not rejected over the
prior art. Appeal Br. 14--15. Appellants' argument does not apprise us of
error because determining whether a claim recites an inventive concept is
not the same as determining whether a claim is patentable over the prior art.
Although the second step of the patent-eligibility analysis is termed a
search for an "inventive concept," the analysis is not an evaluation of
novelty or nonobviousness, but rather, a search for '"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, 134 S. Ct. at 2355 (quoting 1vfayo, 132 S. Ct at
1294). As such, the question in the second step is whether the
implementation of the abstract idea involves ''more than performance of
'\vell-understood, routine~ [and] conventional activities previously known to
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the industry.'" Content Extraction & Transmission LLC v. Wells Fargo
Bank, N.A., 776 F.3d 1343, 1347----48 (Fed. Cir. 2014) (quoting Alice,
134 S. Ct. at 2359). I--Iere1 even if the claim recites a unique business
reporting methodology, the Examiner determines, and Appellants do not
refute, that the computer implementation of the claimed methodology
requires only computer functions that are well-understood, routine, and
conventional, such as storing, receiving, processing, and displaying data.
Adv. Act. 2.
Appellants further assert that claim 13 is distinguishable from the
patent-ineligible claims in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709
(Fed. Cir. 2014). Appeal Br. 16. According to Appellants, unlike the claims
in Ultramercial, which the court held were "devoid of a concrete or tangible
application" (772 F .3d at 715), claim 13 recites multiple computer systems
integrated through an information hub, wherein each system includes a data
processor, memory, and executable instructions to control the flow of
information among the systems. Appeal Br. 16. Appellants' argument is not
persuasive.
As set forth above, although we agree with Appellants that claim 13
recites computer infrastructure, the computer systems and components are
generic. Spec. ,r 34. As the Supreme Court explained in Alice, "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358; see also
DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1256 (Fed. Cir. 2014)
("[T]hese claims [ of prior cases] in substance were directed to nothing more
than the performance of an abstract business practice on the Internet or using
a conventional computer. Such claims are not patent-eligible.").
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In view of the foregoing, Appellants do not apprise us of error in the
Examiner's determination that the subject matter of independent claim 13 is
patent ineligible, i.e., judicially excepted from statutory subject matter.
Accordingly, we sustain the rejection of claims 8-14 under 35 U.S.C. § 101.
DECISION
The Examiner's decision to reject claims 8-14 is 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). 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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