Ex Parte Capparell et al

Patent Trial and Appeal Board

May 8, 2018

13343140 (P.T.A.B. May. 8, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/343,140 01/04/2012
139180 7590 05/10/2018
Baker Botts LLP/Bank of America Corporation
2001 Ross Avenue
Suite 700
Dallas, TX 75201
FIRST NAMED INVENTOR
Maryfaith Capparell
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.
015444.0684 2936
EXAMINER
SHRESTHA, BIJENDRA K
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/10/2018 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):
ptomaill@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAR YF AITH CAPP ARELL, BRIAN J. HASCUP,
JAMES KARDELL, !TAMAR GUS,
JAY ALAKSHMI BALASUBRAMANIAN, JULIA KIRSHTEIN,
AMIT A. KARVE, KANNAN PICHA!,
ANCILLA AMBROSE-LOURDES, SARA M. CUMMINGS,
BALAJI VADHIYAR, and STEVEN F. INFUSO
Appeal2017-000402 1
Application 13/343,1402
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants' Appeal Brief ("Br.," filed April 26,
2016) and the Examiner's Answer ("Ans.," mailed August 12, 2016) and
Non-Final Office Action ("Non-Final Act.," mailed December 31, 2015).
2 Appellants identify Bank of America Corporation as the real party in
interest. Br. 2.
Appeal2017-000402
Application 13/343,140
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED INVENTION
Appellants' claimed invention "relates to financial liquidity and more
specifically to a liquidity assessment system" (Spec. 1 ).
Claims 1, 8, and 15 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A liquidity assessment system, comprising:
a memory configured to store:
financial environment data, the financial
environment data identifying at least one characteristic of
an existing financial environment;
financial liquidity data for a financial enterprise, the
financial enterprise comprising a plurality of financial
entities, the plurality of financial entities comprising a first
financial entity and a second financial entity, the financial
liquidity data identifying a liquidity position for each
financial entity in the existing financial environment;
first financial scenario data, wherein the first
financial scenario data identifies at least one change to the
at least one characteristic of the existing financial
environment in the first jurisdiction;
second financial scenario data, wherein the second
financial scenario data identifies at least one change to the
at least one characteristic of the existing financial
environment in the second jurisdiction; and
a processor, communicatively coupled to the memory, the
processor configured to:
receive, via a network, liquidity requirements
promulgated by a plurality of jurisdictions comprising a
first jurisdiction and a second jurisdiction;
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transform the liquidity requirements promulgated
by the plurality of jurisdictions into a common format, the
first financial entity being subject to first liquidity
requirements of the first jurisdiction, the second financial
entity being subject to second liquidity requirements of the
second jurisdiction;
generate a first scenario financial environment by
applying the first financial scenario data to the financial
environment data;
generate a second scenario financial environment
by applying the second financial scenario data to the
financial environment data;
determine a first scenario liquidity position for the
first financial entity in the first scenario financial
environment;
determine a second scenario liquidity position for
the second financial entity in the second scenario financial
environment;
automatically determine if the first financial entity
has excess liquidity based on comparing the first scenario
liquidity position to the transformed first liquidity
requirements;
automatically determine if the second financial
entity has insufficient liquidity based on comparing the
second scenario liquidity position to the transformed
second liquidity requirements; and
automatically transfer excess funds from the first
financial entity having excess liquidity to the second
financial entity having insufficient liquidity.
REJECTION3
Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
3 The Examiner has withdrawn the rejection of claims 1-7 under 35 U.S.C.
§ 112, second paragraph, and the rejection of claims 1-7 under 35 U.S.C.
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ANALYSIS
Non-Statutory Subject Matter
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. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014).
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 (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 Corp., 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. If the
claims are not directed to a patent-ineligible concept, e.g., 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 there are additional elements that
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 566 U.S. at 79, 78).
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. Therefore, the Federal Circuit has
§ 101 as failing to "provide the structure of the device or the hardware that
performs the function" (Ans. 2).
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instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In rejecting claims 1-20 under 35 U.S.C. § 101, the Examiner
determined that the claims are directed to "[a] system and method of
liquidity assessment of each financial entity within a financial enterprise and
transferring excess funds from financial entity with excess liquidity to the
financial entity with insufficient liquidity" (Non-Final Act. 5). Paraphrasing
the claim language, the Examiner further noted that the claims are directed
to
stor[ing] financial environment data, the financial environment
data identifying at least one characteristic of an existing financial
environment, financial liquidity data for a financial enterprise[,]
and first and second financial scenario data[;] generat[ing] a first
and second scenario financial environment by applying the first
and second financial scenario data to the financial environment
data; receiv[ing], via a network, liquidity requirements
promulgated by a plurality of jurisdictions comprising a first
jurisdiction and a second jurisdiction; transform[ ing] the
liquidity requirements promulgated by the plurality of
jurisdictions into a common format; determin[ ing] a first and
second scenario liquidity position for the first and second
financial entity in the first and second scenario financial
environment; automatically determin[ing] if the first financial
entity has excess liquidity based on comparing the first scenario
liquidity position to the transformed first liquidity requirements;
automatically determin[ing] if the second financial entity has
insufficient liquidity based on comparing the second scenario
liquidity position to the transformed second liquidity
requirements; and automatically transfer[ ring] excess funds from
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the first financial entity having excess liquidity to the second
financial entity having insufficient liquidity[,]
i.e., "transferring excess funds from one financial entity to another after
comparing the excess/insufficient liquidity positions of the financial entities
of the financial enterprise," which the Examiner concluded are
"mathematical formulas/relationships and/ or a method of organizing human
activities and/or an idea 'of itself"' (id. at 5---6, 10-11 (emphasis omitted)).
The Examiner further determined that claims 1-20 do not include additional
elements that are sufficient to amount to significantly more than the judicial
exception (id. at 6; see also id. at 8-13).
We are not persuaded, as an initial matter, by Appellants' argument
that the Examiner has presented "disparate characterizations of the purported
abstract idea" and has, thus, failed to "meet his burden of making a prima
facie case of patent ineligibility by providing [Appellants] with adequate
notice of why the claims are supposedly ineligible" (Br. 11 ).
The Federal Circuit has repeatedly observed that "the prima facie case
is merely a procedural device that enables an appropriate shift of the burden
of production." Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007)
(citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has,
thus, held that the USPTO carries its procedural burden of establishing a
prima facie case when its rejection satisfies the requirements of 35 U.S.C.
§ 132 by notifying the applicant of the reasons for the rejection, "together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application." In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Thus, all that
is required of the Office is that it sets forth the statutory basis of the rejection
in a sufficiently articulate and informative manner as to meet the notice
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requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d 1574, 1578
(Fed. Cir. 1990) ("Section 132 is violated when a rejection is so
uninformative that it prevents the applicant from recognizing and seeking to
counter the grounds for rejection.").
In rejecting the pending claims under § 101, the Examiner analyzed
the claims using the Mayo/Alice two-step framework, in accordance with the
guidance set forth in the US PTO' s "2014 Interim Guidance on Patent
Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), in effect at
the time the Non-Final Office Action was mailed (Non-Final Act. 4--13). In
doing so, the Examiner set forth a detailed analysis of the claims and a
comprehensive explanation of the bases for the rejection (id.). The
Examiner, thus, notified Appellants of the reasons for the rejection in a
sufficiently articulate and informative manner as to meet the notice
requirement of§ 132. And we find that the Examiner, in doing so, set forth
a proper rejection under§ 101 such that the burden shifted to Appellants to
demonstrate that the claims are patent-eligible.
Appellants criticize the Examiner for first characterizing the claimed
invention as directed to "[a] system and method of liquidity assessment of
each financial entity within a financial enterprise and transferring excess
funds from financial entity with excess liquidity to the financial entity with
insufficient liquidity," and then paraphrasing the recited functional language
in further identifying the concept to which the claims are directed (Br. 11;
see also id. at 15-17). But Appellants cannot reasonably maintain that the
§ 101 rejection was not understood or that the rejection otherwise fails to
meet the notice requirements of 35 U.S.C. § 132. Indeed, Appellants'
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understanding of the rejection is clearly manifested by Appellants' responses
as set forth in the brief.
Addressing the first step of the Mayo/Alice framework, Appellants
argue that claims 1-20 are not directed to an abstract idea because the claims
are dissimilar from the concepts the USPTO identified as abstract on its
July 2015 Update: Interim Eligibility Guidance Quick Reference Sheet
(Br. 11 ). Yet, even if true, that is no basis for concluding that the Examiner
erred in determining that the claims are directed to an abstract idea.
The USPTO guidance, including the Quick Reference Sheet, 4 is
intended as a tool to assist examiners in determining subject matter
eligibility under § 101. But there is nothing in the guidance that precludes
an examiner from determining that a claim is directed to an abstract idea
unless it is similar to a concept identified on the Quick Reference Sheet. We
also are aware of no controlling precedent, nor for that matter do Appellants
identify any precedent, that precludes an examiner from determining that a
claim is directed to an abstract idea unless it is similar to a concept that a
court has previously identified as an abstract idea.
Here, claim 1, for example, is directed to a liquidity assessment
system comprising a memory and a processor communicatively coupled to
the memory. Claim 1 recites that the memory stores certain financial
information (i.e., financial environment data, financial liquidity data for a
financial enterprise, and financial scenario data); and that the processor
generates a scenario financial environment by applying the financial
scenario data to the financial environment data, determines scenario liquidity
4 Available at https://www.uspto.gov/sites/default/files/documents/ieg-
qrs.pdf
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positions for each financial entity within the financial enterprise, and
compares the scenario liquidity positions with liquidity requirements of
jurisdictions governing the financial entities. In other words, claim 1
involves nothing more than collecting data, analyzing the data, and
comparing the results of the analysis to certain requirements - activities
squarely within the realm of abstract ideas. See, e.g., Elec. Power Grp. LLC
v. Alstom, S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (characterizing
collecting information, analyzing information by steps people go through in
their minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas). Although claim 1 also recites "automatically
transfer[ ring] excess funds from the first financial entity having excess
liquidity to the second financial entity having insufficient liquidity," we
agree with the Examiner that this is merely insignificant post-solution
activity (Non-Final Act. 8), which does not make the claim any less abstract.
See Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) ("Flook [i.e., Parker v.
Flook, 437 U.S. 584 (1978)] stands for the proposition that the prohibition
against patenting abstract ideas 'cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment' or
adding 'insignificant post-solution activity."') (quoting Diamond v. Diehr,
450 U.S. 175, 191-92 (1981)).
We also are not persuaded of Examiner error to the extent that
Appellants argue that the claims are patent-eligible based on the lack of art-
based rejections (Br. 15). A finding of novelty or non-obviousness does not
automatically lead to the conclusion that the claimed subject matter is
patent-eligible. "Groundbreaking, innovative, or even brilliant discovery
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does not by itself satisfy the § 101 inquiry." Ass 'n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Diehr, 450 U.S. at 188-89
("The 'novelty' of any element or steps in a process, or even of the process
itself, is of no relevance in determining whether the subject matter of a claim
falls within the§ 101 categories of possibly patentable subject matter.").
Turning to the second step of the Mayo/Alice framework, Appellants
maintain that even if the claims are directed to an abstract idea, the claims
are nonetheless patent-eligible because the claims recite significantly more
than an abstract idea (Br. 17-23).
Ostensibly alluding to In re Alappat, 33 F.3d 1526, 1543 (Fed. Cir.
1994), Appellants first argue that the claims recite significantly more than an
abstract idea because they "employ a specifically programmed special-
purpose computer to perform compliance testing and resource transfers
among entities in different jurisdictions ... to ensure that the entities have
sufficient liquidity" (id. at 18). However, the Federal Circuit, in Eon Corp.
v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015), explicitly noted
that "Alappat has been superseded by Bilski, 561 U.S. at 605---06, 130 S. Ct.
3218, and Alice Corp. v. CLS Bankint'l, -U.S.-, 134 S. Ct. 2347,
189 L.Ed.2d 296 (2014 ). "
There is no indication here that any specialized hardware or inventive
computer components are required or that the claimed invention is
implemented using something other than generic computer components. In
fact, Appellants ostensibly concede that the claimed invention can be
implemented by an appropriately programmed general purpose computer
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(Br. 20). And, as the Supreme Court made clear in Alice, merely
implementing an abstract idea on a general purpose computer is not patent-
eligible. See Alice Corp., 134 S. Ct. at 2358 (holding that if a patent's
recitation of a computer amounts to a mere instruction to implement an
abstract idea on a computer, that addition cannot impart patent eligibility).
Appellants' argument that the claims "do not tie up any basic tools of
science and technology" is similarly unpersuasive of Examiner error
(Br. 18-19). There is no dispute that the Supreme Court has described "the
concern that drives [the exclusion of abstract ideas from patent eligible
subject matter] as one of pre-emption." Alice Corp., 134 S. Ct. at 2354.
But, characterizing preemption as a driving concern for patent eligibility is
not the same as characterizing preemption as the sole test for patent
eligibility. "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability" and "[ fJor
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354).
"[P]reemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility." Id.
Appellants also misapprehend the controlling precedent to the extent
Appellants maintain that the claimed invention is patent-eligible, i.e., that
the claims amount to "significantly more" than an abstract idea because the
claims are allegedly novel and/or non-obvious in view of the prior art
(Br. 18-19). Although the second step in the Mayo/Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or non-obviousness, but rather, a search for "an element or
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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., 134 S. Ct. at 2355 (alteration in original). As
described above, a novel and non-obvious claim directed to a purely abstract
idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
Appellants further argue that the claims are patent-eligible under
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)
(Br. 20-22). But, we find no parallel between the present claims and those
at issue in DDR Holdings.
The claims in DDR Holdings were directed to retaining website
visitors, and in particular, to a system that modified the conventional web
browsing experience by directing a user of a host website, who clicks an
advertisement, to a "store within a store" on the host website, rather than to
the advertiser's third-party website. DDR Holdings, 773 F.3d at 1257-1258.
The court determined that "the claims address a business challenge
(retaining website visitors) [that] is a challenge particular to the Internet."
Id. at 1257. The court also determined that the invention was "necessarily
rooted in computer technology in order to overcome a problem specifically
arising in the realm of computer networks," and that the claimed invention
did not simply use computers to serve a conventional business purpose. Id.
Rather, there was a change to the routine, conventional functioning of
Internet hyperlink protocol. Id.
Appellants argue that the pending claims, like the claims in DDR
Holdings, are necessarily rooted in computer technology in order to
overcome a problem (i.e., making determinations and performing
calculations using information (e.g., published liquidity requirements)
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received in disparate formats over a network) specifically arising in the
realm of computer networks (Br. 21-22 (asserting that "[a ]lthough a human
reader may understand the regulations in the various formats, a computer
would not be able to use the received regulations without some sort of data
transformation")). Appellants assert that claim 1 recites a "solution to this
network-centric challenge: 'transform the liquidity requirements
promulgated by the plurality of jurisdictions into a common format"' (id.
at 21 ). Yet, the difficulty with Appellants' argument is that claim 1 merely
recites that liquidity requirements are transformed into a common format;
claim 1 does not recite how that transformation is achieved. See TDE
Petroleum Data Sols., Inc. v. AKM Enter., Inc., 657 F. App'x 991, 993
(Fed. Cir. 2016) ("As we discussed at greater length in Electric Power, the
claims of the '812 patent recite the what of the invention, but none of the
how that is necessary to tum the abstract idea into a patent-eligible
application.") (citing Elec. Power Grp., 830 F.3d at 1353); see also Internet
Patents Corp., 790 F.3d at 1348 ("As the district court observed, claim 1
contains no restriction on how the result is accomplished.").
We also are not persuaded of Examiner error by Appellants' argument
that the claims are patent-eligible because transforming content from one
format into another, i.e., "transform[ing] the liquidity requirements
promulgated by the plurality of jurisdictions into a common format," as
recited in claim 1, cannot be performed by a human, either mentally or using
a pen and paper (Br. 22-23). Appellants appear to be arguing that any
invention that cannot be performed mentally or by hand, because the claim
recites a computer is, therefore, "rooted in technology" and not abstract.
Yet, that argument was expressly rejected by the Court in Alice. See Alice
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Corp., 134 S. Ct. at 2358 ("the mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention").
And, as described above, there is no indication of record here that the
claimed invention is implemented using other than generic computer
components. 5
Appellants' argument that the claims are analogous to the check
processing claims at issue in U.S. Bancorp v. Solutran, Inc.,
CBM2014-00076, 2014 WL 3943913 (PTAB Aug. 7, 2014), is similarly
unpersuasive (Br. 23). There, the Board denied institution of a § 101
challenge because the petitioner failed to demonstrate that claims reciting a
method for processing paper checks were directed to an abstract idea.
U.S. Bancorp, 2014 WL 3943913, at *8-9. Specifically, the Board found
"that the basic, core concept of independent claim 1 is a method of
processing paper checks, which is more akin to a physical process than an
abstract idea." Id. at *8.
Appellants argue that, like the claims at issue in U.S. Bancorp, claim 1
involves "a tangible physical process: 'automatically transfer[ ring] excess
funds from the first financial entity having excess liquidity to the second
financial entity having insufficient liquidity"' (Br. 23 (alteration in
original)). However, as described above, we agree with the Examiner that
5 Regarding Appellants' reliance on PNC Bank v. Secure Axcess, LLC,
CBM2014-00100, 2014 WL 4537440 (PTAB Sept. 9, 2014), what a
different panel did in a different situation under a different set of facts has
little bearing on the proper disposition of this case. PNC Bank also is a non-
precedential decision of the Board; therefore, it is not binding on this panel.
We also note for the record that, in holding the claims patent-eligible, the
panel in PNC Bank relied on more than whether the claimed transformation
could be performed in the human mind.
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"transfer[ ring] excess funds from the first financial entity having excess
liquidity to the second financial entity having insufficient liquidity" is
insignificant post-solution activity, which cannot be relied to circumvent the
prohibition against patenting abstract ideas. See Bilski, 561 U.S. at 610-11.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-20 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-20 under 35 U.S.C. § 101 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)(l)(iv).
AFFIRMED
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