Ex Parte Devaney et al

Patent Trial and Appeal Board

Feb 20, 2018

13312399 (P.T.A.B. Feb. 20, 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.
13/312,399 12/06/2011 Stephen J. Devaney FID-046A 2860
42532 7590 02/22/2018
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
02/22/2018 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):
DocketingPatentBoston@proskauer.com
oandrews@proskauer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN J. DEVANEY, ANDREY LYALKO,
STEVEN A. FEINSCHREIBER, KLARA B. ISKOZ, and
ROBERT L. MACDONALD
Appeal 2016-0065161
Application 13/312,3992
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1-8 and 10-14. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Br.,” filed October 27,
2015) and the Examiner’s Answer (“Ans.,” mailed April 11, 2016) and Final
Office Action (“Final Act.,” mailed March 2, 2015).
2 Appellants identify FMR LLC as the real party in interest. Br. 2.
Appeal 2016-006516
Application 13/312,399
CLAIMED INVENTION
Appellants’ claimed invention “relates generally to methods and
systems, including computer program products, for developing retirement
income plans, and more particularly to an income product selector that
calculates portfolios of income-generating financial products to help meet
the retiree’s income needs throughout retirement” (Spec. ^ 1).
Claims 1,11, and 13 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method comprising:
[(a)] determining, by a computing device, a first income
need to meet essential expenses for a user during retirement;
[(b)] determining, by the computing device, a second
income need to meet discretionary expenses for the user during
retirement;
[(c)] calculating, by the computing device, income
coverage percentages of the first income need and the second
income need to be covered by a portfolio of different classes of
income generating products;
[(d)] calculating, by the computing device, based on the
income coverage percentages a default target income mix
expressed as a set of weights representing an initial distribution
of assets for investing in the portfolio of the different classes of
income generating products that results in representative
incomes covering the first income need and the second income
need, the representative incomes being determined from
representative product quotes of the different classes of income
generating products;
[(e)] quantifying, by the computing device, qualitative
user investment preferences into predetermined quantified user
investment preferences;
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[(f)] converting, by the computing device, the quantified
user investment preferences into overall weight adjustment
values for the different classes of income generating products of
the default targeted income mix, wherein the converting step
further comprises for each of the different classes of income
generating products:
(i) for each of the quantified user investment
preferences, generating a maximum weight adjustment
value derived from the respective user investment
preference;
(ii) for each of the quantified user investment
preferences, generating a calculated value that is
representative of a relationship between select attributes
for that class and the respective user investment
preference, the calculated value being expressed as a
weighted sum of predetermined scores corresponding to
the select attributes for that class relative to the quantified
user investment preference, each of the select attribute
scores being weighted by a percentage value that reflects
its applicability to the quantified user investment
preference;
(iii) for each of the quantified user investment
preferences, generating an individual weight adjustment
value expressed as the product of the calculated value
generated for that class and the maximum weight
adjustment value associated with the respective user
investment preference;
(iv) generating an overall weight adjustment value
corresponding to that class by summing each of the
individual weight adjustment values;
[(g)] adjusting, by the computing device, the set of
weights of the default target income mix based on the overall
weight adjustment values generated for the different classes of
income generating products to form an adjusted target income
mix expressed as a second set of weights in the portfolio of the
different classes of income generating products.
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REJECTION
Claims 1-8 and 10-14 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
ANALYSIS
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: “[ljaws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CIS
Bank Inti, 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.”
Alice Corp., 134 S. Ct. at 2355 (quotingMayo, 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. We, therefore, look to whether the
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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 Enflsh, LLCv. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determines that the claims are directed to “purchasing investment products
to cover projected future income needs,” i.e., to a fundamental economic
practice, and, therefore, to an abstract idea; and that the claims do not
include additional elements or a combination of elements that are sufficient
to amount to significantly more than the abstract idea because
[t]he additional element(s) or combination of elements in the
claim(s) . . . amount(s) to no more than: (i) mere instructions to
implement the idea on a computer, and/or (ii) recitation of
generic computer structure that serves to perform generic
computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent
industry
(Final Act. 2-3).
Addressing step one of the Mayo!Alice framework, Appellants argue
that the claims are not directed to an abstract idea because the claims do not
threaten to monopolize or preempt the idea of‘“purchasing investment
products to cover projected future income needs’” (Br. 11-12). Instead,
according to Appellants, the claims “explicitly recite a specific target income
mix structure that is mapped to predefined, specific product models in order
to generate a detailed product purchase amount schedule” {id. at 12).
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,
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characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption 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 “[f]or 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, 134 S. Ct. at 2354). “[Preemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility.” Id.
Turning to the second step of the Mayo!Alice framework, Appellants
argue that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because each of independent claims 1,11, and 13
recites limitations that “amount to an inventive concept that is ‘significantly
more’ than the abstract idea of ‘purchasing investment products to cover
projected future income needs’” (Br. 12-13). Quoting limitations (c)
through (g), as recited in claim 1, Appellants assert that each of these
limitations goes beyond generally linking the abstract idea, i.e., “‘purchasing
investment products to cover projected future income needs,’” to a particular
technological environment at least because “the operations include analyzing
a specific target income mix structure that is mapped to predefined, specific
product models in order to generate a detailed product purchase amount
schedule” {id. at 13-14). Yet, rather than constituting “significantly more,”
analyzing a specific target income mix structure to generate a product
purchase schedule is merely part of the abstract idea itself. The only claim
element beyond the abstract idea is the “computing device,” i.e., a generic
computer component {see, e.g., Spec. ^ 244 (“The computing device can
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include, for example, a computer, a computer with a browser device, a
telephone, an IP phone, a mobile device (e.g., cellular phone, personal
digital assistant (PDA) device, laptop computer, electronic mail device),
and/or other communication devices”)), on which the claimed method is
performed — which is not enough to make an otherwise ineligible claim
patent-eligible. See, e.g., DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014) (“[AJfter^/z'ce, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible. The bare fact that a computer exists in the
physical rather than purely conceptual realm is beside the point.” (internal
citations and quotation marks omitted)).
We also are not persuaded of Examiner error by Appellants’ argument
that the claims recite a patent-eligible inventive concept and add specific
limitations that are not “well-understood, routine, and conventional”
activities in the field of online retirement planning tools because the claims
have been deemed novel and non-obvious over the cited references (Br. 15-
16). A finding of novelty or non-obviousness does not automatically lead to
the conclusion that claimed subject matter is patent-eligible. 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 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 (citation omitted). “Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry.” Ass’n. for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
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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 Diamond v. Diehr, 450 U.S. 175, 188-89 (1981) (“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.”).
We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting claims 1-8 and 10-14 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1-8 and 10-14 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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