Ex Parte Dickson et al

Patent Trial and Appeal Board

Aug 14, 2017

13285427 (P.T.A.B. Aug. 14, 2017)

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.
13/285,427 10/31/2011 Stephen Dickson 11-2294 3178
63710 7590 08/16/2017
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
08/16/2017 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):
patentdocketing @ cantor.com
lkoro vich @ c antor. com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN DICKSON and PELHAM TEMPLE
Appeal 2015-0050441
Application 13/285,427
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Motion for Rehearing (“Req. Reh’g.”), pursuant to
37 C.F.R. § 41.52, dated June 19, 2017, seeking reconsideration of our
Decision on Appeal mailed April 19, 2017 (“Decision”), in which we
affirmed the Examiner’s rejection of claims 1—36 under 35 U.S.C. § 101 as
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
October 10, 2014) and Reply Brief (“Reply Br.,” filed April 6, 2015), and
the Examiner’s Answer (“Ans.,” mailed February 6, 2015) and Final Office
Action (“Final Act.,” mailed September 12, 2013).
Appeal 2015-005044
Application 13/285,427
directed to non-statutory subject matter.2 We have jurisdiction over the
Request under 35 U.S.C. § 6(b).
DISCUSSION
We note at the outset that a request for rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the [Patent Trial and Appeal Board (the “Board”)].” 37 C.F.R.
§ 41.52(a). A request for rehearing is not an opportunity to rehash
arguments raised in the briefs. Neither is it an opportunity to merely express
disagreement with a decision without setting forth the points believed to
have been misapprehended or overlooked. Arguments not raised in the
briefs before the Board and evidence not previously relied on in the briefs
also are not permitted except in the limited circumstances set forth in
§§ 41.52(a)(2) though (a)(4).3
Turning to the Request, Appellants first argue that the Examiner has
failed to establish a prima facie case of patent-ineligibility (Req. Reh’g 2—5).
Citing “binding PTO examination guidelines from May 4, 2016,” Appellants
charge that the Examiner does not cite to appropriate court decisions or
explain how the subject matter recited in the claims corresponds to concepts
in the cited court decisions,4 and that the Examiner also presents no evidence
2 We also reversed the Examiner’s rejection of claims 1—36 under 35 U.S.C.
§ 103(a).
3 Appellant may present a new argument based on a recent relevant decision
of either the Board or a federal court; new arguments responding to a new
ground of rejection designated as such under § 41.50(b) and new arguments
that the Board decision contains an undesignated new ground of rejection are
also permitted.
4 The Examiner notes, in the Answer, that courts have identified claims
directed to the performance of certain financial transactions as involving
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Application 13/285,427
regarding the long prevalence of any abstract ideas (id. at 2—3). Appellants,
thus, maintain that the Examiner’s reasoning and analysis do not include
sufficient substance to rise to the level of a prima facie showing (id. at 5).
We disagree.
The Federal Circuit has repeatedly noted 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 rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132. Id.
Here, in rejecting claims 1—36 under 35 U.S.C. § 101, the Examiner
analyzed the claims using the Mayo/Alice two-step framework, consistent
abstract ideas and cites, as examples, buy SAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (creating a transaction performance
guaranty for a commercial transaction on computer networks such as the
Internet); Accenture Global Servs., GmbHv. Guidewire Software, Inc.,
728 F.3d 1336, 1338 (Fed. Cir. 2013) (generating rule-based tasks for
processing an insurance claim); Bancorp Servs., L.L.C. v. Sun LifeAssur.
Co. of Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (managing a
stable value protected life insurance policy); Dealertrack, Inc. v. Huber,
674 F.3d 1315, 1333 (Fed. Cir. 2012) (processing loan information through
a clearinghouse). Ans. 17.
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with the guidance set forth in the USPTO’s “2014 Interim Guidance on
Patent Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014), in
effect at the time the rejection was made, i.e., on February 6, 2015. As we
indicate in the Decision (see Decision 5), the Examiner notified Appellants
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.” 35 U.S.C. § 132. And, contrary to
Appellants’ assertions, in doing so, the Examiner set forth a prima facie case
of unpatentability such that the burden shifted to Appellants to demonstrate
that the claims are patent-eligible.
Appellants ostensibly argue that evidentiary support is required to
establish a prima facie case of patent-ineligibility (see, e.g., Req. Reh’g 3
(“[T]he Examiner made no allegation and presented no evidence regarding
the long prevalence of any abstract ideas.”)). But we are aware of no
controlling precedent that requires the Office to provide factual evidence to
support a finding that a claim is directed to an abstract idea. And, although
it may be useful in some circumstances to compare the claims at issue with
those in earlier cases in which a similar issue of patent-eligibility has been
decided, such a comparison, contrary to Appellants’ suggestion (id. at 5), is
not required for a prima facie showing, nor is it mandated by “proper
examination procedure” (id.).
Appellants maintain that Trading Technologies International, Inc. v.
CQG, Inc., 675 Fed. Appx 1001 (Fed. Cir. 2017) is the “most similar case
decided by the courts” to Appellants’ claims, and that if “the courts’ and
PTO’s examination procedures were followed[,] a comparison to [the
Trading Technologies] case would have shown the claims to be patent
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Application 13/285,427
eligible” (Req. Reh’g 6). Appellants assert that the Federal Circuit upheld
the patentability of the claims in Trading Technologies because they
improved the speed, usability and efficiency of computerized economic
interfaces, and argue that the present claims similarly improve the usability
and efficiency of computerized economic interfaces (id.; see also id. at 12).
But Appellants present no evidence or technical reasoning to support that
position. For example, Appellants do not identify or otherwise highlight any
portions of the Specification. And we found nothing, from our review of the
Specification, which ascribes any particular technical improvement in
computerized economic interfaces to the claimed invention.
Appellants further argue that the claims are not directed to an abstract
idea because, like the claims at issue in Enflsh, LLC v. Microsoft Corp.,
822 F.3d. 1327 (Fed. Cir. 2016), the claims are directed to “an improvement
in computerized economic systems” (Req. Reh’g 7). Appellants assert that
the claims “improve the speed, usability and efficiency of conventional
economic systems” (id.). However, we find nothing in the Specification, nor
do Appellants point to anything in the Specification, to indicate that any
increased speed, usability, or efficiency comes from the claimed invention
itself, rather than from the capabilities of the recited “computing device,”
i.e., the general-purpose computer (see, e.g., Spec. 46, 51), responsible for
performing the claimed method steps. See Bancorp Servs., L.L.C. v. Sun
Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(“[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.”); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015) (relying on a computer to perform
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Application 13/285,427
routine tasks more quickly or more accurately is insufficient to render a
claim patent-eligible).
Appellants note that the Specification goes into great detail about the
vast amount of data and calculations performed to provide the described user
interface (Req. Reh’g 8). And Appellants assert that “[t]his information
simply could not be processed or even understood without the use of modem
computer techniques” (id. ). Yet automating a manual process is insufficient
to render a claim patent-eligible. See, e.g., Tranxition, Inc. v. Lenovo (U.S.),
Inc., 664 Fed. Appx. 968, 971 (Fed. Cir. 2016).
Appellants’ further argument that the claims pose no preemption risk
is similarly unpersuasive of Examiner error (Req. Reh’g 8). Although the
Supreme Court has described “the concern that drives this exclusionary
principle [i.e., the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption,” see Alice Corp., 134 S. Ct. at 2354,
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 Corp., 134 S. Ct. at 2354). Although “preemption may
signal patent ineligible subject matter, the absence of complete preemption
does not demonstrate patent eligibility.” Id.
Ostensibly seeking to draw a further analogy between the present
claims and those at issue in Bascom Global Internet Service, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) and Trading Technologies,
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Appellants argue that the Examiner, “in alleging that the claims are not
directed to significantly more than an abstract idea,” improperly “relies
entirely on a position that the claims could be performed by a general
purpose computing device” (Req. Reh’g 8—9). Appellants note that, in
Trading Technologies, the Federal Circuit found a trading system
implemented on a general purpose computer to be patent-eligible, and in
Bascom, although the claim limitations recited generic computer network
and Internet components, the court held that an inventive concept may be
found in the non-conventional, non-generic arrangement of known
conventional elements {id. at 9).
Appellants argue that the evidence of record shows that the present
claims are similarly directed to a non-conventional and non-generic
arrangement of elements {id. at 10), and, like the claims at issue in DDR
Holdings, recite technological improvements, e.g., speed, usability, and
efficiency, that are rooted in computers and networking (id. at 11—12). Yet
Appellants do not identify the “evidence of record,” short of attorney
argument, which supports their position. And, to the extent that Appellants
rely for support on the Board’s reversal of the Examiner’s obviousness
rejections {id. at 12 (“The claims override the routine, conventional and
generic manner of operation of those technologies as is evidenced by the
removal of any prior art rejections by the Decision.”)), Appellants
misapprehend the controlling precedent. 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
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Application 13/285,427
upon the [ineligible concept] itself.’” Alice Corp., 134 S. Ct. at 2355.
A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
Claim 1, for example, recites an apparatus comprising a computing
device and a non-transitory medium for storing a plurality of instructions
that, when executed by the computing device, cause the computing device to
perform certain actions, i.e., to collect and analyze particular information
(e.g., interest rates and interest rate expectations); perform certain
calculations (e.g., calculate a spread between a first interest rate and a
second interest rate and a spread of spreads between a first spread and a
second spread); and display the results via a user interface. In this regard,
the steps of claim 1 are similar to the steps that the Federal Circuit
determined were patent-ineligible in Electric Power Group LLC v. Alstom,
830 F.3d 1350 (Fed. Cir. 2016).
In Electric Power, the method claims at issue were directed to
performing real-time performance monitoring of an electric power grid by
collecting data from multiple data sources, analyzing the data, and
displaying the results. Elec. Power Grp., 830 F.3d at 1351—52. There, the
Federal Circuit held that the claims were not patent-eligible because “[t]he
advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.”
Id. at 1354.
Similarly here, we find that claim 1 involves nothing more than
collecting data, e.g., regarding interest rates and interest rate expectations;
performing certain calculations, e.g., calculating spreads and spreads of
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Application 13/285,427
spreads; analyzing the data, e.g., to determine a correlation between a rate
and a spread; and displaying the results through a user interface — activities
squarely within the realm of abstract ideas. See id. at 1353—54
(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).
Appellants do not assert that claim 1 (or any other claim, for that
matter) involves a new technique for analyzing and/or displaying
information. Nor is there any indication in the record that the calculations
performed are not well-known or that an inventive device is required for
performing the calculations or displaying the calculated results. Instead, the
Specification is clear that the claimed invention “may be implemented by,
e.g., appropriately programmed general purpose computers” (Spec. 46;
see also id. at 51 (further describing the use of a general purpose computer
programed to perform a particular function or algorithm). The mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention. See DDR Holdings, 773 F.3d at 1256
(“After Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”).
We are not persuaded that the Examiner erred in finding that
claims 1—36 are directed to patent-ineligible subject matter. Therefore, we
decline to modify our original Decision.
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Application 13/285,427
DECISION
Appellants’ Request for Rehearing has been granted to the extent that
we have reconsidered our Decision in light of Appellants’ Request, but is
denied in all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a).
DENIED
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