Ex Parte Doherty et al

Patent Trial and Appeal Board

Mar 27, 2018

13692614 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/692,614 12/03/2012
62008 7590 03/29/2018
MAIER & MAIER, PLLC
345 South Patrick Street
ALEXANDRIA, VA 22314
FIRST NAMED INVENTOR
Sean Doherty
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.
TSC-001-US 6033
EXAMINER
MISIASZEK, AMBER AL TSCHUL
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
patent@maierandmaier.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte SEAN DOHERTY, NATALIE LEHR-LOPEZ
and MARK LOPES 1
Appeal2017-000902
Application 13/692,614
Technology Center 3600
Before CARL W. WHITEHEAD JR., JEREMY J. CURCURI, and
AARON W. MOORE, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the non-final rejection of claims 1-16 under
35 U.S.C. § 134(a). Appeal Brief 2. We have jurisdiction under 35 U.S.C.
§ 6(b) (2012).
We affirm.
Introduction
The invention is directed to a:
[M]ethod for identifying corporate risk, implemented on a
computer system, may include obtaining corporate data on
1 Appellants identify the Real Party in Interest as Tailored Solutions and
Consulting, Inc. Appeal Brief 2.
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Application 13/692,614
computer-readable media, the corporate data comprising at least
one of internal data and external data, obtaining behavioral
corporate data from the corporate data on computer-readable
media, the behavioral corporate data comprising at least one
event data point, obtaining data indicative of risk-creating
behavior from the behavioral corporate data on computer-
readable media by evaluating the corporate data against a
knowledge-base of characteristic risk-creating behavior, and
communicating the data indicative of risk-creating behavior to a
user as threat vectors with at least one dimension, the threat
vectors displayed on a graphical user interface.
Specification i-f 4.
Illustrative Claim
1. A method for identifying corporate risk, implemented on
a computer system including a processor, relayed over a network,
the method comprising:
obtaining corporate data on computer-readable media, the
corporate data comprising at least one of quantifiable internal
data and external data;
obtaining behavioral corporate data from the corporate
data on computer-readable media, the behavioral corporate data
derived from monitored virtual and physical interactions of
actors, comprising employees, non-employees, customers, and
suppliers, with an enterprise's property, the interactions
comprising at least one event data point, the event is one of a
singular action or a series of related actions taken by one or
several of the actors, and further comprises one or more of
interactions with people, facilities or infrastructure, network
access, use of an RFID badge, and applying for a position;
creating a baseline of corporate data derived from
quantifiable data from established business operations and a
knowledge-base of characteristic risk-creating behavior, the
baseline of corporate data comprising categorically specific
interaction data;
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obtaining data indicative of risk-creating behavior from the
behavioral corporate data on computer-readable media by
evaluating the corporate data against the baseline and
determining a change, rate of change, or source of change; and
displaying on a visual display associated with the
computer system an output showing the data indicative of risk-
creating behavior to a user as threat vectors configured for visual
comparison on a graph with at least one dimension, the graph
displayed on a graphical user interface.
Rejections on Appeal
Claims 1-16 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Non-Final
Action 3--4.
Claims 1-16 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Brohman (US Patent Application Publication
2006/0155553 Al; published July 13, 2006) and Draper (US Patent
Application Publication 2009/0276257 Al; published November 5, 2009).
Non-Final Action 5-10.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed January 15, 2016), the Answer (mailed
August 11, 2016) and the Non-Final Action (mailed September 11, 2015) for
the respective details.
35 U.S.C. § 101 rejection
The U.S. Supreme Court provides a two-step test for determining
whether a claim is directed to patent-eligible subject matter under 35 U.S.C.
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§ 101. 2 In the first step, we determine whether the claims are directed to one
or more judicial exceptions (i.e., law of nature, natural phenomenon, and
abstract ideas) to the four statutory categories of invention (i.e., process,
machine, manufacture, and composition of matter). Id. (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97
(2012)) ("Mayo"). In the second step, we "consider the elements of each
claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Id. at 2355 (citing Mayo, 132 S. Ct. at 1297-
98). In other words, the second step is to "search for an 'inventive
concept'-i.e., 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."' Id. (citing Mayo, 132 S. Ct. at 1294).
Step One
Appellants contend the claimed
method and system of managing corporate risk is far more than
merely identifj;ing corporate risk. and requires more than a
generic computer as alleged in the outstanding Action. Rather,
the present invention further requires a specifically programmed
system to monitor the virtual and physical interactions of actors
with an enterprise's property.
Appeal Brief 5---6.
In the instant application, we find the invention is directed to an
abstract idea because the claims differ in character from the claims in Enfish,
where "the plain focus of the claims [were] on an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
2 Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014).
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used in its ordinary capacity." Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1336 (Fed. Cir. 2016). 3 The claims utilize a computer system as a tool
that includes a processor to access and identify corporate risk. Accordingly,
we find Appellants' arguments unpersuasive and find the claims are directed
to an abstract idea. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (explaining that a claim to "gathering and
analyzing information of a specified content, then displaying the results,"
absent "any particular assertedly inventive technology for performing those
functions," is directed to an abstract idea).
Step Two
Appellants contend,
the present invention does more than "merely recite the
performance of some business practice known from the pre-
Intemet world, along with the requirement to perform in on the
Internet." See DDR Holdings, LLC v. Hotels.com et al., 113
USPQ2d 1097 (Fed. Cir. 2014). Instead, the claimed invention
is necessarily rooted in computer technology in order to
3 "Therefore, we find it relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea, even at the first step of the Alice analysis.
For that reason, the first step in the Alice inquiry in this case asks whether
the focus of the claims is on the specific asserted improvement in computer
capabilities (i.e., the self-referential table for a computer database) or,
instead, on a process that qualifies as an "abstract idea" for which computers
are invoked merely as a tool. As noted infra, in Bilski and Alice and
virtually all of the computer-related § 101 cases we have issued in light of
those Supreme Court decisions, it was clear that the claims were of the latter
type-requiring that the analysis proceed to the second step of the Alice
inquiry, which asks if nevertheless there is some inventive concept in the
application of the abstract idea. See Alice, 134 S. Ct. at 2355, 2357-59."
Enfzsh, 822 F.3d at 1335-36.
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overcome a problem arising in the realm of computer networks
(e.g. tracking an actor's interactions with an organization's
property through a computer environment and identifying
changes in such interactions over time).
Appeal Brief 6.
Noting that "the two stages involve overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add-specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (citations and quotations omitted). In considering
whether a claim is directed to an abstract idea, we acknowledge, as did the
Court 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, 822 F.3d at 1336.
Thus, even accepting Appellants' argument that the claimed invention
"is necessarily rooted in computer technology in order to overcome a
problem arising in the realm of computer networks" there is a fundamental
difference between computer functionality improvements, on the one hand,
and uses of existing computers as tools to perform a particular task, on the
other. Indeed, the Federal Circuit applied this distinction in Enfzsh in
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rejecting a § 101 challenge at the step one stage in the Alice analysis because
the claims at issue focused on a specific type of data structure, i.e., a self-
referential table for a computer database, designed to improve the way a
computer carries out its basic functions of storing and retrieving data, and
not on asserted advances in uses to which existing computer capabilities
could be put. Enfzsh, 822 F.3d at 1335-36.
We find no parallel here between Appellants' claims and the claims in
Enfzsh, nor any comparable aspect in Appellants' claims that represents "an
improvement to computer functionality." The alleged advantages that
Appellants tout do not concern an improvement to computer capabilities but
instead relate to identifying corporate risk by using a computer system as a
tool.
Also, we cannot agree with Appellants that the pending claims are
similar to the claims that the court found patent-eligible in DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014) (see Appeal Brief
6). Appellants assert that the pending claims address a business challenge
(e.g. tracking an actor's interactions with an organization's property through
a computer environment and identifying changes in such interactions over
time) that is "necessarily rooted in computer technology in order to
overcome a problem arising in the realm of computer networks" (Appeal
Brief 6). Yet, as the court cautioned in DDR Holdings, "not all claims
purporting to address Internet-centric challenges are eligible for patent."
DDR Holdings, 773 F.3d at 1258. Thus, in Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014), although the patentee argued that its claims
were "directed to a specific method of advertising and content distribution
that was previously unknown and never employed on the Internet before,"
772 F .3d at 714, the court found that this alone could not render the claims
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patent-eligible where the claims merely recited the abstract idea of "offering
media content in exchange for viewing an advertisement," along with
"routine additional steps such as updating an activity log, requiring a request
from the consumer to view the ad, restrictions on public access, and use of
the Internet." Id. at 715-16.
Similarly here, we find that the invocation of the Internet is not
sufficient to transform Appellants' otherwise patent-ineligible abstract idea
into patent-eligible subject matter. We find, as did the Examiner, that the
claims are directed to the abstract idea of managing corporate risk.
Narrowing that abstract idea to computer networks merely limits the use of
the abstract idea to a particular technological environment, which the Court
made clear in Alice is insufficient to transform an otherwise patent-ineligible
abstract idea into patent-eligible subject matter. See Alice Corp., 134 S. Ct.
at 2358. Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection
of claims 1-16.
35 U.S.C. §103 rejection
Appellants contend the Examiner's obviousness rejection is erroneous
because Draper fails to address the deficiency of Brohman because Draper
does not disclose the aspects of the claimed invention relating to "obtaining
behavioral corporate data, creating a baseline of corporate data, and
obtaining data indicative of risk-creating behavior." Appeal Brief 8.
Appellants argue:
[T]he Draper reference does not disclose obtaining data
indicative of risk-creating behavior by comparing corporate data
against a baseline. Rather, Draper discloses tracking a current
and forecasted state of risks against a baseline. The aspect of the
present invention cited, on the other hand, is directed to tracking
monitored event data against a baseline of event data to identify
data that could indicate risk-creating behavior, not merely
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tracking known and forecasted risks against a baseline of those
risks. Consequently a fundamental difference exists between the
teachings of Draper and the present invention.
Appeal Brief 9.
We do not find Appellants' arguments persuasive. The Examiner
finds, and Appellants admit, that Draper "track[ s] current and forecasted
state of risks against a baseline." Appeal Brief 9; Non-Final Action 7 (citing
Draper, paragraph 125: "The resultant residual risk enables management to
make appropriate plans to mitigate risks and obtain a profile of the current
state and forecast the anticipated changes in the correlated values. The
ability to track against a baseline provides the opportunity to either reduce
the residual risk or mitigate further increases.") We do not find there is a
patentable distinction between forecasting risks against a baseline and
indicating risk-creating behavior because one of ordinary skill in the art at
the time of the invention would have understood that Draper's disclosure of
forecasting risks suggests taking into consideration risk-creating behavior in
order to reduce risk or mitigate increases to risk. See Draper i-f 125. "As [the
Federal Circuit's] precedents make clear ... the analysis need not seek out
precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ." KSR Int'! Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007). Consequently, we sustain the Examiner's
obviousness rejection of claims 1-16, not argued separately.
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DECISION
The Examiner's non-statutory subject matter rejection of claims 1-16
is affirmed.
The Examiner's obviousness rejection of claims 1-16 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).
AFFIRMED
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