Ex Parte Greenstein

Patent Trial and Appeal Board

Jan 30, 2018

12851021 (P.T.A.B. Jan. 30, 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.
12/851,021 08/05/2010 Mark Alfred Greenstein GREE3011/FJD 1950
23364 7590
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
EXAMINER
ZIEGLE, STEPHANIE M
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
02/01/2018 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):
MAIL @B ACONTHOMAS .COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK ALFRED GREENSTEIN
Appeal 2016-006727
Application 12/851,021
Technology Center 3600
Before JEAN R. HOMERE, BETH Z. SHAW, and PHILLIP A. BENNETT,
Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1—3 and 5—12, which constitute all claims pending in this
application.1 App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies the real party in interest as himself. App. Br. 1.
Appeal 2016-006727
Application 12/851,021
Introduction
According to Appellant, the claimed subject matter relates to a
collective investment vehicle for re-allocating assets within a collective
investment in accordance with the individual profile of each investor. Spec.
13, 22. In particular, upon receiving an investor’s request to perform a
transaction (e.g., buying, selling, transferring, exchanging), the collective
investment vehicle automatically processes the requested change, and
subsequently rebalances the investment pool to reflect the current interests
of each investor. Id.
Representative Claim
Independent claim 1 is representative, and reads as follows:
1. A method for allocation of investment returns for at least
one investor in a collective investment vehicle comprising the
steps of: storing personal information corresponding to the
investor in a computerized database; using at least one
computer to assigning an investment return to the investor
which assigned return is different from the investment return
assigned to at least one other investor in the collective
investment vehicle; using at least one computer to change the
investment return assigned to the investor at least one time;
using at least one computer to effect at least one change to the
investment returns through internal mechanisms of the
collective investment vehicle which transfers returns between
investors in the investment vehicle; using at least one computer
to make corresponding changes to the investment returns
assigned to at least one other investor in the collective
investment vehicle and using at least one computer to track and
compute the transfers between investors in the collective
investment vehicle.
2
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Application 12/851,021
Prior Art Relied upon
Tarbox US 2002/0169701 A1 Nov. 14,2002
Lemken US 2005/0027627 A1 Feb. 3,2005
Fulshaw US 2010/0153298 A1 June 17,2010
Rejections on Appeal
Claims 1—3 and 5—12 stand rejected under 35 U.S.C. § 101 as being
directed to patent ineligible subject matter. Final Act. 9.
Claims 1—3 and 5—12 stand rejected under 35 U.S.C. § 112(b) or
35 U.S.C. § 112 (pre-AIA), first paragraph, as failing to comply with the
written description requirement. Final Act. 10-11.
Claims 1—3, 5—8, and 10-12 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over the combination of Fulshaw and Tarbox. Final
Act. 12-18.
Claim 9 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Fulshaw, Tarbox, and Lemken. Final
Act. 19.
ANALYSIS
We consider Appellant’s arguments seriatim, as they are presented in
the Appeal Brief, pages 5—11.2
2 Rather than reiterate all the arguments of Appellant and all the Examiner’s
findings, we refer to the Appeal Brief (filed December 14, 2015) (“App.
Br.”), the Reply Brief (filed June 27, 2016), and the Answer (mailed April
27, 2016) (“Ans.”) for the respective details. We have considered in this
Decision only those arguments Appellant actually raised in the Briefs. Any
other arguments Appellant could have made but chose not to make in the
Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv) (2012).
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Application 12/851,021
Written Description Rejection
Appellant argues that the Examiner erred in finding that the
Specification does not support the recitation of transferring returns between
investors in a collective investment, as recited in independent claim 1. App.
Br. 5—7. According to Appellant, one of ordinary skill in the art, having read
Appellant’s Specification, would recognize that Appellant had possession of
the disputed claim limitations because the ordinarily skilled artisan would be
familiar with algorithms and programs used for acquiring an interest in a
collective investment vehicle to thereby dilute ownership of current
investors in exchange for other properties currently held by the fund. App.
Br. 6. In particular, Appellant argues that the ordinarily skilled artisan
would appreciate that the original Specification discloses “the change by an
individual causes a change to another investor’s return through a transfer.”
Id. at 6—7 (citing Spec. 123).
This argument is persuasive. We do not agree with the Examiner that
Appellant’s originally filed disclosure does not describe the limitation of
claim 1, which recites in relevant part:
using at least one computer to effect at least one change to the
investment returns through internal mechanisms of the
collective investment vehicle which transfers returns between
investors in the investment vehicle [and] using at least one
computer to make corresponding changes to the investment
returns assigned to at least one other investor in the collective
investment vehicle.
As acknowledged by the Examiner, Appellant’s original disclosure
includes language regarding assigning an investment return and changing an
investment return which transfers funds between investors. Ans. 3. In
particular, Appellant’s originally filed claim 4 recites in relevant part
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Application 12/851,021
“reallocating] funds within the retirement investor’s investment vehicle in
response to a change in the retirement investor’s age combined with a
change in date.” As noted by Appellant, the cited limitation is also
supported in paragraph 22 of the originally filed Specification, which recites
in relevant part the following:
At the time of an initial investment, or during times of
adjustment such as aging of investors, the purchase sale orders
are aggregated and then the net is communicated and results in
generally small changes to an existing holder who, as a
practical matter either sells or purchases a portion of their
interests to the net of the new/old accounts investors. The total
of the tranches (52) are combined and taken into account and
processed in a computer (28) and recorded in a data storage
device (30).
Spec. 122.
Furthermore, we do not agree with the Examiner that the claim fails to
comply with the written description requirement because Appellant’s
originally filed disclosure does not allegedly disclose in detail the specific
steps or algorithm needed to perform the steps of assigning, and changing, as
recited in independent claim 1. Ans. 3. As persuasively argued by
Appellant, the ordinarily skilled artisan would know how to program a
computer in a collective investment vehicle so as to reallocate the interest of
an investor in response to a change in the investor’s circumstances. App. Br.
6 (citing Fonar Corp. v. General Elec. Co., 107 F.3d 1543, 1549 (Fed. Cir.
1997)). Accordingly, we do not sustain the Examiner’s written description
rejection of claims 1—3 and 5—12.
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Obviousness Rejection
Appellant argues that the combination of Fulshaw and Tarbox does
not teach transactions that may occur within a single investment vehicle, as
recited in independent claim 1. App. Br. 8. In particular, Appellant argues
that Tarbox discloses a retirement/pension plan, which differs from an
investment vehicle. App. Br. 8—9. According to Appellant, although a
pension plan has the objective of providing retirement income, it uses
multiple investment vehicles to accomplish its purpose of optimizing asset
allocation, whereas the claim is directed to using a single investment vehicle
that provides a different way to effect a change in asset allocation. Id.
These arguments are not persuasive because they are not
commensurate with the scope of the claim. Although the claim recites a
collective investment vehicle, such language does not preclude more than
one investment vehicle. Further, we find no basis in the claims to support
Appellant’s argument regarding the alleged differing objectives between the
pension plan disclosed in Tarbox and the claimed investment vehicle.
Accordingly, we are not persuaded of error in the Examiner’s obviousness
rejection of claims 1—3 and 5—12.
Patent Ineligibility Subject Matter Rejection
Appellant argues the Examiner erred in concluding that claims 1—3
and 5—12 are directed to the abstract idea of “investing funds in a particular
environment.” App. Br. 10. In particular, Appellant argues because the
claims solve an “internet-type centric problem” by using technology to
perform a specific function, which while related to the broader purpose of
the investment tool funds, is necessarily rooted in computer technology.
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App. Br. 10 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014)). These arguments are not persuasive.
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.
§ 101.3 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. Alice Corp., 134
S. Ct. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)). 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. (citing Mayo, 566 U.S. at 78—79). 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. (alteration in original) (citing Mayo, 566
U.S. at 72-73).
At the outset, we note Appellant’s acknowledgement that the field of
the claimed subject matter pertains to an investment fund. App. Br. 10. We
thus echo the Examiner’s conclusion that the claims are directed to the
abstract idea of effecting changes to an investment fund. Ans. 8. We do not
agree with Appellant that the claimed investment fund is necessarily rooted
in the computer technology, and that the recited steps cannot be performed
through the use of human activities given enough time. App. Br. 10.
Although buying, selling, and transferring within an investment fund are
3 Alice Corp. Pty. Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
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tedious transactions, they are pre-Internet activities conventionally carried
out by humans using pen and paper in the course of allocating returns within
an investment fund, and other similar benefit activities in the business
environment. See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (claims directed to collection, manipulation, and
display of data); Intellectual Ventures ILLC v. Capital One Bank (USA),
792 F.3d 1363, 1370 (Fed. Cir. 2015) (customizing information and
presenting it to users based on particular characteristics); Content Extraction
and Transmission LLC v. Wells Fargo Bank, National Ass ’n, 776 F.3d 1343,
1347 (Fed. Cir. 2014) (“collecting data,. . . recognizing certain data within
the collected data set, and . . . storing that recognized data in a memory”).
That these claims are directed to an abstract idea is confirmed by the fact
that the claimed method of allocating investment returns is of the type that
could be performed manually. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (“[A] method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.”). Prior to the Internet, such activities became
computerized in database systems with the assistance of human
administrators to facilitate the management of such data. Although the
claimed subject matter provides an interface to facilitate the transfer of
investment returns, its functions do not go beyond those of a general purpose
computer for merely receiving, storing, transferring, assigning, and
displaying information. Further, we agree with the Examiner that the DDR
Holdings precedent is not applicable here because the claim subject matter
merely recites the performance of a business practice known from the pre-
Internet era, and it is not necessarily rooted in computer technology. Ans. 8.
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Application 12/851,021
Instead, the claimed subject matter pertains to the well-known practices of
employing a database system for allocating returns in an investment fund.
Hence, we agree with the Examiner that the elements of claim 1 do not
amount to “significantly more” than the abstract idea of using a computer to
facilitate return allocation in an investment fund or that they do not add any
meaningful limitations beyond generally linking the abstract idea to the
particular technological environment. Id. at 9.4 Accordingly, we affirm the
Examiner’s patent ineligible subject matter rejection of claim 1, as well as
claims 2, 3, and 5—12, which were rejected on the same basis.
DECISION
For the above reasons, we reverse the Examiner’s written description
rejection of claims 1—3 and 5—12. However, we affirm Examiner’s
obviousness rejection of claims 1—3 and 5—12. Likewise, we affirm the
Examiner’s patent ineligible subject matter rejection of claims 1—3 and 5—12.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See
37 C.F.R. § 41.50(a)(1).
4 Considerations for determining whether a claim with additional elements
amounts to “significantly more” than the judicial exception itself include
improvements to another technology or technical field {Alice Corp., 134
S. Ct. at 2359 (citing Diamond v. Diehr, 450 U.S. 175, 177—78 (1981)));
adding a specific limitation other than what is well-understood, routine, and
conventional in the field, or adding unconventional steps that confine the
claim to a particular useful application {Mayo, 566 U.S. at 82, 87); or other
meaningful limitations beyond generally linking the use of the judicial
exception to a particular technological environment {Alice Corp., 134 S. Ct.
at 2360). See, e.g., Intellectual Ventures I, 792 F.3d at 1370 (“[Mjerely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea.”).
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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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