14017679 (P.T.A.B. Jul. 30, 2018)

Ex Parte Hankey et al

Patent Trial and Appeal BoardJul 30, 2018

14017679 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/017,679 09/04/2013 57580 7590 08/01/2018 Convergent Law Group LLP 601 Sixteenth Street, Suite C-391 Golden, CO 80401 FIRST NAMED INVENTOR Don Rufus Hankey 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. NOW002CON2 4381 EXAMINER WARDEN, MICHAEL J ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 08/01/2018 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): patents@convergentlaw.com PTOL-90A (Rev. 04/07) UNITED ST ATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DON RUFUS HANKEY and AMANP AL SINGH Appeal2017-004533 Application 14/017,679 Technology Center 3600 Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN, Administrative Patent Judges. KRIVAK, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. Â§ 134(a) from a Final Rejection of claim 1, which is the only claim pending in the application. We have jurisdiction under35 U.S.C. Â§ 6(b). We affrrm. 1 The Appeal Brief identifies Now com Corporation as the real party in interest (Br. 2). Appeal 2017-004533 Application 14/017,679 STATEMENT OF THE CASE Appellants' invention is directed to a method for "optimization of a fmancial transaction" by "determining a structure for fmancing a consumer product [ such as a car] through a computer implemented process" that "maximize[ s] the dealer profit for a given vehicle" without necessarily "having the highest possible vehicle sale price" (Spec. ,r 60; Title ( capitalization altered); Abstract). Independent claim 1, reproduced below, illustrates the subject matter on appeal. 1. A method of determining a structure for fmancing a consumer product through a computer implemented process compnsmg: obtaining, at a computer, a monthly payment value and a down payment value for a potential fmancing of the consumer product; identifying, by the computer, a plurality of potential fmancial structures for the consumer products based upon the monthly payment value and the down payment value, and by varying other fmancing parameters comprising a term and a product sales price; and determining, by the computer, from the plurality of potential fmancial structures, a fmancial structure that provides a greatest profit for a seller of one of the consumer products, wherein the determined fmancial structure comprises a product sales price that is less than a maximum product sales price among the plurality of potential fmancial structures. REFERENCES and REJECTIONS TheExaminerrejectedclaim 1 under35U.S.C. Â§ 112(a)or 35 U.S.C. Â§ 112 (pre-AIA), frrst paragraph, as failing to comply with the written description requirement. 2 Appeal 2017-004533 Application 14/017,679 The Examiner rejected claim 1 under 35 U.S. C. Â§ 112(b) or 35 U.S.C. Â§ 112 (pre-AIA), second paragraph as being indefmite. The Examiner rejected claim 1 under35 U.S.C. Â§ 101 as directed to non-statutory subject matter. The Examiner rejected claim 1 under35 U.S.C. Â§ 103(a)basedupon the teachings of Stoyanov (US 2002/0152157 Al; published Oct. 17, 2002) and Pretell (US 2005/0004860 Al; published Jan. 6, 2005). 2 ANALYSIS 35 U.S. C. Â§ 112, First Paragraph Rejection The Examiner asserts there is no support in the Specification for the limitation "identifying, by the computer, a plurality of potential fmancial structures" recited in claim 1 (Final Act. 5). Particularly, the Examiner fmds the Specification's description of "calculating various terms, generating fmancial structures, and comparing dealer grosses" does not support the claimed "identifying [which] involves recognizing or distinguishing from existing fmancial structures" (Ans. 3--4; Final Act. 5). We do not agree with the Examiner. Rather, we agree with Appellants that the Specification supports the claimed "identifying, by the computer, a plurality of potential fmancial structures for the consumer 2 The Examiner's summary of this rejection refers to AIA Â§ 103 (see Final Act. 9), however, the pre-America Invents Act ("pre-AIA") Â§ 103(a) is applicable to the present application, which is a continuation of US application 13/278, 178 filed October 21, 2011 (see Decision on Petition, mailed Feb. 9, 2018, accepting Appellants' unintentionally delayed domestic priority claim). We fmd the Examiner's reference to AIA Â§ 103 is harmless error, as we are aware of no prejudice to Appellants or the Examiner resulting from this error. 3 Appeal 2017-004533 Application 14/017,679 products based upon the monthly payment value and the down payment value, and by varying other fmancing parameters comprising a term and a product sales price" (Br. 3). For example, Figure 7 and paragraphs 50----61 of the Specification-that Appellants cite in support of the contested limitation----describe iteratively identifying potential fmancial structures by "values for the loan-term T, vehicle sale price (P), and dealer profit [that] are stored" for each structure, so that identified fmancial structures can be compared to determine an "optimized solution for the dealer and the customer" including "[loan] terms that maximize the dealer profit for a given vehicle" (see Spec. ,r,r 58---60, Fig. 7; Br. 3). We concur with Appellants that the Specification provides sufficient evidence to show possession of the claimed invention, and do not sustain the Examiner's written description rejection of claim 1 under 35 U.S.C. Â§ 112, frrst paragraph. 35 USCÂ§ 112, Second Paragraph Rejection The Examiner fmds claim 1 is indefmite because (i) the meaning of "term" (in "identifying, by the computer, a plurality of potential fmancial structures ... by varying other fmancing parameters comprising a term and a product sales price") is unclear (Ans. 4). Particularly, the Examiner fmds "term" in Appellants' Specification "could mean the length of [a] loan or a general fmancing parameter" (Ans. 4 ( citing Spec. ,r,r 18 ("terms of a deal structure"), 67); Final Act. 6). The Examiner also fmds claim 1 is indefmite because (ii) "the claim determines a fmancial structure but does nothing with 4 Appeal 2017-004533 Application 14/017,679 this determined financial structure .... [which] merely sits at a processor in ... the claim" (Ans. 5). 3 Appellants contend the meaning of the claimed "term" is clear, as "the word 'term' is widely known in the financing industry as the length of a loan" (Br. 4). We agree with Appellants. It is clear from Appellants' Specification that the claim is referring to "[ varying] fmancing parameters comprising a term." For example, the Specification describes identifying potential loan structures with varying "loan-term length[ s]," that is, by "varying the length of the term (T) (i.e. the number of payments required before the loan is paid off)" (see Spec. ,r,r 39, 50, 67). It is clear from Appellants' claim 1 that "varying other fmancing parameters [ of potential fmancial structures] comprising a term and a product sales price" refers to varying loan length and product price. We also do not agree with the Examiner that the claimed method is indefmite because it "does nothing with th[ e] determined fmancial structure . . . . [which] merely sits at a processor" (Ans. 5). Rather, we agree Appellants claim 1 determines a fmancial structure for fmancing a product while providing a greatest profit to the product's seller and is not ambiguous because the term "fmancing [the] product" is not actually claimed (see Final Act. 6; Br. 4). Accordingly, we do not sustain the Examiner's rejection of claim 1 under 35 U.S.C. Â§ 112, second paragraph. 3 A third reason for indefmiteness ("what happens if the determined fmancial structure ( which provides the greatest profit) comprises a product sales price that is the maximum sales price," see Final Act. 6) has been withdrawn by the Examiner in the Answer (Ans. 5). 5 Appeal 2017-004533 Application 14/017,679 35 USCÂ§ 101 Rejection Under 35 U.S. C. Â§ 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable" (Alice Corp. Pty. Ltd. v. CLSBankint'l, 134 S. Ct. 2347,2354(2014)(quotingAss'nfor Molecular Pathologyv. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) ). 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, 82-84 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts" (Alice, 134 S. Ct. at 2355). The frrst step in that analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts," such as an abstract idea (id.). 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 claims focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that is the abstract idea and merely invoke generic processes and machinery (see Enfish, LLCv. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). If the claims are not directed to 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 the additional elements 'transform the nature of the claim' into a 6 Appeal 2017-004533 Application 14/017,679 patent-eligible application" (Alice, 134 S. Ct. at 2355 ( quoting Mayo, 566 U.S. at 79, 78)). Alice/Mayo-----Step 1 (Abstract Idea) Turning to the first part of the Ali eel Mayo analysis, the Examiner determines claim 1 is directed to "the abstract idea of determining a fmancial structure for fmancing a product which is a fundamental economic practice" (Final Act. 7; Ans. 6). Appellants contend the Examiner erred in rejecting claim 1 because the claim is not directed to an abstract idea, and the Examiner "ignore[ d] the specific claim limitations" and "failed to consider any of the specific steps delineated in the claim beyond the preamble" (Br. 6). Appellants also argue "there is no evidence on the record" and "[ n Jo evidentiary support ... for the [Examiner's] conclusory statement ... that the claimed process is an abstract idea" of"determining a fmancial structure" (Br. 6 (citing PNC Bankv. SecureAxcess, LLC, CBM2012-00100 slip op. at 21 (PT AB Sept. 9, 2014))). We are not persuaded by Appellants' arguments. First, we note, PNC Bank is merely a non-binding decision of this Board. The Examiner's analysis of the entire claim fmds, and we agree, the claim is abstract because it is "directed towards providing a greatest profit by selecting a fmancing structure" for fmancing a product-an abstract idea similar to transactional practices providing fmancial services while reducing risk (Final Act. 3; see Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016) (holding that claims directed to computer- implemented "credit grading" to "facilitate anonymous loan shopping" by potential borrowers are patent-ineligible); Dealertrack, Inc. v. Huber, 674 7 Appeal 2017-004533 Application 14/017,679 F.3d 1315, 1333-34 (Fed. Cir. 2012) (holding that a "computer-aided" method for "processing information through a clearinghouse" for car loan applications is patent ineligible); LendingTree,LLCv. Zillow, Inc.,656F. Appx. 991,997 (Fed Cir. 2016) (holding ineligible claims to a computerized method of speeding up a loan-application process over the Internet); Alice, 134 S. Ct. at 2356-57 (intermediated settlement of traded or exchanged fmancial obligations to mitigate the risk that one party will not perform); and Bilski v. Kappas, 561 U.S. 593,599,611 (2010) (risk hedging)). Additionally, we agree with the Examiner that the steps recited in claim 1 "can be performed without a computer (albeit slowly)" by a person using a pen and paper (Final Act. 4; "[ A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible underÂ§ 101" ( CyberSource Corp. v. Retail Decisions, Inc., 654 F. 3d 1366, 1373 (Fed. Cir. 2011))). That is, mental processes can be unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper (see CyberSource, 654 F.3d at 1375 ("purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalkv. Benson.")). Accordingly, we agree with the Examiner claim 1 is directed to an abstract idea. Alice/Mayo-----Step 2 (Inventive Conceplj Appellants also allege the Examiner did not provide any evidence "thatthe claim's additional elements as a whole fail to amountto 'significantly more' than the judicial exception itself' (Br. 5---6). Appellants' arguments are not persuasive. As the Examiner shows, the claim merely recites a generic "computer" performing conventional 8 Appeal 2017-004533 Application 14/017,679 computing functions to implement the abstract idea on the computer (Final Act. 4, 7; Ans. 6; see claim 1 ). Appellants have not demonstrated their claim provides a technical improvement to computer operation or "a technical solution to a technical problem" (Final Act. 4) (see DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014); Enfish, 822 F.3dat 1336; and Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300, 1302(Fed. Cir. 2016)). "[T]heuseofgeneric computer elements like a microprocessor" to perform conventional computer functions "do not alone transform an otherwise abstract idea into patent-eligible subject matter" (Fair Warning IP, LLCv. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (citing DDRHoldings, 773 F.3dat 1256)). Accordingly, claim 1, when considered "both individually and 'as an ordered combination,'" amounts to nothing more than an attempt to patent the abstract idea embodied in the steps of the claim (see Alice, 134 S. Ct. at 2355 (quoting Mayo, 566U.S. at 78)). Because we agree with the Examiner's analysis and find Appellants' arguments insufficient to show error, we sustain the rejection of claim 1 under35 U.S.C. Â§ 101. 35 USCÂ§ 103(a)Rejection Appellants contend Stoyanov teaches away from determining a fmancial structure "that provides a greatest profit for a seller of one of the consumer products ... [ and] comprises a product sales price that is less than a maximum product sales price among the plurality of potential fmancial structures," as claimed (Br. 8-9). Particularly, Appellants argue "Stoyanov only disclose[s] maximizing a dealer's profit by increasing the sales price of a consumer product, such as sales price of a vehicle or sales price of a 9 Appeal 2017-004533 Application 14/017,679 warranty associated with the vehicle," which "goes against the claimed feature" (Br. 9 ( citing Stoyanov ,r 44) ). Appellants further argue the Examiner's combination of Stoyanov and Pretell lacks articulated reasoning and "lacks any factual findings upon which an obviousness rejection ... might be sustained" (Br. 8). We do not agree. We agree with and adopt the Examiner's fmdings as our own (Ans. 7- 9). Particularly, we agree with the Examiner that Stoyanov discloses a fmancial structure (e.g., an auto loan) maximizing a dealer's profit "by increasing something other than the price of the product [vehicle] itself," for example by "making upward adjustments in the sale price of other profit sources, such as warranty" (Ans. 9 ( citing Stoyanov ,r,r 44, 52, 56- 59)). Thus, we agree with the Examiner that Stoyanov does not teach away from claim 1 's "determining" step; rather, Stoyanov teaches determining a fmancial structure that "provides a greatest profit for a seller" with "a product sales price that is less than a maximum product sales price among the plurality of potential fmancial structures" as claimed. "[M]ere disclosure of alternative designs does not teach away." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004). Appellants' argument that the claimed "maximum product sales price" encompasses Stoyanov's increased "sales price of a warranty associated with the vehicle [product]" is not commensurate with the scope of claim 1 (Br. 9 ( emphasis added)). Claim 1 does not require the "product sales price" ( of a "consumer product") to include prices of other products (e.g., warranties) associated with the consumer product (Ans. 9). Rather, "[t]he sales price of a warranty associated with the vehicle is not the same as the sales price of the vehicle [product] itself," and "Stoyanov teaches that the 10 Appeal 2017-004533 Application 14/017,679 maximum profit can occur by increasing something [ warranty price] other than the price of the product itself' (Ans. 9 ( emphasis added)). As to Appellants' argument that the Examiner's combination of references lacks factual fmdings and articulated reasoning (Br. 8), the Examiner has provided articulated reasoning with a rational underpinning for combining the references supported by evidence, which Appellants have not addressed (see Final Act. 9-17; Ans. 8). Thus, Appellants have failed to clearly distinguish the claimed invention over the prior art relied on by the Examiner. We, therefore, sustain the Examiner'sÂ§ 103(a) rejection of independent claim 1. DECISION TheExaminer'sdecisionrejectingclaim 1 under35U.S.C. Â§ 112, frrst paragraph is reversed. TheExaminer'sdecisionrejectingclaim 1 under35U.S.C. Â§ 112, second paragraph is reversed. TheExaminer'sdecisionrejectingclaim 1 under35U.S.C. Â§ 101 is affirmed. The Examiner's decision rejecting claim 1 under 35 U.S.C. Â§ 103(a) is affrrmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C. F. R. Â§ 1. 13 6( a)( 1 )(iv). AFFIRMED 11