Ex Parte Haynes et al

Patent Trial and Appeal Board

Aug 23, 2017

14052547 (P.T.A.B. Aug. 23, 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.
14/052,547 10/11/2013 James M. Haynes III 25TY-190875 6076
69849 7590 08/25/2017
SHEPPARD, MULLIN, RICHTER & HAMPTON LLP
379 Lytton Avenue
Palo Alto, CA 94301
EXAMINER
JEANTY, ROMAIN
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/25/2017 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):
svpatents @ sheppardmullin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES M. HAYNES III and
ANTHONY W. ULWICK
Appeal 2016-006575
Application 14/052,547
Technology Center 3600
Before JOSEPH L. DIXON, LINZY T. McCARTNEY, and
JOHN P. PINKERTON, Administrative Patent Judges.
McCARTNEY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—24. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-006575
Application 14/052,547
CLAIMED INVENTION
Claim 1 illustrates the claimed subject matter:
1. A system comprising:
one or more processors;
memory;
an outcome management engine coupled to the one or
more processors;
a securable market innovation engine coupled to the
outcome management engine and to the one or more processors;
a growth investment engine coupled to the securable
market innovation engine and to the one or more processors;
wherein, in operation,
the outcome management engine determines, using the
one or more processors, an outcome of a job;
the securable market innovation engine identifies, based
on the determined outcome and using the one or more processors,
a securable market for the job;
the securable market innovation engine determines, using
the one or more processors, expected market share for the target
solution in the securable market;
the growth investment engine provides, using the one or
more processors, a growth investment recommendation, the
grown investment recommendation based at least in part on the
expected market share, and the growth investment engine
incorporates the growth investment recommendation into a
growth investment data structure on the memory.
Appeal Brief 16, filed February 23, 2016. (“App. Br.”).1
1 Claim 1 appears to lack antecedent basis for the term “the target solution.”
App. Br. 16. If prosecution continues, the Examiner may consider whether
this seeming lack of antecedent basis renders claim 1 and its dependent
claims indefinite.
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Application 14/052,547
REJECTION
Claims 1—24 stand rejected under 35U.S.C. § 101 as directed to
nonstatutory subject matter. See Final Office Action 4—8, mailed September
25,2015 (“Final Act.”).
ANALYSIS
Appellants argue claims 1—24 together. See App. Br. 6—13; Reply
Brief 2—9, filed June 15, 2016 (“Reply Br.”). We select claim 1 as
representative of these claims and decide the appeal with respect to claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv) (“When multiple claims subject to the same
ground of rejection are argued as a group . . ., the Board may select a single
claim from the group . . . and may decide the appeal as to the ground of
rejection with respect to the group ... on the basis of the selected claim
alone.”).
Appellants argue the Examiner did not adequately explain why claim
1 is directed to patent-ineligible subject matter. See App. Br. 6—8.
According to Appellants, claim 1 is more akin to claims courts have
concluded are not directed to an abstract idea than claims courts have
concluded are. See App. Br. 9—11; Reply Br. 4—6. Appellants contend that
even if claim 1 were directed to an abstract idea, claim 1 includes elements
that transform the abstract idea into patent-eligible subject matter. See App.
Br. 11-13; Reply Br. 7-9.
We disagree. Section 101 of the Patent Act provides “[wjhoever
invents or discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
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Application 14/052,547
title.” 35U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: “[l]aws of nature, natural
phenomena, and abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The
Court has set forth a two-part inquiry to determine whether this exception
applies. First, we “determine whether the claims at issue are directed to one
of those patent-ineligible concepts.” Alice, 134 S. Ct. at 2355. Second, if
the claim is directed to one of those patent-ineligible concepts, 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.” Alice, 134 S. Ct. at
2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.
Ct. 1289, 1297 (2012)). Put differently, we must search the claims for an
“inventive concept,” that is, “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, 134 S. Ct. at 2355
(quoting Mayo, 132 S. Ct. at 1294).
We first consider whether the Examiner properly concluded the
claims are directed to an abstract idea. The Examiner concluded claim 1 is
directed to the abstract idea of “performing securable market analysis.” See
Answer 4, mailed April 27, 2016 (“Ans.”). The Examiner explained the
Federal Circuit has concluded similar claims are directed to an abstract idea
and claim 1 does “not include additional elements that are sufficient to
amount to significantly more than the judicial exception.” Ans. 8—9.
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Application 14/052,547
Although we characterize the recited abstract idea differently,
Appellants have not persuaded us the Examiner erroneously concluded claim
1 is directed to an abstract idea. To determine whether claim 1 is directed to
an abstract idea, we consider claim 1 “in [its] entirety to ascertain whether
[its] character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
See also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (“[W]e have described the first-stage inquiry as looking at the
‘focus’ of the claims, their “‘character as a whole.”’”). Considered as a
whole, claim 1 is on its face directed to the abstract idea of generating and
storing “growth investment recommendations.” Claim 1 recites various
computer components (“one or more processors,” “memory,” and various
“engines”) but is functional in nature. Claim 1 essentially recites (1)
determining a job outcome, (2) identifying a securable market based on the
job outcome, (3) determining an expected market share for the target
solution in the securable market, (4) providing a growth investment
recommendation based in part on the expected market share, and (5)
incorporating the recommendation into a data structure in memory. See
App. Br. 16. Claim 1 does not recite how these functions are performed,
beyond noting which engine performs each function and that certain
functions rely on previously determined data. See App. Br. 16. Nor does
claim 1 purport to improve how the recited computer components function.
Claim 1 simply recites that the engines perform the functions described
above using “one or more processors” and “memory.” App. Br. 16.
Courts have concluded similar claims are directed to an abstract idea.
See Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed.
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Application 14/052,547
Cir. 2016) (concluding a claim that recited nothing “directed to how to”
implement a recited idea “is drawn to the idea itself’); In re TLI Commc ’ns
LLCPatent Litig., 823 F.3d 607, 612 (Fed. Cir. 2016) (concluding claims
“not directed to a specific improvement in computer functionality” but
instead “directed to the use of conventional or generic technology in a
nascent but well-known environment” are directed to an abstract idea); Fed.
Home Loan Mortg. Corp. v. Graff/Ross Holdings, LLP, 604 F. App’x 930
(Fed. Cir. 2015) (summarily affirming district court decisions concluding
claims reciting generating “financial analysis output” are directed to an
abstract idea). And despite Appellants’ conclusory assertions to the
contrary, see App. Br. 9—11; Reply Br. 4—6, we see no meaningful difference
between claim 1 and claims directed to fundamental economic practices,2
methods a person can perform mentally or using pen and paper,3 and
methods of collecting, analyzing, and displaying or storing data that courts
have concluded are directed to abstract ideas.4
The similarities between claim 1 and the claims at issue in the cases
noted above are sufficient to establish claim 1 is directed to an abstract idea.
See Enflsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016)
(explaining that when determining whether claims are directed to an abstract
idea, “both this court and the Supreme Court have found it sufficient to
compare [the] claims at issue to those claims already found to be directed to
2 See, e.g., Bilski v. Kappos, 561 U.S. 593 (2010); Alice, 134 S. Ct. 2347.
3 See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed.
Cir. 2011).
4 See, e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank,
Nat 7 Ass ’n, 776 F.3d 1343 (Fed. Cir. 2014); Elec. Power Grp., 830 F.3d
1350; Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332
(Fed. Cir. 2017).
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Application 14/052,547
an abstract idea in previous cases”). Despite these similarities, Appellants
contend claim 1 is not directed to an abstract idea because, in Appellants’
view, claim 1 is similar to the claims the Federal Circuit concluded were not
directed to an abstract idea in Enfish and DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014). See Reply Br. 6-7. In Enfish, the
claims before the court focused on “an improvement to computer
functionality itself, not on economic or other tasks for which a computer is
used in its ordinary capacity.” Enfish, 822 F.3d at 1336. As discussed
above, claim 1 does not purport to improve the functionality of a computer;
rather, claim 1 recites using generic computer components to generate a
growth investment recommendation. See App. Br. 16. And in DDR
Holdings, the disputed claims solved an Internet-specific problem with an
Internet-based solution that was “necessarily rooted in computer technology
to overcome a problem specifically arising in computer network.” DDR
Holdings, LLCv. Hotels,com L.P., 773 F.3d 1245, 1257-58 (Fed. Cir. 2014).
That is not the case here. Although claim 1 recites various computer
components, the claimed subject matter concerns generating a growth
investment recommendation, not addressing a problem specifically arising in
a computer network. See App. Br. 16. See also Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015) (“The
patent claims here do not address problems unique to the Internet, so DDR
has no applicability.”).
Because we agree with the Examiner that claim 1 is directed to an
abstract idea, we next consider whether the Examiner correctly concluded
claim 1 lacks an “inventive concept.” The Examiner concluded the elements
recited in claim 1, considered individually and as a combination, do not
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Application 14/052,547
amount to “significantly more” than an abstract idea because the recited
elements are generic computer components that perform routine functions.
See Ans. 9—11.
Here, too, Appellants have not persuaded us the Examiner erred. At
this point in our analysis, we consider “the elements of [the] 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.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1297
(2012)). Appellants contend “the computer systems involved in the claim[]
requires at least a specialized device configured to analyze large volumes of
market data” and therefore “[t]he invocation of the computer in the present
case is not generic.” App. Br. 13. But Appellants’ written description
makes clear that the computer components recited in claim 1—“one or more
processors,” a “memory,” and various “engines”—are generic. The written
description discloses “[t]he processor can include ... a general-purpose
central processing unit (CPU) such as a microprocessor, or a special-purpose
processor, such as a microcontroller.” Specification |25, filed October 11,
2013 (“Spec.”). The written description also explains “[t]he memory can
include . . . random access memory (RAM)” and “[a]s used in this paper, an
engine includes a dedicated or shared processor and, typically, firmware or
software modules that are executed by the processor.” Spec. Tfl[ 25, 33.
Indeed, the written description discloses “[t]he algorithms and displays
presented herein are not inherently related to any particular computer or
other apparatus” and that “terms such as . . . ‘determining’ ... or the like,
refer to the action and processes of a computer system, or similar electronic
computing device, that manipulates and transforms data.” Spec. 31—32.
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See also Spec. 195 (“discussions utilizing terms such as . . . ‘determining,’
. . . ‘identifying,’ or the like refer to the action and processes of a computer
system, or similar electronic computing device, that manipulates and
transforms data”).
Appellants also contend claim 1 “include[s] features that are related to
using virtual tools” and therefore “amount[s] to significantly more than [an]
abstract idea itself because the virtual tools [used in the claims] can only be
achieved efficiently and optimally using computer technology.” App. Br.
12—13. Appellants argue “determining an outcome of a job is not what was
considered when investment decisions were made in the past” and therefore
claim 1 is “significantly more than the known techniques for making
investment decisions.” App. Br. 13.
We find these arguments unpersuasive. As an initial matter, claim 1
says nothing about “virtual tools.” See App. Br. 16. Assuming claim 1 did
recite “virtual tools” that “can only be achieved efficiently and optimally
using computer technology,” App. Br. 13, relying on “‘the improved speed
or efficiency inherent with applying the abstract idea on a computer’ does
not ‘provide a sufficient inventive concept.’” Intellectual Ventures ILLC v.
Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir.
2015)). And even if Appellants are correct that “determining an outcome of
a job is not what was considered when investment decisions were made in
the past,” App. Br. 13, the novelty of this step is insufficient to transform the
abstract idea recited in claim 1 into patent-eligible subject matter. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“That
some of the eleven steps were not previously employed in this art is not
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Application 14/052,547
enough—standing alone—to confer patent eligibility upon the claims at
issue.”); Symantec Corp., 838 F.3d at 1315 (“[T]he jury’s general finding
that Symantec did not prove . . . that three particular prior art references do
not disclose all the limitations of or render obvious the asserted claims does
not resolve the question of whether the claims embody an inventive concept
at the second step of Mayo/Alice.”)
At bottom, claim 1 essentially recites a number of generic computer
components that perform functions specified at high levels of generality.
This is not enough to transform an abstract idea into patent-eligible subject
matter. See, e.g., Alice, 134 S. Ct. at 2360 (explaining that claims that
“amount to ‘nothing significantly more’ than an instruction to apply the
abstract idea . . . using some unspecified, generic computer .... is not
‘enough ’ to transform an abstract idea into a patent-eligible invention”
(quoting Mayo, 132 S. Ct. at 1297, 1298)); Capital One Fin. Corp., 850 F.3d
at 1342 (“[T]he claim language here provides only a result-oriented solution,
with insufficient detail for how a computer accomplishes it. Our law
demands more.”). We see nothing in claim l’s elements, considered
individually or in an ordered combination, that transforms the claimed
abstract idea into patent-eligible subject matter.
DECISION
We affirm the rejection of claims 1—24 under 35 U.S.C. § 101.
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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