Ex Parte Kenigsberg

Patent Trial and Appeal Board

Sep 21, 2017

14067037 (P.T.A.B. Sep. 21, 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.
14/067,037 10/30/2013 Matthew Kenigsberg FID-069 8830
42532 7590 09/25/2017
PROSKAUER ROSE LLP
ONE INTERNATIONAL PLACE
BOSTON, MA 02110
EXAMINER
SHRESTHA, BIJENDRA K
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/25/2017 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):
DocketingPatentBoston@proskauer.com
oandrews@proskauer.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FMR LLC, and MATTHEW KENIGSBERG
Appeal 2016-0014941
Application 14/067,037
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
Opinion for the Board by CRAWFORD and HUTCHINGS,
Administrative Patent Judges
Opinion Dissenting by SILVERM AN, Administrative Patent Judge
CRA WFORD, Administrative Patent Judge
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 8, 9 and 13—19. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants identify FMR LLC as the real party in interest. App. Br. 2.
Appeal 2016-001494
Application 14/067,037
BACKGROUND
Appellants’ invention is directed to a method of visually assessing a
financial plan. Spec. 1.
Claim 8 is illustrative:
8. A computerized method for visually assessing a financial
plan, the method comprising:
calculating, by a computing device, a savings total based
on a selected savings rate during a selected savings period;
calculating, by the computing device, a spending total
based on a selected spending rate during a selected spending
period;
generating, by the computing device, on a display device
a graphical representation of a beam scale apparatus having a
balance beam member disposed on a fulcrum;
positioning, by the computing device, on the display
device a graphical representation of a first weight representing
the savings total, the first weight being positioned on a first side
of the balance beam member at a first distance from the
fulcrum, the first distance being directly related to a duration of
the selected savings period;
positioning, by the computing device, on the display
device a graphical representation of a second weight
representing the spending total, the second weight being
positioned on a second side of the balance beam member at a
second distance from the fulcrum, the second distance being
inversely related to a duration of the selected spending period;
and
setting, by the computing device, on the display device a
pitch of the balance beam member at a pitch angle on the
fulcrum, the pitch angle being a function of the savings total
accrued during the selected savings period relative to the
spending total consumed during the selected spending period,
wherein the pitch angle is:
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zero degrees when the savings total accrued during the
selected savings period is in balance with the spending total
consumed during the selected spending period;
biased toward the first weight when the savings total
accrued during the selected savings period exceeds the spending
total consumed during the selected spending period; and
biased toward the second weight when the spending total
consumed during the selected spending period exceeds the
savings total accrued during the selected savings period.
THE REJECTION
Claims 8, 9 and 13—19 are rejected under 35U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter.
ISSUES
Did the Examiner err in rejecting the claims as being directed to non-
statutory subject matter because the claims are not directed to an abstract
idea and even if directed to an abstract idea amount to significantly more
than any such abstract idea?
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants’
contentions in the Appeal Brief and the Reply Brief that the Examiner has
erred, as well as the Examiner’s response in the Answer to Appellants’
arguments in the Appeal Brief. We do not consider arguments that
Appellants could have made but chose not to make in the Briefs, and we
deem any such arguments waived. 37 C.F.R. § 41.37(c)(l)(iv). W7e do not
agree with the Appellants that the Examiner erred in holding that the claims
are directed to patent ineligible subject matter.
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The Appellants indicate that all of the claims stand or fall together.
Br. 8. We select claim 8 as a representative claim and will direct our
analysis to claim 8.
We initially note that an invention is patent-eligible if it claims a “new
and useful process, machine, manufacture, or composition of matter.” 35
U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CIS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014).
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. See Alice, 134 S. Ct.
at 2356 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in
petitioners’ application explain the basic concept of hedging, or protecting
against risk.”); Diamond v. Diehr, 450 U.S. 175, 184 (1981) (“Analyzing
respondents’ claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
rubber products falls within the § 101 categories of possibly patentable
subject matter.”); Parker v. Flook, 437 U.S. 584, 594—595 (1978)
(“Respondent’s application simply provides a new and presumably better
method for calculating alarm limit values.”); Gottschalk v. Benson, 409 U.S.
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63, 64 (1972) (“They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.”).
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Flook, 437 U.S. at 594—95; and basic tools of
scientific and technological work, Benson, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, “tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores,” and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is “directed to” a patent-ineligible abstract idea, we then
consider the elements of the claim—both individually and as an ordered
combination—to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an “inventive concept”—an element or
combination of elements sufficient to ensure that the claim amounts to
“significantly more” than the abstract idea itself. Id.
The Examiner holds that independent claim 8 is directed to the
abstract idea of visually accessing a financial plan and that the claim does no
more than implement the abstract idea. Ans. 2. The Examiner held that
claim 8 is directed to a mathematical formula, a method of organizing
human activities, and/or an idea of itself and, can be performed by a human
mind with pen and paper and is therefore were directed to an abstract idea.
Ans. 6.
In our view, the claims are directed to the abstract idea of visually
accessing and depicting a financial plan using a balance beam having a
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weight on one side representing savings totals, and a weight on the other
side representing the spending totals. The process of representing savings
versus spending using a balance beam can be done in the mind of a human
being along with pen and paper. Therefore, we agree with the Examiner that
claim 8 is directed to an abstract idea.
We are not persuaded of error on the part of the Examiner by
Appellants’ arguments that the Examiner provided no external authority to
support why visually assessing a financial plan is considered an abstract
idea. In this respect, the Appellants appear to argue that the holding by the
Examiner that the claims are directed to an abstract idea is conclusory and
not supported by evidence.
Consideration of evidence in making a determination under the first
step of the Alice framework has merit. See Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229 (Fed. Cir. 2016). But there is no requirement that examiners
must provide evidentiary support in every ease before a conclusion can be
made that a claim is directed to an abstract idea. See, e.g., para, IV “July
2015 Update: Subject Matter Eligibility” to 2014 Interim Guidance on
Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014)
(“The courts consider the determination of whether a claim is eligible (which
involves identifying whether an exception such as an abstract idea is being
claimed) to be a question of law. Accordingly, courts do not rely on
evidence that a claimed concept is a judicial exception, and in most cases
resolve the ultimate legal conclusion on eligibility without making any
factual findings.”) (emphasis added). Evidence may be helpful in certain
situations where, for instance, facts axe in dispute. But it is not always
necessary. It is not necessary in this case because it is clear that a person can
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calculate spending totals and savings totals in his or her mind and use a pen
and paper to draw a balance beam depicting the calculated spending totals
and savings totals on the balance beam in the manner claimed.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims are not directed to a mathematical
formula, a fundamental economic practice, a method of organizing human
activity, or an idea or algorithm itself. As we have determined that the
claims are directed to subject matter that can be done in the human mind
along with pen and paper, there is no need for us to reach the issues directed
to whether the claims are directed to a mathematical formula, a fundamental
economic practice, a method of organizing human activity, or an idea or an
algorithm itself.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claims implement a dynamically-updating
graphical user interface in a field that has only been around for a matter of
decades and thus are not directed to an abstract idea. This argument is not
persuasive because claim 8 does not recite dynamically updating a graphical
user interface. As such, this argument is not commensurate in scope with
the recitations in claim 8.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claimed invention recites patent-eligible
subject matter because it does not preempt the idea of visually assessing a
financial plan.
“While preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
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2015); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362—
1363 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701, 193 (2015) (“[Tjliat the
claims do not preempt all price optimization or may he limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). And, “[w]here a patent's claims are deemed only to disclose
met subject matter under the Mayo framework, as they are in
this case, preemption concerns are folly addressed and made moot.” Ariosa,
788 F.3d at 1379
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claimed invention effects an improvement to
another technology or technical field and thus amounts to significantly more
than an abstract idea. We agree with the Examiner that:
The only additional limitations in the claim relate to
computerization of calculating a savings total and a spending
total, generating a graphical representation of a beam scale
apparatus, positioning weight representing the savings total and
the spending total and setting device a pitch of the balance
beam member at a pitch angle on the fulcrum. The system for
visually assessing a financial plan would require a processor
and memory in order to perform basic computer functions of
accepting input such as positioning of savings and positioning
weights, retrieving information, manipulating that information
and displaying the results. These components are not explicitly
recited and therefore must be construed at the highest level of
generality. The interface is also recited at a high level of
generality with the only required function of displaying
graphical representation of beam scale apparatus, which is a
well-known routine function of interfaces. Further, the data
processing performs only its basic function of processing
information such as calculating savings total and spending total,
which is common to all processors. Thus, the recited generic
computer components perform no more than their basic
computer functions. These additional elements are well-
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understood, routine and conventional limitations that amount to
mere instructions to implement the abstract idea of setting of
pitch of the balance beam on a display device as a function
positioning of weights on either side of the beam relative to
selected spending and savings period on a computer.
Ans. 8—9.
The Appellants’ reliance on DDR Holdings LLC v. Hotels.com, 773
F.3d 1245, 1257 (Fed. Cir. 2014), Trading Technologies International, Inc.
v. CQG, Inc. Case No. 05-cv-4811, 2015 WL 774655 (N.D. 111. Feb. 24,
2015), and Research Corp. Tech. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir.
2010) is inapposite.
In DDR Holdings, applying the Alice Corp. framework, the Federal
Circuit held that a claimed solution that is necessarily rooted in computer
technology in order to overcome a problem arising in the realm of computer
networks is not directed to an abstract idea. The claims in DDR Holdings
were software patent claims which addressed the problem of retain i ng
website visitors. In applying Alice Corp., the Federal Circuit found that the
claims were not directed to an abstract idea because the claimed invention
was necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks. In other
words, the problem of a host website losing a visitor is a problem that
specifically “arose in the realm of computer networks.” Moreover, the
solution of solving the lost visitor problem was “necessarily rooted in
computer technology. The claimed invention in DDR Holdings did not
merely use the internet but rather changed how interactions on the internet
We do not agree with the Appellants that the appealed claims
overcome a problem arising in the technical field of financial plannim
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technology. The instant application is instead directed to the business
problem of educating clients of a financial professional so that the clients
understand key concepts of financial planning. Spec. 1. The instant
invention uses a balance beam to solve this business problem. In addition,
the solution to this business problem of calculating the savings total and the
spending total and displaying these calculated totals in the form of a balance
beam is done through the routine and conventional activity of the computing
device. Appellants do not disclose that the computing device is changed in
any way or that a special computing device is used to carry out the steps of
the invention. Rather, Appellants’ own disclosure at f 55 states that the
computing device can be “a computer, a computer with a browser device, a
telephone, an IP phone, a mobile device (e.g. cellular phone, personal digital
assistant (PDA) device, laptop computer, electronic mail device) and/or
other communication devices.” Clearly, any general purpose computer
could perform the steps recited in claim 8.
We do not agree with the Appellants that the claims are similar to
those found in Trading Technologies. The district court in Trading
Technologies held that the claims were directed to solving a problem that
existed with prior art GUIs, namely, that the best bid and best ask prices
would change based on updates received from the market. There was a risk
with the prior art GUIs that a trader would miss her intended price as a result
of prices changing from under her pointer at the time she clicked on the
price cell on the GUI. Trading Techs. Int'l, Inc. v. CQG, Inc., No. 05-cv-
4811, 2015 WL 774655 (N.D. 111. Feb. 24, 2015). The Federal Circuit,
affirming this holding of the di strict court, found “[t]he patents explain
arise when a trader attempts to enter an order at a particular
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price, but misses the price because the market moved before the order was
entered and executed. It also sometimes occurred that trades were executed
at different prices than intended, due to rapid market movement. This is the
problem to which these patents are directed.” Trading Techs., 675 Fed.
App’x 1001, 1002 (Fed Cir. 2017). To solve this problem, the invention
prices static in positions, and allows quantities at each price to
Trading Techs., 2015 WL 774655 at *4, Trading Techs., 675 Fed. App’x at
1003 (“the system pairs orders with the static display of prices and prevents
order entry at a changed price”).
Here, the Appellants argue that the claimed invention changes the way
the data is displayed. We do not agree. Although the claim is directed to the
display of a balance beam, Appellants present no evidence and do not
identify or otherwise highlight any particular technical improvement in
computerized displays themselves. Rather, the invention is directed to what
is displayed, not how the display is achieved, or to any technical
improvement to the display mechanism.
We do not agree with the Appellants that the subject matter of claim 8
presents functional and palpable applications in the field of computer
technology with specific applications or
marketplace similar to the claims in Research Corp. Tech. v. Microsoft
Corp., 627 F,3d 859 (Fed. Cir. 2010). The instant claims are distinguishable
from the claims at issue in that case. In Research Corporation
Technologies, the Court observed that the claimed methods (i.e., claims 1
and 2 of US 5,111,310 and claim 11 of US 5,341,228) at issue incorporated
algorithms and formulas that control the masks and half-toning. Research
Corporation Technologies, 627 F.3d at 869. “The invention presents
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functional and palpable applications in the field of computer technology.”
Id.
Here, the claimed subject matter is not in the field of computer
technology. Rather, it involves manipulating data and displaying data on a
balance beam.
We are not persuaded of error on the part of the Examiner by
Appellants’ argument that the claimed invention recites an inventive concept
because it adds specific limitations other than what is well-understood,
routine and conventional in the field and adds unconventional steps that
confine the claim to a particular useful application. To the extent Appellants
argue that the pending claims recite “significantly more” because the
claimed invention is “novel” and “non-obvious,” Appellants misapprehend
the controlling precedent. Although the second step in the Alice!Mayo
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 upon the
[ineligible concept] itself.’” Alice, 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.
We have considered the other arguments of Appellants but don’t find
them persuasive of error on the part of the Examiner.
In view of the foregoing, we will sustain the Examiner’s rejection of
claim 8 under 35 U.S.C. § 101. We will also sustain the rejection as it is
directed to the remaining claims because, as we stated above, these claims
stand or fall with claim 8.
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DECISION
We affirm the Examiner’s § 101 rejection.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1) (2009).
AFFIRMED
13
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW KENIGSBERG
Appeal 2016-001494
Application 14/067,037
Technology Center 3600
Before MURRIEL E. CRAWFORD, TARA L. HUTCHINGS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge, dissenting:
Because I would not sustain the Examiner’s rejection of claims 8, 9,
and 13—19 under 35 U.S.C. § 101, as patent-ineligible subject matter, I
respectfully dissent from the foregoing Decision of the panel majority.
I. Legal Framework
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Association for Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1293, 1301 (2012)). As the
Appeal 2016-001494
Application 14/067,037
Supreme Court explains, “we tread carefully in construing this exclusionary
principle lest it swallow all of patent law,” because “[a]t some level, ‘all
inventions . . . embody, use, reflect, rest upon, or apply laws of nature,
natural phenomena, or abstract ideas.’” Alice Corp. Pty. Ltd. v. CIS Bank
Int’l, 134 S. Ct. 2347, 2354 (2014), (citing Mayo, 132 S. Ct. at 1293-94).
Accordingly, ascertaining ineligible subject matter involves a two-step
framework for “distinguishing] between patents that claim the buildin[g]
block[s] of human ingenuity and those that integrate the building blocks into
something more, thereby transforming] them into a patent-eligible
invention.” Id. (citing Mayo, 132 S. Ct. at 1294, 1303) (internal quotation
marks and citation omitted). First, “we determine whether the claims at
issue are directed to one of those patent-ineligible concepts,” such as an
abstract idea. Id. at 2355 (citing Mayo, 132 S. Ct. at 1296—97). Second, we
determine whether the claims contain “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, 1297, 1298).
II. The Appealed Rejection
In applying the foregoing principles, the Final Office Action states
that the claims in the Appeal “do no more than implement the abstract idea
of visually assessing a financial plan.” Final Action 3. According to the
rejection, the claimed subject matter (e.g., calculating savings and spending
totals, generating a beam scale representation, positioning weights on either
side of balance beam member at distances proportional to the saving period
and inversely proportional to the spending period, and the setting the balance
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beam member pitch angle according to a function of the accrued savings
total relative to the spending total consumed) “is a mathematical
relationship/formula which have been found by the courts to be an abstract
idea.” Answer 5. The Answer states that the claimed steps “do not impose
any requirements that would make the invention impossible to carry out
manually by human with a pen and paper” and also considers the claims “to
be a method of organizing human activities and/or an idea ‘of itself.’” Id.
at 5—6.
Further, according to the rejection, the claimed features “are the basic
functions of a computer and all these functions are ‘well understood, routine,
conventional activities’ previously known to the industry” and “[t]he claims
do not purport to improve any another technology or technical field, or to
improve the functioning of a computer itself and do not move beyond a
general link of the use of an abstract idea to a particular technological
environment.” Final Action 3; see also Answer 7—9. The Answer adds that
the recited “function of displaying [a] graphical representation of beam scale
apparatus” is “a well-known routine function of interfaces.” Answer 8.
III. Discussion
The Federal Circuit recognizes that “[a]n abstract idea can generally
be described at different levels of abstraction.” Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016). This formulation is likely
indebted to the kindred field of copyright law, which has long observed the
malleability of such characterizations — and its effects — in the analogous
practice of ascertaining the proper subject of copyright. In contemplating
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whether copyright eligibility might attach to “an abstract of the whole” work
under consideration, Judge Learned Hand, for example, observed:
Upon any work, and especially upon a play, a great number of
patterns of increasing generality will fit equally well, as more
and more of the incident is left out. The last may perhaps be no
more than the most general statement of what the play is about,
and at times might consist only of its title; but there is a point in
this series of abstractions where they are no longer protected,
since otherwise the playwright could prevent the use of his
“ideas,” to which, apart from their expression, his property is
never extended. Nobody has ever been able to fix that
boundary, and nobody ever can. . . .
. . . If Twelfth Night were copyrighted, it is quite possible
that a second comer might so closely imitate Sir Toby Belch or
Malvolio as to infringe, but it would not be enough that for one
of his characters he cast a riotous knight who kept wassail to
the discomfort of the household, or a vain and foppish steward
who became amorous of his mistress. These would be no more
than Shakespeare’s “ideas” in the play, as little capable of
monopoly as Einstein’s Doctrine of Relativity, or Darwin’s
theory of the Origin of Species, ft follows that the less
developed the characters, the less they can be copyrighted; that
is the penalty an author must bear for marking them too
indistinctly.
Nichols v. Universal Pictures Corp., 45 F.2d 119, 121 (2d Cir. 1930)
(citations omitted).
Likewise, the level of abstraction selected in relation to a patent claim
— so as to circumscribe a purported abstract idea — is not inconsequential.
If narrowly drawn, the characterization might cease to describe an ineligible
abstract idea, which must be a “basic tool[ ] of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972). On the other hand, if
cast broadly, more details of the claimed limitations might arguably satisfy
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the second step of the Alice analysis, as claimed features that amount to
significantly more than the abstract idea itself. See Alice, 134 S. Ct. at 2355.
In the instant Appeal, the Examiner’s characterization of the proposed
abstract idea suffers from the latter condition. Referring to “the abstract idea
of visually assessing a financial plan’’’ (Final Action 3) leaves the particular,
detailed claim limitations of the represented weights, balance beam, and the
operation thereof, available for consideration under the second Alice step.
Indeed, this combination of claimed features 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 (citing Mayo, 132
S. Ct. at 1294). Further, the balance-beam representation operates in an
unconventional manner and achieves a qualitatively different end, as a
representational and explanatory tool, than conventionally employed generic
computer elements. See Appeal Br. 16—19. This is further explained in the
Declaration of Matthew Kenigsberg:
5. While many financial planning systems . . . have
been used for years as a way to develop retirement plans based
upon a set of inputs, none utilize a beam scale — or any other
physical object or representation thereof designed to act as a
balance — as a metaphor to convey the relationship between:
(1) the amount and timing of one’s retirement savings, (2) the
amount and timing of one’s retirement spending, and (3) the
likelihood that a retirement plan will be successful. Without the
beam scale metaphor, the mathematical relationship between
those three key elements is not apparent to the user and/or
financial planning customer. Time value of money and
statistical probabilities are concepts that most financial planning
customers struggle to grasp, but by projecting them onto a
representation of a physical object whose properties are
apparent to most adults, the Wealth Scale effectively translates
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recondite mathematical relationships into a language that
financial planning recipients can understand.
Appeal Br., Evid. App. A | 5 (Declaration submitted during prosecution and
also provided with the Appeal Brief).
Although the Answer states that “displaying [a] graphical
representation of beam scale apparatus” is “a well-known routine function of
interfaces” (Answer 8), this position is not supported by the record on
Appeal — and, at least, does not address the particular context of the
combined elements of, e.g., independent claim 8. Moreover, even if
individual claim elements themselves are conventional or generic, “an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces.” BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Were it otherwise, no subject matter would be patent-eligible. See Mayo,
132 S. Ct. at 1293 (“[A]ll inventions at some level embody, use, reflect, rest
upon, or apply laws of nature, natural phenomena, or abstract ideas.”)
The Federal Circuit has admonished that “merely selecting
information, by content or source, for collection, analysis, and display,” or
selecting a particular “amount of information,” might not give rise to
something significantly more than an identified abstract idea itself, under
Alice's second step. Electric Power Group, LLC v. Alstom SA, 830 F.3d
1350, 1355 (Fed. Cir. 2016). Yet, in their use of the unconventional
balance-beam display interface, the claims in the present Appeal
meaningfully transform the character of the information being presented.2
2 Although the Appellant characterizes the claims, inter alia, as requiring a
“dynamically-updated” interface (see Appeal Br. 17), the present opinion
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Indeed, Electric Power points out that “identifying a particular tool for
presentation” of collected and analyzed information might be sufficient to
render a claim patent-eligible, and that DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), involved claims providing “an
arguably inventive device or technique for displaying information” under
Alice’s second step. See Electric Power, 830 F.3d at 1354, 1355.
Accordingly, a particular technique for the pictorial representation of
information can, as in claim 8 of the Appeal, communicate what might
otherwise remain hidden in the data themselves. See Thomas L. Hankins, A
“Large and Graceful Sinuosity John Herschel ’s Graphical Method, 97
Isis 605, 633 (2006).
Whereas the Examiner characterizes the proposed abstract idea of the
appealed claims more broadly than can be sustained, in this instance, under
the second Alice step, the foregoing Decision of this panel appears to draw
the proposed abstract idea too narrowly, stating: “the claims are directed to
the abstract idea of visually accessing and depicting a financial plan using a
balance beam having a weight on one side representing savings totals, and a
weight on the other side representing the spending totals.” Decision, supra,
slip. op. at 5—6.
Like the “series of abstractions” that Judge Hand contemplated in
Nichols, 45 F.2d at 121, there must be a point at which the characterization
of potential claim scope becomes sufficiently narrow that it would no longer
fairly comprise a “building block” of human ingenuity, see Alice, 134 S. Ct.
at 2354, 2356 (citations omitted), or a “basic tool[ ] of scientific and
does not rely upon, and need not address, this construction of the claim
language.
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technological work,” see Benson, 409 U.S. at 67, and, hence, would be
eligible subject matter for patenting. The proposed characterization of
appealed claim 8, in the Decision, seems to have reached such a “level.”
The identification of potential abstract ideas, in patent claims, has
proven particularly challenging. The Federal Circuit has explained that “a
search for a single test or definition in the decided cases concerning § 101
from this court, and indeed from the Supreme Court, reveals that at present
there is no such single, succinct, usable definition or test” for “what an
‘abstract idea’ encompasses.” Amdocs (Israel) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288, 1294 (Fed. Cir. 2016). “Instead of a definition, then, the
decisional mechanism courts now apply is to examine earlier cases in which
a similar or parallel descriptive nature can be seen — what prior cases were
about, and which way they were decided.” Id.
Following this approach, the majority Decision adopts one of the
provisional tests described in case law, i.e., whether the claimed subject
matter could be performed by a human using a pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011) (“All of claim 3’s method steps can be performed in the human mind,
or by a human using a pen and paper.”) Specifically, the majority Decision
states: “[A] person can calculate spending totals and savings totals in his or
her mind and use a pen and paper to draw a balance beam depicting the
calculated spending totals and savings totals on the balance beam in the
manner claimed.” Decision, supra, slip. op. at 6—7. Yet, the contours of the
pen-and-paper analogy remain uncertain — including, for example, whether
the analogy embraces unique forms of visual output, or whether the
hypothetical pen and paper would serve only as an aid to human memory —
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such that this test does not apply clearly to the claims in the present Appeal.
CyberSource, for example, focuses on the human mental activity — not any
representational features — as giving rise to ineligibility:
Methods which can be performed entirely in the human mind
are unpatentable not because there is anything wrong with
claiming mental method steps as part of a process containing
non-mental steps, but rather because computational methods
which can be performed entirely in the human mind are the
types of methods that embody the “basic tools of scientific and
technological work” that are free to all men and reserved
exclusively to none.
CyberSource, 654 F.3d at 1373 (citing Benson, 409 U.S. at 67) (footnote
omitted).
By contrast — and leaving aside whether CyberSource's conclusion
follows from its premises — patent eligibility, for the claims in this Appeal,
turns upon the nature of the visual output provided through the balance-
beam representation. Other unarticulated parameters of the pen-and-paper
analogy, although not needed to resolve the present Appeal, concern whether
it may envelop any level of artistic precision and any inscribed content.
After all, all patent rights are represented and embodied, ultimately, in a
written document that is the product of human thought. Although perhaps
impossible to fix with certainty, the line marking the boundary of the patent-
eligibility “exclusionary principle” must be drawn carefully, “lest it swallow
all of patent law.” Alice, 134 S. Ct. at 2354 (citing Mayo, 132 S. Ct. at
1293-94).
In view of the foregoing, I would not sustain the rejection of claim 8
— or of the other appealed claims 9 and 13—19 — under 35 U.S.C. § 101, as
ineligible subject matter.
9