Ex Parte Khan K et al

Patent Trial and Appeal Board

Dec 5, 2017

13575126 (P.T.A.B. Dec. 5, 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.
13/575,126 07/25/2012 Arif Khan K 2008.0033US1 1227
68242 7590 12/07/2017
FIALA & WEAVER P.L.L.C.
C/O CPA GLOBAL
900 Second Avenue South
Suite 600
MINNEAPOLIS, MN 55402
EXAMINER
WEISENFELD, ARYAN E
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
12/07/2017 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):
DOCKETING@CPAGLOBAL.COM
docketing@fwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ARIF KHAN K
and RAHUL JINDAL
Appeal 2016-0039171
Application 13/575,1262
Technology Center 3600
Before ANTON W. FETTING, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1—29. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Our Decision references Appellants’ Appeal Brief (“Br.,” filed
August 18, 2015), the Examiner’s Answer (“Ans.,” mailed November 17,
2015), and Final Office Action (“Final Act.,” mailed December 18, 2014).
2 Appellants identify CPA Software Limited as the real party in interest (Br.
1).
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Application 13/575,126
CLAIMED INVENTION
Appellants’ claims relate “generally to analysis of intellectual
property, and in some embodiments to computer systems and processes for
scoring and/or classifying intangible assets (e.g., patents and/or patent
applications) based on certain criteria” (Spec. 12).
Claims 1,16, 22, 25, and 27—29 are the independent claims on appeal.
Claim 1 reproduced below, with added bracketed notations, is illustrative of
the subject matter on appeal:
1. A method for classifying intangible assets, the
method comprising:
[a] receiving a determination of an objective of
classification for a target set of intangible assets;
[b] constructing, via a processor, a discriminant analysis
(DA) model using a test set of intangible assets, wherein the DA
model comprises a discriminant function to classify the test set
of intangible assets into at least two groups based on a set of
attributes associated with an intangible asset within the test set
of intangible assets in response to the objective of classification;
and
[c] classifying the target set of intangible assets based on
the DA model into at least two groups.
REJECTIONS
Claims 1—29 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
Claims 1—8, 15—18, and 22—29 are rejected under 35 U.S.C. § 102(b)
as anticipated by Martin (US 6,330,547 Bl, iss. Dec. 11, 2001).3
3 The Examiner indicates that claim 14 is rejected under this rejection (see
Final Act. 6), however, claim 14 is addressed only under the obviousness
rejection (see id. at 24).
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Claims 9—14 and 19—21 are rejected under 35 U.S.C. § 103(a) as
obvious over Martin and Weng (US 7,996,155 B2, iss. Aug. 9, 2011).
ANALYSIS
Non-statutory subject matter
Appellants argue claims 1—29 as a group (see Br. 7—10). We select
independent claim 1 as representative. Claims 2—29 stand or fall with
independent claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
Under 35 U.S.C. § 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. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)). The Court has, thus, made clear that “[phenomena of nature,
though just discovered, mental processes, and abstract intellectual concepts
are not patentable, as they are the basic tools of scientific and technological
work.” Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (emphasis added).
Following the Supreme Court, the Federal Circuit has similarly held
that mental processes are not patent-eligible subject matter. Therefore, the
court has held that 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 “methods which can be performed entirely in the human mind
are the types of methods that embody the ‘basic tools of scientific and
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technological work’ that are free to all men and reserved exclusively to
none.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373
(Fed. Cir. 2011) (citation omitted).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of those concepts.” Alice Corp., 134 S. Ct. at 2355.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If so, the second
step is to consider the elements of the claims “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, 132 S. Ct. at 1298). 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, 132 S. Ct. at 1294). 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, 132 S. Ct. at 1293. 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.
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Here, in rejecting claims 1—29 under 35 U.S.C. § 101, the Examiner
finds “[t]he claims are directed towards the abstract idea of classifying
intangible assets” (Final Act. 5). The Examiner further finds
[t]he additional elements or combination of elements in the
claims other than the abstract idea per se amounts to no more
than: (i) mere instructions to implement the idea on a computer,
and/or (ii) recitation of generic computer structure that serves to
perform generic computer functions that are well understood,
routine, and conventional activities previously known to the asset
classification industry.
(Id.).
In response, Appellants argue the pending claims are not directed to
an abstract idea because none of the independent claims is directed towards
fundamental economic practices, methods of organizing human activities,
ideas of themselves, and mathematical relationships/formulae (see Br. 10-
11). We cannot agree.
In making this determination, we note that the Specification discloses
that the present “application relates generally to analysis of intellectual
property, and in some embodiments to computer systems and processes for
scoring and/or classifying intangible assets (e.g., patents and/or patent
applications) based on certain criteria” (Spec. 12). The Specification
observes that “patents have varying quality and value” (id. 1 6) and it may
be useful to have “a systematic and objective way of assessing the quality,
value, or strength of a patent” (id. 1 8). The Specification then identifies
various method “for classifying intangible assets” (id. 19) and “for
constructing a Discriminant Analysis (DA) model for classifying intangible
assets” (id. 110).
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We also note that exemplary independent claim 1 is directed generally
to “[a] method for classifying intangible assets” including steps for
“receiving a determination of an objective of classification for a target set of
intangible assets,” “constructing ... a discriminant analysis (DA) model
using a test set of intangible assets ... to classify the test set of intangible
assets into at least two groups,” and “classifying the target set of intangible
assets based on the DA model into at least two groups.” (Br. 23 (Claims
App.)). Thus, we find the steps recited in independent claim 1 involve
nothing more than receiving, analyzing, and classifying data, all steps that
can be performed manually (see Fig. 1). See also CyberSource, 654 F.3d at
1373 (A method that can be performed by human thought alone, or by a
human using pen and paper, is merely an abstract idea and is not patent-
eligible under § 101).
In this regard, the claims are similar to the claims that our reviewing
courts have found patent ineligible in Electric Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016) (collecting information and
“analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category.”), Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1333 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 2510,
195 L. Ed. 2d 841 (2016) (using organizational and product group
hierarchies to determine a price), and Parker v. Flook, 437 U.S. 584 (1978)
(mathematical algorithm used for adjusting an alarm limit). Here,
independent claim 1 involves nothing more than receiving an objective of
classification from a user for an asset, analyzing known data, and classifying
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the asset accordingly, without any particular inventive technology — an
abstract idea. See Elec. Power Grp., 830 F.3d at 1354.
Appellants argue that the claims amount to significantly more than the
abstract idea (see Br. 11—13). More particularly, Appellants argue that the
independent claims
recite at least “constructing a discriminant analysis (DA)
model. . . the DA model comprises at least one discriminant
function operable to classify the one or more test sets of
intangible assets into at least two groups based on a set of
attributes” that addresses and solves technological problems, and
which improve the functioning of a computer resource allocation
model or device itself, or affect an improvement in another
technology or technical field (e.g., classifying intangible assets
into two or more groups based on an objective of classification).
(Br. 13).
However, the only claim element beyond the abstract idea is directed
to a generic processor (see, e.g., Spec. 1 83), on which the “method for
classifying intangible assets” is performed. And, considered as an ordered
combination, we are unclear as to how this processor adds anything that is
not already present when the steps of the method are considered separately.
Furthermore, Appellants do not provide adequate evidence or technical
reasoning that independent claim 1 improves some existing technological
process or solves some technological problem in conventional industry
practice. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334
(Fed. Cir. 2015), cert, denied, 136 S. Ct. 2510, 195 L. Ed. 2d 841 (2016)
(finding that the “claims recit[ed] a commonplace business method aimed at
processing business information despite being applied on a general purpose
computer.”); see also Alice, 134 S. Ct. at 2359.
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Appellants further argue “[t]he claims require more than a generic
computer to perform generic computer functions that are well-understood,
routine and conventional activities previously known to the industry” (Br.
13). More particularly, Appellants argue “constructing a discriminant
analysis (DA) model,” as recited by limitation [c] of independent claim 1, is
“not routine, not conventional, or not previously known to the industry”
(id.).
However, we agree with the Examiner that the claims “simply
amount[] to collecting and comparing known data (i.e. the intangible assets
with classifications)” (Ans. 3) using a general purpose computer (see id. at 4
(citing Spec. 1 83)). In this regard, Appellants do not adequately show how
the claimed steps are technically done such that they are not routine,
conventional functions of a generic computer. See Intellectual Ventures,
792 F.3d 1363, 1370 (Fed. Cir. 2015) (“Rather, the ‘interactive interface’
simply describes a generic web server with attendant software, tasked with
providing web pages to and communicating with the user’s computer.”). In
this regard, Appellants have not established that the claimed invention
relates to a software-based invention that improves the performance of the
computer system itself. And it is well-settled that “merely recit[ing] the
abstract idea . . . with the requirement to perform it on the internet, or to
perform it on a set of generic computer components .... would not contain
an inventive concept.” See BASCOM Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
In view of the foregoing, we sustain the Examiner’s rejection under 35
U.S.C. § 101 of independent claim 1, and claims 2—28, which fall with
independent claim 1.
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Anticipation
Independent claim 1 and dependent claims 2—8 and 15
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § 102(b) because Martin fails
to disclose limitations [b] and [c] of independent claim 1 which recite:
constructing, via a processor, a discriminant analysis (DA)
model using a test set of intangible assets, wherein the DA model
comprises a discriminant function to classify the test set of
intangible assets into at least two groups based on a set of
attributes associated with an intangible asset within the test set
of intangible assets in response to the objective of classification;
and
classifying the target set of intangible assets based on the DA
model into at least two groups.
(See Br. 14-18).
The Examiner maintains the rejection is proper, and cites Martin, at
column 11, lines 45—60, column 14, lines 3—10, and column 14, lines 15—20,
as disclosing the argued limitations (see Final Act. 7—9; see also Ans. 5—7).
Martin is directed to “a method for establishing a value for an
intangible intellectual property asset such as a patent, a trademark or a
copyright” (Martin, col. 1,11. 9-11) in order to establish their value as
collateral for loans (id. at col. 2,11. 11—15). More particularly, Martin
discloses that its process
involves the calculation of an asset liquidation value, also
referred to as a purchase price, for the loan collateral.
Determination of the asset liquidation value requires not only an
examination of historical data but also demands an evaluation of
prospective product, competitive and market projections based
on market research, user experience, statistical data developed
through use of the present invention and use of heuristic rules.
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(Id. at col. 2,11. 47—54; see also id. at col. 3,11. 8—13). Martin further
discloses that once the asset liquidation value is determined, a third party
“provides a guarantee to the lender that, in the event of a default by the
applicant, it will pay to the lender an amount equal to the liquidation value
adjusted downward over time according to a depreciation schedule” (id. at
col. 2,11. 59—65). In this regard, Martin discloses that “[t]he asset
liquidation value may be the same as, lower than or even higher than the
loan amount sought by the applicant” (id. at col. 14,11. 15—17). Martin also
discloses
[a] low customer profile score translates into a high depreciation
score. At block 640, expert system CPU 70 aggregates
information concerning the asset life, competition score, product
development period and customer profile score to calculate
depreciation linearity. This linearity is calculated through a
dynamic statistical analysis where all retrospective data from
historical archives and from previous assets considered in this
process are used to model future depreciation models. This
process can be described as dynamic depreciation discriminant
analysis with continuous relevance adjustment.
(Id. at col. 11,11. 46—56).
We have reviewed the cited portions of Martin, and agree with
Appellants that none of the cited portions of Martin discloses limitations [b]
and [c] of independent claim 1. In particular, we fail to see, and the
Examiner does not adequately explain, how Martin’s disclosure regarding a
liquidation value for an asset as being “the same as, lower than or even
higher than the loan amount sought by the applicant” discloses “classifying
the target set of intangible assets based on the DA model into at least two
groups” (emphasis added), as recited by limitation [c] of independent
claim 1.
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In response to Appellants’ argument, the Examiner takes the position
that “the purpose of using the DA model [in Martin] is to fulfil the objective
which, as described in the previous limitation, is to classify assets as the
same value, lower value, or higher value than the loan amount sought to
determine whether the asset is appropriate collateral for the loan sought”
(Final Act. 9; Ans. 6). However, as Appellants point out, “[t]he discriminant
analysis as described in Martin is used to compute a depreciating linearity
(depreciation score) for a single asset to determine its value. The mere use
of the term ‘discriminant analysis,’ however, does not mean that Martin
discloses the invention as presently claimed” (Br. 16). Thus, we agree with
Appellants that Martin fails to disclose the argued limitations.
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claim 1 under 35 U.S.C. § 102(b) as anticipated by Martin.
For the same reasons, we also do not sustain the Examiner’s rejection of
dependent claims 2—8 and 15 which depend from independent claim 1.
Independent claims 22, 25, and 27—29, and dependent claims 23, 24, and 26
Independent claims 22, 25, and 27—29 include limitations substantially
similar to independent claim l’s limitations [b] and [c] discussed above, and
the Examiner relies on the same rationale in rejecting these independent
claims (see Ans. 7). Therefore, we do not sustain the Examiner’s rejection
of independent claims 22, 25, and 27—29, and dependent claims 23, 24, and
26 that depend therefrom, for the same reasons set forth above with respect
to independent claim 1.
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Independent claim 16 and dependent claims 17—21
Appellants argue that the Examiner erred in rejecting independent
claim 16 under 35 U.S.C. § 102(b) because Martin fails to disclose
“deriving ... a discriminant function to classify a test set of intangible assets
into at least two groups based on a set of attributes associated with an
intangible asset within the test set of intangible assets, the discriminant
function comprising a combination of weighted attributes from the set of
attributes,” as recited by independent claim 16 (see Br. 18—19). More
particularly, Appellants argue that “[sjimilar to what [is] described above in
reference to claim 1, independent claim 16 goes beyond the teachings found
in Martin by constructing DA model with a discriminant function to classify
a test set of intangible assets into at least two groups” (Br. 19).
However, Appellants’ argument is not persuasive at least because
independent claim 16 does not recite “constructing [a] DA model”; but
rather recites “deriving ... a discriminant function.” Here, as the Examiner
points out, Martin discloses “that the CPU aggregates information
concerning asset life, competition score, product development period, and
customer profile score (i.e. a set of attributes) and uses these to calculate the
depreciation linearity by a discriminant analysis” (Final Act. 14 (citing
Martin, col. 11,11. 50-75)) and “then disclose[s] that these attributes are
weighted” {id. (citing Martin, col. 11,11. 1—50)). Thus, Appellants’
argument is not persuasive to show error in the Examiner’s rejection.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 16 under 35 U.S.C. § 102(b). We also sustain the
Examiner’s rejection of dependent claims 17 and 18, which is not argued
separately (see Br. 19).
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Obviousness
Claims 9—14
Claims 9—14 depend, directly or indirectly, from independent claim 1,
and thus, incorporate limitations [b] and [c] recited in independent claim 1.
The Examiner’s rejection with respect to Weng, in combination with Martin,
as applied to claims 9-14, does not cure the above-discussed shortcomings
of Martin identified by Appellants. Thus, we do not sustain the Examiner’s
rejection of dependent claims 9-14 under 35 U.S.C. § 103(a) for the same
reasons set forth above with respect to independent claim 1.
Claims 19—21
Appellants do not present any argument in support of the patentability
of claims 19—21 separate from the arguments with respect to independent
claim 16. Therefore, we also sustain the Examiner’s rejection of claims 19—
21 under 35 U.S.C. § 103(a) for the same reasons.
DECISION
The Examiner’s rejection of claims 1—29 under 35 U.S.C. § 101 is
affirmed.
The Examiner rejections of claims 1—15 and 22—29 under 35 U.S.C.
§§ 102(b) and 103(a) are reversed.
The Examiner rejections of claims 16—21 under 35 U.S.C. §§ 102(b)
and 103(a) are sustained.
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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