Ex Parte Knapp

Patent Trial and Appeal Board

Apr 20, 2018

12012581 (P.T.A.B. Apr. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/012,581 02/04/2008
79804 7590 04/24/2018
Duncan Galloway Egan Greenwald, PLLC
9750 Ormsby Station Road, Suite 210
Louisville, KY 40223
FIRST NAMED INVENTOR
Kathie Knapp
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.
113027.000017US1 3196
EXAMINER
OBEID, FAHD A
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
04/24/2018 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):
kduncan@dgeglaw.com
carnold@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHIE KNAPP
Appeal2016-005832
Application 12/012,581
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
BIBHU R. MOHANTY, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Kathie Knapp (Appellant) seeks review under 35 U.S.C. § 134 of a final
rejection of claims 1, 2, 4, 6-9, 11, 13, 14, 16, and 18-36, the only claims
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed September 24, 2015) and Reply Brief ("Reply Br.," filed May 16,
2016), and the Examiner's Answer ("Ans.," mailed March 14, 2016), and
Final Action ("Final Act.," mailed April 20, 2015).
Appeal2016-005832
Application 12/012,581
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b ).
The Appellant invented a way of handling data transfer to and from
client and service provider and brokering interactions. Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 8, which is reproduced below (bracketed matter and some
paragraphing added).
8. A method of
communicating accounting data over a communications
network between an accounting system utilizing an
accounting system software associated with delivery of
professional services and a plurality of remote client
systems utilizing external client accounting software
applications and data having an external format,
the method comprising:
[1] electronically receiving by the accounting system a first
financial data set
associated with a client
from a remote client system
for processing by accounting system software operating
on the accounting system,
the first financial data set being in an external format
associated with a client accounting software application
operating on the remote client system;
[2] translating the first financial data set
from the external format
and
into a format adapted for use by the accounting
system software
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Application 12/012,581
generating a translated first financial data set;
[3] determining the accuracy of data in the translated first
financial data set
and
automatically generating a revised first financial data set
upon detecting errors in the translated first financial data
set;
[ 4] generating by the accounting system software a second
financial data set
and
based at least in part on a set of data in the translated first
financial data set
and,
in the event of errors detected in the translated first
financial data set,
at least in part on the revised first financial data
set,
wherein the second financial data set may be a structured
data record representing a financial statement associated
with the client;
[5] exporting the second financial data set from the accounting
system to the remote client system,
the second financial data set
comprising data derived from the translated first
financial data set
and
being adapted for use by the client accounting
software operated at the remote client system,
the second financial data set further comprising data
representing the revised first financial data set in the
event of detected errors in the translated first financial
data set.
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Appeal2016-005832
Application 12/012,581
Claims 1, 2, 4, 6-9, 11, 13, 14, 16, and 18-36 stand rejected under
35 U.S.C. § 101 as directed to non-statutory subject matter.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
ANALYSIS
Method claim 8 recites receiving by the accounting system a first
financial data set, translating the first financial data set from the external
format into a format adapted for use by the accounting system software,
determining the accuracy of data, and generating and exporting a second
financial data, Thus, claim 8 recites receiving, analyzing, modifying, and
transmitting data. None of the limitations recite implementation details for
any of these steps, but instead recite functional results to be achieved by any
and all possible means. Data reception, analysis and modification, and
transmission are all generic, conventional data processing operations to the
point they are themselves concepts awaiting implementation details. The
sequence of data reception-analysis-transmission is equally generic and
conventional. The ordering of the steps is therefore ordinary and
conventional. The remaining claims merely describe data characteristics,
process repetition, and output characteristics, with no implementation
details.
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The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] 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. [The Court] described step two of this
analysis as a 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."
Alice Corp. Pty. Ltd. v CLS Bank Int'!, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner finds the claims
directed to "communicating accounting data between an accounting system
utilizing accounting system software and a plurality of remote client systems
utilizing external client accounting software applications and data having an
external format." Final Act. 3. The Examiner further finds translating
information to be a fundamental economic practice. Id. at 4.
While the Court in Alice made a direct finding as to what the claims were
directed to, we find that this case's claims themselves and the Specification
provide enough information to inform one as to what they are directed to.
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The preamble to claim 8 recites that it is a method of communicating
accounting data between an accounting system and remote client systems
utilizing external client accounting software applications. The steps in claim
8 result in sending translated accounting data to a remote client system. The
Specification at paragraph 1 recites that the invention relates to handling
data transfer to and from client and service provider and brokering
interactions. Thus, all this evidence shows that claim 8 is directed to
sending converted accounting data, i.e., translating accounting data.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of translating
accounting data is a fundamental business practice long prevalent in our
system of international commerce. The use of translating accounting data is
also a building block of international trade and financial reporting. Thus,
translating accounting data, like hedging, is an "abstract idea" beyond the
scope of§ 101. See Alice, 134 S. Ct. at 2356.
As in Alice, we need not labor to delimit the precise contours of the
"abstract ideas" category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
risk hedging in Bilski and the concept of translating accounting data at issue
here. Both are squarely within the realm of "abstract ideas" as the Court has
used that term. See Alice, 134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
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1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent-ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 8, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
transmission and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 8 is directed to the abstract idea of receiving, analyzing, and
transmitting data.
The remaining claims merely describe data characteristics, process
repetition, and output characteristics. We conclude that the claims at issue
are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
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eligibility. This conclusion accords with the preemption
concern that undergirds our§ 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself."
Alice, 134 S. Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, translate, analyze, and send data amounts to electronic
data query and retrieval---one of the most basic functions of a computer. All
of these computer functions are well-understood, routine, conventional
activities previously known to the industry. In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant's method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, Appellant's method claims
simply recite the concept of translating accounting data as performed by a
generic computer. To be sure, the claims recite doing so by advising one to
translate and test the data, correct as needed, and format and send the
resultant data. But this is no more than abstract conceptual advice on the
parameters for such translating accounting data and the generic computer
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processes necessary to process those parameters, and do not recite any
particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 13+ pages of Specification do
not bulge with disclosure, but only spell out different generic equipment and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
translating accounting data under different scenarios. They do not describe
any particular improvement in the manner a computer functions. Instead,
the claims at issue amount to nothing significantly more than an instruction
to apply the abstract idea of translating accounting data using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '"
Alice, 134 S. Ct. at 2360.
We are not persuaded by Appellant's argument that
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The Court's opinion in Alice is narrowly focused on the risk
hedging claims of Bilski and the intermediate settlement
concept at issue in Alice. The Court's reasoning leads to a
narrow definition of an "abstract idea" to be an idea so old and
entrenched as the concepts of hedging risk or using a settlement
intermediary, while excluding new or modem concepts.
App. Br. 9. Appellant conflates examples with definition. Although the
examples the Alice opinion describes are notoriously old, the court did not
define an abstract idea as equivalent to those examples. Instead, the court
found that the concept the claims in Alice were drawn to was notoriously
old, as shown by old examples. Alice continues the line of reasoning from
Bilski that concepts as contrasted with implementations of concepts, are
abstract ideas. The Supreme Court held that claims that explained the basic
concept of an activity (hedging) would allow the Appellant to pre-empt the
use of this approach in all fields, and would effectively grant a monopoly
over an abstract idea. Bilski, 561 U.S. at 611---612. Abstract ideas are not
patent-eligible. Id. at 601 and 653.
We are not persuaded by Appellant's argument that "[t]he method
described in the present invention is far removed from the concepts of risk
hedging and intermediated settlements and solves a problem unique to data
extraction, translation, communication, processing, generation, storage, and
manipulation, one that did not exist prior to the advent of computers." App.
Br. 9. Both the problem as stated and the solution is within conventional
data processing. Elec. Power Grp., as we find supra, held that such data
processing are a familiar class of claims "directed to" a patent ineligible
concept. Further the problem of correcting, reformatting, and translating
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data predates computer technology and is as old as copying of all forms of
written material.
We are not persuaded by Appellant's argument that "[g]enerating
receiving, translating, error checking, generating new data sets, and
communicating translated or error corrected data sets is not a fundamental
economic practice or a longstanding commercial practice" (App. Br. 10) for
similar reason.
Appellant further argues that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245 (Fed. Cir. 2014). In DDR Holdings, the Court evaluated
the eligibility of claims "address[ing] the problem of retaining website
visitors that, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be instantly transported away from a
host's website after 'clicking' on an advertisement and activating a
hyperlink." Id. at 1257. There, the Court found that the claims were patent-
eligible because they transformed the manner in which a hyperlink
typically functions to resolve a problem that had no "pre-Internet
analog." Id. at 1258. The Court cautioned, however, "that not all claims
purporting to address Internet-centric challenges are eligible for patent."
Id. For example, in DDR Holdings the Court distinguished the patent-
eligible claims at issue from claims found patent-ineligible in
Ultramercial. See id. at 1258-59 (citing Ultramercial, 772 F.3d at 715-
16). As noted there, the Ultramercial claims were "directed to a specific
method of advertising and content distribution that was previously
unknown and never employed on the Internet before." Id. at 1258
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(quoting Ultramercial, 772 F.3d at 715-16). Nevertheless, those claims
were patent-ineligible because they "merely recite[d] the abstract idea of
'offering media content in exchange for viewing an advertisement,' along
with 'routine additional steps such as updating an activity log, requiring a
request from the consumer to view the ad, restrictions on public access, and
use of the Internet."' Id.
Appellant's asserted claims are analogous to claims found ineligible in
Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited "providing [a] media product
for sale at an Internet website"; "restricting general public access to said
media product"; "receiving from the consumer a request to view [a]
sponsor message"; and "if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query." Ultramercial, 772 F.3d at 712. Similarly, Appellant's asserted
claims recite receiving, analyzing, and transmitting data. This is precisely
the type of Internet activity found ineligible in Ultramercial.
We are not persuaded by Appellant's argument that the Examiner must
consider the claim as a whole and as an ordered combination. App. Br. 11.
We find the Examiner did so. Final Act. 5. As we find supra, the claim as a
whole recites the concept of translating accounting data as performed by a
generic computer by advising one to translate and test the data, correct as
needed, and format and send the resultant data. The sequence of operations
is purely conventional.
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We are not persuaded by Appellant's argument that the invention is not
one of those found ineligible in prior court cases. App. Br. 12-14. Few
areas are more fundamental to business and commerce than accounting.
Translating accounting data is itself a fundamental practice within
accounting. Appellant lists several court cases in which fundamental
business practices were at issue. Appellant appears to contend that it is the
particular practice that makes the practice fundamental, but instead it is the
fundamental nature of the practice that make it an abstract concept.
We are not persuaded by Appellant's argument that sending data is a
physical process. App. Br. 15. This is no more physical than data
processing per se found to be ineligible in Electric Power.
The remaining arguments are variations on those supra.
CONCLUSIONS OF LAW
The rejection of claims 1, 2, 4, 6-9, 11, 13, 14, 16, and 18-36 under
35 U.S.C. § 101 as directed to non-statutory subject matter is proper.
DECISION
The rejection of claims 1, 2, 4, 6-9, 11, 13, 14, 16, and 18-36 is
affirmed.
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)(l)(iv) (2011).
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AFFIRMED
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