Ex Parte Koll et al

Patent Trial and Appeal Board

Sep 26, 2016

13526684 (P.T.A.B. Sep. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/526,684 06/19/2012
24208 7590
Robert Plotkin, P,C,
1500 District Ave.
Burlington, MA 01803
09/28/2016
FIRST NAMED INVENTOR
Detlef Koll
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.
M0002-1038 1802
EXAMINER
TOMASZEWSKI, MICHAEL
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
09/28/2016 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):
mail@rplotkin.com
hdas@rplotkin.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DETLEF KOLL, THOMAS POLZIN,
and MICHAEL FINKE
Appeal2016-005920
Application 13/526,684
Technology Center 3600
Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 1, 7, 10, 11, 15-17, 19, 26, 28-30, 33-35, 37, 38, 41, and
43-51 which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal2016-005920
Application 13/526,684
THE INVENTION
The Appellants' claimed invention is directed to a billing code
generator (Spec., para. 6). Claim 1, reproduced below, is representative of
the subject matter on appeal.
1. A computer-implemented method performed by at least
one computer processor, the method comprising:
identifying, by a data identification component executed by a
billing code generator executing on a computing device, first data
relating to a fact, wherein the first data is admissible in a billing
process;
identifying, by the data identification component, second data
relating to the fact;
assigning an admissibility value to the second data, wherein the
admissibility value indicates that the second data is not admissible in
the billing process; and
deciding, by a data analysis component executed by the billing
code generator, based on the first data and the second data, whether to
generate a request to review the first data,
wherein deciding is based upon an analysis of an
admissibility value assigned to the second data and an
analysis of a weight assigned to the second data, and
wherein deciding further comprises analyzing, by
the data analysis component, a weight assigned to the
first data.
THE REJECTION
The following rejection is before us for review:
Claims 1, 7, 10, 11, 15-17, 19, 26, 28-30, 33-35, 37, 38, 41, and
43-51 are rejected under 35 U.S.C. § 101 as being drawn to non-statutory
subject matter.
2
Appeal2016-005920
Application 13/526,684
FTI'-JDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence1.
ANALYSIS
The Appellants argue that the rejection of claim 1 under 35 U.S.C.
§ 101 is improper (App. Br. 20-29; Reply Br. 1-8).
In contrast, the Examiner has determined that the rejection of record is
proper (Non-Final Act. 2--4; Ans. 3-9).
We agree with the Examiner and adopt the rationale found in the
Answer. Under 35 U.S.C. § 101, 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 an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 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. If so, we then
consider the elements of the claim both individually and as "an ordered
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal2016-005920
Application 13/526,684
combination" to determine whether the additional elements "transform the
nature of the claim" into a patent-eligible application of the abstract idea. Id.
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 Court also stated that "the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention." Id. at 2358.
Here, we find that the claim is directed to the concept of organizing
human activities in deciding which data sets are to be reviewed in billing.
The claimed method steps of identifying data sets and assigning factors and
weights to them to decide which data sets should be reviewed could be
performed in a series of mental steps and are directed to the abstract idea of
identifying particular data sets based on mathematical criteria. Here, the
claim is directed to an abstract idea beyond the scope of § 101.
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
the claim does more than simply instruct the practitioner to implement the
abstract idea, using generic computer components. We conclude that it does
not.
Here, considering each of the claim elements in tum, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. Here, the method
is a series of mental steps and calculations that is merely executed using
generic computer components.
4
Appeal2016-005920
Application 13/526,684
For these reasons the rejection of claim 1 under 35 U.S.C. § 101 is
sustained. The Appellants "use claim 1 as an example" and have not
provided separate arguments for the remaining claims (see App. Br. 20) and
thus the rejection of these claims is sustained as well.
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims as listed in the Rejection section above.
DECISION
The Examiner's rejection of claims 1, 7, 10, 11, 15-17, 19, 26, 28-30,
33-35, 37, 38, 41, and 43-51 is sustained.
AFFIRMED
5