Ex Parte Kwapiszeski et alDownload PDFPatent Trial and Appeal BoardAug 21, 201813570090 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/570,090 08/08/2012 75564 7590 08/23/2018 DANIEL M. FITZGERALD (21652) ARMSTRONG TEASDALE LLP 7700 Forsyth Boulevard Suite 1800 St. Louis, MO 63105 FIRST NAMED INVENTOR Mark Clement Kwapiszeski 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. 21652-00215 2692 EXAMINER STERRETT, JONATHAN G ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): USpatents@armstrongteasdale.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK CLEMENT KW APISZESKI, STEPHANIE MICHELLE DICKINSON, and MATTHEW THOMAS HOLTON Appeal2017-005935 Application 13/570,090 1 Technology Center 3600 Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and BRUCE T. WIEDER, Administrative Patent Judges. WIEDER, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134 from the Examiner's rejection of claims 1-3, 7, 10-13, 17, 19-21, and23-31. We have jurisdiction under 35 U.S.C. § 6(b ). We AFFIRM. 1 According to Appellants, the real party in interest is MasterCard International Incorporated. (Appeal Br. 1.) Appeal2017-005935 Application 13/570,090 CLAIMED SUBJECT MATTER Appellants' invention "relate[s] generally to asset evaluation and, more particularly, to methods and systems for evaluating technology assets including comparing the technical maturity of various technology assets owned by an entity to the business values of the entity." (Spec. ,r 1.) Claims 1, 11, and 20 are the independent claims on appeal. 2 Claim 1 is illustrative. It recites: 1. A technology maturity evaluation (TME) computer device for evaluating a computing asset of an entity to enhance the efficiency of a computer system including the computing asset, said TME computer device comprising: a memory device for storing data including a plurality of business value questions and a plurality of technical maturity questions, wherein the business value questions are configured to evaluate an overall value and impact the computing asset has in a marketplace, and wherein the technical maturity questions are configured to evaluate an amount of resources invested to develop and implement the computing asset; and a processor in communication with said memory device, said TME computer device programmed to: receive an asset identifier identifying the computing asset as being selected for evaluation, wherein the computing asset is one of a software asset and a hardware asset; electronically display, to at least one subject matter expert, a set of questions of the plurality of business value questions and the plurality of technical maturity questions stored within the memory device for the selected computing asset, including designating the at least one subject matter expert as the respondent for the set of 2 We note that the claims listed in the Claims Appendix to the Appeal Brief filed October 24, 2016, are not correct. We, instead, refer to the claims listed in the Claims Appendix in Appellants' Response to Notice ofNon- Compliant Appeal Brief filed November 16, 2016. 2 Appeal2017-005935 Application 13/570,090 questions, wherein the set of questions is retrieved based on the asset identifier stored in the memory device and is associated with at least one category of a plurality of categories including at least one of maintainability, availability, reliability, process governance, and customer delivery; receive response data from each of the subject matter experts designated for responding to each of the business value questions and technical maturity questions electronically displayed; calculate a business value score and a technical maturity score for the selected computing asset for at least one aspect of the selected computing asset, wherein each aspect corresponds to the at least one category, based at least in part on the response data, wherein the selected computing asset is evaluated at an asset level and at a category level; store, in the memory device, business value scores and technical maturity scores for the selected computing asset calculated at the asset level and on the category level; determine a target ratio between the business value score and the technical maturity score for the at least one aspect of the selected computing asset, embodied as a graphical threshold; determine a candidate ratio between the business value score and the technical maturity score for the at least one aspect of the selected computing asset; compare the candidate ratio to the target ratio, including comparing the candidate ratio to the graphical threshold; generate an interactive graphical display on a user interface that includes at least one graphical scale representing business value, at least one other graphical scale representing technical maturity, an icon representing the selected computing asset, and a graphical representation of the target ratio, wherein the processor is further programmed to link the icon to the business value scores and the technical maturity scores for the selected computing asset via an address in the memory device; 3 Appeal2017-005935 Application 13/570,090 receive an interaction input via the interactive graphical display, wherein the interaction input includes selecting the icon; generate an action recommendation for the selected computing asset based at least in part on the comparison between the candidate ratio and the target ratio for the at least one aspect, the action recommendation representing an action directed to shifting the candidate ratio closer to the target ratio; and cause, by the interaction input, the interactive graphical display to transform into an asset level summary display for the selected computing asset, and wherein the asset level summary displays the action recommendation, the technical maturity score, the business value score, and one or more sub-scores each corresponding to at least one category of the plurality of categories. REJECTION Claims 1-3, 7, 10-13, 17, 19-21, and23-31 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS Claims 1-3, 7, 10-13, 17, 19-21, and 23-31 are argued together. Therefore, these claims will stand or fall together. See 37 C.F.R. § 4I.37(c)(l)(iv). We select claim 1 as representative. "Whoever 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 title." 35 U.S.C. § 101. Section 101, however, "'contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v. 4 Appeal2017-005935 Application 13/570,090 CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). Alice applies a two-step framework, earlier set out in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (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, 134 S. Ct. at 2355. Under the two-step framework, it must first be determined if "the claims at issue are directed to a patent-ineligible concept." Id. If the claims are determined to be directed to a patent-ineligible concept, e.g., an abstract idea, then the second step of the framework is applied to determine if "the elements of the claim ... contain[] an 'inventive concept' sufficient to 'transform' the claimed abstract idea into a patent-eligible application." Id. at 2357 (citing Mayo, 566 U.S. at 72-73, 79). With regard to step one of the Alice framework, the Examiner determines that "the instant application [ which includes the claims] is directed to an abstract idea of collecting information, analyzing it and displaying certain results of the collection and analysis where the abstract idea is directed to the portfolio analysis of projects to aid in decision making." (Answer 6.) The Examiner also determines that the claims are "directed to the abstract idea of portfolio management of computing assets." (Final Action 12, emphasis omitted.) Appellants disagree and argue that "[t]he rejection is deficient at the very least because the rejection is inconsistent; it fails to set forth a single abstract idea to which the claims are directed." (Appeal Br. 8.) Appellants also argue that the Examiner's determination is deficient because it ignores 5 Appeal2017-005935 Application 13/570,090 the limitation in claim 1 of "generat[ing] an interactive graphical display on a user interface." (Id., emphasis omitted). Under step one of the Alice framework, we "look at the 'focus of the claimed advance over the prior art' to determine if the claim's 'character as a whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)). The Specification provides evidence as to what the claimed invention is directed. In this case, the Specification discloses that Appellants' invention "relate[ s] generally to asset evaluation and, more particularly, to methods and systems for evaluating technology assets including comparing the technical maturity of various technology assets owned by an entity to the business values of the entity." (Spec. ,r 1.) Claim 1 provides further evidence. Claim 1 recites a "device for evaluating a computing asset of an entity ... comprising: a memory device," "and a processor ... programmed to: receive an asset identifier identifying the ... asset," "display ... a set of questions," "receive response data," "calculate a business value score and a technical maturity score," store the scores, "determine a target ratio between" the scores, "determine a candidate ratio between" the scores, "compare the candidate ratio to the target ratio," "generate an interactive graphical display," "receive ... input via the interactive graphical display," "generate an action recommendation for the ... asset," and "cause ... the interactive graphical display to transform into an asset level summary display." Although we and the Examiner describe, at different levels of abstraction, to what the claims are directed, it is recognized that "[a]n 6 Appeal2017-005935 Application 13/570,090 abstract idea can generally be described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here, claim 1 recites receiving information about an asset, displaying questions about the asset, receiving responses to the questions, calculating scores, storing the scores, determining values based on the scores, generating an interactive graphical display, receiving data, generating an action recommendation, and transforming/ changing the information on the display. "[W]e have treated collecting information, including when limited to particular content (which does not change its character as information), as within the realm of abstract ideas." Elec. Power Grp., 830 F.3d at 1353. "In a similar vein, we have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category." Id. at 1354. "And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis." Id. "Here, the claims are clearly focused on the combination of those abstract-idea processes." Id. With regard to Appellants' argument regarding "using an interactive graphical display" (Appeal Br. 12), we note that here, as in Apple, Inc., the claims "includ[ e screen displays] with particular features. They do not claim a particular way of programming or designing the software to create [the screen displays] that have these features, but instead merely claim the resulting systems. Essentially, the claims are directed to certain functionality-here, the ability to generate [ screen displays] with certain 7 Appeal2017-005935 Application 13/570,090 features." Apple, Inc., 842 F.3d at 1241. Nor does claim 1 recite a particular type of device on which to generate the interactive graphical display. That claim 1 recites that the icon is linked to the scores via an address in memory, does not change our analysis. This is simply a recitation that the icon is linked in an unspecified manner to the stored scores. In short, unlike the claims in Core Wireless, here the claims are not directed to an improved user interface. Cf Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356, 1362---63 (Fed. Cir. 2018) (The court determined that "[ t ]he asserted claims in this case are directed to an improved user interface for computing devices," that the claim "limitations disclose a specific manner of displaying a limited set of information to the user, rather than using conventional user interface methods," and that "[t]he disclosed invention improves the efficiency of using the electronic device." The court determined that the claims were not directed to an abstract idea.) Additionally, although claim 1 here recites "an interactive graphical display," this is just one element of the claim. The focus of the claim is on "evaluating a computing asset of an entity," and, as discussed above, in "determin[ing] if the claim's 'character as a whole' is directed to excluded subject matter," we "look at the 'focus of the claimed advance over the prior art."' Affinity Labs, 838 F.3d at 1257 (quoting Elec. Power Grp., 830 F.3d at 1353). Also, we do not find persuasive Appellants' argument that the rejection is deficient because it does not set forth a single, i.e., just one, abstract idea to which the claims are directed. We do not find this persuasive not only because an abstract idea can "be described at different levels of abstraction," Apple, Inc., 842 F.3d at 1240, but also because a claim 8 Appeal2017-005935 Application 13/570,090 may be directed to more than one abstract idea. See, e.g., RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea ... to another abstract idea ... does not render the claim non- ab stract. "). Regardless, Appellants argue that "[t]he claims of the pending application specifically improve the technical field of distributed data analysis and empirical data-based forecasting, by reciting an objective method of evaluating computing assets and comparing them against other assets." (Appeal Br. 10.) In particular, Appellants argue that "the systems and methods recited in the claims-the technical maturity evaluation computing device of Claim 1, for example-themselves represent a 'specific implementation of a solution to a problem in the software arts."' (Id. at 11, citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).) We disagree. Unlike the present claims, the claims in Enfish were "specifically directed to a self-referential table for a computer database." Enfzsh, 822 F.3d at 1337. That is, "the plain focus of the claims [was] on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity." Id. at 1336. Here, claim 1 recites a "device for evaluating a computing asset of an entity," and the Specification discloses that the invention addresses the problem that evaluations "are often times subjective and may reflect the agendas of the developers and/or engineers. Thus, these known systems fail to provide an accurate evaluation of the software applications." (Spec. ,r 3.) In short, the asserted improvement is to a business practice for the evaluation of software and/ or computing assets, rather than to an improvement in computer functionality itself. 9 Appeal2017-005935 Application 13/570,090 Appellants also seek to analogize the present claims to the claims in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016). (Appeal Br. 11-13.) Appellants argue that "[s]imilar to the technology in McRO, the prior art relevant to the pending application required human intervention to individually evaluate an asset." (Id. at 12.) Appellants further argue that "[ t ]he presently pending claims address this issue by reciting a system where technical maturity of an asset is evaluated objectively and in comparison to other technical assets using an interactive graphical display that enables objective evaluation." (Id.) We disagree. As an initial matter, we note that claim 1 recites "display[ing], to at least one subject matter expert, a set of questions." Thus, claim 1 requires expert (presumably a human expert) intervention. Additionally, in McRO, the court determined that the claimed improvement here is allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that previously could only be produced by human animators. As the district court correctly recognized, this computer automation is realized by improving the prior art through "the use of rules, rather than artists, to set the morph weights and transitions between phonemes." The rules are limiting in that they define morph weight sets as a function of the timing of phoneme sub-sequences. McRO, 837 F.3d at 1313 (citations omitted). Here, unlike McRO, the asserted improvement is to a business practice regarding evaluating assets. In view of the above, we agree with the Examiner that claim 1 is directed to an abstract idea. Step two of the Alice framework has been described "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 10 Appeal2017-005935 Application 13/570,090 more than a patent upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 72-73). Appellants argue that "[t]he pending claims recite at least the inventive concept of generate an interactive graphical display." (Appeal Br. 13.) Appellants further argue that this is "similar to the inventive concept that was deemed eligible in BASCOM." (Id., citing Bascom Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).) Specifically, Appellants argue that [i]n BASCOM, the inventive concept related to using a remote ISP server to perform filtering while still enabling users to customize filtering for their individual network accounts. Similarly, the pending claims recite a technical maturity evaluation (TME) computing device that collects data about multiple assets and scores them collectively using a standardized and objective evaluation scheme. The TME computing device aggregates this data in a single location, eliminating the need for and the limitations of distributed and inefficient evaluation processes as described in the Specification ("known systems generally evaluate assets only on an individual level without providing a comparison to the other assets" Specification, paragraph [0003]). (Id. at 13-14.) In Bascom, the court determined that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." Bascom, 827 F.3d at 1350. Specifically, "[t]he inventive concept described and claimed in the '606 patent is the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user." Id. at 1350. The Federal Circuit determined that this "particular arrangement of elements is a technical improvement over prior art ways of filtering." Id. Here, however, 11 Appeal2017-005935 Application 13/570,090 Appellants do not indicate what technical improvement is achieved. Instead, Appellants' argument is that the claimed invention improves a business practice, by "providing a comparison to the other assets." (See Appeal Br. 13-14.) But even this argument is not commensurate with the scope of the claim. Claim 1 recites "receiv[ing] an asset identifier identifying the computing asset as being selected for evaluation," and "calculat[ing] a business value score and a technical maturity score for the selected computing asset." Appellants do not indicate what language in claim 1 recites "providing a comparison to the other assets." Thus, we do not find this argument persuasive. Appellants also seek to analogize the claims to the claims in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). (Appeal Br. 14.) In particular, Appellants argue that [a]s in DDR Holdings, the claims of the instant application do not simply recite conventional hardware as alleged by the Office Action. The claims at issue in DDR Holdings, like the Applicant's [sic] present claims, solve a problem that does not exist in the "brick and mortar" context. DDR Holdings, slip op. at 23. Accordingly, the present claims recite an invention that includes devices specifically configured to perform the recitations of the claims ( e.g., a technology maturity evaluation computing device). (Id.) But unlike the present claims, the claims in DDR Holdings "specify how interactions with the Internet are manipulated to yield a desired result - - a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." DDR Holdings, 773 F.3d at 1258 ( emphasis added). In other words, the invention claimed in DDR Holdings does more than "simply instruct the practitioner to implement the abstract idea with routine, conventional activity." See Ultramercial, Inc., 12 Appeal2017-005935 Application 13/570,090 772 F.3d 709, 715 (Fed. Cir. 2014); see also DDR Holdings, 773 F.3d at 1259. Appellants do not persuasively argue that the claimed computer device operates so as to "override[] the routine and conventional sequence of events." See DDR Holdings, 773 F.3d at 1258. Instead, the claims simply perform the abstract business practice using a conventional computer programmed to perform routine computer functions. Appellants also do not persuasively argue why evaluating assets of an entity is not a problem that exists in a "brick and mortar," i.e., real world, context. With regard to Appellants' argument that the claims "do not simply recite conventional hardware," we do not find this persuasive of error. We examine the function performed by the computer device. Here, taking the claim elements separately, the function performed by the computer device at each step is purely conventional. Receiving information, displaying questions, receiving responses to the questions, calculating and storing values, calculating additional values, generating an interactive graphical display/ displaying information, receiving additional information, generating a result/action recommendation, and displaying additional information, are routine computer functions. See, e.g., Elec. Power Grp., 830 F.3d at 1355 ("The claims at issue do not require any nonconventional computer, network, or display components, or even a 'non-conventional and non- generic arrangement of known, conventional pieces,' but merely call for performance of the claimed information collection, analysis, and display functions 'on a set of generic computer components' and display devices. Bascom, 827 F.3d at 1349--52."). Additionally, claim 1 recites that the computer device comprises generic computer hardware, i.e., "a memory device ... and a processor." 13 Appeal2017-005935 Application 13/570,090 And the Specification discloses that the invention "may be implemented using computer programming." (See, e.g., Spec. ,r 89.) In short, each program step does no more than require a generic computer to perform routine computer functions, and "relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible." OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Considered as an ordered combination, the computer device and program steps of Appellants' claim add nothing that is not already present when the steps are considered separately. The claims do not, for example, purport to improve the functioning of the processor or memory. Nor do they effect an improvement in any other technology or technical field. "At best, the claims describe the automation of the [ abstract idea] through the use of generic-computer functions." Id. That is not enough to transform an abstract idea into a patent-eligible invention. See Alice, 134 S. Ct. at 2360. Appellants also argue that the Examiner only provides a mere allegation with no findings of fact to substantiate the assertion that the claims describe "routine and conventional activities." Claim 1 recites steps that are not "well-understood, routine, and conventional." This is evidenced at least by the fact that the Examiner cites no prior art that describes or suggests these recitations. (Appeal Br. 15-16.) We do not find the argument persuasive. Diehr instructs us that "[t]he 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). Also, as discussed above, Appellants do not persuasively argue why the claim 14 Appeal2017-005935 Application 13/570,090 recitations regarding receiving information, displaying questions, receiving responses to the questions, calculating and storing values, calculating additional values, generating an interactive graphical display/displaying information, receiving additional information, generating a result/action recommendation, and displaying additional information, are not routine computer functions. See, e.g., Elec. Power Grp., 830 F.3d at 1355. In sum, Appellants' claims are "directed to nothing more than the performance of an abstract business practice ... using a conventional computer. Such claims are not patent-eligible." DDR Holdings, 773 F.3d at 1256. DECISION TheExaminer'srejectionofclaims 1-3, 7, 10-13, 17, 19-21, and23- 31 under 35 U.S.C. § 101 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation