Ex Parte LeClaire

Patent Trial and Appeal Board

Apr 19, 2016

11054772 (P.T.A.B. Apr. 19, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111054,772 0210912005
113349 7590
LOEB & LOEB, LLP
321 North Clark Street
Suite 2300
Chicago, IL 60654-4746
04/21/2016
FIRST NAMED INVENTOR
Justin LeClaire
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.
P-00906US/090426-30016 2306
EXAMINER
CRAWLEY, TALIAF
ART UNIT PAPER NUMBER
3687
NOTIFICATION DATE DELIVERY MODE
04/21/2016 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):
chpatent@loeb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JUSTIN LECLAIRE
Appeal2013-005525
Application 11/054, 772
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Justin LeClaire (Appellant) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 1, 6, 8-10, 14-16, 28, and 30-33, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed September 4, 2012) and Reply Brief ("Reply Br.," filed March 11,
2013), and the Examiner's Answer ("Ans.," mailed January 11, 2013), and
Final Action ("Final Act.," mailed February 2, 2012).
Appeal2013-005525
Application 11/054, 772
The Appellant invented a way of determining, forecasting, or using a
commercial expenditure value. Specification, para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[1] determining, by a computer, an intermediate inputs value,
wherein determining the intermediate inputs value
comprises
obtaining a gross output value from a Bureau of
Economic Analysis (BEA) database,
obtaining a gross domestic product (GDP) value
from the BEA database,
and
determining the intermediate inputs value using the
gross output value and the GDP value,
wherein the intermediate inputs value is
determined by subtracting the GDP from the
gross output value;
[2] obtaining a commercial inventory purchase value,
wherein the commercial inventory purchase value
comprises
a retail inventory purchase value
and
a wholesale inventory purchase value;
[3] determining, by the computer, a commercial expenditure
value
using the intermediate inputs value and the commercial
inventory purchase value,
wherein determining the commercial expenditure value
includes summing
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Appeal2013-005525
Application 11/054, 772
and
the intermediate inputs value
with
the commercial inventory purchase value,
a private fixed investment value
and
a government expenditure value;
[ 4] forecasting commercial market potential for electronic
payment solutions using the commercial expenditure value;
[5] wherein the commercial expenditure value measures and
represents a total dollar value of potential payment company
commercial volume,
and
[ 6] wherein the commercial expenditure value takes into
account the ability for numerous transactions to occur based on
the same, or similar production units.
The Examiner relies upon the following prior art:
Yu
Buck
US 2003/0061132 Al
US 2004/0030592 Al
Mar. 27, 2003
Feb. 12,2004
Claims 1, 6, 8-10, 14-16, 28, and 30-33 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Buck, Yu, and Official Notice.
ISSUES
The issues of obviousness tum primarily on whether the art describes the
limitations recited in the claims.
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Appeal2013-005525
Application 11/054, 772
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Buck
Yu
01. Buck is directed to business data analysis. Buck, para. 1.
02. Buck describes analyzing business data by gathering current
profit data including category size data, market share data, and
profit margin data. Profit factor data is gathered that includes at
least one of category size change data, market share change data,
and profit margin change data. Future profit data is calculated
based on the current profit data and the profit factor data. The
future profit data is displayed to a user. Buck, para. 4.
03. Buck describes a business analysis tool, but not the particular
calculations the tool makes. Buck, paras. 19-21.
04. Yu is directed to categorizing, aggregating and analyzing
consumer and business payment transactions data according to
geographic, demographic, topological, meteorological, and
chronological and other parameters for analysis by end users. Yu
para. 5.
05. Yu describes using the Consumer Expenditure Survey (CEX)
from the Bureau of Economic Analysis (BEA) of the U.S.
Department of Commerce. Yu, paras. 15-16.
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Appeal2013-005525
Application 11/054, 772
ANALYSIS
We are persuaded by the Appellant's argument that the references fail to
describe limitations [1] and [3]. App. Br. 11-16. The Examiner found these
limitations in Buck and Yu, but Yu only describes a Consumer Expenditure
Survey from the Bureau of Economic Analysis, and not the recited gross
output value and gross domestic product. Buck describes a business analysis
tool, but not the particular calculations recited in the claim. The Examiner
found that these limitations were well known to those of ordinary skill in the
art. Ans. 7. Absent supporting evidence, we must treat this as speculation.
Official Notice cannot provide evidence for core factual findings.
Recall that "the Patent Office has the initial duty of supplying the factual
basis for its rejection. It may not ... resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). The allocation of
burdens requires that the USPTO produce the factual basis for its rejection
of an application under 35 U.S.C. § 102. In re Piasecki, 745 F.2d 1468,
1472 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d at 1016).
A rejection based on section 103 clearly must rest on a factual
basis, and these facts must be interpreted without hindsight
reconstruction of the invention from the prior art. In making
this evaluation, all facts must be considered. The Patent Office
has the initial duty of supplying the factual basis for its
rejection. It may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in its factual
basis. To the extent the Patent Office rulings are so supported,
there is no basis for resolving doubts against their correctness.
Likewise, we may not resolve doubts in favor of the Patent
Office determination when there are deficiencies in the record
as to the necessary factual bases supporting its legal conclusion
of obviousness.
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Appeal2013-005525
Application 11/054, 772
In re Warner, 379 F.2d at 1017.
With respect to core factual findings in a determination of
patentability, ... the Board cannot simply reach conclusions
based on its own understanding or experience---or on its
assessment of what would be basic knowledge or common
sense. Rather, the Board must point to some concrete evidence
in the record in support of these findings. To hold otherwise
would render the process of appellate review for substantial
evidence on the record a meaningless exercise.
In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001).
CONCLUSIONS OF LAW
The rejection of claims 1, 6, 8-10, 14--16, 28, and 30-33 under
35 U.S.C. § 103(a) as unpatentable over Buck, Yu, and Official Notice is
improper. 2
DECISION
The rejection of claims 1, 6, 8-10, 14-16, 28, and 30-33 is reversed.
REVERSED
2 Should there be further prosecution of this application (including any
review for allowance), the Examiner may wish to review the claims for
compliance under 35 U.S.C. § 101 in light of the recently issued preliminary
examination instructions on patent eligible subject matter. See "Preliminary
Examination Instructions in view of the Supreme Court Decision in Alice
Corporation Pty. Ltd. v. CLS Bank International, et al.," Memorandum to
the Examining Corps, June 25, 2014 and the July 2015 updates.
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