Ex Parte Liao et al

Patent Trial and Appeal Board

May 10, 2018

13836520 (P.T.A.B. May. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/836,520 03/15/2013 WenhuiLiao
25764 7590 05/14/2018
Faegre Baker Daniels LLP
PA TENT DOCKETING - INTELLECTUAL PROPERTY
2200 WELLS FARGO CENTER
90 SOUTH SEVENTH STREET
MINNEAPOLIS, MN 55402-3901
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.
473715.000028 1564
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
05/14/2018 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):
PatentDocketing@FaegreBD.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WENHUI LIAO,
MASOUD MAKREHCHI, and SAMEENA SHAH
Appeal2017-000616 1
Application 13/836,5202
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MATTHEWS. 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, 2, 4--11, and 13-22. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief ("Appeal Br.," filed
April 11, 2016) and Reply Brief ("Reply Br.," filed October 10, 2016), the
Examiner's Answer ("Ans.," mailed August 23, 2016), and Final Office
Action ("Final Act.," mailed October 9, 2015).
2 Appellants identify Thomson Reuters Global Resources as the real party in
interest (Appeal Br. 2).
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Application 13/836,520
CLAIMED INVENTION
Appellants' claims "relate to mining messages provided over
networks for references to successful risk/return-related decisions such as
indications of successful securities trades. The risk/return-related messages
are analyzed to identify messaging users that regularly or semiregularly
generate messages having references to risk/return-related decisions"
(Spec. if 2).
Claims 1, 13, and 19 are the independent claims on appeal. Claim 1
reproduced below (with bracketed lettering added), is illustrative of the
subject matter on appeal:
1. A computer-implemented method for facilitating an
assessment of future performance of an item or entity, the
method comprising:
[a] accessing, using a computing device having a
processor and a memory, a plurality of social media messages
from a message source comprising a platform that enables users
to share information with groups of other users through a
network;
[b] identifying, within the plurality of messages and using
the processor, a plurality of predictive trading-related messages
relating to the item or entity, wherein the plurality of predictive
trading-related messages originates from a set of messaging
users;
[ c] identifying, within the set of messaging users and using
the processor, a first return advisor and a second return advisor
by analyzing the plurality of predictive trading-related messages;
[ d] evaluating, using the processor, a performance of the
first return advisor, wherein evaluating the performance of the
first return advisor comprises analyzing a first set of predictive
trading-related messages generated by the first return advisor;
[ e] evaluating, using the processor, a performance of the
second return advisor, wherein evaluating the performance of the
second return advisor comprises analyzing a second set of
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predictive trading-related messages generated by the second
return advisor;
[ f] assigning, using the processor, a ranking to the first
return advisor and a ranking to the second return advisor,
wherein the rankings are based on the performances of the first
and second return advisors;
[g] storing the rankings in the memory;
[h] performing an assessment of the future performance of
the item or entity based on the rankings;
[i] providing a securities trade decision recommendation
based on at least the assessment of the future performance of the
item or entity; and
rn generating, using the securities trade decision
recommendation, at least one of a securities portfolio and a
securities fund.
REJECTION
Claims 1, 2, 4--11, and 13-22 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
ANALYSIS
Appellants argue claims 1, 2, 4--11, and 13-22 as a group (see Appeal
Br. 9-13; see also Reply Br. 1-5). We select independent claim 1 as
representative. The remaining claims stand or fall with claim 1. See 37
C.F.R. § 41.37(c)(l)(iv).
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
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The "directed to" inquiry ... cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon-after all, they take place in the physical world.
See Mayo [Collaborative Servs. v. Prometheus Labs. Inc., 566
U.S. 66, 71 (2012)] ("For all inventions at some level embody,
use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.") Rather, the "directed to" inquiry
applies a stage-one filter to claims, considered in light of the
specification, based on whether "their character as a whole is
directed to excluded subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed.Cir.2015); see
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1375, 2016
WL 1393573, at *5 (Fed.Cir.2016) (inquiring into "the focus of
the claimed advance over the prior art").
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). "The
'abstract idea' step of the inquiry calls upon us to 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) (citing Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)); Enfzsh,
822 F.3d at 1335.
In rejecting independent claim 1, the Examiner determines the claims
are directed to "a method of organizing human activity such as that
identified in Alice and Planet Bingo" (Final Act. 4), and more particularly,
"directed to the abstract idea of performance evaluation" (Ans. 3). The
Examiner takes the position that "the abstract idea is an attempt to solve the
problem of 'capturing and benefitting from, an individuals' insight over an
extended period of time"' (id. (citing Spec. i-f 1) ).
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In response, Appellants argue that "[ t ]he Examiner has failed to make
a prima facie showing that the claims are directed to an abstract method of
organizing human activity" (Appeal Br. 9 (emphasis omitted); see also
Reply Br. 3--4). We cannot agree.
By way of background, the Examiner determines the claims are
"directed to evaluating performance as evidenced" based on a portion of
independent claim 1 which recites: " ... evaluating, ... , a performance of
the first/second return advisor ... comprises analyzing a first set of
predictive trading-related messages generated by the first/second return
advisor; assigning ... a ranking to the ... advisor, performing an assessment
of the future performance" (Final Act. 3). In making this determination, the
Examiner states
the accessing and identifying steps are merely data gathering
steps and are considered insignificant extra[-]solution activity as
is the storing step, none of which may be considered
unconventional. The additional limitation of claim 1 of
providing a securities trade decision recommendation is merely
a transmission of information and is a conventional post-solution
activity to data gathering and processing steps. Generating a
securities portfolio or fund based on a recommendation is also a
post-solution activity conventional in the field.
(Id. at 4). Thus, we determine initially the Examiner has adequately
articulated that the claims are directed to an abstract idea.
To the extent Appellants argue that the Examiner erred in adequately
supporting this determination by "simply conclud[ing]-without any
rationale-that the claims are directed to evaluating performance and that
evaluating performance is a method of organizing human activity" (Appeal
Br. 9; see also Reply Br. 3--4), we are unpersuaded. In this regard, there is
no requirement that examiners must provide evidentiary support in every
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case before a conclusion can be made that a claim is directed to an abstract
idea. See, e.g., para. IV, "JULY 2015 UPDATE: SUBJECT MATTER
ELIGIBILITY" to 2014 INTERIM GUIDANCE ON PATENT SUBJECT MATTER
ELIGIBILITY (2014 IEG), 79 Fed. Reg. 74618 (Dec. 16, 2014):
The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.[]
Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any
factual findings.
(Emphasis added.) We agree that evidence may be helpful in certain
situations where, for instance, facts are in dispute. But it is not always
necessary. Based on the above analysis set forth by the Examiner, we are
unpersuaded it is necessary in this case.
Instead, we need only look to other decisions where similar concepts
were previously found abstract by the courts. See Amdocs (Israel) Limited v.
Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("Instead of a
definition [for what an 'abstract idea' encompasses], then, the decisional
mechanism courts now apply is to examine earlier cases in which a similar
or parallel descriptive nature can be seen-what prior cases were about, and
which way they were decided.")
To that end, as noted above, the Examiner determines the claims are
directed to "the abstract idea of performance evaluation" (Ans. 3), and
includes steps for analyzing messages, ranking, and performing an
assessment of future performance (see Final Act. 3). Broadly, we agree that
the Examiner is correct in articulating that the claims are directed to an
abstract idea.
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According to Appellants' Specification,
the present invention facilitate enhanced assessments of the
future performance of an item or entity through the actions and
analysis of multiple decision makers particularly in view of their
individual successes. For example, embodiments of the present
invention relate to mining messages provided over networks for
references to successful risk/return-related decisions such as
indications of successful securities trades. The risk/return-
related messages are analyzed to identify messaging users that
regularly or semiregularly generate messages having references
to risk/return-related decisions. These messaging users are
referred to herein as return advisors. In embodiments, the return
advisors are evaluated and ranked based on potential returns
associated with their risk/return-related decisions, which may
also be evaluated and/or ranked. These rankings may be used to
provide risk/return-related services.
(Spec. i-f 2). The Specification further discloses that "capturing, and
benefiting from, an individual's insight over an extended period of time has
been difficult to accomplish" (id. i-f 3). And, taking independent claim 1 as
representative, the claimed subject matter is generally directed to "[a]
computer-implemented method for facilitating an assessment of future
performance of an item or entity" including steps for "accessing ...
messages," "identifying, within the plurality of messages ... , a plurality of
predictive trading-related messages relating to the item or entity, wherein the
plurality of predictive trading-related messages originates from a set of
messaging users," "identifying, within the set of messaging users ... , a first
return advisor and a second return advisor by analyzing the plurality of
predictive trading-related messages," "evaluating ... a performance of the
first [and second] return advisor[s]" by analyzing a set of messages
generated by each advisor, "assigning ... a ranking to the first [and second]
return advisor[s] ... based on the[ir] performances," "storing the rankings,"
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"performing an assessment of the future performance of the item or entity
based on the rankings," "providing a securities trade decision
recommendation based on at least the assessment," and "generating ... a
securities portfolio [or] a securities fund" based on the recommendation (see
Appeal Br. 15, Claims App'x.).
In this regard, we find that the claims are more precisely directed to a
method of assessing the future performance of an item or entity based on
performance evaluation in order to create a transaction, although we do not
discern that any gap between this finding and that of the Examiner is of any
substantive significance. Furthermore, we are persuaded that either
articulation of what the claims are "directed to" is a method of organizing
human activity, which, like the concept of risk hedging in Bilski, falls
squarely within the realm of abstract ideas. See Alice, 134 S. Ct. at 2356;
Bilski v. Kappos, 561 U.S. 593, 611 (2010); see also Accenture Glob. Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1339 (Fed. Cir. 2013)
(claim to maintaining an "insurance transaction database containing
information related to an insurance transaction decomposed into a plurality
of levels" and "allowing an authorized user to edit . . . and to update the
information related to the insurance transaction" held to be an abstract idea).
We are not persuaded by Appellants' argument that the Examiner
erred by overgeneralizing the claims in determining that the claims are
broadly directed to "evaluating performance" in light of Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016) (see Reply Br.
1-3; see also Appeal Br. 11-12). More particularly, Appellants argue that
"broadly characterizing Appellant[s'] claims as being directed to 'evaluating
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performance' is legal error in view of Enfzsh because the claims recite
features that are either directed to concepts not embodied by 'evaluating
performance' or that are specific steps for 'evaluating performance"' (id. at
2). However, other than quoting the limitations of claim 1 (see id.),
Appellants do not adequately explain in their briefs why the Examiner erred
in characterizing the claim as being directed to the abstract idea of
"performance evaluation" (Ans. 3) by analyzing messages, ranking, and
performing an assessment of future performance (see Final Act. 3).
In Enfzsh, the court explained, "the first step in the Alice
inquiry ... asks whether the focus of the claims is on the specific asserted
improvement in computer capabilities ... or, instead, on a process that
qualifies as an 'abstract idea' for which computers are invoked merely as a
tool." Id. at 1335-36. Here, we find the present claims are plainly of the
second category, and the "focus of the claims," is on "evaluating
performance" (Final Act. 3) by analyzing messages, ranking, and performing
an assessment of future performance (see id.), or more precisely, assessing
the future performance of an item or entity based on performance evaluation
in order to create a transaction, and the recited generic computer elements
"are invoked merely as a tool." Id. Thus, we find the present claims are not
similar to the "self-referential table" in Enfzsh, which was a "specific
improvement to the way computers operate" or the "specific asserted
improvement in computer animation, i.e., the automatic use of rules of a
particular type" held to be not abstract in McRO.
Appellants further argue that "the Examiner has not pointed to any
court or art-recognized explanation showing it to be conventional to provide
'a securities trade recommendation based on at least the assessment of the
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future performance of the item or entity"' (Appeal Br. 11 ). However, we
agree with the Examiner that it is well-known that "[i]nvestors typically
perform research or receive recommendations based upon the research of
others" when trading securities. See, e.g., Elec. Power Grp., LLC v. Alstom
S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (claims held to be directed to an
abstract idea where "[ t ]he advance they purport to make is a process of
gathering and analyzing information of a specified content, then displaying
the results, and not any particular assertedly inventive technology for
performing those functions."). We also note that merely combining abstract
ideas does not render the combination any less abstract. Cf Shortridge v.
Found. Constr. Payroll Serv., LLC, No. 14-CV-04850-JCS, 2015 WL
1739256 (N.D. Cal. Apr. 14, 2015), aff d, 655 F. App'x 848 (Fed. Cir.
2016).
Thus, because we find that what independent claim 1 is "directed to"
is similar to other claims found by the courts to be "directed to" abstract
ideas, we are unpersuaded that the Examiner erred in asserting that
independent claim 1 is directed to an abstract idea.
Turning to the second step of the framework, we find unpersuasive
Appellants' argument that the claims "recite an 'inventive concept'-here, a
combination of steps or functions-that amounts to significantly more than
simply 'evaluating performance"' (Appeal Br. 10 (citing Alice, 134 S. Ct. at
2355)). More particularly, Appellants argue that "the Examiner's
characterization of Appellants' claims as being directed to 'evaluating
performance' is improper for ignoring several claim features-and as a result,
Appellants' claims necessarily recite an "inventive concept' that goes
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beyond merely 'evaluating performance"' (Appeal Br. 10; see also Reply
Br. 3).
However, Appellants' argument does not establish that the argued
limitations add inventiveness, as opposed to the application of conventional,
well-known analytical steps. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
7 09, 716 (Fed. Cir. 2014) ("[T]he claimed sequence of steps comprises only
'conventional steps, specified at a high level of generality,' which is
insufficient to supply an 'inventive concept."') (Citing Alice, 134 S. Ct. at
2357) (internal citations omitted). Nor do Appellants provide evidence that
the programming related to each of their process steps entails anything
atypical from conventional programming.
We also note there is no indication in the record that any specialized
computer hardware or other "inventive" computer components are required.
In this regard, we note that the Specification discloses utilizing either
"specialized computing devices or general-purpose computing devices"
(Spec. i-f 19). Thus, independent claim 1 merely employs generic computer
components to perform generic functions, specified at a high level of
generality, which is not enough to transform an abstract idea into a patent-
eligible invention. See Ultramercial, 772 F.3d at 715-16 (holding "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" insufficient to render patent eligibility). Also, considered as an
ordered combination, we are unclear as to how these computer components
add anything that is not already present when the steps of the method are
considered separately.
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Appellants last argue that an inventive concept can be found in the
combination of elements, analogous to the situation in Bascom Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)
(see Reply Br. 3). However, Appellants do not persuasively explain how,
and we do not see how, Appellants' claims parallel the claims in Bascom,
which recited a "non-conventional and non-generic arrangement of known,
conventional pieces" within a network, the arrangement of elements being "a
technical improvement over the prior art ways of filtering." Bascom, 82 7
F.3d at 1350.
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claim 1, and claims 2, 4--11, and 13-22,
which fall with independent claim 1.
DECISION
The Examiner's rejection of claims 1, 2, 4--11, and 13-22 under 35
U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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