Ex Parte Massarik

Patent Trials and Appeals Board

Apr 4, 2019

14849214 - (D) (P.T.A.B. Apr. 4, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/849,214 09/09/2015 Michael Massarik
24126 7590 04/08/2019
ST. ONGE STEW ARD JOHNSTON & REENS, LLC
986 BEDFORD STREET
STAMFORD, CT 06905-5619
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.
06433-POOOlB 6109
EXAMINER
NGUYEN, THUY-VI THI
ART UNIT PAPER NUMBER
3664
NOTIFICATION DATE DELIVERY MODE
04/08/2019 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):
patentpto@ssjr.com
PTOL-90A (Rev. 04/07)
UNITED ST ATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL MASSARIK
Appeal2018-001464 1
Application 14/849 ,2142
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and
BRADLEY B. BAY AT, Administrative Patent Judges.
BAY AT, Administrative Patent Judge.
DECISION ON APPEAL
Michael Massarik("Appellant") appeals under35 U.S.C. § 134(a)
from the Examiner's final decision rejecting claims 1 and 3-21, which are
the only claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.
1 Our Decision references Appellants' Appeal Brief(" Appeal Br.," filed
May 19, 2017), Reply Brief ("Reply Br.," filed Nov. 21, 2017), as well as
the Examiner's Answer ("Ans.,"mailed Sept. 22, 2017) and Final Office
Action ("Final Act.," mailed Oct. 19, 2016).
2 According to the Appellants, the real party in interest is Fastgive
Incorporated. AppealBr. 2.
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STATEMENT OF THE CASE
Claimed Subject Matter
Appellant's "invention relates toe-philanthropy, specifically to online
marketplaces, exchanges, and transactions in a social networking
environment." Spec. ,r 1. Claims 1, 12, and 15 are independent.
Independent claim 15, reproduced below with added bracketed matter,
is illustrative of the subject matter on appeal.
15. A method for generating metrics reflecting a
charity's fiscal behavior and fmancial effectiveness, comprising
the steps of:
[(a)] initiating a network interface controller to establish
communication connections between at least one metrics server
and a frrst database and a second database;
[ (b)] retrieving profile information on a charity from the
frrst database and fmancial information on the charity from the
second database;
[ ( c)] analyzing the fmancial information on the metrics
server to obtain data on a total amount of contributions received
by the charity in a given tax period and data on a total amount
of contributions spent by the charity in advancing a cause of the
charity in the given tax period;
[ ( d)] generating a frrst score using the data on the total
contributions received amount and the total contributions spent
amount, the frrst score indicating how effective the charity is in
dispersing funds for goods and/ or services related to the cause
of the charity, and the frrst score being determined as a ratio of
the total contributions received amount to the total
contributions spent amount; and
[ ( e)] transmitting the frrst score from the metrics server
to at least one terminal for display.
Appeal Br. 27-28.
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Rejections
1. Claims 1 and 3-21 are rejected under 3 5 U.S. C. § 101 as
directed to a judicial exception without significantly more.
2. Claims 1,3-8, 10, 11, 15-19,and21 arerejectedunder35
U.S. C. § 103 as unpatentable over Gruber (US 2004/0122682 Al, pub.
June 24, 2004) and Charity Navigator
(https://web.archive.orglweb/20100118142820/www.charitynavigator.org/in
dex. cfm ?bay=content. view &cpid=84 7).
3. Claims 9, 12-14, and 20 are rejected under 35 U.S.C. § 103 as
unpatentable over Gruber, Charity Navigator, and Charity Choices
(http://web.archive.orglweb/20040214150832/http://charitychoices.com/cate
gories/all.asp ).
ANALYSIS
35 USC§ 101
All claims are argued together as a group. See Appeal Br. 6-14. We
select claim 15 as the representative claim for the group. Thus, claims 1, 3-
14, and 16-21 stand or fall with claim 15. 37 C.F.R. § 4I.37(c)(l)(iv).
An invention is patent-eligible if it claims a "new and useful process,
machine, manufacture, or composition of matter." 35 U.S. C. § 101. But the
Supreme Court has long interpreted 3 5 U.S. C. § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g.,Alice Corp. v. CLSBanklnt'l, 573 U.S. 208,216
(2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, frrst described in
Mayo and further clarified in Alice. Id. at217-18 (citing Mayo
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Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)).
According to that framework, we frrst determine what concept the
claim is "directed to." See Alice, 573 U.S. at219 ("On their face, the claims
before us are drawn to the concept of intermediated settlement, i.e., the use
of a third party to mitigate settlement risk."); see also Bilski v. Kappas, 130
S. Ct. 3218(2010) ("Claims 1 and 4 in petitioners' application explain the
basic concept of hedging, or protecting against risk.").
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at2l9-20;Bilski, 130 S. Ct. 3218
(2010)); mathematical formulas (Parkerv. Flook, 437 U.S. 584, 594--95
(1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69
(1972)). Concepts determined to be patent eligible include physical and
chemical processes, such as "molding rubber products" (Diamond v. Di ehr,
450 U.S. 175, 191 (1981)); "tanning, dyeing, making water-proof cloth,
vulcanizing India rubber, smelting ores" (id. at 183 n.7 (quoting Corningv.
Burden, 56 U.S. 252, 267---68 (1854))); and manufacturing flour (Benson,
409 U.S. at69 (citing Cochranev. Deener, 94 U.S. 780, 785 (1876))).
In Di ehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that"[ a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula." Diehr,450U.S. at 176;see also id. at 191 ("We
view respondents' claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula."). Having
said that, the Supreme Court also indicated that a claim "seeking patent
protection for that formula in the abstract ... is not accorded the protection
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of our patent laws, ... and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment." Id. (internal citation omitted) (citing Benson andFlook); see,
e.g., id. at 187 ("It is now commonplace that an application of a law of
nature or mathematical formula to a known structure or process may well be
deserving of patent protection.").
If the claim is "directed to" an abstract idea, we tum to the second
step oftheAlice andMayo framework, where "we must examine the
elements of the claim to determine whether it contains an 'inventive
concept' sufficient to 'transform' the claimed abstract idea into a patent-
eligible application." Alice, 573 U.S. at 221 ( citation omitted). "A claim
that recites an abstract idea must include 'additional features' to ensure 'that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). "[M]erelyrequir[ing]
generic computer implementation[] fail[ s] to transform that abstract idea into
a patent-eligible invention." Id.
USPTO § 101 Guidance
The United States Patent and Trademark Office (USPTO) recently
published revised guidance on the application of§ 101. USPTO's 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("Guidance"). Under the Guidance, we first look to whether the claim
recites:
(1) Guidance Step 2A- ProngOne: any judicial exceptions, including
certain groupings of abstract ideas (i.e., mathematical concepts,
certain methods of organizing human interactions such as a
fundamental economic practice, or mental processes); and
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(2) Guidance Step 2A- Prong Two: additional elements that integrate
the judicial exception into a practical application, i.e., the claim
"appl[ ies], rel[ ies] on, or use[ s] the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the
claim is more than a drafting effort designed to monopolize the
judicial exception." (Guidance 54, see also MPEP § 2106.05(a}-(c),
(e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
( 4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance at 51-56.
Step 2A - Prong One
Independent claim 15 recites a "method for generating metrics
reflecting a charity's fiscal behavior and fmancial effectiveness" comprising
the following steps: (a) "initiating a network interface controller to establish
communication connections between at least one metrics server and a frrst
database and a second database;" (b) "retrieving profile information on a
charity from the frrst database and fmancial information on the charity from
the second database;" ( c) "analyzing the fmancial information on the metrics
server to obtain data on a total amount of contributions received by the
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charity in a given tax period and data on a total amount of contributions
spent by the charity in advancing a cause of the charity in the given tax
period;" ( d) "generating a frrst score using the data on the total contributions
received amount and the total contributions spent amount, the frrst score
indicating how effective the charity is in dispersing funds for goods and/ or
services related to the cause of the charity, and the frrst score being
determined as a ratio of the total contributions received amount to the total
contributions spent amount;" and ( e) "transmitting the frrst score from the
metrics server to at least one terminal for display." Steps ( c) and ( d), under
the broadest reasonable interpretation, recite mathematical calculations. As
to step ( c ), analyzing fmancial information to obtain a total amount of
contributions spent by the charity is a mathematical calculation, namely a
summation calculation. See Spec. ,r 91 ("The total amount spent towards the
charity's cause/mission, Cs, can be calculated from the sum of the total
grants given to the government (EG), the total grants given to individuals
(E1), and the total grants given to foreign governments (EF ). ") As to step ( d),
generating a frrst score is a mathematical calculation because the score is
"determined as a ratio of the total contributions received amount to the total
contributions spent amount," and the calculation of the ratio is essentially a
division calculation. See Spec. ,r 89 ("metrics generator 602, in particular, is
configured to generate an objective (non-subjective) score 632 showing how
effective the charity is in conducting business for promoting its
cause/mission.") Paragraph 90, reproduced below, describes Equation (1 ),
which is used to calculate score 632 which is "also known as a 'Fastgiving
Number."' (Id. ,r 89).
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[0090] Fastqivi:nq Nurnber = c11 = Cp (1)
~ ···- Cs (Et;+Er+Ep)
Independent claim 1 recites a system for generating metrics reflecting a
charity's fiscal behavior and fmancial effectiveness, the system comprising:
(a) at least one metrics server; ( c) at least one metrics generator; and ( d) a
network interface controller. The components of claim 1 are configured for
performing similar steps as the method of claim 15. Independent claim 12
recites a system similar to the system of claim 1, with the additional element
of "a web host unit which hosts a website providing an online marketplace
for charities and patrons ... "
Accordingly, we conclude that each of independent claims 1, 12, and
15 recites a mathematical calculation, which is one of the mathematical
concepts identified in the Guidance, and thus an abstract idea. See Guidance
at 52.
Step 2A - Prong Two
We agree with the Examiner that the "claims are not focused on
specific means that improve the relevant technology" and merely use generic
computer components as tools to implement the abstract idea. In view of
Appellant's Specification, and consistent with the Examiner's
determinations, we conclude that the claims do not integrate the judicial
exception into a practical application. The claimed steps of "initiating,"
"retrieving," "analyzing," "generating," and "transmitting" amount to using
a computer for its basic functions. See Bancorp Services, L.L. C. v. Sun Life
Assur. Co. of Canada (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he
use of a computer in an otherwise patent-ineligible process for no more than
its most basic function--making calculations or computations--fails to
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circumvent the prohibition against patenting abstract ideas and mental
processes."); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) ( stating "[ t ]hat a computer receives and sends the information over a
network--with no further specification--is not even arguably inventive");
and, GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir.
2015) ("relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible").
Without additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible. "If a claim is directed essentially to a
method of calculating, using a mathematical formula, even if the solution is
for a specific purpose, the claimed method is nonstatutory." Parker v. Flook,
437 U.S. 584 (1978) (internal quotations omitted).
We determine the claims do not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a different
state or thing; or
( v) other meaningful limitations beyond generally linking the use
of the abstract idea to a particular technological environment.
See MPEP §§ 2106.05(a}-(c), (e}-(h). We agree with the Examiner that the
claims are directed to a judicial exception. Cf Bancorp Servs., L.L. Cv. Sun
LifeAssur. Co. of Canada (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
("[T]he use of a computer in an otherwise patent-ineligible process for no
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more than its most basic function - making calculations or computations -
fails to circumvent the prohibition against patenting abstract ideas and
mental processes.").
Step2B
Applying step 2 of the Alice/Mayo framework, the Examiner
concludes that the claims recite generic "computer elements (e.g. metrics
server, metrics generator) which do not add a meaningful limitation to the
abstract idea because they would be routine in any computer
implementation." Final Act. 3. The Examiner indicates that Appellant's
Specification "does not provide any details about the specific structure about
the metric server and metrics generator." Id. at 24. The Examiner also
indicates that "using a network interface controller to establish
communication connections between the server and databases" amounts to
"well-understood, routine and conventional activities previously known to
the industry." Id. at 3, 24. And the Examiner determines that '"transmitting
the score' is merely data gathering and thus is considered as insignificant
extra solution activity." Id.
We agree with the Examiner.
The Specification describes the claimed computer components in
purely generic and functional terms. No technical details are disclosed. As
to the claimed "metrics server," Figures 11-13 depict performance metrics
server 600 as comprising metrics generators 602 and 604, network interface
606, memory storage 608, and ( optionally) web host 610. The Specification,
at paragraphs 82-97, describes metrics server 600 in purely functional terms.
For example, server 600 communicates "with one or more user terminal( s)
or workstation(s) 640." Id. ,r 82. The function of metrics generators 602
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and 604 is "analyzing the fmances of a charity and determining objective
performance metrics related to the fmancial effectiveness of the charity." Id.
,r 87. As to the claimed "network interface controller," the Specification
discloses that "network interface 606 comprises any standard hardware
and/ or software for connecting and communicating between devices." Id.
Metrics server 600 also includes "memory storage unit 608 for local storage
of the fmancial data and the generated performance metrics of the charity."
Id. Optionally, metrics server 600 includes a web host unit, described as "a
web host unit or module 610 to perform all necessary hosting functions,"
such as patron registration, charity registration, and "the display of the
charity pages to one or more patrons visiting the website." Id. Cf In re TL!
Commc'ns LLCPatentLitig., 823 F.3d607, 612 (Fed. Cir. 2016) ("The
specification does not describe a new telephone, a new server, or a new
physical combination of the two. The specification fails to provide any
technical details for the tangible components, but instead predominately
describes the system and methods in purely functional terms.").
Appellant's Arguments
Appellant argues that "[ t ]he claims recite specific steps and features
that address problems unique to computers and the internet," namely "the
problem of asymmetry of information between charities and potential
donors." Appeal Br. 7. According to Appellant, "[t]his problem is uniquely
exacerbated by the nature of the internet" because " [ o ]n the internet, there
are virtually no barriers to the creation of fraudulent websites seeking
donations from unsuspecting patrons." Id.
Appellant's argument is not persuasive at least because it is not
commensurate with the scope of the claims, which do not recite any
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"fraudulent websites." Indeed, the claims do not require that any charity
engages in marketing via websites or the Internet. Fraudulent or inaccurate
information is a problem that pre-dates the Internet, and is not a problem
"unique to computers and the internet." Moreover, as discussed above,
Appellant's solution to the problem is to calculate and display a score for a
charity. "If a claim is directed essentially to a method of calculating, using a
mathematical formula, even if the solution is for a specific purpose, the
claimed method is nonstatutory." Flook,437U.S. 584,595 (quotingln re
Richman, 563 F.2d 1026, 1030 (CCPA 1977)).
Appellant argues that "[ t ]he claim does not simply recite the
performance of a mathematical operation" because the claims recite "a
metrics server for retrieving fmancial information about a charity from a
database, a metrics generator for analyzing the information and generating a
frrst score, and a network interface controller that transmits the score for
display." Appeal Br. 12. According to Appellant, "[t]he 'inventive concept'
of the present invention lies in the creation of an objective score from
specific data related to a charity that has been collected by a metric server."
We are not persuaded that any of the argued limitations amount to
significantly more than the abstract idea. As to the frrst element, a server
retrieving information from a database is not an inventive concept- even
when limited to retrieving a specific type of information (e.g., fmancial
information on the charity) from a specific source (e.g., "a frrst database
over the network."). Cf SAP America, Inc. v. Investpic, LLC, 898 F.3d
1161, 1167 (Fed. Cir. 2018) ("Contrary to InvestPic's suggestion, it does not
matter to this conclusion whether the information here is information about
real investments. As many cases make clear, even if a process of collecting
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and analyzing information is "limited to particular content" or a particular
"source," that limitation does not make the collection and analysis other than
abstract.") ( quotingElectri c Power Group, LLC v. Alstom S.A., 830 F. 3d
1350, 1355 (Fed. Cir. 2016)) (citing cases). As to the second element, as
explained supra, a metrics generator analyzing information and generating a
frrst score is a mathematical calculation and thus part of the abstract idea
itself. Cf Flook, 437 U.S. 584,592 ("We think this case must also be
considered as if the principle or mathematical formula were well known.").
As for the third element, a generic network interface controller (see Spec.
,r 87) transmitting information for display is not even arguably inventive.
Cf BuySAFEv. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a
computer receives and sends the information over a network - with no
further specification - is not even arguably inventive.").
Appellant next argues that "the invention addresses the problem of
information asymmetry in the context of charities and potential donors" and
"[ t ]here is no evidence that this inventive concept or the manner in which it
is implemented is conventional" because "the prior art does not anticipate
the claims or render them obvious." Appeal Br. 13. According to
Appellant, "Applicant has identified unconventional steps for generating
metrics reflecting a charity's fiscal behavior and financial effectiveness, and
has arranged them in an unconventional way." Id.
However, Appellant does not identify anything unconventional about
the arrangement of the computer components (e.g., "metrics server" and
"network interface controller") in any of the claims. To the extent that
Appellant maintains that certain claim limitations necessarily amount to
"significantly more" than the abstract idea because the limitations are
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allegedly patentable over the prior art, Appellant misapprehends the
controlling precedent. Although the second step in the Alice framework is
termed a search for an "inventive concept," the analysis is not an evaluation
of novelty or nonobviousness, but rather, a search for "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, 573 U.S. at217-18 (alteration in original) (quoting
Mayo, 566 U.S. at 72-73). In other words, a novel andnonobvious claim
directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566U.S. at 89-90(rejectingthe suggestion that Sections 102,103,
and 112 might perform the appropriate screening function and noting that in
Mayo such an approach "would make the 'law of nature' exception ... a
dead letter"); see also Genetic Techs. Ltd. v. Meri al L.L. C., 818 F.3d 1369,
1376 (Fed. Cir. 2016) ("[U]nderthe Mayo/Alice framework, a claim
directed to a newly discovered law of nature ( or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility .... "). "Groundbreaking,
innovative, or even brilliant discovery does not by itself satisfy the § 101
inquiry." Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576,591 (2013). Indeed, "[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-
189 (1981).
Appellant further argues that "there is no risk that the claims will
preempt all uses of any abstract idea or any tool of innovation" because
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"they are limited to a specific implementation by a metrics server and its
specific interactions with other servers and terminals" and "recite a very
specific invention and will not deprive others of all ways of generating
metrics reflecting a charity's fiscal behavior and financial effectiveness."
Appeal Br. 13.
"The Supreme Court has made clear that the principle of preemption
is the basis for the judicial exceptions to patentability" and "[fJorthis reason,
questions on preemption are inherent in and resolved by the § 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 573 U.S. at 216). "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the [Alice] framework,
as they are in this case, preemption concerns are fully addressed and made
moot." Id. Even though "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Id.; see also GIP Techs., 788 F.3d at 1362---63 ("[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.").
Thus, we are not persuaded of error in the Examiner's determination
that claim 15 is directed to an abstract idea without significantly more.
Accordingly, we sustain the rejection independent claim 15 under 35 U.S.C.
§ 101, and claims 1, 3-14, and 16-21, which fall with claim 15.
35 USC§ 103(a)
Claim 1 recites, in part, generating a frrst score using "a total amount
of contributions received by the charity in a given tax period and data on a
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total amount of contributions spent by the charity in advancing a cause of the
charity in the given tax period." Appeal Br. 23 (Claims App.) (emphasis
added).
In rejecting claim 1 as obvious over Gruber and Charity Navigator,
the Examiner fmds that Gruber discloses said limitation in Figure 3 and
paragraphs 27, 33, 34. See Final Act. 5---6. In particular, the Examiner
indicates:
Noted that the budgets are interpreted to be the "total
amount of contributions"; the actual charitable cause is
interpreted to be a "total amount of contributions spent [by] the
charity in advancing a cause of the charity"; and the 60% is a
frrst score which indicates how effective the charity is in
dispersing funds for goods and/ or service related to the causes
of the charity.
Id. at 6.
Appellant argues that "[t]here is no evidence that the 'budget' referred
to in Gruber is the 'total amount of contributions received in a given tax
period' as claimed." Appeal Br. 1 7.
Responding to Appellant's argument in the Answer, the Examiner
states that "the claim also is broad about the tax period without specific
defmition ofhow long the tax period is." Ans. 29.
We agree with Appellant. We have reviewed the cited portions of
Gruber and we fmd no disclosure of calculating a budget percentage in a
given tax period.
Paragraph 27 of Gruber discloses a "decision block 208 where it is
determined if the nonprofit organization has complied with state and federal
laws." As one of the compliance checks, a validator "checks if the nonprofit
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has filed required documents in the appropriate state agencies, such as an
annual fmancial report as required by most states."
Paragraph 33 discloses that "in step 304, the validator checks the
nonprofit' s fmancial data and/ or performance" and"[ t ]he fmancial
information can be obtained from an organization such as Dunn &
Bradstreet (D&B) or other sources." As part of step 3 04, the validator
calculates a "percentage of the total amount of money raised on
administrative and overhead costs" which is indicative of whether "the
nonprofit's activities are appropriately benefiting the charities."
Paragraph 34 discloses that "if the nonprofit spends more than 40% of
its budget on fundraising and administrative cost and less than 60% on
actual charitable cause, it may indicate the nonprofit is self-serving or
inefficient."
We see no disclosure in the above portions of Gruber to indicate that
step 304 involves calculating a budget percentage for a given tax period as
required by claim 1. Although we agree with the Examiner that claim 1 does
not recite any "specific defmition of how long the tax period is," claim 1
explicitly calls for calculating the score using only data "in a given tax
period." The cited portions of Gruber do not disclose limiting the analysis at
step 304 to any given tax period, or to any given time period at all. For
example, although paragraph 27 mentions that "annual fmancial reports"
may be filed with a state, there is no disclosure of using the annual fmancial
reports in step 304, for example, to calculate a budget percentage for a given
(tax) year.
Independent claims 12 and 15 contain a similar limitation. Appeal
Br. 26-27. In rejecting independent claims 12 and 15, the Examiner relies
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on the same deficient fmding discussed above. See Final Act. 12, 15. The
Examiner does not rely on any of the other references ( Charity Navigator
and Charity Choices) to cure the deficiency of Gruber. See Final Act. 4--20.
Accordingly, we do not sustain the rejection of independent claims 1,
12, and 15 under 35 U.S.C. § 103(a). For the same reasons, we also do not
sustain the rejection of dependent claims 3-21. Cf In re Fritch, 972 F .2d
1260, 1266 (Fed. Cir. 1992) ("[D]ependent claims are nonobvious if the
independent claims from which they depend are nonobvious") ( citations
omitted).
DECISION
The Examiner's rejection of claims 1 and 3-21 under 35 U.S.C.
§ 101 is AFFIRMED.
The Examiner's rejections of claims 1 and 3-21 under
35 U.S.C. § 103 are REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
18