Ex Parte Newman et al

Patent Trials and Appeals Board

Jul 1, 2019

13553186 - (D) (P.T.A.B. Jul. 1, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/553, 186 07/19/2012
39689 7590 07/03/2019
Chipperson Law Group, P.C.
25 Green Village Road, Suite 2A
Madison, NJ 07940
FIRST NAMED INVENTOR
Harry Alan Newman
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.
NN0005.009 2300
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/03/2019 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):
RCC@CHIPPERSONLA W.COM
pmp@chippersonlaw.com
ritachip@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARRY ALAN NEWMAN and RICHARD A. COLOMBO
Appeal2018-006083
Application 13/553,186 1
Technology Center 3600
Before DENISE M. POTHIER, CATHERINE SHIANG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
SHIANG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-13, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Introduction
The present invention relates to "determining an average retirement
age index." Spec. ,r 1. Claim 1 is exemplary:
1 Appellants identify Newman Colombo Financial Research, LLC as the real
party in interest. Br. 2.
Appeal2018-006083
Application 13/553, 186
1. A computer-based method for calculating an average retirement age
index of a country comprising the steps of:
(i) calculating, via automatic execution of code by a processing
unit of a computing device, said code stored in a memory of
said computing device, said code programmed to set a first age
value to equal an average beginning employment age of an
average couple, said code programmed to set a second age
value to equal an average retirement age of said average couple,
and said code programmed to set a third age value to equal an
average age of death of said average couple, a cumulative
combined pension of said average couple for each age of said
average couple beginning with said first age value and ending
with said third age value, said calculating performed upon
cumulative combined pension data, at least a portion of said
cumulative combined pension data selected from the group
consisting of a contribution to pension of said average couple, a
growth rate of said pension, withdrawals from said pension, and
combinations thereof, at least a portion of said cumulative
combined pension data derived from statistical data for an
average family living in said country;
(ii) setting, via automatic execution of said code by said processing
unit, said a wealth at death value to equal said cumulative
combined pension calculated for said second age value;
(iii) determining, via automatic execution of said code by said
processing unit or manually, whether said wealth at death value
is greater than or equal to zero;
(iv) if said wealth at death value is greater than or equal to zero,
decreasing, via automatic execution of said code by said
processing unit or manually, said second age value by one and
repeating steps (i) through (iii) until said wealth at death value
is less than zero;
( v) calculating, via automatic execution of said code by said
processing unit, a year of said average retirement age index by
adding one to said second age value; and
( vi) publishing said average retirement age index to said country via
a publicly accessible network.
2
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Application 13/553, 186
Rejection2
Claims 1-13 are rejected under 35 U.S.C. § 101 because they are
directed to patent-ineligible subject matter. Final Act. 10-11.
ANALYSIS
35 us.c. § 101
On this record, the Examiner did not err in rejecting claims 1-13.
Section 101 of the Patent Act provides "[ w ]hoever 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. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural
phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (internal quotation marks
and citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court's two-step framework, described in Mayo
and Alice. Id. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework,
we first determine what concept the claim is "directed to." See Alice, 573
U.S. at 219 ("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, 561 U.S. 593, 611 (2010) ("Claims 1 and 4
2 Throughout this Opinion, we refer to the (1) Final Office Action dated
April 21, 2016 ("Final Act."); (2) Appeal Brief dated January 22, 2017
("Br."); and (3) Examiner's Answer dated June 7, 2017 ("Ans.").
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Application 13/553, 186
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. at 219--20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and
mental processes (Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191
( 1981) ); "tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267---68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, 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, 450 U.S. at 187; 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
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. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now
commonplace that an application of a law of nature or mathematical formula
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Application 13/553, 186
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 of the Alice and Mayo 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]erely requir[ing] generic computer implementation[] fail[ s] to transform
that abstract idea into a patent-eligible invention." Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 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) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1 ); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE ("MPEP") § 2106.05(a}-(c), (e}-(h)) (9th Ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
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
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Application 13/553, 186
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54--56.
Turning to Step 2A, Prong 1 of the Guidance, we agree with the
Examiner that the rejected claims are patent ineligible. See Final Act. 1 O;
Ans. 4--5. In particular, the rejected claims are directed to processes that can
be performed by a human using a pen and paper.
For example, claim 1 (with emphases) recites:
1. A computer-based method for calculating an average retirement
age index of a country comprising the steps of:
(i) calculating, via automatic execution of code by a processing
unit of a computing device, said code stored in a memory of
said computing device, said code programmed to set a first age
value to equal an average beginning employment age of an
average couple, said code programmed to set a second age
value to equal an average retirement age of said average
couple, and said code programmed to set a third age value to
equal an average age of death of said average couple, a
cumulative combined pension of said average couple for each
age of said average couple beginning with said first age value
and ending with said third age value, said calculating
peiformed upon cumulative combined pension data, at least a
portion of said cumulative combined pension data selected from
the group consisting of a contribution to pension of said
average couple, a growth rate of said pension, withdrawals
from said pension, and combinations thereof, at least a portion
of said cumulative combined pension data derived from
statistical data for an average family living in said country;
(ii) setting, via automatic execution of said code by said processing
unit, said a wealth at death value to equal said cumulative
combined pension calculated for said second age value;
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Application 13/553, 186
(iii) determining, via automatic execution of said code by said
processing unit or manually, whether said wealth at death value
is greater than or equal to zero;
(iv) if said wealth at death value is greater than or equal to zero,
decreasing, via automatic execution of said code by said
processing unit or manually, said second age value by one and
repeating steps (i) through (iii) until said wealth at death value
is less than zero;
(v) calculating, via automatic execution of said code by said
processing unit, a year of said average retirement age index by
adding one to said second age value; and
( vi) publishing said average retirement age index to said country via
a publicly accessible network. 3
Claim 1 recites "via automatic execution of code by a processing unit
of a computing device, said code stored in a memory of said computing
device, said code programmed to" and "via automatic execution of said code
by said processing unit" for performing the above italicized functions. 4
However, because all of the italicized functions can be otherwise performed
by a human using a pen and paper, they are like the mental processes in
CyberSource and Synopsys. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) ("All of claim 3's method
steps can be performed in the human mind, or by a human using a pen and
paper. . . . Such a method that can be performed by human thought alone is
merely an abstract idea and is not patent-eligible under§ 101."); Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016) ("[W]e
3 We select claim 1 as the representative claim, and group the remaining
claims accordingly under 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv) ("[T]he failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.").
4 Claim 1 recites an option to manually perform steps (iii) and (iv).
7
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continue to 'treat[ ] 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."') ( citation omitted). As
a result, we conclude claim 1 is directed to mental processes, and thus an
abstract idea. See Guidance, Step 2A, Prong 1 (Groupings of Abstract
Ideas).
Appellants' assertion regarding pre-emption (Br. 13) is unpersuasive,
because "[ w ]hile preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility ....
\\'nere a patent's claims are deemed only to disclose patent ineligible subject
matter under the A1ayo framework, as they are in this case, preemption
concerns are fully addressed and made moot." Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP, 788
F.3d at 1362---63 ("that 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"). 5
Turning to Step 2A, Prong 2 of the Guidance, contrary to Appellants'
assertion (Br. 4--13), the rejected claims do not recite additional elements
that integrate the mental processes into a practical application. In particular,
the additional elements "via automatic execution of code by a processing
unit of a computing device, said code stored in a memory of said computing
device, said code programmed to" and "via automatic execution of said code
5 Appellants argue the Examiner does not "provide ... identification" for the
first, second, and third requirements under Alice. See Br. 6-7. In response,
the Examiner provides further findings and conclusions in the Answer (Ans.
5-10). Because Appellants do not respond to such findings and conclusions,
they have not sufficiently shown Examiner error.
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Application 13/553, 186
by said processing unit" do not integrate the mental processes into a
practical application. Appellants' arguments that "the concept of an average
retirement age of a country did not exist prior to the invention" (Br. 1 O; see
also Br. 11) and
the elements of the claims directed to ... the calculation of a
new and novel index for the average retirement age of a
country. One such element is element (v), i.e., "calculating, via
automatic execution of said code by said processing unit, a year
of said retirement age index by adding one to said second age
value." Another such element is set forth in claim 2 which
states "calculating ... a week of said average retirement age
index.
(Br. 10) are unpersuasive because "a claim for a new abstract idea is still an
abstract idea." Synopsys, 839 F.3d at 1151. "[U]nder the 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 .... " Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016) (citations
omitted). 6
Fmiher, Appellants' argument about the absence of a prior art
rejection (Br. 10-11) is unpersuasive, because a prior art rejection is
deten11ined under 35 U.S.C. § 102 and§ 103, which are different statutory
6 The limitation "publishing said average retirement age index to said
country via a publicly accessible network" in step (vi) merely adds
insignificant extra-solution activity to the abstract idea, and Appellants have
not shown why it transforms the abstract idea into a patentable process. See
Flook, 437 U.S. at 590 ("the presence of [a] specific "post-solution"
activity-the adjustment of the alarm limit to the figure computed according
to the formula" does not "transform an unpatentable principle into a
patentable process").
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Application 13/553, 186
requirements. As the Supreme Court emphasizes: "[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." Diehr, 450 U.S. at 188-89
( emphasis added). Our reviewing court further guides that "[ e ]ligibility and
novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable
Commc 'ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017).
As a result, we conclude the rejected claims do not recite additional
elements that integrate the judicial exception into a practical application.
See Guidance, Step 2A, Prong 2.
Turning to Step 2B of the Guidance (Alice step two), Appellants do
not persuasively argue any specific limitation is not well-understood,
routine, or conventional in the field. Nor do Appellants persuasively argue
the Examiner erred in that aspect. In particular, Appellants' argument about
the absence of prior art rejection (Br. 10-11) is unpersuasive. As discussed
above, a prior art rejection is determined under 35 U.S.C. § 102 and§ 103,
which are different statutory requirements. Likewise, Appellants' argument
that "the elements of calculating a retirement age index for a country are not
even known in the art" (Br. 11) is unpersuasive. As discussed above, "a
claim directed to a newly discovered ... abstract idea[] cannot rely on the
novelty of that discovery for the inventive concept necessary for patent
eligibility .... " Genetic Techs., 818 F.3d at 1376. In any event, Appellants
have not persuasively explain why calculating a new information content
renders the claims patent eligible. As a result, Appellants have not
persuaded us the Examiner erred with respect to the Guidance's Step 2B
analysis. See Guidance, Step 2B.
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Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1-13 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision rejecting claims 1-13.
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). See
37 C.F.R. § 4I.50(f).
AFFIRMED
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