Ex Parte Newman et alDownload PDFPatent Trials and Appeals BoardJul 1, 201913553186 - (D) (P.T.A.B. Jul. 1, 2019) Copy Citation 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 Appeal2018-006083 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."). 3 Appeal2018-006083 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 4 Appeal2018-006083 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 5 Appeal2018-006083 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; 6 Appeal2018-006083 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 Appeal2018-006083 Application 13/553, 186 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. 8 Appeal2018-006083 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"). 9 Appeal2018-006083 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. 10 Appeal2018-006083 Application 13/553, 186 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 11 Copy with citationCopy as parenthetical citation