Ex Parte Rakhamimov et al

Patent Trial and Appeal Board

Mar 23, 2018

12210980 (P.T.A.B. Mar. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/210,980 09/15/2008
115191 7590 03/27/2018
Hickman Palermo Becker Bingham I Palantir
1 Almaden Boulevard, Floor 12
San Jose, CA 95113
FIRST NAMED INVENTOR
Dennis Rakhamimov
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.
60152-0022 7595
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/27/2018 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):
usdocket@h35g.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DENNIS RAKHAMIMOV and ERIC POIRIER 1
Appeal2017-000017
Application 12/210,980
Technology Center 3600
Before ST. JOHN COURTENAY III, JOHNNY A KUMAR, and
CATHERINE SHIANG, 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, 3-12, 14--19, 21-23, 25, 26, 28-30, and 32-36, 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
According to the Specification, the present invention relates to
techniques for analyzing large data sets. See generally Spec. 1. Claim 1 is
exemplary:
1 Appellants identify the Real Party in Interest as Palantir Technologies, Inc.
Appeal2017-000017
Application 12/210,980
1. A computer-implemented method comprising:
using dynamic indexing logic programmed in an
application server computer, causing displaying at a client
computer a single graphical user interface window that provides
a) first graphical user controls for selecting a query for
identifying, when the query is evaluated, a set of market
instruments to be included in an index, b) second graphical user
interface controls for selecting how market instruments
included in the index are to be weighted, and c) third graphical
user interface controls for selecting how individual market
values of market instruments included in the index are to be
determined;
wherein at least one of the second graphical user
interface controls specifies using a computational metric that
defines a function that can operate on the first instruments as
input and yield metric output values;
using the application server computer, based on one or
more user selections made through a) the first graphical user
interface controls, identifying, at a first time, a plurality of first
instruments to be included in the index;
using the application server computer, based on one or
more user selections made through b) the second graphical user
interface controls, determining a plurality of first weights based
on computing the metric output values for the instruments using
the function and wherein each of the first weights is associated
with a different instrument in the first instruments;
wherein the first instruments are identified based on
evaluating the query at the first time;
using the application server computer, based on one or
more user selections made through c) the third graphical user
interface controls, determining a plurality of first time series for
the first instruments;
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Application 12/210,980
wherein the first time series comprise individual market
values of the first instruments over a time period of the index,
the time period of the index having a start time;
tracking, based on the first time series and the first
weights, a collective value of the index as a function of time at
least from the start time;
storing, in a physical storage device, at least one of a) the
first weights and the start time, and b) the collective value as
the function of the time; and
using the application server computer, causing
displaying, in the graphical user interface window of the client
computer, a chart of the collective value of the index as a
function of time from at least from the start time;
using the application server computer, evaluating the
same query at a second time to determine one or more second
instruments to be included in the index at the second time.
Rejection
Claims 1, 3-12, 14--19, 21-23, 25, 26, 28-30, and 32-36 are rejected
under 35 U.S.C. § 101 because they are directed to patent-ineligible subject
matter.
ANALYSIS
We disagree with Appellants' arguments, and agree with and adopt
the Examiner's findings and conclusions in (i) the action from which this
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Application 12/210,980
appeal is taken (Final Act. 2-8) and (ii) the Answer (Ans. 2-8) to the extent
they are consistent with our analysis below. 2
On this record, the Examiner did not err in rejecting claim 1.
The Examiner rejects the claims under 35 U.S.C. § 101 because they
are directed to patent-ineligible subject matter. See Final Act. 2-8; Ans. 2-
8. In particular, the Examiner concludes the claims are directed to the
abstract idea of a fundamental economic practice. See Final Act. 2-3; Ans.
3. The Examiner further finds the claims use generic computer components
to perform generic computer functions. See Final Act. 3--4; Ans. 4--5.
Appellants argue the Examiner erred. See App. Br. 4--21; Reply Br. 1-8.
Appellants have not persuaded us of error. 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. That provision "'contains
an important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v.
Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). According to the
Supreme Court:
[W]e set forth a framework for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from
those that claim patent-eligible applications of those concepts.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts .... If so, we then ask,
2 To the extent Appellants advance new arguments in the Reply Brief
without showing good cause, Appellants have waived such arguments. See
37 C.F.R. § 41.41(b)(2).
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"[ w ]hat else is there in the claims before us?" ... To answer
that question, we consider the elements of each claim both
individually and "as an ordered combination" to determine
whether the additional elements "transform the nature of the
claim" into a patent-eligible application .... We have
described step two of this analysis as a search for an "'inventive
concept'" -i.e., 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 Corp., 134 S. Ct. at 2355.
The Federal Circuit has described the Alice step-one inquiry as
looking at the "focus" of the claims, their "character as a whole," and the
Alice step-two inquiry as looking more precisely at what the claim elements
add-whether they identify an "inventive concept" in the application of the
ineligible matter to which the claim is directed. See Elec. Power Grp., LLC
v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Regarding Alice step one, the Federal Circuit has "treated collecting
information, including when limited to particular content (which does not
change its character as information), as within the realm of abstract ideas."
Elec. Power, 830 F.3d at 1353 (emphasis added); see also Internet Patents,
790 F.3d at 1348--49; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1363 (Fed. Cir. 2015); Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat'! Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014). "In a
similar vein, we have treated analyzing information [including manipulating
information] by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
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Application 12/210,980
abstract-idea category." Elec. Power, 830 F.3d at 1354 (emphasis added);
see also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir.
2016). "And we have recognized that merely presenting the results of
abstract processes of collecting and analyzing information, without more
(such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis." Elec. Power, 830 F.3d at
1354 (emphasis added); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 714--15 (Fed. Cir. 2014).
The rejected claims "fall into a familiar class of claims 'directed to' a
patent-ineligible concept." Elec. Power, 830 F.3d at 1353. Contrary to
Appellants' arguments (App. Br. 4--13; Reply Br. 1--4), the claims are
similar to the claims of Electric Power, and are focused on the combination
of abstract-idea processes or functions. See Elec. Power, 830 F.3d at 1354.
For example, claim 1 is directed to displaying information ("causing
displaying ... "), analyzing information ("identify ... "; "determining ... ";
"tracking ... "; "evaluating ... "), and collecting information ("storing ... ").
Claims 19 and 26 are directed to similar functions of displaying, analyzing,
and collecting information. See Elec. Power, 830 F.3d at 1353. 3 The
dependent claims are directed to similar functions or processes, and
Appellants have not shown such claims are directed to other non-abstract
functions or processes. See claims 3-12, 14--18, 21-23, 25, 28-30, and 32-
36. Appellants list certain limitations of claims 1 and 7 (App. Br. 10-11 ),
3 Contrary to Appellants' assertion (App. Br. 9), the Examiner does not
merely determine claim 1 is directed to creating a contract. Instead, the
Examiner determines, and we agree, the claims are directed to a fundamental
economic practice, and are directed to the abstract steps or functions recited
in the claims and discussed above. See Final Act. 2-3; Ans. 3.
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but do not persuasively explain why those steps are not directed to the
abstract processes discussed above. See App. Br. 10-11. In particular, the
additional steps of dependent claim 7 are directed to the abstract idea of
collecting information ("receiving ... ")and analyzing information
("rebalancing ... ").
Further, Appellants' assertion regarding pre-emption (App. Br. 5-7;
Reply Br. 1-2) is unpersuasive, because "[w]hile preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility .... vVhere a patent's claims are deemed
only to disclose patent ineligible subject matter under the lvfayo 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 clairns 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").
In addition, Appellants' argument regarding prior art rejection (App.
Br. 17) is unpersuasive, as prior art rejection is determined under 35 U.S.C.
§§ 102-103, which are different statutory 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." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981)
(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).
Regarding Alice step two, contrary to Appellants' assertion (App. Br.
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13-21; Reply Br. 4--8), Appellants have not shown the claims in this case
require an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355.
Further, contrary to Appellants' arguments (App. Br. 13-21; Reply
Br. 4--8), the claims are similar to the claims of Electric Power, because they
do not require any nonconventional computer, network, or display
components, or even a "non-conventional and non-generic arrangement of
known, conventional pieces," but merely call for performance of the claimed
information collection, analysis, and display functions on generic computer
components and display devices. See Elec. Power, 830 F.3d at 1355; see
also Claim 1 (reciting "an application server computer ... a client computer
... a physical storage device"); Claim 19 (reciting "an application server
computer ... a client computer ... a physical storage device"); Claim 26
(reciting "an application server computer ... a network interface ... a data
network ... a processor ... a client computer ... a physical storage
device"). The dependent claims call for similar generic components and
devices, and Appellants have not shown such claims require any non-
conventional components or devices. See claims 3-12, 14--18, 21-23, 25,
28-30, and 32-36. Appellants list certain steps recited in claims 1, 7, 8, and
17 (App. Br. 19-21 ), but do not persuasively explain why such steps require
an arguably inventive set of components or methods, or invoke any
assertedly inventive programming. See Elec. Power, 830 F.3d at 1355. As
discussed above, those steps merely call for performance of the claimed
information collection and analysis on generic computer components. See
claims 1, 7, 8, and 17.
Appellants refers to Bascom Global Internet Services, Inc. v. AT&T
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Application 12/210,980
Mobility LLC, 827 F.3d 1341 (2016) (Reply Br. 7 6-7), but do not
persuasively explain why that case is similar to the present case. As
discussed above, the rejected claims are similar to the claims of Electric
Power, and they do not "require an arguably inventive distribution of
functionality within a network, thus distinguishing the claims at issue from
those in Bascom[.]" Elec. Power, 830 F.3d at 1355; see also Bascom
Global Internet Services, 827 F.3d at 1350 (construed in favor of the
nonmovant at pleading stage, finding a sufficient inventive concept in "the
installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user").
Similar to the claims of Electric Power, the rejected claims specify what
information is desirable to display, analyze, and gather, but they "do not
include any requirement for performing the claimed functions of gathering,
analyzing, and displaying ... by use of anything but entirely conventional,
generic technology." Elec. Power, 830 F.3d at 1355. Therefore, similar to
the claims of Electric Power, the rejected claims "do not state an arguably
inventive concept in the realm of application of the information-based
abstract ideas." Elec. Power, 830 F.3d at 1356. Appellants cite paragraph
90 of the Specification, which describes manipulating data using
conventional, generic data analysis and manipulation technology in an
exemplary embodiment. And Appellants' argument regarding that example
is not commensurate with the scope of the claim, as claim 1 does not recite
"dynamic weight creation and dynamic rebalancing," as Appellants assert
(Reply Br. 7).
Finally, DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed.
Cir. 2014) is inapplicable here. In DDR Holdings, the Court found:
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Application 12/210,980
the claims at issue here specify how interactions with the
Internet are manipulated to yield a desired result-a result that
overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink. Instead of the
computer network operating in its normal, expected manner by
sending the website visitor to the third-party website that
appears to be connected with the clicked advertisement, the
claimed system generates and directs the visitor to the above-
described hybrid web page that presents product information
from the third-party and visual "look and feel" elements from
the host website. When the limitations of the '399 patent's
asserted claims are taken together as an ordered combination,
the claims recite an invention that is not merely the routine or
conventional use of the Internet.
DDR Holdings, 773 F.3d at 1258-59.
This case is distinguished from DDR because as discussed above, the
claims here recite inventions that are merely the routine or conventional use
of the technology-the opposite of what the claims of DDR represent. See
DDR Holdings, 773 F.3d at 1258-59.
In short, Appellants have not shown the claims, read in light of the
Specification, require anything other than conventional computer, network,
and display technology for collecting, analyzing, and presenting the desired
information. See Elec. Power, 830 F.3d at 1354. Such invocations of
computers and networks are "insufficient to pass the test of an inventive
concept in the application" of an abstract idea. See Elec. Power, 830 F.3d at
1355.
Because Appellants have not persuaded us the Examiner erred, we
sustain the Examiner's rejection of claims 1, 3-12, 14--19, 21-23, 25, 26,
28-30, and 32-36 under 35 U.S.C. § 101.
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DECISION
We affirm the Examiner's decision rejecting claims 1, 3-12, 14--19,
21-23, 25, 26, 28-30, and 32-36.
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
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