Ex Parte Ramos et al

Patent Trial and Appeal Board

Dec 7, 2017

12098082 (P.T.A.B. Dec. 7, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/098,082 04/04/2008 Samuel Ramos GOLD 11-00267 1515
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
12/11/2017 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):
patents @ munckwilson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALEXANDER A. DUBITSKY, AMAR KUCHINAD,
REBECCA FEIN, SAMUEL RAMOS, SCOTT SILVERMAN,
JOHN FOWLER, and JONATHAN HECHT
Appeal 2015-003 8721
Application 12/098,082
Technology Center 3600
Before BRADLEY B. BAYAT, TARA L. HUTCHINGS, and
MATTHEW S. METERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing (“Request”), pursuant to
37 C.F.R. § 41.52, dated Novemver 27, 2017, seeking reconsideration of our
Decision on Appeal mailed September 27, 2017 (“Decision”), in which we
affirmed the Examiner’s rejection of claims 2-4, 21, 26, and 30-42 under 35
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
October 17, 2014) and Reply Brief (“Reply Br.,” filed February 4, 2015),
and the Examiner’s Answer (“Ans.,” mailed December 4, 2014) and Final
Office Action (“Final Act.,” mailed April 16, 2014).
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Application 12/098,082
U.S.C. § 101 as directed to non-statutory subject matter.2 We have
jurisdiction over the Request under 35 U.S.C. § 6(b).
DISCUSSION
Appellants request that the Board reconsider its decision to affirm the
Examiner’s rejection of claims 2-4, 21, 26, and 30-42 under 35 U.S.C.
§ 101 in view of the recent Federal Circuit decisions, Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), and USPTO
Memorandum, “Recent Subject Matter Eligibility Decisions,” published on
November 2, 2016 (“November 2016 Memorandum”)3 (see Request 3—9).
In this context, Appellants argue that the present “claims are not
directed to an abstract idea. Rather, the claims recite specific processes that
use particular information and techniques and that are specifically designed
to achieve a particular result” {id. at 5). Appellants reproduce exemplary
independent claim 21, and assert:
[pjursuant to Enfish, the character of Claim 21 as a whole is not
simply directed to excluded subject matter. Pursuant to McRO
and the Nov. Memo, Claim 21 is limited to a specific process
using particular information and techniques, and the claim is
2 We also reversed the Examiner’s rejection of claims 2—4, 21, 26, and 30-
42 under 35 U.S.C. §§ 112, first and second paragraphs and § 103(a), but
affirmed a rejection of claims 30—35 under 35 U.S.C. § 112, second
paragraph (see Decision 18). Appellants, however, are “not requesting
reconsideration of the rejection of Claims 30-35 under 35 U.S.C. § 112(b) or
§ 112, second paragraph” (Request 2).
3 Robert W. Bahr, Memorandum — Recent Subject Matter Eligibility
Decisions (McRO, Inc. dba Planet Blue v. Bandai Namco Games America
Inc., BASCOM Global Internet Services v. AT&T Mobility LLC and Amdocs
(Israel) Ltd. v. Openet Telecom, Inc.) p.2 United States Patent and
Trademark Office (November 2, 2016).
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directed to a specific way of achieving a desired outcome or end
result. Moreover, pursuant to McRO and the Nov. Memo, Claim
21 does not preempt approaches that use different information or
different techniques.
(Id. at 6). We are not persuaded by Appellants’ argument that the cited case
law, in light of the November 2016 memorandum, establishes error in our
§101 analysis.
We turn first to Appellants’ discussion of Enfish. In Enfish, the
Federal Circuit rejected a § 101 challenge at step one of the Alice test
because the claims at issue focused not on asserted advances in uses to
which existing computer capabilities could be put, but on a specific type of
data structure, i.e., a self-referential table for a computer database, designed
to improve the way a computer carries out its basic functions of storing and
retrieving data. Enfish, 822 F.3d at 1335—36.
Here, we find no evident parallel between Appellants’ claims and the
claims in Enfish that represent “an improvement to computer functionality”
nor have Appellants set forth any such parallel. The record does not
indicate, for example any improvement to the way the “computer hardware
system” of independent claim 21 carries out its basic functions nor is it
apparent that the claims focus on a specific means or method that improves
the relevant technology.
We next turn to Appellants’ discussion of McRO. In McRO, the
Federal Circuit held the claims were not directed to an abstract idea under
step one of the Alice test, but instead were directed to “a specific asserted
improvement in computer animation, i.e., the automatic use of rules of a
particular type.” McRO, 837 F.3d at 1314. Significantly, the Specification
described that the claimed rules transformed a traditionally subjective
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process performed by human artists into a mathematical process executed on
computers. Id. at 1313—16. Further, the Defendants conceded that prior
animating processes were “driven by subjective determinations rather than
specific, limited mathematical rules.” Id. at 1314. Asa result, the
traditional process and newly claimed method stood in contrast; although
both produced a similar result, i.e., realistic animations of facial movements
accompanying speech, the two practices produced those results in
fundamentally different ways.
Here too, there is no evident parallel between Appellants’ claims and
the claims in MCRO, nor have Appellants set forth any such parallel. No
such technological advance is evident in the present invention. Unlike the
situation in McRO, the present claims are not narrowly directed to
application of particular rules for achieving an improved technological
result.
Accordingly, based on the discussion which follows, the request for
rehearing is denied, other than providing the discussion below, which does
not alter the disposition of this Appeal.
Issue 1
Appellants argue that independent claim 21 “recites the receipt and
use of specific data in a specific manner to achieve a specific result in a way
that has never been done before” (Request 6). However, as discussed above,
Appellants’ claims are not directed to specific rules that improve a
technological process. Instead, as discussed in the Decision, we find:
independent claim 21 is directed to a computer implemented
method for offering an annuity, issuing the annuity in exchange
for a future interest, distributing periodic benefits of the annuity,
relinquishing the future interest, but continuing to distribute
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periodic payments, if a payment satisfies the price of the future
interest, and receiving a current interest in the now matured
future asset unless the future interest was previously satisfied.
(Decision 5). Thus, we find exemplary independent claim 21 is not directed
to a combined order of specific rules that improves any technological
process; but instead, merely invokes a computer into the annuity scheme
recited by independent claim 21. Claims with such character do not escape
the abstract idea exception under Alice step one. See RecogniCorp, LLC v.
Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Thus, Appellants’ argument is not persuasive.
Issue 2
Appellants also argue that “[c]laim 21 does not threaten to subsume
the full scope of a fundamental concept” (Request 6—7; see also id. at 8).
More particularly, Appellants argue:
[i]t is without question that Claim 21 does not preempt every
implementation of “issuing [an] annuity, distributing periodic]
benefits, relinquishing and receiving interest.” For example, an
annuity need not be issued in exchange for an assignment of a
future interest in an asset, where the future interest includes an
ownership right associated with the asset that matures at death of
a purchaser. As another example, the distribution of periodic
benefits need not continue after the future interest is relinquished.
(Request 6).
However, Appellants’ argument that their “claims cannot possibly be
interpreted as covering any and all forms of the abstract idea” (id. at 6) is not
persuasive because it does little to ensure that the claimed subject matter as a
whole amounts to significantly more than the abstract idea itself. While a
particular approach may prevent pre-emption of all possible ways of issuing
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and managing an annuity (see Reply Br. 5)4, it does not make the claimed
subject matter any less directed to an abstract idea. Cf. OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362—1363 (Fed. Cir.) (cert, denied, 136
S. Ct. 701 (2015)) (“[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.”). And, because we find the claimed subject
matter covers patent-ineligible subject matter, the pre-emption concern is
necessarily addressed. “Where a patent’s claims are deemed only to disclose
patent ineligible subject matter under the Mayo framework, [jpreemption
concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Thus, Appellants’ argument is not persuasive.
Issue 3
Appellants last argue “[t]he Decision provides no support whatsoever
for its assertion that all of these steps are directed to well-understood,
routine, and conventional activities previously known to the industry”
(Request 7), and as such, “[t]he Decision has therefore not established that
Claim 21 fails to recite significantly more than an abstract idea” (id. at 8).
More particularly, Appellants argue that:
[n]o cited references disclose or suggest the above-discussed
elements of Claim 21 as recited in the overall combination of the
claim. The specific elements of Claim 21 clearly cannot be
considered well-understood, routine, and conventional in the
4 “An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016).
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field. USPTO Interim Guidance states that such specific and
unconventional features quality as “significantly more.”
(Request 8). Appellants’ argument is not persuasive.
Independent claim 21 is directed to “[a] computer processor
implemented method” including steps for “offering ... an annuity to a
purchaser” “issuing ... the annuity to the purchaser in exchange for, at least,
assignment of a future interest in an asset,” “distributing . . . periodic
benefits . . . [by] paying the periodic benefits to the purchaser [or] accruing
the periodic benefits into the annuity,” “relinquishing the future interest^ but
continuing to distribute periodic payments,] if a payment that satisfies the
price is received before” the future interest matures, and “receiving a current
interest in the [matured future] asset... if the payment is not received
before” maturation (see Decision 6—7), and thus, includes steps that all are
part of the process for issuing and managing an annuity5, i.e., the abstract
idea. The additional limitations beyond the abstract idea are directed to the
computer processor on which the method is performed (see Spec. 114), i.e.
a computer processor that offers an annuity, issues the annuity in exchange
for consideration, and distributes or pays benefits, using “hardware,
software, or a combination thereof’ (Spec. 114). Thus, rather than adding
unconventional steps, as Appellants maintain, independent claim 21, at best,
adds only a computer processor, which interacts in well-known ways to
accomplish the abstract idea of issuing and managing an annuity.
5 See, e.g., Edwin W. Kopf, “The Early History of the Annuity,” Proceedings
of the Casualty Actuarial Society 13 (1927), 225—66. Available at:
https://www.casact.org/pubs/proceed/proceed26/26225.pdf
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And, to the extent that Appellants argue that independent claim 21
necessarily contains an “inventive concept” because “[n]o cited references
disclose or suggest the above-discussed elements of Claim 21” (see id.),
Appellants misapprehend the controlling precedent. Although the second
step in the Alice/Mayo framework is termed a search for an “inventive
concept,” the analysis is not an evaluation of novelty or non-obviousness,
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 Corp. Pty Ltd. v.
CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014). A novel and nonobvious
claim directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1304
(2012).
Thus, Appellants’ argument is not persuasive.
DECISION
Accordingly, although we have granted Appellants’ request for
rehearing to the extent that we have reconsidered our Decision in light of
Appellants’ Request, the request is denied with respect to making any
modification of the outcome of the Decision.
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).
REHEARING DENIED
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