Ex Parte Rapaport

Patent Trial and Appeal Board

Nov 30, 2017

13794850 (P.T.A.B. Nov. 30, 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.
13/794,850 03/12/2013 Martin Rapaport CU-72612 BSE 5146
26530 7590 12/04/2017
T ADASfrPARRY T T P
EXAMINER
224 SOUTH MICHIGAN AVENUE RANKINS, WILLIAM E
SUITE 1600
CHICAGO, IL 60604 ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
12/04/2017 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):
ChicagoU SPTO@ladas.net
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARTIN RAPAPORT
Appeal 2016-003998
Application 13/794,8501
Technology Center 3600
Before JOSEPH A. FISCHETTI, MICHAEL C. ASTORINO, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
FISCHETTI, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 1—20. We have jurisdiction under 35
U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
1 Appellant identifies Martin Rapaport as the real party in interest. Br. 2.
Appeal 2016-003998
Application 13/794,850
THE INVENTION
Appellant’s claims relate to systems and methods for bundling
diamonds and pricing bundles of diamonds by determining a relative value
of the diamonds within the bundle (Spec. 1: 5—6).
Claim 1 reproduced below, is representative of the subject matter on
appeal.
A computer-implemented method for bundling diamonds
into valued groupings, comprising employing a non-transitory,
tangible computer-readable medium in which computer
program instructions are stored, which instructions, when read
by a computer, cause the computer to:
access market data for available diamond types in a
universe of diamonds, said universe of diamonds comprising all
the diamonds in the world for which market data is available,
wherein the market data includes at least one market price for
each diamond type;
select and obtain, from the market data, market prices for
diamond types in a diamond bundle;
analyze the obtained market prices for each diamond type
in the bundle;
assign a price to each diamond type in the bundle based
on the analyzed market prices;
determine a reference diamond type from the universe of
diamonds;
assign a price for the reference diamond;
assign a number of points to each diamond type in the
bundle based on their price, relative to the reference diamond
price;
store in a memory, the diamond types in the diamond
bundle and the point values for each diamond type; and
display on a display the point value for each diamond
type in the diamond bundle.
2
Appeal 2016-003998
Application 13/794,850
THE REJECTION
The following rejection is before us for review.
Claims 1—20 are rejected under 35 U.S.C. § 101.
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1—20 under 35 U.S.C. § 101.
Appellant argues independent claims 1—18 as a group (Br. 10), with
claim 1 being the representative claim for this appeal, and the remaining
claims (including independent claim 19 and its dependent claim 20) standing
or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2015).
Claim 1 recites, in pertinent part, the steps, viz.
access market data for available diamond types in a universe of
diamonds, said universe of diamonds comprising all the diamonds in the
world for which market data is available, wherein the market data includes at
least one market price for each diamond type;
select and obtain, from the market data, market prices for diamond
types in a diamond bundle;
analyze the obtained market prices for each diamond type in the
bundle;
assign a price to each diamond type in the bundle based on the
analyzed market prices;
determine a reference diamond type from the universe of diamonds;
3
Appeal 2016-003998
Application 13/794,850
assign a price for the reference diamond;
assign a number of points to each diamond type in the bundle based
on their price, relative to the reference diamond price;
store in a memory, the diamond types in the diamond bundle and the
point values for each diamond type; and
display on a display the point value for each diamond type in the
diamond bundle.
Br. 12.
The Supreme Court
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, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, ‘[w]hat else
is there in the claims before us?’ To answer that question, . . .
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. [The Court] 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., Pty. Ltd. v CLSBankInt’l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289
(2012)).
4
Appeal 2016-003998
Application 13/794,850
To perform this two-part Alice test, we must first determine whether
the claims at issue are directed to a patent-ineligible concept, such as an
abstract idea.
Although the Court in Alice made a direct finding as to what the
claims were directed to, we find that this case’s claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The steps in claim 1 result in “displaying] on a display the point
value for each diamond type in the diamond bundle.” The Specification
states:
The ability to commoditize and trade a natural resource greatly
relies on the uniformity and interchangeability of single units
within a grouping of the particular resource. For this reason,
diamonds, a natural resource having myriad variations of shape,
size, color, clarity, cut, polish, symmetry, fluorescence, and cut
potential (for uncut stones) have historically been resistant to
commoditization, and have been unavailable for forms of
trading and investment common to classic commodities, such as
soybeans and natural gas. In contrast to commodities which are
traded in interchangeable units, contracts governing diamond
trading are typically linked to particular physical specifications
for the types of diamonds being traded. Such linkage greatly
limits the ability to substitute diamond types at the time of
contract performance and stone delivery, and subjects
performance of diamond contracts to possible shortages of
stones of a specified physical characteristic.
Specification 1: 11—22. The Specification further states that the claims
cover a “method for bundling diamonds into valued groupings, by which
5
Appeal 2016-003998
Application 13/794,850
relative values or ‘points’ are assigned to each diamond type in the bundle.
Assigned diamond points can then be used as units of exchange in points-
based contracts, which are also described.” Specification 1:27—30.
Thus, all this evidence shows that claim 1 is directed to assigning a value to
gemstones or precious metals used as units of exchange in points-based
contract trading.2 * * * 6It follows from prior Supreme Court cases, and
Gottschalk v. Benson, 409 U.S. 63 (1972) in particular, that the claims at
issue here are directed to an abstract idea. Creating alternate units of
currency is a fundamental economic practice in that the use of various forms
of currency to transfer value is the basic axiom of world-wide economies for
thousands of years. The patent-ineligible end of the 35 U.S.C. § 101
spectmm includes fundamental economic practices. See Alice Corp. Pty.
Ltd., 134 S. Ct. at 2355-1257.
As in Alice, we need not labor to delimit the precise contours of the
“abstract ideas” category in this case. It is enough to recognize that there is
no meaningful distinction in the level of abstraction between the concept of
performing a mathematical algorithm in Gottschalk and the concept of
2 Although the Examiner finds at one point, that the abstract idea is
“electronic recordkeeping”, the Examiner goes onto explain the abstraction
as “[researching products and prices and categorizing and pricing products
according to that research is a fundamental economic practice and human
activity . . . .” (Final Act. 6). We find no error with this finding relative to
the one we make in this Decision because process of researching products
and prices, etc. is disclosed as part of the valuing process. See Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can
generally be described at different levels of abstraction.”) ”
6
Appeal 2016-003998
Application 13/794,850
assigning a value to gemstones or precious metals used as units of exchange
in points-based contract trading, at issue here. Both are squarely within the
realm of “abstract ideas” as the Court has used that term. See Alice, 134 S.
Ct. at 2357. That the claims do not preempt all forms of the abstraction or
may be limited to the abstract idea in the diamond trading industry, does not
make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788
F.3d 1359, 1360—61 (Fed. Cir. 2015). Perhaps more to the point, claim 1
does no more than create an alternate form of currency which is a
disembodied concept that is the epitome of abstraction.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 134 S. Ct. at 2358 (alterations in original) (citations omitted).
7
Appeal 2016-003998
Application 13/794,850
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Alice, 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to take in data and compute a result from that data amounts to
electronic data query and retrieval—one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. In short, each step
does no more than require a generic computer to perform generic computer
functions.
Considered as an ordered combination, the computer components of
Appellant’s claims add nothing that is not already present when the steps are
considered separately. Viewed as a whole, Appellant’s claims simply recite
the concept of assigning a value to gemstones or precious metals used as
units of exchange in points-based contract trading. The claims do not, for
example, purport to improve the functioning of the computer itself. Nor do
they effect an improvement in any other technology or technical field.
Instead, the claims at issue amount to nothing significantly more than
instructions to assign a value to gemstones or precious metals used as units
of exchange in points-based contract trading. Under our precedents, that is
not enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2360.
8
Appeal 2016-003998
Application 13/794,850
As to the structural claims (19 and 20), they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “wam[ed] ... against” interpreting § 101 “in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 134 S. Ct._at 2360 (alterations in original).
With these findings, we turn to Appellant’s arguments. Appellant
argues:
the method recited in the present claims includes the recitations
‘assign a price to each diamond type in the bundle based on the
analyzed market prices’ and ‘assign a price for the reference
diamond’ which describe a process that is not previously known
and thus the present invention as recited in claim 1 includes
patentable subject matter under 35 U.S.C. 101.
Br. 10 (emphases omitted).
We are not persuaded by Appellant’s argument because the standard
for patentability under 35 U.S.C. § 103(a) is obviousness, the standard for
patentability under 35 U.S.C. § 102 is novelty, and the standard for patent
eligibility under 35 U.S.C. § 101 is abstract idea. Each of these standards is
separately required to be met before patentability can be conferred on
invention, which is not the case here based on the latter standard. “The
‘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
9
Appeal 2016-003998
Application 13/794,850
within the § 101 categories of possibly patentable subject matter.” Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981).
We further note that the claims at issue here are comparable to those
in Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1357 (Fed. Cir.
2016), as the focus of the claims is “on collecting information, analyzing it,
and displaying certain results of the collection and analysis,” albeit that this
information is of very limited content or source related to the valuation of
gemstones or precious metals. In Electric Power, the Federal Circuit held
that “[t]he claims in this case fall into a familiar class of claims ‘directed to’
a patent-ineligible concept.” Id. Although the information at issue in
Electric Power was limited to the particular technological environment of
power-grid monitoring, this did not “change its character as information.”
Id. Also, “limiting the claims to the particular technical environment of
power-grid monitoring is, without more,” was “insufficient to transform
them into patent-eligible applications of the abstract idea at their core.” Id.
The Federal Circuit noted that, although “a large portion of the lengthy
claims is devoted to enumerating types of information and information
sources available within the power-grid environment,” “merely selecting
information, by content or source, for collection, analysis, and display does
nothing significant to differentiate a process from ordinary mental processes,
whose implicit exclusion from § 101 undergirds the information-based
category of abstract ideas.” Id.
10
Appeal 2016-003998
Application 13/794,850
The remaining arguments proposed by Appellant are responded to by
our analysis set forth above, and are respectively unpersuasive for the
reasons set forth therein.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1—20 under
35 U.S.C. § 101.
DECISION
The decision of the Examiner to reject claims 1—20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
11