Ex Parte Reich

Patent Trial and Appeal Board

Jun 12, 2017

10135621 (P.T.A.B. Jun. 12, 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.
10/135,621 04/30/2002 Hans-Linhard Reich GOLDl 1-00010 5579
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
06/14/2017 EXAMINER
GART, MATTHEW S
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
06/14/2017 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):
j ohn. maxin @ gs. com
patents @ munckwilson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HANS-LINHARD REICH
Appeal 2016-003087
Application 10/135,621
Technology Center 3600
Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and
DAVID J. CUTITTAII, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1, 2, 4, 8—12, 15—19, 21—23, 26, 28—32, 38, 39, 41, 43,
45, and 47-49.1 See App. Br. 4. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Claims 3, 5—7, 13, 14, 20, 24, 25, 27, 33—37, 40, 42, 44, and 46 have been
canceled. App. Br. 4.
Appeal 2016-003087
Application 10/135,621
STATEMENT OF THE CASE
Introduction
The Application is directed “to systems and methods to facilitate the
tracking and/or fulfillment of regulatory requirements.” Spec. 1:2—3.
Claims 1, 26, 48, and 49 are independent. Claim 1 is reproduced below for
reference:
1. A processor implemented method for determining
compliance with financial securities regulatory requirements
comprising:
detecting a triggering event, wherein the triggering event
includes a change in job activities of a user or receiving a
complaint lodged against the user from a government
regulatory agency;
determining, by a processor, information associated with
a user in response to the triggering event, wherein the
information associated with the user includes a corporate
position of the user, the job activities of the user, a jurisdiction
in which a client is located, and fulfillment activity associated
with the user, wherein the fulfillment activity includes training
activity;
determining, by the processor, one or more employee
financial securities regulatory requirements that are associated
with the user based on the information associated with the user;
wherein determining the one or more financial securities
employee regulatory requirements that are associated with the
user includes:
mapping the job activities of the user to government
agency regulatory requirements associated with the job
activities of the user;
determining, by the processor, one or more unfulfilled
employee financial securities regulatory requirements of the
one or more financial securities employee regulatory
requirements based on the information associated with the user,
wherein determining, by the processor, the one or more
unfulfilled employee financial securities regulatory
requirements includes detecting that the jurisdiction in which
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Application 10/135,621
the client is located is a jurisdiction in which the user has
unfulfilled financial securities regulatory requirements;
presenting an indication of the one or more unfulfilled
employee financial securities regulatory requirements to the
user, the indication including at least a warning to the user that
the user has unfulfilled financial securities regulatory
requirements in the jurisdiction in which the client is located;
and
registering, by the processor, the user in a fulfillment
activity based on the one or more unfulfilled employee financial
securities regulatory requirements.
The Examiner s Rejection
Claims 1, 2, 4, 8-12, 15-19, 21-23, 26, 28-32, 38, 39, 41, 43, 45, and
47-49 stand rejected under 35 U.S.C. § 101 as directed to non-statutory
subject matter.2 Final Act. 3.
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellant’s
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make in the Briefs are deemed to be
waived. See 37 C.F.R. § 41.37(c)(l)(iv).
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted § 101 to include an implicit
exception: “[ljaws of nature, natural phenomena, and abstract ideas” are not
2 The Examiner includes canceled claims 5, 6, and 40 in the heading of the
rejection. See Final Act. 3; Ans. 2; see also App. Br. 14, 38, 44. We find
this to be harmless error.
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Application 10/135,621
patentable. See, e.g., Alice Corp. Pty Ltd. v. CLSBankInt’l, 134 S. Ct.
2347, 2354 (2014). The Supreme Court, in Alice, reiterated the two-step
framework previously set forth in Mayo Collaborative Services v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1300 (2012), “for distinguishing
patents that claim laws of nature, natural phenomena, and abstract ideas
from those that claim patent-eligible applications of those concepts.” Alice
Corp., 134 S. Ct. at 2355. The first step in that analysis is to “determine
whether the claims at issue are directed to one of those patent-ineligible
concepts,” e.g., to an abstract idea. Alice Corp., 134 S. Ct. at 2355. If the
claims are not directed to a patent-ineligible concept, the inquiry ends.
Otherwise, the inquiry proceeds to the second step where the elements of the
claims are considered “individually and ‘as an ordered combination”’ to
determine whether there are additional elements that “‘transform the nature
of the claim’ into a patent-eligible application.” Alice Corp., 134 S. Ct. at
2355 (quoting Mayo, 132 S. Ct. at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology, or instead is directed to a result or effect that itself is the abstract
idea and merely invoke generic processes and machinery. See Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting the claims under 35 U.S.C. § 101, the Examiner
finds the claimed invention is unpatentable pursuant to the two-step
framework of Alice. See Final Act. 3^4. The Examiner first finds the
claimed invention is directed to an abstract idea, specifically “registering
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Application 10/135,621
users (employees) for fulfillment activities (e.g. employee training) based on
determined employee unfulfilled (financial security) regulatory
requirements,” which is organizing human activity for a fundamental
business practice. Ans. 3, 6; see also Final Act. 4—5. The Examiner further
finds “[t]he claims do not include additional elements that are sufficient to
amount to significantly more than the abstract idea because the additional
limitations of presenting an indication of the one or more unfulfilled
employee financial securities regulatory requirements represents
insignificant pre-solution activity,” and “taken as a whole[,] the claims
simply instruct the practitioner to implement the abstract idea with routine
convention[al] activity.” Ans. 3^4; see also Final Act. 5—7. We agree with,
and adopt as our own, the Examiner’s findings and analysis. See Final Act.
3—7; Ans. 3—6. We add the following primarily for emphasis.
Appellant argues claim 1 is not abstract, because the claim “is not
attempting to tie up any judicial exception so that others cannot practice it.”
Reply Br. 4. Appellant contends that “[cjlaim 1 does not prevent others
from registering users for fulfillment activities based on unfulfilled
regulatory requirements. There are innumerable other ways in which one
can perform such a function without falling under the scope of [cjlaim 1.”
Reply Br. 4.
We are not persuaded the Examiner erred in finding claim 1 to be
abstract. Appellant argues there are other ways to perform the fulfillment
activities required by claim 1 (see Reply Br. 3—4), but does not explain how
one would comply with regulatory requirements without falling within the
claim scope. In any event, although the Supreme Court has described “the
concern that drives this exclusionary principle [i.e., the exclusion of abstract
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Application 10/135,621
ideas from patent eligible subject matter] as one of pre-emption” (Alice, 134
S. Ct. at 2354), we note that characterizing pre-emption as a driving concern
for patent eligibility is not the same as characterizing preemption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
Although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc., 788 F.3d at 1379. Here, we agree with the
Examiner that “[t]he instant invention/claims are drawn to modeling, via
graph building, business activity,” and claim 1 does not include additional
elements “individually or as an ordered combination, that transforms the
nature of the claim into a patent-eligible application.” Ans. 4.
Appellant further argues “the Examiner failed to comply with the
Mayo test,” as “the claims contain elements beyond simply indicating
unfulfilled regulatory requirements to employees and registering the
employees for fulfillment activity.” App Br. 16. Appellant contends the
Examiner’s rejection ignores elements of claim 1, which “recites a specific
process where a triggering event, four specific types of user information, a
mapping, a jurisdiction of a client, a warning, and a registration are used in a
specific manner to effectuate the identification of unfulfilled regulatory
requirements and the registration of a user in fulfillment activity.” App.
Br. 17; see also Reply Br. 4—7 (listing particular claim requirements).
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Application 10/135,621
We are not persuaded the Examiner’s 101 analysis is in error. The
recited method steps include the word “processor,” but otherwise involve no
more than information and steps for determining regulatory requirements for
a particular user and registering the user for an activity based on unfulfilled
requirements: activity that could be performed by a human, e.g., mentally,
using pen and paper, and/or manually, without the use of a computer or any
other machine. See Ans. 4—5. The law is clear that “[a] method that can be
performed by human thought alone is merely an abstract idea and is not
patent-eligible under § 101.” CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372—73 (Fed. Cir. 2011); see also Gottschalkv. Benson,
409 U.S. 63, 67 (1972) (“[pjhenomena of nature . . ., mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work.”). Although “[cjlaim 1 contains
recitations regarding specific data and specific operations” (Reply Br. 7),
such data and operations are merely part of the abstract idea itself, and can
be performed by human though alone. Moreover, mental processes remain
unpatentable even when automated to reduce the burden on the user of what
once could have been done with pen and paper. CyberSource, 654 F.3d at
1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson.").
Appellant argues “[t]he fact that the claimed process might
theoretically be implemented on a generic computer is inadequate to
maintain the § 101 rejection.” Reply Br. 7. That is, claim 1, as described by
Appellant, “recites additional limitations that, when considered as an ordered
combination, demonstrate a technologically-rooted solution, namely how an
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Application 10/135,621
organization can help to obtain or ensure compliance with various
regulations in the presence of numerous individuals (users) and client in
various jurisdictions, each of which can have its own regulatory
requirements.” App. Br. 19. Appellant contends the claimed invention
“accomplishes something that is not conventional in the Appellant’s field.
The lack of any prior art rejection is evidence that the Appellant’s claims are
not merely directed to something conventional in the field. Something
cannot be conventional or fundamental if it has never been done before.”
Reply Br. 8.
We are not persuaded the Examiner’s rejection is inadequate. In DDR
Holdings, the claims at issue were found to be directed to statutory subject
matter because they claim a solution “necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014). No such technological advance is evident in
the present invention, however. Unlike the situation in DDR Holdings,
Appellant does not identity any problem particular to computer networks
and/or the Internet that claim 1 overcomes. Instead, claim 1 merely employs
generic computer components to perform generic computer functions, i.e.,
receiving and processing information.3 See Ans. 4 (“the claim is merely
implemented or executed using a processor and therefore does not improve
upon the technology or functionality of the computer beyond the abstract
idea.”).
3 Appellant’s Specification provides, for example, that “[ujser administration
server 200 is depicted as a mainframe server in FIG. 1, but may comprise
any device or devices capable of performing process steps attributed to
server 200 herein.” Spec. 6:1—3.
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Application 10/135,621
Further, we find unpersuasive Appellant’s argument that the
limitations of claim 1 are not conventional or fundamental because the
claimed method is allegedly patentable over the prior art. See, e.g., Reply
Br. 8. Although the Alice test includes 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, 134 S. Ct. at 2355. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304. We agree with the Examiner that
the claim limitations “all describe the abstract idea,” and are thus, patent-
ineligible. Ans. 3.
CONCLUSION
We are not persuaded for the reasons set forth above that the
Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101, or
independent claims 48 and 49 not separately argued. See App. Br. 19.
Appellant presents similar arguments for independent claim 26, which we
find similarly unpersuasive. See App. Br. 25—29. Appellant states that
limitations recited by each dependent claim are not an abstract idea (see
App. Br. 19-25, 29-33; see also Reply Br. 8), but do not persuade us the
Examiner erred in finding the dependent claims are “directed to a patent
ineligible abstract idea” (Final Act. 7). See In reLovin, 652 F.3d 1349, 1357
(Fed. Cir. 2011). Accordingly, we sustain the Examiner’s rejection of
claims 1, 2, 4, 8-12, 15-19, 21-23, 26, 28-32, 38, 39, 41, 43, 45, and 47-A9.
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DECISION
The Examiner’s rejection of claims 1, 2, 4, 8—12, 15—19, 21—23, 26,
28—32, 38, 39, 41, 43, 45, and 47^49 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)(l)(iv).
AFFIRMED
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