Ex Parte RodinDownload PDFPatent Trial and Appeal BoardDec 18, 201712980687 (P.T.A.B. Dec. 18, 2017) Copy Citation 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. 12/980,687 12/29/2010 Michael Rodin 90945-785864 (017600US) 5146 20350 7590 12/20/2017 KILPATRICK TOWNSEND & STOCKTON LLP Mailstop: IP Docketing - 22 1100 Peachtree Street Suite 2800 Atlanta, GA 30309 EXAMINER PATEL, JAGDISH ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 12/20/2017 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): ipefiling@kilpatricktownsend.com KT S Docketing2 @ kilpatrick. foundationip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MICHAEL RODIN Appeal 2016-005638 Application 12/980,6871 Technology Center 3600 Before ST. JOHN COURTENAY III, JOHN A. EVANS, and JOYCE CRAIG, Administrative Patent Judges. CRAIG, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1—20, which are all of the claims pending in this application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 According to Appellant, the real party in interest is The Western Union Company of Englewood, Colorado. App. Br. 2. Appeal 2016-005638 Application 12/980,687 INVENTION Appellant’s invention relates to analyzing a customer’s financial position and providing the customer with a personalized financial plan. Abstract. Claim 1 is illustrative and reads as follows: 1. A method for analyzing a customer’s financial position and providing a customer with a personalized financial plan, the method comprising: receiving, by a computer system, an enrollment request to enroll the customer in an interactive financial planning program, wherein the computer system is part of a financial network; retrieving, by the computer system, from one or more databases, information associated with one or more financial transactions, wherein the one or more financial transactions were previously conducted by the customer; prompting, by the computer system, the customer with one or more questions regarding the customer’s financial position; receiving, by the computer system, one or more responses from the customer corresponding to the one or more questions regarding the customer’s financial position; identifying, by the computer system, at least partially based on the information associated with one or more financial transactions retrieved from the one or more databases and the responses corresponding to the one or more questions, one or more periodic payments received by the customer through the financial network; identifying, by the computer system, at least partially based on the information associated with one or more financial transactions retrieved from the one or more databases and the responses corresponding to the one or more questions, one or more periodic payments paid by the customer through the financial network; creating, by the computer system, a personalized financial plan for the customer at least partially based on the one or more periodic payments paid and the one or more 2 Appeal 2016-005638 Application 12/980,687 periodic payments received by the customer through the financial network; and providing, by the computer system, the personalized financial plan to the customer. REJECTION Notwithstanding claims 1—20 are directed to statutory subject matter, claims 1—20 stand rejected under 35U.S.C. § 101 because the claimed subject matter is judicially-excepted from patent eligibility under § 101. Final Act. 4—9. ANALYSIS We have reviewed the rejections of claims 1—20 in light of Appellant’s arguments that the Examiner erred. We have considered in this decision only those arguments Appellant actually raised in the Briefs. Any other arguments which 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). Appellant contends the Examiner erred because the claims amount to “significantly more” than the abstract idea. App. Br. 5—7. We do not find Appellant’s arguments persuasive of error. We agree with and adopt as our own the Examiner’s findings of facts and conclusions as set forth in the Answer and in the Action from which this appeal was taken. We provide the following explanation for emphasis. Under 35 U.S.C. § 101, a patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” The Supreme Court has “long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable.” Alice Corp. v. 3 Appeal 2016-005638 Application 12/980,687 CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013)). The Supreme Court in Alice reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (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, 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, such as an abstract idea. Abstract ideas may include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 2355—57. 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 the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). In the first part of the Alice/Mayo analysis, the Examiner concluded the claims are directed to the abstract idea of “providing personalized financial planning.” Final Act. 5. Appellant makes no arguments directed to the Examiner’s conclusion in the first part of the analysis. Because the claims are directed to an abstract idea, we turn to the second part of the Alice/Mayo analysis. We analyze the claims to determine if there are additional limitations that individually, or as an ordered 4 Appeal 2016-005638 Application 12/980,687 combination, ensure the claims amount to “significantly more” than the abstract idea. Alice, 134 S. Ct. at 2357. Appellant contends the Examiner erred in rejecting independent claims 1, 9, and 17 for three reasons: (1) each of the claims improves the field of “membership technology” (App. Br. 5—6); (2) particular, non generic, machines or computers are necessary to implement the systems and methods of the claims {id. at 6); and (3) each of claims 1, 9, and 17 includes specific limitations other than what is well-understood, routine and conventional in the field, or add unconventional steps that confine the claim to a particular useful application (id. at 6—7). Appellant’s arguments do not persuade us the Examiner erred, because Appellant essentially recites the claim limitations without any persuasive explanation of how the limitations either individually, or as an ordered combination, amount to an inventive concept that converts the abstract idea into patent-eligible subject matter. We find Appellant’s claimed data gathering, analysis, and reporting are consistent with “well-understood, routine, [and] conventional activities previously known to the industry.” Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass ’n, 776 F.3d 1343, 1347-48 (Fed. Cir. 2014) (quoting Alice, 134 S. Ct. at 2359 (citing Mayo, 566 U.S. at 73)). It is our view that financial planners have long analyzed a customer’s financial position and provided a customer with a personalized financial plan. This practice is a pervasive fundamental economic and business practice. The category of abstract ideas embraces “fundamental economic practice[s] long prevalent in our system of commerce.” Alice, 134 S. Ct. at 2356. Further, “simply appending conventional steps, specified at a high level of generality, 5 Appeal 2016-005638 Application 12/980,687 to laws of nature, natural phenomena, and abstract ideas cannot make those laws, phenomena, and ideas patentable.” Mayo, 566 U.S. at 82. For example, we conclude the independent claims on appeal (which each recite a “computer system”) are not related to the type of patent-eligible database claim considered by the court in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Here, none of Appellant’s claims is directed to improving computer technology or any other technical field. See id. at 1336. Nor do we find Appellant’s claims similar to the claimed solution the court held to be patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). Here, we conclude Appellant’s claimed solution is not rooted in computer technology, such that the invention on appeal overcomes a problem specifically arising in the realm of computer networks, as was the case with the type of claim the court concluded was patent-eligible in DDR Holdings. Id. at 1257. Instead, we conclude Appellant’s claims merely encompass a conventional “computer system” that receives data, identifies information, creates reports (e.g., “a personalized financial plan for the customer” (claims 1,9, 17) and sends data, and are not directed to non-generic, machines or computers, as Appellant contends (App. Br. 5—6). Appellant also urges each claim “includes specific limitations other than what is well-understood, routine and conventional in the field, or add unconventional steps that confine the claim to a particular useful application” because the claims do not stand rejected under § 102 or § 103. Id. at 6. However, the Supreme Court guides: “[t]he ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in 6 Appeal 2016-005638 Application 12/980,687 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 “[ejligibility and novelty are separate inquiries.” Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see also Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 (Fed. Cir. 2016) (holding that “even assuming” that a particular claimed feature was novel does not “avoid the problem of abstractness”). To the extent Appellant’s recited steps or acts (or functions) may be performed faster or more efficiently using a computer, the speed increase comes from the capabilities of a general-purpose computer, rather than the patented method itself. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”). For further guidance on the use of a generic processor, see Alice, 134 S. Ct. at 2358 (holding that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention”); BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) (“An abstract idea on ‘an Internet computer network’ or on a generic computer is still an abstract idea.”); Elec. Power Grp., LLCv. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are ‘insufficient to pass the test of an 7 Appeal 2016-005638 Application 12/980,687 inventive concept in the application’ of an abstract idea.” (citations omitted)); Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) (“Rather, the claims recite both a generic computer element—a processor—and a series of generic computer ‘components’ that merely restate their individual functions .... That is to say, they merely describe the functions of the abstract idea itself, without particularity. This is simply not enough under step two.”). Applying the aforementioned guidance here, we conclude that none of the claim limitations, viewed “both individually and as an ordered combination,” amounts to significantly more than the judicial exception in order to sufficiently transform the nature of the claims into patent-eligible subject matter. See Alice, 134 S. Ct. at 2355 (internal quotations omitted) (quoting Mayo, 566 U.S. at 79). For these reasons, we are not persuaded that the Examiner erred in finding the independent claims are directed to patent-ineligible subject matter. Accordingly, we sustain the Examiner’s 35 U.S.C. § 101 rejection of independent claims 1,9, and 17, as well as the Examiner’s 35 U.S.C. § 101 rejection of dependent claims 2—8, 10—16, and 18—20, not argued separately. DECISION We affirm the Examiner’s decision rejecting claims 1—20. 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. §41.50(f). AFFIRMED 8 Copy with citationCopy as parenthetical citation