Ex Parte Rodin

Patent Trial and Appeal Board

Dec 18, 2017

12980687 (P.T.A.B. Dec. 18, 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.
12/980,687 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
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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.
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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
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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,
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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
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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
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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
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