Ex Parte Sandhu et al

Patent Trial and Appeal Board

Sep 28, 2017

13778481 (P.T.A.B. Sep. 28, 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.
13/778,481 02/27/2013 Harpal S. Sandhu INDE/0003C2 1195
107456 7590 10/02/2017
Artegis Law Group, LLP
John Carey
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
EXAMINER
PATEL, JAGDISH
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/02/2017 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):
algdocketing @ artegislaw. com
kcruz @ artegislaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HARPAL S. SANDHU, IAN DOULL, and
BRIAN LIEDBERG
Appeal 2016-001863
Application 13/778,481
Technology Center 3600
Before BART A. GERSTENBLITH, BRADLEY B. BAYAT, and
MATTHEW S. MEYERS, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Appellants2 appeal under 35 U.S.C. § 134 from the decision rejecting
claims 1—10 under 35 U.S.C. § 101. See Final Act. 2—7. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
June 1, 2015) Reply Brief (“Reply Br.,” filed Nov. 23, 2015), the
Examiner’s Answer (“Ans.,” mailed Oct. 23, 2015), and Final Office Action
(“Final Act.,” mailed Jan. 5, 2015).
2 Appellants identify “Integral Development, Inc.” as the real party in
interest. Appeal Br. 3.
Appeal 2016-001863
Application 13/778,481
THE INVENTION
Appellants’ “invention relates generally to financial transactions.”
(Spec. 12).
System claims 1, 5, and 7 are the independent claims on appeal.
Claim 1, reproduced below with bracketed matter added, is illustrative of the
subject matter on appeal.
1. A computing-system comprising:
[1] a sorting module that is executable via a processor and
configured to:
[2] receive, via a network, a first price from a provider
and an identifier associated with the provider, the first
price associated with an available volume of a financial
instrument,
[3] associate the first price with the provider in a
computerized database of a plurality of providers, and
[4] identify a plurality of user-preferred providers in
the computerized database associated with the first price;
[5] an aggregation module that is executable via the
processor and configured to aggregate the available volume of
the financial instrument offered for sale or required for
purchase by the plurality of user-preferred providers; and
[6] a display module that is executable via the processor and
configured to cause the aggregated volume of the financial
instrument to be displayed on a display unit.
Appeal Br. 18 (Claims App’x).
ANALYSIS
Non-statutory Subject Matter
As an initial matter, we note that Appellants argue claims 1—10 as a
group. Appeal Br. 11; Reply Br. 3. We select independent claim 1 as
representative. Thus, the remaining claims stand or fall with claim 1. See
37 C.F.R. §41.37(c)(l)(iv). We address each argument, in turn, as presented
in Appellants’ Appeal Brief.
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Application 13/778,481
The Examiner rejected claims 1—10 as directed to non-statutory
subject matter for two reasons. First, the Examiner determined that the
claims are directed to abstract ideas. Final Act. 3—6. Second, the Examiner
determined that the claims are directed to “software per se.” Id. at 6-7. We
address each.
With respect to the Examiner’s determination that the claims are
directed to “software per se” and, hence, non-statutory subject matter, we are
persuaded by Appellants’ arguments to the contrary. Appeal Br. 15—16.
We discuss, in detail, the Examiner’s determination that the claims are
directed to abstract ideas. 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, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, wre
then ask, “[wjjhat else is there in the claims before us?” To
answer that question, we 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. CLSBank Int’l, 134 S. Ct. 2347, 2355 (2014)
(citing and quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66 (2012)).
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Application 13/778,481
Applying this framework, the Examiner determined that “claims 1—10
are directed to the abstract idea of organizing financial information.” Final
Act. 4.
“First, [Appellants contend] the claims are not directed to an abstract
idea under the first prong of the two-part Alice test.” Appeal Br. 12.
Appellants argue “the claims recite limitations directed towards an
innovative approach to executing and distributing on-line trades, a recent
innovation, the claims cannot be considered to be directed towards a
fundamental economic practice long prevalent in our system of commerce.”
Id. at 13. According to Appellants, “[sjorting bids and offers from myriad
providers quickly, and presenting those bids and offers so that a trader may
quickly identify the best bid and offer from the most preferred providers is a
new approach that provides an innovative solution to a difficult problem
arising from a new technology — on-line trading.” Id. (“The Examiner
agrees that the claimed techniques are innovative, in that the Examiner has
deemed the claims to be allowable over the prior art of record.”).
Appellants’ argument is not persuasive of error because limiting the
scope of the claims to a particular technological environment (e.g., on-line
trades) does not exclude them from being directed to a fundamental
economic practice long-prevalent in our system of commerce. In fact, the
Supreme Court underscored this point in Alice, where the Supreme Court
found that claims directed to computer-implemented subject matter were
directed to the abstract idea of intermediated settlement—a fundamental
economic practice long prevalent in our system of commerce. Under step
one of Alice, our focus is not on innovation and novelty, but rather, we must
evaluate “the ‘focus of the claimed advance over the prior art’ to
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determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
In that regard, Appellants’ Specification discusses the problem with
known methods of fi nancial trading over computer networks that require a
few deal iterations before entering into deals—“[s]uch methods may be
cumbersome and time consuming, which may reduce the speed of
transactions.” Spec. *ff 4. Because the speed of transactions and data
analysis are important in dynamic capital markets, and reflect one’s ability
to react to changing market scenarios, Appellants found that “it may be
advantageous for one to be provided with as much relevant and timely
information to make decisions in the dynamic capital markets.” Id.; see also
Spec. ®j] 11 (“There also is a need to provide details about the total amount
available in the market corresponding to each of these bid and offer rates.
Further, there is a need to aggregate the prices available in the market.”).
In light of the Specification, we agree with the Examiner’s
determination that the claims are directed to the abstract idea of organizing
financial information, and further elaborate that said organizing is by
aggregating relevant financial information and displaying it or applying
specific mathematical formulas to specific data. Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) (“An abstract idea can
generally be described at different levels of abstraction.”). The alleged
advance is in collecting, analyzing, and timely displaying relevant
information to improve decision making when executing financial
transactions.
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Further, claims involving data collection, analysis, and display often
are directed to abstract ideas. Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1353 (Fed. Cir. 2016) (holding that “collecting information,
analyzing it, and displaying certain results of the collection and analysis” are
“a familiar class of claims ‘directed to’ a patent ineligible concept”); see
also In re TLI Commc ’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093—94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data collection and
analysis (i.e., processor, network, database), and does not recite an
improvement to a particular computer technology. See, e.g., McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314—15 (Fed. Cir.
2016) (finding claims not abstract because they “focused on a specific
asserted improvement in computer animation”). As in Electric Power,
claim 1 also is directed to collecting, analyzing, and displaying
information-—the financial nature of the particular content does not change
its character as information, which falls within the realm of abstract ideas.
“Second, [Appellants argue] the element or combination of elements
in each claim is sufficient to ensure that the claim amounts to significantly
more than the judicial exception, as required by the second step of the two-
part test.” Appeal Br. 13—14. According to Appellants, the numerous
limitations in the claim avoid preemption and “improve the functioning of an
exchange system communicating with provider machines over a network by
receiving preference status and pricing from provider machines, quickly
sorting and aggregating the prices based on both price and preference status,
and causing the sorted list to be displayed on a display unit.” Id. at 14.
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We do not agree because the limitations of claim 1 and “[t]he
specification fail[] to provide any technical details for the tangible
components, but instead predominately describe [] the system and methods in
purely functional terms.” In re TLI Commc ’ns LLC Patent Litig., 823 F.3d
at 612. While claim 1 requires a “computing system,” Appellants’
Specification makes clear that the recited physical components merely
provide a generic environment in which to carry out the abstract idea. See
Spec. 145 (“Typical examples of a computer system may comprise a
general-purpose computer, a programmed microprocessor, a micro­
controller, a peripheral integrated circuit element, and other suitable devices
or arrangements of devices that generally are capable of implementing the
method of the present invention.”).
[T]he 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 if” 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 preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[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 (citations omitted). Thus, “the relevant question is
whether the claims here do more than simply instruct the practitioner to
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implement the abstract idea ... on a generic computer.” Id. at 2359. We
agree with the Examiner that they do not. See Final Act. 5-6.
Similar to the situation in Electric Power, we find nothing sufficient
to remove claim 1 from the class of subject matter ineligible for patenting.
As the court explained in Electric Power, “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.” 830 F.3d at 1355.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
processor to sort data (receiving, associating, and identifying data), perform
a calculation (aggregate the available volume), and display the result
embodies some 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
Appellants’ system add nothing that is not already present when the
limitations are considered separately. Viewed as a whole, Appellants’ claim
simply recites the concept of collecting, analyzing, and displaying
information as performed by a generic computer. The system does not, for
example, purport to improve the functioning of the computer itself. Nor
does it improve any other technology, or result in any particular
improvement in the manner a computer functions.
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Contrary to Appellants’ third argument (Appeal Br. 15), the additional
claim language is not sufficient to make the invention “rooted in computer
technology” like the claims in DDR Holdings? Cf. Intellectual Ventures I
LLCv. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015)
(“The patent claims here do not address problems unique to the Internet, so
DDR has no applicability.”). In DDR Holdings, the Federal Circuit
determined that, although the patent claims at issue involved conventional
computers and the Internet, the claims addressed the problem of retaining
website visitors who, if adhering to the routine, conventional functioning of
Internet hyperlink protocol, would be transported instantly away from a
host’s website after “clicking” on an advertisement and activating a
hyperlink. DDR Holdings, 773 F.3d at 1257. The Federal Circuit, thus, held
that the claims were directed to statutory subject matter because they recite a
solution “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.” Id.
No such technological advance is evident in the present invention.
Unlike the situation in DDR Holdings, Appellants do not identify any
problem particular to computer networks and/or the Internet that claim 1
allegedly overcomes. Instead, claim 1 merely employs generic computer
components to perform generic computer functions, i.e., receiving,
processing, aggregating, and displaying information.
Accordingly, we sustain the rejection of claim 1 under 35 U.S.C.
§101, including claims 2—10, which fall with claim 1.
3 DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
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DECISION
The Examiner’s decision to reject claims 1—10 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).
AFFIRMED
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