Ex Parte Stimpson et alDownload PDFPatent Trial and Appeal BoardMay 23, 201811891570 (P.T.A.B. May. 23, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111891,570 08/10/2007 51871 7590 05/25/2018 Shumaker & Sieffert, P.A. 1625 Radio Drive, Suite 100 Woodbury, MN 55125 FIRST NAMED INVENTOR Mark Stimpson 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 ATTORNEY DOCKET NO. CONFIRMATION NO. CA920085134US2/1021-026 1871 EXAMINER BROCKINGTON III, WILLIAMS ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 05/25/2018 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): pairdocketing@ssiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MARK STIMPSON and ANDREW THOMAS NELMES Appeal2017-002361 Application 11/891,570 1 Technology Center 3600 Before CARL W. WHITEHEAD, JR., JON M. JURGOV AN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL Appellants seek our review under 35 U.S.C. § 134(a) of the Examiner's final decision rejecting claims 1-10 and 12-34, which are all the claims pending in the application. 2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify the Real Party in Interest as International Business Machines Corporation. See Appeal Br. 3. 2 Claim 11 is canceled. See Appeal Br. 17-18. Appeal2017-002361 Application 11/891,570 STATEMENT OF THE CASE Invention Appellants' invention relates "to techniques of entering and presenting data in an enterprise planning and performance management system." Spec. ,-r 6. 3 Exemplary Claim Claims 1, 17, and 32 are independent. Claim 1 is exemplary and is reproduced below. 1. A computer-implemented method comprising: receiving, by a computer, model data that defines an enterprise planning model, wherein the model data comprises action data that specifies one or more tasks, and wherein the action data defines: (i) a plurality of task-specific forms to capture task-specific contribution data on a per-task basis, and (ii) a mapping for storing the task-specific contribution data within a database of multidimensional data; aggregating, by the computer and based on at least one of a plurality of user-customizable overlay calculations, the task- specific contribution data and business-as-usual contribution data to form aggregate contribution data, wherein the at least one of the plurality of user-customizable overlay calculations specifies how the aggregate contribution data, for a time period, is calculated from an impact of the task-specific contribution data and an impact of the business-as-usual contribution data, including specifying, for a variable, that a first aggregate contribution data of the aggregate contribution data for the variable for a first time period is equal to a sum of the task- 3 Our Decision refers to: Appellants' Appeal Brief filed August 3, 2016 ("Appeal Br."); Reply Brief filed November 23, 2016 ("Reply Br."); Examiner's Answer mailed September 28, 2016 ("Ans."); Final Office Action mailed March 8, 2016 ("Final Act."); and original Specification filed August 10, 2007 ("Spec."). 2 Appeal2017-002361 Application 11/891,570 specific contribution data and the business-as-usual contribution data for the variable for the first time period, and that a second aggregate contribution data of the aggregate contribution data for the variable for a second time period is equal to the task-specific contribution data for the variable for the second time period; generating, by the computer, a composite forecast from the aggregate contribution data, wherein the composite forecast comprises a composite of a task-specific forecast overlaid with a business-as-usual forecast in accordance with the at least one of the plurality of user-customizable overlay calculations; and in response to receiving user input at a user interface device that indicates a request to perform at least one of a roll- back operation, a roll-forward operation, and a show-impact operation with respect to a pending change to at least one of the task-specific contribution data and the business-as-usual contribution data, updating, by the computer, the aggregate contribution data and a graphical representation of the composite forecast. Appeal Br. 15, Claims Appendix. REJECTION Claims 1-10 and 12-34 stand rejected under 35 U.S.C. § 101 as directed to non-patentable subject matter. Final Act. 2-10. Our review in this appeal is limited only to the above rejection and the issues raised by Appellants. Arguments not made are waived. See Manual of Patent Examining Procedure (MPEP) § 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv), 41.39(a)(l). ANALYSIS Issue: Whether the Examiner properly rejects the claims under 35 U.S.C. § 101 as being directed to non-patentable subject matter? 3 Appeal2017-002361 Application 11/891,570 Appellants argue the claims as a group. See Appeal Br. 7, 14. We select independent claim 1 as exemplary of Appellants' arguments for claims 2-10 and 12-34. 37 C.F.R. § 41.37(c)(l)(iv). The Examiner finds claim 1 is "directed to generating forecasts using aggregated data by employing mathematical relationships/formulas, which is an abstract idea." Final Act. 8. The Examiner also finds the claim "does not include limitations amounting to significantly more than the abstract idea" sufficient to transform the abstract idea into a patent eligible application. Final Act. 9. Appellants present several arguments against the § 101 rejection. We do not find Appellants' arguments persuasive. Instead, we find the Examiner has provided a comprehensive response to Appellants' arguments supported by a preponderance of evidence. See Ans. 2-14. As such, we adopt the Examiner's findings and explanations. See Final Act. 2-10; Ans. 2-14. Section 101 provides that "[ w ]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. The provision, however, "contains an important implicit exception: "[l]aws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013) ). The "abstract ideas" category embodies the longstanding rule that an idea, by itself, is not patentable. Alice, 134 S. Ct. at 2355 (quoting Gottschalkv. Benson, 409 U.S. 63, 67 (1972)). 4 Appeal2017-002361 Application 11/891,570 In Alice, the Supreme Court sets forth an analytical "framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). The first step in the analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts," such as an abstract idea. Id. If the claims are directed to a patent-ineligible concept, the second step in the analysis is to consider the elements of the claims "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." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to "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."' Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea "cannot be circumvented by attempting to limit the use of the formula to a particular technological environment' or adding 'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (quoting Diamond v. Diehr, 450 U.S. 175 (1981)). First Step Initially, independent claim 1 recites steps for a computer- implemented method. As such, claim 1 is directed to a process; a statutory class of invention within 35 U.S.C. § 101. Turning to the first step of the Alice inquiry, we must determine whether claim 1, being directed to a statutory class of invention, nonetheless falls within a judicial exception. 5 Appeal2017-002361 Application 11/891,570 We agree with the Examiner that claim 1 is "directed to generating forecasts using aggregated data by employing mathematical relationships/formulas, which is an abstract idea." Ans. 3--4. Appellants argue claim 1 does not "claim any mathematical algorithms or formulas and do [es] not seek, in practical effect, a patent on any mathematical algorithms or formulas itself." Appeal Br. 9; Reply Br. 4-- 5. We are unpersuaded. Claim 1, considered as a whole, relates to generating and updating a composite forecast by aggregating task-specific contribution data and business-as-usual contribution data, based on user- customizable overlay calculations, to form aggregate contribution data. Such business forecasting activities are squarely within the realm of abstract ideas. Generating an enterprise planning forecast by manipulating data is a fundamental business practice long prevalent in our system of commerce, like the risk hedging in Bilski (see Bilski, 561 U.S. at 593), the intermediated settlement in Alice (see Alice, 134 S. Ct. at 2356-57), the verifying credit of card transactions in CyberSource (see CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)), the collecting and analyzing of information to detect and notify of misuses in Fair Warning (see FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016)), and the guaranteeing of transactions in buySAFE (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)). Generating an enterprise planning model forecast is also a building block of a market economy. Generating a forecast, like the fundamental business practices supra, is an "abstract idea" beyond the scope of§ 101. See Alice, 134 S. Ct. at 2356. 6 Appeal2017-002361 Application 11/891,570 In addition, we determine Appellants' claim 1, which recites aggregating, manipulating, and generating data, is directed to an abstract idea because the claim is similar to the claims in the Electric Power Group v. Alstom decision. The claims in that case related to "real-time performance monitoring of an electric power grid by collecting data from multiple data sources, analyzing the data, and displaying the results." Elec. Power Grp., LLCv. Alstom S.A., 830F.3d1350, 1351 (Fed. Cir. 2016). Here, like the claims in Elec. Power Group v. Alstom, the "focus of the asserted claims ... is on collecting information, analyzing it, and displaying certain results of the collection and analysis," and is accordingly directed to an abstract idea. Id. at 1354. Our reviewing court has determined information, as such, is an intangible. Bayer AG v. Housey Pharm., Inc., 340 F.3d 1367, 1372 (Fed. Cir. 2003). Our reviewing court has also treated aggregating and manipulating information as within the realm of abstract ideas. See, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014); CyberSource, 654 F.3d at 1370. Merely generating or displaying the results of abstract processes of collecting and analyzing information (such as by generating a composite forecast (claim 1) ), without more, is abstract as an ancillary part of such collection and analysis. See, e.g., Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)); Electric Power Group, 830 F.3d at 1351; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014). 7 Appeal2017-002361 Application 11/891,570 Appellants argue claim 1 is not abstract because it is "directed to a specific implementation of a solution to a problem in the software arts," like the invention discussed in Enfzsh. Appeal Br. 9 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Namely, Appellants argue claim 1 is directed to "aggregating data, including 'task-specific contribution data' that are captured via 'a plurality of task-specific forms' and 'generating, by the computer, a composite forecast from the aggregate contribution data"' thereby solving "a problem in the software arts of how to provide a user interface for the user to input data into the computer in a more intuitive, user friendly, and intuitive way." Appeal Br. 10. This argument is unpersuasive because claim 1, here, is unlike the claims in Enfzsh. There, our reviewing court relied on the distinction made in Alice between, on one hand, computer-functionality improvements and, on the other, uses of existing computers as tools in aid of processes focused on "abstract ideas" (in Alice, as in so many other § 101 cases, the abstract ideas being the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices). Enfzsh, 822 F.3d at 1335-36; see also Alice, 134 S. Ct. at 2358-59. In Enfzsh, the decision to reject the § 101 challenge was applied at stage one because the claims at issue focused, not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement-a particular database technique-in how computers could carry out one of their basic functions of storage and retrieval of data. Enfzsh, 822 F.3d at 1335-36. The present case is different because the focus of claim 1 is not on an improvement in computer-functionality, as in Enfzsh, but on independently abstract ideas that use a computer as a tool, i.e., to collect/aggregate, 8 Appeal2017-002361 Application 11/891,570 analyze/manipulate, and display/generate forecast data; namely, by aggregating task-specific contribution data and business-as-usual contribution data, based on user-customizable overlay calculations, to form aggregate contribution data and to generate a composite forecast. See Appeal Br. 15, claim 1. We conclude that claim 1 focuses on an abstract idea-and hence requires stage-two analysis under § 101. Second Step Turning to the second step of the Alice inquiry, we find nothing in Appellants' claim 1 that adds "significantly more," sufficient to transform the abstract concept of collecting/aggregating, analyzing/manipulating, and generating/displaying information into a patent-eligible application. Alice, 134 S. Ct. at 2357. Merely collecting information for analysis and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 underpins the information- based category of abstract ideas. See Elec. Power Grp., 830 F.3d at 1355. Claim 1 does not require a new source or type of information, or a new technique for analyzing it. See Elec. Power Grp., 830 F.3d at 1355. And claim 1 merely recites a "computer-implemented method" implemented by a generic computer. Consequently, claim 1 does not require an inventive set of components that would generate new data. Id. Moreover, the claim does not invoke any arguably inventive programming. Merely manipulating data for display by itself does not transform the otherwise-abstract processes of information collection and analysis. Id. 9 Appeal2017-002361 Application 11/891,570 In addition, nothing in claim 1, understood in light of the Specification, requires anything other than off-the-shelf, conventional computer technology for collecting, analyzing, and displaying the desired data. The Specification indicates the "techniques described herein may be implemented in hardware, software, firmware, or any combination thereof. ... If implemented in software, the techniques may be realized at least in part by a computer-readable medium comprising" code. Spec. i-f 146. "The code may be executed by one or more processors, such as one or more digital signal processors (DSPs ), general purpose microprocessors, an application specific integrated circuits (ASICs ), field programmable logic arrays (FPGAs ), or other equivalent integrated or discrete logic circuitry." Spec. i-f 14 7. "Network 9 may be any type of communication network, such as a packet-based digital network like the Internet." Spec. i-f 47. Our reviewing court has repeatedly held that such invocations of generic processors, computers, and networks that are not even arguably inventive are "insufficient to pass the test of an inventive concept in the application" of an abstract idea. buySAFE, Inc, 765 F.3d at 1353, 1355; see also Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015). Appellants argue the appealed claim, like the claims in DDR Holdings, is "'necessarily rooted in computer technology in order to overcome a problem specifically arising in [that technology]'." Appeal Br. 12 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258 (Fed. Cir. 2014) (finding an inventive concept in the modification of the conventional mechanics behind website display to produce a dual-source integrated hybrid display); Reply Br. 9. Appellants further argue that 10 Appeal2017-002361 Application 11/891,570 consistent with DDR Holdings, "the claimed solution of the present Application ... overcome[ s] a problem specifically arising in providing user interfaces in computers that enable users of the computers to provide user input." Appeal Br. 12. We disagree. The solution offered by Appellants' claim 1 is not rooted in any novel computer technology, as evidenced by claim 1 reciting a generic computer. Rather than a solution rooted in computer technology, Appellants' Specification identifies a problem that, traditionally, in the course of generating enterprise reports for review by higher management, input "mechanisms typically require tedious rearrangement and/or reentry of interrelated data within the spreadsheet-like screens." Spec. i-f 5. Appellants' claimed invention seeks to solve the identified problem by providing "techniques [to] facilitate the capture and entry of data into an underlying multidimensional dataset through action-based forms." Spec. i-f 6. This problem is a business problem, not a technical problem. Claim 1 recites a specific way and specific context for generating forecast data; namely, "receiving, by a computer, model data," "aggregating, by the computer, and based on [the received model data and] at least one of a plurality of user-customizable overlay calculations," "generating, by the computer, a composite forecast," and "updating, by the computer, [the aggregated data] and a graphical representation of the composite forecast." See claim 1. While these steps limit the scope of the abstract concept of collecting, analyzing, and displaying information, the limitations are not sufficient to transform Appellants' otherwise patent-ineligible abstract idea into patent-eligible subject matter. Fundamentally, the solution Appellants 11 Appeal2017-002361 Application 11/891,570 offer is "an entrepreneurial, rather than a technological, one." DDR, 773 F.3d at 1265 (Mayer, J., dissenting). Appellants argue the Examiner is required to follow the non- precedential decision of Ex Parte Scott, which, according to Appellants, demonstrates claim 1 recites "significantly more than the abstract idea" "because claim 1 is analogous to the claim at issue in Ex parte Scott." Appeal Br. 13; see also Reply Br. 9. We are not persuaded. Ex Parte Scott4 is a non-precedential decision of the Board and, thus, is not binding on the USPTO, including both the PTAB and examiners. Routine PTAB decisions are fact-specific to the case being decided and thus are non-precedential. As PT AB Standard Operating Procedure 2 clearly sets forth, "[ e ]very Board opinion is, by default, a routine opinion until it is designated as precedential or informative" and such "routine opinion[ s] [are] not binding authority." PT AB Standard Operating Procedure 2, Rev. 9, § VI(A). 5' 6 Accordingly, Ex parte Scott is not binding on the Examiner or this panel in this case. 4 Ex parte STEVEN J. SCOTT, THONG T. NGUYEN, GREGGORY CIESLAK, THOMAS LLOYD HEIDEBRECHT, PETE J. KLEIN, and GARY DAN DOTSON, Appeal 2012-009834 (March 12, 2015), httns://e- foia.uspto.gov/Foia/RetrievePdflsystem=BPAI&flNm=fd2012009834-03- 10-2015-1, (last accessed May 10, 2018) 5 https://www.uspto.gov/sites/default/files/documents/sop2-revision-9-dated- 9-22-2014.pdf (last accessed May 10, 2018). 6 The only exception is that routine decisions are law of the case for subsequent examination. See Ex parte Pong, Appeal 2016-002217, 2017 WL 5714381 (PTAB Nov. 6, 2017); see also MPEP § 706.07(h)(XI)(A) (noting that the Board's decision in an application becomes the "law of the case" in that it is controlling on that application and any later related application). 12 Appeal2017-002361 Application 11/891,570 Because Appellants' exemplary claim 1 is directed to a patent- ineligible abstract concept and does not recite something "significantly more" under the second prong of the Alice analysis, we sustain the Examiner's rejection of this claim under 35 U.S.C. § 101 as being directed to non-patentable subject matter in light of Alice and its progeny. The rejection of claims 2-10 and 12-34, which are not argued separately, is sustained for the same reasons. DECISION We affirm the Examiner's rejection of claims 1-10 and 12-34 under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a) (1) (iv). AFFIRMED 13 Copy with citationCopy as parenthetical citation