Ex Parte Tevanian et al

Patent Trial and Appeal Board

May 26, 2016

11753128 (P.T.A.B. May. 26, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111753, 128 0512412007
23694 7590 05/31/2016
Law Office of J. Nicholas Gross, Prof. Corp.
POBOX9489
BERKELEY, CA 94709
FIRST NAMED INVENTOR
A vadis Tevanian JR.
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.
TEV 2007-1 5034
EXAMINER
STERRETT, JONATHAN G
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
05/31/2016 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 ngross@pac bell. net
chris@patentbest.com
eofficeaction@appcoll.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AV ADIS TEV ANIAN, JR. and MARK STEV ANS
Appeal2013-002478 1
Application 11/753, 1282
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
JAMES A. WORTH, Administrative Patent Judges.
WORTH, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-24 and 26-46, which constitute all pending claims in
the application.
We AFFIRM-IN-PART.
1 Our decision refers to the Appellants' Appeal Brief ("Appeal Br.," filed
July 2, 2012) and Reply Brief ("Reply Br.," filed Dec. 3, 2012), and the
Examiner's Final Office Action ("Final Action," mailed Oct. 31, 2011) and
Answer ("Ans.," mailed Oct. 1, 2012).
2 According to Appellants, the real party in interest is Crowd Technologies,
Inc. (Appeal Br. 2).
Appeal2013-002478
Application 11/753, 128
Introduction
Appellants' disclosure relates to a method and system for collecting,
facilitating and compiling prediction information from online users
concerning the performance or time behavior of items, and in particular by
allowing members of a social network to vote on the anticipated price of a
security (Spec. 1, 11. 11-15).
Claims 1, 33, 38, 44, 45, and 46 are the independent claims on
appeal. Claim 1, reproduced below with bracketing material added, is
illustrative of the subject matter on appeal:
1. A method for predicting a future performance of an item
with a computing system comprising:
[a] specifying one or more items to be subjected to a
community based vote;
[b] wherein said items include an item identifier
parameter, a performance parameter, and an optional time
related parameter;
[ c] receiving and counting votes from a population of
persons in the community concerning said set of items with the
computing system;
[ d] generating a future aggregated performance
prediction for said set of items with the computing system
based on said votes received from said population;
[ e] generating a confidence rating with the computing
system, which confidence rating is based on evaluating an
accuracy parameter of said population of persons in the
community and which rating identifies a likelihood of said
future aggregated performance prediction being achieved.
(Appeal Br., Claims App.)
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Application 11/753, 128
Rejections on Appeal
The Examiner maintains, and Appellants appeal, the following
rejections:
I. Claims 1-24 and 26-32 stand rejected under 35 U.S.C. § 101
as being directed to non-statutory subject matter.
II. Claims 1-24 and 26-46 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Phillips (US 6,792,399 Bl, iss.
Sept. 14, 2004) and S. Plous, A Comparison of Strategies for
Reducing Interval Overconfidence in Group Judgments, 80 JOURNAL
OF APPLIED PSYCHOLOGY 443--454 (American Psychological
Association 1995), downloaded from psycnet.apa.org (hereinafter,
"Plous").
ANALYSIS
I. Rejection Under§ 101 (Patentable Subject Matter)
Appellants argue the rejection under§ 101 of claims 1-24 and 26-32
together. We select independent claim 1 as representative. As such, claims
2-24 and 26-32 stand or fall with independent claim 1. See 37 C.F.R.
41.37(c)(iv).
The Examiner determined that claims 1-24 and 26-32 were
unpatentable under § 101 because they failed to comply with the "machine
or transformation test" used by the Federal Circuit in In re Bilksi, 545 F.3d
943 (Fed. Cir. 2008) (see Final Act. 4--5).
Appellants argue that the Examiner erred in so finding because the
claims use a computing system to perform important functions based on
internal processing of a machine (Appeal Br. 9).
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Application 11/753, 128
The Federal Circuit's test in In re Bilksi has been clarified by the
Supreme Court's tests set forth in the line of cases beginning with Bilski v.
Kappas, 561 U.S. 583 (2010), and, culminating more recently, in the
framework set forth in Alice Corp. Pty. Ltd. v. CLS Bank Intern, 134 S. Ct.
2347 (2014).
We agree with the Examiner inasmuch as the claims disclose steps to
be performed by a computer, or a system that performs the steps, where the
same steps could be performed by a person without a computer, i.e., as a
series of mental steps.
Indeed, independent claim 1 discloses an abstract idea of determining
a prediction and a confidence in that prediction, i.e., a likelihood of the
prediction being accurate, which is a well-known and fundamental economic
principle. See Alice, 134 S. Ct. at 2355-56. The other recitations relate to
the same abstract idea and do not add anything, individually or as a whole,
to transform the abstract idea into patent-eligible subject matter. See id. Nor
is there any written description in the Specification or recitation in the
claims to indicate that this is an invention based on advances in computer
technology itself. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014)).
For these reasons, we sustain the Examiner's rejection under§ 101 of
claims 1-24 and 26-32.
II. Rejection Under§ 103 (Obviousness)
Independent claim 1
Appellants argue that Plous fails to disclose generating a confidence
rating with a computing system, as recited by independent claim 1, i.e.,
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Application 11/753, 128
"generating a confidence rating with the computing system, which
confidence rating is based on evaluating an accuracy parameter of said
population of persons in the community and which rating identifies a
likelihood of said future aggregated performance prediction being achieved"
(Appeal Br. 12-14; Reply Br. 3--4). According to the terms of the limitation,
the "confidence rating" is recited as a "likelihood."
The Examiner determines that Plous (pp. 445--446) teaches generating
a confidence rating based on an accuracy parameter of the population of
persons and which identifies a likelihood (e.g., 9 out of 10 estimates which
are correct) (see Final Act. 8), and uses participants' own estimates of their
accuracy to improve their accuracy (Ans. 8).
We are persuaded by Appellants' argument that the "likelihood"
associated with the confidence interval in Plous, i.e., a likelihood of 90%, is
pre-determined, and Plous merely describes a method for determining the
top and bottom values that cut-off the 90% likelihood (see Appeal Br. 12-
14). Plous does not describe using the individual votes to determine the
likelihood. Thus, Plous does not disclose "generating a confidence rating,"
as recited by independent claim 1, where the rating is a "likelihood." The
Examiner does not rely on Phillips to remedy the argued deficiency in Plous,
nor does the Examiner offer reasoning to remedy this deficiency.
We, therefore, do not sustain the Examiner's rejection under§ 103(a)
of independent claim 1 and its dependent claims.
Independent claims 33, 38, 44, 45, and 46 contain similar language
and requirements as independent claim 1. For similar reasons, we do not
sustain the Examiner's rejection under § 10 3 (a) of independent claims 3 3,
38, 44, 45, and 46 and their dependent claims.
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Application 11/753, 128
DECISION
The decision of the Examiner reject claims 1-24 and 26-32 under 35
U.S.C. § 101 is affirmed.
The decision of the Examiner reject claims 1-24 and 26-46 under 35
U.S.C. § 103(a) is reversed.
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-IN-PART
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