Ex Parte Van Harlow et al

Patent Trials and Appeals Board

May 31, 2019

13900978 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/900,978 05/23/2013
55740 7590
Gesmer Updegrove LLP
40 Broad Street
BOSTON, MA 02109
06/03/2019
FIRST NAMED INVENTOR
William Van Harlow
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.
PUTNAM.9471 9269
EXAMINER
KAZIMI, HAN! M
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
06/03/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte WILLIAM VAN HARLOW, PAUL P. O'CONNELL,
DAVID R. NGUYEN, STACI DUBOVIK, and
ERIC H. SAGAL YN
Appeal 2018-001145
Application 13/900,978
Technology Center 3600
Before ELENI MANTIS MERCADER, JOYCE CRAIG, and
ALEX S. YAP, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
final rejection of claims 1-18, 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 Appellants, the real party in interest is Putnam Investments.
App. Br. 2.
Appeal 2018-001145
Application 13/900,978
INVENTION
Appellants' invention relates to a lifetime income analysis tool.
Abstract. Claim 10 is representative and reads as follows:
10. A method of performing retirement planning analysis
compnsmg
providing selective information relating to an individual's
retirement using a client-based application, and allowing users
to customize and visualize their retirement plan to determine
viability and estimate expected future monthly income needed
to cover a broad range of health care costs in retirement
utilizing a plurality of LIAT factors, the client-base application
formats the selective information for transmission as requests
using a request handler to generate proper shared keys or public
certificates; and
receiving and processing the requests from the client-
based application using a server-based application to retrieve
and store retirement plan information, the server-based web-
service includes the request handler having routines to process
the requests useable by a third-party service platform, the
request handler includes a verify module that determines if the
requests include the proper shared keys or public certificates.
REJECTION
Claims 1-18 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception, without significantly
more. Final Act. 2 (referencing previous office action ("Non-Final Act."
dated Dec. 14, 2015)).
ANALYSIS
Section 101 of the Patent Act provides that "any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the
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Application 13/900,978
Supreme Court has long recognized an implicit exception to this section:
"'Laws of nature, natural phenomena, and abstract ideas are not
patentable."' Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014)
(quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is "directed to one
ofthosepatent-ineligible concepts." Alice, 573 U.S. at 217. Ifso, we then
examine "the elements of [the] 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." Alice, 573 U.S. at
217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 78, 79 (2012)). That is, we examine the claim for an "inventive
concept," "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, 573 U.S. at 217-18 ( alteration
in original) (quoting Mayo, 566 U.S. at 72-73).
The Patent Office recently revised its guidance about this framework.
See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019) ("Revised Guidance"). Under the Revised Guidance, to
decide whether a claim is directed to an abstract idea, we evaluate whether
the claim (1) recites subject matter that falls within one of the abstract idea
groupings identified in the Revised Guidance and (2) fails to integrate the
recited abstract idea into a practical application. See Revised Guidance, 84
Fed. Reg. at 51, 54. If the claim is directed to an abstract idea, as noted
above, we then determine whether the claim has an inventive concept. The
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Revised Guidance explains that when making this determination, we should
consider whether the additional claim elements add "a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field" or "simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality." Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we tum to the § 101 rejection.
Abstract Idea
Appellants argue claims 1-18 as a group. See App. Br. 5. We select
independent claim 10 as representative of the group. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
The Examiner determined that claims 1-18 recite fundamental
commercial practices of providing retirement calculation tools to allow users
to incorporate income and healthcare costs in evaluating retirement options.
See Non-Final Act. 3. The Examiner concluded the claims recite a method
of organizing human activity, which is an abstract idea identified in the
Revised Guidance. See Non-Final Act. 3; Revised Guidance, 84 Fed. Reg.
at 52. For the reasons explained below, we agree with the Examiner that
claim 1 recites commercial interactions, which are a method of organizing
human activity, and thus an abstract idea.
Claim 10 recites a method that includes:
"providing selective information relating to an individual's retirement
... and allowing users to customize and visualize their retirement plan to
determine viability and estimate expected future monthly income needed to
cover a broad range of health care costs in retirement utilizing a plurality of
LIAT factors ... "; and "receiving and processing the requests .... "
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Application 13/900,978
Providing selective information related to an individual's retirement and
allowing the individual to customize and visualize their retirement plan are
steps that would be taken during commercial interactions when organizing
human activity. Here, the election and customization of information takes
place in the context of using "a lifetime income analysis tool (LIAT)."
Spec. 3. We thus determine that independent claim 10 recites commercial
interactions, one of the certain methods of organizing human activity
identified in the Revised Guidance. See Revised Guidance, 84 Fed. Reg. at
52. Claim 10, therefore, recites an abstract idea. Independent claim 1
recites similar limitations, and we conclude claim 1 also recites commercial
interactions, which is a certain methods of organizing human activity, and
thus an abstract idea.
Because we determine that claim 10 recites an abstract idea, we next
consider whether claim 10 integrates the abstract idea into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
consider whether there are any additional elements beyond the abstract idea
that, individually or in combination, "integrate the [ abstract idea] into a
practical application, using one or more of the considerations laid out by the
Supreme Court and the Federal Circuit." Revised Guidance, 84 Fed. Reg. at
54--55.
Outside of the elements that make up the abstract idea, claim 10
recites the following additional elements: "using a client-based application,"
"the client-base2 application formats the selective information for
2 In the event of further prosecution, we leave it to the Examiner to
determine whether the claim term "client-base application" lacks antecedent
basis and is therefore indefinite under 35 U.S.C. § 112, second paragraph.
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transmission as requests using a request handler to generate proper shared
keys or public certificates," "using a server-based application to retrieve and
store retirement plan information," and "the server-based web-service3
includes the request handler having routines to process the requests useable
by a third-party service platform, the request handler includes a verify
module that determines if the requests include the proper shared keys or
public certificates." App. Br. 11 (Claims App'x).
The written description indicates that this system encompasses generic
computer components. For example, the written description describes that a
user "can interact with LIAT thru any web-based client application 10 that
leverages HTML, CSS, and JavaScript, such as a web browser." Spec. 9
( emphasis added); see also Spec. 11; Fig. 4. The written description also
describes that the server provides the results of its LIAT analysis to the user
via the user interface 60 of Figure 4, and that server 40 uses generic
computer components such as memory and a database. See Spec. 10, Fig. 3.
In addition, the recited "request handler" and "shared keys" are described at
a high level, without describing any particulars. Spec. 9. Given these
disclosures, we determine that the recited method uses generic computer
components as a tool to perform an abstract idea.
Appellants contend that the claim limitation "the server-based web-
service includes the request handler having routines to process the requests
useable by a third-party service platform, the request handler includes a
verify module that determines if the requests include the proper shared keys
3 In the event of further prosecution, we leave it to the Examiner to
determine whether the claim term "server-based web-service" lacks
antecedent basis and is therefore indefinite under 35 U.S.C. § 112, second
paragraph.
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or public certificates" is directed to providing efficient ways to protect and
retrieve relevant financial information in a client-server network. App. Br.
8.
We are not persuaded by Appellants' argument. As discussed above,
the Specification does not describe the request handler in detail or provide
any particulars about the allegedly efficient way "to protect and retrieve
relevant financial information in a client-server network." Id.; See Spec. 9,
Fig. 2. Appellants have not persuasively explained how the recited request
handler improves the functioning of a computer or other technology or
technical field, or otherwise meaningfully limits the judicial exception. We
agree with the Examiner that the claimed invention is directed to solving a
business problem, but the additional elements are not a technological
solution to a technological problem, or a solution to the problem introduced
by the technology itself. Final Act. 3--4.
We thus determine that claim 10 does not integrate the recited abstract
idea into a practical application. See Alice, 573 U.S. at 223-24 ("[W]holly
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."' ( quoting
Mayo, 566 U.S. at 77)); see also Revised Guidance, 84 Fed. Reg. at 55
( explaining that merely using a computer as a tool to perform an abstract
idea may show that an abstract idea has not been integrated into a practical
application).
For these reasons, we conclude claim 10 is not integrated into a
practical application and is directed to a judicial exception.
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Inventive Concept
Finally, we consider whether claim 10 has an "inventive concept."
That is, we examine "the elements of [the] 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." Alice,
573 U.S. at 217 ( quoting Mayo, 566 U.S. at 78, 79). Under the Revised
Guidance, we evaluate whether the additional claim elements add "a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field" or "simply append[] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality." Revised Guidance, 84 Fed.
Reg. at 56.
The Examiner determined that the additional elements recited in claim
10 execute in a manner "routinely and conventionally expected of these
elements" at least because "a module (software) and a processor are used to
calculate the data and process the data." Non-Final Act. 4. In response,
Appellants contend the Examiner erred because the claim limitations "the
server-based web-service includes the request handler having routines to
process the requests useable by a third-party service platform, the request
handler includes a verify module that determines if the requests include the
proper shared keys or public certificates" are not merely generic computer
steps or functions, instead provide a novel way to protect financial data in
client-server network. Non-Final Act. 8-9.
We are not persuaded that the Examiner erred. As discussed above,
the written description indicates that the claimed invention uses generic
computer components to perform generic computer functions, such as
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Application 13/900,978
providing information, receiving and processing requests, and determining
whether requests include proper shared keys or public certificates. See, e.g.,
Spec. ,r,r 9-11. The written description provides few details about how the
system performs these functions and generally describes the functions in a
result-oriented manner. See, e.g., Spec. ,r,r 9-11. As a result, the written
description adequately supports the Examiner's determination the disputed,
additional element recited in claim 10 perform well-understood, routine and
conventional activities. Cf Hybritech Inc. v. Monoclonal Antibodies, Inc.,
802 F.2d 1367, 1384 (Fed. Cir. 1986) (explaining that "a patent need not
teach, and preferably omits, what is well known in the art"); see also Robert
W. Bahr, Memorandum on Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.), 3 (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419 .PDF ( explaining that a specification that describes additional
elements "in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)" can
show that the elements are well understood, routine, and conventional).
For these reasons, claim 10 "simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality." Revised Guidance, 84 Fed. Reg. at 56. We thus
determine that claim 10 does not contain an inventive concept.
Conclusion
For at least the above reasons, we determine that representative claim
10 is directed to a method of organizing human activity and does not have an
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inventive concept. We therefore sustain the Examiner's rejection of claim
10 under§ 101. We also sustain the Examiner's§ 101 rejection of grouped
independent claim 1 and grouped dependent claims 2-9 and 11-18.
DECISION
We affirm the decision of the Examiner rejecting claims 1-18.
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(±).
AFFIRMED
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