Ex Parte Vaughan

Patent Trial and Appeal Board

Jan 11, 2018

13852415 (P.T.A.B. Jan. 11, 2018)

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.
13/852,415 03/28/2013 Kenneth Vaughan M-6945.001 US 7677
103344 7590 01/11/2018
Moritt Hock & Hamroff LLP
400 Garden City Plaza
Garden City, NY 11530
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
01/11/2018 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
Ex Parte KENNETH VAUGHAN
Appeal 2016-006458
Application 13/852,415
Technology Center 3600
Before MICHAEL J. STRAUSS, BETH Z. SHAW, and
ADAM J. PYONIN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL1
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner’s Final Rejection of claims 30—36, which represent all the pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
Appellant’s invention is for providing financial information and
educational guidance. Spec. p. 1,11. 10-12.
1 Throughout this Decision we have considered the Appeal Brief filed
December 18, 2015 (“Br.”), the Examiner’s Answer mailed April 13, 2016
(“Ans.”), and the Final Rejection mailed July 22, 2015 (“Final Act.”).
Appeal 2016-006458
Application 13/852,415
Claim 30 is illustrative of the claims at issue and is reproduced below:
30. A system effective to output financial information on a device,
the system comprising:
a memory configured to store:
first analytical information that includes a first definition
defining a first meaning of a first financial topic, where the first
meaning includes an explanation of a usefulness of the first financial
topic in evaluating a target security, and
second analytical information that includes a second definition
defining a second meaning of a second financial topic, where the
second meaning includes an explanation of a usefulness of the second
financial topic in evaluating the target security;
a web processor configured to be in communication with the
memory, the web processor being configured to:
send an instruction over the Internet to the device;
receive a selection over the Internet from the device,
wherein the selection indicates the target security;
in response to receipt of the selection, cause the device to
display an indication of the target security in a first panel;
in response to receipt of the selection, cause the device to
display financial information relating to the target security in a
second panel different from the first panel;
in response to receipt of the selection, send the first
analytical information that includes the first definition defining
the first meaning of the first financial topic over the Internet to
the device;
in response to receipt of the selection, cause the device to
display the first analytical information that includes the first
definition defining the first meaning of the first financial topic
in a third panel different from the first panel and different from
the second panel;
receive, from the device and over the Internet, a first
value stored in the device, wherein the first value relates to a
first application of the first analytical information to the target
security by a user, and wherein storing of the first value in the
device is performed by the device in response to an execution,
by the device, of the instruction sent from the web processor to
2
Appeal 2016-006458
Application 13/852,415
the device, and wherein the instruction is effective to instruct
the device to store the first value in the device;
in response to receipt of the first value, send the second
analytical information that includes the second definition
defining the second meaning of the second financial topic over
the Internet to the device;
in response to receipt of the first value, update the third
panel to cause the device to display the second analytical
information that includes the second definition defining the
second meaning of the second financial topic in the third panel;
receive, from the device and over the Internet, a second
value stored in the device, wherein the second value relates to a
second application of the second analytical information to the
target security by the user, and wherein storing of the second
value in the device is performed by the device in response to the
execution, by the device, of the instruction sent from the web
processor to the device, and wherein the instruction is effective
to instruct the device to store the second value in the device;
determine a weighted average of the first value that
relates to the first application of the first analytical information
to the target security by the user, and of the second value that
relates to the second application of the second analytical
information to the target security by the user;
determine a confidence value, based on the weighted
average, where the confidence value reflects a confidence of the
user in an investment quality of the target security, the
determination of the confidence value is based on the first value
and based on the second value;
send the confidence value for the target security over the
Internet to the device;
cause the device to display at least one of:
the confidence value;
one or more average values, wherein the one or
more average values reflect confidence of other users
different from the user in the investment quality of the
target security; and
one or more determined confidence values,
wherein the one or more determined confidence values
3
Appeal 2016-006458
Application 13/852,415
reflect a confidence of the user in target securities
different from the target security.
REJECTION
The Examiner rejected claims 30-36 under 35U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 2.
ANALYSIS
We have reviewed Appellant’s arguments in the Brief, the Examiner’s
rejection, and the Examiner’s response to Appellant’s arguments. Appellant
does not proffer sufficient argument or evidence for us to find error in the
Examiner’s findings. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI
2010) (precedential). For at least the reasons discussed below, we agree
with and adopt the Examiner’s findings and conclusions in the Final Action
and Answer.
With respect to claims 30—36, the Examiner finds these claims are
directed to an abstract idea of fundamental economic practice and
mathematical relationships/formulas, in particular “storing analytical
information, receiv[ing] selection of target security, displaying] financial
information and analytical information, receiving] values stored, sending]
analytical information including] definitions, determining] confidence
value based on weighted average and determining] and displaying a]
confidence value determined based on first and second values.” Ans. 5. The
Examiner also finds additional elements recited in these claims do not
amount to significantly more than the abstract idea itself. Id. According to
the Examiner, the claims require no more than using the Internet to send and
receive information. Id.
Appellant presents several arguments against the 35 U.S.C. § 101
4
Appeal 2016-006458
Application 13/852,415
rejection. Br. 6—11. Appellant contends the claims are not directed to an
abstract idea and that the claims amount to significantly more than an
abstract idea. Id.
We do not find Appellant’s arguments persuasive. Instead, we find
the Examiner has provided a comprehensive response to Appellant’s
arguments supported by a preponderance of evidence. Ans. 5—6; see also
Advisory Act. 2; Final Act. 2—\. As such, we agree with and adopt the
Examiner’s findings and explanations provided therein. Id. The Supreme
Court has long held that “[l]aws of nature, natural phenomena, and abstract
ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLSBankInt’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 ‘[a]n idea of itself, is not patentable.’”
Alice, 134 S. Ct. at 2355 (quoting Gottschalk v. Benson, 409 U.S. 63, 67
(1972)).
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
5
Appeal 2016-006458
Application 13/852,415
application.” Id. (quoting Mayo, 132 S. Ct. at 1297—1298). 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. (alteration 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. Kappos, 561 U.S. 593, 610-11 (2010) (citation omitted).
In the first step of the Alice inquiry, we agree that Appellant’s claims
are directed to an abstract idea, as explained by the Examiner. Ans. 5; Final
Act. 3. All the steps recited in Appellant’s claims are abstract processes of
storing, sending, receiving, determining, updating, and displaying data. Cf.
Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)
(“collecting, analyzing, and displaying certain results of the collection and
analysis” is abstract); In re Salwan, Appeal No. 2016-2079, 2017 WF
957239 at *3 (Fed. Cir. Mar. 13, 2017) (affirming the rejection under § 101
of claims directed to “storing, communicating, transferring, and reporting
patient health information,” noting that “while these concepts may be
directed to practical concepts, they are fundamental economic and
conventional business practices”); Cyberfone Systems, LLC v. CNN
Interactive Grp, Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014)
(nonprecedential) (“using categories to organize, store, and transmit
information is well-established”).
In the second step of the Alice inquiry, the limitations in Appellant’s
claims do not add anything “significantly more” to transform into a patent-
6
Appeal 2016-006458
Application 13/852,415
eligible application the abstract concept of storing, sending, receiving,
determining, updating, and displaying data. Ans. 5; see also Alice, 134 S.
Ct. at 2357. We agree with the Examiner that the specific details of the type
of information being stored and received and how the weighted average and
values are determined are further details of the abstract idea and are not
“significantly more” than the abstract idea. Ans. 5. These are ordinary steps
in data analysis and are recited in an ordinary order. Limiting an abstract
concept of storing and organizing data to a general purpose computer having
generic components, such as the “device” recited in Appellant’s claims, does
not make the abstract concept patent-eligible under 35 U.S.C. § 101. As
recognized by the Supreme Court, “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 134 S. Ct. at 2358; see id. at 2359 (concluding
claims “simply instructing] the practitioner to implement the abstract idea
of intermediated settlement on a generic computer” are not patent eligible).
Although Appellant argues the claims “could not be performed in a
pre-Internet world” (Br. 11), in this case, the use of the Internet is
insufficient to transform Appellant’s patent-ineligible abstract idea into a
patent-eligible invention. As our reviewing court has held, “the use of the
Internet is not sufficient to save otherwise abstract claims from ineli
under § 101.” Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715—16
(claims merely reciting abstract idea of using advertising as currency as
applied to particular technological environment of the Internet are not patent
eligible; “use of the Internet does not transform an otherwise abstract idea
into patent-eligible subject matter”); see also Accenture Global Servs.,
GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344-45 (Fed. Cir.
7
Appeal 2016-006458
Application 13/852,415
2013) (claims reciting “generalized software components arranged to
implement an abstract concept [of generating insurance-policy-related tasks
based on rules to be completed upon the occurrence of an event] on a
computer” are not patent eligible); Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333—34 (Fed. Cir. 2012) (“[sjimply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible” (internal citation omitted)).
Appellant overlooks that our reviewing court cautioned against
Appellant’s position in its DDR Holdings decision.
We caution, however, that not all claims purporting to address
Internet-centric challenges are eligible for patent. For example,
in our recently-decided Ultramercial opinion, the patentee
argued that its claims were “directed to a specific method of
advertising and content distribution that was previously
unknown and never employed on the Internet before.” 772 F.3d
at 714. But this alone could not render its claims patent-eligible.
In particular, we found the claims to merely recite the abstract
idea of “offering media content in exchange for viewing an
advertisement,” along with “routine additional steps such as
updating an activity log, requiring a request from the consumer
to view the ad, restrictions on public access, and use of the
Internet.” Id. At 715—716.
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1258 (2014). The
claimed invention in DDR Holdings did not merely use the Internet, but
rather changed how interactions on the Internet operated. Appellant’s claims
are not rooted in computer technology as outlined in DDR Holdings.
Rather, as admitted by Appellant, the recited computer technology is only
used to increase the efficiency of known processes. Br. 11 (“in a pre-
Internet world, a user would have to spend a significant amount of time and
effort to obtain numerous printed materials including definitions of financial
8
Appeal 2016-006458
Application 13/852,415
topics.”).
With regard to Appellant’s argument that the pending claims are
patent eligible because there are no obviousness or novelty rejections of the
claims, (see Br. 11), Appellant improperly conflates the requirements for
eligible subject matter (§ 101) with the independent requirements of novelty
(§ 102) and non-obviousness (§ 103). “The ‘novelty’ of any element or
steps in a process, or even of the process itself, is of no relevance in
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); see also Genetic Techs. Ltd. v. MerialL.L.C., 818
F.3d 1369, 1376 (Fed. Cir. 2016) (stating that, “under the Mayo/Alice
framework, a claim directed to a newly discovered law of nature (or natural
phenomenon or abstract idea) cannot rely on the novelty of that discovery
for the inventive concept necessary for patent eligibility”).
Because Appellant’s claims 30—36 are directed to a patent-ineligible
abstract concept and do not recite something “significantly more” under the
second prong of the Alice analysis, we sustain the Examiner’s rejection of
these claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
DECISION
The decision of the Examiner to reject claims 30—36 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)(l)(iv).
AFFIRMED
9