Ex Parte Wagner

Patent Trial and Appeal Board

May 10, 2018

14102142 (P.T.A.B. May. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/102,142 12/10/2013
36088 7590 05/10/2018
KANG LIM
3494 Camino Tassajara #444
Danville, CA 94506
FIRST NAMED INVENTOR
Richard Chadwick Wagner
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.
PRV-1302 3001
EXAMINER
SINGH, GURKANW ALJIT
ART UNIT PAPER NUMBER
3683
MAILDATE DELIVERY MODE
05/10/2018 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 RICHARD CHADWICK WAGNER
Appeal2017-002669
Application 14/102, 142 1
Technology Center 3600
Before ALLEN R. MacDONALD, BETH Z. SHAW, and
NABEEL U. KHAN, Administrative Patent Judges.
SHAW, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's Final Office Action rejecting claims 1-15, all of which are
pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 According to Appellant, the real party in interest is Prevedere, Inc. Br. 3.
2 Our Decision refers to the Appeal Brief filed March 23, 2016 ("Br.");
Examiner's Answer mailed September 30, 2016 ("Ans."); and Final Office
Action mailed July 27, 2015 ("Final Act.").
Appeal2017-002669
Application 14/102, 142
RELATED APPEALS
This appeal is related to Appeal No. 2017-003310 in Application No.
13/558,333.
STATEMENT OF THE CASE
Appellant's invention relates to systems and methods for analyzing
econometric data. Spec. i-f 3.
Claim 1 is illustrative of Appellant's invention, as reproduced below:
1. A method of graphically analyzing econometric
data on a graphical display comprising the steps of:
a) receiving at the graphical display a first selection of a
first metric and a second selection of a second metric;
b) transmitting the first and second selections from the
graphical display to an application server;
c) requesting from at least one metrics database:
a first econometric data series corresponding to the first
metric, comprising i) a time domain having a plurality of time
values, and ii) a value domain having econometric data values
for each of the time values in the plurality of time values;
and
a second econometric data series corresponding to the
second metric, comprising i) a time domain having a plurality
of time values, and ii) a value domain having econometric data
values for each of the time values in the plurality of time
values;
d) transmitting the first and second econometric data
series from the at least one metrics database to the application
server;
e) transmitting the first and second econometric data
series from the application server for display on the graphical
display in a chart comprising:
the first econometric data series plotted on the chart in a
first position;
the second econometric data series plotted on the chart;
and
2
Appeal2017-002669
Application 14/102, 142
a time domain shifting control for transposing the time
domain of the first econometric data series,
wherein the plotted first and second econometric data
series each comprise a plurality of inflection points;
f) receiving a shift magnitude and a shift direction at the
time domain shifting control displayed on the graphical display;
g) replotting the first econometric data series on the chart
in a second position by transposing the time domain of the first
econometric data series by the shift magnitude and shift
direction; and
h) repeating the previous two steps until one or more
inflection points of the plurality of inflection points of the
replotted first econometric data series is aligned with one or
more inflection points of the plurality of inflection points of the
plotted second econometric data series.
REJECTION
Claims 1-15 stand rejected under 35 U.S.C. § 101. Final Act. 7-10.
ANALYSIS
The Examiner finds claims 1-15 are directed to ideas that have been
identified as abstract by our reviewing court. Final Act. 7. In particular, the
Examiner finds that the abstract idea underlying these claims is "replotting
data on a graphical display." Final Act. 9; Ans. 4. 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 a generic computer device. Final Act. 9-10; Ans. 8-9.
Appellant presents several arguments against the 35 U.S.C. § 101
rejection. Br. 11-21. Appellant contends the claims are not directed to an
abstract idea and that the claims amount to significantly more than the
abstract idea alleged by the Examiner. Br. 4--11.
3
Appeal2017-002669
Application 14/102, 142
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. 2-12. As such,
we adopt the Examiner's findings and explanations provided therein. Id. At
the outset, we note the Supreme Court has long held that "[l]aws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty.
Ltd. v. CLS Bank Intern., 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-590
(2013)). The "'abstract ideas' category embodies 'the longstanding rule that
'[a]n idea, by itself, is not patentable."' Id. 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., 566 U.S. 66, 76-79 (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, 566 U.S. at 78-80). 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
4
Appeal2017-002669
Application 14/102, 142
concept] itself."' Id. (alteration in original) (quotingMayo,566 U.S. at 72-
73). 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) (citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that Appellant's claims are directed to an abstract idea of "plotting
data on a graphical display." Ans. 4. All the steps recited in Appellant's
claims, including, for example: (i) "receiving ... a first selection of a first
metric and a second selection of a second metric," (ii) "transmitting the first
and second selections," (iii) "requesting" various data series, and "replotting
the first econometric data series" are abstract processes of receiving,
transmitting, requesting, and plotting data.
Turning to the second step of the Alice inquiry, we find nothing in
Appellant's claims that adds anything "significantly more" to transform
them into a patent-eligible application. Alice, 134 S. Ct. at 2357. The
claimed steps are ordinary steps in data analysis and are recited in an
ordinary order.
For at least the reasons stated in the Answer, we are not persuaded by
Appellant's unsupported attorney argument that there is a "transformation of
the data claimed" or that a "particular machine" is required by the claims.
Br. 18. Rather, none of the hardware recited by the claims "offers a
meaningful limitation beyond generally linking 'the use of the [method] to a
particular technological environment,' that is, implementation via
computers." Alice 134 S. Ct. at 1291 (quoting Bilski, 561 U.S. at 610-11).
As the Examiner explains, and Appellant does not rebut, the Specification
5
Appeal2017-002669
Application 14/102, 142
only discusses conventional and generic servers. Ans. 8-9 (citing Spec. i-fi-1
51-54). Additionally, as the Examiner explains, no data is "transformed" by
the claims, but rather, merely replotted. Ans. 11.
Limiting an abstract concept of "plotting data" to a general purpose
computer having generic components, such as the "application server"
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 instruct[ing] the practitioner to
implement the abstract idea of intermediated settlement on a generic
computer" are not patent eligible); see also Ultramercial, 772 F .3 d at 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); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1344--45 (Fed. Cir. 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) ("[s]imply adding a
'computer aided' limitation to a claim covering an abstract concept, without
more, is insufficient to render [a] claim patent eligible").
The claims are neither rooted in computer technology as outlined in
DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014),
nor do they seek to improve any type of computer capabilities, such as a
"self-referential table for a computer database" outlined in Enfish, LLC v.
6
Appeal2017-002669
Application 14/102, 142
Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). "[M]erely
'configur[ing]' [a] generic computer[] in order to 'supplant and enhance' an
otherwise abstract manual process is precisely the sort of invention that the
Alice Court deemed ineligible for patenting." See Credit Acceptance Corp.
v. Westlake Servs., 859 F.3d 1044, 1056 (Fed. Cir. 2017 (alteration in
original)).
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. 19), 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. Merial L.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 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.
7
Appeal2017-002669
Application 14/102, 142
CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 1-15 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's rejection of claims 1-15.
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
8