Ex Parte Wagner

Patent Trial and Appeal Board

May 10, 2018

13558333 (P.T.A.B. May. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/558,333 07/25/2012 Richard Chadwick Wagner
36088 7590 05/10/2018
KANG LIM
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-1201 7409
EXAMINER
3494 Camino Tassajara #444 JEANTY, ROMAIN
Danville, CA 94506
ART UNIT PAPER NUMBER
3623
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
Appeal2017-003310
Application 13/558,333 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 12-16 and 22-28, all of
which are pending on appeal. We have jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM. 2
1 According to Appellant, the real party in interest is Prevedere, Inc. Br. 2.
2 Our Decision refers to the Specification ("Spec."); Appeal Brief filed
March 11, 2016 ("Br."); Examiner's Answer mailed July 15, 2016 ("Ans.");
and Final Office Action mailed January 8, 2015 ("Final Act.").
Appeal2017-003310
Application 13/558,333
RELATED APPEALS
This appeal is related to Appeal No. 2017-002669 in Application No.
14/102, 142.
STATEMENT OF THE CASE
Appellant's invention relates to systems and methods for analyzing
econometric data. Spec. p.1, 11. 10-14.
Claim 12 is illustrative of Appellant's invention, as reproduced below:
12. A method of identifying economic indicators for
use in business forecasting comprising:
a) retrieving at an application server from an internal data source via
an aggregation server a first econometric data series selected from a
collection of internal econometric data series wherein each of the internal
econometric data series comprises 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;
b) retrieving at the application server from an external data source via
the aggregation server a second econometric data series selected from a
collection of forecasted econometric data series wherein each of the
forecasted econometric data series comprises i) a time domain having a
plurality of historic time values and a plurality of future time values, and ii)
a value domain having actual econometric data values for each of the time
values in the plurality of historic time values and forecasted econometric
data values for each of the time values in the plurality of future time values;
c) transmitting the first and second economic data series from the
application server for display on a 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
a time domain shifting control for transposing the time domain of the
first econometric data series;
d) receiving a shift magnitude and a shift direction at the time domain
shifting control displayed on the graphical display;
e) rep lotting the first econometric data series in the chart in a second
position by transposing the time domain of the first econometric data series
by the shift magnitude and shift direction;
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Application 13/558,333
f) displaying on the graphical display one or more of a leading,
lagging, cyclic, countercyclic, procyclic or acyclic relationship between the
first and second econometric data series based on the shift magnitude and
shift direction; and
g) replotting the first econometric data series in the chart in a third
position wherein the time domain of the first econometric data series further
comprises a plurality of future time values corresponding to the plurality of
future time values of the time domain of the second econometric data series,
and wherein the value domain of the first econometric data series further
comprises forecasted econometric data values for each of the time values in
the plurality of future time values, wherein the forecasted econometric data
values of the value domain of the first econometric data series are derived
from:
the displayed one or more of a leading, lagging, cyclic, countercyclic,
procyclic or acyclic relationship between the first and second econometric
data series; and
the forecasted econometric data values of the value domain of the
second econometric data series.
(Br., Claims App'x, 18-19.)
REJECTION
Claims 12-16 and 22-28 stand rejected under 35 U.S.C. § 101. Final
Act. 8-9; Ans. 2.
ANALYSIS
The Examiner finds claims 12-16 and 22-28 are directed to ideas that
have been identified as abstract by our reviewing court. Final Act. 8. In
particular, the Examiner finds that the abstract idea underlying these claims
is "a method for user control of plotted data." Final Act. 8; Ans. 3. 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. 8-9; Ans. 4---6.
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Application 13/558,333
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.
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., 133 S. Ct. 2107, 2116
(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., 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
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Application 13/558,333
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. (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. 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 "user
control of plotted data." Ans. 3--4. All the steps recited in Appellant's
claims, including, for example: (i) "retrieving," (ii) "transmitting the first
and second economic data series," and (iii) "replotting the first economic
data series" are abstract processes of retrieving, transmitting, 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. 14. Rather, none of the hardware recited by the claims "offers a
meaningful limitation beyond generally linking 'the use of the [method] to a
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particular technological environment,' that is, implementation via
computers." Alice 134 S. Ct. at 2360 (quoting Bilski, 561 U.S. at 610-11).
As the Examiner explains, and Appellant does not rebut, the Specification
only discusses conventional and generic servers. Ans. 5 (citing Spec. pp.
10-11; Figs. 1, lB). Additionally, as the Examiner explains, no data is
"transformed" by the claims; but rather, merely displayed, plotted, or
replotted as part of a chart on a screen. Id.
Limiting an abstract concept of plotted 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.3d 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").
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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.
Microsoft Corp., 822 F.3d 1327 (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. 15), 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
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claims under 35 U.S.C. § 101 as being directed to non-statutory subject
matter in light of Alice and its progeny.
CONCLUSION
On the record before us, we conclude Appellant has not demonstrated
the Examiner erred in rejecting claims 12-16 and 22-28 under 35 U.S.C.
§ 101.
DECISION
We affirm the Examiner's rejection of claims 12-16 and 22-28.
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
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