CLEARCAPITAL.COM, INC.

Patent Trials and Appeals Board

Oct 19, 2020

2020000097 (P.T.A.B. Oct. 19, 2020)

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.
13/653,388 10/16/2012 Kevin Leon Marshall CCAP-001DVB 4355
138718 7590 10/19/2020
Polsinelli LLP
3 Embarcadero Center
Suite 2400
San Francisco, CA 94111
EXAMINER
WHITAKER, ANDREW B
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
10/19/2020 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):
sfpatent@polsinelli.com
uspt@polsinelli.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte KEVIN LEON MARSHALL, SEAN M. McSWEENEY,
and ALEXANDER VILLACORTA
____________

Appeal 2020-000097
Application 13/653,388
Technology Center 3600
____________

Before CAROLYN D. THOMAS, ADAM J. PYONIN, and
PHILLIP A. BENNETT, Administrative Patent Judges.

THOMAS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

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INTRODUCTION
Appellant1 requests rehearing of the Patent Trial and Appeal Board’s
(“Board”) Decision mailed July 21, 2020 (“Decision”), in which we
affirmed the rejection of claims 10–24 under 35 U.S.C. § 101 and also
affirmed the rejection of claims 10–24 under § 103(a) as being unpatentable
over Florance (US 2009/0132316 A1, May 21, 2009), Rothstein (US
6,058,369, May 2, 2000), and Kagarlis (US 2008/0168004 A1, July 10,
2008). The request for rehearing is denied.

ANALYSIS
In the Request for Rehearing (“Req. Reh’g”) filed September 21,
2020, Appellant makes the following allegations:
First, Appellant broadly contends that “the USPTO recently revised
the Manual of Patent Examination and Procedure (MPEP) on June 30, 2020
[and] [a]s such, Appellant has not yet had the opportunity to present its
arguments regarding how the revised MPEP applies to the present claims.”
Req. Reh’g 2.
We emphasize that a request for rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 CFR 41.52(a)(1) . Here, Appellant has not specifically
pointed out any points overlooked or misapprehended by the Board in its
Decision by any recent revisions to the MPEP. Therefore, we find this first
argument unavailing given the lack of particularity.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as
ClearCaptial.com, Inc. Appeal Br. 3.
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Second, Appellant contends that “[t]he Board Decision overlooks that
building data models or modelling data – let alone the specific manner
claimed – is not a fundamental economic principle under the revised MPEP.
In particular, the claimed data model is a type of data structure.” Req. Reh’g
2; see also id. at 3 (“While the act of ‘pricing’ or ‘pricing data’ itself may be
economic in nature, the present claims are not drawn to the act of ‘pricing’
nor ‘pricing data.’”); see also id. (“[T]he claimed solution is necessarily
rooted in digital data modelling technologies.”); see also id. at 4 (“Improved
data modelling is a technical improvement.”); see also id. (“The Board
Decision therefore overlooks that having some relationship to a business
challenge does not negate an inventive concept.”). We disagree with
Appellant that the aforementioned arguments were overlooked.
We point out that Appellant is not identifying arguments previously
made by Appellant in the Briefs that were “overlooked” by the Board, but
rather is attempting to present supplemental or new arguments. See
generally Appeal Brief. Such arguments at this stage of the prosecution are
inappropriate and will not be considered. See 37 C.F.R. § 41.52(a)(1).
Belated arguments are technically waived. See Ex parte Borden, 93
USPQ2d 1473, 1474 (BPAI 2010) (informative) (“[T]he reply brief [is not]
an opportunity to make arguments that could have been made in the
principal brief on appeal to rebut the Examiner's rejections, but were not.”).
This is equally applicable to belated arguments in the Request for Rehearing.
Again, the Board could not have overlooked what was not presented to
it. Cf. DeSilva v. DiLeonardi, 181 F.3d 865, 867 (7th Cir. 1999) (“[An
appeal] brief must make all arguments accessible to the judges, rather than
ask them to play archaeologist with the record”).
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Third, Appellant contends that under Prong 2 “[t]he Board Decision
overlooks a number of claim limitations in stating that ‘we discern no
additional element (or combination of elements).’ . . . the Board Decision
appears to have overlooked the claimed generation and evaluation of
multidimensional data models, which are separate steps from the ‘selecting’
step.” Req. Reh’g 5. We disagree with Appellant.
Here, Appellant misrepresents what our Decision actually states. For
example, our Decision states “[w]e discern no additional element (or
combination of elements) recited in Appellant’s representative claim 10 that
integrates the judicial exception into a practical application.” Decision 9
(emphasis added). We did not determine that there were no additional
elements, as suggested by Appellant. Thereafter, our Decision prominently
lists the additional elements (e.g., “a user interface,” “a processor,”
“database,” and “display,”) (id.) and clearly discussed why such additional
elements did not integrate the judicial exception into a practical application.
Id. at 11–14. The question under Prong 2 is whether the claim includes
additional elements, i.e., elements other than the abstract idea itself, that
“‘transform the nature of the claim’ into a patent-eligible application.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (quoting Mayo, 566 U.S.
at 79, 78). Our Decision addressed this question.
As a result, we find unavailing Appellant’s aforementioned contention
that we overlooked additional elements under prong 2, given Appellant’s
misrepresentation of our analysis under Prong 2.
Fourth, Appellant contends that “[t]he Board Decision also
misapprehends how step 2A is to be applied in dismissing purportedly
‘generic’ devices. . . . because ‘Step 2A specifically excludes consideration
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of whether the additional elements represent well-understood, routine,
conventional activity.’” Req. Reh’g 5. We disagree with Appellant.
In our Decision (in footnote 2), we highlighted to Appellant that
“some of the considerations at Step 2A, Prong 2, [may be] properly . . .
evaluated under Step 2 of Alice (Step 2B of the Office revised guidance).
For purposes of maintaining consistent treatment within the Office, we
evaluated them under Step 1 of Alice (Step 2A of the Office revised
guidance).” Decision 8, citing Revised Guidance, 84 Fed. Reg. at 55 n.25,
27–32.
As a result, we find unavailing Appellant’s aforementioned contention
that we misapprehended how Step 2A is to be applied given our explicit
citations to the Revised Guidance and our consistent application thereto.
Fifth, also with respect to the § 101 rejection, Appellant contends that
“the Board Decision overlooks the patentability of arrangements of software
instructions executable by even generic computers . . . further overlooks the
claimed transformation of unrelated dimensional data into structured and
filtered data models.” Req. Reh’g 5–6. We disagree with Appellant that
such arguments were overlooked.
Again, Appellant fails to identify, nor can we find, where such
arguments were previously made in the Briefs. As such, the Board could not
have overlooked what was not presented to it. Cf. DeSilva, 181 F.3d at 867.
We also remind Appellant that the Revised Guidance “sets out agency policy
with respect to the USPTO’s interpretation of the subject matter eligibility
requirements of 35 U.S.C. § 101 in view of decisions by the Supreme Court
and the Federal Circuit.” See Revised Guidance, 84 Fed. Reg. at 51. But the
“guidance does not constitute substantive rulemaking and does not have the
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force and effect of law.” Id. Instead, “[r]ejections will continue to be based
upon the substantive law[.]” Id.
Sixth, Appellant contends that “[t]he Board Decision further overlooks
that the claims do not actually recite any Specification teachings that were
(improperly) imported into the analysis.” Req. Reh’g 7. We disagree with
Appellant.
Under Step 1 of the Alice test, “the ‘directed to’ inquiry” asks
whether, “considered in light of the specification,” the “character” of the
claims at issue are directed “as a whole . . . to [patent-ineligible] subject
matter.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (emphasis added). Consistent with Enfish, in our analysis, rather than
import features from the Specification into the [claims] as suggested by
Appellant, we instead considered the “character” of the claims in light of the
specification. See also Ericsson Inc. v. TCL Commc’ns Tech. Holdings Ltd.,
955 F.3d 1317, 1325 (Fed. Cir. 2020) (“[T]he specification may be ‘helpful
in illuminating what a claim is directed to [but it] must always yield to the
claim language’ when identifying the ‘true focus of a claim.”’) (citation
omitted).
Given that our analysis in the Decision looked to the specific language
of the claims (see Decision 6–10) and merely used the Specification to
illuminate what the claims were directed to (id. at 10–11), we find
unavailing Appellant’s aforementioned contention.
Seventh, Appellant contends that “[t]he Board Decision []
misapprehends the analogy to McRO 2. . . The Board Decision therefore

2 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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overlooks that complex data modelling such as claimed can itself be the
technological process.” Req. Reh’g 7. We disagree with Appellant.
Here, Appellant fails to identify any arguments pertaining to McRO
that were overlooked or misapprehended. See generally Appeal Br., Reply
Br. As a result, we find unavailing Appellant’s aforementioned contention
that we misapprehended/overlooked any analogy Appellant made to McRO.
Further, although Appellant argues that complex data modelling “can itself
be the technological process” (Req. Reh’g. 7), Appellant does not show we
misapprehended any points in determining the claim “does not achieve an
improved technological result.” Decision 12.
Eighth, Appellant contends that “the Board Decision overlooks that
the claims recite multidimensional analysis of multiple types of data, as well
as the generation and evaluation of multidimensional data models.” Req.
Reh’g 8. We disagree with Appellant.
Here, our Decision not only outlined the claimed steps that recite
abstract concepts, but also outlined the “additional elements” in the claims
and analyzed whether representative claim 10 contains any “inventive
concept.” See Decision 3–14. We point out that the identified abstract idea
need not encompass every claim limitation. Otherwise, there would be no
need for step two of the Alice inquiry. Alice, 573 U.S. at 216.
As such, we find unavailing Appellant’s broad assertion that claim
steps were overlooked given our detailed analysis.
Regarding the § 103 rejection, Appellant contends “the claimed
‘spatial matching’ is defined as being ‘based on user preferences,’ and
unrelated, separate teachings regarding ‘spatial matching’ and ‘user
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preferences’ in two different references do not teach that ‘spatially matching
. . . is performed based on the user preference.” Req. Reh’g 8.
Here, Appellant is merely presenting supplemental or new arguments
in the Request for Rehearing concerning the above-mentioned claimed
“spatially matching,” however, such arguments at this stage of the
prosecution are inappropriate and will not be considered. See 37 C.F.R.
§ 41.52(a)(1). Belated arguments are technically waived. See Ex parte
Borden, 93 USPQ2d at 1474 (“[T]he reply brief [is not] an opportunity to
make arguments that could have been made in the principal brief on appeal
to rebut the Examiner’s rejections, but were not.”). This is equally
applicable to belated arguments in the Request for Rehearing.
Finally, Appellant contends that “[t]he Board Decision []
misapprehends Appellant’s argument regarding the claimed ‘number of
tiers’” in Kagarlis. See Req. Reh’g 8–9. We disagree with Appellant.
In the Decision, we specifically quoted from Appellant’s arguments
regarding Kagarlis (see Decision 15–16), and responded thereto. In the
request for rehearing, Appellant is attempting to present new arguments,
which at this stage of the prosecution are inappropriate and will not be
considered. See 37 C.F.R. § 41.52(a)(1). As such, we find unavailing
Appellant’s arguments that we misapprehended arguments, given that we
quoted therefrom and specifically responded thereto.

DECISION SUMMARY
Accordingly, we have granted Appellant’s Request to the extent that
we have reconsidered the original Decision but have DENIED it with respect
to making any changes to the Decision.
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Outcome of Decision on Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Denied Granted
10–24 101 Eligibility 10–24
10–24 103 Florance,
Rothstein, Kagarlis
10–24
Overall
Outcome
10–24

Final Outcome of Appeal after Rehearing:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
10–24 101 Eligibility 10–24
10–24 103 Florance,
Rothstein, Kagarlis
10–24
Overall
Outcome
10–24

This Decision on the Request for Rehearing incorporates our
Decision, mailed July 21, 2020, and is final for the purpose of judicial
review. See 37 C.F.R. § 41.52(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

REHEARING DENIED