Ex Parte Darragh et al

Patent Trial and Appeal Board

Nov 7, 2018

13724128 (P.T.A.B. Nov. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/724, 128 12/21/2012
149379 7590 11/09/2018
Clarivate Analytics, Legal Department
(C/0 Janice Read)
1500 Spring Garden Street
4th Floor
Philadelphia, PA 19130
FIRST NAMED INVENTOR
Renee M. Darragh
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.
501204US 7644
EXAMINER
YOUNG, MICHAEL C
ART UNIT PAPER NUMBER
3689
NOTIFICATION DATE DELIVERY MODE
11/09/2018 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):
clarivate.docketing@clari vate. com
oblonpat@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RENEE M. DARRAGH, ADAME. KENNEY, JOHN S. RY AN,
JOSEPH W. KA YE JR., JEFFREY A. KESEK,
and STEPHANIE S. EMANUEL
Appeal2017-005527 1
Application 13/724, 1282
Technology Center 3600
Before NINAL. MEDLOCK, BART A. GERSTENBLITH, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
July 19, 2016) and Reply Brief ("Reply Br.," filed February 15, 2017 by the
firm of Oblon, McClelland, Maier & Neustadt, LLP), and the Examiner's
Answer ("Ans.," mailed December 15, 2016) and Final Office Action
("Final Act.," mailed November 19, 2015).
2 Appellants identify Thomson Reuters Global Resources as the real party in
interest. App. Br. 2.
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-12, 16-29, 33, and 34. We have jurisdiction under
35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED INVENTION
Appellants' claimed invention "relates to intellectual property ('IP')
docketing systems and methods" and, more particularly, to "systems and
methods for accounting for the movement of IP during certain time periods
to ensure that IP is not inadvertently abandoned" (Spec. 2, 11. 17-19).
Claims 1 and 18 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. An automated computer implemented method for
payment decisions for intellectual property comprising:
[(a)] identifying a time period comprising a set of due
dates for payment decisions;
[ (b)] identifying a first time event, wherein the first time
event is prior to the start of the time period;
[ ( c)] generating a set of payment decisions at the first
time event for which a set of payment responses is due and is
associated with the time period, the set of payment decisions
being associated with a first set of intellectual property, the first
set of intellectual property being associated with an IP docketing
system;
[ ( d)] identifying a second time event during an interim
timeframe wherein a change is detected, the change impacting
the set of payment decisions, the second time event being after
the first time event and prior to the start of the time period,
wherein the detecting is based upon entry of a set of intellectual
property asset data into an annuity management system, the set
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of data comprising at least one of an acquired intellectual
property asset or a divested intellectual property asset;
[ ( e)] identifying one or more inaccuracies as to the set of
payment decisions based upon the second time event;
[(f)] generating an electronic signal indicative of an
updated set of payment decisions based upon the one or more
inaccuracies for which an updated set of payment responses is
due and is associated with the time period, the updated set of
payment decisions being associated with a second set of
intellectual property, wherein the second set of intellectual
property is based at least on the set of the intellectual property
asset data; and
[(g)] transmitting the electronic signal.
REJECTIONS 3
Claims 1-12, 16-29, 33, and 34 are rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter that Appellants regard as the invention.
Claims 1-12, 16-29, 33, and 34 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1-12, 16-29, 33, and 34 are rejected under 35 U.S.C. § 102(b)
as anticipated by Grainger et al. (WO 02/43306 A2, pub. May 30, 2002)
("Grainger").
ANALYSIS
Indefiniteness
In rejecting claims 1-12, 16-29, 33, and 34 under 35 U.S.C. § 112,
second paragraph, the Examiner notes that independent claims 1 and 18
3 The rejection of claims 1-12, 16-29, 33, and 34 under 35 U.S.C. § 112,
first paragraph, and the separate rejection of claims 16 and 33 under§ 112,
second paragraph, i.e., on the ground that it is unclear from which claim(s)
they depend, have been withdrawn. Ans. 2-3.
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recite "identifying one or more inaccuracies as to the set of payment
decisions" (Final Act. 11 ). And the Examiner concludes that this language
renders the claims indefinite because the "meaning and scope of the term
'inaccuracies' is not clear" (id.).
Appellants maintain, and we agree, that a person of ordinary skill in
the art would understand what is claimed when the claims are read in light of
the Specification (App. Br. 8 ( citing Spec. 8, 11. 20-26 and Fig. 4); see also
Reply Br. 2 (additionally citing Spec. 4, 11. 17-22; 8, 1. 30- 9, 1. 14, and 9,
11. 22-29)), namely, that the term "inaccuracies" refers to payment decisions
impacted by a change in business conditions, i.e., the acquisition or
divestiture of an IP asset, detected during the second time period.
Therefore, we do not sustain the Examiner's rejection of claims 1-12,
16-29, 33, and 34 under 35 U.S.C. § 112, second paragraph.
See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576
(Fed. Cir. 1986) (The test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether "those skilled in the art would understand what is
claimed when the claim is read in light of the specification.").
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
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Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts." Alice Corp., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts." Id. If the
claims are not directed to a patent-ineligible concept, e.g., an abstract idea,
the inquiry ends. Otherwise, the inquiry proceeds to the second step where
the elements of the claims are considered "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 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
We are not persuaded, as initial matter, by Appellants' argument that
the Examiner has oversimplified the claims as directed to "scheduling and
making annuity and maintenance payments on IP portfolios," and ignored
"the substantive transformative steps undertaken in rendering payment
decisions for intellectual property" (App. Br. 11 ). Citing the Specification
at pages 2--4, Appellants assert that the claimed invention addresses
"technical problems faced by many large entities, such as publicly traded
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companies, which have large IP portfolios requiring attention and the non-
publically traded entities, such as law firms, that manage IP portfolios on
behalf of numerous clients" (id.), and that the claimed invention specifically
accounts for the movement of IP during certain timeframes (e.g., timeframes
associated with a merger of businesses, an acquisition or divestiture of a
business, a purchase or sale of a IP property) to ensure that IP rights do not
inadvertently or mistakenly lapse for failure to make a maintenance or
annuity payment (id. at 12). According to Appellants, the present claims are
not "just reciting 'a computer implemented method for scheduling and
making annuity and maintenance payments on intellectual property
portfolios' as contended in the office action, but [instead] contain[ ]
limitations to preserve [the] rights associated with the piece of IP involved in
a transaction during a certain timeframe" (id.).
Appellants maintain that the claims, therefore, are directed to an
improvement of an existing technology (id. at 11 ). Yet, the focus of the
claims is not on the improvement of any technological process but instead
on implementation of the abstract idea of scheduling and making annuity
and maintenance payments on intellectual property portfolios to ensure that
IP rights are not inadvertently lost. The Specification supports this view,
disclosing that the claimed invention relates to IP docketing systems and
methods and, more particularly, to systems and methods for accounting for
the movement of IP during certain time periods to ensure that IP is not
inadvertently abandoned for failure to make maintenance or annuity
payments (Spec. 1, 11. 17-19; see also id. at 4 (disclosing that the claimed
invention eliminates, or at least reduces, the possibility that the current
owner of a piece of IP will mistakenly or inadvertently fail to pay a
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maintenance fee and/or an annuity payment in a timely fashion)). It appears
clear, when considered in light of the Specification, that rather than
improving a technological process, the focus of the claimed invention is on
achieving a business objective (i.e., ensuring that IP rights are not
mistakenly or inadvertently lost), and not on any claimed means for
achieving that objective that improves technology.
Turning to step two of the Mayo/Alice framework, Appellants argue
that even if the claims are directed to an abstract idea, the claims are
nonetheless patent-eligible because the claims include additional elements
that constitute "significantly more" than the abstract idea itself. Appellants
ostensibly maintain that the present claims are analogous to the claims held
patent eligible in BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016) (App. Br. 14--15; see also Reply Br. 9-
10). Yet, we can find no parallel between the present claims and those at
issue in BASCOM.
Concluding that an "inventive concept" can be found in the non-
conventional and non-generic arrangement of known conventional pieces,
and applying that standard in relation to claims directed to filtering content
from the Internet, the Federal Circuit held, in BASCOM, that the second step
of the Mayo/Alice framework was satisfied because the claimed invention
"represents a 'software-based invention[ ] that improve[ s] the performance
of the computer system itself."' BASCOM, 827 F.3d at 1351 (stating that
like DDR Holdings, where the patent "claimed a technical solution to a
problem unique to the Internet," the patent in Bascom claimed a
"technology-based solution ... to filter content on the Internet that
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overcomes existing problems with other Internet filtering systems ...
making it more dynamic and efficient") ( citations omitted).
Appellants assert here that "[l]ike in Bascom Global, the particular
arrangement of elements is a technical improvement in the field of
intellectual property annuity and maintenance fee management"; and that
"[t]he implementation is inextricably tied to computer technology, and is
significantly more than an abstract idea" (App. Br. 14--15). But, we are not
persuaded that intellectual property annuity and maintenance fee
management is a technological process, as opposed to a business process, or
that improving the process of scheduling and making IP annuity and
maintenance payments is a technological improvement, rather than an
improvement to a business process. We also are not persuaded that the
claimed invention is inextricably tied to computer technology. Scheduling
and paying IP annuities and maintenance fees existed before, and still exists,
outside of computer technology.
Appellants further assert that, as in BASCOM, "even if, assuming
arguendo, the claimed elements recite generic or conventional features, they
provide a non-generic and non-conventional arrangement which when
considered as a whole render them patent-eligible" (Reply Br. 10). But,
Appellants do not direct us to what is alleged to be the "non-conventional
and non-generic arrangement" of generic or conventional features.
Further responding to the Examiner's Answer, Appellants assert in the
Reply Brief that the Examiner's comparison of the present claims to those at
issue in Electric Power Group LLC v. Alstom, S.A., 830 F.3d 1350 (Fed. Cir.
2016), is inapposite, and that the claimed invention is more analogous to the
invention at issue in McRO (Reply Br. 2--4). Appellants assert that, as in
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McRO, "the claimed invention employs a computer to perform a distinct
process to automate a task" and that it is "the incorporation of the claimed
rules, not the use of the computer, that improves the existing technological
process by allowing the automation of further tasks" (id. at 5 ( emphasis
omitted)). Yet, steps (a) through (f) of claim 1, for example (i.e., the
"claimed rules"), do not enable the computer to perform IP annuity and
maintenance fee management in the same way that the specific rules enabled
the computer in McRO to generate computer-animated characters.
The rules in McRO allowed the computer to produce accurate and
realistic synchronization in animated characters that could previously only
be produced by humans. We find no evidence of record here to support the
argument that the present situation is like the one in McRO where computers
were unable to make certain subjective determinations, i.e., regarding morph
weight and phoneme timings, which could only be made prior to the claimed
invention by human animators.
We also are not persuaded by Appellants' argument that the present
claims are similar to those at issue in Amdocs (Israel) Limited v. Openet
Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) (Reply Br. 8-9). In Amdocs,
the Federal Circuit held the claim patent-eligible because it entailed an
unconventional technological solution ( enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases). The solution required arguably generic
components, including network devices and "gatherers" which "gather"
information. However, the court concluded that the claim's enhancing
limitation necessarily required that these generic components operate in an
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unconventional manner to achieve an improvement in computer
functionality. Amdocs, 841 F. 3 d at 1300--01.
Appellants ostensibly maintain here that the present claims are
analogous to those in Amdocs because the claims recite a "particular process
of generating updated and accurate records, for solving issues with
vulnerabilities encountered with mistaken and/or inadvertent lapsing of IP"
(Reply Br. 8-9). But Appellants do not adequately explain how, and we fail
to see how, the Federal Circuit's ruling in Amdocs somehow impacts the
patent-eligibility of the present claims. For example, Appellants do not
maintain that the present claims, like those in Amdocs, achieve any
improvement in computer functionality or that the operations recited in the
claims require that the claimed processor operate in an unconventional
manner. Also, as described above, we are not persuaded that IP annuity and
maintenance fee management is a technological process, as opposed to a
business process, or that improving the process of scheduling and making IP
annuity and maintenance payments is a technological improvement, rather
than an improvement to a business practice.
For much the same reasons, we also are not persuaded that the present
claims are analogous to those at issue in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014) (Reply Br. 9). Although Appellants
ostensibly contend otherwise, the court did not conclude in DDR Holdings
that the claims were patent-eligible merely because the claims did not recite
the performance of a business practice known from the pre-Internet world
along with the requirement to perform it on the Internet. Instead, the Federal
Circuit held that the claims were directed to statutory subject matter because
they claimed a solution "necessarily rooted in computer technology in order
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to overcome a problem specifically arising in the realm of computer
networks," i.e., retaining website visitors who, if adhering to the routine,
conventional functioning of Internet hyperlink protocol, would be
transported instantly away from a host's website after "clicking" on an
advertisement and activating a hyperlink. DDR Holdings, 773 F.3d at 1257.
We are not persuaded that a comparable situation is presented here.
Finally, we are not persuaded of Examiner error to the extent that
Appellants argue that the claims are patent-eligible because there is no
attempt at preemption (id. at 4; see also id. at 4--5). Although the Supreme
Court has described "the concern that drives [ the exclusion of abstract ideas
from patent eligible subject matter] as one of pre-emption," Alice Corp.,
134 S. Ct. at 2354, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. "The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability" and "[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354).
"[P]reemption may signal patent ineligible subject matter, [but] the absence
of complete preemption does not demonstrate patent eligibility." Id.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 19, 20, 23-25, and 28 under 35 U.S.C. § 101. Therefore,
we sustain the Examiner's rejection.
Anticipation
As an initial matter, we do not agree with the Examiner that "wherein
the detecting is based upon entry of a set of intellectual property asset data
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into an annuity management system, the set of data comprising at least one
of an acquired intellectual property asset or a divested intellectual property
asset," as recited in claim 1, and similarly recited in claim 18, is non-
functional descriptive material (Final Act. 19-20; see also Ans. 13-14).
Instead, we agree with Appellants that the entry of intellectual property asset
data, i.e., an acquired intellectual property asset or a divested intellectual
property asset, into the asset management system provides a functional
relationship between the first set of payment decisions, the detected change,
and the subsequent identification of inaccuracies, such that the claim
language cannot be ignored and must be given patentable weight (Reply
Br. 12). As such, we agree with Appellants that the phrase "a second time
event ... wherein a change is detected," as recited in independent claims 1
and 18, is properly construed, in light of the Specification, including the
claim language, to refer to the entry of asset data, into an annuity
management system, comprising at least one of an acquired intellectual
property asset or a divested intellectual property asset (App. Br. 16).
Turning to the rejection, we are persuaded by Appellants' argument
that the Examiner erred in rejecting independent claims 1 and 18 under
35 U.S.C. § 102(b), at least because Grainger fails to disclose "identifying
one or more inaccuracies as to the set of payment decisions based upon the
second time event," i.e., the entry of a set of IP asset data, into an annuity
management system, comprising at least one of an acquired intellectual
property asset or a divested intellectual property asset, as recited in claim 1,
and similarly recited in claim 18 (App. Br. 15-17).
Grainger is directed to a docketing system "for recording, tracking,
and reporting deadlines associated with legal cases and a system for
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allowing payment of an annuity or maintenance fee associated with a patent
document" (Grainger, Abstract), and discloses in paragraph 123, cited by the
Examiner (Final Act. 20), that the docketing system detects the occurrence
of, or receives a signal, indicating the occurrence of a particular triggering
event for a particular case, when some data associated with the particular
case has changed or been updated. Grainger discloses that in this
circumstance, the docketing system identifies a set of rules associated with
the triggering event and applicable to the particular case; generates one or
more docketing messages for each rule; determines one or more recipients
for each docketing message; and communicates the docketing messages to
the recipients (Grainger ,r,r 124--127; see also id. ,r 152, Fig. 11 ).
Grainger discloses in paragraph 142, on which the Examiner also
relies (Final Act. 20), that the docketing system may receive a user request
to modify a pre-configured triggering event; if the user is authorized to
modify the triggering event, and if the triggering event is associated with a
continuing case, all docketing messages previously generated in response to
the triggering event are automatically regenerated based on the modified
information. Grainger further discloses, in cited paragraph 153 (Final
Act. 20), with reference to Figure 18, that annuity payment instructions are
presented to a client system via Web page 1830, and that, for each
instruction, the client system can select, via "ActualPay?" option
fields 1838, to pay the fee, not pay the fee, or put the decision "on hold"
until a later date.
The Examiner contends that Grainger discloses "a set of payment
decisions being rendered inaccurate" when a user elects to postpone or hold
the payment until a later date, i.e., the other decisions of "pay now," "pay
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all," and "not pay" are rendered inaccurate, and that if the application status
is changed to abandoned, the decisions to "pay now" or "hold off' from
payment would be rendered inaccurate (Final Act. 20). But, we fail to see
how, even when combined with Grainger' s cited teachings, at
paragraph 123, of detecting the occurrence of a triggering event (changes in
case data) and, at paragraph 142, of regenerating docketing messages in
response to the triggering event, this constitutes "identifying one or more
inaccuracies as to the set of payment decisions based upon the second time
event," as called for in claims 1 and 18. In other words, we find nothing in
the cited portions of Grainger that discloses using information regarding
"entry of a set of intellectual property asset data into an annuity management
system, ... comprising at least one of an acquired intellectual property asset
or a divested intellectual property asset" as a basis for identifying
inaccuracies in a set of payment decisions.
Moreover, putting aside whether the characterization of the data as
comprising "at least one of an acquired intellectual property asset or a
divested intellectual property asset" is properly considered as non-functional
descriptive material, the Examiner's position, as best understood, is that
inaccuracies arise out of a triggering event when some data regarding a
particular case has been changed or updated, i.e., that the introduction of
inaccuracies occurs after, i.e., as a result of, the triggering event. But we
find nothing in the cited portions of Grainger that discloses that the
docketing system identifies these inaccuracies with respect to the set of
"Web page 1830"Actua1Pay options, as shown in Figure 18, i.e.,
"identifying one or more inaccuracies as to the set of payment decisions
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based upon the second time event," as recited in claim 1, and similarly
recited in claim 18.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claims 1 and 18 under 35 U.S.C. § 102(b). For the same
reasons, we also do not sustain the Examiner's rejection of dependent claims
2-12, 16, 17, 19-29, 33, and 34.
DECISION
The Examiner's rejection of claims 1-12, 16-29, 33, and 34 under
35 U.S.C. § 112, second paragraph, is reversed.
The Examiner's rejection of claims 1-12, 16-29, 33, and 34 under
35 U.S.C. § 101 is affirmed.
The Examiner's rejection of claims 1-12, 16-29, 33, and 34 under
35 U.S.C. § 102(b) is reversed.
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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