Ex Parte Dellaert et alDownload PDFPatent Trial and Appeal BoardNov 16, 201712098096 (P.T.A.B. Nov. 16, 2017) Copy Citation 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. 12/098,096 04/04/2008 Gilles Dellaert GOLDl 1-00012 1536 132787 7590 Docket Clerk-GOLD P.O. Drawer 800889 Dallas, TX 75380 EXAMINER CRANFORD, MICHAEL D ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 11/20/2017 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): j ohn. maxin @ gs. com patents @ munckwilson. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GILLES DELLAERT, ALEXANDER A. DUBITSKY, CHARLES McGARRAUGH, PHILIP SHERRILL, and ANDREW HOWARD PLEVIN Appeal 2016-0050521 Application 12/098,0962 Technology Center 3600 Before PHILIP J. HOFFMANN, BRADLEY B. BAYAT, and ALYSSA A. FINAMORE, Administrative Patent Judges. BAYAT, Administrative Patent Judge. DECISION ON APPEAL Gilles Dellaert et al. (Appellants) appeal under 35 U.S.C. § 134(a) from the decision rejecting claims 1—26. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Our Decision references Appellants’ Appeal Brief (“Appeal Br.,” filed Aug. 20, 2015) and Reply Brief (“Reply Br.,” filed Apr. 18, 2016), and the Examiner’s Answer (“Ans.,” mailed Feb. 18, 2016). 2 Appellants identify “Goldman, Sachs & Co.” as the real party in interest. Appeal Br. 2. Appeal 2016-005052 Application 12/098,096 STATEMENT OF THE CASE Claimed Subject Matter Appellants’ invention “describes creation of one or more families of longevity and mortality indices, some or all of which may be tradable.” Spec., Abstract. Claims 1,11, and 18 are the independent claims on appeal. Claim 18, reproduced below with added formatting, is illustrative of the claimed subject matter. 18. A processor-implemented method comprising: [(a)] receiving specific individual identification data identifying one or more individuals each selected to create a particular reference pool of a longevity and mortality index, wherein the specific individual identification data comprises at least a social security number of each of the one or more individuals and a date of birth of each of the one or more individuals; [(b)] analyzing via a processor the longevity and mortality index that tracks deaths of each of the one or more individuals in the reference pool of the longevity and mortality index; [(c)] determining, via the processor, based on the analyzing a number of deaths of individuals in the created particular reference pool during a particular period of time; and [(d)] calculating via the processor an amount of a payment to be made from a first party to a second party, wherein the amount of the payment is based, at least in part, on the determined number of deaths of individuals in the created particular reference pool during the particular period of time. Appeal Br. 34, Claims App. 2 Appeal 2016-005052 Application 12/098,096 Rejections Claims 1—26 are rejected under 35 U.S.C. § 101 as directed to non- statutory subject matter. Claims 1—26 are rejected under 35 U.S.C. § 103(a) as unpatentable over Coughlan (US 2008/0189222 Al, pub. Aug. 7, 2008) and Bronsnick (US 2007/0219883 Al, pub. Sept. 20, 2007). ANALYSIS Non-statutory 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: “[ljaws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS BankInt7, 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 Laboratories, Inc., 132 S. Ct. 1289, 1300 (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., e.g., to an abstract idea. If the claims are not directed to 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] 3 Appeal 2016-005052 Application 12/098,096 ‘“transform the nature of the claim’ into a patent-eligible application.” Id. at 2355 (quoting Mayo, 132 S. Ct. at 1297). Applying the framework in Alice, and as the first step of that analysis, the Examiner maintains: Claim[s] 1—26 are directed to a method and system for longevity and mortality indices and associated tradable financial products which comprise inter alia the functions or steps of receiving specific individual identification data identifying one or more individuals each selected to create a particular reference pool of a longevity and mortality index, wherein the specific individual identification data comprises at least a social security number of each of the one or more individuals and a date of birth of each of the one or more individuals; analyzing the longevity and mortality index that tracks deaths of each of the one or more individuals in the reference pool of the longevity and mortality index; determining, based on the analyzing a number of deaths of individuals in the created particular reference pool during a particular period of time; and calculating an amount of a payment to be made from a first party to a second party, wherein the amount of the payment is based, at least in part, on the determined number of deaths of individuals in the created particular reference pool during the particular period of time[.] This idea is similar to the basic concept of comparing new and stored information and using rules to identify options and using categories to organize, store and transmit information and processing information through a clearinghouse all of which have been found by the courts to be an abstract idea. Ans. 3^4. Proceeding to the second step, the Examiner finds that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed non- transitory computer storage medium, processor, and computing devices are generic components that perform their basic functions of storing, retrieving, processing, and displaying data. Id. at 4—5. The Examiner determines that 4 Appeal 2016-005052 Application 12/098,096 the claimed elements do not add meaningful limitations to the identified abstract idea beyond linking the judicial exception to a particular technological environment implemented via computers, and thus concludes, “[t]he claims do not amount to significantly more than the underlying abstract idea itself and are, therefore, not patent eligible.” Id. at 5. Claims 1—7, 10—23, and 26 As an initial matter, we note that the Appellants argue claims 1—7, 10- 23, and 26 as a group. Appeal Br. 11—14; Reply Br. 2—5. We select independent claim 18 as representative of this group. Thus, claims 1—7, 10- 17, 19-23, and 26 stand or fall with claim 18. See 37 C.F.R. § 41.37(c)(l)(iv). As to the question of establishing a prima facie case, the Federal Circuit has made clear that “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). 35 U.S.C. § 132 sets forth a general notice requirement whereby the applicant is notified of the reasons for a rejection together with such information as may be useful in judging the propriety of continuing with prosecution of the application. See, e.g., In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Here, the Examiner provided adequate explanation to meet the notice requirement. The Examiner set forth the statutory basis of the rejection, applied Alice’s two-part framework, and sufficiently articulated reasoning in an informative manner, thus, meeting the notice requirement of 35 U.S.C. § 132. Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is violated when a rejection 5 Appeal 2016-005052 Application 12/098,096 is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection.”). There is no requirement that examiners must provide evidentiary support in every case before a conclusion can be made that a claim is directed to an abstract idea. “The courts consider the determination of whether a claim is eligible (which involves identifying whether an exception such as an abstract idea is being claimed) to be a question of law. Accordingly, courts do not rely on evidence that a claimed concept is a judicial exception, and in most cases resolve the ultimate legal conclusion on eligibility without making any factual findings.” July 2015 Update: Subject Matter Eligibility (July 30, 2015), p. 6 (emphasis added). Evidence may be helpful in certain situations where, for instance, facts are in dispute. But evidence is not always necessary, and it is not necessary in this case. Instead, “the decisional mechanism courts now apply is to examine earlier cases in which a similar or parallel descriptive nature can be seen—what prior cases were about, and which way they were decided.” Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) (citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353—54 (Fed. Cir. 2016)); accord July 2015 Update: Subject Matter Eligibility (July 30, 2015), p. 3 (instructing examiners that “a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea”).3 3 https://www.uspto.gov/sites/default/files/documents/ieg-july-2015- update.pdf. 6 Appeal 2016-005052 Application 12/098,096 Alice Step One Turning to the merits, Appellants characterize the claims as “a specific technique for creating and using a reference pool of a longevity and mortality index, which is not an abstract idea.” Reply Br. 3; Appeal Br. 12. But contrary to Appellants’ characterization, the Federal Circuit has held that “creating and using an index to search and retrieve data . . . [is] an abstract concept under Alice and its progeny.” Intellectual Ventures ILLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed. Cir. 2017). According to the court, “[t]his type of activity, i.e., organizing and accessing records through the creation of an index-searchable database, includes longstanding conduct that existed well before the advent of computers and the Internet.” Id. at 1327. The Federal Circuit has previously held other patent claims ineligible for reciting similar abstract concepts that merely collect, classify, analyze, or otherwise filter data. For example, in In re TLI Communications LLC Patent Litigation, the concept of classifying data (an image) and storing it based on its classification was held abstract under step one. 823 F.3d 607, 611 (Fed. Cir. 2016). In Content Extraction, the concept of data collection, recognition, and storage was held abstract as well. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014). In BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, a claim to a “content filtering system for filtering content retrieved from an Internet computer network” was directed to an abstract idea. 827 F.3d 1341, 1348-49 (Fed. Cir. 2016). And in Electric Power Group, claims directed to collecting information, analyzing it, and displaying certain results of the collection and analysis were directed to an abstract idea. 830 F.3d at 7 Appeal 2016-005052 Application 12/098,096 1353—54 (“[W]e have treated analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category.”). Regarding claim 18’s recitation of specific data types (i.e., longevity and mortality data), the Federal Circuit has recognized that limiting information to particular content does not change its character as information and is within the realm of abstract ideas. Id. at 1353 (“Information as such is an intangible.”). In light of these precedents, we agree with the Examiner’s conclusion that claim 18 is also “directed to” an abstract idea. Alice Step Two We also are not persuaded by Appellants’ contention that the claims are significantly more than the alleged abstract idea because “the claims recite a specific technique for creating and using a reference pool of a longevity and mortality index that includes receiving social security numbers and dates of birth of the individuals in the pool, tracking deaths of each of the individuals in the pool, and calculating an amount of a payment based on these tracked deaths.” Appeal Br. 13; Reply Br. 4. Evaluating representative claim 18, we agree with the Examiner that the claim lacks an “inventive concept” to transform the abstract idea into a patent-eligible application because those additional features must be more than well- understood, routine, and conventional activity. See Alice Corp., 134 S. Ct. at 2357 (“[CJlaims, which merely require generic computer implementation, fail to transform [an] abstract idea into a patent-eligible invention.”). Taking claim 18’s elements separately, the function performed by the computer in each step of the claimed process is purely conventional. In fact, the recitation of step (a) does not even require implementation via a 8 Appeal 2016-005052 Application 12/098,096 computer or processor. And using a processor to analyze and compare data and perform a calculation, as recited in steps (b), (c), and (d), embodies some of the most basic functions of a computer. All of these computer functions are well-understood, routine, and conventional activities previously known to the industry. In short, each step does no more than require a generic computer to perform conventional computer functions.4 The claim here also does no more than simply instruct the practitioner to implement the abstract idea on a generic computer. See Elec. Power Grp., 830 F.3d at 1355 (“Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”); see also Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (“Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render [a] claim patent eligible.”) (citation omitted). Accordingly, evaluating these claimed elements either individually or as an ordered combination, we conclude that claimed steps recite no more than routine steps involving generic computer components and conventional computer data processing activities to accomplish the well-known concept of creating an index and using that index to analyze data and perform a 4 “[A]ny of the processes and operations described above may be in hardware, software, or a combination thereof. This software may include computer-executable instructions that, when executed by one or more processors, perform the operations. Generally, computer-executable instructions include routines, programs, objects, components, data structures, and the like that perform particular functions or implement particular abstract data types.” Spec. 142. 9 Appeal 2016-005052 Application 12/098,096 mathematical calculation. Therefore, we sustain the Examiner’s rejection of claim 18 under 35 U.S.C. § 101, including claims 1—7, 10-17, 19-23, and 26, which fall with claim 18. Claims 8, 9, 24, and 25 We have considered Appellants’ separate arguments as to dependent claims 8, 9, 24, and 25, but we are not persuaded that these claims add anything significantly more to transform the abstract idea (Appeal Br. 14- lb; Reply Br. 5—6) because [wjithout additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible. “If a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is nonstatutory.” Parker v. Flook, 437 U.S. 584, 595, 98 S. Ct. 2522, 57 L. Ed. 2d 451 (1978) (internal quotations omitted). Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). These claims recite “calculating of the amount of payment” by performing a mathematical operation (i.e., multiplication). “[IJmplementing a mathematical principle on a physical machine, namely a computer, [i]s not a patentable application of that principle.” Mayo, 132 S. Ct. at 1301 (citing Gottschalk v. Benson, 409 U.S. 63, 71 (1972)); see also Coffeltv. Nvidia Corp., 680 F. App’x 1010, 1011 (Fed. Cir. 2017) (holding claims ineligible because they were directed to the “abstract idea of calculating and comparing regions in space” using a generic computer). In other words, the dependent claims limit the scope of the abstract idea to which each independent claim is directed, but their character remains unchanged, especially given that these dependent claims provide no insight 10 Appeal 2016-005052 Application 12/098,096 to improvements in computer functionality beyond what one would expect from using a generic computer as a tool in performing the mathematical calculation claimed. Therefore, we sustain the Examiner’s rejection of claims 8, 9, 24, and 25 under 35 U.S.C. § 101. Obviousness Claims 1—10 and 18—26 Regarding independent claims 1 and 18, we are persuaded by Appellants’ argument that paragraph 25 of Coughlan, on which the Examiner relies (see Ans. 6, 16), fails to disclose the step of calculating via the processor an amount of a payment to be made from a first party to a second party, wherein the amount of the payment is based, at least in part, on the determined number of deaths of individuals in the created particular reference pool during the particular period of time. See Appeal Br. 20-22; Reply Br. 7. We note that in response to Appellants’ argument, the Examiner merely reproduces paragraph 25 of Coughlan, without providing any further analysis or explanation. See Ans. 24. Coughlan is directed to a “method for hedging the risk associated with portfolios having mortality risk profiles through the use of building block mortality derivatives that can be aggregated to effectively offset specific portfolio mortality risk exposure profiles.” Coughlan 13. Paragraph 25 of Coughlan discloses calculating the sensitivity of a portfolio to mortality risk or longevity risk and then using derivatives that include age-based mortality derivatives to account for the mortality exposure. But Coughlan does not disclose calculating an amount of a payment to be made as recited in the claims. We fail to see, and the Examiner does not adequately explain, how 11 Appeal 2016-005052 Application 12/098,096 Coughlan’s portfolio sensitivity calculation, corresponds to and, thus, discloses “calculating ... an amount of a payment to be made from a first party to a second party, wherein the amount of the payment is based, at least in part, on the determined number of deaths of individuals in the created particular reference pool during the particular period of time,” as required by independent claims 1 and 18. As such, we agree with Appellants that paragraph 25 of Coughlan describes selecting age-based mortality derivatives to hedge or mitigate mortality exposure risk, not calculating any amount of a payment to be made from one party to another. Appeal Br. 21. Accordingly, we do not sustain the Examiner’s rejection of independent claims 1 and 18 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the rejection of dependent claims 2—10 and 19-26. Cf. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“[Djependent claims are nonobvious if the independent claims from which they depend are nonobvious.”). Claims 11—17 We also are persuaded by Appellants’ argument that the Examiner erred in rejecting independent claim 11 under 35 U.S.C. § 103(a) because paragraph 25 of Coughlan, as relied on by the Examiner (Ans. 13), does not disclose “offering for sale a financial product having an associated payment amount that is calculated based on the longevity and mortality index and the determined number of deaths of individuals in the created particular reference pool over time.” See Appeal Br. 23—25; Reply Br. 8—9. Similarly here, in response to Appellants’ argument, the Examiner merely reproduces paragraph 25 of Coughlan, without providing any analysis or explanation. See Ans. 26. As discussed above, paragraph 25 of 12 Appeal 2016-005052 Application 12/098,096 Coughlan describes “hedging or mitigating mortality exposure risk in a portfolio of mortality sensitive instruments.” According to Coughlan, first, a mortality or longevity risk of the portfolio is calculated, “[t]hen the sensitivity of the portfolio to mortality risk or longevity risk is calculated . . . in other words, how much is the cost or value of the portfolio affected by a change in mortality rate.” Coughlan 125. We fail to see, and the Examiner does not adequately explain, how Coughlan’s portfolio sensitivity calculation, corresponds to and, thus, discloses “offering for sale a financial product having an associated payment amount that is calculated based on the longevity and mortality index and the determined number of deaths of individuals in the created particular reference pool over time.” Accordingly, we do not sustain the Examiner’s rejection of independent claim 11 under 35 U.S.C. § 103(a). For the same reasons, we also do not sustain the rejection of dependent claims 12—17. DECISION The rejection of claims 1—26 under 35 U.S.C. § 101 is affirmed. The rejection of claims 1—26 under 35 U.S.C. § 103(a) 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 13 Copy with citationCopy as parenthetical citation