Ex Parte Deputy et al

Patent Trial and Appeal Board

Dec 14, 2018

11421746 (P.T.A.B. Dec. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/421,746 06/01/2006
79804 7590 12/18/2018
Duncan Galloway Egan Greenwald, PLLC
9625 Ormsby Station Road
Louisville, KY 40223
FIRST NAMED INVENTOR
David L. Deputy
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.
113027.000030US1 3053
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
12/18/2018 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):
kduncan@dgeglaw.com
carnold@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID L. DEPUTY and RICARDO G. SAMANIEGO
Appeal2017---004131
Application 11/421,746
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
MEREDITH C. PETRA VICK, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
David L. Deputy and Ricardo G. Samaniego (Appellants) seek review
under 35 U.S.C. § 134 of a final rejection of claims 1--40, the only claims
pending in the application on appeal. We have jurisdiction over the appeal
pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed August 22, 2016) and Reply Brief ("Reply Br.," filed January 30,
2017), and the Examiner's Answer ("Ans.," mailed November 30, 2016),
and Final Action ("Final Act.," mailed March 18, 2016).
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Application 11/421,746
This is the second time this application has come before us. The
Appellants invented a way of selecting a preferred business tax structure
option as part of an election event for communication to a tax authority.
Specification para. 1.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A computer-implemented method, including:
[1] electronically receiving, by a data module of a computer, computer
business data pertaining to a first entity,
the first entity
being associated with a first jurisdiction and having a
designated business tax structure
and
being associated with a second entity associated with a second
jurisdiction,
wherein the designated business tax structure represents a legal
classification attached to the first entity for the second jurisdiction as
recognized by a tax authority;
[2] creating first tax data associated with the second entity by a calculation
module of the computer processing the business data,
the first tax data being based on
the business data
and
a first business tax structure option related to a first tax
treatment of the first entity in the second jurisdiction;
[3] creating second tax data associated with the second entity by the
calculation module of the computer processing the business data,
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the second tax data being based on
the business data
and
a second business tax structure option related to a second tax
treatment of the first entity in the second jurisdiction,
wherein the first and second business tax structure options represent
two distinct legal classifications for the second jurisdiction separately
recognized by a tax authority;
[ 4] storing by the data module of the computer in a memory the first tax data
and the second tax data;
[5] selecting a preferred business tax structure option for the first entity for
the second jurisdiction
from among the first business tax structure option and the second
business tax structure option
based on a comparison of the first tax data and the second tax data and
storing the preferred business tax structure option in the memory,
wherein the selection of the preferred business tax structure option
relates only to the first entity's tax treatment in the second jurisdiction
without changing the designated business tax structure of the first
entity;
[6] automatically determining by an eligibility module of the computer
based on a set of past data
the eligibility of one or more of the first and second business tax
structure options for the first entity for the second jurisdiction;
[ 6a] upon determining by the eligibility module that the one or more
of the first and second business tax structure options for the first entity
for the second jurisdiction are ineligible,
disallowing a user from selecting business tax structure options
determined to be ineligible;
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[ 6b] upon determining by the eligibility module that the one or more
of the first and second business tax structure options for the first entity
for the second jurisdiction are eligible,
allowing a user to select from business tax structure options
determined to be eligible;
[7] generating, by the eligibility module of the computer, a signal
and
for transmission to a user interface module of the computer
representing the determined eligibility of the one or more of the first
and second business tax structure options for the first entity for the
second jurisdiction,
the user interface module limiting user selection of business tax
structure options to options determined to be eligible;
[8] generating by the data module of the computer a signal
representing the selected preferred business tax structure option as part
of an election event for communication to a tax authority.
The Examiner relies upon the following prior art:
Arora US 2003/0195780 Al Oct. 16, 2003
Claims 1--40 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. 2
Claims 1--4, 6, 9-13, 15, 18, 19, and 21--40 stand rejected under 35
U.S.C. § 102(b) as anticipated by Arora.
2 A rejection under 35 U.S.C. § 112(a) (Final Act. 13) was withdrawn. Ans.
1.
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Claims 5 and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Arora and Admitted Prior Art.
Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Arora and AIA.
Claims 16, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Arora.
ISSUES
The issues of eligible subject matter tum primarily on whether the claims
recite more than abstract conceptual advice of what a computer is to provide
without implementation details.
The issues of novelty matter tum primarily on whether the art applied
describes all of the claim elements.
The issues of obviousness tum primarily on whether the art applied
shows that all of the claim elements were predictably assembled as recited.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Arora
01. Arora is directed to analyzing allocation of factors relevant to
business operations. Arora ,r 2.
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02. Arora describes optimizing the structuring of divisions or
operations that roll up to business entities, or optimizing the
structuring of entities themselves. More specifically, Arora
describes identification and optimization of financial decisions for
global enterprises operating in many business jurisdictions. Arora
describes a model that identifies sub-optimal business and
incentive conditions, automates iterative model building and
calculates optimal scenarios. Designed for enterprise-wide Web
deployment, Arora enables tax, finance, treasury, and business
unit managers to access a common set of models to evaluate the
overall enterprise-wide tax impact of critical business decisions,
including entity restructuring, mergers, acquisitions and business
condition changes. Users can create or select a variety of methods
by which to measure success and then optimize based on those
metrics such as tax liability, earnings per share or cash flow.
Arora ,r 8.
03. The Multi-State Tax Planning module can be used to identify
business objectives, review current operational and legal
structures, and analyze and quantify changes such as splitting a
legal entity into various operations within the scenario framework.
Arora ,r 0050.
04. "Data elements" describes things like legal entities, tax rules,
and jurisdictions that are to be modeled. The flexible data model
allows for entities and tax reporting structures to be independently
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modeled. Each data model includes data elements comprising data
objects having associated attributes and values. Examples of data
objects include legal entities, jurisdictions, and tax rules. An
"instance" is a particular occurrence of a data object, which is
distinct from other instances of that same type of data object. An
example of a legal entity instance would be the modeling of
"Midwest Regional Distribution Center" as distinct from
"Southeastern Regional Distribution Center." Relationships
describe how data elements are related to one another, and what
types of relationships ( one-to-one, one-to-many, uniqueness) are
allowed in the system. Dimensions are used to organize and
present data in the user interface, usually on a drop-down list at
the top of the detail screens. An example of dimensions includes
scenario years, which are "buckets" into which many other data
elements fall. Some elements, such as jurisdictions, act as
dimensions on other screens. Arora ,r 0051.
ANALYSIS
Claims 1--40 rejected under 35 U.S.C. § 101 as directed to ajudicial
exception without significantly more
Method claim 1 recites receiving entity data, creating and storing tax
data, selecting data representing a tax structure option, determining
eligibility of the option, and allowing or disallowing selection based on such
eligibility, and generating data representing signals representing eligibility
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and selections. Thus, claim 1 recites receiving, analyzing, modifying, and
generating data. None of the limitations recite implementation details for
any of these steps, but instead recite functional results to be achieved by any
and all possible means. Data reception, analysis, modification, and
generation are all generic, conventional data processing operations to the
point they are themselves concepts awaiting implementation details. The
sequence of data reception-analysis-modification-generation is equally
generic and conventional. The ordering of the steps is therefore ordinary
and conventional. The remaining claims merely describe process
parameters, with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[w]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a 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."
Alice Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
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To perform this test, we must first determine whether the claims at issue
are directed to a patent-ineligible concept. The Examiner determines the
claims to be directed to analyzing tax data. Final Act. 14--19.
Although the Court in Alice made a determination as to what the claims
were directed to, we find that this case's claims themselves and the
Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in selecting a preferred business tax structure option
as part of an election event for communication to a tax authority, absent any
technological mechanism other than a conventional computer for doing so.
The Specification at paragraph 1 recites that the invention relates to selecting
a preferred business tax structure option as part of an election event for
communication to a tax authority. Thus, all this evidence shows that claim 1
is directed to selecting a preferred business tax structure option as part of an
election event for communication to a tax authority, i.e. tax planning. This
is consistent with the Examiner's determination.
It follows from prior Supreme Court cases, and Bilski (Bilski v Kappas,
561 U.S. 593 (2010)) in particular, that the claims at issue here are directed
to an abstract idea. Like the risk hedging in Bilski, the concept of tax
planning is a fundamental economic practice long prevalent in our system of
commerce. The use of tax planning is also a building block of ingenuity in
financial and corporate planning. Thus, tax planning, like hedging, is an
"abstract idea" beyond the scope of §101. See Alice Corp. Pty. Ltd. at 2356.
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As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of tax planning
at issue here. Both are squarely within the realm of "abstract ideas" as the
Court has used that term. See Alice Corp. Pty. Ltd. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc'ns LLC Patent Litig., 823 F.3d 607,611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data reception, analysis,
modification, and generation and does not recite an improvement to a
particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 1 is directed to the abstract idea of
receiving, analyzing, modifying, and generating data.
The remaining claims merely describe process parameters. We conclude
that the claims at issue are directed to a patent-ineligible concept.
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The introduction of a computer into the claims does not alter the analysis
at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it'" is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[t]" an abstract
idea "on ... a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, modifying, and generating data amounts
to electronic data query and retrieval----one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp. v. Alstom S.A., supra. Also see In re Katz Interactive Call Processing
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Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 201 l)("Absent a possible
narrower construction of the terms "processing," "receiving," and "storing," .
. . those functions can be achieved by any general purpose computer without
special programming"). In short, each step does no more than require a
generic computer to perform generic computer functions. As to the data
operated upon, "even if a process of collecting and analyzing information is
'limited to particular content' or a particular 'source,' that limitation does
not make the collection and analysis other than abstract." SAP America Inc.
v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-generation is equally generic and conventional or otherwise
held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715
(Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange,
display, allowing access, and receiving payment recited an abstraction),
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378
(Fed. Cir. 2017) (sequence of data retrieval, analysis, modification,
generation, display, and transmission), Two-Way Media Ltd. v. Comcast
Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017)(sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
Viewed as a whole, Appellants' method claims simply recite the concept
of tax planning as performed by a generic computer. To be sure, the claims
recite doing so by advising one to process data representing two business
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entities in differing jurisdictions and analyze the tax implications in each
jurisdiction for such entities to filter out eligible tax structures and from
those select a business tax structure. But this is no more than abstract
conceptual advice on the parameters for such tax planning and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
any other technology or technical field. The 19 pages of specification do not
bulge with disclosure, but only spell out different generic equipment3 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of tax
planning under different scenarios. They do not describe any particular
improvement in the manner a computer functions. Instead, the claims at
issue amount to nothing significantly more than an instruction to apply the
abstract idea of tax planning using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice Corp. Pty. Ltd. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
3 The Specification describes how the apparatus may comprise a general-
purpose computing device. Spec. ,r 52.
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computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art. '
Alice Corp. Pty. Ltd. at 2360.
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 13-25 and Answer 2-23 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that "The claims are
directed to significantly more than simply the abstract idea of calculating tax
liabilities associated with a foreign entity by calculating first and second sets
of tax data in order to make an election to change the foreign entity's
business form for US tax entity characterization." Reply Br. 1-5.
Appellants first contend that "Examiners must consider the claims as a
whole." Reply Br. 2. The Examiner did just that in determining what the
claims were directed to from the claim limitations, and the results of the
claims. See supra.
Appellants next contend that "even if the claimed invention was an
abstract idea, the claimed method and system certainly do not fall under any
of the USPTO's enumerated examples, and contains numerous specific
limitations that elevate the present invention to more than an abstract idea
and is thus patentable subject matter." Reply Br. 3. We are hard pressed to
imagine concepts more abstract than tax planning. The Federal Circuit held
as much in Fort Properties.
We view the present case as similar to Bilski. Specifically, like
the invention in Bilski, claims 1-31 of the '788 patent disclose
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an investment tool, particularly a real estate investment tool
designed to enable tax-free exchanges of property. This is an
abstract concept. Under Bilski, this abstract concept cannot be
transformed into patentable subject matter merely because of
connections to the physical world through deeds, contracts, and
real property. Our reasoning is further supported by the fact that
the claimed algorithm in Flook also had ties to the physical
world (i.e., the invention involved the "catalytic chemical
conversion of hydrocarbons"), yet the Supreme Court still
characterized that invention as unpatentable.
Fort Props., Inc. v. Am. Master Lease LLC, 671 F.3d 1317, 1318, 1320 (Fed.
Cir. 2012)(emphasis added).
Appellants next contend that
The claimed invention comprises significantly more than
simply "a tax strategy" which is evidenced by the entirety of
claim 1. The claimed invention at least receives electronic data,
processes the data to generate new data, stores the data,
determines the eligibility of a user input selection, generates a
user interface signal, and generates a signal for communication.
Reply Br. 3. Receiving, processing, storing, generating, and analyzing data
are all fundamental, primitive generic computer operations. See Electric
Power, supra. "Adding one abstract idea ... to another abstract idea ...
does not render the claim nonabstract." RecogniCorp, LLC v. Nintendo Co.,
Ltd., 855 F.3d 1322, 1327 (2017).
Appellants next repeat this contention with respect to Alice step 2.
Reply Br. 4. This is equally unpersuasive here.
Appellants next contend the claims are analogous to those in AmDocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
Appellants contend that the claims in Amdocs were related to computer
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program products and methods implemented on computers. Reply Br. 4.
This is not quite accurate. The Court's analysis turned heavily on a prior
construction.
Claim 1 requires "computer code for using the accounting
information with which the first network accounting record is
correlated to enhance the first network accounting record." In
Amdocs I, we construed "enhance" as being dependent upon
the invention's distributed architecture.
We construed "enhance" as meaning "to apply a number of
field enhancements in a distributed fashion." We took care to
note how the district court explained that "[i]n this context,
'distributed' means that the network usage records are
processed close to their sources before being transmitted to a
centralized manager." And we specifically approved of the
district court's "reading the 'in a distributed fashion' and the
'close to the source' of network information requirements into
the term 'enhance."'
AmDocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300 (Fed.
Cir. 2016)( citations omitted). Thus, the Court read "to apply a number of
field enhancements in a distributed fashion" into "using the accounting
information with which the first network accounting record is correlated to
enhance the first network accounting record." This is substantially more
than merely being related to computer program products and methods
implemented on computers.
We are not persuaded by Appellants' contention that the claims are
analogous to those in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 4. The claims differ from those found patent
eligible in Enfzsh, where the claims were "specifically directed to a self-
referential table for a computer database." 822 F.3d 1327, 1337 (Fed. Cir.
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2016). The claims thus were "directed to a specific improvement to the
way computers operate" rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate the process of selecting a business tax structure, our
reviewing court has held that speed and accuracy increases stemming
from the ordinary capabilities of a general purpose computer "do[] not
materially alter the patent eligibility of the claimed subject matter."
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Instead, the claims are more analogous to
those in FairWarning, 839 F.3d 1089 (Fed. Cir. 2016), wherein claims
reciting "a few possible rules to analyze audit log data" were found
directed to an abstract idea because they asked "the same questions
(though perhaps phrased with different words) that humans in analogous
situations detecting fraud have asked for decades."
Appellants also attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Reply Br. 5. In McRO, the court held that, although the
processes were previously performed by humans, "the traditional process
and newly claimed method ... produced ... results in fundamentally
different ways." FairWarning v. Iatric Systems, 839 F.3d at 1094
( differentiating the claims at issue from those in McRO). In McRO, "it
was the incorporation of the claimed rules not the use of the computer,
that improved the existing technology process," because the prior process
performed by humans "was driven by subjective determinations rather
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than specific, limited mathematical rules." 837 F.3d at 1314 (internal
quotation marks, citation, and alterations omitted). In contrast, the claims
of the instant application merely implement an old practice of using
decision criteria in making tax decisions in a new environment. Appellants
have not argued that the claimed processes of selecting business tax
structures apply rules of selection in a manner technologically different
from those which humans used, albeit with less efficiency, before the
invention was claimed. Merely pigeon holing the objects of decision making
in tiers to aid decision making is both old and itself abstract.
The claims in McRO were not directed to "a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type." We explained that "the claimed
improvement [was] allowing computers to produce 'accurate
and realistic lip synchronization and facial expressions in
animated characters' that previously could only be produced by
human animators." The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d 1089, 1094 (Fed. Cir. 2016)(differentiating the
claims at issue from those in McRO).
Contrary to InvestPic' s contention, the claims here are
critically different from those we determined to be patent
eligible in McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016). The claims in McRO were
directed to the creation of something physical-namely, the
display of "lip synchronization and facial expressions" of
animated characters on screens for viewing by human eyes. Id.
at 1313. The claimed improvement was to how the physical
display operated (to produce better quality images), unlike
( what is present here) a claimed improvement in a mathematical
technique with no improved display mechanism. The claims in
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McRO thus were not abstract in the sense that is dispositive
here. And those claims also avoided being "abstract" in another
sense reflected repeatedly in our cases (based on a contrast not
with "physical" but with "concrete"): they had the specificity
required to transform a claim from one claiming only a result to
one claiming a way of achieving it. McRO, 837 F.3d at 1314;
see Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305---06
(Fed. Cir. 2018); Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1241 (Fed. Cir. 2016); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1265 (Fed. Cir. 2016); see also
Two-Way Media, 874 F.3d at 1337; Secured Mail Solutions
LLC v. Universal Wilde, Inc., 873 F.3d 905, 909 (Fed. Cir.
2017); RecogniCorp, 855 F.3d at 1326; Symantec, 838 F.3d at
1316.
SAP America v. Investpic, 890 F.3d 1016, 1022 (Fed. Cir. 2018).
Claims 1--4, 6, 9-13, 15, 18, 19, and21--40rejectedunder35 U.S.C.
§102(b) as anticipated by Arora
We are not persuaded by Appellants' argument that Arora does not make
a determination of the eligibility of a certain entity for a certain type of
election event. App. Br. 26. Examiner cites Arora i-f5 l for this limitation.
Ans. 29. The Examiner determines that there is an "explicit teaching that
business and jurisdiction tax structure determines allowed (eligible) data is
organized and presented. Consequently data not in compliance to the
dimension used (i.e. ineligible) is not presented." Id. The pertinent portion
of Arora i-f 51 is "Relationships describe how data elements are related to one
another, and what types of relationships (one-to-one, one-to-many,
uniqueness) are allowed in the system." This uses "allowed" in the sense of
provided-the system shows all the relationship the system provides. As a
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Appeal2017-004131
Application 11/421,746
result, Arora does not go on to determine that certain options are ineligible.
Ineligible options do not exist in Arora for any determination. To the extent
Arora has any sense of eligibility, it is defined by data existence, not by data
attributes such as legal and tax regulations. Thus Arora has no need to
determine eligibility of existing data as the claims recite.
Claims 5 and 14 rejected under 35 U.S.C. § 103(a) as unpatentable over
Arora and Admitted Prior Art
These claims depend from claims 1 and 10.
Claims 7 and 8 rejected under 35 U.S.C. § 103(a) as unpatentable over
Arora and AJA
These claims depend from claim 1.
Claims 16, 17, and 20 rejected under 35 U.S.C. § 103(a) as unpatentable
over Arora
These claims depend from claims 10 and 19.
CONCLUSIONS OF LAW
The rejection of claims 1--40 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1--4, 6, 9-13, 15, 18, 19, and 21--40 under 35
U.S.C. § 102(b) as anticipated by Arora is improper.
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Appeal2017-004131
Application 11/421,746
The rejection of claims 5 and 14 under 35 U.S.C. § 103(a) as
unpatentable over Arora and Admitted Prior Art is improper.
The rejection of claims 7 and 8 under 35 U.S.C. § 103(a) as unpatentable
over Arora and AIA is improper.
The rejection of claims 16, 17, and 20 under 35 U.S.C. § 103(a) as
unpatentable over Arora is improper.
DECISION
The rejection of claims 1--40 is affirmed.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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