Ex Parte Fannin et al

Patent Trial and Appeal Board

Dec 21, 2018

14027626 (P.T.A.B. Dec. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/027,626 09/16/2013
29150 7590 12/26/2018
LEE & HA YES, P.C.
601 W. RIVERSIDE A VENUE
SUITE 1400
SPOKANE, WA 99201
FIRST NAMED INVENTOR
Patrick Fannin
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.
F078-0002US 4190
EXAMINER
MISIASZEK, MICHAEL
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
12/26/2018 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):
lhpto@leehayes.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PA TRICK FANNIN, MICHAEL KEESE, and
STEPHEN PARKER
Appeal2018-000239
Application 14/027 ,626 1
Technology Center 3600
Before JOSEPH L. DIXON, JAMES W. DEJMEK, and
STEPHEN E. BELISLE, Administrative Patent Judges.
DEJMEK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1-20. We have jurisdiction over the pending claims under 35 U.S.C.
§ 6(b).
We affirm.
1 Appellants identify Winning Bid, Inc. as the real party in interest. App.
Br. 3.
Appeal2018-000239
Application 14/027,626
STATEMENT OF THE CASE
Introduction
Appellants' disclosed and claimed invention generally relates to
"facilitating structured settlement transactions." Spec. ,r 16.
Claim 1 is representative of the subject matter on appeal and is
reproduced below with the disputed limitation emphasized in italics:
1. A structured settlement transaction information
processing system comprising:
a processor; and
a memory device storing structured settlement transaction
data and instructions which
when executed by the processor, cause the processor to:
generate a file containing at least a portion of the
structured settlement transaction data formatted to
include a bid item;
cause the bid item to be displayed at a first bidder
interface and a second bidder interface;
receive a first bid placed on the bid item by a first
bidder using the first bidder interface, the first bid having
a first minimum amount;
receive a second bid placed on the bid item by a
second bidder using the second bidder interface, the
second bid having a second minimum amount; and
based at least in part on at least one of the first bid
or the second bid, send a notification to at least one of the
first bidder or the second bidder, the notification being
indicative of an intention to sell the bid item.
The Examiner's Rejections
1. Claims 1-20 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2--4.
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Application 14/027,626
2. Claims 1-20 stand rejected under pre-AIA 35 U.S.C. § I03(a)
as being unpatentable over Erisman (US 2008/0016007 Al; Jan. 17, 2008);
Worthington (US 2008/0140556 Al; June 12, 2008); and Wilson, II et al.
(US 2015/0332407 Al; Nov. 19, 2015 (filed Apr. 27, 2012, which claims
benefit of Provisional Application No. 61/480,207 (filed Apr. 28, 2011)))
("Wilson"). Final Act. 5-8.
ANALYSIS 2
Rejection under 35 U.S.C. § 1 OJ
Appellants dispute the Examiner's conclusion that the pending claims
are directed to patent-ineligible subject matter. App. Br. 12-17; Reply
Br. 3-5. In particular, Appellants argue the Examiner mischaracterizes the
claims as being directed to an abstract idea. App. Br. 12-13; Reply Br. 3.
Instead, Appellants assert the claims are directed to "the creation of a file
that assists in a structured settlement transaction." App. Br. 12.
Additionally, Appellants assert the claims are necessarily rooted in computer
technology and improve the functioning of the computer itself. App. Br. 13-
16 (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); and
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016)). Moreover, Appellants contend the claims recite significantly more
than the alleged abstract idea. App. Br. 16-17; Reply Br. 5.
2 Throughout this Decision, we have considered the Appeal Brief, filed
April 3, 2017 ("App. Br."); the Reply Brief, filed October 5, 2017 ("Reply
Br."); the Examiner's Answer, mailed August 7, 2017 ("Ans."); and the
Final Office Action, mailed November 4, 2016 ("Final Act."), from which
this Appeal is taken.
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The Supreme Court's two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. Pty. v. CLS Banklnt'l,
573 U.S. 208,217 (2014). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. If so, the second
step is to determine whether any element, or combination of elements,
amounts to significantly more than the judicial exception. Alice, 573 U.S. at
217.
Although the independent claims each broadly fall within the statutory
categories of patentability, the Examiner concludes the claims are directed to
a judicially recognized exception-i.e., an abstract idea. Final Act. 2--4. In
particular, the Examiner concludes the claims are directed to the abstract
idea of "facilitating an auction," which the Examiner considers both a
method of organizing human activity and a fundamental economic practice.
Final Act. 2. Further, the Examiner concludes the claims do not recite
significantly more to transform the abstract idea into a patent-eligible
application. Final Act. 2--4.
Instead of using a definition of an abstract idea, "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 United
States Patent and Trademark Office, July 2015 Update: Subject Matter
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Eligibility 3 (July 30, 2015), https://www.uspto.gov/sites/default/files/
documents/ieg-july-2015-update.pdf (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"). As part of this
inquiry, we must "look at the 'focus of the claimed advance over the prior
art' to determine if the claim's 'character as a whole' is directed to excluded
subject matter." Affinity Labs of Tex., LLC v. DirecTV, LLC, 838 F.3d 1253,
1257-58 (Fed. Cir. 2016) (citations omitted).
Here, Appellants' claims are generally directed to placing a structured
settlement up for auction. This is consistent with Appellants' own
characterization of the claimed invention. See Spec. ,r 2 ("enable users to
conduct structured settlement transactions"), ,r 16 ( describing the present
disclosure relates to "facilitating structured settlement transactions"). Thus,
we agree with the Examiner that the claims are directed to a fundamental
economic concept (i.e., an abstract idea). See, e.g., OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015) (concluding "offer
based pricing" to be a fundamental economic concept). Similar to the claims
at issue in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014), the claims "are squarely about creating a contractual relationship ...
that is beyond question of ancient lineage." See Final Act. 4.
Using structured settlement data to generate a file containing a portion
of the structured settlement data to include a bid item is similar to the
abstract idea of analyzing information by steps that people go through in
their minds. See Elec. Power, 830 F.3d at 1354; see also Intellectual
Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir.
2017) ("customizing information and presenting it to users based on
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particular characteristics" is an abstract idea ( citing Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)).
Further, displaying the bid item is also abstract. See SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("merely presenting
the results of abstract processes of collecting and analyzing information ...
is abstract as an ancillary part of such collection and analysis") ( quotations
omitted). Additionally, receiving bids and sending a message (i.e.,
"notification") based on the received bids are similar to the abstract ideas of
collecting, analyzing, comparing, and manipulating information. See Elec.
Power, 830 F.3d at 1353; Content Extraction & Transmission v. Wells
Fargo Bank, N.A. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014); Berkheimer
v. HP Inc., 881 F.3d 1360, 1366 (Fed. Cir. 2018); Smart Sys. Innovations,
LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed. Cir. 2017)
(concluding "the collection, storage, and recognition of data" to be abstract).
Further, merely combining several abstract ideas does not render the
combination any less abstract. RecogniCorp, LLC v. Nintendo Co., 855 F.3d
1322, 1327 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another
abstract idea ... does not render the claim non-abstract."); see also
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed.
Cir. 2016) ( determining the pending claims were directed to a combination
of abstract ideas).
Because we determine the claims are directed to an abstract idea or
combination of abstract ideas, we analyze the claims under step two of Alice
to determine if there are additional limitations that individually, or as an
ordered combination, ensure the claims amount to "significantly more" than
the abstract idea. Alice, 573 U.S. at 217-18 ( citing Mayo Collaborative
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Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73, 77-79 (2012)). The
implementation of the abstract idea involved must be "more than [the]
performance of 'well-understood, routine, [and] conventional activities
previously known to the industry.'" Content Extraction, 77 6 F .3d at
1347--48 (alteration in original) (quoting Alice, 573 U.S. at 225).
The Examiner finds, and we agree, to the extent the claims recite
technological elements ( e.g., a processor or a memory device), such
elements are recited at a generic level and the elements are merely
performing generic computer functions that are well-understood, routine,
and conventional. Final Act. 4. Additionally, we note the Specification
describes the hardware components at a high level of generality. See, e.g.,
Spec. ,r 17, Fig. 2 (illustrating a computing device comprising a processor,
memory, interface circuits, a keyboard, mouse or other user input device, a
display, and"[ o ]ther PC circuits"). It is well-settled that reciting generic
computer components to perform generic computer functions is insufficient
to add an inventive concept to an otherwise abstract idea. See, e.g., Alice,
573 U.S. at 226 at 226 ("Nearly every computer will include a
'communications controller' and 'data storage unit' capable of performing
the basic calculation, storage, and transmission functions required by the
method claims."). Additionally, "relying on a computer to perform routine
tasks more quickly or more accurately is insufficient to render a claim patent
eligible." OIP Techs., 788 F.3d at 1363.
To the extent Appellants assert the pending claims are similar to those
held to be patent eligible in Enfish, DDR, or McRO (see App. Br. 13-16), we
disagree.
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Contrary to Appellants' assertions, the claims are distinguishable from
the claims at issue in Enfish, because "the focus of the claims is not on ...
an improvement in computers as tools, but on certain independently abstract
ideas that use computers as tools." See Elec. Power, 830 F.3d at 1354.
We disagree with Appellants' assertion that the pending claims-like
those in DDR-"specify how interactions with user interfaces on computing
platforms are manipulated to yield a desired result that overrides the routine
and conventional sequence of events." App. Br. 16-17. To the contrary,
using a computing device (i.e., a processor and memory device) to generate
a file including a bid item, display the bid item, receive bids on the bid item,
and send a notification based at least in part on the received bids, when
considered individually or as an ordered combination, fails to recite an
unconventional sequence of events. buySAFE, 765 F.3d at 1355 ( "That a
computer receives and sends the information over a network-with no
further specification-is not even arguably inventive."). Moreover, we
disagree that "the claimed solution is necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." See App. Br. 16.
Additionally, the claims in McRO-unlike the claims here-recited a
"specific ... improvement in computer animation" using "unconventional
rules" that related "sub-sequences of phonemes, timings, and morph weight
sets" to automatically animate lip synchronization and facial expressions for
three-dimensional characters that only human animators could previously
produce. McRO, 837 F.3d at 1302---03, 1307---08, 1313-15. In McRO, "the
incorporation of the claimed rules" improved an existing technological
process. McRO, 837 F.3d at 1314. In contrast, Appellants' claims here do
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not improve an existing technological process. See Alice, 573 U.S. at 223
( explaining that "the claims in Diehr were patent eligible because they
improved an existing technological process").
For the reasons discussed supra, we are unpersuaded that the
Examiner erred in rejecting under 35 U.S.C. § 101 claim 1 as being directed
to patent-ineligible subject matter. Accordingly, we sustain the Examiner's
rejection of claim 1. Additionally, we sustain the Examiner's rejection of
independent claims 9 and 17, which recite similar limitations and were not
argued separately. See App. Br. 17; see also 37 C.F.R. § 4I.37(c)(l)(iv)
(2016). Further, we sustain the Examiner's rejection of claims 2-8, 10-16,
and 18-20, which depend directly or indirectly therefrom and were not
argued separately. See 37 C.F.R. § 4I.37(c)(l)(iv).
Rejection under pre-AJA 35 U.S.C. § 103(a)
In rejecting independent claim 1, the Examiner relies on the combined
teachings of Erisman, Worthington, and Wilson. Final Act. 5-7. In
particular, the Examiner relies on Wilson to teach "generat[ing] a file
containing at least a portion of the structured settlement transaction data
formatted to include a bid item." Final Act. 6 ( citing Wilson ,r,r 42 and 50).
Additionally, the Examiner relies on the same findings in rejecting
independent claims 9 and 17. Final Act. 7.
Appellants argue the Examiner erred in relying on Wilson because
Wilson is not prior art. App. Br. 18; Reply Br. 5-6. In particular, Wilson
has a filing date of April 27, 2012 and claims priority to Provisional
Application No. 61/480,207, filed on April 28, 2011. See App. Br. 18. The
present application, filed September 16, 2013 is a continuation of, and
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claims priority to, PCT Application No. PCT/US2012/029669, filed
March 19, 2012, which claims the benefit of Provisional Application No.
61/453,569, filed on March 17, 2011 ("Provisional '569"). App. Br. 18. In
other words, Appellants contend Wilson has an earliest effective filing date
of April 28, 2011, whereas Appellants' claimed invention has an effective
filing date of March 17, 2011.
In response, the Examiner determines Appellants are not entitled to
the earlier date of Provisional '569 because "the provisional application is
silent on the generation of files containing formatted structured settlement
data." Ans. 6. Rather, the Examiner finds support for the disputed
limitation in the PCT application. Thus, the Examiner determines the
earliest effective filing date for Appellants' claimed invention is March 19,
2012 (i.e., after Wilson's priority date). Ans. 6.
As the Federal Circuit explains:
the test to determine if an application is to receive the benefit of
an earlier filed application is whether a person of ordinary skill
in the art would recognize that the applicant possessed what is
claimed in the later filed application as of the filing date of the
earlier filed application.
Noelle v. Lederman, 355 F.3d 1343, 1348 (Fed. Cir. 2004).
Here, we agree with Appellants (see Reply Br. 5---6) that the
provisional application provides sufficient support for generating a file
containing at least a portion of the structured settlement transaction data
formatted to include a bid item. For example, the provisional application
describes an intermediary advisor preparing a set of legal documents
associated with the proposed sale of a structured settlement plan and that
such documents may include a guaranteed minimum selling price, specify a
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discount rate, or a present value of the structured settlement payment plan.
Provisional '569 ,r,r 20-24, Figs. 9-16. Thus, we find an ordinarily skilled
artisan would recognize that Appellants' were in possession of "generat[ing]
a file containing at least a portion of the structured settlement transaction
data formatted to include a bid item," as recited in claim 1, at the time
Provisional '569 was filed. As such, claim 1, inter alia, is entitled to an
effective filing date of March 17, 2011.
Because Wilson is not prior art to Appellants' claimed invention, the
Examiner erred in relying on Wilson in rejecting the pending claims.
Accordingly, on the record before us, we do not sustain the Examiner's
rejection under pre-AIA 35 U.S.C. § 103(a) of claims 1-20.
DECISION
We affirm the Examiner's decision rejecting claims 1-20 under
35 U.S.C. § 101.
We reverse the Examiner's decision rejecting claims 1-20 under pre-
AIA 35 U.S.C. § 103(a).
Because we affirm at least one ground of rejection with respect to
each claim on appeal, the Examiner's decision rejecting claims 1-20 is
affirmed. See 37 C.F.R. § 4I.50(a)(l).
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). See
37 C.F.R. § 41.50(±).
AFFIRMED
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