Ex Parte Gordon et al

Patent Trial and Appeal Board

Aug 22, 2017

11465923 (P.T.A.B. Aug. 22, 2017)

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.
11/465,923 08/21/2006 Penelope E. Gordon END920050184US1 1162
45092 7590 08/24/2017
HOFFMAN WARNTOK T T C EXAMINER
540 Broadway
4th Floor
MILLER, ALAN S
ALBANY, NY 12207 ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
08/24/2017 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PENELOPE E. GORDON, PAUL G. GREENSTEIN,
ANN M. GRUHN, and DAVID J. SMITH
Appeal 2016-000256
Application 11/465,9231
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
SHIELA F. McSHANE, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 4, 8—10, 13, 17—20, and 24—26. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants’ claimed “invention relates generally to a method and
system for determining elements of a value priced service contract, and more
1 According to Appellants, the real party in interest is International Business
Machines Corp. (Appeal Br. 1.)
Appeal 2016-000256
Application 11/465,923
particularly, to a method and system for relating business value of a product
or service to a client to practices of a provider.” (Spec. 11.)
Claims 1, 10, 19, and 26 are the independent claims on appeal.
Claim 1 is illustrative. It recites:
1. A computer implemented method of managing a business
engagement and structuring a value pricing contract to maximize
a business value to a client while apportioning an amount of risk
the client and a provider can undertake, the method comprising:
using a computing device to derive a set of client
performance categories from a set of business priorities for the
client;
using a computing device to obtain a set of provider
performance categories based on a measurement and evaluation
of a set of technical and project management practices of the
provider via a comparison system;
using a computing device to obtain a provider delivery
metric via the comparison system, the provider delivery metric
including the measurements and evaluations of the set of
technical and project management practices of the provider and
to derive a client metric based on the set of client performance
categories, wherein the client metric includes a measurement and
a summary of a client need or desire for services, wherein both
the provider delivery metric and the client metric include
historical performance data representing capabilities for
providing goods or services, wherein the capabilities are
evaluated over a range of time periods, and wherein the historical
performance data is evaluated based on efficiency, effectiveness,
alignment, and transformation;
using a computing device to compare each category in the
provider delivery metric with a corresponding category in the
client metric to determine a resulting metric that identifies a set
of resulting elements via the comparison system, wherein the
resulting elements are goods or services that are common to both
the provider delivery metric and the client metric, such that the
resulting elements represent goods and services that the client
desires and that the provider provides;
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using a computing device to determine an advantage value
for each of the set of resulting elements via an assignment
system, wherein the determining includes determining whether
the provider provides each goods or services better than the client
based on efficiency, effectiveness, alignment, and transformation
of the goods or services by the provider as compared to the client;
using a computing device to assign a risk value to the
advantage value based on empirical performance data via a risk
value system; and
using a computing device to select at least one of the set
of resulting elements to be included in the business engagement
based on the advantage value and an allocation of risk via a
selection system, thereby maximizing the business value to the
client and apportioning the amount of risk that the client and the
provider undertake.
REJECTION
Claims 1, 4, 8—10, 13, 17—20, and 24—26 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., 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, 134 S. Ct. at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
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part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to part one in the Alice framework, the Examiner
determines that claim 1 is “directed to determining what to include in a
contract between a provider and a client based on a determination of what
services a provider can provide better than the client, which is a fundamental
economic practice and thus an abstract idea.” (Final Action 5.)
Appellants disagree and argue that “the claims are directed to an
improvement in the field of managing business engagements and structuring
pricing contracts.” (Appeal Br. 13.)
Under part one of the Alice framework, we “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 Texas, LLC
v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Thus, although we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
In this case, the Specification discloses that the invention is directed to
“provid[ing] a solution for managing a business engagement between a
provider and a client.” (Spec. 17.) Claim 1, in particular, recites the steps
of “deriv[ing] a set of client performance categories,” “obtaining] a set of
provider performance categories,” “obtaining] a provider delivery metric,”
“comparing] each category in the provider delivery metric,” “determin[ing]
an advantage value for each of the set of resulting elements,” “assigning] a
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risk value to the advantage value,” and “selecting] at least one of the set of
resulting elements.” (See Claim 1.) In other words, the claimed method
starts by collecting data (deriving and obtaining), and adds an algorithm
(determining a value, assigning a value, selecting an element) to
“maximiz[e] the business value to the client and apportion[] the amount of
risk that the client and the provider undertake.” (See id.)
We treat “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.” Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016). See also buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (claims directed to certain
arrangements involving contractual relations are directed to abstract ideas).
Additionally, the Federal Circuit has “recognized that merely
presenting the results of abstract processes of collecting and analyzing
information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.”
Electric Power Grp., 830 F.3d at 1354. Thus, a method, like the claimed
method, “that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible.” See
Digitech Image Techs, LLCv. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014).
Regardless, Appellants attempt to analogize the pending claims to the
claims in Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed.
Cir. 2010) (the claims being directed to a process for rendering halftone
images). (See Appeal Br. 14—16.)
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In contrast to the present claimed method, in Research Corp., the
claimed process represented an improvement in computer technology in the
marketplace. Research Corp., 627 F.3d at 868—69 (“The invention presents
functional and palpable applications in the field of computer technology.
These inventions address ‘a need in the art for a method and apparatus for
the halftone rendering of gray scale images in which a digital data processor
is utilized in a simple and precise manner to accomplish the halftone
rendering.’”) Additionally, and also in contrast to the present claimed
method, “the method in Research Corp., which required the manipulation of
computer data structures (the pixels of a digital image and the mask) and the
output of a modified computer data structure (the halftoned image), was
dependent upon the computer components required to perform it.” Bancorp
Servs., L.L.C. v. Sun Life As sur. Co. of Canada (U.S.), 687 F.3d 1266, 1279
(Fed. Cir. 2012).
In this case, Appellants do not persuasively argue why the claimed
process represents either an improvement in computer technology or
requires the manipulation of computer data structures and is dependent upon
computer components to perform. Instead, as noted above, Appellants argue
that “the claims are directed to an improvement in the field of managing
business engagements and structuring pricing contracts.” (Appeal Br. 13.)
Appellants further argue that “it is an error to deem the claimed
invention an abstract idea as it does not seek a monopolization [i.e.,
preemption] of the concept of creating service contract elements.” (Id. at
11.) Preemption, however, is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
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Application 11/465,923
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73],
CLS Bank Inti v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013), affd, 134 S. Ct. 2347 (2014). Moreover, “[w]here a patent’s claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot.” Id.
In view of the above, and even accepting Appellants’ argument that
“the claims are directed to an improvement in the field of managing business
engagements and structuring pricing contracts” (see Appeal Br. 13), we are
not persuaded that the Examiner erred in determining that the claims are
directed to an abstract idea.
We next look to part two of the Alice framework which has been
described “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, 134 S. Ct. at 2355 (citing Mayo, 566 U.S. at 12—IS).
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to obtain data, compare data, determine values, and select a result
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Application 11/465,923
are basic computer functions. In other words, each step does no more than
require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellants’ method add nothing that is not already present when the steps
are considered separately. Viewed as a whole, claim 1 simply recites the
concept of determining what to include in a contract between a provider and
a client, as performed by a generic computer. 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. That
is not enough to transform an abstract idea into a patent-eligible
invention. See id. at 2360. Therefore, we are not persuaded that the
Examiner erred in rejecting claim 1 under § 101. Appellants do not
separately argue claims 4, 8—10, 13, 17—20, and 24—26. Claims 4, 8—10, 13,
17-20, and 2A-26 fall with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
The Examiner’s rejection of claims 1, 4, 8—10, 13, 17—20, and 24—26
under 35U.S.C. § 101 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)(l)(iv).
AFFIRMED
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