Ex Parte Hunur et al

Patent Trial and Appeal Board

Dec 19, 2017

12789476 (P.T.A.B. Dec. 19, 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.
12/789,476 05/28/2010 Nagaraj Mohan Hunur ORCL-129 8702
51121 7590
IPHORIZONS PLLC
C/O Landon IP
2318 Mill Road
12th Floor
Alexandria, VA 22314
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
NOTIFICATION DATE DELIVERY MODE
12/21/2017 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):
lfnt2000@yahoo.com
oracle @ iphorizons. com
intercomm @ iphorizons. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAGARAJ MOHAN HUNUR and ANOOP SHARMA
Appeal 2016-002247
Application 12/789,476
Technology Center 3600
Before JEAN R. HOMERE, CARL W. WHITEHEAD JR, and
JON JURGOVAN, Administrative Patent Judges.
HOMERE, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
STATEMENT OF THE CASE
In papers filed November 29, 2017, Appellants request a rehearing
under 37 C.F.R. § 41.52 from the Decision on Appeal (“Decision”) of the
Patent Trial and Appeal Board (“Board”), dated October 30, 2017. In the
Decision, we affirmed the Examiner’s rejection of claims 1, 3—8, 10-15, and
17—21 as being directed to non-statutory subject matter. Dec. 12.
ANALYSIS
In the Request for Rehearing (“Req. Reh’g”), Appellants request
rehearing under 37 C.F.R. § 41.52(2). In support of the request, Appellants
present a new argument based upon Trading Techs. Int'l, Inc. v. CQG, Inc.,
20 No. 2016-1616, 2017 U.S. App. LEXIS 834 (Fed. Cir. Jan. 18, 2017)
Appeal 2016-002247
Application 12/789,476
(hereafter 'Trading Techs'), to request reconsideration of the decision
sustaining the rejection of claims 1, 3—8, 10—15, and 17—21 under 35 U.S.C.
§ 101. Req. Reh’g 1.
Because Trading Techs was decided after the date of the Appeal Brief,
dated July 31, 2015 and also the Reply Brief, dated December 18, 2015,
Appellants’ request is admissible for rehearing under 37 CFR § 41.52(2).
In the request, Appellants argue the following:
Appellants respectfully submit that pending claims of the
instant application are patent eligible under the clear guidance
provided by CAFC in Trading Techs. As explained below, the
facts of the subject patent application uniquely match those of
Trading Techs as relevant to the guidance of the CAFC.
Notably, the GUI presented in Trading Techs' patents was
designed for a particular set of end users (i.e. traders) in a given
environment (electronic trading) and organized the information
in a specific, structured manner so as to fulfill two main
purposes. Firstly, increasing comprehensibility of the
information to facilitate the decision-making process, and
secondly providing a convenient interface to allow easier and
quicker placement of trade orders.
Similarly, the GUI in the present application is directed
to employees within an organization enrolling in benefits
programs. The GUI of the present invention also makes the
benefits choices more comprehensible and provides a
systematic approach using which the employees make orderly
choices while enrolling for various benefits. In brief, the
grouping of plan instances, displaying only the eligible
instances and the forced navigation selection together provide
ease of understanding and selection in a complex environment
with a large number of plan instances.
Req. Reh’g. 8—9.
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Appeal 2016-002247
Application 12/789,476
These arguments are not persuasive. We do not agree with
Appellants that the GUI presented in Trading Techs is similar to that
of the present application. As correctly noted by Appellants, in
Trading Techs, because prices of commodities fluctuate rapidly, it is
of utmost importance that traders see and comprehend the most recent
bids before placing an order so as optimize their own bidding
strategies. Id. at 3. As further correctly noted by Appellants, because
Trading Techs’ GUI provides a convenient interface to facilitate
traders’ quick comprehension of the market depth so as to optimize
their orders, our reviewing court concluded that the cited GUI is an
improvement over existing GUI, and has no ‘pre-electronic trading
analog’. Id. at 6 (citing Trading Techs at 6). Consequently, the court
concluded that Trading Tech’s GUI is directed to patent eligible
subject matter. Id. The court’s conclusion is consistent with our
Decision, wherein we concluded the following:
Although the claimed subject matter provides an
interface to facilitate benefits enrollment, its functions do not
go beyond those of a general purpose computer for merely
receiving, storing, comparing, and displaying information.
Further, we agree with the Examiner that the DDR Holdings
precedent is not applicable here because the claim subject
matter merely recites the performance of a business practice
known from the pre-Internet era, and it is not necessarily rooted
in computer technology. Id. Instead, the claimed subject
matter pertains to the well-known practices of employing a
database system for enrolling users in benefits. Hence, we agree
with the Examiner that the elements of claim 1 do not amount
to "significantly more" than the abstract idea of using a
computer to facilitate benefits enrollment, or that they do not
add any meaningful limitations beyond generally linking the
abstract idea to the particular technological environment.
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Appeal 2016-002247
Application 12/789,476
Dec. 10.
In contrast to Trading Techs’ GUI, Appellants’ GUI is directed to a
conventional interface for allowing users to select benefits plans presented
as groups in a sequence previously configured by an administrator. Spec.
Tflf29 and 38-47. While the GUI enables users to navigate sequentially from
one group to another, it presents none of the salient features that distinguish
Trading Tech over conventional GUIs. Unlike Trading Techs, Appellants’
GUI is not intended to be used in an environment where time is of the
essence, and users have to be apprised of the most recent data in order to
optimize their bids in matters of seconds. Instead, Appellants’ GUI merely
provides a sequence of menus to the user to facilitate benefits enrollment.
Because Appellants’ GUI is directed to a conventional interface that merely
automates well-establish benefits enrollment processes, we maintain our
previous decision that the claimed GUI is not directed to patent eligible
subject matter.
DECISION
THEREFORE, we have granted Appellants’ Request to the extent that
we have reconsidered the original Decision, but have DENIED it with
respect to making any changes to the Decision.
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).
REHEARING DENIED
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