Ex Parte Jones et al

Patent Trial and Appeal Board

Dec 20, 2017

10676297 (P.T.A.B. Dec. 20, 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.
10/676,297 09/30/2003 Emerson P. Jones GOLD 11-00076 8191
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
patents @ munckwilson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EMERSON P. JONES and EROL HAKANOGLU
Appeal 2016-006613
Application 10/676,297
Technology Center 3600
Before ANTON W. FETTING, BRADLEY B. BAYAT, and
MATTHEW S. MEYERS, Administrative Patent Judges.
BAYAT, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING
Appellants filed a Request for Rehearing (“Req.”) pursuant to
37 C.F.R. § 41.52 on February 22, 2018, seeking reconsideration of our
Decision on Appeal mailed December 22, 2017 (“Decision”), in which we
affirmed the Examiner’s rejection of claims 1—8 and 11—13 under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.
A request for rehearing “must state with particularity the points
believed to have been misapprehended or overlooked by the Board.”
37 C.F.R. § 41.52(a)(1). Arguments not raised in the briefs before the Board
and evidence not previously relied on in the briefs also are not permitted in a
request for rehearing except in limited circumstances set forth in 37 C.F.R.
Appeal 2016-006613
Application 10/676,297
§§ 41.52(a)(2) through (a)(4). Under these limited circumstances,
Appellants may present a new argument based on a recent relevant decision
of either the Board or a federal court; new arguments responding to a new
ground of rejection designated as such under § 41.50(b) and new arguments
that the Board decision contains an undesignated new ground of rejection
also are permitted.
DISCUSSION
Alice Step One
Turning to the Request, Appellants first assert that “[t]he Decision
overlooks the fact that the claims cannot possibly be interpreted as covering
any and all forms of the abstract idea and do not preempt the use of the
alleged abstract idea — the very basis for the abstract idea exception.” Req. 4
Appellants argue that claim 1 is not directed to an abstract idea because
similar to McRO,1 “[cjlaim 1 does not ‘threaten to subsume the full scope of
a fundamental concept’ such as ‘establishing or generating an agreement’.”
Id.
Appellants’ argument is unpersuasive. An analysis of the McRO
decision reveals that the Federal Circuit cautioned against claims like
Appellants’ claim 1. In McRO, the Federal Circuit specified that the
concern of preemption arises when a claim is directed to “the basic tools of
scientific and technological work” instead of a specific invention. 837 F.3d
at 1314 (quoting Alice Corp. Pty. v. CLSBankInt’l, 134 S. Ct. 2347, 2354
(2014)). The court made clear that “[t]he abstract idea exception has been
applied to prevent patenting of claims that abstractly cover results where ‘it
1 McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299 (Fed. Cir.
2016).
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Application 10/676,297
matters not by what process or machinery the result is accomplished.’” Id.
(quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1854)). In Morse, the Supreme
Court explained “[a]nd it has never, we believe, been supposed by any one,
that the first inventor of a steam printing-press, was entitled to the exclusive
use of steam, as a motive power, however developed, for marking or printing
intelligible characters.” 56 U.S. at 112—14. Thus, our reviewing courts have
cautioned against claims directed to results and to basic scientific and
technological tools instead of a specific invention. The Federal Circuit in
McRO specified: “[w]e therefore look to whether the claims in these patents
focus on a specific means or method that improves the relevant technology
or are instead directed to a result or effect that itself is the abstract idea and
merely invoke generic processes and machinery.” 837 F.3d at 1314.
In McRO, the Federal Circuit found claim 1 prevents preemption of all
processes for achieving automated lip synchronization of 3-D characters
because the claim recites a rule with specific characteristics. 837 F.3d at
1315. Unlike the claim in McRO, claim 1 here is directed to the result of
analyzing a company’s capital structure using mathematical formulas to
perform calculations by invoking generic processes and computers. See
Dec. 4—5. In contrast to claim 1 in McRO, which focused on a specific
asserted improvement in computer animation, Appellants’ claim does not
concern an improvement to computer capabilities, but instead relates to an
alleged improvement in making economically based decisions, for which a
computer is used as a tool in its ordinary capacity for calculating data
relating to a balance sheet.
“The Supreme Court has made clear that the principle of preemption
is the basis for the judicial exceptions to patentability” and “[f]or this reason,
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questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 134 S. Ct. at 2354). “Where a patent’s claims are
deemed only to disclose patent ineligible subject matter under the
Mayo/Alice framework, as in this case, preemption concerns are fully
addressed and made moot.” Id. Yet, although “preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility.” Id.', see OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert, denied, 136 S. Ct. 701
(2015) (“[Tjhat the claims do not preempt all price optimization or may be
limited to price optimization in the e-commerce setting do not make them
any less abstract.”).
We also are unpersuaded by Appellants’ assertion that the Decision
overlooks the similarity between the present claims and the claims in
Trading Technologies.2 Req. 4. In Trading Technologies, the Federal
Circuit affirmed the district court’s holding that the patented claims (which
recited a method and system for displaying market information on a
graphical user interface) did not simply claim displaying information on a
graphical user interface and were not directed to an abstract idea; instead, the
claims required “a specific, structured graphical user interface paired with a
to the graphical user interface’s
structure that is addressed to and resolves a specifically identified problem in
the prior state of the art.” 675 F. App’x at 1004. Here, the claims are
readily distinguishable from the claims in Trading Technologies because
2 Trading Technologies International Inc. v. CQG, Inc., 675 F. App’x 1001
(Fed. Cir. 2017) (nonprecedential).
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Application 10/676,297
they neither recite a graphical user interface nor do Appellants argue that the
claims contain an improved user interface. Cf Req. 5 (“Similarly, the
instant claims relate to a framework/methodology that can account for the
differences in risk between debt and equity”).
Alice Step Two
Appellants assert the Decision overlooks the recent Federal Circuit
decision in Berkheimer3 because a finding of whether a claim element or
combination of elements is well-understood, routine, and conventional to a
skilled artisan in the relevant field “must be proven by clear and convincing
evidence.” Req. 6.
Although the ultimate determination of eligibility is a question of law,
our reviewing court recently held “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer v. HP, 881 F.3d at 1365
(quoting Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d
1314, 1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying
factual issues”’)). The court in Berkheimer also held “[w]hen there is no
genuine issue of material fact regarding whether the claim element or
claimed combination is well-understood, routine, [or] conventional to a
skilled artisan in the relevant field, this issue can be decided on summary
judgment as a matter of law.” Berkheimer, 811 F.3d at 1368. Thus, evidence
may be helpful where, for instance, facts are in dispute, but evidence is not
always necessary. Appellants have not persuaded us that evidence is
necessary in this case.
3 Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
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Dependent claims 3—8 and 12
Appellants assert that “[t]he Decision overlooks and fails to address
any of the dependent claims argued separately in the appeal.” Req. 8. We
have reviewed Appellants’ arguments as to dependent claims 3—8, but we
are not persuaded that any of these claims are patent-eligible under 35
U.S.C. § 101. In other words, dependent claims 3—8 may limit the scope of
the abstract idea to which independent claim 1 is directed but their character
remains unchanged, especially given that these dependent claims provide no
insight to improvements in computer functionality beyond what one would
expect from using a generic computer as a tool in performing the scheme as
claimed. None of these claims add anything significantly more to transform
the abstract idea. For example, claim 3 provides that the calculated earnings
per share values of claim 1 is applied to a financial presentation relating to a
balance sheet, which further defines aspects of the abstract idea. Claim 4
recites that the iterations and calculations of claim 1 are carried out using a
Monte Carlo simulation, which further defines the abstract idea by
identifying a class of well-understood computational algorithms. Claims 5
and 6 describe outputting the results of the analysis based on a user request,
which merely describes insignificant post-solution activity. Claim 7 defines
the mathematical formula for calculating earnings per share, which
describes a mental process and further defines the abstract idea. And claim
8 (similarly claim 12) recites that a conversion premium associated with the
convertible security is taken into account as part of the analysis in claim 1,
which defines values associated with the abstract idea of claim 1 (and 11).
Thus, Appellants have not persuaded us that the Examiner erred in rejecting
claims 3—8 and 12 as being directed to patent-ineligible subject matter.
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Therefore, we determine that the limitations of the dependent claims do not
meaningfully limit the claims beyond the claimed abstract idea.
DECISION
Appellants’ Request has been granted to the extent that we have
reconsidered our Decision in light of Appellants’ Request, but is denied in
all other respects.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
DENIED
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