Ex Parte Stiff et al

Patent Trial and Appeal Board

Jun 18, 2018

14450580 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/450,580 08/04/2014
21967 7590 06/19/2018
Hunton Andrews Kurth LLP
Intellectual Property Department
2200 Pennsylvania Avenue, N.W.
Washington, DC 20037
FIRST NAMED INVENTOR
Geoffrey Stiff
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.
52493.000676 6292
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
MAIL DATE DELIVERY MODE
06/19/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte GEOFFREY STIFF, MATHHEW SHARPE, and
LANDIS WILLIAM ATKINSON III
Appeal2017-004296
Application 14/450,580
Technology Center 3600
Before JOHN A. JEFFERY, JUSTIN BUSCH, and JOHN P. PINKERTON,
Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 55-70. We have jurisdiction under 35 U.S.C.
§ 6(b ). We affirm.
STATEMENT OF THE CASE
Appellants' invention provides a user with guaranteed minimum
retirement income payments using a defined benefit account inside of a
defined contribution plan. See generally Abstract; Spec. 1. Claim 55 is
representative:
1 Appellants identify the real party in interest as Genworth Holdings, Inc.
App. Br. 1.
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Application 14/450,580
55. A computer processing system that provides, via an
interactive electronic interface, a user with a defined benefit,
based on a retirement income factor that indicates the
guaranteed minimum periodic income that the user will receive
regardless of how long the user lives and the potential for an
increase in the periodic income based on excess investment
performance, over the retirement income factor, of designated
defined benefit investment options, the computer processing
system comprising:
a database that stores investment data and data used to
calculate the retirement income factor;
a computer processor coupled to the database and
programmed to: receive a contribution and accumulate value
over a period of time by investing the contribution or any
portion( s) thereof in any number of select investment option( s ),
and
the accumulated value, or any portion(s) thereof, being
capable of at least one selected from the group consisting of:
(a) being withdrawn at any time, and
(b) being paid out after a predetermined period of time;
and
the computer processor constituted by a tangibly
embodied programmed computer processor, within the
computer processing system, which communicates with the
user via a communication network; and
wherein the selected investment options comprise
investment products and at least one designated defined benefit
investment option processor that is programmed to:
receive, via an electronic input, at least one investment
payment from the computer processor, the investment payment
comprising at least one of the contribution and/ or the
accumulated value, or any portion(s) thereof,
transmit, via an electronic transmission, a guaranteed
minimum income payment after the accumulation period of
time, the guaranteed minimum income payment being based on
the retirement income factor, and
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increase the income payment for life for excess
performance over the retirement income factor of the
designated defined benefit investment option.
THE REJECTION2
The Examiner rejected claims 55-70 under 35 U.S.C. § 101 as
directed to ineligible subject matter. Ans. 2-7. 3
FINDINGS AND CONTENTIONS
The Examiner finds that the claimed invention is directed to an
abstract idea, namely financial calculation of a retirement investment.
Ans. 2---6. According to the Examiner, the claimed elements do not add
significantly more to the abstract idea to render the claimed invention patent-
eligible. Ans. 6-7.
Appellants argue that the claims are not directed to an abstract idea,
but rather address a business challenge that is particular to a computer
processor that provides, among other things, a defined benefit based on a
retirement income factor that indicates the guaranteed minimum periodic
income the user will receive regardless of how long the user lives and the
potential for an increase in periodic income based on excess investment
performance. App. Br. 6-8. According to Appellants, not only is the
claimed invention necessarily rooted in computer technology, but it is
impossible to implement the claimed invention without a computer. App.
2 Because the Examiner withdrew a double patenting rejection (Ans. 7), that
rejection is not before us.
3 Throughout this opinion, we refer to ( 1) the Appeal Brief filed August 3,
2016 ("App. Br."); (2) the Examiner's Answer mailed November 16, 2016
("Ans."); and (3) the Reply Brief filed January 17, 2017 ("Reply Br.").
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Br. 8-9. Appellants add that the claims contain meaningful limitations that
represent sufficiently inventive concepts that are tied to a specific
calculating process and system. App. Br. 10-12.
Appellants further contend that the claims recite significantly more
than an abstract idea by solving a unique and computer-centric problem with
a claimed solution necessarily rooted in computer technology, where the
recited computer processor is integral to the claimed invention. App.
Br. 12-18; Reply Br. 2---6. Appellants add that the record lacks evidence that
the combination of claim elements is well-understood, routine, or
conventional in the field. App. Br. 14--15; Reply Br. 4.
ISSUE
Has the Examiner erred in rejecting claims 55-70 by concluding that
they are directed to ineligible subject matter under § 101? This issue turns
on whether the claimed invention is directed to a patent-ineligible abstract
idea and, if so, whether the recited elements----considered individually and as
an ordered combination-transform the nature of the claims into a patent-
eligible application of that abstract idea.
ANALYSIS
To determine whether claims are patent eligible under 35 U.S.C.
§ 101, we apply the Supreme Court's two-step test articulated in Alice Corp.
Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we
determine whether the claims are directed to a patent-ineligible concept:
laws of nature, natural phenomena, and abstract ideas. Id. at 2354--55. If so,
we then proceed to the second step and examine the claim's elements-both
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individually and as an ordered combination-to determine whether the claim
contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice step one, we agree with the Examiner that the claimed
invention is directed to an abstract idea, namely financial calculation of a
retirement investment. Ans. 2, 7-8. Independent claim 55 recites, in
pertinent part, an interactive electronic interface that provides a user with a
defined benefit based on a "retirement income factor" 4 that indicates the
guaranteed minimum periodic income the user will receive regardless of
how long the user lives and the potential for an increase in periodic income
based on excess investment performance, over the retirement income factor,
of designated defined investment options. According to the Specification,
the retirement income factor may be determined, calculated, or based on
various factors including, for example, savings commencement date,
selected payout plan, product features and expenses, the participant's age or
gender, retirement date, etc. Spec. 36:28-39:3.
The recited system also includes (1) a database that stores investment
data and data used to calculate the retirement income factor, and (2) a
computer processor coupled to the database and programmed to (a) receive a
4 According to Appellants' Specification, a retirement income factor times
the amount saved may comprise the guaranteed minimum retirement income
payment(s) received by an employee at retirement. Spec. 34:15-16. In the
example shown in Figure 13, the retirement income factor is 15 .1234 % and
is used to calculate an accrued minimum retirement income of $3,781. See
Spec. 36:26-37:8.
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contribution, and (b) accumulate value over a time period by investing the
contribution or any portion( s) thereof in any number of select investment
option(s), where the accumulated value can be withdrawn at any time and/or
paid out after a predetermined time period.
Claim 5 5 further recites that the selected investment options comprise
investment products and at least one designated defined benefit investment
option processor programmed to ( 1) receive at least one investment payment
comprising the contribution and/ or the accumulated value from a computer
processor, (2) transmit a guaranteed minimum income payment after the
accumulation time period, where the payment is based on the retirement
income factor, and (3) increase the income payment for life for excess
performance over the retirement income factor for the designated benefit
investment option.
In essence, the claimed invention calculates a particular retirement
benefit for a user based on certain investments, and provides payments based
on that calculation. Despite Appellants' arguments to the contrary (App.
Br. 6-12), we agree with the Examiner that claim 55 is directed to an
abstract idea, namely financial calculation of a retirement investment, which
is a fundamental economic and business practice. See Ans. 2---6. Such
fundamental economic and business practices are often held to be abstract.
See, e.g., Alice, 134 S. Ct. at 2356 (holding the concept of intermediated
settlement is an abstract idea directed to a "fundamental economic practice
long prevalent in our system of commerce") ( citation omitted); see also
buySAFE Inc. v. Google, Inc., 765 F.3d 1350, 1353-54 (Fed. Cir. 2014)
( citing cases where contractual relations at issue constituted fundamental
economic practices, and noting that forming or manipulating economic
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relations may involve an abstract idea); Content Extraction & Transmission
LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014)
( explaining that claims directed to "the mere formation and manipulation of
economic relations" and "the performance of certain financial transactions"
have been held to involve abstract ideas).
Furthermore, it well settled that collecting information is within the
realm of abstract ideas----even when the information is limited to particular
content. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). It is also well settled that analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more, are
essentially mental processes within the abstract idea category. Id. at 1354.
And 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.
Id.
Similar to the claims at issue in Electric Power, the claimed invention
here gathers, manipulates, analyzes, and presents information of a specified
content, but does not use any particular inventive technology for performing
those functions. That the information pertains to investments, benefits, and
other financial data is of no consequence because collecting and analyzing
such information does not make the collection and analysis non-abstract.
See SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016, 1021 (Fed. Cir.
2018).
Appellants' reliance on DDR Holdings, LLC v. Hotels.Com, L.P., 773
F.3d 1245 (Fed. Cir. 2014) on pages 8 and 9 of the Appeal Brief is
unavailing. In DDR, instead of a computer network operating in its normal,
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expected manner by sending a website visitor to a third-party website
apparently connected with a clicked advertisement, the claimed invention
generated and directed the visitor to a hybrid page that presented ( 1) product
information from the third party and (2) visual "look and feel" elements
from the host website. DDR, 773 F.3d at 1258-59. Given this particular
Internet-based solution, the court held that the claimed invention did not
merely use the Internet to perform a business practice known from the pre-
Internet world, but rather was necessarily rooted in computer technology to
overcome a problem specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellants' claimed
invention, in essence, calculates a particular retirement benefit for a user
based on certain investments, and provides payments based on that
calculation. In short, this computer-based functionality is directed to a
fundamental business practice, namely financial calculation of a retirement
investment-an abstract idea. As in SAP America, the claims here are not
directed to specific improvements in the way computers and networks carry
out their basic functions, but rather an improved financial analysis. See SAP
America, 890 F.3d at 1022; see also In re Chorna, 656 F. App'x 1016, 1022
(Fed. Cir. 2016) (unpublished) (holding ineligible claims directed to
financial instruments valued using an allocation formula, traded, and cleared
as directed to an abstract idea). That the Specification indicates that off-the-
shelf computer technology is usable to carry out the analysis on pages 18
and 19 of the Specification only bolsters the notion that the claimed
invention does not focus on an improvement in computers as tools, but
rather certain independently abstract ideas that use computers as tools. See
SAP America, 890 F.3d at 1022 (quoting Elec. Power, 830 F.3d at 1354).
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Alice Step Two
Nor do the recited elements----considered individually and as an
ordered combination-transform the nature of claim 55 into a patent-eligible
application of the abstract idea to ensure that the claim amounts to
significantly more than that idea. See Alice, 134 S. Ct. at 2357.
That the recited system includes an interactive electronic interface and
various processors, including a programmed computer processor coupled to
a database and that communicates with the user via a communication
network, does not change our conclusion. As the Examiner indicates, the
claimed invention merely uses generic computing components to perform
the recited abstract idea. Ans. 10-16; see Mortgage Grader Inc. v. First
Choice Loan Services, Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)
(noting that components such an "interface," "network," and "database" are
generic computer components that do not satisfy the inventive concept
requirement); see also Intellectual Ventures I LLC v. Capital One Bank
(USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) ("[T]he interactive interface
limitation is a generic computer element"); 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."). Indeed, these
generic computing components merely do that which can be performed
mentally or with a pen and paper----exclusive functions ineligible for patent
protection under§ 101. See CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1372 (Fed. Cir. 2011).
Even assuming, without deciding, that the recited components add
efficiency, any speed increase comes from the capabilities of the generic
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computer components-not the recited process itself. See FairWarning IP,
LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing
Bancorp Services, LLC v. Sun Life Assurance Co. of Canada (US.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations
could be performed more efficiently via a computer does not materially alter
the patent eligibility of the claimed subject matter.")). Like the claims in
Fair Warning, the focus of claim 55 is not on an improvement in computer
processors as tools, but on certain independently abstract ideas that use
generic computing components as tools. See FairWarning, 839 F.3d at 1095
( citations and quotation marks omitted).
In short, merely reciting these generic computing components cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Id. at 2358. In other words, merely reciting an abstract idea while adding the
words "apply it with a computer" does not render an abstract idea non-
abstract: there must be more. See Alice, 134 S. Ct. at 2359. Nor does the
claimed invention improve the computer processor's functionality or
efficiency, or otherwise change the way the processor functions. Cf Enfish
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
Despite Appellants' arguments to the contrary (App. Br. 11; Reply
Br. 4), the fact that the Examiner did not also reject the claims as anticipated
or obvious under 35 U.S.C. §§ 102 and 103 is irrelevant to the Examiner's
eligibility rejection under 35 U.S.C. § 101. Although the second step in the
Alice test is a search for an "inventive concept," the analysis is not directed
to novelty or nonobviousness, but rather searches for elements sufficient to
ensure that the claimed invention is directed to more than a patent ineligible
concept, such as an abstract idea. See Alice, 134 S. Ct. at 2355.
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"Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the§ 101 inquiry." Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013); see also Diamond v. Diehr, 450
U.S. 17 5, 188-89 (1981) ("The 'novelty' of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter."); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an
eligibility finding does not tum on the novelty of using a user-downloadable
application for the particular purpose recited in the claims).
Lastly, we find unavailing Appellants' contention that the claims do
not pre-empt the field of defined benefit investments. App. Br. 10-11.
Where, as here, the claims cover a patent-ineligible concept, pre-emption
concerns "are fully addressed and made moot" by an analysis under the
Alice framework. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015).
For the foregoing reasons, then, the recited elements----considered
both individually and as an ordered combination----do not contain an
inventive concept sufficient to transform the claimed abstract idea into a
patent-eligible application. Therefore, we are not persuaded that the
Examiner erred in rejecting claim 55, and claims 56-70 not argued
separately with particularity.
CONCLUSION
The Examiner did not err in rejecting claims 55-70 under§ 101.
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DECISION
We affirm the Examiner's decision to reject claims 55-70.
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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