Ex Parte Andrews et al

Patent Trials and Appeals Board

Sep 28, 2018

13337662 - (D) (P.T.A.B. Sep. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/337,662 12/27/2011
79804 7590 10/02/2018
Duncan Galloway Egan Greenwald, PLLC
9750 Ormsby Station Road, Suite 210
Louisville, KY 40223
FIRST NAMED INVENTOR
Sarah L. Andrews
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.
113027.000069US1 1068
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
10/02/2018 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):
kduncan@dgeglaw.com
carnold@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SARAH L. ANDREWS, PENNAKI DAM, DAMIEN FRENNET,
SUMMIT CHAUDHURL, RICARDO RODRIGUEZ,
ASH OK GAN AP AM, FRANK SCHILDER,
and
JOCHEN LOTHER LEIDNER
Appeal2017---008961
Application 13/337,662 1
Technology Center 3600
Before CARLA A. KRIVAK, HUNG H. BUI, and
NABEEL U. KHAN, Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-38, which are all the claims pending
in the application. Claims App'x. We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm. 2
1 Appellants identify the real party in interest as Thomson Reuters Global
Resources. App. Br. 1.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed January
9, 2017; Reply Brief ("Reply Br.") filed May 9, 2017; Examiner's Answer
("Ans.") mailed March 9, 2017; Final Office Action ("Final Act.") mailed
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Application 13/337,662
STATEMENT OF THE CASE
Appellants' invention relates to "relates generally to financial services
and to the mining of information from conventional news sources and
new/social media sources and other sources of content to discern sentiment
and to predict behavior for pricing and recommendation" Spec. ,r 2.
"Appellants invention provides a News/Media Analytics System (NMAS)
adapted to automatically process and 'read' news stories and content from
blogs, twitter, and other social media sources, represented by news/media
corpus, in as close to real-time as possible" and apply "one or more models
against the content to determine green scoring and/or anticipate behavior of
stock price and other investment vehicles" "to provide a sentiment-based
solution for scoring the 'greenness' of companies." Abstract.
Claims 1 and 21. Claim 1 is illustrative of the claimed subject matter,
as reproduced below with disputed limitations in italics:
1. A computer implemented method comprising:
a) identifying a first set of information derived from a
first set of social media information, the set of social media
information being individual commentary or interactions and
relating to a first set of companies and a first set of news
articles from a plurality of information sources, the first set of
information being associated with the first set of companies, the
first set of companies being associated with a set of securities,
the first set of information comprising a subset of information
other than securities transaction or regulatory filing
information, wherein a set of sentiment scores are derived from
the first set of social media information and are associated with
the set of securities;
(b) based upon the set of information, generating a
composite index for the set of securities;
August 5, 2016; and original Specification ("Spec.") filed December 27,
2011.
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( c) transmitting a first signal associated with the
composite index, the first signal comprising a real-time stream,
wherein the real-time stream is based at least in part on the set
of sentiment scores associated with the set of securities in the
composite index;
(d) providing a set of risk-indicating patterns on a
computing device;
( e) identifying a second set of information derived
from a second set of social media information, and identifying
within the second set of information a set of potential risks by
using a risk-identification-algorithm based, at least in part, on
the set of risk-indicating patterns, the second set of information
being individual commentary or interactions and relating to a
second set of companies and a second set of news articles from
the plurality of information sources and being identified in real
time and being temporally more recent than the first set of
information; and
( f) revising the composite index in substantially real
time based on the second set of information and transmitting a
second signal associated with the revised composite index, the
second signal comprising the real-time stream, wherein the real-
time stream is based at least in part on the set of risk-indicating
patterns and the set of sentiment scores.
App. Br. 31 (Claims App'x).
REJECTIONS and REFERENCES
Claims 1 and 21 stand rejected under 35 U.S.C. § 112, first paragraph
as failing to comply with the written description requirement. Final Act. 10.
Claims 1 and 21 stand rejected under 35 U.S.C. § 112, second
paragraph as being indefinite. Final Act. 11.
Claims 1-38 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 7-
10.
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Claims 1-6, 10-14, 17, 19-21, 23-26, 29-32, 35, 37, and 38 stand
rejected under 35 U.S.C. § I03(a) as being unpatentable over Ouimet
(US 2008/0243716 Al; published Oct. 2, 2008), Peitersen (US
2009/0150316 Al; published June 11, 2009) and Hoogs (US 2005/0071217
Al; published May 31, 2005). Final Act. 12-33.
Claims 7-9, 22, 27, and 28 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Ouimet, Peitersen, Hoogs, and Lawrence (US
2006/0004878 Al; published Jan. 5, 2006). Final Act. 33-39.
Claims 15, 16, 33, and 34 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Ouimet, Peitersen, Hoogs, and Wennberg (US
2006/0129427 Al; published June 15, 2006). Final Act. 39--43.
Claims 18 and 36 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Ouimet, Peitersen, Hoogs, and Beldock (US 6,490,565
Bl; issued Dec. 3, 2002). Final Act. 43--45.
ANALYSIS
35 USC§ 112, First Paragraph: Claims 1 and 21
In support of the§ 112, first paragraph written description rejection of
claims 1 and 21, the Examiner finds the limitation "wherein a set of
sentiment scores are derived from the first set of social media information
and are associated with the set of securities" is not disclosed in Appellants'
Specification. Final Act. 10. The Examiner acknowledges paragraphs 22
and 43 of the Specification describe "that sentiment scores may be derived
from text and metadata," but nevertheless asserts that the Specification does
not provide adequate written description as to "how to derive sentiment
scores." Final Act. 10.
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Appellants argue the Examiner erred because paragraphs 22, 40, 43-
44, 51-52, 55, 65, and 68-71 of the Specification describe the "method for
determining a 'sentimental score,"' including "how sentiment may be
scored," "factors that may be considered," and "the types of analysis that
may be used" (e.g., ontologies, Reuters NewsScope Sentiment Engine). App.
Br. 20-21. For example,
The sentiment score, generally "may be derived from text and
metadata from news/media and may apply a predefined or
learned lexicon-based and/or sentiment pattern to the processed
text/metadata." Spec. para. [0022]. The processes that may be
used to objectively quantify "human sentiment concerning
green issues" may include a probabilistic value or relationship
or Bayesian networks applied to data collected from social
media sources to "derive a green score or rating based on the
determined sentiment." Spec. para. [0040]. The sentiment score
itself may be "positive, negative or neutral, with respective
scores of+ 1, -1, and O" and is derived by the sentiment
processing module 125 from the text or metadata in the social
media information from the social media sources. Spec. para.
[0043].
Reply Br. 5.
The Examiner maintains the position that ( 1) "none of these
paragraphs describes how to arrive at a sentiment score by processing news
information," (2) "[t]he names of analyses, such as 'ontologies' or 'Reuters
NewsScore [sic NewsScope] Sentiment Engine' do not provide any structure
to the recited sentiment score," and (3) "the source of a score is adequate to
demonstrate possession, but the source of a calculation does not demonstrate
possession of the calculation itself." Ans. 12.
We disagree with the Examiner. At the outset, we note a written
description requirement is separate and distinct from an enablement
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requirement under 35 U.S.C. § 112, first paragraph. See Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). For
example, to comply with the enablement requirement under 35 U.S.C. § 112,
first paragraph, Appellants' Specification must adequately teach how to
make and how to use a claimed invention throughout its scope, without
undue experimentation. Plant Genetic Sys. N. V. v. DeKalb Genetics Corp.,
315 F.3d 1335, 1339 (Fed. Cir. 2003). Naturally, the specification must
teach those of skill in the art "how to make and how to use the invention as
broadly as it is claimed." In re Vaeck, 947 F.2d 488,496 (Fed. Cir. 1991).
In contrast to the enablement requirement, the written description
requirement under 35 U.S.C. § 112, first paragraph only requires Appellants
to "reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad, 598
F .3 d at 13 51. "[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology."
Id. However, "the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue." Purdue Pharma
L.P. v. Paulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). In some cases,
"drawings alone may provide a 'written description' of an invention as
required by§ 112." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed.
Cir. 1991 ). Regardless, the disclosure must convey with reasonable clarity
to those skilled in the art that the inventor was in possession of the invention.
Id. at 1563-1564. Here, Appellants have shown that there is sufficient
structure and description in the specification as filed.
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For example, the limitation "wherein a set of sentiment scores are
derived from the first set of social media information and are associated with
the set of securities" is recited as part of the original claims 5-10, 20, 22,
and 25-29 as filed. Paragraphs 22, 40, 43, 52, 55, and 69 of Appellants'
Specification provide written description support for this disputed limitation
in claims 1 and 21. Similarly, Figures 3 and 4 also show written description
support for the disputed limitation in claims 1 and 21.
Because Appellants have "reasonably convey[ ed] to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date," we do not sustain the § 112, first paragraph rejection of
claims 1 and 21 for failure to comply with the "written description"
requirement.
35 US. C. § 112, Second Paragraph: Claims 1 and 21
In support of the§ 112, second paragraph rejection of claims 1 and
21, the Examiner finds the term "sentiment score" is indefinite. Final Act.
11. For the same reasons discussed above, we agree with Appellants that a
skilled artisan would understand the term "sentiment score" in the context of
Appellants' Specification. As such, we do not sustain the Examiner's§ 112,
second paragraph, rejection of claims 1 and 21.
35 USC§ 101: Claims 1-38
In Alice Corp. v. CLS Bank International, 134 S. Ct. 234 7 (2014 ), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (2012), "for distinguishing patents that claim laws of nature,
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natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "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."' Id. (quoting Mayo, 566 U.S. at 72-73).
In rejecting claims 1-38 under 35 U.S.C. § 101, the Examiner
determines: (1) these claims are directed to an abstract idea of "generating a
composite index for a set of securities" (Final Act. 8), and includes
limitations such as "steps for (a) identifying information from sources, (b)
generating an index, ( c) transmitting a signal, ( d) providing patterns, ( e)
identifying second information, and ( f) revising the index" that are nothing
more than "steps for data gathering, data manipulation, and data reporting
related to the generation of an index" (Ans. 4); and (2) the additional
elements in the claims, whether taken separately or in an ordered
combination, are all steps for data manipulation that do not amount to
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significantly more than the abstract idea, because (i) "the claims do not
recite an improvement to another technology or technical field, nor do they
recite an improvement to the functioning of the computer itself' and (ii) "the
claims require no more than a generic computer ... to perform generic
computer functions that are well-understood, routine, and conventional
activities previously known to the industry." Final Act. 7-8; Ans. 4--5. The
Examiner also determines these claims are directed to an abstract idea
because the process recited in these claims can be implemented mentally or
performed manually by a human with pen and pencil. Ans. 6; see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011).
At the outset, Appellants argue "claim 1 recites statutory subject
matter pursuant to 35 U.S.C. § 101" under the so-called "machine-or-
transformation" (MoT) test established by the Federal Circuit in In re Bilski,
545 F.3d 943, 954 (Fed. Cir. 2008) ( en bane). Under Bilski 's MoT test, a
claimed process can be considered patent-eligible under § 101 if: (1) "it is
tied to a particular machine or apparatus"; or (2) "it transforms a particular
article into a different state or thing." Bilski, 545 F.3d at 954 ( citing
Gottschalk, 409 U.S. at 70, 93; S. Ct. 253). However, Appellants' reliance
on the MoT test is misplaced.
In In re Bilski, the Federal Circuit adopted a "machine-or-
transformation" (MoT) test to determine whether a process claim is eligible
under 35 U.S.C. § 101. However, the Supreme Court held, in Bilski v.
Kappas, 130 S. Ct. 3218, 3227 (2010), that the "MoT" test, while a "useful
and important clue," is no longer the sole test for determining the patent-
eligibility of process claims under§ 101. Since Bilski v. Kappas, the
Supreme Court has created a two-step framework in Alice, 134 S. Ct. at
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23 54 to address whether a claim falls outside of § 101, which we discuss
infra. 3
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue "the
Examiner's characterization of the claim is overly broad," citing Enfzsh, 822
F.3d at 1336 and a memorandum from Robert W. Bahr, Deputy
Commissioner for Patent Examination Policy, to Patent Examining Corps,
Recent Subject Matter Eligibility Decisions (May 19, 2016) (which warn
against "describing the claims at such a high level of abstraction and
untethered from the language of the claims" and suggest such an abstraction
will "all but ensure[] that the exceptions to§ 101 swallow the rule.") App.
Br. 10. Appellants assert "[t]he subject matter of the claimed invention is
not abstract and is far removed from the concepts of simply just 'generating
a composite index' ... does not involve a 'method of organizing human
activity."' App. Br. 10-11.
Appellants then argue "Claim 1 is not merely directed towards an
abstract idea" because:
( 1) the Supreme Court's decision in Alice "narrowed the concept of
'abstract ideas' to those concepts which are "fundamental and
prevalent" and "concepts which have been in use for an
extensive period of time as "hedging risk or using a settlement
3 As recognized by the Federal Circuit in Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 716 (Fed. Cir. 2014), Bilski 's "machine-or-transformation"
(MoT) test can also provide a "'useful clue"' in the second step of the Alice
framework. See In re Bilski,3 545 F.3d 943, 954 (Fed. Cir. 2008) (en bane).
However, Appellants' method claim 1 and its corresponding system claim
21 are neither sufficiently "tied to a particular machine or apparatus" nor
involved in any type of transformation of any particular article for reasons
discussed infra.
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intermediary" [as outlined in claims of Bilski and Alice]
whereas the subject matter of Appellants' claims is a modem
concept outside the scope of what is an "abstract idea" and is
"far removed from the concepts of risk hedging, intermediated
settlements and certain methods of organizing human activities
and solves a problem unique to determining the greenness
and/or environment compliance of a public or private entity by
processing new stories, filings, new/social media and other
content available and quickly interpreting this content to assess
the environmental impact of that entity" (App. Br. 11-12);
(2) similar to "the claims at issue in Enfzsh and [McRO, Inc. v.
Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir.
2016)], the claimed invention provides a technological
improvement that is not directed towards an abstract idea. The
claimed method provides an improvement over the prior art
methods by at least identifying, associating, generating,
transmitting, transforming, calculating and revising results in
near real-time from numerous different sources comprising
large corpuses of data, such as social media sites or news
filings" (App. Br. 12); and
(3) similar to DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014), Appellants' "invention also solves a
problem unique to effectively processing and managing large
corpuses of electronic data from different sources and further
manipulating this data to calculate a score for an entity." (App.
Br. 15)
App. Br. 10-15.
Appellants' arguments are not persuasive. At the outset, we note
Appellants' characterizations of the Supreme Court's decision in Al ice and
the Federal Circuit's decisions in Enfzsh and McRO are incorrect. The
Supreme Court's decision in Alice is not limited to those "business method"
concepts that are "fundamental and long prevalent" or concepts that have
been in use for an extensive period of time, such as "the risk hedging claims
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of Bilski and the intermediate settlement concept at issue in Alice," as
Appellants argue. App. Br. 11-12. Rather, as recognized by the Examiner,
the Federal Circuit has identified numerous examples of "business method"
concepts as "abstract ideas" that are not fundamental or, long prevalent.
Ans. 5 (citing PTO's examples located at
https://www.uspto.gov/sites/default/files/documents/ieg-duly-2015-qrs.pdf).
Appellants' Specification is directed to "a system for automatically
processing or 'reading' news stories, filings, new/social media and other
content and for applying predictive models against the content to anticipate
behavior of stock price and other investment vehicles" "to provide a
sentiment-based solution that expands the scope of conventional tools to
include social media and online news." Spec. ,r 18; Abstract. Embodiments
of Appellants' Specification, such as depicted in Figures 3--4, describe
processing news/social media (e.g., documents, messages, other content)
(Fig. 3, step 302), applying a sentiment analysis to arrive at a sentiment
score (Fig. 3, step 304), applying a predictive model using the sentiment
score to arrive at a green score (Fig. 3, step 310), and generating a composite
index of a set of green scores (Fig. 3, step 312). Thus, we agree with the
Examiner that the claims are directed to an abstract idea of "calculating a
green score [ of an entity]" based on received data. Ans. 4.
All the steps recited in Appellants' claim 1, including: (a) identifying
information from sources, (b) generating an index, ( c) transmitting a signal,
( d) providing patterns, ( e) identifying second information, and ( f) revising
the index are abstract processes of collecting, storing, and analyzing
information of a specific content, e.g., news/media are directed to content
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regarding an entity for generating an index score associated with a set of
securities.
Information, as such, is intangible, and data analysis, comparisons,
and algorithms, by themselves, are abstract ideas. See, e.g., Microsoft Corp.
v. AT & T Corp., 550 U.S. 437,451 n.12 (2007); Alice, 134 S. Ct. at 2355;
Parker v. Flook, 437 U.S. 584, 589, 594--95 (1978) ("Reasoning that an
algorithm, or mathematical formula, is like a law of nature, Benson applied
the established rule that a law of nature cannot be the subject of a patent");
Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972). "[C]ollecting information
collection and analysis, including when limited to particular content (which
does not change its character as information)," and "analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more," are "within the realm of abstract ideas." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see also
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed.
Cir. 2015); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014); CyberSource, 654 F.3d at 1370. That is,
"[ w ]ithout additional limitations, a process that employs mathematical
algorithms to manipulate existing information to generate additional
information is not patent eligible." Digitech, 758 F.3d at 1349-50 ("Data in
its ethereal, non-physical form is simply information that does not fall under
any of the categories of eligible subject matter under section 101 ").
As also recognized by the Examiner (Ans. 6), "generating a composite
index for a set of securities" can also be performed mentally or by using a
pen and paper. See CyberSource, 654 F.3d at 1372-73 ("[A] method that
can be performed by human thought alone is merely an abstract idea and is
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not patent-eligible under§ 101."); see also In re Comiskey, 554 F.3d 967,
979 (Fed. Cir. 2009) ("[M]ental processes-or processes ofhmnan thinking-
standing alone are not patentable even if they have practical application.");
Gottschalk v. Benson, 409 U.S. at 67 ("Phenomena of nature ... , mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work" ( emphasis added)).
Additionally, mental processes remain unpatentable even when automated to
reduce the burden on the user of what could be done mentally with pen and
paper. Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 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."); CyberSource, 654 F.3d at
1375 ("That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson."). Contrary to Appellants' arguments, all the steps
recited in Appellants' claim 1, including: (a) identifying information from
sources, (b) generating an index, ( c) transmitting a signal, ( d) providing
patterns, ( e) identifying second information, and ( f) revising the index are
nothing more than collecting, storing, and analyzing information of a
specific content that can also be performed mentally or by using pen and
paper. Ans. 4.
Separately, and contrary to Appellants' arguments, Appellants' claims
1 and 21 do not improve the performance of a computer or solve a problem
specific to computers or computer networks. Appellants' Specification and
arguments do not demonstrate the claims "improve the way a computer
stores and retrieves data in memory," as the claims in Enfish did via a "self-
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referential table for a computer database." See Enfzsh, 822 F.3d at 1336,
1339.
In fact, neither the steps recited in Appellants' claims 1 and 21, nor
the rest of Appellants' Specification supply any description or explanation as
to how these data processing steps are intended to provide: (1) a "solution ..
. necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks," as explained by the
Federal Circuit in DDR 773 F.3d at 1257; (2) "a specific improvement to the
way computers operate," as explained in Enfish, 822 F.3d at 1336; or (3) an
"unconventional technological solution ... to a technological problem" that
"improve[ s] the performance of the system itself," as explained in Amdocs
(Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1302 (Fed. Cir. 2016).
Accordingly, we agree with the Examiner that claims 1-38 are
directed to an abstract idea of "generating a composite index for a set of
securities."
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue the claim
elements, taken as a whole, amount to significantly more than an abstract
idea because: (1) "subject matter [that] provides something that cannot
possibly be done on pen and paper ... may be patentable subject matter,"
citing California Institute of Technology v. Hughes Communications, Inc.,
59 F. Supp. 3d 974 (C.D. Cal. 2014); (2) the claimed invention, i.e.,
"providing a set of risk-indicating patterns on a computing device" is a
specific data structure that "is not a general purpose computer and is not
known in the art"; and (3) the "Examiner has not considered each and every
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claim element of all the claims both independently and as an ordered
combination." App. Br. 15-19.
We disagree. At the outset, we note Appellants' reliance on
California Institute of Technology is misplaced because district court
decisions are not binding legal authority on the Board. Further, the district
court's holding that claims directed to "methods of error correction in data
transmission" were not directed to an abstract idea is not analogous to
Appellants' claims being directed to "generating a composite index for a set
of securities" based on received data.
According to the Supreme Court in Alice, the second step is to "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 (quoting Mayo, 566 U.S. at 72-73). The Federal Circuit cases on point
include (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014) and (2) Amdocs, 841 F.3d 1288.
In DDR and Amdocs, the Federal Circuit opted to bypass Alice step 1
in favor of step 2. In particular, the Federal Circuit found DDR 's claims
contain an "inventive concept" under Alice step 2 because DDR 's claims
( 1) do not merely recite "the performance of some business practice known
from the pre-Internet world," such as previously disclosed in Bilski and
Alice, but instead (2) provide a technical solution to a technical problem
unique to the Internet, i.e., a "solution ... necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." DDR, 773 F.3d at 1257. Likewise, the Federal
Circuit also found Amdocs ' claims contain a sufficient "inventive concept"
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because like DDR, Amdocs' claims "entail[] an unconventional
technological solution ( enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases)" and "improve the performance of the system itself."
Amdocs, 841 F.3d at 1300, 1302.
Under current Federal Circuit precedent, an "inventive concept" under
Alice step 2 can be established by showing, for example, that the patent
claims:
(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem
specifically arising in the realm of computer networks" (see
DDR, 773 F.3d at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of
a filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016); or
(3) "entail[] an unconventional solution ([ e.g.,]
enhancing data in a distributed fashion) to a technological
problem ([ e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the
system itself' (see Amdocs, 841 F.3d at 1300, 1302).
In the present case, however, we find no element or combination of
elements recited in Appellants' claims 1 and 21 that contains any "inventive
concept" or adds anything "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 134 S. Ct. at 2357. As
discussed supra, we are not persuaded the added computer elements (such as
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a processor, memory, and various software module) can transform the
abstract idea into a patent-eligible invention. As our reviewing court has
observed, "after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible." DDR, 773 F.3d at 1256 (citing Alice, 134 S. Ct. at 2358).
Additional Argument
Appellants argue that the claims do not seek to tie up or preempt an
entire field, i.e., an abstract idea of "generating a composite index using
social media sources data and sentiment analysis." App. Br. 14. However,
this argument is not persuasive because, although "preemption may signal
patent ineligible subject matter, the absence of complete preemption does
not demonstrate patent eligibility." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). "Where a patent's claims are
deemed only to disclose patent ineligible subject matter" under the
Alice/Mayo framework, "preemption concerns are fully addressed and made
moot." Id.
Because Appellants' claims 1 and 21 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
claims 1-38 under 35 U.S.C. § 101.
35 USC§ 103(a): Claims 1-38
With respect to claims 1 and 21, Appellants contend "none of the
cited references [including Ouimet, Hoogs, and Peitersen] teach, disclose, or
suggest a first signal comprising a real-time stream and a second signal
comprising a real-time stream as claimed." App. Br. 25. Particularly,
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Appellants acknowledge Ouimet teaches a user's ability to select, update, or
revise information to be included in a portfolio, but argue that "Ouimet does
not transmit any information in real-time as claimed." App. Br. 25-26
(citing Ouimet ,r,r 34--35, 54, 57). Similarly, Appellants acknowledge Hoogs
also teaches a user's ability to update the business risk analysis, including
weights of all events used to calculate the overall risk of the scenario, but
argue "Hoogs also does not teach a real-time stream as claimed." App. Br.
26 ( citing Hoo gs ,r 50). Likewise, Appellants argue "Peitersen does not
teach transmitting a signal comprising a real-time stream as claimed."
App. Br. 26.
Appellants' arguments are not persuasive. Rather, we find the
Examiner has provided a comprehensive response to Appellants' arguments
supported by a preponderance of evidence. As such, we adopt the
Examiner's findings and explanations provided therein. Ans. 13-14. For
example, Peitersen's express reference to "real-time" in the context of a
database 20, shown in Figure 3, is sufficient to meet Appellants' claimed
"real-time" processing of data. Ans. 13-14. Moreover, and contrary to
Appellants' arguments, Ouimet also teaches (1) a user's ability to engage in
"an interactive, web-based merchant platform [ or web-based, self-service
platform] for investment services where the user can interact with many
various information service providers" (Ouimet ,r,r 35, 42); and (2) online
services where information can be provided automatically or manually-
initiated by a user, via the platform (Ouimet ,r,r 50, 56). Ouimet's disclosure
suggests to an ordinarily skilled artisan that all the steps of data gathering
and processing are handled in "real-time" or "near real-time."
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For these reasons, we sustain the Examiner's obviousness rejection of
independent claims 1 and 21, and their respective dependent claims 2---6, 12-
14, 17, 19-21, 23-26, 29-32, 35, 37, and 38, which Appellants do not argue
separately.
With respect to dependent claims 10 and 11, Appellants argue Ouimet
does not teach "applying a predictive model as claimed." App. Br. 26-27.
We disagree. As recognized by the Examiner, Ouimet teaches "correlative
behavior between assets using a model predicted value" and adjusting "a
model predicted value." Ans. 14 (citing Ouimet ,r,r 67-68). Moreover,
Ouimet's disclosure is predicated upon providing various models (whether
online Internet or otherwise) to a user (investor) to manage and direct his or
her portfolio and investment activities. Ouimet ,r,r 33-34. As such, we also
sustain the Examiner's obviousness rejection of claims 10 and 11.
For the same reasons discussed relative to claims 1 and 21, we also do
not sustain the Examiner's remaining obviousness rejections, which include:
(1) claims 7-9, 22, 27, and 28 over Ouimet, Peitersen, Hoogs, and
Lawrence; (2) claims 15, 16, 33, and 34 over Ouimet, Peitersen, Hoogs, and
Wennberg; and (3) claims 18 and 36 over Ouimet, Peitersen, Hoogs, and
Beldock, which Appellants do not argue separately.
DECISION
The Examiner's rejection of claims 1 and 21 under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement, is reversed.
The Examiner's rejection of claims 1 and 21 under 35 U.S.C. § 112,
second paragraph as being indefinite, is reversed.
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The Examiner's rejection of claims 1-38 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 1-38 under 35 U.S.C § 103(a) is
affirmed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1-38. 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).
AFFIRMED
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