Ex Parte Bonner et al

Patent Trial and Appeal Board

Jun 18, 2018

13327972 (P.T.A.B. Jun. 18, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/327,972 12/16/2011
90879 7590 06/20/2018
Thomson Reuters c/o Intellectual Property
3 Times Square
New York, NY 10036
FIRST NAMED INVENTOR
John F. Bonner
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.
TRGR(I&A)_Ol4_US1 6095
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
06/20/2018 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):
IPDocketing@thomsonreuters.com
IPDocketing@clarivate.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN F. BONNER, EVANT. RILES,
GEORGE P. BONNE, IAN ERICKSON,
and ANDREW NEBLETT
Appeal2017-003754
Application 13/327 ,972
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1, 3-10, 12-15, 17-19, 22, and 24, which are all of
the claims pending in this application. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
1 According to Appellants, the real party in interest is Thomson Reuters
Global Resources. App. Br. 2.
2 Claims 2, 11, 16, 20, 21, and 23 have been cancelled. Final Act. 2.
Appeal2017-003754
Application 13/327 ,972
INVENTION
Appellants' application relates to predicting initial public offering
opportunities. Abstract. Claim 1 reads as follows:
1. A computer-implemented method for identifying a
marketing opportunity comprising:
receiving a set of search criteria for identifying a set of
privately-held entities;
identifying the set of privately held entities in response to
electronically receiving the set of search criteria;
executing an activity module for computing an activity
value computed using one or more data items maintained in at
least one of an inventor data store, a deals data store, a market
data store and a company data store in order to identify a
number of entities having initiated an initial public offering
(IPO) over a first time interval in a same industry as each
privately-held entity of the set of privately-held entities as
compared to the total number of privately-held entities within
the set of privately-held entities, wherein the inventor data
store, the deals data store, the market data store and the
company data store are each a composite from one or more
disparate sources;
executing a prediction module for computing a set of
prediction scores based on a funding value, a profitability value,
a growth value, a market level value, and the activity value
associated with each privately-held entity of the set of
privately-held entities, the growth value being based on a sales
growth ratio associated with each of the privately-held entities;
executing the prediction module for associating the set of
prediction scores with the set of privately-held entities to
generate the associated set of scores and entities, the set of
prediction scores and the set of privately-held entities having a
one to one relationship within the associated set of scores and
entities, wherein each predictive score of the associated set of
scores and entities indicates a likelihood of initiating an (IPO);
and
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Application 13/327 ,972
transmitting to the access device the associated set of
scores and entities for display in a graphical user interface.
REJECTION
Claims 1, 3-10, 12-15, 17-19, 22, and 24 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to a judicial
exception without significantly more. Final Act. 2.
ANALYSIS
We have reviewed the rejection of claims 1, 3-10, 12-15, 17-19, 22,
and 24 in light of Appellants' arguments that the Examiner erred. We have
considered in this decision only those arguments Appellants actually raised
in the Briefs. Any other arguments Appellants could have made, but chose
not to make, in the Briefs are waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
Appellants' arguments are not persuasive of error. We agree with and
adopt as our own the Examiner's findings of facts and conclusions as set
forth in the Answer (Ans. 2-5) and in the Action from which this appeal was
taken (Final Act. 4--7). We provide the following explanation for emphasis.
Rejection of Claims 1, 3-10, 12-15, 17-19, 22, and 24 under§ 101
Appellants contend the Examiner erred in rejecting the pending claims
as directed to patent-ineligible subject matter. See App. Br. 8. Appellants
argue claims 1, 3-10, 12-15, 17-19, 22, and 24 as a group (id. at 7), and we
choose claim 1 as representative of the group. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355
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(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66 (2012)). 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. (citing Mayo, 566 U.S. at 77-78). 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." Id.
(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.
(brackets in original) (quoting Mayo, 566 U.S. at 72-73). The prohibition
against patenting an abstract idea "'cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment' or
adding 'insignificant postsolution activity."' Bilski v. Kappas, 561 U.S. 593,
610-11 (2010) (citation omitted).
Turning to the first step of the Alice inquiry, we agree with the
Examiner that claim 1 is directed to the abstract idea of computing a score
and comparing new and stored information, which can be performed
mentally and is "an idea of itself." See Final Act. 2 ( citing SmartGene, Inc.
v. Adv. Bio. Labs., SA, 555 Fed. App'x 950 (Fed. Cir. 2014)) (non-
precedential). In SmartGene, the Federal Circuit concluded the claims were
ineligible because they did "no more than call on a 'computing device,' with
basic functionality for comparing stored and input data and rules, to do what
doctors do routinely." SmartGene, 555 Fed. App'x at 954.
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Appellants argue the Examiner's analysis "oversimplified the claim"
by ignoring the "substantive transformative steps undertaken in determining
and subsequently transmitting a set of scores for predicting which privately
held company will go public." App. Br. 8-9. Appellants specifically point
to "limitations of techniques for analyzing the likelihood of IPO
opportunities," such as computing an activity value, computing a set of
prediction scores, and generating an associated set of prediction scores and
entities. Id. at 9-10. Appellants analogize those limitations to the "rules" in
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
Cir. 2016), arguing the claim limitations improve "the existing technological
process by allowing the determination of the likelihood of IPO
opportunities." Reply Br. 6.
We are not persuaded of Examiner error. In McRO, the claimed
process used a combined order of specific rules that rendered information in
a specific format that was applied to create a sequence of synchronized,
animated characters. McRO, 837 F.3d at 1315. Notably, the recited process
automatically animated characters using particular information and
techniques-an improvement over manual three-dimensional animation
techniques that was not directed to an abstract idea. Id. at 1316.
Unlike in McRO, the recited "prediction module" is not a rule-based
improvement of a technological process. The McRO court determined that
McRO' s claim was not directed to an abstract idea because it "uses the
limited rules in a process specifically designed to achieve an improved
technological result" over "existing, manual 3-D animation techniques."
McRO, 837 F.3d at 1316.
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In contrast, Appellants' claims address identifying a business and
marketing opportunity by executing a predictive module to generate scores
and associations. See Spec. 2. Additionally, the claims in McRO were
drawn to improvements in the operation of a computer at a task, rather than
applying a computer system to perform generic data manipulation steps, as
in Appellants' claim 1. See McRO, 837 F.3d at 1314.
For these reasons, we agree with the Examiner that the claims are
directed to the abstract concept of computing a score and comparing new
and stored information, which is similar to what courts have found abstract
in SmartGene and Electric Power Group, LLC v. Alstom Ltd., 830 F.3d
1350, 1351-52 (Fed. Cir. 2016).
Turning to the second step of the Alice inquiry, we find nothing in
claim 1 that adds anything "significantly more" to transform the abstract
concept of computing a score and comparing new and stored information
into patentable subject matter. Alice Corp., 134 S. Ct. at 2357.
We are not persuaded by Appellants' argument that claim 1 is patent-
eligible due to the recitations of specific computer components. App. Br. 10
(citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir.
2014)). Appellants' Specification describes the recited computer
components in a generic manner. See Spec. 4---6, 1 7. Thus, we discern no
error in the Examiner's conclusion that the computer is simply a tool (see
Ans. 5), or that the prediction module is software stored on a server
comprising of a processor, random access memory, input/output and non-
volatile memory. Final Act. 3. Appellants also have not identified
improvements to the functioning of the computer itself, or meaningful
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limitations that do more than generally link the use of the abstract idea to a
particular technological environment.
Appellants also rely on Bascom Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), arguing that
a specific, discrete implementation of the alleged abstract idea
(i.e., collecting data, analyzing data using a prediction module
and displaying results), the particular arrangement of the
claimed elements is a technical improvement to the traditional
analysis by individuals in industries and provides for a more
accurate computed method as opposed to the traditional
instinctive methods.
Reply Br. 6-8.
In Bascom, the Federal Circuit held "[t]he inventive concept described
and claimed in the '606 patent is the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user." Bascom, 827 F.3d at 1350. In
determining this feature to be an inventive concept, the Federal Circuit
explained that the remote location of a filtering tool having customizable
user-specific filtering features provides the filtering tool both the benefits of
a filter on a local computer and the benefits of a filter on the ISP server and
is a technical improvement over prior art ways of filtering content. Id. at
1350-51. Notably, the Federal Circuit specifically determined that "the
claims may be read to 'improve[] an existing technological process."' Id. at
1351 (citing Alice, 134 S. Ct. at 2358). The Federal Circuit emphasized that
the claims of the '606 patent are a technical solution that improves computer
technology. See id.
In considering the instant claims individually and as an ordered
combination, we fail to see how the specific steps recited in the claims
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improve the functioning of a computer or some other technology. Instead,
we conclude the steps of the claimed method are directed to generating a set
of predictive scores and associations, in which the steps may be performed
by any generic computer with appropriate programming. App. Br. 9-10.
However, "the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S.
Ct. at 2358.
Consequently, the claims do not recite something apart from the
generic computer implementation of the abstract idea of computing a score
and comparing new and stored information, which is not an inventive
concept sufficient to confer patent-eligibility. Id. at 10-11.
For these reasons, we are not persuaded the Examiner erred in
concluding the subject matter of claim 1 is judicially-excepted from
patentability.
Accordingly, we sustain the Examiner's§ 101 rejection of
representative, independent claim 1, as well as the Examiner's§ 101
rejection of grouped claims 3-10, 12-15, 17-19, 22, and 24, not argued
separately.
DECISION
We affirm the decision of the Examiner rejecting claims 1, 3-10,
12-15, 17-19, 22, and 24.
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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