Ex Parte Boswell et al

Patent Trial and Appeal Board

Jun 29, 2018

10028284 (P.T.A.B. Jun. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/028,284 12/28/2001
21967 7590 07/02/2018
Hunton Andrews Kurth LLP
Intellectual Property Department
2200 Pennsylvania Avenue, N.W.
Washington, DC 20037
FIRST NAMED INVENTOR
Jonathan Boswell
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.
52493.000163 2969
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
MAILDATE DELIVERY MODE
07/02/2018 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
Ex parte JONATHAN BOSWELL, GOVIND NARA YAN,
DARREN GRADY, SHAWN PARKS,
OSCAR TENGTIO, and TROY THOMPSON
Appeal2017-002799
Application 10/028,284 1
Technology Center 3600
Before ANTON W. PETTING, JOSEPH A. FISCHETTI, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1--45. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 According to the Appellants, "[t]he real party in interest of the present
application is Genworth Holdings, Inc. and its parents and subsidiary
companies." Appeal Br. 1.
Appeal2017-002799
Application 10/028,284
ILLUSTRATIVE CLAIM
1. A computer implemented method that analyzes a
financial services product pricing process using a waterfall tool
that graphically represents a plurality of predetermined price
metrics and drill down metrics to manage revenue leaks and
enhance price performance, the computer implemented method
compnsmg:
receiving, via an electronic input, data from a plurality of
sources in a computer system;
generating, via the waterfall tool comprising a computer
processor, a waterfall that electronically displays revenues
cascading down to a pocket price to illustrate revenue leaks, the
step of generating the waterfall including the steps of:
measuring, using the computer processor,
predetermined pricing metrics using the received data,
determining, using the computer processor, a
present value of the predetermined pricing metrics, and
graphing, using the computer processor, the
present value of each of the predetermined pricing
metrics;
calculating, using the computer processor based on the
generated waterfall, a differential between the present value of
the predetermined pricing metrics, at least a plurality of
differentials being determined,
identifying, using the computer processor, each of the
plurality of differentials as representing a respective revenue
leak, each of the plurality of differentials associated with at
least one price structure element,
comparing, using the computer processor, each of the
plurality of differentials to the at least one known price
structure element,
determining, using the computer processor, that a
corresponding trigger is attained based on the comparing, and
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Application 10/028,284
electronically outputting, using an interactive display, the
results of the comparing and further outputting a plurality of
buckets illustrating one or more revenue leaks, and
the step of measuring the predetermined pricing metrics
includes measuring at least one selected from the group
comprising a plurality of incentives, a plurality of commissions,
a plurality of fees, an underwriting gap and a market gap.
REJECTION
Claims 1--45 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Issues of subject-matter eligibility are analyzed according to the
framework delineated by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS
Bank International, 134 S. Ct. 2347, 2355 (2014)-first, determining
whether the claim is directed to judicially excepted subject matter (such as a
so-called "abstract idea") and, if so, second, determining whether there are
any "additional elements" recited in the claim that (either individually or as
an "ordered combination") amount to "significantly more" than the
identified judicially excepted subject matter.
In this case, initially, Final Office Action (page 3) states that the
claims are directed to the abstract idea of "the organization and comparison
of data." However, the Examiner's Answer makes a substantial refinement
to the abstract idea definition, stating:
Examiner notes that the claims 1--45 are directed to the
abstract idea of analyzing a financial services product pricing
process using a waterfall tool that graphically represents a
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plurality of predetermined price metrics and drill down
metrics to manage revenue leaks and enhance price
performance. The concept claimed in these claims is simply
viewed as organization and comparison of data and displaying
results of comparison showing revenue leaks which can be
performed mentally and is an idea of itself.
Answer 2-3 (emphasis added). Further, under the second part of the Alice
framework, the Examiner states that the claims lack any elements -
whether regarded individually, or as an ordered combination thereof-that
would constitute "significantly more" than this refined description of the
identified abstract idea. See id. at 3--4. Accordingly, we will address only
the Appellants' arguments directed to the determinations made by the
Examiner in the Examiner's Answer.
With regard to the first Alice step, the Appellants do not dispute the
propriety of the Examiner's refined definition of the abstract idea. See
Reply Br. 2-5. Instead, the Appellants focus entirely on the second Alice
step, arguing: "Contrary to the Examiner's assertion, the claims do include
additional elements that are sufficient to amount to significantly more than
the judicial exception." Id. at 2. "In the present case," according to the
Appellants, "the ordered combination of the claim elements results in
significantly more than an abstract idea." Id. at 3. "For instance," the
Appellants contend,
independent claim 24 is directed to "waterfall tool compris[ing]
a computer processor coupled to the database, the electronic
input, and the interactive display, where the computer processor
is programmed to: calculate, based on the generated waterfall,
a differential between the present value of the predetermined
pricing metrics, at least a plurality of differentials being
determined, identify each of the plurality of differentials as
representing a respective revenue leak, each of the plurality of
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differentials associated with at least one price structure element,
compare each of the plurality of differentials to the at least one
known price structure element, determine that a corresponding
trigger is attained based on the comparing, and electronically
output, via the interactive display, the results of the comparing
and further outputting a plurality of buckets illustrating one or
more revenue leaks, wherein the measuring portion measures
each of a plurality of incentives, a plurality of commissions, a
plurality of fees, an underwriting gap and a market gap."
Independent claim 1 recites similar elements. These
meaningful limitations are significantly more than just
"organization and comparison of data and displaying results of
comparison showing revenue leaks," as alleged by the
Examiner's Answer.
Id. (underlining omitted).
The Appellants (id. at 5) refer to the pronouncement of the Federal
Circuit, in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016), to the effect that "[ s ]oftware can make non-abstract improvements to
computer technology just as hardware improvements can, and sometimes the
improvements can be accomplished through either route." Thus, the
Appellants appear to regard the software-driven representational techniques,
set forth in the claims - e.g., the "waterfall" representation and its assorted
recited features - as potentially engendering sufficient substance to
establish patent-eligibility under the second Alice step of searching for
elements (individually or in combination) that would amount to
"significantly more" than an ineligible concept. See Alice, 134 S. Ct. at
2355. Indeed, in Electric Power Group, LLC v. Alstom SA, 830 F.3d 1350,
1354--55 (Fed. Cir. 2016), the Federal Circuit pointed out that "identifying a
particular tool for presentation" of collected and analyzed information might
be sufficient to render a claim patent-eligible, and that the earlier decision of
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DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014), involved claims providing "an arguably inventive device or technique
for displaying information," under Alice's second step. After all, a particular
technique for the pictorial representation of information can potentially help
reveal what might otherwise remain hidden in the data themselves. See
Thomas L. Hankins, A "Large and Graceful Sinuosity": John Herschel's
Graphical Method, 97 Isis 605, 633 (2006); Edward R. Tufte, The Visual
Display of Quantitative Information (2d ed. 2001 ).
Yet, the "waterfall tool" itself, as well as its critical features set forth
in the claims, are encompassed by the Examiner's unchallenged
identification of the ineligible abstract idea: "analyzing a financial services
product pricing process using a waterfall tool that graphically represents a
plurality of predetermined price metrics and drill down metrics to manage
revenue leaks and enhance price performance." Answer 2-3. Insofar as the
Appellants refer to features that might be considered under the second part
of the Alice analysis- i.e., "a measuring portion that measures a plurality
of predetermined pricing metrics using the received data," "a determining
portion that determines a present value of each of the predetermined pricing
metrics," and "a graphing portion that graphs a present value of each of the
predetermined pricing metrics" (Reply Br. 5 (underlining omitted))-they
have the character of post-solution activities that cannot confer patent-
eligibility. See Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) ("[T]he
prohibition against patenting abstract ideas 'cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment' or adding 'insignificant postsolution activity"') (quoting
Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
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Accordingly, the Appellants' arguments are not persuasive of error in
the rejection. Therefore, we sustain the rejection of claims 1--45 under
35 U.S.C. § 101.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1--45 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED
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