Ex Parte Brittingham et al

Patent Trial and Appeal Board

Apr 14, 2017

12861658 (P.T.A.B. Apr. 14, 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.
12/861,658 08/23/2010 Brian S. Brittingham GOLDl 1-00298 2460
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
04/18/2017 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):
j ohn. maxin @ gs. com
patents @ munckwilson. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN S. BRITTINGHAM and THOMAS JESSOP
Appeal 2015-001605
Application 12/861,658
Technology Center 3600
Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’
decision rejecting claims 37—56. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed July 9, 2014), Reply Brief (“Reply Br.,” filed Nov. 24,
2014), and Specification (“Spec.,” filed Aug. 23, 2010), and to the
Examiner’s Answer (“Ans.,” mailed Sept. 29, 2014) and Non-Final Action
(“Non-Final Act.,” mailed Jan. 10, 2014).
2 According to the Appellants, the real party in interest is “Goldman, Sachs
& Co. of New York, NY.” Appeal Br. 2.
Appeal 2015-001605
Application 12/861,658
STATEMENT OF THE CASE
The Appellants’ invention relates generally to “monitoring financial
information and executing financial transactions,” and more specifically to
“improvements in interface apparatus, methods, and articles of manufacture,
for monitoring financial information and executing financial transactions
within a networked environment.” Spec. 1.
Claims 37, 49, and 53 are the independent claims on appeal. Claim 37
(Appeal Br. 18 (Claims App.)) is illustrative of the subject matter on appeal,
and is reproduced below (with bracketing added for reference):
37. A processor-implemented method for providing a
customized interface, comprising:
[(a)] receiving via a processor content data from a
plurality of financial information content sources;
[(b)] receiving via the processor at least one interface
customization parameter;
[(c)] receiving via the processor at least one user-selected
interface panel from a plurality of non-customized interface
panels;
[(d)] pre-selecting, in accordance with the received
customization parameter, at least one interface panel from the
plurality of non-customized interface panels;
[(e)] constructing via the processor customized interface
panels by providing each of the received and pre-selected
interface panels with financial information content data
received from at least one financial information content source
selected from the plurality of financial information content
sources in accordance with the received customization
parameter;
[(f)] monitoring how long the financial information
content data has been provided to the received and pre-selected
interface panels; and
2
Appeal 2015-001605
Application 12/861,658
[(g)] generating via the processor a customized graphical
user interface from the constructed customized interface panels
in accordance with the received customization parameter.
REJECTIONS3
I. Claims 37—56 stand rejected under 35U.S.C. § 112, first
paragraph for failing to comply with the written description requirement.
Non-Final Act. 7.
II. Claims 37—56 are rejected under 35U.S.C. § 112, second
paragraph, as being indefinite. Id. at 10.
III. Claims 37—56 stand rejected under 35 U.S.C. § 101 on the
ground of nonstatutory obviousness-type double patenting as being
unpatentable over claims 1—20 of US 7,904,358 B2. Id. at 12.
IV. Claims 37—56 stand rejected under U.S.C. § 103(a) as being
unpatentable over Risberg (US 5,339,392, iss. Aug. 16, 1994) in view of
Official Notice, as evidenced by May (US 6,996,540 Bl, iss. Feb. 7, 2006).
Id. at 17.
V. Claims 37—56 stand rejected under 35 U.S.C. § 101 for being
directed to non-statutory subject matter. Ans. 21.
ANALYSIS
Rejection I— Written Description - § 112
The Examiner rejects independent claims 37, 49, and 53 (and their
dependents) because the Specification does not provide a written description
disclosure to support the claimed limitation of a processor to issue
3 The objection to the Specification (Non-Final Act. 3) is not addressed
because it may be reviewed only by way of petition to the Director. See
37 C.F.R. § 1.181; MPEP § 2163.06(11).
3
Appeal 2015-001605
Application 12/861,658
instructions to perform the steps of claim 37 (and similarly recited in
claims 49 and 53). Non-Final Act. 7—9. Specifically, the Examiner finds
that the Specification “does not describe in detail the apparatus components
or the system components that perform the functions of receiving,
preselecting, constructing and generating that are recited in the claimed
invention.” Ans. 25. The Examiner also finds that although the
Specification “mentions platforms on which the embodiments of the
invention can be implemented,” the Specification does not describe the
structure that performs the functions of the claims, and “[t]he broad
description about the platforms on which the embodiments of the invention
can be implemented fails to satisfy the written description requirement.”
Non-Final Act. 8—9. The Examiner further finds that the Specification does
not provide adequate support for the monitoring step (f). Id.
We agree with the Appellants that the Specification provides adequate
support for the claims. See Appeal Br. 7—10.
To satisfy the written description requirement, the specification must
describe the invention in sufficient detail so “that one skilled in the art can
clearly conclude that the inventor invented the claimed invention as of the
filing date sought,” (In re Alonso, 545 F.3d 1015, 1019 (Fed. Cir. 2008)
(quotingLockwood v. Am. Airlines, Inc., 107 F.3d 1565, 1572 (Fed. Cir.
1997)), i.e., “whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date” (Ariad
4
Appeal 2015-001605
Application 12/861,658
Pharms. Inc. v. EliLilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (citing
Vas—Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed.Cir.1991))).
Based on our review of the Specification, we find that the
Specification discusses the servers, applications, and interface such as to
reasonably convey to one of skill in the art that the Appellants had
possession of the claimed invention to satisfy the written description
requirement.
The Specification, including the originally filed claims, does not
discuss or mention the terms “processor” or “medium,” but does provide for
servers and applications to perform the functions of the claim. The
Specification provides that: (1) “[a] graphic user interface provides an
interface to a local or networked environment [and] permits a user to
graphically review data, select depicted objects and manipulate applications
corresponding to those objects” (Spec. 2); (2) “applications ... are executed
on the server or client side” {id. at 5); (3) web page panels comprise “a
Website, which is constructed, via a Web server, from an application server”
(id.); (4) panels are constructed in an email interface, “via an email server,
from an application server” (id. at 6); (5) an Alert server provides alerts (id.
at 7); and (6) embodiments of the invention can be implemented in an
operating system platform such as Microsoft Windows® (id.).
The Specification further provides that data sources that “may be
deconstructed or mixed into various feeds” at the application server feed
data for the panels. Id. at 8. The mixing into various feeds is accomplished
by tools, i.e., applications, customized to a particular user. Id. Figure 2
shows an interface wherein customizing selections can be made (see also id.
at 8—9), and Figure 5 shows an interface to an editor to select layout and
5
Appeal 2015-001605
Application 12/861,658
content (see also id. at 10). An editor can choose an appropriate panel to
display, and the interface “keeps track of [the] time the articles have been
published,” i.e., monitors. Id. The customization parameters can take effect
when a client accesses the web page. Id.at 12.
Thus, we are persuaded of error in the Examiner’s rejection, and we
do not sustain the Examiner’s rejection of claims 37—56 under 35 U.S.C.
§112, first paragraph.
Rejection II—Indefiniteness - § 112
Claims 37—56
The Examiner rejects independent claims 37, 49, and 53 (and their
dependents) as “being indefinite for failing to particularly point out and
distinctly claim the subject matter which the . . . applicant regards as the
invention” because “[i]t is not clear as to what is the relationship between
this limitation [i.e., ‘monitoring how long the financial information content
data has been provided to the received and pre-selected interface panels’]
and the limitation of ‘generating via the processor a customized graphical
user interface from the constructed customized interface panels in
accordance with the received customization parameter’.” Non-Final Act. 10.
Specifically, the Examiner finds that it is not clear whether the generating
step (g) depends on the monitoring step (f). Id.', see also Ans. 28.
The Appellants contend that the rejection is in error because the
relationship is clear from the claim and refers to Specification, at page 10.
Appeal Br. 10-11. The Appellants point out that a specific order to the steps
of the method should not be read into the claims. Id. at 11.
6
Appeal 2015-001605
Application 12/861,658
The Specification, at page 10, provides that an editor can choose an
appropriate panel to be displayed, and the interface “keeps track of [the]
time the articles have been published.” The Specification does not describe
that the keeping track of time, i.e., monitoring, relates to or affects the
generating of the interface in accordance with the customization parameter,
as recited in limitation (g), or that the customization parameter is affected by
the monitoring.
We find that the claims are not indefinite because one of ordinary skill
in the art would clearly understand that the claims recite two separate
monitoring and generating steps (f) and (g) that are not dependent on each
other.
Thus, we are persuaded of error in the Examiner’s rejection, and we
do not sustain the Examiner’s rejection of claims 37—56 under 35 U.S.C.
§112, second paragraph.
Claim 42
The Examiner further finds claim 42 indefinite because “[i]t is not
clear if the [aggregated] content data in [claim 42] is the same as the
‘financial information content data’ recited in claim 37.” Non-Final Act. 10.
The Examiner finds “[i]n view of this ambiguity, the scope of the claim is
unclear.” Ans. 28.
Claim 42 recites configuring an interactive alert interface with
multiple tabbed interfaces, at least one of which “displays content data
aggregated from other of the tabbed interfaces.” Appeal Br. 19. We find
that the claim is not indefinite because one of ordinary skill in the art would
understand from a reading of the claim that the term “content data” refers to
7
Appeal 2015-001605
Application 12/861,658
the financial information content data of claim 37, the only content data
recited.
Thus, we are persuaded of error in the Examiner’s rejection, and we
do not sustain the Examiner’s rejection of claim 42 under 35 U.S.C. § 112,
second paragraph.
Rejection III—Double Patenting - § 101
The Appellants provide no arguments against the Examiner’s rejection
of claims 37—56 under 35 U.S.C. § 101 on the basis of non-statutory obvious
type double patenting. See Appeal Br. 12.
Thus, we summarily sustain this rejection of claims 37—56 under
35 U.S.C. § 101.
Rejection IV— Obviousness - § 103
Claim 37 recites, in relevant part, “pre-selecting, in accordance with
the received customized parameter, at least one interface panel from the
plurality of non-customized interface panels,” i.e., limitation (d).
The Examiner relies particularly on Risberg’s Abstract, column 5,
lines 19—37, and column 7, line 35 through column 10, line 28 for disclosing
this limitation. Ans. 29; Non-Final Act. 17. Specifically, the Examiner
finds that Risberg’s sheets correspond to the claimed panels and that
Risberg’s menu that allows the user to select a sheet to view from an index
of sheets “implies pre-selecting, in accordance with the received
customization parameter, at least one interface panel from the plurality of
non-customized interface panels.” Ans. 29—30.
8
Appeal 2015-001605
Application 12/861,658
We are persuaded by the Appellants’ arguments that the Examiner’s
findings regarding this limitation are inadequately supported. See Appeal
Br. 13—14. Risberg discloses a program with tools with which a user creates
a customized document that comprises “one or more sheets each of which is
composed in a custom manner by the user.” Risberg, Abstract. The user can
select the data to be displayed, the format and style for displaying the data,
the look of the documents with fonts and colors, and alarm limits. Id.
A menu allows the user to display an index of sheets within the document, to
select the sheet to view, and “to control the appearance of the display and the
display objects associated with the Active Objects programmed by the user
into a sheet.” Id. at col. 7,11. 48—54.
The Examiner does not adequately explain how, in Risberg, the user’s
selection of a sheet from an index of a plurality of user-customized sheets
discloses pre-selecting a sheet from a plurality of non-customized sheets.
Rather, the cited portions of Risberg disclose a selection from customized
sheets. The Examiner’s finding that it is “implie[d]” that one of the sheets is
non-customized (see Ans. 30) is not supported. Thus, we agree with the
Appellants that the Examiner’s finding that Risberg discloses limitation (d)
of pre-selecting a panel from a plurality of non-customized panel is not
adequately supported.
Based on the foregoing, we are persuaded of error on the part of the
Examiner, and we do not sustain the Examiner’s rejection of independent
claim 37 and dependent claims 38-48 under § 103.
The Appellants provide no arguments for independent claims 49 and
53, but appear to group the independent claims together. See Appeal Br. 13.
Each of independent claims 49 and 53 recites the pre-selecting limitation (d)
9
Appeal 2015-001605
Application 12/861,658
of claim 37 (see id. 20, 21 (Claims App.)), and the Examiner relies on the
same findings for all three independent claims (see Non-Final Act. 17).
Thus, for the same reason we do not sustain the rejection of independent
claim 37, we also do not sustain the rejection of independent claims 49 and
53 and dependent claims 50-52 and 54—56.
Rejection V—Patent-Ineligible Subject Matter - § 101
The Appellants argue the claims as a group. See Reply Br. 1—3. We
select claim 37 as representative. Claims 38—56 stand or fall with claim 37.
See 37 C.F.R. § 41.37(c)(l)(iv).
Under 35 U.S.C. § 101, a patent may be obtained for “any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof.” The Supreme Court has “long held that
this provision contains an important implicit exception: Faws of nature,
natural phenomena, and abstract ideas are not patentable.” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), “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., 134 S. Ct. at 2355.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. (citing Mayo, 132
S. Ct. at 1296-97). If so, the second step is to consider the elements of the
10
Appeal 2015-001605
Application 12/861,658
claims “individually and ‘as an ordered combination”’ to determine whether
the additional elements “‘transform the nature of the claim’ into a patent-
eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1297—98). 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. (alteration in original) (quoting Mayo,
132 S. Ct. at 1294). The Court acknowledged in Mayo, that “all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore,
look to whether the claims 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.
Here, the Examiner rejects claims 37—56 as being directed to an
abstract idea, non-statutory subject matter under § 101. Ans. 21—22. The
Examiner takes claim 37 as representative (id. at 22) and finds that the claim
is directed to “to monitoring financial information and executing financial
transactions which is considered to be an abstract idea inasmuch as such
activity is considered both a fundamental economic practice and a method of
organizing human activity by providing a customized interface.” Id. The
Examiner further finds that the additional elements of the claim of receiving
content data, receiving a parameter, receiving a panel, pre-selecting a panel,
constructing a panel, monitoring, and generating a customized interface,
“when taken alone, each execute in a manner routinely and conventionally
expected of these elements.” Id. at 23. The Examiner further finds that the
11
Appeal 2015-001605
Application 12/861,658
elements of the claim, “when taken in combination, together do not offer
substantially more than the sum of the functions of the elements when each
is taken alone,” because they “execute in routinely and conventionally
accepted coordinated manners and interact with their partner elements to
achieve an overall outcome which, similarly, is merely the combined and
coordinated execution of generic computer functionalities which are well-
understood, routine and conventional activities previously known to the
industry.” Id. at 23—24. The Examiner applies “[s]imilar reasoning and
logic” to independent medium claim 49 and system claim 53 as for claim 37.
Id. at 24.
The Appellants first contend the rejection is in error because “[t]he
rejection asserts without explanation that claim 37 ‘is considered both a
fundamental economic practice and a method of organizing human activity’
(Ex. Ans., pg. 22) as a basis for considering the claim abstract.” Reply
Br. 2. However, there is no such requirement. Instead, the law is well-
established that the USPTO carries its procedural burden when its rejection
satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of
the reasons for rejection, “together with such information and references as
may be useful in judging the propriety of continuing the prosecution of [the]
application.” See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Here,
the Examiner notifies the Appellants that the claims are directed to a patent-
ineligible abstract idea, i.e., the fundamental economic practice of
“monitoring financial information and executing financial transactions,” and
method of organizing human activity of “providing a customized interface.”
Ans. 22. The Examiner, thus, has notified the Appellants of the reason for
considering the claims directed to an abstract idea with such information “as
12
Appeal 2015-001605
Application 12/861,658
may be useful in judging the propriety of continuing the prosecution of [the]
application.” 35 U.S.C. § 132.
The Appellants do not disagree that the claims are directed to
providing a customized interface and monitoring and executing financial
transactions, i.e., the first step of the Alice analysis. Moreover, we note, for
emphasis, that this abstract idea is similar to the abstract ideas deemed
ineligible by our reviewing court of customizing web page content
{Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363,
1369 (Fed. Cir. 2015)), delivering user-selected media content {Affinity Labs
of Tex., LLCv. Amazon.com Inc., 838 F.3d 1266, 1269 (Fed. Cir. 2016)),
and generating menus with certain features {Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240-41 (Fed. Cir. 2016)). The Appellants’ argument that
the claims are not abstract because they “include multiple steps which
involve concrete and specific people, objects, and actions” (Reply Br. 2) is
unpersuasive because the steps, even if “concrete,” are all directed to and
further elaborate the abstract idea of providing a customized interface and
monitoring and executing financial transactions.
We further find unpersuasive the Appellants’ arguments that the
claims add limitations that are significantly more than the abstract idea, i.e.,
the second part of the analysis. See Reply Br. 2—3. The Appellants’
argument that the claims do not lack an “inventive concept” because the
claims are “novel and non-obvious” (/<:/. at 2) is not persuasive — a novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304. The Appellants’ argument that the
“meaningful limitations” of the claim “are not merely instructions to
implement performing an abstract idea on a computer system” (Reply Br. 3)
13
Appeal 2015-001605
Application 12/861,658
is unpersuasive at least because the steps of receiving content data, a
parameter, and a user selection, pre-selecting a panel, constructing a panel,
monitoring information, and generating a user interface are all computer
functions of a general processor. The Specification supports this view in
discussing generic data tools, applications, and servers for performing the
claimed embodiments. See, e.g., Spec. 4—5. The Appellants’ argument that
the claims “constitute an improvement to the computer sciences” in
improving the “technical field of integrated data visualization” (Reply Br. 3)
is unpersuasive at least because “integrated data visualization” is not a
technical field, but can be accomplished without technology. Furthermore,
the Appellants do not adequately show how the claimed steps of receiving
data, selecting and constructing panels, monitoring, and generating the
interface are technically done such that they are not routine, conventional
functions of a generic computer, nor do the Appellants provide evidence
why the steps are not routine and conventional functions of a generic
computer. See Intellectual Ventures, 792 F.3d at 1370 (“Rather, the
‘interactive interface’ simply describes a generic web server with attendant
software, tasked with providing web pages to and communicating with the
user’s computer.”).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 37 under 35U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under 35 U.S.C. § 101 of claim 37, and also of claims
38—56 which fall with claim 37.
14
Appeal 2015-001605
Application 12/861,658
DECISION
The Examiner’s rejections of claims 37—56 under 35 U.S.C. § 112 are
REVERSED.
The Examiner’s rejection of claims 37—56 under U.S.C. § 103(a) is
REVERSED.
The Examiner’s rejections of claims 37—56 under 35 U.S.C. § 101 are
AFFIRMED.
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
15