Ex Parte Dwyer et al

Patent Trial and Appeal Board

Dec 3, 2018

13035247 (P.T.A.B. Dec. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/035,247 02/25/2011
5073 7590
BAKER BOTTS L.L.P.
2001 ROSS A VENUE
SUITE 900
DALLAS, TX 75201-2980
12/05/2018
FIRST NAMED INVENTOR
Robert Dwyer
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.
002328.0891 2423
EXAMINER
LIU, CHIA-YI
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
12/05/2018 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):
ptomaill@bakerbotts.com
ptomail2@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT DWYER and KURT MANSFIELD
Appeal2017---004054
Application 13/035,247
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
KENNETH G. SCHOPPER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Robert Dwyer and Kurt Mansfield (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1, 4--9, 11-13, 16-21, 23-25,
28-33, 35, and 36, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b ).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed June 27, 2016) and Reply Brief ("Reply Br.," filed January 5,
2017), and the Examiner's Answer ("Ans.," mailed November 7, 2016), and
Final Action ("Final Act.," mailed September 3, 2015).
Appeal2017-004054
Application 13/035,247
The Appellants invented a way for illustrating variable annuity
financial products. Specification 1: 15-17.
An understanding of the invention can be derived from a reading of
exemplary claim 13, which is reproduced below (bracketed matter and some
paragraphing added).
13. A method for illustrating a variable annuity
financial product, comprising the steps of:
[ 1] generating by a computer processor at least one user
interface screen at a local computer operated by a user;
[2] receiving user-specified information about a variable
annuity financial product to be illustrated and a desired start
date for a financial illustration, using the at least one user
interface screen;
[3] receiving a specification by a user of a a (sic) plurality of
portfolios associated with the variable annuity financial product
to be included in the financial illustration using the at least one
user interface screen;
[ 4] transmitting the information about the variable annuity
financial product and the desired start date from the local
computer system to an illustration server in communication
with the local computer system;
[ 5] electronically obtaining past performance data on a daily
basis relating to at least one portfolio of the plurality of
portfolios associated with the variable annuity financial
product;
[ 6] determining a fee associated with the at least one portfolio;
[7] calculating, by the computer processor, based at least in part
upon the past performance data and the fee,
an actual performance of the variable annuity financial
product during a user-defined time period which extends
from the desired start date to an end date using the
illustration server
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to produce a first illustration for the variable annuity
financial product, the first illustration illustrating the
actual performance of the variable annuity financial
product during the user-defined time period;
[8] modeling, by the computer processor, based at least in part
upon the past performance data and a living benefit associated
with the variable annuity financial product during the user-
defined time period,
the variable annuity financial product
to produce a second illustration for the variable annuity
financial product, the second illustration illustrating the
performance of the variable annuity financial product
during the user-defined time period;
[9] modeling, by the computer processor, based at least in part
upon the past performance data and a guaranteed minimum
return value for the variable annuity financial product during
the user-defined time period,
the variable annuity financial product
to produce a third illustration for the variable annuity
financial product, the third illustration illustrating the
performance of the variable annuity financial product
during the user-defined time period;
[ 1 OJ receiving an indication that the user has specified that the
illustration report indicate the performance of the variable
annuity financial product based upon the variable annuity
financial product being subject to the living benefit and the
performance of the variable annuity financial product based
upon the variable annuity financial product being subject to the
guaranteed minimum return value;
[ 11] generating by the computer processor, in response to the
indication, the illustration report comprising the first, second,
and third illustrations;
[ 12] transmitting the illustration report to the local computer
system;
and
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[13] displaying the report to the user on the local computer
system.
Claims 1, 4--9, 11-13, 16-21, 23-25, 28-33, 35, and 36 stand rejected
under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
ANALYSIS
Method claim 13 recites generating an interface, receiving user
supplied data, transmitting financial product data, obtaining history data,
determining a fee, calculating performance data, modelling financial data to
produce two illustrations, receiving data from the user, and generating,
transmitting, and displaying a report. Thus, claim 13 recites receiving,
analyzing, modifying, transmitting, and displaying data. None of the
limitations recites implementation details for any of these steps, but instead
recite functional results to be achieved by any and all possible means. Data
retrieval, analysis, modification, transmission, and display are all generic,
conventional data processing operations to the point they are themselves
concepts awaiting implementation details. The sequence of data reception-
analysis-modification-transmission-display is equally generic and
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conventional. The ordering of the steps is, therefore, ordinary and
conventional. The remaining claims merely describe process parameters,
with no implementation details.
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, []
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. [] If so, we then ask, "[ w ]hat
else is there in the claims before us? [] To answer that question,
[] consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application. [The Court] described step two of this
analysis as a 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 Corp., Pty. Ltd. v CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner determines
the claims to be directed to "receiv[ing] user-specified information,
obtain[ing] past performance data, determin[ing a] fee, calculat[ing] actual
performance and model data to produce illustrations and generating
illustrating report comprising illustrations." Final Act. 2.
Although the Court in Alice made a determination as to what the
claims were directed to, we find that this case's claims themselves and the
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Specification provide enough information to inform one as to what they are
directed to.
The preamble to claim 13 recites that it is a method for illustrating
a variable annuity financial product. The steps in claim 13 result in
transmitting reports of the results of financial models absent any
technological mechanism other than a conventional computer for doing so.
The Specification at 1: 15-17 recites that the invention relates to variable
annuity financial product illustrations. Thus, all this evidence shows that
claim 13 is directed to financial modelling and reporting, i.e. financial
analysis. This is consistent with the Examiner's determination.
It follows from prior Supreme Court cases, and Bilski (Bilski v
Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
financial analysis is a fundamental economic practice long prevalent in our
system of commerce. The use of financial analysis is also a building block
of ingenuity in finance. Thus, financial analysis, like hedging, is an
"abstract idea" beyond the scope of§ 101. See Alice Corp. Pty. Ltd.,
134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of financial
analysis at issue here. Both are squarely within the realm of "abstract ideas"
as the Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct.
at 2357.
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Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing it, and
displaying certain results of the collection and analysis" are "a familiar class
of claims 'directed to' a patent ineligible concept"); see also In re TL!
Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016). Claim 13, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis,
modification, transmission, and display and does not recite an improvement
to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 13 is directed to the abstract idea
of receiving, analyzing, modifying, transmitting, and displaying data.
The remaining claims merely describe process parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implement[ t ]" an abstract
idea "on ... a computer," that addition cannot impart patent
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eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of "additional
feature[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for receiving, analyzing, modifying, transmitting, and displaying
data amounts to electronic data query and retrieval----one of the most basic
functions of a computer. The limitation of generating an interface is a
recitation of a part of every operating system, which is part of a generic
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp. v. Alstom S.A., supra. Also see In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms "processing," "receiving," and "storing,"
... those functions can be achieved by any general purpose computer
without special programming"). In short, each step does no more than
require a generic computer to perform generic computer functions. As to the
data operated upon, "even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
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limitation does not make the collection and analysis other than abstract."
SAP Am. Inc. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' method add nothing that is not already present when the steps
are considered separately. The sequence of data reception-analysis-
modification-transmission-display is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F .3d
709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for
exchange, display, allowing access, and receiving payment recited an
abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd.
v. Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is, therefore, ordinary and conventional.
Viewed as a whole, Appellants' method claims simply recite the
concept of financial analysis as performed by a generic computer. To be
sure, the claims recite doing so by advising one to gather data and create
models for comparison to historical performance. But this is no more than
abstract conceptual advice on the parameters for such financial analysis and
the generic computer processes necessary to process those parameters, and
do not recite any particular implementation.
The method claims do not, for example, purport to improve the
functioning of the computer itself. Nor do they effect an improvement in
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any other technology or technical field. The 25+ pages of specification spell
out different generic equipment2 and parameters that might be applied using
this concept and the particular steps such conventional processing would
entail based on the concept of financial analysis under different scenarios.
They do not describe any particular improvement in the manner a computer
functions. Instead, the claims at issue amount to nothing significantly more
than an instruction to apply the abstract idea of financial analysis using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] ... against" interpreting § 101 "in
ways that make patent eligibility 'depend simply on the
draftsman's art.'
Alice Corp. Pty. Ltd., 134 S. Ct. at 2360.
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2--4 and Answer 5-7 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that the claims are
analogous to those in McRO. Reply Br. 2-3. The instant claims do nothing
physical, but only create and report financial analysis results.
2 The Specification describes generic computers and operating systems and
even that the steps could be performed by a human. Spec. 10: 19-11 :4.
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Contrary to InvestPic' s contention, the claims here are
critically different from those we determined to be patent
eligible in McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016). The claims in McRO were
directed to the creation of something physical-namely, the
display of "lip synchronization and facial expressions" of
animated characters on screens for viewing by human eyes. Id.
at 13 13. The claimed improvement was to how the physical
display operated (to produce better quality images), unlike
(what is present here) a claimed improvement in a mathematical
technique with no improved display mechanism. The claims in
McRO thus were not abstract in the sense that is dispositive
here. And those claims also avoided being "abstract" in another
sense reflected repeatedly in our cases (based on a contrast not
with "physical" but with "concrete"): they had the specificity
required to transform a claim from one claiming only a result to
one claiming a way of achieving it. McRO, 837 F.3d at 1314;
see Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1305---06
(Fed. Cir. 2018); Apple, Inc. v. Ameranth, Inc., 842 F.3d
1229, 1241 (Fed. Cir. 2016); Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1265 (Fed. Cir. 2016); see
also Two-Way Media, 874 F.3d at 1337; Secured Mail
Solutions LLC v. Universal Wilde, Inc., 873 F.3d 905, 909 (Fed.
Cir. 2017); RecogniCorp, 855 F.3d at 1326; Symantec, 838
F.3d at 1316.
SAP Am., 898 F.3d at 1168.
We are not persuaded by Appellants' argument that "Examiner
responds by doing nothing more than reciting the action verbs ( determining,
calculating, modeling, receiving, and generating) in the claims and arguing
that those action verbs are abstract. The Examiner ignores over 95% of
the language of the claims and generalizes the claim." Reply Br. 3. The
Examiner determines that all of the steps recited are relatively low level or
otherwise generic computer functions. No technological implementation
steps are recited. The 95% Appellants refer to describe financial data and
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user parameters discemable only to the human mind, which are afforded no
patentable weight. See In re Bernhart, 417 F.2d 1395, 1399 (CCPA 1969).
Beyond that, financial data, as such, is the height of abstraction as finance
itself is carried out by human thought.
We are not persuaded by Appellants' argument that "the Examiner
disregards the inventive concept provided in the claims by arguing that it is
a 102 argument." Reply Br. 3. "A claim for a new abstract idea is still an
abstract idea. The search for a § 101 inventive concept is thus distinct from
demonstrating§ 102 novelty." Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1151 (Fed. Cir. 2016).
CONCLUSIONS OF LAW
The rejection of claims 1, 4--9, 11-13, 16-21, 23-25, 28-33, 35, and
36 under 35 U.S.C. § 101 as directed to a judicial exception without
significantly more is proper.
DECISION
The rejection of claims 1, 4--9, 11-13, 16-21, 23-25, 28-33, 35, and
3 6 is 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). See 37 C.F.R.
§ 1.136(a)(l)(iv) (2011).
AFFIRMED
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