Ex Parte Goldman

Patent Trial and Appeal Board

Jun 26, 2018

13922786 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/922,786 06/20/2013
145893 7590 06/28/2018
FOX ROTHSCHILD LLP I CONDUENT
PRINCETON PIKE CORPORATE CENTER
997 LENOX DRIVE
BLDG. #3
LAWRENCEVILLE, NJ 08648
FIRST NAMED INVENTOR
Theodore Allen Goldman
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.
20121573USNP/166552.40501 9404
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
ipdocket@foxrothschild.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THEODORE ALLEN GOLDMAN
Appeal2017-001414
Application 13/922,786 1
Technology Center 3600
Before JOSEPH L. DIXON, SCOTT E. BAIN, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-19, which constitute all claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies Xerox Corporation as the real party in interest.
App. Br. 3.
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Application 13/922,786
STATEMENT OF THE CASE
The Claimed Invention
The claimed invention relates to systems and methods for financial
planning and, specifically, retirement planning. Spec. i-fi-f l-2. Claims 1, 10,
and 11 are independent. Claim 1 is illustrative of the invention and the
subject matter of the appeal, and reads as follows:
1. A retirement income management system, comprising:
a retirement planning system, the planning system
being in electronic communication with an employer's
employee information system via a networking device,
wherein the employee information systems [sic]
comprises one or more first processors, wherein the
retirement planning system comprises one or more second
processors, at least one computer-readable memory, and
programming instructions that are configured to instruct
one or more of the second processors to:
receive an employee's age and current salary
information from one or more of the first processors of the
employee information system;
determine a retirement age and payout period for the
employee;
use the employee's age, current salary information,
retirement age and payout period to determine a target
retirement account value for a retirement account of the
employee at the employee's retirement age;
use the target retirement account value and the
current salary information to determine a periodic
contribution amount for the employee, wherein the
periodic contribution amount is an amount that, if the
employee makes periodic retirement account
contributions that equal at least the periodic contribution
amount through retirement age at a default growth rate for
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Application 13/922,786
the retirement account, will result in the employee's
retirement account reaching the target retirement account
value at the employee's retirement age; and
send, to one or more first processors of the
employer's employee information system without a
requirement for any intervening command or approval by
the employee, an instruction to make contributions to a
retirement account for the employee in the employer's
retirement plan by automatic payroll deduction of the
periodic contribution amount for the employee.
Br. 22 (Claims App.) (emphasis added).
The Re} ections on Appeal
Claims 1-19 are rejected under 35 U.S.C. § 101 as directed to
ineligible subject matter. Final Act. 2-5.
Claims 1-8 and 10-18 stand rejected under pre-AIA
35 U.S.C. § 103(a) as being unpatentable over Dunne et al. (US
2014/0032444 Al, published Jan. 30, 2014) ("Dunne"), Stiff et al. (US
2012/0072371 Al, published Mar. 22, 2012) ("Stiff') and Joao (US
2011/0119094 Al, published May 19, 2011). Final Act. 5-25.
Claims 9 and 19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as
being unpatentable over Dunne, Stiff, Joao, and Abrahamson (US 8,060,428
Bl, Nov. 15, 2011). Final Act. 25-28.
ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments presented in this appeal. Arguments which Appellant could have
made but did not make in the Brief are deemed to be waived. See 37 C.F.R.
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§ 41.37(c)(l)(iv). On the record before us, we are not persuaded the
Examiner erred. We adopt as our own the findings and reasons set forth in
the rejections from which the appeal is taken and in the Examiner's Answer,
and provide the following discussion for highlighting and emphasis.
Rejection Under 35 U.S. C. § 1 OJ
Appellant argues the Examiner erred in rejecting the claims as
directed to ineligible subject matter, namely, the abstract idea of retirement
income management. 2 App. Br. 10-11; Ans. 2-3. Appellant contends the
Examiner's explanation consists "simply [of] Alice buzzwords" and does not
adequately identify the alleged abstract idea. Id. Appellant further argues
that even if the claims include an abstract idea, they also require
"significantly more than just the abstract idea." Id. at 13-14. We, however,
are not persuaded the Examiner erred.
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: "[l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
2 Appellant argues all claims as a group, and we choose claim 1 as
representative of the group. 37 C.F.R. § 41.37(c)(iv).
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Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-90 (2013)). The
Court has set forth a two-part inquiry to determine whether this exception
applies. First, we must "determine whether the claims at issue are directed
to one of those patent-ineligible concepts." Alice, 134 S. Ct. at 2355
(citation omitted). Second, if the claims are directed to one of those patent-
ineligible concepts, we 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." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 77-78 (2012)). Put differently, we
must search the claims for an "inventive concept," that is, "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).
Regarding step one of the Alice analysis, as the Examiner finds, the
claims are directed to "retirement income management," which is a
fundamental economic practice. Ans. 2. The claims recite receiving
information about an employee and the employee's financial status, and
processing that information to determine a financial "contribution" or
"payroll deduction." App. Br. 22. Such data gathering and manipulation
encompasses an abstract idea. See, e.g., Elec. Power Grp. LLC 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
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concept"). Moreover, fundamental economic and business practices are
abstract ideas, even if performed on a computer. See, e.g., OIP Techs. Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir. 2015).
Appellant argues the claims "require a specific retirement income
management system and computer-based method of managing retirement
income." App. Br. 12. This conclusory statement, however, does not
explain what "specific" aspects of the claimed invention allegedly are non-
abstract. We, like the Examiner, do not find any on the record before us.
In the Reply Brief, Appellant compares the claims to those at issue in
McRO, Enfish, and Bascom. Reply Br. 5-8 (citations omitted). None of
those cases, however, involved claims directed to a fundamental economic
practice as the present claims are. See Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327 (Fed. Cir. 2016) (self-referential database that improved the
way computers operate); Bascom Global Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016) ("hamess[ing] technical
feature of network technology in a filtering system" to customize content
filtering); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1312 (Fed. Cir. 2016) ("specific ... improvement in computer animation"
for "achieving automated lip-synchronization," using "unconventional rules
that relate[ d] sub-sequences of phonemes, timings, and morph weight sets").
We are not persuadedMcRO, Enfish, or Bascom support Appellant's
arguments.
Accordingly, Appellant has not persuaded us of error in the
Examiner's analysis under Alice step one, and we proceed to step two.
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In the second step of our analysis under Alice,
we must examine the elements of the claim to determine whether
it contains an "inventive concept" sufficient to "transform" the
claimed abstract idea into a patent-eligible application. A claim
that recites an abstract idea must include "additional features" to
ensure "that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."
Alice, 134 S. Ct. at 2357 (internal citations omitted). Appellant argues the
claims add "meaningful limitations" to the alleged abstract idea of
retirement financial planning. App. Br. 14. Specifically, Appellant argues
the claims "require a retirement planning system that is in electronic
communication with an employer's employee information system via a
network device," and "includes one or more processors," which Appellant
argues are not generic. Id.
Appellant, however, has not explained how the recited "electronic
communication" and processing are performed by anything more than
generic computing elements. We, like the Examiner, find Appellant's
invention is performed by standard, generic data-processing and network
elements (as described, for example, in the Specification at paragraphs 23-
26). Ans. 5-7. The use of such generic computing elements "do[ es] not
alone transform an otherwise abstract idea into patent-eligible subject
matter." FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096
(Fed. Cir. 2016) (citing DDR Holdings, LLC, v. Hotels.com, L.P., 773 F.3d
1245, 1256 (Fed. Cir. 2014)); Ans. 3. Accordingly, Appellant does not
persuade us the Examiner erred in the second step of the Alice analysis.
For the foregoing reasons, we sustain the rejection of claims 1-19 as
directed to ineligible subject matter.
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Rejections Under 35 U.S.C. § 103(a)
Appellant argues the Examiner erred in finding the prior art teaches or
suggests sending an instruction "to make contributions to a retirement
account for the employee in the employer's retirement plan by automatic
payroll deduction of the periodic contribution amount for the employee," as
recited in claim 1. 3 App. Br. 13-18 (emphasis added). Specifically,
Appellant argues Dunne "fails to teach or suggest sending an instruction to
make contributions to a retirement account for an employee in an
employer's retirement plan," and Stiff does not teach or suggest "automatic
payroll deduction" of a periodic contribution amount. Id. at 16-17
(emphasis added). Appellant further argues Joao does not resolve these
alleged deficiencies. Id. at 17. We, however, are not persuaded by
Appellant's arguments.
The Examiner relies not on any of the references alone as teaching or
suggesting the disputed limitation, but rather relies on the combined
teachings of Joao, Dunne and Stiff. Ans. 9-10. As the Examiner finds, Joao
teaches an employer computer system communicating with a retirement
benefits system through a central processing system. Ans. 10; Joao Abs.,
Fig. 1. Dunne teaches "automatic" enrollment in an employee retirement
account, and Stiff teaches a defined retirement contribution plan with
contributions by "payroll deduction" of preestablished amounts or
3 Appellant argues independent claims 1, 10, and 11 as a group (App. Br. 15,
20), and we choose claim 1 as representative. 37 C.F.R. § 41.37(c)(iv).
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percentages. Ans. 9-10 (citing Dunne i-fi-135, 51, 59, 72, 86, 88; Stiff
i-fi-f 111-112). Appellant's arguments do not explain any alleged error in the
Examiner's findings regarding the combined teachings of the references, and
we discern none on the record before us. See In re Merck & Co., Inc., 800
F.2d 1091, 1097 (Fed. Cir. 1986) ("Non-obviousness cannot be established
by attacking references individually where the rejection is based upon the
teachings of a combination of references."). Appellant further does not
challenge the Examiner's rationale in combining the references, and we
discern no error in the rationale. Final Act. 8-9.
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claims 1, 10, and 11.
Appellant argues dependent claim 2 separately, contending the
Examiner erred in finding Dunne teaches using "the revised salary
information to determine a new periodic contribution amount," as recited in
claim 2. App. Br. 19. We disagree. As the Examiner finds, Dunne Figure 2
identifies "Forecast Average Wage Increases" as an "Input" to a retirement
contribution plan. Ans. 10-11. The accompanying disclosures in Dunne
describe utilizing that forecast, i.e., "revised salary information" to
determine change in deferral amount. Final Act. 9 (citing Dunne i-fi-1 80, 84,
85). For the reasons discussed above (in reference to base claim 1 ), the
foregoing passages of Dunne, combined with Joao and Stiff, teach or suggest
the disputed claim limitation. Appellant's arguments regarding the
remaining limitation of claim 2, which are not argued with any specificity
(App. Br. 18), do not persuade us of error for the same reasons.
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Accordingly, we are not persuaded of error regarding dependent
claim 2. Appellant does not argue any of the remaining claims separately.
We, therefore, sustain the Examiner's obviousness rejections of claims 1-19.
DECISION
We affirm the Examiner's decision rejecting claims 1-19.
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). See 37 C.F.R.
§ 41.50(f).
AFFIRMED
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