Ex Parte Hamilton et al

Patent Trial and Appeal Board

Oct 17, 2017

12651759 (P.T.A.B. Oct. 17, 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.
12/651,759 01/04/2010 VICKI HAMILTON 040394/380244 9820
826 7590 10/19/2017
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
10/19/2017 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):
u sptomail @ alston .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICKI HAMILTON, MELISSA KOEHLER,
MICHELLE MCGUIRE, KAREN PAINTER,
KATHRYN AUFDERHEIDE, JONJIE THRALLS, ALAY MEHTA,
MARK CHERNESKY, SIMIT SHAH, CATHERINE EVANS,
MARK HARTMAN, JENNIFER DAVIDSON, MANISH KHANDURI,
FARAH SPAINHOUR, CATHERINE HAGUE, and SCOTT MURPHY
Appeal 2015-007760
Application 12/651,759
Technology Center 3600
Before BIBHU R. MOHANTY, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the non-
final rejection of claims 1—22 which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM.
Appeal 2015-007760
Application 12/651,759
THE INVENTION
The Appellants’ claimed invention is directed to systems and methods
for prioritizing and tracking one or more investment products (Spec., para.
2). Claim 1, reproduced below, is representative of the subject matter on
appeal.
1. A computer-implemented method for prioritizing and
tracking one or more investment projects, the computer-
implemented method comprising:
receiving, via one or more processors, input identifying
an investment project;
assigning, via the one or more processors, a unique
identifier to the investment project;
receiving, via the one or more processors, input
identifying an estimated cost for the investment project;
receiving, via the one or more processors, input from a
user selecting an expected benefit for the investment project,
wherein the expected benefit is selected from a plurality of
expected benefits displayed to the user;
automatically identifying, via the one or more processors,
at least one input request related to the design of the investment
project and that is associated with the expected benefit;
causing, via the one or more processors, display of a first
input request that is related to the design of the investment
project and that is associated with the expected benefit;
receiving, via the one or more processors, a response to
the first input request;
causing, via the one or more processors, display of a
second input request that is related to the development of the
investment project;
receiving, via the one or more processors, a response to
the second input request;
receiving, via the one or more processors, input
indicating the investment project has been completed; and
in response to receiving input indicating that the
investment project has been completed, causing, via the one or
more processors, display of a third input request that is related
to feedback of the investment project.
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Application 12/651,759
THE REJECTIONS
The following rejections are before us for review:
1. Claims 1—22 are rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
2. Claims 1—6, 9—13, 16—19, and 22 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wescott (US 2003/0036942 Al, published
Feb. 20, 2003), Gibler et al. (US 2003/0097309 Al, published May 22, 2003
(hereinafter “Gibler”), and Burritt et al. (US 2004/0059588 Al, published
Mar. 25, 2004 (hereinafter “Burritt”).1
3. Claims 6—8, 14, 15, 20, and 21 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Wescott, Gibler, Burritt, and Eder (US
2009/0018891 Al, published Jan. 15, 2009.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2
1 We interpret the Examiner’s inclusion of claims 7, 8, 14, 15, 20, and 21 in
the heading of the rejection at page 6 of the non-Final Office Action as
inadvertent error, because the Examiner does not address these claims in the
body of the rejection and, instead, rejects these claims separately at pages
10—13 of the non-Final Office Action.
2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Appeal 2015-007760
Application 12/651,759
ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 under 35 U.S.C.
§ 101 is improper because claim 1 is not directed to an abstract idea,
fundamental economic practice, or a method of organizing human activities
(Reply Br. 1—13). The Appellants also argue that claim 1 is directed to
“significantly more” than an abstract idea (App. Br. 13—18).
In contrast, the Examiner has determined that the rejection under 35
U.S.C. § 101 as being directed to non-statutory subject matter is proper
(Ans. 2, 3).
We agree with the Examiner. Under 35 U.S.C. § 101, an invention is
patent-eligible if it claims a “new and useful process, machine, manufacture,
or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however,
has long interpreted § 101 to include an implicit exception: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the 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 of the abstract idea. Id.
This is a search for an “inventive concept” an element or combination of
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Appeal 2015-007760
Application 12/651,759
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention.” Id. at 2358.
Here, we find that the claim is directed to the concept of prioritizing
and tracking investment projects. This is a fundamental economic practice
long prevalent in our system of commerce and a method of organizing
human activities and is an abstract idea beyond the scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea over using generic computer components. We conclude that it
does not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function.
Here, the claim is not rooted in technology but rather directed to the
abstract concept of prioritizing and tracking investment projects and merely
performed using generic computer components in a conventional manner.
For these reasons, the rejection of claim 1 is sustained. The
Appellants have provided the same arguments for the remaining claims 2—22
and the rejection of these claims is sustained as well.
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Appeal 2015-007760
Application 12/651,759
Rejections under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation for
receiving, via the one or more processors, input from a user
selecting an expected benefit for the investment project, wherein
the expected benefit is selected from a plurality of expected
benefits displayed to the user.
(App. Br. 11-14).
In contrast, the Examiner has determined that the cited claim
limitation is disclosed by Burritt at paragraph 31 and that the combination is
properly made (Ans. 4, 5).
We agree with the Appellants. Here, the citation to Burritt fails to
disclose the above cited claim limitation. For example, while Burritt at
paragraph 31 does disclose risk mitigation processes, it fails to specifically
disclose “receiving . . . input from a user selecting an expected benefit for
the investment project” as the argued claim limitation requires. For this
reason, the rejection of claim 1 and its dependent claims is not sustained.
The remaining independent claims 2, 10, and 17 contain a similar
limitation, and the rejection of these claims is not sustained for the same
reasons given above.
CONCFUSIONS OF FAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims 1—22 under 35 U.S.C. § 101.
We conclude that Appellants have shown that the Examiner erred in
rejecting the claims 1—22 under 35 U.S.C. § 103(a) as listed in the
Rejections section above.
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DECISION
The Examiner’s rejection of claims 1—22 is sustained.
AFFIRMED
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