Ex Parte Heaton et al

Patent Trial and Appeal Board

Mar 22, 2018

13613662 (P.T.A.B. Mar. 22, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/613,662 09/13/2012
63710 7590 03/26/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
Timothy H. Heaton
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.
01-1060-CS 9964
EXAMINER
PATEL, JAGDISH
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
03/26/2018 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):
patentdocketing@cantor.com
lkorovich@cantor.com
phowe@cantor.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY H. HEATON and HOWARD W. LUTNICK
Appeal2016-008238
Application 13/613,662
Technology Center 3600
Before ERIC B. CHEN, JON M. JURGOV AN, and
ADAM J. PYONIN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1, 3-16, and 18-20. Claims 2, 17, and 21 have been cancelled. We
have jurisdiction under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to a computer based system for
electronically collecting market information (i-f 6), such as real estate indices
(i-f 50).
Appeal 2016-008238
Application 13/613,662
Claim 1 is exemplary:
1. An apparatus comprising:
a computing device; and
a non-transitory medium having stored thereon a plurality of
instructions that when executed by the computing device cause the
apparatus to:
in response to receiving each of a first and a second user-
specified region from one or more users, compile respective first and
second data that indicates values of a first plurality of instances of real
estate located in the first user-specified region and a second plurality
of instances of real estate located in the second user-specified region,
in which the second user specified region includes at least a part of the
first user-specified region; and
determine and transmit a first value of a first index based on the
first data associated with the first user-specified region and a second
value of a second index based on the second data associated with the
second user-specified region.
Claims 1, 3-16, and 18-20 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
§ 101 Rejection
We are unpersuaded by Appellants' arguments (App. Br. 6-8; see also
Reply Br. 2-3) that independent claims 1 and 13 comply with 35 U.S.C.
§ 101 as statutory subject matter.
The Examiner found that "[ t ]he phrase 'an idea of itself' describes an
idea standing alone such as an uninstantiated concept, plan or scheme, as
well as a mental process (thinking) that can be performed in the human mind
or by a human using a pen and paper" (Ans. 4) and as such, claim 1
"describe[ s] a concept of a mental process that can be performed mentally or
using a pen and paper" (id. at 5). Moreover, the Examiner found that "the
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presence of the generic computer and performing the claimed process on the
generic computer does not transform the abstract idea into a patent eligible
invention." (Final Act. 5; see also Ans. 6.) We agree with the Examiner's
findings and conclusions.
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67
(1972) ("Phenomena of nature, though just discovered, mental processes,
and abstract intellectual concepts are not patentable, as they are the basic
tools of scientific and technological work."). Notwithstanding that a law of
nature, natural phenomena, or an abstract idea, by itself, is not patentable,
the application of these concepts may be deserving of patent protection.
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72
(2012). In Mayo, the Court stated that "to transform an unpatentable law of
nature into a patent-eligible application of such a law, one must do more
than simply state the law of nature while adding the words 'apply it."'
Mayo, 566 U.S. at 72.
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts." Id. If the claims are directed to a
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Application 13/613,662
patent-ineligible concept, then the second step in the analysis is to consider
the elements of the claims "individually and 'as an ordered combination"' to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (quoting Mayo, 566 U.S.
at 79, 78). 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, 566 U.S. at 72-73). "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]."' Id. at 2357
(alteration in original) (quoting Mayo, 566 U.S. at 77-78). The prohibition
against patenting an abstract idea "cannot be circumvented by attempting to
limit the use of the formula to a particular technological environment or
adding insignificant post[-]solution activity." Bilski v. Kappas, 561 U.S.
593, 610-11 (2010) (internal quotation marks omitted). The Court in Alice
noted that "[ s ]imply appending conventional steps, specified at a high level
of generality,' was not 'enough' [in Mayo] to supply an 'inventive concept."
Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82-83, 77-78, 72-73).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Claim 1 is an apparatus claim, which recites "a non-transitory medium
having ... instructions" for performing several steps, each of which can be
performed in the human mind or by a human using pen and paper.
The first step, "compile respective first and second data that indicates
values of ... real estate located in the first user-specified region and ... real
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estate located in the second user-specified region" can be perform manually
by a human using pen and paper. In particular, a person can perform a
public records search of real estate values in a selected neighborhood, a
surrounding neighborhood, and record the result of the search using pen and
paper. The second step, "determine and transmit a first value of a first index
based on ... the first user-specified region and a second value of a second
index based on ... the second user-specified region" can also be performed
by a human using pen and paper. In particular, a person can calculate, using
pen and paper: (i) a first value index for only the real estate in the selected
neighborhood based on the public records search; and (ii) a second value
index for real estate in the selected neighborhood and the surrounding
neighborhood based on the public records search.
Because all the instructional steps of claim 1 can either be performed
by human thought alone, or by a human using pen and paper, claim 1 is
directed to a patent-ineligible abstract idea. See CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) ("[U]npatentable
mental processes" include "steps [that] can be performed in the human mind,
or by a human using a pen and paper."). Claim 13, a corresponding method
claim, recites limitations similar to those discussed with respect claim 1.
Thus, claim 13 is also directed to a patent-ineligible abstract idea.
Step two: Is there something else in the claims that ensures that they are
directed to significantly more than a patent-ineligible concept?
Because claims 1 and 13 are directed to an abstract idea, the question
to be settled next, according to Alice, is whether claims 1 and 13 recite an
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element, or combination of elements, that is enough to ensure that the claims
are directed to significantly more than an abstract idea.
Claim 1 is an apparatus claim, which includes "a computing device"
and "a non-transitory medium." Claim 13 is a corresponding method claim
that includes "a processor." The claimed hardware components, including
"a computing device" and "a memory," are generic, purely conventional
computer elements. (See, e.g., Spec. i-f 26.) Thus, the claims do no more
than require generic computer elements to perform generic computer
functions, rather than improve computer capabilities. Appending various
combinations of a conventional "processor" and "memory" to an abstract
idea is not enough to transform the idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2358 ("[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.").
First, Appellants argue that "the Examiner has failed to show that the
alleged abstract idea of 'determining real-estate indices associated with
specified regions' is actually an abstract idea." (App. Br. 7; see also Reply
Br. 2-3.) In particular, Appellants argue that "[n]o such evidence
[determining such indices was so fundamental] was presented nor was such
an allegation made." (App. Br. 6.) Contrary to Appellants' arguments, the
Examiner has identified the appropriate judicial exception of "an idea 'of
itself,"' which includes activities performed in the human mind or by a
human using a pen and paper. Appellants have provided insufficient
arguments as to why the judicial exception of "an idea 'of itself"' is
improper.
Second, Appellants argue that
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[t]he Examiner has provided no evidence that this limitation ["in
response to receiving each of a first and a second user-specified
region from one or more users, compile respective first and
second data that indicates values of a first plurality of instances
of real estate located in the first user specified region and a
second plurality of instances of real estate located in the second
user-specified region, in which the second user-specified region
includes at least a part of the first user-specified region"] is
purely conventional or that it amounts to "nothing more than
requiring a generic computer to perform generic computer
functions that are well-understood, routine and conventional
activities previously known to the industry."
(App. Br. 7; see also Reply Br. 3.) However, as discussed previously, the
Examiner correctly identified the appropriate judicial exception with respect
to this disputed limitation under part one of the Alice test, rather than part
two of the Alice test, as argued by Appellants. In other words, Appellants
are improperly conflating part one of the Alice test with part two of the Alice
test, because this limitation does not recite any computer hardware elements.
Third, Appellants argue that "the Examiner does not allege that these
limitations lack novelty or are obvious in view of the prior art" and "[a]s
such, the Examiner admits that these limitations are novel and non-obvious."
(Reply Br. 3.) Accordingly, Appellants argue, "[t]o be novel and non-
obvious, these claims must then add something significantly more to an
abstract idea that the Examiner alleges is a fundamental economic practice."
(Id.) However, ever if Appellants are correct that claim 1 is distinguishable
over the prior art, "[ t ]he 'novelty' of any element or steps in a process, or
even of the process itself, is of no relevance in determining whether the
subject matter of a claim falls within the § 101 categories of possibly
patentable subject matter." Intellectual Ventures I LLC v. Symantec Corp.,
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838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S.
175, 188-89 (1981)).
Last, Appellants argue that "similar to the claims in DDR Holdings,
these claims solve a problem rooted in computer technology to improve
functionality that arises from the realm of computer systems and networks
by adding an ability of users to view real estate indices for their own
specified regions." (App. Br. 7.) In particular, Appellants argue that
"[ c ]ompiling the information according to user specified regions allows a
user to make sense and use of this potentially vast amount of information in
a way that is tailored to their needs." (Id. at 8.) However, other than
providing a conclusory statement that "these claims solve a problem rooted
in computer technology to improve functionality that arises from the realm
of computer systems and networks," Appellants have not adequately
explained why the claims overcome a problem that specifically arises in
computer technology. In particular, Appellants have not explained how
"adding an ability of users to view real estate indices for their own specified
regions" is a problem rooted in computer technology. (Id. at 7 (emphasis
added).)
Thus, we agree with the Examiner that claims 1 and 13 are directed
towards non-statutory subject matter.
Accordingly, we sustain the rejection of independent claims 1 and 13
under 35 U.S.C. § 101. Claims 3-12, 14--16, and 18-20 depend from
independent claims 1 and 13. We sustain the rejection of claims 3-12, 14--
16, and 18-20 under 35 U.S.C. § 101 for the same reasons discussed with
respect to independent claims 1 and 13.
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DECISION
The Examiner's decision rejecting claims 1, 3-16, and 18-20 under
35 U.S.C. § 101 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)(l )(iv).
AFFIRMED
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