Ex Parte HSU et al

Patent Trial and Appeal Board

Jul 16, 2018

14212149 (P.T.A.B. Jul. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/212,149 03/14/2014
21971 7590 07/18/2018
WILSON, SONSINI, GOODRICH & ROSATI
650 PAGE MILL ROAD
PALO ALTO, CA 94304-1050
FIRST NAMED INVENTOR
Yu-Chin HSU
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.
44377-701.201 7604
EXAMINER
LEMIEUX, JESSICA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
07/18/2018 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):
patentdocket@wsgr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YU-CHIN HSU, CHUNG-MING KUAN, and MENG-FENG YEN
Appeal2017-000547
Application 14/212, 149 1
Technology Center 3600
Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
BRUCE T. WIEDER, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner's final rejection of claims 1, 3-10, and 12-17. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellants' claimed invention relates "to select[ing] and rat[ing] a
financial model with respect to a benchmark financial model." (Spec., 3.)
1 According to Appellants, the real party in interest is National Cheng Kung
University. (Appeal Br. 3.)
Appeal2017-000547
Application 14/212,149
Claims 1 and 10 are the independent claims on appeal. Claim 10 is
illustrative. It recites:
10. A computer-implemented system compnsmg: a digital
processing device comprising a memory device and an operating
system configured to perform executable instructions; and a
computer program including instructions executable by the
digital processing device to create an application, wherein the
application comprising:
(a) a software module configured to acquire data of a
plurality of financial models;
(b) a software module configured to select at least one
benchmark model, wherein the benchmark model is indicated by
a user or automatically determined;
( c) a software module configured to use a stepwise-
superior-predictive-ability test to evaluate performance of the
financial models with respect to the benchmark model, rank the
financial models, and identify one or more superior models from
the financial models, wherein the stepwise-superior-predictive-
ability test controls a generalized family-wise error rate; and
( d) a software module configured to set one or more
criteria for evaluating the performance;
wherein the stepwise-superior-predictive-ability test
comprises: ( 1) initializing a counter to be one and a set of rejected
financial models to be an empty set; (2) computing a test statistic
for each financial model, wherein the test statistic comprises a
performance measure of the financial model; (3) computing a
critical value of one or more subsets of the financial models,
wherein the one or more subsets of the financial models are
defined by the counter and the set of rejected financial models;
( 4) rejecting a financial model whose test statistic is equal to or
greater than the critical value; (5) terminating the stepwise-
superior-predictive-ability test if the number of rejected financial
models is smaller than the counter, or incrementing the counter
2
Appeal2017-000547
Application 14/212,149
by one and repeating the step (3); and (6) presenting all rejected
financial models as the superior models. [2J
REJECTION
Claims 1, 3-10, and 12-17 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
ANALYSIS
"Whoever 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. Section 101, however,
"'contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Assoc.for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(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, 134 S. Ct. at 2355.
2 Claim 10, as shown above, reflects claim 10 as shown in the amended
claims filed October 9, 2014, and entered by the Examiner on
November 26, 2014. Claim 10 (and claim 1) in the Appeal Brief (Appeal
Br. 22-24) contain apparent typographical errors.
3
Appeal2017-000547
Application 14/212,149
Under the two-step framework, it must first be determined if "the
claims at issue are directed to a patent-ineligible concept." Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
step of the framework is applied to determine if "the elements of the
claim ... contain[] an 'inventive concept' sufficient to 'transform' the
claimed abstract idea into a patent-eligible application." Id. at 2357 ( citing
Mayo, 566 U.S. at 72-73, 79).
With regard to step one of the Alice framework, the Examiner
determines that "the claims are directed towards evaluating financial
models." (Final Action 4.) "[T]hese claims simply recite the concept of
evaluating financial models as performed by a generic computer." (Id. at 3.)
Appellants disagree and argue that claim 10, and its dependent claims
(claims 12-17), are not directed to an abstract idea because they "do not
preempt all applications of evaluating financial models across all fields."
(Appeal Br. 13.) Appellants also argue that these claims are not directed to
an abstract idea because "[t]he present application claims an apparatus
integrating a specific statistical test to identify financial models that optimize
high returns, low risks and low error rates. Unlike conventional
technologies which consider returns based on straight percentages." (Id.
at 14.)
Under step one of the Alice framework, we "look at the 'focus of the
claimed advance over the prior art' to determine if the claim's 'character as a
whole' is directed to excluded subject matter." Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
4
Appeal2017-000547
Application 14/212,149
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the invention relates
"to select[ing] and rat[ing] a financial model with respect to a benchmark
financial model." (Spec. ,r 3 .) Claim 10 recites a "system comprising: a ...
processing device ... ; and a computer program including instructions" to
"acquire data of a plurality of financial models," "select at least one
benchmark model," "evaluate performance of the financial models with
respect to the benchmark model, rank the financial models, and identify one
or more superior models from the financial models," and "set one or more
criteria for evaluating the performance."
In this case, as in Alice, we need not labor to delimit the precise
contours of the "abstract ideas" category. It is enough to recognize that
there is no meaningful distinction in the level of abstraction between the
concept of "creat[ing] electronic records, track[ing] multiple transactions,
and issu[ing] simultaneous instructions," Alice, 134 S. Ct. at 2359, and
acquiring data of financial models, selecting a benchmark model, and
applying an algorithm to analyze the data to evaluate performance of the
financial models. Both are squarely within the realm of "abstract ideas" as
the Court has used that term. See Alice, 134 S. Ct. at 2357.
Moreover, "we have treated collecting information, including when
limited to particular content ( which does not change its character as
information), as within the realm of abstract ideas." Elec. Power Grp., 830
F.3d at 1353. "In a similar vein, we have treated analyzing information by
steps people go through in their minds, or by mathematical algorithms,
without more, as essentially mental processes within the abstract-idea
category." Id. at 1354. "And we have recognized that merely presenting the
5
Appeal2017-000547
Application 14/212,149
results of abstract processes of collecting and analyzing information, without
more (such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis." Id. "Here, the claims are
clearly focused on the combination of those abstract-idea processes." Id.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that "[a]n
abstract idea can generally be described at different levels of abstraction."
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, "impact the patentability analysis." See
id. at 1241.
With regard to Appellants' preemption argument, we do not find this
persuasive of error. Preemption is not a separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
"significantly more" to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73].
CLS Bankint'l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1281 (Fed. Cir.
2013), aff'd, 134 S. Ct. 2347 (2014) (Lourie, J., concurring). Moreover,
"[ w ]here a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
6
Appeal2017-000547
Application 14/212,149
In other words, "preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility." Id.
In view of the above, we agree with the Examiner that claim 10 is
directed to an abstract idea.
We now look to step two of the Alice framework. Step two of the
Alice framework has been described "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, 134 S. Ct. at 2355 (citing Mayo,
566 U.S. at 72-73).
The Examiner determines that "[ t ]he claims do not include limitations
that are 'significantly more' than the abstract idea" and that "[t]he
limitations are merely instructions to implement the abstract idea on a
computer and require no more than a generic computer to perform generic
computer functions that are well-understood, routine and conventional
activities previously known to the industry." (Final Action 4.)
Appellants disagree and argue that the "claims recite improvements to
a technical field" ( Appeal Br. 18, emphasis omitted) because "[ t ]raditional
technologies for rating and selection of financial models utilize straight
percentages to characterize returns and Sharpe ratios to characterize risks"
(id.) and because "[t ]he analysis uses a sophisticated statistical algorithm"
(id. at 19).
The introduction of a computer into the claim does not alter the
analysis in step two.
7
Appeal2017-000547
Application 14/212,149
[T]he 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 "implemen[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer implementation
is not generally the sort of "additional featur[ e ]" that provides
any "practical assurance that the process is more than a drafting
effort designed to monopolize the [ abstract idea] itself."
Alice, 134 S. Ct. at 23 5 8 ( 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." Id. at 2359. We agree with the Examiner that they do
not. (See Final Action 4.)
Taking the claim steps separately, the function performed by the
computer system at each step is purely conventional. Acquiring data,
selecting a model/algorithm (which may be manually indicated by the user),
and analyzing data, are basic computer functions. Additionally, the
Specification discloses that the invention can be implemented using generic
computer components. (See, e.g., Spec. ,r,r 52-57.) In short, each step does
no more than require generic computer components to perform routine
computer functions.
Even if the claimed techniques are "[g]roundbreaking, innovative, or
even brilliant," that is not enough for patent eligibility. Ass 'n for Molecular
8
Appeal2017-000547
Application 14/212,149
Pathology, 569 U.S. at 591. "The '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." Diamond v. Diehr, 450 U.S. 175, 188-
89 (1981).
Considered as an ordered combination, the computer components of
Appellants' claimed method add nothing that is not already present when the
steps are considered separately. The claims do not, as discussed above,
purport to improve the functioning of the computer itself. Nor do they effect
an improvement in any other technology or technical field. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea using generic computer components. (See Final
Action 4.) That is not enough to transform an abstract idea into a patent-
eligible invention. Alice, 134 S. Ct. at 2360.
For the reasons discussed above, we agree with the Examiner that
claim 10 and dependent claims 12-17 seek to claim patent-ineligible subject
matter.
With regard to claim 1 and dependent claims 3-9, Appellants argue
that they are "allowable for at least reasons similar to claim 10." (Appeal
Br. 19-20.) For the reasons discussed above, we agree with the Examiner
that claims 1 and 3-9 seek to claim patent-ineligible subject matter.
DECISION
The Examiner's rejection of claims 1, 3-10, and 12-17 under
35 U.S.C. § 101 is affirmed.
9
Appeal2017-000547
Application 14/212,149
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
10