Ex Parte Hu et al

Patent Trial and Appeal Board

Jun 19, 2018

13725688 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/725,688 12/21/2012
26181 7590 06/21/2018
FISH & RICHARDSON P.C. (SV)
PO BOX 1022
MINNEAPOLIS, MN 55440-1022
FIRST NAMED INVENTOR
LiminHu
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.
22241-0003003 1212
EXAMINER
KAZIMI, HAN! M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/21/2018 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):
P ATDOCTC@fr.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LIMIN HU, BABAK KHANPOUR and TING-HU WU
Appeal2016-005252
Application 13/725,688
Technology Center 3600
Before BIBHU R. MOHANTY, MICHAEL W. KIM, and
ALYSSA A. FINAMORE, 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 final
rejection of claims 1-11 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.
Appeal2016-005252
Application 13/725,688
THE INVENTION
The Appellants' claimed invention is directed to processing and
fulfilling loan applications over a network (Spec., para. 1 ). Claim 1,
reproduced below, is representative of the subject matter on appeal.
1. A method for the formatting and transmission of data
from a loan originator system to one or more partner systems, the
method comprising:
providing a loan origination software program including
client and server portions, the client portion including an
interface for receiving loan application data, the server portion
including formatting and transmitting capability wherein the
formatting and transmitting capability facilitates the entry of
information into one or more loan forms associated with a target
partner system;
identifying a target partner system of one or more partner
systems that interfaces with the loan origination software
program including determining loan forms associated with the
target
partner system that are to be populated with data included in the
loan application data, determining data from the received loan
application data for populating respective forms and determining
a target format compatible with a financial service software
program of the target
partner system for display of the data on the respective forms;
determining a first format of data included in the loan
application data and being associated with the loan origination
software program, wherein the first format is different from
the target format;
formatting, by one or more computers associated with the
server portion, the data included in the loan application data
including re-formatting the data from the first format into the
target format and publishing loan application information
provided by the loan origination software program in the target
format compatible with the financial service software program of
the target partner system of the one or more partner systems in
the respective forms; and
2
Appeal2016-005252
Application 13/725,688
transmitting re-formatted loan application information
including the data in the target format to the target partner
system.
THE REJECTION
The following rejection is before us for review:
Claims 1-11 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.
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 1.
ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellants argue that the rejection of claim 1 is improper because
the rejection has identified two different abstract ideas (App. Br. 9, 10). The
Appellants further argue that the claim elements are "significantly more"
than the recited abstract ideas in the rejection (App. Br. 10-13).
In contrast the Examiner has determined that the rejection of record is
proper (Final Act. 2-6, Ans. 3-10).
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,
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
( explaining the general evidentiary standard for proceedings before the
Patent Office).
3
Appeal2016-005252
Application 13/725,688
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. CLS Bank Int'!, 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
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 determine that the claim is directed to the concept of
processing loan information between a loan broker and clients. 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. The Specification at paragraph 10 states that the system
is for "facilitating the processing of loan applications by loan originators."
In Dealertrack, Inc. v. Huber, LLC, 674 F.3d 1315 (Fed. Cir. 2012), the
processing of credit applications over electronic networks was held to be
directed to an abstract idea and patent ineligible.
4
Appeal2016-005252
Application 13/725,688
The Appellants argue that the Examiner has failed by categorizing the
claims as being directed to an abstract idea in both "processing loan
application data" and "business principles," and has not met the analysis
framework as two different abstract ideas are identified (App. Br. 9).
However, abstract ideas can be generally described at different levels
abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed.
Cir. 2016) ("An abstract idea can generally be described at different levels of
abstraction.").
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 using generic computer components. We conclude that it does
not. The Specification at paragraphs 23-25 describes using generic CPUs,
desktop computers, servers, and networks in a conventional manner. The
Specification at paragraph 24 states that the invention is not limited to any
specific combination of hardware circuity or software. We agree with the
Examiner's determination in the Final Action at page 4 that the generic
computer structures used serve generic computer functions that are
conventional.
Considering each of the claim elements both in tum and as an ordered
combination, 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.
5
Appeal2016-005252
Application 13/725,688
We note the point about preemption (App. Br. 10). While preemption
"might tend to impede innovation more than it would tend to promote it,
'thereby thwarting the primary object of the patent laws'" (Alice, 134 S. Ct.
at 2354 (quoting Mayo, 132 S. Ct. at 1293), "the absence of complete
preemption does not demonstrate patent eligibility" (Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362---63 (Fed. Cir.), cert.
denied, 136 S. Ct. 701 (2015) ("[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.").
The Appellants also argue that the claim is rooted in technology (App.
Br. 13). Here, however, we are unpersuaded that the claim is rooted in
technology, but rather appears to be in the abstract concept of processing
loan information between a loan broker and clients, and we are unpersuaded
that any of the limitations of the claim identified by the Appellants transform
the abstract nature of the claim into patent-eligible subject matter.
For these reasons the rejection of claim 1 is sustained. The remaining
claims are directed to similar subject matter, and as the same arguments have
been presented for these claims the rejection of these claims is not sustained
as well.
CONCLUSIONS OF LAW
We conclude that the Appellants have not shown that the Examiner
erred in rejecting claims 1-11 under 35 U.S.C. § 101
6
Appeal2016-005252
Application 13/725,688
DECISION
The Examiner's rejection of claims 1-11 is sustained.
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
7