Ex Parte Hull et al

Patent Trial and Appeal Board

Mar 28, 2018

12907765 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/907,765 10/19/2010
63710 7590 03/30/2018
INNOVATION DIVISION
CANTOR FITZGERALD, L.P.
110 EAST 59TH STREET (6TH FLOOR)
NEW YORK, NY 10022
FIRST NAMED INVENTOR
John Campbell HULL
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.
03-1096-1 2595
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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 JOHN CAMPBELL HULL, ALAN DOUGLAS WHITE,
MICHAEL GOOCH, and MATTHEW WOODHAMS
Appeal2016-007187
Application 12/907,765
Technology Center 3600
Before CARL W. WHITEHEAD JR., AMBER L. HAGY, and
KARA L. SZPONDOWSKI, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 15, 17, and 19-42. Claims 1-14, 16, and 18 have
been cancelled. App. Br. 9-10. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We AFFIRM.
1 Appellants identify GFI Group, Inc., as the real party in interest. App. Br.
3.
Appeal2016-007187
Application 12/907,765
STATEMENT OF THE CASE
Appellants' invention is directed to an apparatus, method and system
for determining credit derivative indices. Spec. 1. Claim 15, reproduced
below, is representative of the claimed subject matter:
15. A method for determining at least one estimated financial
attribute of at least one entity of a population, the method comprising:
providing financial attribute data for entities of the population,
wherein the financial attribute data is for a period of time, and the
period of time includes a particular day and prior days;
determining, using a processor arrangement, a conditional index
for the particular day and for a particular entity based on a relationship
of prior conditional indices, actual financial attribute data for the
particular day and actual financial attribute data for the prior days by
calculating a maximum likelihood estimator for the conditional index
for the particular day;
determining, using a processor arrangement, an unconditional
index representing an average level of the financial attribute data for
the entities of the population; and
determining, using a processor arrangement, the at least one
estimated financial attribute for the at least one entity based on the
unconditional index;
wherein an entity is considered if it satisfies the following
conditions: (1) the entity is currently a member of the population of
interest; and (2) the entity was a member of the population at the time
of the most recent observation on the entity, and
wherein the unconditional index is determined by averaging the
attribute across both actual observations and estimated observations of
the attribute that satisfy both of the conditions.
2
Appeal2016-007187
Application 12/907,765
REJECTIONS
Claims 15, 17, and 19-42 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception to statutory subject matter.
ANALYSIS
Appellants argue all claims together, so we select independent method
claim 15 as representative. See 3 7 C.F .R. § 41.3 7 ( c )( 1 )(iv).
To determine whether a claim is eligible under § 101, "[ w ]e must first
determine whether the claims at issue are directed to a patent-ineligible
concept." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355
(2014 ). If it is, we then "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." Id. (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 78-79 (2012)).
The Examiner determines the claims are directed to the fundamental
economic practice "of determining financial attribute of an entity of a
population" and are also "a mental process that could be performed in the
human mind, or by a human using a pen and paper." Ans. 2. In addition,
the Examiner determines the claims merely add a generic processor that
performs its basic functions, which does not amount to significantly more
than the abstract idea. Ans. 2-3.
With regard to step 1 of the Alice analysis, Appellants argue
"'determining financial attribute of an entity of a population' is not abstract
at all but is a concrete action with a tangible result." Reply Br. 2.
According to Appellants, "[b ]eing able to be performed by mind or with pen
3
Appeal2016-007187
Application 12/907,765
and paper is not relevant to whether an idea is an idea of itself." Reply Br.
3. Appellants further argue, "the Examiner makes no allegation regarding
long prevalence at all [and i]f 'determining financial attribute of an entity of
a population' were long prevalent, the[ n] certainly, the Examiner could have
found a prior art rejection of the claims." Reply Br. 2; see also App. Br. 8.
Appellants also argue that because "[ c ]redit derivatives were invented only
as recently as [t]he 1990s, a mere ten years before the filing of this
application" then "the claims are not directed to something that was long
prevalent." Reply Br. 3.
We disagree with Appellants' arguments. Claim 15 recites three
different types of steps: (1) providing data; (2) determining an index; and
(3) determining a financial attribute. Each of these steps involves either
gathering or manipulating information-in particular, financial attribute
data, which is provided and used to determine a conditional index, an
unconditional index, and an estimated financial attribute. On the record
before us, Appellants dispute the claims are directed to an abstract idea
because they are directed to "a concrete action with a tangible result," which
is "not an idea of itself," and "are not directed to something that was long
prevalent." Reply Br. 2-3; App. Br. 8. Appellants do not explain what
"tangible result" is accomplished by the claims. Indeed, although a
conditional index, unconditional index, and estimated financial attribute are
determined, the claims do not do anything with this information, short of
displaying the information (as recited in dependent claim 42). Information
collection and analysis, including when limited to particular content, is
within the realm of abstract ideas. In that regard, the claims here are similar
to those in Electric Pov,,,•er Group, which recited "receiving" data, "detecting
4
Appeal2016-007187
Application 12/907,765
and analyzing" events from that data, and ''displaying" the results. Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016).
The Federal Circuit affirmed that those claims were directed to ineligible
subject matter under§ 101, explaining:
Information as such is an intangible. Accordingly, 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. In a similar
vein, we have treated analyzing infonnation by steps people go
through in their minds ... , without more, as essentially mental
processes within the abstract-idea category. And we have
recognized that merely presenting the 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. (citations omitted); see also Content Extraction & Trans. LLC v. Wells
Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) ("The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed, humans have always performed these functions.").
Moreover, we agree with the Examiner (see Ans. 2), and Appellants
have not persuasively rebutted, that the steps of the method can be
performed by a human with the use of pen and paper. The Federal Circuit
has held that if a method can be performed by human though alone, or by a
human using pen and paper, it is merely an abstract idea and is not patent-
eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F .3d
1366, 1373 (Fed. Cir. 2011) ("[A] method that can be performed by human
thought alone is merely an abstract idea and is not patent-eligible under
§ 101."); see also Intellectual Ventures ILLC v. Symantec Corp., 838 F.3d
5
Appeal2016-007187
Application 12/907,765
1307, 1318 (Fed. Cir. 2016). Additionally, mental processes, e.g., making
determinations as recited in independent claim 15, remain unpatentable even
when automated to reduce the burden on the user of what once could have
been done with pen and paper. CyberSource Corp., 654, F.3d at 1375
("That purely mental processes can be unpatentable, even when performed
by a computer, was precisely the holding of the Supreme Court in
Gottschalk v. Benson.").
Appellants' argument that the pending claims are patent eligible
because there are no pending obviousness or novelty rejections of the claims
(App. Br. 8) is likewise not persuasive because it improperly conflates the
requirements for eligible subject matter ( § 101) with the independent
requirements of novelty(§ 102) and obviousness(§ 103). "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 the claim falls within
the§ 101 categories of possibly patentable subject matter." Diamond v.
Diehr, 450 U.S. 175, 188-189 (1981). A novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 132 S. Ct. at 1304.
Turning to the second step of the Alice analysis, Appellants argue
"[ t ]he Examiner has provided no evidence that these limitations are not
substantially more than 'determining financial attribute of an entity of a
population."' Reply Br. 4. According to Appellants, "[t]o make findings of
fact, the Examiner must present substantial evidence showing that such
limitations are well-understood, routine and conventional activities
previously known in the industry." Reply Br. 5; see also App. Br. 7-8.
6
Appeal2016-007187
Application 12/907,765
We agree with the Examiner (see Ans. 2) that claim 15 adds a
"processor arrangement," i.e., a generic computer component, which does
not satisfy the inventive concept. See Spec. 9 ("[ t ]he exemplary method
may be implemented in software using a suitably appropriate processor
arrangement"); Spec. 11 ("[ t ]he processor arrangements of the system may
include a personal computer, a computer network, a wireless computer or
processor device or arrangement (such as, for example, a PDA) or a wireless
computing network, or any other suitably appropriate processor
arrangement"); Spec. Fig. 2. "[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." Alice, 134 S. Ct. 2358 (citation omitted).
Appellants have presented no evidence to establish otherwise, nor
have Appellants explained how the claims are performed such that they are
not routine, conventional functions of a generic computer. To the extent
Appellants contend that the Examiner is required to provide such evidence,
the law is clear that there is no such requirement. See, e.g., In re Jung, 637
F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the PTO carries its
procedural burden of establishing a prima facie case when its rejection
satisfies the notice requirement of 35 U.S.C. § 132). The claims at issue do
not require any nonconventional computer or display components, or even a
"non-conventional and non-generic arrangement of known, conventional
pieces," but merely call for performance of the claimed information
providing and determining steps "on a set of generic computer components."
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349--52 (Fed. Cir. 2016).
7
Appeal2016-007187
Application 12/907,765
Because claim 15 is directed to an abstract idea and nothing in the
claims adds an inventive concept, the claims are not patent-eligible under
§ 101. We find no meaningful distinction between independent method
claim 15 and independent system claim 1 7 and independent medium claim
19; the claims all are directed to the same underlying invention. As the
Federal Circuit has made clear, "the basic character of a process claim drawn
to an abstract idea is not changed by claiming only its performance by
computers, or by claiming the process embodied in program instructions on
a computer readable medium." See CyberSource, 654 F.3d at 1375-76
(citing In re Abele, 684 F.2d 902 (CCPA 1982)).
Therefore, we sustain the Examiner's rejection of claims 15, 17, and
19-42 under 35 U.S.C. § 101.
DECISION
The Examiner's rejection of claims 15, 17, and 19--42 is affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
8