Ex Parte Jessop et al

Patent Trial and Appeal Board

Jun 19, 2018

09942453 (P.T.A.B. Jun. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
09/942,453
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
FILING DATE FIRST NAMED INVENTOR
08/30/2001 Thomas Jessop
06/21/2018
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.
GOLDll-00017 7938
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
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):
patents@munckwilson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS JESSOP and BRIANS. BRITTINGHAM
Appeal2017-003977
Application 09/942,453
Technology Center 3600
Before DAVID M. KOHUT, BETH Z. SHAW, and
STEVEN M. AMUNDSON, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1-13, 15-19, 23, 34, 45, 47, and 50-53, i.e., all pending
claims. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 Appellants identify the real party in interest as Goldman, Sachs & Co.
App. Br. 3.
Appeal2017-003977
Application 09/942,453
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention "relates to apparatus,
methods, and articles of manufacture for business analysis," more
specifically, "for providing, analyzing and visualizing corporate and
corporate relationship information, and for creating financial products and
instruments based on corporate and corporate relationship information."
Spec. 1:3-5, Abstract. 2 The Specification explains that "[i]nformation types
such as entities, relationships, selection, groupings, arrangements, view
types are provided to enable the user to interactively review, modify and
create information." Abstract.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
1. A processor-implemented method comprising:
selecting, by a processor, a first corporate entity
information type that defines a first corporate entity;
selecting, by the processor, a second corporate entity
information type that defines a second corporate entity;
selecting, by the processor, a corporate entity relationship
information type that defines a relationship between the first
and second corporate entity information types;
analyzing, by the processor, the selected corporate entity
relationship information type;
2 This decision uses the following abbreviations: "Spec." for the
Specification, filed August 30, 2001; "Final Act." for the Final Office
Action, mailed November 17, 2015; "App. Br." for the Appeal Brief, filed
May 2, 2016; "Ans." for the Examiner's Answer, mailed November 10,
2016; and "Reply Br." for the Reply Brief, filed January 10, 2017.
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Application 09/942,453
displaying, on a display based on the analysis, the first
and second corporate entity information types and the corporate
entity relationship information type in a graphical user interface
view with predetermined indicia,
the indicia graphically providing an indication of
a connection between the first and second
corporate entity information types and
a strength of the relationship between the
first and second corporate entity information
types,
wherein the graphical user interface view includes
a first company node representing the first corporate
entity and a second company node representing the
second corporate entity with the first company node
reflecting a size of the first corporate entity and the
second company node reflecting a size of the second
corporate entity;
providing, by the processor, an alteration mechanism,
wherein the alteration mechanism dynamically
changes an information type representing information to
be displayed in the graphical user interface view,
wherein the information type is chosen from a
group comprising corporate entity type, corporate entity
relationship type, selection type, grouping type,
arrangement type, and view type;
dynamically analyzing, by the processor in coordination
with the alteration mechanism, selected information types;
dynamically changing, by the processor using the
alteration mechanism, a displayed information type to a newly
chosen information type;
simultaneously displaying, on the display based on the
dynamic analysis, the newly chosen information type associated
with the first corporate entity information type and the second
corporate entity information type,
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Application 09/942,453
each displayed in separate display panels of the
graphical user interface view,
wherein the separate display panels facilitate a
comparison regarding the first and second corporate
entity information types;
generating, by the processor, at least one critical path
dependency pattern between the first and second corporate
entity information types based on the comparison and the
dynamic analysis; and
constructing, by the processor, a financial product based
on the selected and displayed information types and the
generated at least one critical path dependency pattern.
App. Br. 39-40 (Claims App.).
The Rejection on Appeal
Claims 1-13, 15-19, 23, 34, 45, 47, and 50-53 stand rejected under
35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final
Act. 2-5.
ANALYSIS
We have reviewed the§ 101 rejection in light of Appellants'
arguments that the Examiner erred. Based on the record before us and for
the reasons explained below, we concur with Appellants' contention that the
Examiner erred in concluding that the claims fail to satisfy § 101.
The§ 101 Rejection of Claims 1-13, 15-19, 23, 34, 45, 47, and 50-53
The Patent Act defines patent-eligible subject matter broadly:
"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. In Mayo Collaborative
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Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 "contains an important implicit exception" for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
First, "determine whether the claims at issue are directed to" a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
"consider the elements of each claim both individually and 'as an ordered
combination' to determine whether the additional elements" add enough to
transform the "nature of the claim" into "significantly more" than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Step one in the Mayol Alice framework involves looking at the "focus"
of the claims at issue and their "character as a whole." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an "inventive concept." Alice, 134 S. Ct. at 2355; Elec. Power
Grp., 830 F.3d at 1353. An "inventive concept" requires more than "well-
understood, routine, conventional activity already engaged in" by the
relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79--80). But "an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces." BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
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Here, the Examiner determines that the claims are directed to the
abstract idea of "analyzing corporate information and corporate relationships
and constructing a financial product." Final Act. 2-3; Ans. 6-7. The
Examiner also determines that "when considered separately and in
combination, the computer components at each step of the process perform
purely generic computer functions," and "there is no inventive concept
sufficient to transform the claimed subject matter into a patent-eligible
application." Final Act. 5; see Ans. 9.
Appellants dispute that the claims are directed to an abstract idea.
App. Br. 18-20; Reply Br. 3-8. In addition, Appellants argue that the
claims include an "inventive concept" because they: (1) recite "specific
features are other than what is well-understood, routine, and conventional in
the field"; and (2) "as a whole amount[] to significantly more than the
alleged abstract idea when looking at the elements of the claim[ s] as an
ordered combination." App. Br. 22, 34--35; see Reply Br. 8-10. In
particular, Appellants contend that the claims provide "an ordered
combination of steps where corporate entity information is intuitively
displayed, configured to facilitate comparisons, and dynamically changed
and where at least one critical path dependency pattern is generated based on
the comparison and the dynamic analysis." App. Br. 22-23, 35; see Reply
Br. 8-10.
Even if we were to agree with the Examiner that the claims are
directed to an abstract idea under Mayol Alice step one, we agree with
Appellants that the claims recite a particular arrangement of elements that
when considered as an ordered combination include enough to provide an
"inventive concept" under step two. Here, the specificity of the technical
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Application 09/942,453
solution and the particular arrangement of elements required by the claims
causes them to resemble claims considered patent eligible by the Federal
Circuit. See, e.g., BASCOM, 827 F.3d at 1349--51 (vacating grant of a
motion to dismiss due to the ineligibility of claims covering a specific
method of filtering Internet content because although "filtering content is an
abstract idea," i.e., "a longstanding, well-known method of organizing
human behavior," "this specific method of filtering Internet content cannot
be said, as a matter of law, to have been conventional or generic"); Trading
Techs. Int'!, Inc. v. CQG, Inc., 675 F. App'x 1001, 1002---05 (Fed. Cir. 2017)
(nonprecedential) (affirming eligibility of claims covering a graphical user
interface for "the electronic trading of stocks, bonds, futures, options and
similar products" that displayed the "market depth of a commodity traded in
a market," including a dynamic display of bids and asks for the commodity
and a static display of prices); McRO, Inc. v. Bandai Namco Games Am.
Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (considering patent eligible
claims that used "limited rules" in a computerized "process specifically
designed to achieve an improved technological result in conventional
industry practice").
Thus, we conclude the claims at issue are patent eligible because they
are narrowly directed to an improvement in the functioning of a computer to
change the display of selected information dynamically, provide separate
display panels facilitating a comparison of the selected information, generate
a "critical path dependency pattern" relating to the selected information, and
construct a financial product based on the "critical path dependency pattern."
See App. Br. 39--44 (Claims App.); see also Spec. 8:8-11 :20, Figs. 8-12.
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For the reasons discussed above, Appellants' arguments have
persuaded us that the Examiner erred in rejecting claims 1-13, 15-19, 23,
34, 45, 47, and 50-53 under§ 101. Hence, we do not sustain the§ 101
rejection.
DECISION
We reverse the Examiner's decision to reject claims 1-13, 15-19, 23,
34, 45, 47, and 50-53.
REVERSED
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