Ex Parte LaFever et al

Patent Trial and Appeal Board

Dec 10, 2018

14695952 (P.T.A.B. Dec. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/695,952 04/24/2015
29855 7590 12/12/2018
Blank Rome LLP - Houston General
717 Texas Avenue, Suite 1400
Houston, TX 77002
FIRST NAMED INVENTOR
M. Gary LaFever
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.
l 662-0005US 1 2289
EXAMINER
OYEBISI, OJO 0
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
12/12/2018 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):
houstonpatents@blankrome.com
mbrininger@blankrome.com
smcdermott@blankrome.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DARKO PERVAN, NICLAS H'KANSSON, MATTIAS
SJOSTRAND, CHRISTIAN BOO, and AGNE P'LSSON
Appeal2017-008895
Application 14/695,952
Technology Center 3600
Before MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner's final decision rejecting claims 1-24. We have jurisdiction over
the appeal under 35 U.S.C. § 6(b ).
Appeal2017-008895
Application 14/695,952
BACKGROUND
Appellants' invention is directed to methods and systems for
government financing of infrastructure services/improvements using
property-related taxes. Spec. [2].
Claim 1 is illustrative:
1. A system, comprising:
at least one computer adapted to:
receive information comprising tax information
relating to two or more tax liens, tax deeds, and/or non-
ad valorem (NA V) liens levied on two or more pieces of
real property located in at least a first local government
jurisdiction and a second local government jurisdiction;
determine one or more ratings for the two or more tax
liens, tax deeds, and/or NA V liens, wherein the one or more
ratings for the two or more tax liens, tax deeds, and/or NA V
liens are determined based, at least in part, by the at least one
computer using a categorization protocol adapted for
categorizing local government tax information, and wherein the
determined one or more ratings comprise category values
indicating a level of desirableness of the underlying tax liens,
tax deeds, and/or NA V liens to a particular class of investor;
purchase the two or more tax liens, tax deeds, and/ or
NAV liens;
associate the purchased two or more tax liens, tax deeds,
and/or NA V liens into desired segment information based, at
least in part, on the determined ratings;
make the one or more ratings and desired segment
information accessible over a network to one or more third
party computers; and match buyers and sellers for the
purchased two or more tax liens, tax deeds, and/or NA V liens
based, at least in part, on the one or more ratings and desired
segment information.
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Application 14/695,952
Appellants appeal the following rejection:
Claims 1-24 stand rejected under 35 U.S.C. § 101 as being directed to non-
statutory subject matter.
PRINCIPLES OF LAW
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, has long interpreted § 101 to include implicit
exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are
not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'!, 134 S.Ct. 2347,
2354 (2014).
In determining whether a claim 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. See Alice, 134 S. Ct.
at 2356 ("On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk."); Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in
petitioners' application explain the basic concept of hedging, or protecting
against risk."); Diamond v. Diehr, 450 U.S. 175, 184 (1981) ("Analyzing
respondents' claims according to the above statements from our cases, we
think that a physical and chemical process for molding precision synthetic
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Application 14/695,952
rubber products falls within the § 101 categories of possibly patentable
subject matter."); Parker v. Flook, 437 U.S. 584, 594--95 (1978)
("Respondent's application simply provides a new and presumably better
method for calculating alarm limit values."); Gottschalk v. Benson, 409 U.S.
63, 64 (1972) ("They claimed a method for converting binary-coded decimal
(BCD) numerals into pure binary numerals.").
The patent-ineligible end of the spectrum includes fundamental
economic practices, Alice, 134 S. Ct. at 2357; Bilski, 561 U.S. at 611;
mathematical formulas, Parker, 437 U.S. at 594--95; and basic tools of
scientific and technological work, Gottschalk, 409 U.S. at 69. On the patent-
eligible side of the spectrum are physical and chemical processes, such as
curing rubber, Diamond, 450 U.S. at 184 n.7, "tanning, dyeing, making
waterproof cloth, vulcanizing India rubber, smelting ores," and a process for
manufacturing flour, Gottschalk, 409 U.S. at 69.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. 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.
In addition, the Federal Circuit has held that if a method can be
performed by human thought alone, or by a human using pen and paper, it is
merely an abstract idea and is not patent-eligible under § 101. Cy her Source
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A]
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Appeal2017-008895
Application 14/695,952
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101.").
Claims involving data collection, analysis, and display are directed to
an abstract idea. Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016) (holding that "collecting information, analyzing it, and displaying
certain results of the collection and analysis" are "a familiar class of claims
'directed to' a patent ineligible concept"); see also In re TL! Commc'ns LLC
Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016).
Claims that recite an improvement to a particular computer
technology have been found patent eligible. See, e.g., McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1314--15 (Fed. Cir. 2016)
( dete1mining claims not abstract because they "focused on a specific
asserted improvement in computer animation").
ANALYSIS
The Examiner determines that the claims are directed to categorizing
and rating of tax liens and tax deeds which is a fundamental economic
practice. Final Act. 3. The Examiner also determines that the claims are
also directed to using categories to organize, store and transmit information.
Ans. 2.
We agree with the Examiner that the claims are directed to an abstract
idea. The steps of the claim 1, for example, include steps of receiving
information or data; analyzing data by determining one or ratings for two or
more liens or deeds using a categorization protocol; transmitting data by
purchase of two or liens or deeds; analyzing data by associating the
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Application 14/695,952
purchased liens and deeds into desired segment information; displaying data
by making one or more ratings and desired segment information accessible
over a network; and analyzing data by matching buyers and sellers. As such,
claim 1 is directed to the collection, analysis and display of data and
therefore is clearly directed to an abstract idea.
The Examiner finds that the elements of the claims in addition to the
abstract idea do not amount to significantly more than the abstract idea and
are merely instructions to implement the abstract idea on a computer. Final
Act. 3. The Examiner further finds that the recited generic computer
performs generic computer functions that are well-understood, routine and
conventional activities previously known in the industry. Final Act. 3. We
agree.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the present application arises in a technological
context and solves a particular technical problem in a particular field. Brief
9. In support of this argument, Appellants argue that the series of
categorization and ranking protocols leverage both quantitative (i.e.,
mathematical) and qualitative insights and recite a specific implementation
of a solution to a problem in the field of valuating and buying/selling of tax
assets and saves hundreds of man-hours of research by potential investors.
Brief 11. The Appellants also argue that the claims are directed to a specific
improvement in computer functionality. Brief 13. The Appellants do not
explain what the technical problem that is solved is, or how the computer
functionality is approved. In addition, relying on a computer to perform
tasks more quickly or more accurately is insufficient to render a claim patent
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eligible. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed.
Cir. 2015) (citing Alice, 134 S. Ct. at 2359).
We are not persuaded of error on the part of the Examiner by
Appellants' argument that categorizing and rating tax liens and tax deeds is
not a fundamental economic practice because the Examiner also relies on the
determination that the claims are directed to using categories to organize,
store and transmit information in determining that the claims are directed to
an abstract idea. Ans. 2. Therefore, even if the Appellants are correct that
the claims are not directed to a fundamental economic practice, the claims
are still directed to an abstract idea on this basis.
We are not persuaded of error on the part of the Examiner by
Appellants' argument that the claims recite significantly more than the
abstract idea because there is no evidence or prior art of record cited or even
alleged to teaching any of the six claim limitations. Brief 12-13. To the
extent Appellants maintain that the limitations of claim I necessarily amount
to "significantly more" than an abstract idea because the claimed apparatus
is allegedly patentable over the prior art, Appellants rnisapprehend the
controlling precedent Although the second step in the Alice/li4ayo
framework is termed a search for an "inventive concept," the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for '"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. A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 132 S. Ct. at 1304.
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In view of the foregoing, we will sustain this rejection as it is directed
to claim 1. We will sustain the rejection as it is directed to the remaining
claims because the Appellants have not argued the separate eligibility of
these claims.
DECISION
We affirm the Examiner's § 101 rejection.
TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv)(2009).
ORDER
AFFIRMED
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