Ex Parte Leidner et al

Patent Trial and Appeal Board

Jul 24, 2018

13423127 (P.T.A.B. Jul. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/423, 127 03/16/2012
79804 7590 07/26/2018
Duncan Galloway Egan Greenwald, PLLC
9750 Ormsby Station Road, Suite 210
Louisville, KY 40223
FIRST NAMED INVENTOR
Jochen L. Leidner
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.
113027 .000076US 1 1201
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
07/26/2018 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):
kduncan@dgeglaw.com
carnold@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOCHEN L. LEIDNER and FRANK SCHILDER
Appeal2017-004959
Application 13/423,127 1
Technology Center 3600
Before HUNG H. BUI, MICHAEL J. ENGLE, and PHILLIP A. BENNETT,
Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-10, 12-30, 32--40, and 42--48, which
are all the claims pending in the application. Claims 11, 31, and 41 are
canceled. Claims 49-56 are withdrawn. Claims App'x. We have
jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM. 2
1 According to Appellants, the real party in interest is Thomson Reuters
Global Resources. App. Br. 1.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed
October 10, 2016; Reply Brief ("Reply Br.") filed March 6, 2017;
Examiner's Answer ("Ans.") mailed January 4, 2017; Final Office Action
("Final Act.") mailed May 10, 2016; and original Specification ("Spec.")
filed March 16, 2012.
Appeal2017-004959
Application 13/423, 127
STATEMENT OF THE CASE
Appellants' invention relates to "enhanced analytics that enable
identifying and measuring and/or scoring risks associated with an entity,
e.g., a publicly traded company, based at least in part on content obtained
from news and other reliable sources and generating an entity specific risk
profile based on entity-specific risks" and "predicting a movement in a
security associated with an entity." Spec. ,r 17; Abstract.
Claims 1, 21, and 40 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below with disputed limitations in
italics:
1. A computer implemented method comprising:
a) processing by a computer a set of textual
information to automatically identify a text string indicative of
risk associated with an entity by identifying within the text string
an entity tag and a pre-defined word, pattern, or phrase indicative
of a defined risk type;
b) automatically analyzing by a computer a set of
linguistic characteristics of the text string and applying a learned
risk taxonomy to the text string to identify a risk associated with
the entity, transforming textual information related to the
identified risk into a numerical expression;
c) based upon the step of automatically analyzing,
automatically generating by the computer an entity-specific risk
profile ("ERP") associated with the entity, the entity-specific
risk profile comprising a first risk component associated with a
first risk type and a second risk component associated with a
second risk type, each risk component comprising a numerical
expression derived from an identified risk associated
respectively, with either the first or second risk type;
d) automatically comparing a first entity-specific risk
profile associated with a first entity with a second entity-specific
risk profile associated with the first or an other entity, the first
and second risk components associated with the first and second
entity-specific risk profiles are compared to derive a difference;
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e) automatically identifying trend data based on the
derived difference and generating a forecast based at least in part
on the trend data; and
f) storing the first and second entity-specific risk
profiles and the forecast in a memory accessible by the computer.
Amend. For Non-Compliant App. Br. 2 (Claims App'x).
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 1-10, 12-30, 32--40, and 42--48 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter. Final Act. 6-7.
(2) Claims 1, 21, and 40 stand rejected under 35 U.S.C. § 112, first
paragraph as failing to comply with the written description requirement.
Final Act. 7-9.
(3) Claims 1, 21, and 40 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite. Final Act. 9-10.
(4) Claims 1, 3, 5-8, 10, 12, 14, 18, 21, 23, 25-28, 30, 32, 34, and
38 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over
Rewari et al. (US 2009/0055242 Al; published Feb. 26, 2009; "Rewari")
and Hoogs et al. (US 2005/0071217 Al; published Mar. 31, 2005; "Hoogs").
Final Act. 11-35.
(5) Claims 2, 4, 13, 15, 16, 22, 24, 33, 35, and 36 stand rejected
under 35 U.S.C. § I03(a) as being unpatentable over Rewari, Hoogs, and
Lawrence et al. (US 2006/0004878 Al; published Jan. 5, 2006;
"Lawrence"). Final Act. 35--43.
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(6) Claims 9 and 29 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Rewari, Hoogs, and Laxman et al. (US
2010/0100517 Al; published Apr. 22, 2010). Final Act. 43--46.
(7) Claims 17 and 37 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Rewari, Hoogs, and Hollas (US 7,908,194 B2;
issued Mar. 15, 2011 ). Final Act. 46--48.
(8) Claims 19 and 39 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Rewari, Hoo gs, and Dudat et al. (US 2005/010217 5
Al; published May 12, 2005). Final Act. 48-50.
(9) Claim 20 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Rewari, Hoogs, and Nordberg et al. (US 2006/0129452
Al; published June 15, 2005). Final Act. 50---51.
(10) Claims 40, 42--46, and 48 stand rejected under
35 U.S.C. § I03(a) as being unpatentable over Rewari, Hoogs, and
Lawrence. Final Act. 51---61.
(11) Claim 47 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Rewari, Hoogs, Lawrence, and Laxman. Final Act. 61-
62.
ANALYSIS
35 U.S. C. § 1 OJ: Claims 1-10, 12-30, 32--40, and 42--48
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 79 (2012), "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
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applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "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."' Id. ( quoting Mayo, 566 U.S. at 72-73).
In rejecting claims 1-10, 12-30, 32--40, and 42--48 under 35 U.S.C.
§ 101, the Examiner determines (1) these claims are directed to an abstract
idea of "generating and comparing risk profiles of entities" and (2) the
additional elements in the claims, whether taken separately or in an ordered
combination, are all steps for data acquisition, data manipulation, and data
reporting related to generating and comparing risk profiles that do not
amount to significantly more than the abstract idea, because (i) "the claims
do not recite an improvement to another technology or technical field, nor do
they recite an improvement to the functioning of the computer itself' and
(ii) "the claims require no more than a generic computer ... to perform
generic computer functions that are well-understood, routine, and
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conventional activities previously known to the industry." Final Act. 6-7;
Ans. 4--10. The Examiner also determines these claims are directed to an
abstract idea because the process recited in these claims can be implemented
mentally or performed manually by a human with pen and pencil. Ans. 7;
see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed.
Cir. 2011).
Alice/Mayo--Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue "the
Examiner's characterization of the claim is overly broad," citing Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and a memorandum from
Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, to
Patent Examining Corps, Recent Subject Matter Eligibility Decisions (May
19, 2016), which warn against "describing the claims at such a high level of
abstraction and untethered from the language of the claims" and suggest
such an abstraction will "all but ensure[] that the exceptions to § 101
swallow the rule." App. Br. 11-12 (quoting En.fish, 822 F.3d at 1336).
According to Appellants, "[t]he subject matter of the claimed invention is far
removed from the concepts of risk hedging, intermediated settlement, and
fundamental mathematical algorithms and does not involve a 'fundamental
economic practice' or 'method of organizing human activity."' App. Br. 12.
Appellants then argue "Claim 1 is not merely directed towards an
abstract idea" because:
(1) the Supreme Court's decision in Alice "narrowed the concept of
'abstract ideas' to those concepts which are fundamental and
long prevalent, and possibly to concepts which have been in use
for an extensive period of time" such as "the risk hedging
claims of Bilski and the intermediate settlement concept at issue
in Alice," whereas the subject matter of Appellants' claims
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relates to "generating and comparing risk profiles of entities"
that is "far removed from the concepts of risk hedging and
intermediated settlements and solves a problem unique to
mining risks efficiently and accurately from large volumes of
textual content using computational linguistic techniques and
generating entity-specific risk profiles";
(2) "[l]ike the claims at issue in Enfzsh and [McRO, Inc. v. Bandai
Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016)],
the claimed invention provides a technological improvement
that is not directed towards an abstract idea. The claimed
method provides an improvement over the prior art methods
that can produce results accurately and efficiently, where
manual methods could not have possibly yielded usable
results"· and
'
(3) like DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellants' "invention also solves a problem
specific to the computer or virtual environment, one specific to
the Internet that did not exist before the advent of computers
and computer technology" and "cannot possibly be achieved by
a human using mental steps or on pen and paper."
App. Br. 11-15. According to Appellants, "generating, processing,
communicating and transforming electronic data for risk mining and
management and the creation of entity-specific risk profiles of the present
invention solves a problem specific to the computer field not related to the
alleged abstract idea." App. Br. 14.
Appellants' arguments are not persuasive. At the outset, we note
Appellants' characterizations of the Supreme Court's decision in Alice and
the Federal Circuit's decisions in Enfzsh and McRO are incorrect. The
Supreme Court's decision in Alice is not limited to those "business method"
concepts that are "fundamental and long prevalent" such as "the risk hedging
claims of Bilski and the intermediate settlement concept at issue in Alice," as
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Appellants argue. App. Br. 13. Rather, as recognized by the Examiner, the
Federal Circuit has identified numerous examples of "business method"
concepts as "abstract ideas" that are not fundamental or, long prevalent.
Ans. 5 ( citing PTO' s examples located at
httQs://www.usnto.gov/sites/defauH/files/documents/ieg-duly-2015-grs.Qdt).
Appellants' Specification is directed to "identifying and measuring
and/or scoring risks associated with an entity, e.g., a publicly traded
company, based at least in part on content obtained from news and other
reliable sources and generating an entity specific risk profile based on entity-
specific risks" and "predicting a movement in a security associated with an
entity." Spec. ,r 17; Abstract. Embodiments of Appellants' Specification,
such as depicted in Figures 17 A-17B, describe generating an entity-specific
risk profile (ERP) and using ERP to predict stock movement. Thus, we
agree with the Examiner that the claims are directed to an abstract idea of
"generating and comparing risk profiles of entities" as "an idea of itself."
Ans. 4. All the steps/functions recited in Appellants' claims 1, 21, and 40,
including: (a) "processing ... a set of textual information";
(b) "automatically analyzing ... a set of linguistic characteristics of the text
string"; ( c) "automatically generating . . . an entity-specific risk profile
('ERP') associated with the entity"; ( d) "automatically comparing a first
entity-specific risk profile associated with a first entity with a second entity-
specific risk profile associated with the first or an other entity ... to derive a
difference"; ( e) "automatically identifying trend data ... generating a
forecast"; and (f) "storing the first and second entity-specific risk profiles
and the forecast" are abstract processes of collecting, storing, and analyzing
information of a specific content, e.g., news/media content regarding an
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entity to assess scoring risks and to generate a forecast in a security
associated with that entity.
Information, as such, is intangible, and data analysis, comparisons,
and algorithms, by themselves, are abstract ideas. See, e.g., Microsoft Corp.
v. AT & T Corp., 550 U.S. 437,451 n.12 (2007); Alice, 134 S. Ct. at 2355;
Parker v. Flook, 437 U.S. 584, 589, 594--95 (1978) ("Reasoning that an
algorithm, or mathematical formula, is like a law of nature, Benson applied
the established rule that a law of nature cannot be the subject of a patent");
Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972). "[C]ollecting information
collection and analysis, including when limited to particular content ( which
does not change its character as information)," and "analyzing information
by steps people go through in their minds, or by mathematical algorithms,
without more," are "within the realm of abstract ideas." Elec. Power Grp.,
LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see also
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed.
Cir. 2015); Digitech, 758 F.3d at 1351; CyberSource, 654 F.3d at 1370.
That is, "[ w ]ithout additional limitations, a process that employs
mathematical algorithms to manipulate existing information to generate
additional information is not patent eligible." Digitech, 758 F.3d at 1349-50
("Data in its ethereal, non-physical form is simply information that does not
fall under any of the categories of eligible subject matter under section
101 ").
As also recognized by the Examiner (Ans. 7), predicting movement of
a price of a security using risk profiles can also be performed mentally or
using a pen and paper. See CyberSource, 654 F.3d at 1372-73 ("[A] method
that can be performed by human thought alone is merely an abstract idea and
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is not patent-eligible under§ 101."); see also In re Comiskey, 554 F.3d 967,
979 (Fed. Cir. 2009) ("[M]ental processes-or processes of human thinking-
standing alone are not patentable even if they have practical application.");
Gottschalkv. Benson, 409 U.S. at 67 ("Phenomena of nature ... , mental
processes, and abstract intellectual concepts are not patentable, as they are
the basic tools of scientific and technological work" ( emphasis added)).
Additionally, mental processes remain unpatentable even when automated to
reduce the burden on the user of what could be done mentally with pen and
paper. Bancorp Servs., L.L.C. v. Sun Life Assurance Co., 687 F.3d 1266,
1278 (Fed. Cir. 2012) ("[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter."); CyberSource, 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."). Contrary to Appellants' arguments, all the
steps/functions recited in Appellants' claims 1, 21, and 40, including:
(a) "processing ... a set of textual information"; (b) "automatically
analyzing ... a set of linguistic characteristics of the text string";
( c) "automatically generating . . . an entity-specific risk profile ("ERP")
associated with the entity"; ( d) "automatically comparing a first entity-
specific risk profile associated with a first entity with a second entity-
specific risk profile associated with the first or another entity ... to derive a
difference;" ( e) "automatically identifying trend data ... generating a
forecast" and (f) "storing the first and second entity-specific risk profiles and
the forecast" are nothing more than "processing text, analyzing the text to
identify risk, generat[ing] a risk profile based on the analysis, compar[ing]
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risk profiles, identify[ing] trend data, and stor[ing] the result" that can also
be performed mentally or using pen and paper. Ans. 7.
Separately, we note Appellants' claims 1, 21, and 40 do not improve
the performance of a computer or solve a problem specific to computers or
computer networks. Appellants' Specification and arguments do not
demonstrate the claims "improve the way a computer stores and retrieves
data in memory," as the claims in Enfish did via a "self-referential table for a
computer database." See Enfish, 822 F.3d at 1336, 1339.
In fact, neither the steps recited in Appellants' claims 1, 21, and 40,
nor the rest of Appellants' Specification supply any description or
explanation as to how these data processing steps are intended to provide:
( 1) a "solution ... necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks,"
as explained by the Federal Circuit in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014); (2) "a specific improvement to
the way computers operate," as explained in Enfish, 822 F.3d at 1336; or
(3) an "unconventional technological solution ... to a technological
problem" that "improve[ s] the performance of the system itself," as
explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1302 (Fed. Cir. 2016).
Accordingly, we agree with the Examiner that claims 1-10, 12-30,
32--40, and 42--48 are directed to an abstract idea of "generating and
comparing risk profiles of entities."
Alice/Mayo--Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue the claim
elements, taken as a whole, amount to significantly more than an abstract
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idea because: (1) "subject matter [that] provides something that cannot
possibly be done on pen and paper ... may be patentable subject matter,"
citing California Institute of Technology v. Hughes Communications, Inc.,
59 F. Supp. 3d 974 (C.D. Cal. 2014); (2) "[t]he entity-specific risk profile of
the claimed invention is a specific data structure that comprises more than
one risk type" and, as such, "is significantly more than the alleged abstract
idea"; and (3) the "Examiner has not considered each and every claim
element of all the claims both independently and as an ordered
combination." App. Br. 16-19.
We disagree. At the outset, we note Appellants' reliance on
California Institute of Technology is misplaced because (1) district court
decisions are not binding legal authority on the Board, and (2) the district
court's holding that claims directed to "methods of error correction in data
transmission" were not directed to an abstract idea is not analogous to
Appellants' claims being directed to "generating and comparing risk profiles
of entities."
According to the Supreme Court in Alice, the second step is to "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 (quoting Mayo, 566 U.S. at 72-73). The Federal Circuit cases on point
include (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir. 2014) and (2) Amdocs (Israel) Ltd. v. Openet Telecom, Inc. 841
F.3d 1288 (Fed. Cir. 2016).
In DDR and Amdocs, the Federal Circuit opted to bypass Alice step 1
in favor of step 2. In particular, the Federal Circuit found DDR 's claims
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contain an "inventive concept" under Alice step 2 because DDR 's claims
( 1) do not merely recite "the performance of some business practice known
from the pre-Internet world," such as previously disclosed in Bilski and
Alice, but instead (2) provide a technical solution to a technical problem
unique to the Internet, i.e., a "solution ... necessarily rooted in computer
technology in order to overcome a problem specifically arising in the realm
of computer networks." DDR, 773 F.3d at 1257. Likewise, the Federal
Circuit also found Amdocs' claims contain a sufficient "inventive concept"
because like DDR, Amdocs' claims "entail[] an unconventional
technological solution ( enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases)" and "improve the performance of the system itself."
Amdocs, 841 F.3d at 1300, 1302.
Under current Federal Circuit precedent, an "inventive concept" under
Alice step 2 can be established by showing, for example, that the patent
claims:
(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks" (see DDR, 773 F.3d
at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016); or
(3) "entail[] an unconventional solution ([e.g.,]
enhancing data in a distributed fashion) to a technological
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problem ([e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1, 21, and 40 that contains any "inventive
concept" or adds anything "significantly more" to transform the abstract
concept into a patent-eligible application. Alice, 134 S. Ct. at 2357. As
discussed supra, we are not persuaded the added computer elements such as
a processor and memory can transform the abstract idea into a patent-eligible
invention. As our reviewing court has observed, "after Alice, there can
remain no doubt: recitation of generic computer limitations does not make
an otherwise ineligible claim patent-eligible." DDR, 773 F.3d at 1256
( citing Alice, 134 S. Ct. at 2358)).
Additional Argument
Appellants argue that the claims do not seek to tie up or preempt an
entire field, i.e., an abstract idea of "generating and comparing risk profiles
of entities." App. Br. 15. However, this argument is not persuasive because,
although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). "Where a patent's claims are deemed only to disclose patent
ineligible subject matter" under the Alice/Mayo framework, "preemption
concerns are fully addressed and made moot." Id.
Because Appellants' claims 1, 21, and 40 are directed to a patent-
ineligible abstract concept and do not recite something "significantly more"
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under the second prong of the Alice analysis, we sustain the Examiner's
rejection of claims 1-10, 20-30, 32--40, and 42--48 under 35 U.S.C. § 101.
35 U.S.C. § 112, First Paragraph: Claims 1, 21, and 40
In support of the§ 112(a) rejection of claim 1 and, similarly, claim 21,
the Examiner finds the limitations: (1) "automatically generat[ing by
the computer] an entity-specific risk profile ('ERP') associated with the
entity"; (2) "each risk component comprising a numerical expression derived
from an identified risk"; and (3) "the first and second risk component
associated with the first and second entity specific risk profiles are compared
to derive a difference" are not disclosed or supported in Appellants'
Specification. Final Act. 7-8. In particular, the Examiner acknowledges
paragraph 21 of Appellants' Specification describes the ERP, but asserts "it
is unclear exactly how to generate an ERP or what it would contain." Final
Act. 8. Similarly, the Examiner acknowledges paragraph 11 of Appellants'
Specification describes numerical expressions, but asserts "there is no
teaching of how this is done [i.e., how a numerical expression is derived
from the identified risk]." Final Act. 8.
Appellants contend the Examiner erred because: ( 1) paragraphs 7 0-
109 of Appellants' Specification describe a detailed process including all
sub-processes, network and physical components for the limitation
"automatically generating by the computer an entity-specific risk profile
('ERP') associated with the entity"; (2) paragraphs 120 and 131 describe the
limitation "each risk component comprising a numerical expression derived
from an identified risk"; and (3) paragraphs 18, 91, 94--95, and 113 provide
support for the limitation "whereby the first and second risk components
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associated with the first and second entity-specific risk profiles are
compared to derive a difference." App. Br. 7-9.
In response, the Examiner maintains the position that ( 1) "it is unclear
to the Examiner what an ERP contains, what structure an ERP has, and how
to generate one"; (2) "[m]erely providing examples of scores and statements
regarding 'numerical expressions' does not provide adequate detail on how
an entity-specific risk profile is generated"; and (3) "[b ]ecause the disclosure
is completely lacking regarding the structure and composition of an ERP ...
one skilled in the art would not know how to program a computer to perform
the steps of generating an ERP, derive a numerical expression from risk, or
derive a difference based on a comparison of profiles." Ans. 11-12.
We disagree with the Examiner. At the outset, we note written
description requirement is separate and distinct from the enablement
requirement under 35 U.S.C. § 112, first paragraph. See Ariad Pharms., Inc.
v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). For
example, to comply with the enablement requirement under 35 U.S.C. § 112,
first paragraph, Appellants' Specification must adequately teach how to
make and how to use a claimed invention throughout its scope, without
undue experimentation. Plant Genetic Sys. N. V. v. DeKalb Genetics Corp.,
315 F.3d 1335, 1339 (Fed. Cir. 2003). Naturally, the specification must
teach those of skill in the art "how to make and how to use the invention as
broadly as it is claimed." In re Vaeck, 947 F.2d 488,496 (Fed. Cir. 1991).
In contrast to the enablement requirement, the written description
requirement under 35 U.S.C. § 112, first paragraph only requires Appellants
to "reasonably convey[] to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date." Ariad, 598
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F.3d at 1351. "[T]he level of detail required to satisfy the written
description requirement varies depending on the nature and scope of the
claims and on the complexity and predictability of the relevant technology."
Id. However, "the disclosure as originally filed does not have to provide in
haec verba support for the claimed subject matter at issue." Purdue Pharma
L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed. Cir. 2000). In some cases,
"drawings alone may provide a 'written description' of an invention as
required by§ 112." Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1565 (Fed.
Cir. 1991 ). Regardless, the disclosure must convey with reasonable clarity
to those skilled in the art that the inventor was in possession of the invention.
Id. at 1563-1564. Here, Appellants have shown that there is sufficient
structure and description in the specification as filed.
For example, the limitation "automatically generating by the computer
an entity-specific risk profile ('ERP') associated with the entity" is recited as
part of the original claim 1 as filed. Paragraph 70 of Appellants'
Specification is a heading for "Generating Entity Risk Profiles (ERPs ). "
Paragraphs 7 4--88 describe an entity-specific risk profile generation system,
shown in Figure 15. Paragraphs 90-95 describe a method of generating an
ERP, shown in Figure 17 A, and a method of using ERPs to predict stock
movement, shown in Figure 17B.
Similarly, the limitation "each risk component comprising a numerical
expression derived from an identified risk associated respectively, with
either the first or second risk type" and the limitation "whereby the first and
second risk components associated with the first and second entity-specific
risk profiles are compared to derive a difference" are supported by
paragraphs 18, 92, 94--95, 113, 120, and 131 of Appellants' Specification.
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Because Appellants have "reasonably convey[ ed] to those skilled in
the art that the inventor had possession of the claimed subject matter as of
the filing date," we do not sustain the § 112, first paragraph rejection of
claims 1, 21, and 40 for failure to comply with the "written description"
requirement.
35 U.S.C. § 112, Second Paragraph: Claims 1, 21, and 40
Similar to the written description rejection, the Examiner finds the
same limitations, including: (1) "automatically generat[ing by the computer]
an entity-specific risk profile ('ERP') associated with the entity"; (2) "each
risk component comprising a numerical expression derived from an
identified risk"; and (3) "the first and second risk component associated with
the first and second entity specific risk profiles are compared to derive a
difference" recited in claims 1, 21, and 40 as indefinite under 35 U.S.C.
§ 112, second paragraph. Final Act. 9-10.
We disagree with the Examiner. For the same reasons discussed in
connection with the "written description," we do not sustain the Examiner's
rejection of claims 1, 21, and 40 as indefinite under 35 U.S.C. § 112, second
paragraph.
35 U.S.C. § 103(a):
Claims 1-3, 7, 8, 11-13, 15-17, 21, 22, 25-27, 29, and 30
In support of the obviousness rejection of claim 1 and similarly, claim
21, the Examiner finds the combination of Rewari and Hoo gs teaches all the
claim limitations. App. Br. 11-15. For example, the Examiner finds Rewari
teaches most aspects of Appellants' claimed method including:
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a) "processing by a computer a set of textual information to
automatically identify a text string indicative of risk associated
with an entity by identifying within the text string an entity tag
and a pre-defined word, pattern, or phrase ... " (Rewari ,r,r 7, 25,
30, 42, 43, 47);
b) "automatically analyzing by a computer a set of linguistic
characteristics of the text string and applying a learned risk
taxonomy to the text string to identify a risk associated with the
entity, transforming textual information related to the identified
risk into a numerical expression" (Rewari ,r,r 25, 30, 48);
c) "based upon the step of automatically analyzing,
automatically generating by the computer an entity-specific risk
profile ("ERP") associated with the entity, the entity-specific
risk profile comprising a first risk component associated with a
first risk type and a second risk component associated with a
second risk type, each risk component comprising a numerical
expression derived from an identified risk associated
respectively, with either the first or second risk type" (Rewari
,r,r 32, 43, 48).
Final Act. 11-13 ( emphasis added).
To support the conclusion of obviousness, the Examiner relies on
Hoogs for teaching "a defined risk type" and the remaining limitations:
d) "automatically comparing a first entity-specific risk
profile associated with a first entity with a second entity-specific
risk profile associated with the first or an other entity, whereby
the first and second risk components associated with the first and
second entity-specific risk profiles are compared to derive a
difference" (Hoogs ,r,r 25, 45--46);
e) "automatically identifying trend data based on the derived
difference and generating a forecast based at least in part on the
trend data" (Hoogs ,r,r 3-5, 49-51); and
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f) "storing the first and second entity-specific risk profiles
and the forecast in a memory accessible by the computer" (Hoo gs
,r 22).
Final Act. 13-15 (emphasis in original).
Appellants dispute the Examiner's factual findings regarding Rewari
and Hoo gs. App. Br. 23-29. In particular, Appellants acknowledge Rewari
teaches an "apparatus, systems, and methods for information access
associated with user-relevant information content extraction" including "a
market relationship module [ (MRM)] used to index individually relevant
information content based on user need to formulate queries for later use."
App. Br. 7 (citing Rewari ,r,r 1, 6-7, Abstract). However, Appellants argue
Rewari does not teach ( 1) "identifying text strings indicative of risks or
identifying risks as claimed"; (2) "generating an entity-specific risk profile
as claimed"; and (3) "comparing entity-specific risks [i.e., risk profiles to
derive a difference] as claimed." App. Br. 25-27. According to Appellants,
Rewari creates "market relationships between entities and market topics
along risk/reward lines," and focuses on "determining the relationships
between a set of entities and a set of market topics or events," but does not
teach or suggest automatically "identify[ing] a text string indicative of risk
associated with an entity" and "generating an entity-specific risk profile"
as claimed. App. Br. 25-27 ( citing Rewari ,r,r 42--43).
Appellants also argue "Hoogs does not cure the deficiencies noted
above with respect to Rewari" and "Hoogs does not teach a risk difference
as claimed." App. Br. 28-29; Reply Br. 5. According to Appellants, Hoogs
teaches determining similarities of patterns, but not Appellants' claimed
"[risk] difference" which is derived by "comparing a first entity-specific risk
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profile associated with a first entity with a second entity-specific risk profile
associated with the first or another entity" as recited in claims 1 and 21.
Reply Br. 5.
In response, the Examiner takes the position that:
( 1) "Rewari explicitly discloses the use of statistical and
probabilistic learning techniques (i1[0048]) to comprehend
market relationships between one or more market entities and
one or more topics, including risk (see i-f[0042]-[0043])";
(2) "[t]he broadest reasonable interpretation of the claimed
'entity-specific risk profile' appears to include any risk related
data regarding an entity" as disclosed by Rewari; and
(3) Hoogs, instead of Rewari, teaches the comparison of
entity-specific risk profiles (see Hoogs ,r,r 45--46).
Ans. 12-14 (emphasis added).
Appellants' arguments are persuasive. The claimed "entity-specific
risk profile" is specifically defined as comprising two risk components: "a
first risk component associated with a first risk type and a second risk
component associated with a second risk type, each risk component
comprising a numerical expression derived from an identified risk associated
respectively, with either the first or second risk type." See claims 1 and 21.
As such, we agree with Appellants that the Examiner cannot broadly
interpret an "entity-specific risk profile" as encompassing any "market
relationship" or "market topics" including "risk" as disclosed by Rewari.
Reply Br. 4; see also Rewari ,r,r 41--42. Similarly, we also agree with
Appellants that Hoog's comparison of "a probe case against cases in the case
library" including determining "text patterns" is not the same as Appellants'
claimed "[risk] difference" which is derived by "comparing a first entity-
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specific risk profile associated with a first entity with a second entity-
specific risk profile associated with the first or an other entity" as recited in
claims 1 and 21. Reply Br. 5.
Because the Examiner has not accounted for these features and has
not shown the combination of Rewari and Hoo gs teaches or suggests all the
claim limitations, we do not sustain the Examiner's obviousness rejection of
independent claims 1 and 21, and their respective dependent claims 2-3, 7,
8, 11-13, 15-17, 22, 25-27, 29, and 30.
For the same reasons, we also do not sustain the Examiner's
remaining obviousness rejections, which include: (1) claims 2, 4, 13, 15, 15,
22, 24, 33, 35, and 36 as being obvious over Rewari, Hoogs, and Lawrence;
(2) claims 9 and 29 as being obvious over Rewari, Hoogs, and Laxman;
(3) claims 17 and 37 as being obvious over Rewari, Hoogs, and Hollas;
(4) claims 19 and 39 as being obvious over Rewari, Hoogs, and Dudat;
(5) claim 20 as being obvious over Rewari, Hoogs, and Nordberg; (6) claims
40, 42--46, and 48 as being obvious over Rewari, Hoogs, and Lawrence; and
(7) claim 47 as being obvious over Rewari, Hoogs, Lawrence, and Laxman.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-10, 12-30, 32--40,
and 42--48 under 35 U.S.C. § 101. However, Appellants have demonstrated
the Examiner erred in rejecting: ( 1) claims 1, 21, and 40 under
35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement; (2) claims 1, 21, and 40 under 35 U.S.C. § 112,
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second paragraph as being indefinite; and (3) claims 1-10, 12-30, 32--40,
and 42--48 under 35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner's rejection of claims 1-10, 12-
30, 32--40, and 42--48 under 35 U.S.C. § 101. However, we REVERSE the
Examiner's rejections of (1) claims 1, 21, and 40 under 35 U.S.C. § 112,
first paragraph as failing to comply with the written description requirement;
(2) claims 1, 21, and 40 under 35 U.S.C. § 112, second paragraph as being
indefinite; and (3) claims 1-10, 12-30, 32--40, and 42--48 under
35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1-10, 12-30, 32--40, and 42--48. See 37 C.F.R. § 4I.50(a)(l).
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
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