Ex Parte Lurtz et al

Patent Trial and Appeal Board

Oct 30, 2018

13670310 (P.T.A.B. Oct. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/670,310 11/06/2012
26379 7590 11/01/2018
DLA PIPER LLP (US )
2000 UNIVERSITY A VENUE
EAST PALO ALTO, CA 94303-2248
FIRST NAMED INVENTOR
Cheryll Lurtz
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.
367296-991101 1096
EXAMINER
SHARVIN, DAVID P
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
11/01/2018 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 US-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHERYLL LURTZ
and
SHERYL ROWLING
Appeal2017-009278
Application 13/670,310
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOV AN,
Administrative Patent Judges.
KRIVAK, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-24, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 The Appeal Brief identifies Morningstar, Inc. as the real party in interest
(App. Br. 1 ).
Appeal2017-009278
Application 13/670,310
STATEMENT OF THE CASE
Appellants' invention is directed to a "portfolio management analysis
system and method" by which "out-of-bound accounts can be easily
identified and rebalanced" (Title ( capitalization altered); Abstract).
Claims 1, 7, 13, and 19 are independent. Independent claim 1,
reproduced below, is exemplary of the subject matter on appeal.
1. A portfolio management analysis system, comprising:
an analysis unit, wherein the analysis unit comprises at
least a computer processor which, when executed, performs a
method, the method comprising;
storing a plurality of sets of portfolio data, each set
representing portfolio data for a client of a user and having a
plurality of classes of investments, a plurality of values for each
investment in each class, a plurality of subclasses of
investments, a plurality of values for each investment in each
subclass, a target value for each class, and a target value for
each subclass;
calculating one or more change indicators for each set of
portfolio data for each client, wherein each change indicator is
one of an out of balance indicator for each class and subclass of
investment, a cash need indicator, a cash to invest indicator, and
a tax loss harvesting opportunity indicator; and
generating, by the processor of the analysis unit, a user
interface that displays, simultaneously, the one or more change
indicators for each of the clients of the user.
REJECTION
The Examiner rejected claims 1-24 under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
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ANALYSIS
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable" (Alice Corp. Pty.
Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(2013)). The Supreme Court in Alice reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of these concepts" (Alice, 134 S. Ct. at
2355). The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea (id.). The Court acknowledged in Mayo that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas" (Mayo, 566 U.S. at 71). We, therefore, look
to whether the claims focus on a specific means or method that improves the
relevant technology or are instead directed to a result or effect that is the
abstract idea and merely invoke generic processes and machinery (see
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). If
the claims are not directed to an abstract idea, the inquiry ends. Otherwise,
the inquiry proceeds to the second step where the elements of the claims are
considered "individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
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patent-eligible application" (Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 79, 78)).
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice/ Mayo analysis, the Examiner
determines claims 1, 7, 13, and 19 are directed to "[a]nalyzing a portfolio ...
[ which is] a business process" ( Ans. 3 ). The Examiner also finds claims 1,
7, 13, and 19 are directed to "a portfolio management analysis system, which
is ... an abstract idea because it is similar to the examples identified by the
courts of collecting information, analyzing it, and displaying certain results
of the collection and analysis" (Ans. 2-3 (citing Electric Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016); Accenture Global Servs.,
GmbH v. Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013);
Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (US.), 687
F.3d 1266 (Fed. Cir. 2012)); Final Act. 4--5 (citing SmartGene, Inc. v.
Advanced Biological Labs., SA, 852 F. Supp.2d 42 (D.D.C. 2012), aff'd 555
F. App'x 950 (Fed. Cir. 2014); Cyberfone Sys., LLC v. CNN Interactive
Grp., Inc., 558 F. App'x 988 (Fed. Cir. 2014); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343 (Fed.
Cir. 2014))).
Appellants argue claims 1-24 together (App. Br. 5, 10-13). We select
claim 1 as representative. Claims 2-24 stand or fall with claim 1 (see
37 C.F.R. § 4I.37(c)(l)(iv)).
Appellants contend the Examiner erred in rejecting the claims, as the
claims are patent eligible as "directed to improving an existing technological
process ( analyzing a portfolio) like the lip synchronization and facial
expression control of animated characters in McRo" (App. Br. 11 (citing
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McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016))). Appellants also argue their claims, like the claims in Enfish, are not
directed to an abstract idea (App. Br. 6-7, 10-11).
We are not persuaded by Appellants' arguments. Appellants' claims
and Specification do not describe technological process improvements
similar to McRO (Ans. 3--4). Particularly, the court determined that McRO's
claim was not directed to an abstract idea because it "uses the limited rules
in a process specifically designed to achieve an improved technological
result" over "existing, manual 3-D animation techniques"; in contrast,
Appellants' claimed series of steps in claim 1 address a business problem of
identifying and viewing financial portfolios that require transactions (see
McRO, 837 F.3d 1299, 1316; Ans. 3; Spec. 5:18-19, Abstract). Appellants'
claim 1 merely requires calculating and displaying one "change indicator,"
such as "a cash need indicator" identifying a need for additional cash in
clients' portfolios (see claim 1 's "calculating one or more change indicators
for each set of portfolio data for each client, wherein each change indicator
is one" from a list of indicators; see also Spec. 9:4--5, 9:25-10:4). We are
not persuaded that Appellants' generated "change indicators ... are [a]
technical element that is [an] improvement in computer functioning" (see
Reply Br. 1 ).
Additionally, the claims in McRO were drawn to improvements in the
operation of a computer performing a task, rather than applying a computer
system to perform known data storing, processing, and displaying steps ( e.g.,
store sets of portfolio data, calculate one or more change indicators for each
set, and generate a user interface simultaneously displaying the one or more
change indicators as in Appellants' claim 1) (see McRO, 837 F.3d at 1314).
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Particularly, McRO's claims and Specification employ "rules that define
output morph weight set stream as a function of phoneme sequence and time
of said phoneme sequence" to "achieve an improved technological result"
(see McRO, 837 F.3d at 1310, 1316). McRO's improved technological result
allows "computers to produce 'accurate and realistic lip synchronization and
facial expressions in animated characters' that previously could only be
produced by human animators" (see McRO, 837 F.3d at 1313). Appellants
have not demonstrated their claimed calculating and displaying cash needs
of multiple client portfolios "allow the automation of further tasks
previous[ly] unable to be automated and in fact performed by a human being
just like the McRO animation" (see Reply Br. 2).
We also find Appellants' reliance on Enfzsh unavailing (App. Br. 6-7,
10-11). No technological advance is evident in Appellants' claims, and
Appellants have not provided evidence that their claims "improve the way a
computer stores and retrieves data in memory," as the claims in Enfzsh did
via a "self-referential table for a computer database" (see Enfzsh, 822 F.3d at
1336-37, 1339). Additionally, Appellants' Specification does not describe
how the claimed portfolio management analysis system effects specific
improvements to the computer processor, store unit, and user interface, or to
the way such systems operate (Ans. 3--4; see Enfzsh, 822 F.3d at 1336).
In fact, none of the steps and elements recited in Appellants' claims
provide, and nowhere in Appellants' Specification can we find, any
description or explanation as to how the claimed portfolio management
analysis system and method 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
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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 Enfzsh, 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, 1300, 1302 (Fed. Cir. 2016).
Rather, Appellants' claims are directed to a business process similar
to fundamental economic practices identified in Alice and Bilski (Ans. 3)
(see Alice, 134 S. Ct. at 2356-57 (intermediated settlement of traded or
exchanged financial obligations); and Bilski v. Kappas, 561 U.S. 593, 599,
611 (2010) (risk hedging during consumer transactions)). Appellants' claim
1 claims an improvement to a business process where computers are invoked
merely as a tool, which qualifies as an abstract idea (Ans. 3--4) (see
Bancorp, 687 F.3d at 1278 ("the 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."); and Fair Warning IP, LLC
v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) ("While the
claimed system and method certainly purport to accelerate the process of
analyzing audit log data, the speed increase comes from the capabilities of a
general-purpose computer, rather than the patented method itself.")). We
also agree with the Examiner that the claims are directed to collecting,
analyzing, and displaying information-an abstract idea similar to data
gathering and manipulation techniques previously identified by the courts
(Ans. 2-3; Final Act. 4--5) (see Content Extraction, 776 F.3d at 1347--48
(finding "[t]he concept of data collection, recognition, and storage is
undisputedly well-known," and "humans have always performed these
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functions"); Digitech Image Techs., LLC v. Elecs.for Imaging, Inc., 758
F.3d 1344, 1351 (Fed. Cir. 2014) (employing mathematical algorithms to
manipulate existing information); Intellectual Ventures I LLC v. Capital One
Bank (USA), 792 F.3d 1363, 1367, 1370 (Fed. Cir. 2015) ("tracking financial
transactions to determine whether they exceed a pre-set spending limit" and
notifying a user when a spending limit is reached, is an abstract idea); and
Electric Power Grp., 830 F.3d at 1353-54 (collecting information and
"analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more, [are] essentially mental processes
within the abstract-idea category")).
Accordingly, we agree with the Examiner claims 1, 7, 13, and 19 are
directed to an abstract idea.
Alice/Mayo-Step 2 (Inventive Concept)
Appellants also argue their "claims are directed to significantly more
than any alleged abstract idea" because "like Bascom, the present claims are
a particular ordered arrangement of elements ... that are a technical
improvement[] over the prior art ways of portfolio management" (App. Br.
10, 12 (citing Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,
827 F.3d 1341 (Fed. Cir. 2016))).
We disagree. Bascom's patent-eligible ordered combination of claim
limitations contain an "inventive concept [that] harnesses [a] technical
feature of network technology in a filtering system by associating individual
accounts with their own filtering scheme and elements while locating the
filtering system on an ISP [Internet Service Provider] server," thus
"improv[ing] the performance of the computer system itself' with a
"technology-based solution ... to filter content on the Internet that
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overcomes existing problems with other Internet filtering systems" (see
Bascom, 827 F.3d at 1350-52). Appellants' claims and Specification do not
identify a specific improvement to computer technology or computer
operation effected by the claims (Ans. 4). For example, Appellants'
Specification does not describe how the claimed "calculating one or more
change indicators for each set of portfolio data for each client" and
"generating, by the processor of the analysis unit, a user interface that
displays, simultaneously, the one or more change indicators for each of the
clients of the user" would improve computer technology or the computer's
operation (Ans. 4).
Appellants also argue their "claims have indicia of being directed to
significantly more" because "the claims receive[] data about the portfolio ...
and transform[] that data into one or more change indicators .... [ e Jach of
the change indicators is a different state" (App. Br. 12-13). Appellants
additionally assert "the claims exhibit interactivity (interaction with a user
via the user interface for the change indicators) that further shows that the
claims are significantly more than any abstract idea" (App. Br. 13).
We remain unpersuaded as the claims merely recite "calculating,
storing, and displaying data [which] are generic computer functions being
performed by generic components (a processor)" (Final Act. 3; Ans. 5---6; see
Spec. 5:1-5) (see Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715-16
(Fed. Cir. 2014) ("[a]dding routine additional steps such as updating an
activity log, requiring a request from the consumer to view the ad,
restrictions on public access, and use of the Internet does not transform an
otherwise abstract idea into patent-eligible subject matter.")). "[T]he use of
generic computer elements like a microprocessor or user interface" to
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perform conventional computer functions "do not alone transform an
otherwise abstract idea into patent-eligible subject matter" (FairWarning,
839 F.3d at 1096 (citing DDR Holdings, 773 F.3d at 1256)). As discussed
supra, we are also not persuaded the claimed "calculating one or more
change indicators" is more than generic data manipulation previously
identified by the courts as an abstract idea.
Further, with respect to Appellants' preemption argument (App. Br.
11 ), we note the McRO court explicitly "recognized that 'the absence of
complete preemption does not demonstrate patent eligibility"' (see McRO,
837 F.3d at 1315 (quotingAriosa 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"
(Ariosa, 788 F.3d at 1379).
Accordingly, claims 1, 7, 13, and 19, when considered "both
individually and 'as an ordered combination,"' amount to nothing more than
an attempt to patent the abstract idea embodied in the steps of the claims
(see Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78)).
Because we agree with the Examiner's analysis and find Appellants'
arguments insufficient to show error, we sustain the Examiner's § 101
rejection of independent claims 1, 7, 13, and 19, and dependent claims 2-6,
8-12, 14--18, and 20-24, for which no separate arguments are provided.
DECISION
The Examiner's decision rejecting claims 1-24 is affirmed.
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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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