Ex Parte Meyer

Patent Trial and Appeal Board

Oct 31, 2017

14260716 (P.T.A.B. Oct. 31, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/260,716 04/24/2014 William Meyer 44042-US1-CNT1 4001
23589 7590
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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 @ hovey williams, com
amalik @hovey williams .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM MEYER
Appeal 2016-002945
Application 14/260,7161
Technology Center 3600
Before BRUCE T. WIEDER, AMEE A. SHAH, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 7—18 and 23—27. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to “access[ing] data for a
plurality of different Social Security claiming strategies and then
1 According to Appellant, the real party in interest is Social Security
Solutions, Inc. (Appeal Br. 5.)
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Application 14/260,716
presenting] the data in a unique way that enables retirees and other people
to more quickly and easily comprehend, analyze, and compare the
strategies.” (Spec. 1 6.)
Claims 7, 13, and 23 are the independent claims on appeal. Claim 13
is illustrative. It recites:
13. A computer implemented method of assisting a couple in
selecting a Social Security claiming strategy, the method
comprising:
receiving in a computer personal and financial data for the
couple, the data including an expected life expectancy of each
partner of the couple;
accessing with the computer data for a plurality of Social
Security claiming strategies for the couple based on the personal
and financial data;
calculating which Social Security Claiming strategy is
preferred for the expected life expectancies of the couple and for
multiple other mortality combinations of the couple; and
presenting a graphical display on the computer or on
another computer in communication with the computer, the
graphical display illustrating which of the Social Security
claiming strategies is preferred for the expected life expectancies
of the couple and for the multiple other mortality combinations
of the couple.
REJECTIONS2
Claims 7—18 and 23—27 are rejected under 35 U.S.C. § 101 as directed
to non-statutory subject matter.
Claims 7 and 9 are rejected under 35 U.S.C. § 102(b) as anticipated by
Nichols (US 2011/0099123 Al, pub. Apr. 28, 2011).
2 Appellant does not appeal the rejection of claims 7—12 under § 101 or the
rejection of claims 7 and 9 under § 102(b). (See Appeal Br. 12.)
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ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(2012), “for distinguishing patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 134 S. Ct. at 2355.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to part one of the Alice framework, the Examiner
determines that the claims are “directed to the abstract idea of financial
planning including mathematical formulas and relationships.” (Final
Action 5.)
Appellant argues, in relevant part, that “[i]t is improper to classify a
specifically claimed way of processing and displaying social security
claiming strategies for a plurality of mortality combinations as
‘fundamental’ or ‘abstract’ simply because it falls into the class of economic
practices.” (Appeal Br. 20.)
Under part one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
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v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
Thus, although we consider the claim as a whole, the “directed to” inquiry
focuses on the claim’s “character as a whole.”
The Specification provides evidence as to what the invention is
directed. In this case, the Specification discloses that the invention is
directed to “assisting] couples and individuals in selecting, comprehending,
and comparing different [Social Security] claiming strategies.” (Spec 1 6.)
Claim 13 recites “receiving . . . personal and financial data,” “accessing . . .
a plurality of Social Security claiming strategies,” “calculating which Social
Security Claiming strategy is preferred,” and “presenting a graphical display
. . . [of] which of the Social Security claiming strategies is preferred.”
In Electric Power Group, “[t]he focus of the asserted claims ... is on
collecting information, analyzing it, and displaying certain results of the
collection and analysis.” Elec. Power Grp., 830 F.3d at 1353. “[W]e 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.” Id.; see also FairWarningIP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1093-94 (Fed. Cir. 2016).
Additionally, the Federal Circuit has “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.”
Elec. Power Grp., 830 F.3d at 1354. Thus, a method, like the claimed
method here, “that employs mathematical algorithms [e.g., calculating which
Social Security claiming strategy is preferred] to manipulate existing
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information to generate additional information is not patent eligible.” See
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014). In view of the above, we are not persuaded that the
Examiner erred in determining that the pending claims are directed to an
abstract idea.
Appellant further argues that the Examiner has not presented a prima
facie case of ineligibility. (Appeal Br. 20.) Specifically, Appellant argues
that “a prima facie case for patent ineligibility should include evidence, such
as citations to a finance or banking textbook or the like.” (Id.) We do not
find this argument persuasive of reversible error. There is no requirement
that examiners provide evidentiary support in every case before a conclusion
can be made that a claim is directed to an abstract idea.
The courts consider the determination of whether a claim is
eligible (which involves identifying whether an exception such
as an abstract idea is being claimed) to be a question of law.
Accordingly, courts do not rely on evidence that a claimed
concept is a judicial exception, and in most cases resolve the
ultimate legal conclusion on eligibility without making any
factual findings.
Para. IV “July 2015 Update: Subject Matter Eligibility” to 2014 Interim
Guidance on Subject Matter Eligibility (2014 IEG), 79 Fed. Reg. 74618
(Dec. 16, 2014) (footnote omitted).
Appellant also argues that “elements of claims depending from
claim 13 also recite additional novel subject matter which was not addressed
by the Examiner.” (Appeal Br. 21.) In particular, Appellant argues
that although the Diehr decision referenced above states that “the
‘novelty’ of any element or steps in a process ... is of no
relevance in determining whether the subject matter of a claim
falls within the § 101 categories of possibly patentable subject
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matter,” it is important to view this statement in context. The
Court in this instance was discussing claim dissection,
emphasizing that “it is inappropriate to dissect the claims into old
and new elements and then to ignore the presence of the old
elements in the analysis.”
{Id., omission in original.) We are not persuaded of error. Diehr instructs us
that “[t]he ‘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
a claim falls within the § 101 categories of possibly patentable subject
matter.” Diamond v. Diehr, 450 U.S. 175, 188—89 (1981) (emphasis added).
Part two of the Alice framework has been described “as a 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 (citing Mayo, 566 U.S. at 72—73).
The introduction of a computer into the claim does not alter the
analysis at step two.
[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 if ” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “ ‘to a particular technological environment.’ ”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
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“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Id. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Id. at 2359. They do not. Claim 13 relates to a method
for collecting data (“personal and financial data for the couple” and “Social
Security claiming strategies”), analyzing the data (“calculating which Social
Security Claiming strategy is preferred”), and displaying results (“presenting
a graphical display . . . illustrating which of the Social Security claiming
strategies is preferred”).
Taking the claim elements separately, the function performed by the
computer at each step is purely conventional. Collecting, analyzing, and
displaying data are basic computer functions. Moreover, the Specification
discloses that the invention can be implemented using generic computer
components. (See, e.g., Spec. ]ff[ 22, 24.) In short, each step does no more
than require a generic computer to perform generic computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. The claims do not, for example, purport to
improve the functioning of the computer itself. Nor do they effect an
improvement in any other technology or technical field. Instead, the claims
at issue amount to nothing significantly more than an instruction to apply the
abstract idea of collecting, analyzing, and displaying data using some
unspecified, generic computer. That is not enough to transform an abstract
idea into a patent-eligible invention. Alice, 134 S. Ct. at 2360.
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In view of the above, we are not persuaded that that Examiner erred in
rejecting claim 13 under § 101.
Appellant also argues that
the dependent claims recite the following non-abstract ideas:
• illustrating on the graphical display (i.e., the grid in claim
16) the present value of cumulative lifetime Social Security
benefits for multiple claiming strategies for a selected mortality
combination of the couple. (Emphasis added). (Claim 15)
• the graphical display being a grid with a first partner’s
life expectancies on the horizontal axis and a second partner’s
life expectancies on the vertical axis. (Claim 16)
• the grid including cells each representing a specific
mortality combination of the couple. (Claim 17)
• marking each cell to indicate which claiming strategy
provides the maximum benefits for the mortality combination
represented by the cell. (Claim 18).
(Appeal Br. 21.) In other words, Appellant argues that the recited displays
of data transform the claims into patent-eligible subject matter. Appellant,
however, does not persuasively argue why the recited displays of data
change the claims’ character as a whole and thus, why the claims are no
longer directed to an abstract idea. See Affinity Labs of Texas, LLC, 838
F.3d at 1257. We are not persuaded of error.
Dependent claim 14 is not separately argued and falls with claim 13.
See 37 C.F.R. § 41.37(c)(l)(iv).
Independent claim 23 contains similar language and Appellant makes
similar arguments. And for similar reasons to those discussed above, we are
not persuaded of error.
With regard to dependent claims 25—27, Appellant argues that these
claims
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recite additional novel subject matter . . . such as:
• a code segment for illustrating on the graphical display
the present values of cumulative lifetime Social Security benefits
of multiple claiming strategies for each mortality combination of
the couple. (Claim 25)
• a code segment for marking or coloring each cell to
indicate which claiming strategy provides a maximum present
value of cumulative benefits for the mortality combination
represented by the cell. (Claims 26 and 27).
(Appeal Br. 29.) As discussed above with regard to dependent claims 15—
18, Appellant argues that the recited displays of data transform the claims
into patent-eligible subject matter. Appellant, however, does not
persuasively argue why the recited displays of data change the claims’
character as a whole. See Affinity Labs of Texas, LLC, 838 F.3d at 1257.
We are not persuaded of error.
Dependent claim 24 is not separately argued and falls with claim 23.
See 37 C.F.R. § 41.37(c)(l)(iv).
The rejection of claims 7—12 under § 101 is not appealed. (See
Appeal Br. 7, 12.) We summarily affirm the rejection of claims 7—12 under
§101.
The £ 102(b) rejection
The rejection of claims 7 and 9 under § 102(b) is not appealed. (See
id.) We summarily affirm the rejection of claims 7 and 9 under § 102(b).
DECISION
The Examiner’s rejection of claims 7—12 under 35 U.S.C. § 101 is
summarily affirmed.
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The Examiner’s rejection of claims 13—18 and 23—27 under 35 U.S.C.
§ 101 is affirmed.
The Examiner’s rejection of claims 7 and 9 under 35 U.S.C. § 102(b)
is summarily affirmed.
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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