Ex Parte Moore et al

Patent Trial and Appeal Board

Jun 5, 2017

13917752 (P.T.A.B. Jun. 5, 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.
13/917,752 06/14/2013 Jennings Wayne Moore 024164.154812-US 9355
24335 7590 06/07/2017
WARNER NORCROSS & JUDD LLP
INTELLECTUAL PROPERTY GROUP
900 FIFTH THIRD CENTER
111 LYON STREET, N.W.
GRAND RAPIDS, MI 49503-2487
EXAMINER
HAIDER, FAWAAD
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
06/07/2017 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 @ wnj. com
ckleinheksel @ wnj. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JENNINGS WAYNE MOORE, LARRY JOSEPH DENISTON,
TERRY LEE MERKLE, DOUGLAS ALAN BENNETT, and
ROBERT JAMES GOLISEK
Appeal 2015-0060181
Application 13/917,7522
Technology Center 3600
Before ANTON W. FETTING, NINA L. MEDLOCK, and
ALYSSA A. FINAMORE, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1—38. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants’ Appeal Brief (“App. Br.,” filed
November 17, 2014) and Reply Brief (“Reply Br.,” filed May 27, 2015), and
the Examiner’s Answer (“Ans.,” mailed March 27, 2015) and Final Office
Action (“Final Act.,” mailed June 17, 2014).
2 Appellants identify Manatron Incorporated as the real party in interest.
App. Br. 2.
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CLAIMED INVENTION
Appellants’ claimed invention relates to “a system and a method for
property records management” (Spec. 2,11. 17—19).
Claims 1,18, and 34 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer-readable storage medium tangibly
embodying an information model in non-transitory memory for
managing party and property information from multiple data
sources in a single data structure, the information model
comprising:
a plurality of legal party objects including first and second
legal party objects to represent first and second legal entities,
respectively, the first and second legal entities being at least one
of an individual, an organization and a public agency;
a plurality of revenue-object objects including a revenue-
object object representing a taxable item, wherein the first and
second legal entities have a tax responsibility with respect to the
taxable item; and
a plurality of legal party role objects including first and
second legal party role objects to designate entity role types and
to connect the first and second legal party objects respectively to
the revenue-object object, whereby each of the first and second
legal party role objects maintains a relationship between the first
and second legal party objects and the revenue-object object.
REJECTIONS3
Claims 1—38 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
3 The rejection of claims 1—38 on the ground of non-statutory double
patenting over claims 1—41 of U.S. Patent No. 8,554,648 B2 is moot in view
of the terminal disclaimer filed on September 16, 2014, and approved on
September 17, 2014.
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Claims 1—38 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Graff (US 7,107,239 B2, iss. Sept. 12, 2006), Boccuzzi et al
(US 2004/0153382 Al, pub. Aug. 5, 2004), and Phelan
(US 2005/0261995 Al, pub. Nov. 24, 2005).
ANALYSIS
Non-Statutory Subject Matter
Under 35 U.S.C. § 101, 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 an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Incorporated, 132 S. Ct. 1289, 1300 (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 Corp., 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.” Id. If the claims are not directed to a patent-ineligible
concept, e.g., 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 there
are additional elements that “‘transform the nature of the claim’ into a
patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1297).
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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, 132 S. Ct. at 1293. 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 itself is the
abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Here, in rejecting claims 1—38 under § 101, the Examiner found that
the claims are directed to “an information model for managing party and
property information,” i.e., to “a manipulation of data or method of
organizing human activities,” and, therefore to an abstract idea; and that the
claims do not include additional elements that amount to “significantly
more” than the abstract idea because “the generically recited computer
elements do not add a meaningful limitation to the abstract idea because they
would be routine in any computer implementation” (Ans. 3—4).
Addressing the first step of the Mayo!Alice analysis, Appellants argue
that claims 1—38 are not directed to an abstract idea but instead to
“computer-readable storage media ([claims] 1—33) or an apparatus
([claims] 34—38) including an information model with a single data structure
for the management of party and property information from multiple data
sources” (Reply Br. 2). Yet Appellants cannot reasonably deny that the
claims involve a process for taking a plurality of objects, i.e., legal party
objects, revenue-object objects, and legal party role objects, and arranging
those objects into the recited data structure. And the Federal Circuit has
made clear that the basic character of a process claim drawn to an abstract
idea is not changed by claiming only its performance by a machine or
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apparatus, or by claiming the process embodied in program instructions on a
computer-readable medium. CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1375—76 (Fed. Cir. 2011) (citing In reAbele, 684 F.2d 902
(CCPA 1982)).
Significantly, there is nothing in the claim language that limits the
data structure to any particular physical form. Instead, the structure of the
data structure is determined purely by the logical relationship between the
data, i.e., the plurality of objects. The claims are, thus, directed to an
abstract data structure constituting logical relationships between data, and,
therefore, directed to an abstract idea. See In re Warmerdam, 33 F.3d 1354,
1362 (Fed. Cir. 1994) (holding that a claim directed to a data structure did
not constitute patentable subject matter because it was nothing more than a
way of describing the manipulation of ideas).
Turning to the second step of the Alice framework, Appellants assert
that even if claims 1—38 are directed to an abstract idea, “the[] claims
provide meaningful limitation[s] beyond generally linking the ‘use of the
[abstract idea] to a particular technological environment.’” (Reply Br. 2).
Yet aside from summarily asserting that the claims provide an improved data
model with a variety of data objects (id. at 2—3), Appellants provide no
persuasive argument or technical reasoning to support that position.
Further, although Appellants assert that the data objects are not the
result of “an ‘abstract idea implemented on a generic computer’” (id. at 3),
there is no indication in the Specification that any specialized hardware is
involved. And, “after Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
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purely conceptual realm is beside the point.” DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted).
We also are not persuaded of Examiner error by Appellants’ argument
that the pending claims are patent-eligible because the claimed invention
poses no risk of preemption (Reply Br. 3). Although the Supreme Court has
described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre­
emption,” see Alice Corp., 134 S. Ct. at 2354, characterizing pre-emption as
a driving concern for patent eligibility is not the same as characterizing pre­
emption as the sole test for patent eligibility. “The Supreme Court has made
clear that the principle of preemption is the basis for the judicial exceptions
to patentability” and “[f]or this reason, questions on preemption are inherent
in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.Cir.2015) (citing Alice Corp.,
134 S. Ct. at 2354). Yet although “preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.” Id.
For the foregoing reasons, we are not persuaded that the Examiner
erred in rejecting claims 1—38 under 35 U.S.C. § 101. Therefore, we sustain
the Examiner’s rejection.
Obviousness
Independent Claims 1 and 18 and Dependent Claims 2—17 and 19—33
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting independent claims 1 and 18 under 35 U.S.C. § 103(a) because the
proposed combination of Graff, Boccuzzi, and Phelan does not disclose or
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suggest an information model for property and party management
comprising “first and second legal party role objects to designate entity role
types and to connect the first and second legal party objects respectively to
the revenue-object object,” as recited in claim 1, and similarly recited in
claim 18 (App. Br. 10—11).
Responding to Appellants’ argument, the Examiner clarifies the
rejection, explaining that Graff, in Figure 1, discloses “a legal party object
(subject property), and a plurality of revenue-object objects to represent a
legal entity (financial intermediary) and a plurality of taxable items (estate
for years and remainder interest)” (Ans. 4). The Examiner further posits that
“Phelan discloses a plurality of legal party role objects with a plurality of
revenue-object objects” {id. (citing Phelan 1 551 (“For example, a seller of
goods and services, or merchant, serves as an agency role with respect to the
assessment and/or collection of sales tax liabilities from buyers that is later
reported and/or remitted to a tax imposing jurisdiction.”))). However, we
agree with Appellants that there is no support in paragraph 551 of Phelan for
the Examiner’s interpretation (App. Br. 11).
Paragraph 551 is included in an “Appendix A — Definitions and
Glossary” that begins at paragraph 174 of Phelan, and sets forth a definition
of the term “Tax Agent,” as used in the Phelan publication. Specifically,
Phelan defines “Tax Agent” as a person or legal entity authorized to act on
behalf of a tax imposing jurisdiction with respect to the assessment and/or
collection of taxes, and discloses that such a person may be a seller of goods
or services that serves in an agency role with respect to the assessment
and/or collection of sales tax liabilities from buyers that is later reported
and/or remitted to a tax imposing jurisdiction. As Appellants observe, the
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tax agent, as disclosed in Phelan, is itself a legal entity — it is not a legal
party role object that maintains a relationship between a legal party object
(that represents a legal entity) and a revenue-object object (that represents a
taxable item for which the legal entity has tax responsibility), as the
Examiner suggests (App. Br. 11).
In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 18 under 35 U.S.C. § 103(a). For the same
reasons, we also do not sustain the rejection of dependent claims 2—17 and
19-33. Cf. In reFritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992) (“dependent
claims are nonobvious if the independent claims from which they depend are
nonob vious”).
Independent Claim 34 and Dependent Claims 35—38
Claim 34 includes language substantially similar to the language of
claims 1 and 18, and stands rejected based on the same rationale with respect
to Phelan applied with respect to those claims (Final Act. 5—6). Therefore,
we do not sustain the Examiner’s rejection of independent claim 34, and
claims 35—38, which depend therefrom, for the same reasons set forth above
with respect to claims 1 and 18.
DECISION
The Examiner’s rejection of claims 1—38 under 35 U.S.C. § 101 is
affirmed.
The Examiner’s rejection of claims 1—38 under 35 U.S.C. § 103(a) is
reversed.
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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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