Ex Parte Ng

Patent Trial and Appeal Board

Mar 27, 2018

13746662 (P.T.A.B. Mar. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/746,662 01122/2013
68371 7590 03/29/2018
DEEP AK MALHOTRA
MALHOTRA LAW FIRM, PLLC
P.O. BOX 1433
SPOKANE, WA 99210
FIRST NAMED INVENTOR
Chee We Ng
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.
OFAP-005 8467
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/29/2018 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):
dmalhotra@patentsusa.com
docketing@patentsusa.com
malhotraspokane@hotmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHEE WE NG
Appeal2016-001250 1
Application 13/746,662 2
Technology Center 3600
Before BRADLEY B. BAY AT, TARA L. HUTCHINGS, and
MATTHEWS. MEYERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
Non-final Rejection of claims 9--20. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("Appeal Br.," filed
March 22, 2015), Supplemental Appeal Brief ("Supp. Appeal Br.," filed
June 4, 2015), and Reply Brief ("Reply Br.," filed October 30, 2015), the
Examiner's Answer ("Ans.," mailed October 23, 2015), and Final Office
Action ("Non-Final Act.," mailed November 20, 2014).
2 Appellant identifies "Chee We Ng" as the real party in interest (Appeal Br.
1 ). However, we note that "OPEN FINANCIAL ANALYTICS PTE LTD"
is the assignee recorded (January 23, 2013) with the USPTO as per
reel/frame number 029680/0198.
Appeal 2016-001250
Application 13/746,662
CLAIMED INVENTION
Appellant's claims relate to a method and system for analyzing stock
or security prices going forward (Spec. i-f 4).
Claims 9 and 14 are the independent claims on appeal. Claim 14
reproduced below, with minor formatting changes and added bracketed
notations, is illustrative of the subject matter on appeal:
14. A method of analyzing a security, the method
compnsmg:
[a] rendering a graphical user interface on a user's client
device, the interface including no more than three sliders which
a user can adjust to adjust the values of respective inputs
affecting value of a security, including an input for expected
earnings growth rate during a first period, an input for expected
return on incremental equity, incremental equity being equity
growth over the first period, and an input for expected earnings
growth rate during a second period after the the [sic] first period;
[b] forecasting, using a processor, net income for a time in
the future, return on equity, for a time in the future, price to
earnings ratio, fair value components including at least current
earnings, short term earnings growth, and long term earnings
growth, and expected return components including at least yield,
capital needs, growth, and price to earnings ratio change;
[ c] drawing a first chart, on the user's client device,
showing a graph of both historical and forecast net income for
the security versus time;
[ d] drawing a second chart, on the user's client device,
showing a graph of both historical and forecast return on equity
for the security versus time;
[e] drawing a third chart, on the user's client device,
showing both current and projected price to earnings ratios for
the security;
[ fJ drawing a fourth chart, on the user's client device,
showing fair value for the security, broken down into multiple
separate components for current earnings, earnings growth over
a first period, and earnings growth over a second period after the
first period; and
2
Appeal 2016-001250
Application 13/746,662
[g] drawing a fifth chart, on the user's client device,
showing expected return for the security, broken down into
multiple separate components for yield, capital needs, growth,
and price to earnings ratio change.
Supp. Appeal Br. 3--4 (Claims App.).
REJECTIONS
Claims 9--20 are rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter.
Claims 9-20 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Dainoff (US 2004/0220868 Al, pub. Nov. 4, 2004) and Henninger (US
2007/0294154 Al, pub. Dec. 20, 2007).
ANALYSIS
Non-statutory subject matter
In rejecting independent claims 9--20 as being directed to an abstract
idea, the Examiner determines the claims as a whole are "directed to the
abstract idea of analyzing securities," and finds that the claims do not
include additional elements or a combination of elements that amount to
significantly more than the abstract idea itself (Non-Final Act. 3--4; Ans. 2-
3).
Appellant argues that the Examiner improperly rejected independent
claims 9 and 14 as being directed to non-statutory subject matter because
independent claims 9 and 14 are directed to "an operator interface" in
addition to being "relate[d] to analyzing a security," and as such, are not
directed to an abstract idea (Appeal Br. 6-9).
Although we agree with Appellant that an invention is patent-eligible
if it claims a "new and useful process, machine, manufacture, or
3
Appeal 2016-001250
Application 13/746,662
composition of matter" (35 U.S.C. § 101) and independent claims 9 and 14
are directed to a system and method (see. e.g., Appeal Br. 6), the Supreme
Court has long interpreted § 101 to include implicit exceptions: "[l]aws of
nature, natural phenomena, and abstract ideas" are not patentable. See, e.g.,
Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014)
(internal quotation and citation omitted). And, in determining whether
independent claims 9 and 14 fall 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., 566 U.S. 66, 71-73 (2012)).
In accordance with that framework, we first must determine whether
the claim is "directed to" a patent-ineligible abstract idea. If so, 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. Id.
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. (internal quotation and citation omitted).
Here, we agree with the Examiner that the focus of independent
claims 9 and 14 as a whole are directed to "the abstract idea of analyzing
securities" (Non-Final Act. 3), and is similar to certain fundamental
economic and conventional business practices that our reviewing courts have
found patent ineligible, like intermediated settlement (see Alice, 134 S. Ct. at
2356-57), creating a contractual relationship in guaranteeing performance of
an online transaction (see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1352, 1355 (Fed. Cir. 2014)), "verifying the validity of a credit card
4
Appeal 2016-001250
Application 13/746,662
transaction over the Internet" ( CyberSource Corp. v. Retail Decisions, Inc.,
654 F.3d 1366, 1370 (Fed. Cir. 2011)), and using advertising as a currency
on the Internet (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed.
Cir. 2014)). Thus, independent claims 9 and 14 are directed to a patent-
ineligible abstract idea.
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
the claim does more than simply instruct the practitioner to implement the
abstract idea on generic computer components. We agree with the Examiner
that independent claim 9 is performed using a "standard and conventional
computer system" (Ans. 21-22 (citing Spec. i-fi-124, 88, 89, 91, 92; Fig. 1)),
and as such, is directed to an abstract idea without some element or
combination of elements sufficient to ensure that the claim in practice
amounts to significantly more than the abstract idea itself, and as such, is not
patent-eligible under § 101. Similarly, independent method claim 14 is
performed using a conventional "graphical user interface on a client device"
and "processor." See Spec. i-fi-188 ("[t]he implementation of the front-end
user interface ... is done in Javascript running on a browser, with chart
libraries from Dojo, a Javascript framework"); 89 ("[t]he user interface can
run on a web-browser"). But claim 14 does not, for example, purport to
improve the functioning of the computer, "processor," or graphical user
interface itself. Nor are we apprised of an improvement in any other
technology or technical field. Here, as the Examiner points out, "[t]he
[S]pecification and drawings note that the method is performed by a generic
computer" (Ans. 22 (citing Spec. i-fi-124, 88, 89, 91, 92; Fig. 1)), and as such,
we find independent method claim 14 amounts to nothing significantly more
5
Appeal 2016-001250
Application 13/746,662
than an instruction to apply the abstract idea of analyzing securities using
some unspecified, generic processor and client device, which is not enough
to transform an abstract idea into a patent-eligible invention. See Alice, 134
S. Ct. at 2360.
We also cannot agree with Appellant that there is any parallel between
the present claims and those at issue in DDR Holdings, LLC v. Hotels.com,
L.P., 773 F.3d 1245 (Fed. Cir. 2014). The claims in DDR Holdings were
directed to retaining website visitors, and in particular to a system that
modified the conventional web browsing experience by directing a user of a
host website, who clicks an advertisement, to a "store within a store" on the
host website, rather than directing the user to the advertiser's third-party
website. DDR Holdings, 773 F.3d at 1257-58. The court, thus, determined
that the claims were directed to statutory subject matter because they claim a
solution "necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks," and that the
claimed invention did not simply use computers to serve a conventional
business purpose. Id. Rather, there was a change to the routine,
conventional functioning of Internet hyperlink protocol. Id.
Appellant argues here that the present claims are patent-eligible for
similar reasons as those in DDR Holdings (Appeal Br. 6-8), i.e., for
example, the claims address a problem that "[ w ]ith computerized tools it is
all too common that so many inputs are available, a user just does not know
which ones are really important" (id. at 7). However, we agree with the
Examiner that "a user not knowing which inputs are important for analyzing
securities is not a computer technology problem, but rather a business
problem to which Appellant is attempting to provide a business solution"
6
Appeal 2016-001250
Application 13/746,662
(Ans. 17). And, although Appellant argues that independent claims 9 and 14
recite "an invention that is not merely the routine or conventional use of
computers or the Internet" (Appeal Br. 7-8), we find no indication in the
record that the Internet is used in any way other than its normal, expected,
and routine manner, nor any aspect in the pending claims that represents
more than the conventional use of a computer or the Internet.
The court cautioned in DDR Holdings that "not all claims purporting
to address Internet-centric challenges are eligible for patent." DDR
Holdings, 773 F.3d at 1258. Thus, in Ultramercial, Inc. v. Hulu, LLC, 772
F.3d 709 (Fed. Cir. 2014), although the patentee argued that its claims were
"directed to a specific method of advertising and content distribution that
was previously unknown and never employed on the Internet before," id. at
714, the court found that this alone could not render its claims patent-eligible
where the claims merely recited the abstract idea of "offering media content
in exchange for viewing an advertisement," along with "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." Id. at
715-16.
Similarly here, we find that the invocation of the Internet is not
sufficient to transform Appellant's otherwise patent-ineligible abstract idea
into patent-eligible subject matter. We agree with the Examiner that
independent claims 9 and 14 are directed to the abstract idea of analyzing
securities, and using a graphical user interface on a client device to display
securities related charts. And, as discussed above, there is no indication here
that the invocation of the Internet adds any inventive concept or requires any
specialized hardware (see Ans. 16-22). None of the components or steps
7
Appeal 2016-001250
Application 13/746,662
recited in independent claims 9 and 14, whether viewed individually or as an
ordered combination, transforms the nature of the claims into patent-eligible
subject matter. Instead, as the Examiner points out, "[t ]he claims, as
presented, use generic computer systemization to display" (id. at 17)- none
of which add inventiveness because they merely require the application of
conventional, well-known analytical steps. See Ultramercial, 772 F.3d at
716 ("[T]he claimed sequence of steps comprises only 'conventional steps,
specified at a high level of generality,' which is insufficient to supply an
'inventive concept"') (citing Alice, 134 S. Ct. at 2357).
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of independent claims 9 and 14, and dependent claims
10-13 and 15-20, which are not argued separately.
Obviousness
Independent claim 9 and dependent claims 10-13
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting independent claim 9 under 35 U.S.C. § 103(a) because the
combination of Dainoff and Henninger does not disclose or suggest "a
forecast valuation module configured to forecast net income," "return on
equity," "price to earnings ratio," "fair value," and "expected return for the
security," as recited by limitation [c] of independent claim 9 (Appeal Br.
10-12). More particularly, Appellant argues that Dainoffuses seven
valuation metrics, but there is nothing in Dainoff or Henninger "about
forecasting of net income or fair value" (id. at 10). However, we agree with
the Examiner that the combination of Dainoff and Henninger discloses the
argued limitation (see Final Act. 4--6; see also Ans. 22-24).
8
Appeal 2016-001250
Application 13/746,662
In this regard, we note that Dainoff is directed to "a financial
information display system that permits users to view and understand
financial information related to securities to thereby facilitate making
investment decisions related to the securities" (Dainoff i-f 5). Dainoff
discloses that its system evaluates securities using
seven valuation metrics are discussed in more detail below and
include a Dividend Discount Model valuation, a Free Cash Flow
to Equity valuation, a Free Cash Flow to the Firm valuation, a
Price Per Earnings valuation, a Price Per Cash Flow valuation, a
Price Per Book Value valuation, and a Price Per Sales valuation.
(Id. i-f 16; see also id. i-fi-118-21). Dainoff acknowledges that "[f]ormulas for
calculating these various valuations are well known in the art and the values
which may be entered into the formulas for a particular publicly traded
security are available" (id. i-f 17).
We also note that Henninger is directed to a financial recommendation
system which provides predicted values for each of a plurality of financial
categories related to "spending, debt, revenue, profit, taxes, etc." for at least
a portion of a business cycle (Henninger i-fi-1 6, 16). Based on the predicted
values, Henninger discloses that "at least one financial indicator value
associated with at least one period of the business cycle is calculated" (id.
i-f 6). Henninger further discloses that its system can predict values for
additional financial categories such as profit after tax,
depreciation and amortization, undistributed earnings from
subsidiaries, cash flow from operations, capital expenditures, net
free cash flow, long term debt paid, long term debt issued, net
short term borrowings, change in cash, long term debt
outstanding, short term debt outstanding, ending cash balance,
change in stock price, dividend payout ratio, average stock price,
stock price per earnings ratio, dividend yield, shares outstanding,
and/or any combination of categories.
9
Appeal 2016-001250
Application 13/746,662
(Id. i-f 17; see also id. i-fi-1 18-24 ).
We also are not persuaded by Appellant's argument that "it is not
permissible to combine Henninger with Dainoffbecause doing so require
impermissible hindsight reconstruction" (Appeal Br. 11 ). Instead, we find
the Examiner provided articulated reasoning with some rational
underpinning to support the obviousness conclusion at pages 5---6 of the
Final Office Action. The Examiner's rejection also appears clearly based on
the disclosures of the Henninger with Dainoff, and does not rely on
Appellant's claims as a temple (see Appeal Br. 11). Here, we agree with the
Examiner that
[ o ]ne of ordinary skill in the art would not have to use any
hindsight to combine a financial display system used to make
investment decisions related to securities with a method that can
be used to achieve optimal financial growth as any investor seeks
to use information to make decisions regarding purchasing
securities that result in optimal financial growth.
(Ans. 24). We also agree with the Examiner that "Dainoff provides a
financial information display system that permits [a] user to view and
understand financial information related to securities to thereby facilitate
making investment decisions related to securities" (id. (citing Dainoff i-f 5),
"Henninger discloses that his method may be used by individuals seeking to
achieve optimal financial growth" (id. (citing Henninger i-f 54 ), and "[ t ]he
analysis of a number of spending categories referred to by Applicant is not
disclosed to be the primary advantage, but one of several advantages" (id.).
Therefore, absent specific, technical arguments as to why the motivation is
insufficient or why the proposed combination is more than the simple
substitution of one known element for another, we find Appellant's
hindsight argument unpersuasive.
10
Appeal 2016-001250
Application 13/746,662
Equally unpersuasive is Appellant's argument that the Examiner's
proposed combination is improper because "Henninger does not even relate
to analyzing securities, but to analyzing one particular business," and as
such, "[ o ]ne of ordinary skill in the art interested in stock valuation methods
would not look to Henninger" (Appeal Br. 11 ). Instead, we find that
Henninger is analogous prior art because it logically would have
commended itself to a person skilled in the art considering the substantially
similar issues of providing financial information. See In re Bigio, 3 81 F .3d
1320, 1325 (Fed. Cir. 2004) (Even when prior art is not in the same field of
endeavor as the claimed invention, it is still analogous prior art if it is
"reasonably pertinent" to the particular problem with which the inventor is
involved.).
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 1 under 35 U.S.C. § 103(a). We also sustain the
Examiner's rejection of claims 10-13, which although addressed separately,
do not rise to the level of a separate argument for patentability (see Appeal
Br. 12-14). See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) ("more
substantive arguments in an appeal brief [are required] than a mere recitation
of the claim elements and a naked assertion that the corresponding elements
were not found in the prior art").
Independent claim 14 and dependent claims 15-20
We are not persuaded by Appellant's argument that the Examiner
erred in rejecting independent claim 14 under 35 U.S.C. § 103(a) because
the combination of Dainoff and Henninger does not disclose or suggest "user
actuatable graphic items which a user can respectively actuate to adjust
11
Appeal 2016-001250
Application 13/746,662
values of inputs relating to characteristics affecting valuation of a security,
the number being not more than three," as called for by independent claim
14 (Appeal Br. 15). More particularly, Appellant argues that there is no
teaching or suggestion in either of Dainoff or Henninger to support the
Examiner's conclusion that it would have been obvious to eliminate inputs
in Dainoff' s system because "[a] high level of skill is required to know
which inputs can be eliminated and still result in a valid evaluation" (Appeal
Br. 15). We cannot agree.
In this regard, we note that the only thing that distinguishes the argued
feature from Dainoff, is that Dainoff' s display system, "allows users to
selectively access and examine further detail of the seven valuation metrics"
(Ans. 24--25 (citing Dainoff i-f 22) ), whereas claim 14 recites "the interface
including no more than three sliders which a user can adjust to adjust the
values of respective inputs affecting value of a security" (Supp. Appeal Br. 3
(Claims App.)). Thus, the difference between the argued limitation and the
combination of Dainoff or Henninger, as proposed by the Examiner, is the
number of inputs. Appellant argues that the Examiner does not identify
"which inputs can be omitted such that a valid analysis can be performed"
(Appeal Br. 16). In this regard, Appellant's Specification provides at
paragraph 4, for example, that limiting the number of inputs to "no more
than three" "helps an ordinary person, who doesn't want to be bogged with
all the details, to do a quick calculation and understand the key drivers of the
results," allowing the user to "focus on the main drivers instead of wasting
time figuring out the results." Yet, Appellant has not pointed to any
unexpected benefit or advantage achieved by limiting the number of inputs
to three, or provided any reasoning as to why one of ordinary skill in the art
12
Appeal 2016-001250
Application 13/746,662
would not have found any number of inputs to be obvious. "A person of
ordinary skill is also a person of ordinary creativity, not an automaton."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007); see also Perfect
Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329 (Fed. Cir. 2009)
("while an analysis of obviousness always depends on evidence ... it also
may include recourse to logic, judgment, and common sense available to the
person of ordinary skill that do not necessarily require explication in any
reference").
In view of the foregoing, we sustain the Examiner's rejection of
independent claim 14 under 35 U.S.C. § 103(a). We also sustain the
Examiner's rejection of claims 15-20, which although addressed separately,
do not rise to the level of a separate argument for patentability (see Appeal
Br. 17-19). See In re Lovin, 652 F.3d at 1357.
DECISION
The Examiner's rejection of claims 9-20 under 35 U.S.C. § 101 is
affirmed.
The Examiner's rejection of claims 9-20 under 35 U.S.C. § 103(a) is
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
13