Ex Parte Novikov et al

Patent Trial and Appeal Board

Oct 15, 2018

13620318 (P.T.A.B. Oct. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/620,318 09/14/2012
87851 7590
Facebook/Fenwick
Silicon Valley Center
801 California Street
Mountain View, CA 94041
10/17/2018
FIRST NAMED INVENTOR
Victor Novikov
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.
26295-21783 4163
EXAMINER
LI,SUNM
ART UNIT PAPER NUMBER
3681
NOTIFICATION DATE DELIVERY MODE
10/17/2018 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):
ptoc@fenwick.com
fwfacebookpatents@fenwick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VICTOR NOVIKOV,
ADITY A AGRA WAL,
KENT SCHOEN, and
JARED MORGENSTERN
Appeal2017-005676
Application 13/620,318 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BART A. GERSTENBLITH, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Victor Novikov et al. (Appellants) seek our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 17-34. We have jurisdiction under
35 U.S.C. § 6(b).
1 The Appellants identify Citicorp Credit Services, Inc. as the real party in
interest. App. Br. 1.
Appeal2017-005676
Application 13/620,318
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Claim 17, reproduced below, is illustrative of the subject matter on
appeal.
17. A computer-implemented method for one or more computing
devices to calculate the price of a corporate loan using data inputs
received from a first device, the method comprising:
generating, by a server, in a database a record of a corporate
loan, the record comprising data containing an initial credit state of
the corporate loan, the database comprising non-transitory machine-
readable storage media storing one or more records of one or more
corporate loans;
responsive to the server receiving from a first device a first data
input containing a transition matrix of historical credit migrations :
converting, by the server, the first data input containing
the transition matrix received from the first device to a second
data input containing a risk neutral matrix, based upon market
data received from one or more servers;
creating, by the server, a third data input containing a
company-specific transition matrix using company-specific
market data received from the one or more servers and the
market data received from the one or more servers;
calculating, by the server, the price of the corporate loan,
based upon the first data input, the second data input, the third
data input, and the initial state indicated by the record of the
corporate loan stored in the database; and
transmitting, by the server, the price of the corporate loan
to at least one of a transaction server and a second device
associated with a user.
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Application 13/620,318
THE REJECTION
The following rejection is before us for review:
Claims 17-34 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
ISSUE
Did the Examiner err in rejecting claims 17-34 under 35 U.S.C. § 101
as being directed to judicially-excepted subject matter?
ANALYSIS
The rejection of claims 17-34 under 35 US.C. §101 as being directed to
judicially-excepted subject matter.
The Appellants argued these claims as a group. See App. Br. 4--9.
We select claim 17 as the representative claim for this group, and the
remaining claims 18-34 stand or fall with claim 17. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Alice Corp. Proprietary Ltd. v. CLS Bank International, 134 S. Ct.
234 7 (2014 ), identifies a two-step framework for determining whether
claimed subject matter is judicially-excepted from patent-eligibility under
35 U.S.C. § 101.
According to Alice step one, "[ w ]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner repeated what claim 1 7 recites and then
stated:
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Application 13/620,318
Applicant is to be noted that the steps or functions of generating
and receiving are similar to concepts that have been identified as
abstracts by the courts as found in Classen [ Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir.
2011)] and Perkin-Elmer [PerkinElmer Inc. v. Intema Ltd., 496
Fed. Appx. 65 (Fed. Cir. 2012) (nonprecedential)] which
involved functions of collecting and comparing data to determine
a risk level. The function of communicating or transmitting data
or information was also found to be abstract by courts in
Cyberfone [Cyberfone Sys., LLC v. CNN Interactive Grp., Inc.,
558 F. Appx 988 (Fed. Cir. 2014) (nonprecedential)]. The
calculating function is a mathematical function which the courts
found to be abstract as was found in Freddie Mac [Federal Home
Loan Mortg. Corp. v. GrafflRoss Holdings, LLP, 604 F. Appx
930 (Mem) (Fed. Cir. 2015)] which involved computing a price
for the sale of a fixed income asset and generating a financial
analysis output.
Non-Final Rej. 4. In effect, the Examiner characterized claim 17 as being
directed to a combination of steps, each of which are abstract ideas in
accord with earlier court decisions. See Amdocs (Israel) Limited v. Openet
Telecom, Inc., 841 F.3d 1288, 1294 (Fed. Cir. 2016) ("[T]he decisional
mechanism courts now apply [ to help answer that question] is to examine
earlier cases in which a similar or parallel descriptive nature can be seen-
what prior cases were about, and which way they were decided."). We
understand the Examiner's position as finding that combining abstract ideas
did not render the combination any less abstract. Cf Shortridge v. Found.
Construction Payroll Serv., LLC, 2015 WL 1739256 (N.D. Cal. 2015), ajf'd,
655 F. Appx 848 (Fed. Cir. 2016).
The Appeal Brief addresses each of the decisions the Examiner relied
upon, pointing to differences between them and the corresponding claim
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steps for which they were cited and argues that the analogies are inapt. See
App. Br. 4---6.
Claim 17 presents a method "to calculate the price of a corporate
loan." The steps to accomplish said calculating involve a "server"
( 1) "generating ... in a database" information A; and, responsive to
receiving information B, (2) "converting" information B to information C;
(3) "creating" information D; (4) "calculating" information E; and
( 5) "transmitting" information E; where
• A = "a record of a corporate loan, the record comprising data
containing an initial credit state of the corporate loan";
• B = "a transition matrix of historical credit migrations";
• C = "a risk neutral matrix, based upon market data received from one
or more servers";
• D = "a company-specific transition matrix using company-specific
market data received from the one or more servers and the market data
received from the one or more servers"; and
• E = "the price of the corporate loan" based on B, C, and D indicated
on A.
The five recited steps "to calculate the price of a corporate loan" do
not appear to do anything more than take different types of information and
process them in a general way, albeit the different types of information are
selected so that the price of a corporate loan can be calculated. All that the
claim recites pertaining to processing is that the information be
"generat[ed]," "convert[ed]," "creat[ed]," "calculat[ed", and "transmitt[ed]."
A combination of general information-processing steps such as these,
without any detail on how to perform them, supports the Examiner's position
that claim 17 is directed to an abstract idea. Cf Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1343 (Fed. Cir. 2016) (When "the focus of the
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asserted claims" is "on collecting information, analyzing it, and displaying
certain results of the collection and analysis," the claims are directed to an
abstract idea.).
The Appellants make various statements on the theme that the claimed
subject matter is rooted in computer technology rather than an abstract idea.
E.g., App. Br. 6 ("Instead, the claims are rooted in the features of large-
scale, interconnected computing systems.").
There can be no dispute that "servers" are known and are known to
process information so that it is "generat[ ed]," "convert[ ed]," "creat[ ed],"
"calculat[ed]," and/or "transmitt[ed]." See, e.g., Spec. ,r 214 ("The above-
described technology can be implemented on known devices such as a
personal computer .... "). Claim 17 focuses not on any server but on the
generating, converting, creating, calculating, and transmitting steps. The
steps themselves are not rooted in computer technology as evidenced by the
fact that all that is needed to perform them is a generic "server."
The difficulty here is that the claim has been drafted so that as a whole
it provides a result-oriented solution ("generating," "converting," "creating,"
"calculating," and "transmitting") but without the computer-centric details
for accomplishing it. The Appellants suggest many such details via
arguments in support of the invention being "rooted in computer
technology." See App. Br. 7-8. But the claim does not now reflect those
details. Cf Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1342 (Fed. Cir. 2017) (explaining that "[o]ur law demands more" than
claim language that "provides only a result-oriented solution, with
insufficient detail for how a computer accomplishes it") and Elec. Power
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Grp., 830 F.3d at 1354 (explaining that claims are directed to an abstract
idea where they do not recite "any particular assertedly inventive technology
for performing [conventional] functions").
Step two is "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 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that
[ t ]he claim does not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because :
The additional elements when considered both
individually and as a combination do not amount to
significantly more than the abstract idea. The claim recites the
additional elements of a server, a database a device. These
devices or computer components are noted to perform routine
computer functions such as receiving data, generating data
(similar to a comparison function) and transmitting data.
These computers or computer components are seen as
generic computers performing generic functions without an
inventive concept as such do not amount to significantly more
than the abstract idea. These computers or computer
components are simply a field of use that attempt to limit the
abstract idea to a particular environment. The type of data
being manipulated does not impose meaningful limitations or
render the idea less abstract. Looking at the elements as a
combination does not add anything more than the elements
analyzed individually. Therefore the claim does not amount to
significantly more than the abstract idea itself.
Non-Final Rej. 4--5.
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With respect to the step two determination, the Appellants again make
various statements on the theme that the claimed subject matter describes a
technical improvement to a computer-centric problem so as to render the
claimed subject matter as a whole significantly more than being an abstract
idea. The following statement is representative:
Claims 17-34 recite a data analytics system capable of analyzing
pricing data from a variety of disparate data sources, generating data
one format, and then converting the received data and the generate
data into an altogether new format, which the system then uses as its
own feedback loop into a database of corporate loans and into a
transaction server, and which the system provides to an end user's
computer.
App. Br. 7.
But claim 1 7 makes no mention of analyzing data from a variety of
disparate data sources or of a data analytics system that formats data into a
new format that is then used as its own feedback loop into a database and
into a transaction server. Such statements are not commensurate in scope
with what is claimed and therefore cannot be persuasive as to error in the
step two determination.
We have considered all of the Appellants' remaining arguments
(including those made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the determinations
that representative claim 17, and claims 18-34 that stand or fall with claim
17, are directed to an abstract idea and do not present an "inventive
concept," we sustain the Examiner's conclusion that they are directed to
patent-ineligible subject matter for being judicially-excepted from 35 U.S.C.
§ 101. Cf LendingTree, LLC v. Zillow, Inc., 656 Fed. Appx. 991, 997 (Fed.
Cir. 2016) ("We have considered all of Lending Tree's remaining arguments
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and have found them unpersuasive. Accordingly, because the asserted
claims of the patents in suit are directed to an abstract idea and do not
present an "inventive concept," we hold that they are directed to ineligible
subject matter under 35 U.S.C. § 101."); see also, e.g., OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1364 (Fed. Cir. 2015); FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016).
DECISION
The decision of the Examiner to reject claims 17-34 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
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