11823004 (P.T.A.B. Oct. 31, 2016)

Ex Parte Ohnemus et al

Patent Trial and Appeal BoardOct 31, 2016

11823004 (P.T.A.B. Oct. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 111823,004 0612512007 23911 7590 11/02/2016 CROWELL & MORING LLP INTELLECTUAL PROPERTY GROUP P.O. BOX 14300 WASHINGTON, DC 20044-4300 FIRST NAMED INVENTOR Raimund Ohnemus 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. 080437.59071 us 7930 EXAMINER CRANFORD, MICHAEL D ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 11/02/2016 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): edocket@crowell.com tche@crowell.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RAIMUND OHNEMUS, KLAUS SAAL, and MARKUS ERBAN Appeal2014-008921 Application 11/823,004 1 Technology Center 3600 Before HUBERT C. LORIN, AMEE A. SHAH, and ROBERT J. SILVERMAN, Administrative Patent Judges. LORIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Raimund Ohnemus et al. (Appellants) seek our review under 35 U.S.C. Â§ 134 of the final rejection of claims 1-3, 5-18, and 20-30. We have jurisdiction under 35 U.S.C. Â§ 6(b). SUMMARY OF DECISION We REVERSE and enter a NEW GROUND OF REJECTION. 1 The Appellants identify Bayerische Motoren W erke Aktiengesellschaft as the real party in interest. App. Br. 1. Appeal2014-008921 Application 11/823,004 THE INVENTION Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A computer system configured to allocate a residual value risk for a vehicle leased to a consumer, the computer system comprising a processor configured to execute instructions to cause the computer system to: set a residual value for the vehicle to be applicable at a predetermined lease maturity date; determine, at a time corresponding to the predetermined lease maturity date, an actual value for the vehicle; calculate a difference between the residual value and the actual value, wherein said difference is the residual value risk associated with said vehicle leased to the consumer; allocate, at said time corresponding to the predetermined lease maturity date, a first portion of the residual value risk to a dealer organization; and allocate, at said time corresponding to the predetermined lease maturity date, a second portion of the residual value risk to a manufacturer group, wherein the manufacturer group includes a financing institution which financed the vehicle for the consumer, and a sales organization which sold the vehicle to the dealer organization. THE REJECTIONS The Examiner relies upon the following as evidence of unpatentability: Mills Murase US 2002/0198820 Al US 2003/0046199 Al 2 Dec. 26, 2002 Mar. 6, 2003 Appeal2014-008921 Application 11/823,004 The following rejection is before us for review: 1. Claims 1-3, 5-18, and 20-30 are rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Murase and Mills. 2 ISSUE Did the Examiner err in rejecting claims 1-3, 5-18, and 20-30 under 35 U.S.C. Â§ 103(a) as being unpatentable over Murase and Mills? ANALYSIS The independent claims are claims 1, 9, and 16. All include a limitation to allocating, at a time corresponding to a predetermined lease maturity date, a first portion of the residual value risk to a dealer organization that is to reclaim said leased vehicle. The claims also include a limitation to allocating a second portion of the residual risk value. The Examiner takes the position that said limitation is disclosed at para. 36 of Mills. Answer 4. Paragraph 36 reads as follows: [0036] In some situations, the end of term value at 32 may not be greater (or sufficiently greater) than the residual value of the vehicle at the end of the lease. In these situations, processing may revert via 34 to step 30 where a different investment option or allocation may be selected (e.g., having a higher expected rate 2 The statement of the rejection indicates that claims 1-27 are rejected. See Non-Final Office Action (mailed Apr. 10, 2013), 3; Answer 3. However, claims 4 and 19 were cancelled and claims 28-30 added by Amendment, filed Dec. 28, 2011, and so indicated on page 2 of the Non-Final Office Action. This is the Appellants' understanding. See Appeal Br. 6. Accordingly, the indication that claims 1-27 are rejected is taken as an inadvertent mistake. 3 Appeal2014-008921 Application 11/823,004 of return). Processing may revert via 34 to allow the buyer to analyze the potential performance of other investment mixes or alternatives as well. In some embodiments, processing may revert to 26 to allow the buyer to create a loan buyout product with different lease terms as well. We agree with the Appellants that said cited passage does not disclose allocating portions of a residual value risk as claimed. Said passage is directed to providing an option to allocate a different investment with respect to a lease buyout transaction. See Mills, para. 13, Fig. 2. A prima facie case of obviousness has not been made out in the first instance by a preponderance of the evidence. NEW GROUND OF REJECTION Claims 1-3, 5-18, and 20-30 are rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. Alice Corp. Pty. Ltd. v. CLS Bank Irzternational, 134 S. Ct. 2347 (2014) identifies a two-step framework for determining whether claimed subject matter is judicially-excepted from patent eligibility under Â§ 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. Id. at 2355. Taking claim 1 as representative of the claims on appeal, the claimed subject matter is directed to risk allocation. There is no meaningful difference between risk allocation and risk hedging (see Bilski v. Kappas, 130 S. Ct. 3218 (2010)) and risk management (see Int'! Sec. Exch., LLC v. Chicago Bd. Options Exch., Inc., No. CBM2013-00049 (PTAB March 2, 2015), aff'd, Chicago Bd. Options Exch., Inc. v. Int'! Sec. Exch., LLC, 640 4 Appeal2014-008921 Application 11/823,004 Fed. Appx. 986 (mem) (Fed. Cir. 2016) (nonprecedential) (Rule 36)). Like them, risk allocation is a fundamental economic practice and as such is an abstract idea. Step two of Alice 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."' 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs, Inc., 132 S. Ct. 1289, 1294 (2012)). We see nothing in the subject matter claimed that transforms the abstract idea of risk allocation into an inventive concept. Claim 1 seeks to allocate a residual value risk for a vehicle leased to a consumer. But a residual value risk for a vehicle leased to a consumer is well known. See Spec., para. 6. Applying the abstract idea of risk allocation to well-known residual value risks is insufficient to ensure that the claimed subject matter in practice amounts to significantly more than it being directed to risk allocation itself. Claim 1 sets out five steps, the first three involve setting a residual value for a vehicle to be applicable at a predetermined lease maturity date; determining an actual value for a vehicle at a time corresponding to the predetermined lease maturity date; and, calculating a difference between the residual value and the actual value, difference being the residual value risk associated with said vehicle leased to the consumer. These steps describe a procedure for obtaining a residual value risk; in effect, they are information- gathering steps. These steps appear to be known (see Spec., para. 7) but nevertheless do not patentably transform the risk allocation abstract idea. 5 Appeal2014-008921 Application 11/823,004 The final two steps seek to allocate two portions of said obtained residual value risk - the first to a dealer organization and the second to a manufacturer group. Allocating two portions of risk for distribution to different entities does little to patentably transform the risk allocation abstract idea itself. It simply divides the risk and makes an arrangement to share it between entities. Otherwise, claim 1 calls for employing a "computer system configured" to allocate the risk as claimed. But any general-purpose computer available at the time the application was filed would have satisfied the computer system as claimed. The Specification supports that view. See Spec., para. 19. For the foregoing reasons, we find that claim 1 covers claimed subject matter that is judicially-excepted from patent eligibility under Â§ 101. Claims 9 and 15 parallel claim 1 and similarly cover claimed subject matter that is judicially-excepted from patent eligibility under Â§ l 01. The dependent claims describe various risk allocation schemes which do little to patentably transform the risk allocation abstract idea. Therefore, we enter a new ground of rejection of claims 1-3, 5-18, and 20-30 under 35 U.S.C. Â§ 101. For the foregoing reasons, the rejection is reversed but the claims are newly rejected under Â§ 101. CONCLUSIONS The rejection of claims 1-3, 5-18, and 20-30 under 35 U.S.C. Â§ 103(a) as being unpatentable over Murase and Mills is reversed. 6 Appeal2014-008921 Application 11/823,004 Claims 1-3, 5-18, and 20-30 are newly rejected under 35 U.S.C. Â§ 101 as being directed to non-statutory subject matter. DECISION The decision of the Examiner to reject claims 1-3, 5-18, and 20-30 is reversed. Claims 1-3, 5-18, and 20-30 are newly rejected. NEW GROUND This decision contains a new ground of rejection pursuant to 37 C.F.R. Â§ 41.50(b). 37 C.F.R. Â§ 41.50(b) provides "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review." 37 C.F.R. Â§ 41.50(b) also provides that the Appellants, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... REVERSED; 37 C.F.R. Â§ 41.50(b) 7