Ex Parte Portier et al

Patent Trial and Appeal Board

Mar 15, 2018

13270494 (P.T.A.B. Mar. 15, 2018)

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.
13/270,494 10/11/2011 Bertrand H. Portier CHA920110015US1 1002
45095 7590 03/19/2018
HOFFMAN WARNTOK T T C
EXAMINER
540 Broadway
4th Floor
GARCIA-GUERRA, DARLENE
ALBANY, NY 12207 ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
03/19/2018 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):
PTOCommunications@hoffmanwarnick.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BERTRAND H. PORTIER, MEI Y. SELVAGE, and
SURAJ SHINDE
Appeal 2016-001760
Application 13/270,4941
Technology Center 3600
Before HUBERT C. LORIN, JOSEPH A. FISCHETTI, and
BRUCE T. WIEDER, 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 1—3, 7—9, and 13—15. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is International Business
Machines Corporation. (Appeal Br. 1.)
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CLAIMED SUBJECT MATTER
Appellants’ claimed invention relates “to solutions for business
activity monitoring.” (Spec. 11.) The Specification discloses that business
activity monitoring “refers to the aggregation, analysis, and presentation of
real-time information about activities within an organization, as well as
those activities involving customers and partners outside of the
organization.” {Id. 12.)
Claims 1, 7, and 13 are the independent claims on appeal. Claim 1 is
illustrative. It recites:
1. A system comprising:
at least one computing device adapted to monitor business
activities including a loan application process, by performing
actions comprising:
collecting business activity data at a first web
browser, the business activity data indicating at least one
aspect of a business transaction conducted at a second,
distinct web browser,
wherein the business transaction includes an
application for a loan, and
wherein the second web browser is initiated by a
human user applying for the loan on a web-enabled device;
collecting additional business activity data at the
first web browser, the additional business activity data
indicating at least one aspect of the loan application
conducted at a third web browser distinct from the first
web browser and the second web browser,
wherein the third web browser is initiated by a loan
verification company to verify the application for the loan
at a distinct web-enabled device,
wherein each distinct one of the first web browser,
the second web browser and the third web browser
include:
an analytics and reporting engine;
a data collector; and
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a web server engine,
wherein the data collector for each distinct one of
the first web browser, the second web browser and the
third web browser collects the business activity data
locally at each distinct one of the first web browser, the
second web browser and the third web browser;
sorting the business activity data about the
application for the loan according to one or more sorting
parameters at the first web browser; and
providing a report including the sorted business
activity data at a uniform resource locator (URL)
accessible to the first web browser, the second, distinct
web browser, and the third, distinct web browser.
REJECTIONS
Claims 1—3, 7—9, and 13—15 are rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter.
Claims 1—3, 7—9, and 13—15 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Bahadori (US 2008/0086558 Al, pub.
Apr. 10, 2008), Cancel (US 2008/0189408 Al, pub. Aug. 7, 2008), and
Moran (US 2010/0042534 Al, pub. Feb. 18, 2010).
ANALYSIS
The f101 rejection
Appellants do not separately argue the rejected claims. We select
claim 1 as representative. Claims 2, 3, 7—9, and 13—15 will stand or fall with
claim 1. See 37 C.F.R. § 41.37(c)(l)(iv).
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-step framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
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(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-step 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
step 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 step one of the Alice framework, the Examiner
determines that the claims are directed to “the abstract idea of monitoring]
business activities.” (Final Action 8.) “Specifically, the series of steps
instructing how to collect business activity data, applying for a loan, and
verily the application for the loan would be directed to certain methods of
organizing human activities, which is an example identified by the Courts as
an abstract idea.” (Answer 23—24.)
Appellants disagree and argue that “the present claim language is
directed toward monitoring business activities including a loan application
process at distinct web browsers.” (Appeal Br. 9—10.)
Under step 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
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)).
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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 “relate[s]
to solutions for a web browser-based approach to business activity
monitoring.” (Spec. 11.) Claim 1 recites a system “performing actions
comprising: collecting business activity data at a first web browser ... at
least one aspect of a business transaction conducted at a second . . . web
browser,” “collecting additional business activity data at the first web
browser ... at least one aspect of the loan application conducted at a third
web browser,” “the data collector for each . . . browser collects the business
activity data locally at each . . . browser,” “sorting the business activity data
... at the first web browser,” “and providing a report.” In short, claim 1 is
directed to collecting business activity data related to applying for a loan and
verifying the loan application, sorting the data, and providing a report, with
the activities occurring among three generic web browsers.
Although we describe to what claim 1 is directed at a different level of
abstraction than the Examiner, we note that “[a]n abstract idea can generally
be described at different levels of abstraction.” Apple, Inc. v. Ameranth,
Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). However, that need not and, in
this case does not, “impact the patentability analysis.” See id. at 1241.
“[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.” Elec. Power Grp., 830 F.3d at 1353. “In
a similar vein, we have treated analyzing [e.g., sorting] information by steps
people go through in their minds, or by mathematical algorithms, without
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more, as essentially mental processes within the abstract-idea category.” Id.
at 1354. “And we have 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.” Id. “Here, the claims are
clearly focused on the combination of those abstract-idea processes.” Id.
We do not find persuasive Appellants’ argument that the claim is not
directed to an abstract idea because “the claimed invention is directed to a
novel and nonobvious approach to monitoring a loan application process.”
(Appeal Br. 10-11.) “The ‘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).
Nor do we find persuasive Appellants’ argument that the claim is not
directed to an abstract idea because “the claimed invention is not trying to
preclude others from monitoring business activities. Preemption is not a
separate test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time, from
practicing the claimed invention. See 35 U.S.C. § 154. Rather,
the animating concern is that claims should not be coextensive
with a natural law, natural phenomenon, or abstract idea; a
patent-eligible claim must include one or more substantive
limitations that, in the words of the Supreme Court, add
“significantly more” to the basic principle, with the result that
the claim covers significantly less. See Mayo 132 S. Ct. at 1294
[566 U.S. at 72-73],
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CLSBankInt’l v. Alice Corp. Pty. Ltd., Ill F.3d 1269, 1281 (Fed. Cir.
2013) (Lourie, J., concurring), affd, 134 S. Ct. 2347 (2014). Moreover,
“[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
In other words, “preemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
In view of the above, we are not persuaded that the Examiner erred in
determining that claim 1 is directed to an abstract idea.
We now look to step 2 of the Alice framework. Step 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 or browser into the claim does not
alter the analysis in 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 it’ ” 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
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eligibility. This conclusion accords with the pre-emption
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 “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. (See Answer 25—27.)
Appellants argue that
the claims go beyond any alleged abstract idea, and recite a
significant improvement in a technology or technical field
(monitoring and analyzing loan transactions), as well as
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technological environment (utilizing
distinct web browsers having self-contained analytics/reporting
engine, data collector and web server engine to locally collect
data).
(Appeal Br. 13.) But claim 1 does not recite operation or even use of an
“analytics/reporting engine” or “web server engine.” Claim 1 recites that the
data collector for each browser “collects the . . . data locally,” and that some
non-specific “sorting [of] the business activity data” occurs at the first web
browser. Nor does claim 1 recite what provides the report of “the sorted
business activity.” In short, claim 1 recites the collection of data from three
generic web browsers, sorting, and providing “a report including the sorted
business activity data.” Claim 1 does not present an inventive concept. See
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1324—25 (Fed. Cir. 2016) (“[T]he claims ‘add’ only generic computer
components such as an ‘interface,’ ‘network,’ and ‘database.’ These generic
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computer components do not satisfy the inventive concept.”) In substance,
claim 1 is “directed to nothing more than the performance of an abstract
business practice . . . using a conventional computer. Such claims are not
patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014).
Moreover, taking the claim elements separately, the function
performed by the web browsers at each step is purely conventional.
Collecting data, sorting/analyzing data, and providing a report/results are
basic computer functions. Additionally, the Specification discloses that the
invention can be implemented using generic computer components. (See,
e.g., Spec. 133.) In short, each step does no more than require generic
computer components to perform routine computer functions.
Considered as an ordered combination, the computer components of
Appellants’ claimed system 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 browsers themselves. 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 using generic computer components. That is not enough to
transform an abstract idea into a patent-eligible invention. Alice, 134 S. Ct.
at 2360.
The § 103(a) rejection
Appellants argue that “the combination of Bahadori, Cancel and
Moran is silent regarding the process of applying for a loan, as well as the
process of verifying that application for the loan, where both of these
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processes are performed at distinct web browsers (and distinct web-enabled
devices).” (Appeal Br. 14—15.)
The Examiner finds that “Moran does indeed disclose the process of
applying for a loan, as well as the process of verifying that application for
the loan, where both of these processes are performed at distinct browsers.”
(Answer 29, citing Moran 142.) The Examiner further finds “that for
examination purposes the process of reviewing [loan] documentation for the
loan has been equated to [the] process of verifying that application for the
loan” and that “Moran teaches a web browser where the third party can
review the documentation by the purchaser of real estate.” {Id., citing
Moran | 8.) Additionally, the Examiner finds “that the process of applying
for a loan is performed at a first browser, the first browser being distinct to
the browser used to verify the application of the loan.” {Id. at 30, citing
Moran | 67.)
Appellants reply that Moran “fails to contemplate the distinct web
browser configuration claimed” and that “[t]he general citation in the Final
Action at pages 20-22 (and the Examiner’s Answer at page 17) to Moran’s
‘transactional facility’ is deficient in demonstrating that the above-noted
features are present in Moran.” (Reply Br. 12, citing Moran 149.)
We do not find Appellants’ argument persuasive of error. Moran
discloses a Ready-To-Close system including a Portal 1 which “is designed
to accept information from the Home Buyer” in applying for a loan. (Moran
142.) Moran also discloses that “documentation that supports the
information entered into the [automated underwriting system] is sent to the
underwriter who reviews it for accuracy. When the documents have been
accepted the status of the loan is reflected back onto the lenders website.”
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(Id. 1 8). Appellants do not persuasively argue why the Examiner’s specific
findings with regard to paragraphs 8, 42, and 67 of Moran do not fully
address Appellants’ argument regarding alleged deficiencies in the more
general disclosure of a “transactional facility” in paragraph 49 of Moran.
Appellants also argue that “the combination of Bahadori and Cancel
fails to teach or suggest the additional web browser which tracks the loan
application information of the other web browsers.” (Appeal Br. 15.)
As an initial matter, we note that claim 1 does not recite “tracking]
the loan application information of the other web browsers.” Thus, we do
not find this argument persuasive of error. Regardless, even if we assume
that Appellants are referring to the limitation “wherein the third web browser
is initiated by a loan verification company to verify the application for the
loan at a distinct web-enabled device” in claim 1, we are still not persuaded
of error. The Examiner relies on Moran, rather than Bahadori or Cancel, as
disclosing this limitation. (See Answer 29, citing Moran || 8, 42, 67.)
Appellants further argue
that Moran fails to teach, at least the distinct web browser
configuration claimed, for example, “...wherein each distinct one
of the first web browser, the second web browser and the third
web browser include: an analytics and reporting engine; a data
collector; and a web server engine, wherein the data collector for
each distinct one of the first web browser, the second web
browser and the third web browser collects the business activity
data locally at each distinct one of the first web browser, the
second web browser and the third web browser.”
(Appeal Br. 15, quoting claim 1.)
We are not persuaded of error. The Examiner finds “that the first
limitation (i.e. wherein each distinct one of the first web browser, the second
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web browser and the third web browser include: an analytics and reporting
engine; a data collector; and a web server engine[] was addressed by
Bahadori,” not Moran. (See Final Action 6—7, citing Bahadori || 6, 7, 9, 10,
21, 22, 26, 30.) Additionally, Appellants do not persuasively argue why the
Examiner erred in finding that Moran discloses 1) a first browser comprising
“a data collector to obtain data from the home buyer” (Answer 32, citing
Moran 142), 2) a second browser to “collect the business activity data
locally . . . evidenced by paragraph 0067, indicating that []FIG. 6a
demonstrates a manifestation of a log in procedure which could be used.
The client at a local computer desktop using browser software and
navigating to the RTC Client Log In . . .” (id.), and 3) “a third web browser
to provide the collected feedback to the originating lending company. The
originating lending company views the feedback information on their own
website” (id. at 33, citing Moran || 7, 8.)
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 1 under § 103. With regard to independent claims 7 and 13,
and dependent claims 2, 3, 8, 9, 14, and 15, Appellants rely on the same
arguments presented with regard to claim 1. (See Appeal Br. 16—19.) For
the reasons discussed above, we do not find these arguments persuasive of
error.
DECISION
The Examiner’s rejection of claims 1—3, 7—9, and 13—15 under
35U.S.C. § 101 is affirmed.
The Examiner’s rejection of claims 1—3, 7—9, and 13—15 under
35 U.S.C. § 103(a) is affirmed.
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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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