10135621 (P.T.A.B. Oct. 16, 2017)

Ex Parte Reich

Patent Trial and Appeal BoardOct 16, 2017

10135621 (P.T.A.B. Oct. 16, 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. 10/135,621 04/30/2002 Hans-Linhard Reich GOLDl 1-00010 5579 132787 7590 Docket Clerk-GOLD P.O. Drawer 800889 Dallas, TX 75380 EXAMINER GART, MATTHEW S ART UNIT PAPER NUMBER 3623 NOTIFICATION DATE DELIVERY MODE 10/18/2017 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): j ohn. maxin @ gs. com patents @ munckwilson. com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte HANS-LINHARD REICH Appeal 2016-003087 Application 10/135,621 Technology Center 3600 Before MICHAEL J. STRAUSS, ADAM J. PYONIN, and DAVID J. CUTITTAII, Administrative Patent Judges. PYONIN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING Appellant filed a Request for Rehearing under 37 C.F.R. § 41.52(a)(1) (“Req.”) on August 14, 2017 for reconsideration of our Decision mailed June 14, 2017 (“Dec.”). We have reconsidered the Decision in light of Appellant’s arguments; however, we are not persuaded of any error therein. Appeal 2016-003087 Application 10/135,621 DISCUSSION In the Decision, we affirmed the Examiner’s rejection of the claims pursuant to 35 U.S.C. § 101, finding “we agree with the Examiner that ‘[t]he instant invention/claims are drawn to modeling, via graph building, business activity,’ and claim 1 does not include additional elements ‘individually or as an ordered combination, that transforms the nature of the claim into a patent-eligible application.’” Dec. 6 (quoting Ans. 4); see also Alice Corp. Pty Ltd. v. CLSBanklnt’l, 134 S. Ct. 2347, 2355 (2014) (describing the two- step framework “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts”). Appellant argues “[t]he Decision errs by assuming that the elements of the Appellant’s claims cannot amount to significantly more merely because they could be implemented using generic computer functions.” Req. 3. Appellant contends the claims do not amount to an unpatentable abstract idea, because the limitations in “[cjlaim 1 all extend substantially beyond the mere concept of registering users for fulfillment activities based on unfulfilled requirements.” Id. 5. Thus, Appellant asserts “[tjhese elements cannot be ignored simply because they allegedly could be implemented using generic computer functions” {id.), and the “claims when read as a whole (and not after being summarized into a few words) accomplishes something that is not conventional in the Appellant’s field” {id. 6). Appellant does not persuade us we erred. First, we note Appellant’s arguments essentially restate the positions of the briefs without identifying specific points we misapprehended or misunderstood in our decision. See 2 Appeal 2016-003087 Application 10/135,621 37 C.F.R. § 41.52. Further, claim 1 recites a method for determining regulatory compliance by determining “unfulfilled employee financial securities regulatory requirements” for a user based on user information and an event that occurred for the user, warning the user about unfulfilled requirements, and registering the user for fulfillment activities based on the determined unfulfilled requirements. This is a method that could be performed by, or on behalf of, a user who must comply with regulatory requirements: for example, a broker serving clients in various jurisdictions. See Dec. 6—7; Spec. 22:25—28; 24:1—5. Appellant does not persuade us we overlooked or misidentified any points when we found these claim steps are “mental processes [which] remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper.” Dec. 7. That is, the claim limitations, taken as a whole, are directed to organizing human activity or fundamental economic practices, and are an abstract concept pursuant to the first step of the Alice framework. See Dec. 5; see also Ans. 3; Final Act. 5. Our reviewing court has held claims similarly directed to certain methods of organizing human activity and fundamental economic practices are abstract ideas. See, e.g., Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (collecting, analyzing, and displaying certain results of the collection and analysis); Accenture Global Services, GmbHv. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) (generating task based rules based on an event); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (contractual arrangement guarantees); In re Salwan, Appeal No. 2016-2079, 2017 WL 957239 at *3 (Fed. Cir. Mar. 13, 2017) (affirming the rejection under § 101 3 Appeal 2016-003087 Application 10/135,621 of claims directed to “storing, communicating, transferring, and reporting patient health information,” noting that “while these concepts may be directed to practical concepts, they are fundamental economic and conventional business practices”). Further, Appellant also does not persuade us we misapprehended or overlooked any points in determining the claims do not recite additional elements that transform the nature of the claim into a patent eligible application, pursuant to the second step of the Alice framework. See, e.g., Dec. 8—9; Ans. 4—5; Final Act. 5—6. As we noted in our Decision, the specific limitations identified by Appellant, such as the claimed “jurisdiction in which a client is located,” (see, e.g., Req. 5—6), are conventional and “are merely part of the abstract idea itself’ (Dec. 7). See Ans. 3 (the claim limitations “all describe the abstract idea” which is directed to the “concept involving human activity relating to commercial purposes (e.g.[,] financial companies have long been responsible for ensuring their employees meet financial security regulatory requirements such as certifications, training and the like).”). We find that accounting for factors such as the client location when determining requirements for a user (e.g., the client’s broker) does not “demonstrate a technologically-rooted solution.” Contra Req. 5. The limitations do not improve the relevant technology; rather the claims are 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); see also In re TLI Communications LLC Patent Litigation, 823 F.3d 607, 612 (Fed. Cir. 2016) (“the claims here are not directed to a specific improvement to computer functionality. Rather, 4 Appeal 2016-003087 Application 10/135,621 they are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two.”). Accordingly, we are not persuaded that we overlooked or misapprehended any points in determining the Examiner correctly found “the claimed invention is unpatentable pursuant to the two-step framework of Alice.” Dec. 4. DECISION We have granted Appellant’s request to the extent that we have reconsidered our Decision, but we deny the request with respect to making any changes therein. 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). REHEARING DENIED 5