Ex Parte Riley

Patent Trial and Appeal Board

Feb 21, 2018

14316861 (P.T.A.B. Feb. 21, 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.
14/316,861 06/27/2014 Charles A. RILEY 203241.02 9566
25944 7590
OLIFF PLC
P.O. BOX 320850
ALEXANDRIA, VA 22320-4850
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
02/23/2018 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):
OfficeAction25944@oliff.com
j armstrong @ oliff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES A. RILEY
Appeal 2016-007878
Application 14/316,8611
Technology Center 3600
Before CARLA M. KRIVAK, HUNG H. BUI, and JON M. JURGOVAN,
Administrative Patent Judges.
JURGOVAN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1—19, which are all the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.2
1 The inventor, Charles A. Riley, is the real party in interest. (Br. 1.)
2 Our Decision refers to the Specification (“Spec.”) filed June 27, 2014, the
Final Office Action (“Final Act.”) mailed April 20, 2015, the Appeal Brief
(“Br.”) filed December 21, 2015, and the Examiner’s Answer (“Ans.”)
mailed June 8, 2016.
Appeal 2016-007878
Application 14/316,861
CLAIMED INVENTION
The claims are directed to a method, software interface, and database
for “tracking and aggregating all Securities and Exchange Commission
(SEC) ‘shelf’ registration^] and all capital market activity related to those
shelf registrations.” (Spec. 12; Abstract.)
Claims 1 and 17 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computerized method of tracking investment
registrations, comprising:
selecting, using a computer, an identification of a shelf
registration of an entity;
downloading, from a first database located remote from
the computer over a network, data associated with investment
registrations of entities, wherein the data is organized as a series
of individual filings;
determining when there are subsequent filings related to
the shelf registration of the entity in the first database;
downloading, by the computer, data from the first
database associated with subsequent filings of the entity in
response to determining that there are subsequent filings for the
entity; and
storing, in a second database that is different from the
first database, an association of the subsequent filings of the
entity with the shelf registration of the entity.
(Br. A-l (Claims App’x).)
REJECTION
Claims 1—19 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. (Final Act. 3—4.)
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Application 14/316,861
ANALYSIS
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Patentable subject matter is defined by 35 U.S.C. § 101 as follows:
[wjhoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor,
subject to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalkv. Benson, 409 U.S. 63, 67 (1972); Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012); Alice Corp. Pty.
Ltd. v. CLSBankInt’l, 134 S. Ct. 2347, 2354 (2014). The rationale is that
patents directed to basic building blocks of technology would not “promote
the progress of science” under the U.S. Constitution, Article I, Section 8,
Clause 8, but instead would impede it. Accordingly, laws of nature, natural
phenomena, and abstract ideas are not patent-eligible subject matter. Thales
VisionixInc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 134
S. Ct. at 2354).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice. Alice, 134 S. Ct. at 2355. The first step is to determine
whether the claim is directed to a patent-ineligible concept. Alice, 134 S. Ct.
at 2355 (citing Mayo, 566 U.S. at 76—77). If so, then the eligibility analysis
proceeds to the second step of the Alice!Mayo test, in which we “examine
the elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at
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72, 79). The “inventive concept” may be embodied in one or more of the
individual claim limitations or in the ordered combination of the limitations.
Alice, 134 S. Ct. at 2355. The “inventive concept” must be significantly
more than the abstract idea itself, and cannot be simply an instruction to
implement or apply the abstract idea on a computer. Alice, 134 S. Ct. at
2358. “‘[W]ell-understood, routine, [and] conventional activities]’
previously known to the industry” are insufficient to transform an abstract
idea into patent-eligible subject matter. Alice, 134 S. Ct. at 2359 (citing
Mayo, 566 U.S. at 73).
The Examiner finds the claims are directed to “financial management”
and “investment registrations tracking” that are analogous or similar to the
abstract idea of a “fundamental economic practice” discussed in Alice and
Bilski {see Alice, 134 S. Ct. at 2356—57; Bilski v. Kappos, 561 U.S. 593
(2010)). (Final Act. 3—A\ Ans. 6—8.) The Examiner also finds Appellant’s
claims could be performed by a human using pen and paper (see
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir.
2011)). (Ans. 8—9.) The Examiner further finds the features that Appellant
relies on to establish the claim is “significantly more” than the judicial
exception are actually “a general purpose computer” and other generic
computer components performing “computer functions that are well-
understood, routine and conventional,” such as the functions of “receiving,
processing, and storing data,” “transmitting data over a network,” and
“electronic recordkeeping.” (Ans. 6—7, 10-11.)
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Application 14/316,861
Appellant argues claims 1—19 as a group. (Br. 5—10.) We select claim
1 as representative. Claims 2—19 stand or fall with claim l.3 See
37C.F.R. §41.37(c)(l)(iv).
Appellant asserts the claims are not directed to an abstract idea of a
fundamental economic practice because Appellant’s claimed tracking of
investment registrations “has not occurred as a long-standing practice” and
“there is nothing fundamental about SEC selecting shelf registrations of an
entity, downloading such shelf registrations from a database (e.g., from an
SEC database) and determining when there are subsequent filings related to
the shelf registration of the entity in the database.” (Br. 5 n.3.) We do not
agree.
We agree with and adopt the Examiner’s findings as our own (see
Final Act. 3—6; Ans. 6—11.) Particularly, we agree with the Examiner that
Appellant’s claim 1 is reasonably characterized as directed to an abstract
idea of financial management by tracking investment registrations to reduce
investment risk for market participants (such as “investment banking
divisions of banks”), by “keep[ing] track of shelf registrations and
takedowns so that [the investment banks] know the value and[/]or the types
of securities available for issuance.” (See Spec. 1 6.) As recognized by the
Examiner, financial management for reducing investment risk is a
fundamental business practice long prevalent in our system of commerce,
similar to the fundamental economic practices identified in Alice (see Alice,
134 S. Ct. at 2356—57 (intermediated settlement to mitigate risk)) and Bilski
3 We note Appellant’s reference to “claims 1 and 18, as well as the claims
dependent therefrom” (see Br. 10) appears to include a typographical error,
because independent claim 17 (not dependent claim 18) has “claims
dependent therefrom.”
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(see Bilski, 561 U.S. at 599 (risk hedging)). (Ans. 8.) See also buySAFE,
Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014) (guaranteeing
transactions); Intellectual Ventures ILLC v. Capital One Bank (USA), 792
F.3d 1363, 1367 (Fed. Cir. 2015) (budgeting by “tracking financial
transactions to determine whether they exceed a pre-set spending limit”).
Additionally, information collection and analysis, including when
limited to particular content, is within the realm of abstract ideas. See, e.g.,
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed.
Cir. 2015); Digitech Image Techs., LLC v. Flees, for Imaging, Inc., 758 F.3d
1344, 1351 (Fed. Cir. 2014); CyberSource, 654 F.3d at 1370; and Alice, 134
S. Ct. at 2356. In addition, the Federal Circuit held that a process for
collecting data, analyzing the data, and displaying the results of the
collection and analysis is an abstract idea that is not patent-eligible. See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1353—54
(Fed. Cir. 2016) (holding that the claims were directed to an abstract idea
because “[t]he advance they purport to make is a process of gathering and
analyzing information of a specified content, then displaying the results, and
not any particular assertedly inventive technology for performing those
functions.”).
Appellant argues the claims are removed from the realm of “abstract
ideas” because claim 1, for example, “includes the concrete features of a
computer selecting an identification of a shelf registration^] downloading
from a first database data associated with the identified shelf registration . . .
[and] downloading subsequent filings of the entity,” and a “second database
storing] an association of the subsequent filings of the entity.” (Br. 6.) We
remain unpersuaded by Appellant’s argument. All the steps in Appellant’s
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claim 1 (and, similarly, claim 17)—including, for example: (i) selecting an
identification of a shelf registration of an entity; (ii) obtaining, from a first
remote database over a network, data associated with investment
registrations of entities; (iii) determining when there are subsequent filings
related to the shelf registration of the entity in the first database; (iv)
obtaining data from the first database associated with subsequent filings of
the entity in response to determining that there are subsequent filings for the
entity; and (v) storing, in a second database that is different from the first
database, an association of the subsequent filings of the entity with the shelf
registration of the entity—are consistent with a process readily performed by
a human being.
For example, the selecting and determining steps could be performed
by a user (e.g., an investment banking professional) reviewing SEC shelf
registrations of certain entities to determine when there are subsequent
filings related to a certain shelf registration of one entity; the downloading
steps could be performed by the user obtaining and manually recording data
associated with the identified subsequent filings of that entity; and the
storing step could be performed by the user manually recording a link
between previous takedowns (e.g., amount of securities already taken off the
shelf) and the initial amount of securities on the shelf, and manually
subtracting “the amount of the takedown from the original shelf, allowing a
user to keep track of how much of the shelf is remaining for future capital
issuance.” (See Spec. 151.) See CyberSource, 654 F.3d at 1372—73 (“[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under § 101.”); see also In re Comiskey, 554
F.3d 967, 979 (Fed. Cir. 2009) (“[MJental processes—or processes of human
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thinking—standing alone are not patentable even if they have practical
application.”); Gottschalk, 409 U.S. at 67 (“Phenomena of nature . . .,
mental processes, and abstract intellectual concepts are not patentable, as
they are the basic tools of scientific and technological work” (emphasis
added)). Additionally, mental processes remain unpatentable even when
automated to reduce the burden on the user of what once could have been
done with pen and paper. CyberSource, 654 F.3d at 1375 (“That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.'''’).
Appellant asserts the claimed “computer [is] a particular machine that
is specifically programmed to interact with the first and second databases” to
“track or maintain an association of subsequent filings of an entity with their
initial shelf registrations” for “the enormous amount of data and entities in
the SEC databases on a daily basis,” thereby “perform[ing] a multitude of
operations that simply could not be done prior to the present application.”
(Br. 9.) Appellant’s argument is not persuasive because the claims do not
require processing an “enormous amount of data and entities in the SEC
databases on a daily basis,” as Appellant advocates. Claim 1, for example,
merely requires tracking “subsequent filings related to” one “shelf
registration of an entity”; and claim 5 recites “displaying all shelf
registrations and subsequent filings associated with the entity,” neither claim
requiring the tracked entity to have a large number of (or even more than
one) shelf registrations.
Accordingly, we agree with the Examiner the claims are directed to
the abstract idea of financial management by tracking investment
registrations.
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Under step two of the Alice framework, we agree with and adopt the
Examiner’s findings on pages 6—11 of the Answer. We determine that the
additional limitations, taken individually and in the ordered combination, do
not constitute an inventive concept that adds significantly more to the
abstract idea or transforms the abstract idea into patentable subject matter.
Particularly, claim 1 recites well-understood, routine, and conventional
elements (i.e., a computer and two databases), which perform “computer
functions that are well-understood, routine and conventional,” such as the
functions of “receiving, processing, and storing data,” “transmitting data
over a network,” and “electronic recordkeeping.” (Ans. 6—7, 10—11.)
Further, under the second step of the Alice inquiry, Appellant argues
the present claims are similar to the claims in DDR Holdings, LLC, v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), in that these claims
address “a problem necessarily rooted in the realm of SEC filings” and
“provide a solution necessarily rooted in SEC filings (e.g., instantly tracking
tens of thousands of SEC shelf registrations on a daily basis)” using a
computer “in performing the extensive computations, which has never been
achieved in the past.” (Br. 8.) We remain unpersuaded, as Appellant has
not demonstrated their claimed generic computer and databases are able in
combination to perform functions that are not merely generic, as the claims
in DDR. See DDR Holdings, 773 F.3d at 1258 (holding the claims at issue
patent eligible because “they do not broadly and generically claim ‘use of
the Internet’ to perform an abstract business practice (with insignificant
added activity),” and “specify how interactions with the Internet are
manipulated to yield a desired result—a result that overrides the routine and
conventional sequence of events ordinarily triggered by the click of a
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hyperlink”). As discussed supra, Appellant’s claims merely recite data
manipulation steps that can be performed by a conventional computer and
database. (Ans. 6—7, 10; see also Spec. 138.) For example, claim 1 evokes
the use of a computer and two databases to facilitate tracking investment
registrations; however, the functions performed by the claimed computer
and databases are conventional and do not go beyond those of a general
purpose computer connected to a database. (Ans. 6—7.)
The claims also do not appear to be adequately tied to “a particular
machine or apparatus,” because any appropriate computer hardware and/or
software maybe used. Bilski, 561 U.S. at 601. In particular, “the
Specification indicates that the claimed methods and related computer
readable medium for tracking investment registrations can be built using a
general purpose computer and that the complexity of the system depends
only on the volume and rate of filing desired.” (Ans. 6—7 (citing Spec.
138).) Therefore, the claimed subject matter is not necessarily rooted in
computer technology. Additionally, the claims plainly focus on the problem
of obtaining information regarding SEC filings and shelf registrations “to
keep track of shelf registrations and takedowns” and “keep track of how
much of the shelf is remaining for future capital issuance”—a problem that
is not a technical problem or one rooted in technology. (See Spec, 6, 51.)
See Dealertrack, 674 F.3d at 1333—34 (“[sjimply adding a ‘computer aided’
limitation to a claim covering an abstract concept, without more, is
insufficient to render [a] claim patent eligible” (internal citation omitted));
and Intellectual Ventures, 792 F.3d at 1370 (“[Mjerely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea.”).
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Appellant also argues the present claims are similar to the claims in
Diamond v. Diehr, 450 U.S. 175 (1981), in that these claims “allow a more
accurate display of updating/tracking SEC filings (e.g., SEC shelf
registrations), which is a very cumbersome process that has been a very
difficult problem prior to the present application.” (Br. 7.) We remain
unpersuaded, as display interfaces are a standard and common method for
users to enter and view information on a computer network. There is no
indication in the Specification that any inventive or specialized display is
required; instead, the claims merely recite displaying shelf registrations and
subsequent filings (e.g., claim 5). See Intellectual Ventures, 792 F.3d at
1370 (“the interactive interface limitation is a generic computer element”).
Thus, we agree with the Examiner that independent claims 1 and 17
are not directed to patent-eligible subject matter.
No separate arguments are presented for the dependent claims 2—16,
18, and 19, which fall with independent claims 1 and 17. 37 C.F.R.
§ 41.37(c)(l)(iv). We, therefore, sustain the rejection under 35 U.S.C. § 101
of claims 2—16, 18, and 19.
DECISION
The Examiner’s rejection of claims 1—19 under 35 U.S.C. § 101 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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