Ex Parte Rothman et al

Patent Trial and Appeal Board

Mar 12, 2018

12541842 (P.T.A.B. Mar. 12, 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.
12/541,842 08/14/2009 Dan Rothman GOLDl 1-00037 4290
132787 7590
Docket Clerk-GOLD
P.O. Drawer 800889
Dallas, TX 75380
EXAMINER
HAMILTON, SARA CHANDLER
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
03/14/2018 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):
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAN ROTHMAN and MARK HIGGINS
Appeal 2015-002561
Application 12/541,842
Technology Center 3600
Before HUBERT C. LORIN, MICHAEL W. KIM, and
CYNTHIA L. MURPHY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
The Appellants filed a Request for Rehearing under 37 C.F.R. § 41.52
of the Decision on Appeal.
In the Decision on Appeal, the Board
• affirmed the rejection of claims 21—38 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter;
• reversed the rejection of claims 21—38 under 35 U.S.C. § 112, first
paragraph, for failing to comply with the written description
requirement;
1 This Decision references the Appellants’ Request for Rehearing (“Req.,”
filed Dec. 26, 2017) and the Board Decision (“Dec.,” mailed Oct. 26, 2017).
Appeal 2015-002561
Application 12/541,842
• reversed the rejection of claims 21—38 under 35 U.S.C. § 103(a) as
being unpatentable over Heinzle, Kinney and Rackson; and,
• reversed the rejection of claims 21—3 8 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable
over claims 1—17 of Rothman.
The Request seeks reconsideration only of the Board’s decision to
affirm the rejection of claims 21-38 under 35 U.S.C. § 101 as being directed
to non-statutory subject matter. The Appellants make several points they
believe the Board overlooked or misapprehended.
DISCUSSION
The Request begins with a review of the Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). Req. 2. We have no issue
with what is said there.
The Request then proceeds to the Alice step one analysis. Req. 3-6.
“Step 1: The claims are not directed to an abstract idea” (Req. 3)
According to Alice, “[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. (Emphasis added.) The first paragraph gives an
overview of what the “directed to” inquiry entails according to Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Req. 3. We have
no issue with what the Appellants say about that matter.
The next paragraph discusses McRO, Inc. v Bandai Namco Games
America, 837 F.3d 1299 (Fed. Cir. 2016). Req. 3^4. By and large, we agree
with what is said here. But the statement “[t]he claims were found to be
patent-eligible even where the claimed improvement was incorporated in
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Application 12/541,842
software processed by a general-purpose computer and did not result in an
improvement in the technological performance of a computer, computer
functionality, or computer network” (Req. 3 4) is too simple a takeaway. In
McRO, the automation was the technological improvement and the computer
was integral to that. “The computer here is employed to perform a distinct
process to automate a task previously performed by humans.” Id. at 1314.
“When looked at as a whole, claim 1 is directed to a patentable,
technological improvement over the existing, manual 3-D animation
techniques. The claim uses the limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice.” Id. at 1316. Notwithstanding that a conventional
computer could be used, the computer was not “merely a conduit” for an
abstract idea. In re TLI Communications LLC Patent Litigation, 823 F.3d
607, 612 (Fed. Cir. 2016).
The next paragraph cites the “November 2016 Memorandum from the
Deputy Commissioner for Patent Examination Policy on Recent Subject
Matter Eligibility Decisions” calling on examiners to consider claims as a
whole and resolve questions of preemption. We have no issue with that.
Next paragraph, the Appellants begin by stating that “the claims are
not directed to an abstract idea. Rather, the claims recite specific processes
that use particular information and techniques and that are specifically
designed to achieve a particular result.” Req. 4 (italics omitted). And then
claim 21 is reproduced almost in its entirety.
The following paragraph argues that the particular combination of
information processing steps that claim 21 recites makes it “limited to a
specific process using particular information and techniques,” and the claim
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is directed to “’a specific way of achieving a desired outcome or end
result.’” Req. 5, referring to McRO and the Nov. 2016 Memo. “Claim 21
does not preempt approaches that use different information or different
techniques.” Req. 5. And for those reasons, “the character of Claim 21 as a
whole is not simply directed to excluded subject matter.” Req. 5.
But this is the same argument raised in the Reply Brief (page 5) and
we addressed it, as set forth below.
The Appellants also argue that the claims are “directed
toward specific systems, methods and techniques that allow a
computerized marketplace to facilitate the determination of a
best bid or best offer in a multi-currency setting" and "there is no
concern of a monopolization of the basic tools of scientific and
technology work that might impede innovation more than it
would promote it.” Reply Br. 5. These are not persuasive
arguments. The “specific” scheme claim 1 [sic, 21] describes
does not make the concept to which it is directed to any less
abstract. It simply narrows its scope. The other argument is one
of pre-emption (which Appellants further discuss at Reply Br. 4
(“No Preemptive Effect”)). With respect to the preemption
concern, “[w]hat matters is whether a claim threatens to subsume
the full scope of a fundamental concept, and when those concerns
arise, we must look for meaningful limitations that prevent the
claim as a whole from covering the concept's every practical
application.” CLS Bank Intern, v. Alice Corp. Pty. Ltd., Ill F.3d
1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here, the
claim limitations to the scheme for facilitating buying and selling
currencies simply narrows the abstract idea so that it is described
at a lower level of abstraction. It does not render the abstract idea
to which the claim is directed to any less an abstract idea.
Dec. 8—9. We could not have misapprehended or overlooked something we
squarely addressed.
The Request next argues that “[t]he Decision mistakes the Appellants'
argument that the claims cannot possibly be interpreted as covering any and
all forms of the abstract idea and do not preempt the use of the alleged
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Application 12/541,842
abstract idea - the very basis for the abstract idea exception.” Req. 5. “It is
without question that Claim 21 does not preempt every implementation of
‘selecting a price in a multi-currency marketplace.’ For example,
currency exchange fees may be disregarded completely in selecting a price
in a multi-currency marketplace.” Req. 5-6. We made no such mistake.
To be more accurate, the Appellants argued that the claims excluded
“[m]any different ways of determining bid or offer prices in a multi-currency
setting [that] exist.” Reply Br. 5. We did consider this statement, and do not
disagree that the claim has a limited scope. We simply were not persuaded
that the limitations made the abstract idea to which the claim was directed to
any less abstract, albeit they had the effect of causing the subject matter to
be described at a lower level of abstraction. In that regard, we stated:
[h]ere, the claim limitations to the scheme for facilitating buying
and selling currencies simply narrows the abstract idea so that it
is described at a lower level of abstraction. It does not render the
abstract idea to which the claim is directed to any less an abstract
idea
Dec. 8—9.
The Appellants then seek to turn said statements of ours in their favor,
relying on Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir.
2017). Req. 6. The Appellants argue that “Judge Hughes asserted in the
dissent that he did ‘not believe that we can describe the fundamental concept
behind the ’740 claims at a lower level of abstraction than categorical data
storage.’” According to the Appellants, “the [Thales] claims, which were at
‘a lower level of abstraction’ than the abstract idea, were patent eligible.
[Thus, in] the instant case, if Claim 21 narrows the scope of the abstract
idea, then, as in Thales, Claim 21 [is] patent eligible.” Req. 6.
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But Judge Hughes was not on the panel in Thales. We think the
Appellants mean to cite Judge Hughes’s dissent in Visual Memory LLC v.
NVIDIA Corporation, 867 F.3d 1253 (Fed. Cir. 2017). But the points Judge
Hughes made there does not help the Appellants.
Judge Hughes challenged the majority’s determination, under step one
of the Alice analysis, that the Visual Memory claims were directed to more
than the concept of categorical data storage. Judge Hughes did “not believe
that we can describe the fundamental concept behind the ’740 claims at a
lower level of abstraction than categorical data storage.” Id. at 1263.
In sum, I believe the majority has analyzed step one of Alice in
a way that is untethered from the ’740 claims and the
specification. Under the majority's reasoning, many patent
ineligible computer-implemented inventions could be described
as non-abstract because they purport to “improve” a computer
despite requiring someone else to provide all the innovation. I
would find the ’740 claims are directed to the abstract idea of
categorical data storage, and that the claims fail to recite any
inventive concepts sufficient to transform the abstract idea into a
patent eligible invention under § 101.
Id. at 1264.
Neither Thales nor Visual Memory stand for the proposition that,
when additional limitations lower the level of abstraction to which the
subject matter was determined to be directed to, that the claimed subject
matter is necessarily no longer directed to an abstract idea. This cannot be,
because“[a]n abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-1241 (Fed.
Cir. 2016).
Finally, the Appellants argue that “[t]he Decision has therefore failed
to establish that Claim 21 is directed to an abstract idea.” Req. 6. What we
actually established was that
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Application 12/541,842
[t]he Appellants do not dispute the Examiner's characterization
of the claims as being directed to “selecting a price in a multi-
currency marketplace.” Nor do the Appellants dispute the
Examiner's position that if the claims are directed to “selecting a
price in a multi-currency marketplace,” they are directed to an
abstract idea because “selecting a price in a multi-currency
marketplace” is a fundamental economic practice.
Dec. 5. We then considered that the Appellants’ arguments challenging the
Examiner’s step one determination, determining that they were
unpersuasive. The Request does not change our view.
We have considered all of the Appellants’ remaining arguments with
respect to the Decision’s determination under Alice step one, and have
determined them to be unpersuasive.
We now turn to the Request’s discussion about the Decision’s step
two analysis.
“Step 2: The claims recite significantly more than the alleged abstract
idea” (Req. 6)
The Appellants argue that “the Decision essentially focuses on the
possible use of a generic computer and the alleged lack of an improvement
to computer functionality. That is not the second step of the Mayo test.”
Req. 6.
It is not accurate to say that the Decision “essentially focuses on the
possible use of a generic computer and the alleged lack of an improvement
to computer functionality.” Req. 6. This is the Appellants’ argument in the
Reply Brief — in its entirety:
Significantly More
The Examiner states that “[t]he steps or acts performed (by
a computer) in independent method claims 21 and 25 are not
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Application 12/541,842
enough to qualify as ‘significantly more’ than the abstract idea
itself, since the claims are a mere instruction to apply the abstract
idea.[.v/6‘ ”] The Appellant disagrees. As an initial matter the
claims recite a variety of elements in addition to a computer. For
example, claims 21 and 25 recite a currency exchange which the
computer accesses to retrieve currency data. As in Federal
Circuit decision of Sirf Technology v. ITC, where the claims
recited a GPS receiver, the currency exchange recited in claims
21 and 25 are used in the operation of the claimed method and
plays a significant part in permitting the claimed method to be
performed. As such, even though the performance of the claim
requires a variety of calculations, the claim should be found
eligible and the rejection reversed.
Reply Br. 5-6. We focused on the statement “the claims recite a variety of
elements in addition to a computer. For example, claims 21 and 25 recite a
currency exchange which the computer accesses to retrieve currency data.”
Reply Br. 6. We were not persuaded by this argument, saying that
“[regarding the ‘currency exchange’ argument, this goes to the content of
the information the computer processes. That adds little of significance.”
Dec. 10, footnote 2, citing Electric Power Group, LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016).
The Request now further argues that
the [individual functions] in Claim 21... [combine to create non­
standard functions] ... [are] other than what is well-understood,
routine, and conventional [in the field] ... when taken as an
ordered combination of features recited in the claim, provide
unconventional steps that confine the alleged abstract idea to a
particular useful application ... [the] ordered combination
amount[s] to significantly more that the alleged abstract idea ...
[are] significantly more than the alleged abstract idea of
“selecting a price in a multi-currency marketplace” [and] are
“more than a drafting effort designed to monopolize the [abstract
idea]”.
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Application 12/541,842
Req. 7—8. Again, we are not told what arrangement of components claim 21
recites that qualifies as a non-standard, unconventional, ordered combination
that amounts to significantly more that the alleged abstract idea, etc. We do
not see it, and the Appellants do not help us to see it. What we still see is ‘“a
computer’ [ ] performing] routine information processing tasks such as
‘determining,’ ‘receiving,’ ‘accessing,’ ‘ranking,’ ‘displaying/outputting,’
and ‘selecting’” (Dec. 10) arranged in a well-understood, routine, or
conventional ordered combination. For example, the computer accesses a
source of data (i.e., the “currency exchange”) and retrieves data (i.e.,
“currency data”) therefrom. The Appellants do not show it to be otherwise.
Given this we maintain that
[t]he Appellants [ ] do not point with particularity to claim
limitations, or even statements in the Specification, that describe
the recited computer components as anything more than common
generic computer elements that are capable of performing said
routine tasks. The record, therefore, supports the Examiner's
position. “[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.” Alice, 134 S. Ct.
at 2358 (quoting Mayo, 132 S. Ct. at. 1294). See also Bancorp
Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he use of a computer in an
otherwise patent-ineligible process for no more than its most
basic function-making calculations or computations fails to
circumvent the prohibition against patenting abstract ideas and
mental processes.”).
Dec. 10-11.
We have considered all of the Appellants’ remaining arguments with
respect to the Decision’s determination under Alice step two and have
determined them to be unpersuasive.
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CONCLUSION
We have carefully considered the arguments that the Appellants have
set forth in the Request but, for the foregoing reasons, we are unpersuaded as
to error in the Board’s decision of October 26, 2017 to affirm the rejection of
claims 21-38 under 35 U.S.C. § 101 as being directed to non-statutory
subject matter.
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).
DENIED
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