Ex Parte Salter

Patent Trial and Appeal Board

Nov 9, 2017

11628379 (P.T.A.B. Nov. 9, 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.
11/628,379 07/18/2007 Geoffrey Gordon Salter DAVI298.001APC 2619
20995 7590 11/14/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
11/14/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GEOFFREY GORDON SALTER
Appeal 2016-0008491
Application 11/628,3792
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MEDLOCK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4—6, 10-13, 15—26, 28, 29, 41, 42, and 44—51. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant’s Appeal Brief (“App. Br.,” filed
May 26, 2015) and Reply Br. (“Reply Br.,” filed October 14, 2015), and the
Examiner’s Answer (“Ans.,” mailed August 14, 2015) and Non-Final Office
Action (“Non-Final Act.,” mailed September 24, 2014).
2 Appellant identifies Transcon Securities Pty Ltd. as the real party in
interest. App. Br. 3.
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Application 11/628,379
CLAIMED INVENTION
Appellant’s claimed invention “relates to a system and method for
analysing risk associated with an investment portfolio” (Spec. 1,11. 7—8).
Claims 1, 12, 18, 24, 28, 29, 41, and 42 are the independent claims on
appeal. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A system configured to analyze risk associated with
an investment portfolio of an investor, said system comprising:
a computer processor; and
a computer readable medium, in communication with the
computer processor, comprising instructions which, when
executed, cause the computer processor to generate a user
interface for display on a user terminal, said user interface
including a table showing:
each of a plurality of investments of the investment
portfolio, at least one investment being a managed fund;
for each investment, a distribution of assets over a
plurality of asset classes, the distribution identifying a
percentage of the investment for each asset class;
a distribution of assets over said plurality of asset
classes of a benchmark risk category representing a risk
tolerance level of the investor; and
a distribution of assets over said plurality of asset
classes for the entire investment portfolio, the distribution
identifying an aggregated percentage of the entire
investment portfolio for each asset class.
REJECTION3
Claims 1, 2, 4—6, 10-13, 15—26, 28, 29, 41, 42, and 44—51 are rejected
under 35U.S.C. § 101 as directed to non-statutory subject matter.
3 The rejection of claims 1, 2, 4—6, 10-13, 15—26, 28, 29, 41, 42, and 44—51
under 35 U.S.C. § 103 has been withdrawn. See Ans. 3—9.
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ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 132 S. Ct. 1289, 1300 (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 Corp.,
134 S. Ct. at 2355. The first step in that analysis is to “determine whether
the claims at issue are directed to one of those patent-ineligible concepts.”
Id. If the claims are not directed to a patent-ineligible concept, e.g., an
abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the
second step where the elements of the claims are considered “individually
and ‘as an ordered combination”’ to determine whether there are additional
elements that “‘transform the nature of the claim’ into a patent-eligible
application.” Alice Corp., 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct.
at 1297).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
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abstract idea and merely invoke generic processes and machinery.
See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
In rejecting the claims under 35U.S.C. § 101, the Examiner finds that
the claims are directed to “allowing consumers to shop for and optionally
purchase merchandise,” i.e., to an abstract idea, and that the additional claim
elements do not provide meaningful limitations to transform the abstract
idea into a patent-eligible application of the abstract idea such that the
claims amount to significantly more than the abstract idea itself (Non-Final
Act. 2—3). Appellant argues that the Examiner mischaracterized the claimed
subject matter as being directed to “allowing consumers to shop for and
optionally purchase merchandise,” and charges that the Examiner failed to
recognize that the claims “relate to particular user-interfaces and recite
specific structural features required to ‘analyze risk associated with an
investment portfolio of an investor’” (App. Br. 23). Putting aside whether
the Examiner mischaracterized the claimed subject matter,4 to the extent that
4 Responding to Appellant’s argument in the Answer, the Examiner
characterizes the claimed invention as directed to:
a system and method of analyzing risk associated with an investment
portfolio which comprise inter alia the functions or steps of generating a
user interface for display on a user terminal, said user interface including
a table showing: each of a plurality of investments of the investment
portfolio, at least one investment being a managed fund; for each
investment, a distribution of assets over a plurality of asset classes, the
distribution identifying a percentage of the investment for each asset
class; a distribution of assets over said plurality of asset classes of a
benchmark risk category representing a risk tolerance level of the
investor; and a distribution of assets over said plurality of asset classes for
the entire investment portfolio, the distribution identifying an aggregated
percentage of the entire investment portfolio for each asset class.
Ans. 9—10.
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Appellant maintains that the claims are automatically patent-eligible because
they require a user interface, the Federal Circuit has held that the mere
recitation of a graphical user interface does not make a claim patent-eligible.
See, e.g., Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d
1363, 1370 (Fed. Cir. 2015).
We also are not persuaded of Examiner error by Appellant’s argument
that the pending claims are patent-eligible because the claims do not preempt
or otherwise tie up “all systems or methods of analyzing risk associated with
an investment portfolio” (App. Br. 23—24; see also id. at 26—27). There is
no dispute that the Supreme Court has described “the concern that drives this
exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption.” See Alice Corp., 134 S. Ct.
at 2354. But characterizing pre-emption as a driving concern for patent
eligibility is not the same as characterizing pre-emption as the sole test for
patent eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 134 S. Ct. at 2354). Although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id.
The Court in Alice provided several broad examples of what might
constitute an “abstract idea,” including (1) fundamental economic practices;
(2) certain methods of organizing human activities; (3) “an idea of itself’;
and (4) mathematical relationships or formulae. Alice Corp., 134 S. Ct.
at 2350; 2356; 2350; 2350. And these examples are reflected in the
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USPTO’s “2014 Interim Guidance on Patent Subject Matter Eligibility,”
79 Fed. Reg. 74618 (Dec. 16, 2014).
Referencing the Interim Guidance, Appellant argues that independent
claims 1, 12, 18, and 41 are patent-eligible because none of these claims
falls within these four categories (App. Br. 24). But there is no indication in
Alice that these examples were intended to be exhaustive. And, we are
aware of no controlling precedent, nor for that matter does Appellant
identify any precedent, that holds that only these enumerated categories can
quality as abstract ideas.
Moreover, although Appellant characterizes independent claims 1, 12,
18, and 41 as being “directed to ‘a system,’ ‘a non-transitory computer
readable medium,’ and ‘a computer system’” {id.), Appellant cannot
reasonably deny that the independent claims, including claims 24, 28, 29,
and 42, are directed to investment portfolio management, which is a
fundamental economic practice and, therefore, an abstract idea.
Appellant next argues that the claims are patent-eligible because
rather than being directed to mere instructions to implement an idea on a
computer, the claimed features are directed to systems and methods that
have the capacity to receive certain inputs, e.g., selection of investments and
selection of a benchmark risk category, and generate a specific output
interface, e.g., a table 106 as shown in Figure 87 of the Specification (App.
Br. 25—26). But that argument is not persuasive at least because, as
described above, the mere recitation of a user interface does not make a
claim patent-eligible.
In Trading Technologies International v. CQG Inc.,
675 F. App’x 1001 (Fed. Cir. 2017), where the Federal Circuit affirmed the
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district court’s holding that the patented claims (which recited a method and
system for displaying market information on a graphical user interface),
were not directed to an abstract idea, the district court found, and the Federal
Circuit agreed, that the challenged patents did not simply claim displaying
information on a graphical user interface; instead, the claims required “a
specific, structured graphical user interface paired with a prescribed
functionality directly related to the graphical user interface’s structure that is
addressed to and resolves a specifically identified problem in the prior state
of the art.” Id. at 1004.5 The Federal Circuit, thus, found that the district
court’s ruling was in accord with precedent that has recognized that “specific
technologic modifications to solve a problem or improve the functioning of a
known system generally produce patent-eligible subject matter.” Id.
at 1004—05
Appellant asserts here that the “interface generated by the system is
not conventional or routine in the field of portfolio analysis (App. Br. 27).
But Appellant does not identify any problem with prior art user interfaces
that the present interface was specifically designed to resolve. Instead, the
best that Appellant posits is that the claimed features “provide an efficient
5 Specifically, the district court found that with prior art GUIs, the best bid
and best ask prices changed based on updates received from the market;
therefore, there was a risk with these GUIs that a trader would miss her
intended price as a result of prices changing from under her pointer at the
time she clicked on the price cell on the GUI. The patents-in-suit provided a
system and method whereby traders could place orders at a particular,
identified price level, not necessarily the highest bid or the lowest ask price
by keeping the prices static in position, and allowing the quantities at each
price to change. Trading Techs. Int’l, Inc. v. CQG, Inc., No. 05-cv-4811,
2015 WL 774655 *4 (N.D. Ill. Feb. 24, 2015).
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way to present [a] complex set of information via a user terminal” (Reply
Br. 8).
The present claims, in our view, are like those claims that the courts in
Trading Technologies distinguished as patent-ineligible. Rather than
solving any technological problem, the present claims simply call for
displaying certain information in a user interface, including a graphical
table. See Trading Techs., 2015 WL 774655 at *4 (“If the claims simply
provided for ‘setting, displaying, and selecting’ data information, CQG
would be correct in its assessment that the claims are directed to an abstract
idea”); Trading Techs., 675 F. App’x at 1005 (“ineligible claims generally
lack steps or limitations specific to a solution of a problem, or improvement
in the functioning of technology”).
For much the same reasons, we also cannot agree with Appellant that
there is any parallel between claim 1 at issue here and the claims at issue in
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)
(App. Br. 27). Appellant argues that, like the claims in DDR Holdings that
“recite ‘a specific way’ of creating a composite web page,” claim 1 recites
“a specific way of organizing and generating interfaces within a system” to
generate a user interface for display on a user terminal including a table
showing the various data recited in claim 1 (id.). Appellant, thus, maintains
that, similar to the claims in DDR Holdings, the pending claims are patent-
eligible because they address a problem specifically arising in the realm of
computer networking, namely, “a system that provides a risk analysis user
interface for display on a user terminal simultaneously including information
for a variety of investments over a variety of asset classes” (Reply Br. 13).
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The court cautioned in DDR Holdings that “not all claims purporting
to address Internet-centric challenges are eligible for patent.” DDR
Holdings, 773 F.3d at 1258. Thus, in Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014), although the patentee argued that its claims
were “directed to a specific method of advertising and content distribution
that was previously unknown and never employed on the Internet before,”
772 F.3d at 714, the court found that this alone would not render the claims
patent-eligible where they merely recited the abstract idea of “offering
media content in exchange for viewing an advertisement,” along with
“routine additional steps such as updating an activity log, requiring a request
from the consumer to view the ad, restrictions on public access, and use of
the Internet.” Id. at 715—716.
Similarly here, we find that the invocation of the Internet is not
sufficient to transform Appellant’s otherwise patent-ineligible abstract idea
into patent-eligible subject matter. For example, there is no indication that
any specialized hardware is required or that the invocation of the Internet
otherwise adds any inventive concept. Instead, claim 1 merely employs
generic computer components to perform generic computer functions, i.e.,
receiving, processing, and displaying information.6
We find that the pending claims are directed to the abstract idea of
investment portfolio management, and require merely organizing and
displaying financial information. That the claims require the generation of a
6 The Specification discloses that the system used to create and/or manage
an investment portfolio is provided by a computer system, the components
of which “can be implemented entirely by software to be executed on
standard computer server hardware.” See Spec. 14,11. 6—21.
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specific graphical user interface merely limits the use of the abstract idea to
a particular technological environment, which the Court made clear in Alice
is insufficient to transform an otherwise patent-ineligible abstract idea into a
patent-eligible subject matter. See Alice Corp., 134 S. Ct. at 2358.
As described above, in the Answer, the Examiner provides a revised
analysis of the claims under § 101; there, the Examiner characterizes the
claims as directed to a system and method of analyzing risk associated with
an investment portfolio, i.e., to an abstract idea (Ans. 9—10). The Examiner
finds that this concept is similar to the basic concept of a mathematical
procedure for converting one form of numerical representation to another,
using categories to organize, store, and transmit information and/or
analyzing portfolio risk, i.e., fundamental economic practices, which the
courts have found to be an abstract idea; and that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception (id. at 10—11).
Responding in the Reply Brief, Appellant variously charges that the
Examiner makes no attempt in the Answer to address the specific recitations
of the claims and merely states that the claims are directed to an idea without
identifying the abstract idea to which the claims are “allegedly directed”;
that the Examiner provides no evidence that the features of claim 1
constitute an abstract idea; and that the Examiner has failed to establish a
prima facie case of unpatentability (Reply Br. 4—5). None of these
arguments is persuasive.
As an initial matter, we are aware of no controlling precedent (nor
does Appellant identify any precedent) that requires the Office to provide
evidence to support a finding that a claim is directed to an abstract idea.
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Instead, the Federal Circuit has repeatedly noted that “the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production.” Hyatt v. Dudas, 492 F.3d. 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the USPTO carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, “together with such
information and references as may be useful in judging of the propriety of
continuing the prosecution of [the] application.” See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Thus, all that is required of the Office is that it
set forth the statutory basis of the rejection in a sufficiently articulate and
informative manner as to meet the notice requirement of § 132. Id.', see also
Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990) (Section 132 “is
violated when the rejection is so uninformative that it prevents the applicant
from recognizing and seeking to counter the grounds for rejection.”).
Here, it is clear from a fair reading of the Answer that the Examiner
finds that the claims are directed to analyzing risk associated with an
investment portfolio, i.e., to a fundamental economic practice and, therefore,
to an abstract idea (see Ans. 9-11). Appellant does not contend that the
Examiner’s § 101 rejection was not understood or that the Examiner’s
rejection, otherwise, fails to satisfy the notice requirements of § 132.
Instead, Appellant’s understanding of the rejection is clearly manifested by
Appellant’s responses as set forth in the briefs.
We also are not persuaded of Examiner error by Appellant’s further
argument that the Examiner’s “generalized characterization” of the claims
does not encompass or recognize any of the features of the claims, including
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the “particular user-interfaces” and “specific structural features required ‘to
analyze risk associated with an investment portfolio of an investor’” and
generate a user interface for display on a user terminal, as called for in
claim 1 (Reply Br. 5). As described above, the Federal Circuit has held that
the mere recitation of a graphical user interface does not make a claim
patent-eligible. See, e.g., Intellectual Ventures ILLC, 792 F.3d at 1370.
The Specification also explicitly discloses, as described above, that the
system used to create and/or manage the investment portfolio is a computer
system, the components of which “can be implemented entirely by software
to be executed on standard computer server hardware.” See Spec. 14,11. 6—
21. Appellant asserts that this is one example implementation in a single
paragraph from a specification that includes 649 paragraphs and 111 figures,
and details “one way the features of a computer system could be
implemented” (Reply Br. 6). But we find nothing in the record, nor does
Appellant point to anything in the record, that discloses implementing the
claimed invention using other than generic computer components. And
“[a]fter Alice, there can remain no doubt: recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.”
DDR Holdings, 773 F.3d at 1256.
Appellant argues for the first time in the Reply Brief that the
dependent claims, specifically dependent claim 6, include additional features
that render the claims patent-eligible (Reply Br. 7). But that argument is
untimely, and is waived here in the absence of any showing of good cause
why the argument could not have been timely presented in Appellant’s
Appeal Brief. See In re Hyatt, 211 F.3d 1367, 1373 (Fed. Cir. 2000) (noting
that an argument not first raised in the brief to the Board is waived on
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appeal); Ex parte Nakashima, 93 USPQ2d 1834, 1837 (BPAI2010)
(informative) (explaining that arguments and evidence not timely presented
in the Principal Brief, will not be considered when filed in a Reply Brief,
absent a showing of good cause explaining why the argument could not have
been presented in the Principal Brief); Ex parte Borden, 93 USPQ2d 1473,
1477 (BPAI 2010) (informative) (“Properly interpreted, the Rules do not
require the Board to take up a belated argument that has not been addressed
by the Examiner, absent a showing of good cause.”).
Appellant includes a description at pages 8—14 of the Reply Brief,
which Appellant indicates is copied from the Specification and intended to
“assist the reader in the understanding of how Appellant’s invention may be
used” (Reply Br. 8). In the course of that discussion, Appellant notes that
“the claimed features are unique over existing systems” (id. at 11) and
provide “a best practice standard” (id. at 13). Yet, to the extent that
Appellant contends that the pending claims are patent-eligible because the
claims are “novel and inventive” (see id. at 14), Appellant misapprehends
the controlling precedent.
A finding of novelty or non-obviousness does not necessarily lead to
the conclusion that the claimed subject matter is patent—eligible.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass ’n. for Molecular Pathology v. Myriad
Genetics, Inc., 133 S. Ct. 2107, 2117 (2013). Although the second step in
the Mayo/Alice framework is termed a search for an “inventive concept,” the
analysis is not an evaluation of novelty or non-obviousness, but rather, a
search for “an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
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upon the [patent-ineligible concept] itself.’” Alice Corp., 134 S. Ct. at 2355.
A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304. See also
Diamond v. Diehr, 450 U.S. 175, 188—89 (1981) (“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 . . .
categories of possibly patentable subject matter.”).
We are not persuaded for the foregoing reasons that the Examiner
erred in rejecting claims 1, 2, 4—6, 10—13, 15—26, 28, 29, 41, 42, and 44—51
under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection.
DECISION
The Examiner’s rejection of claims 1, 2, 4—6, 10—13, 15—26, 28, 29,
41, 42, and 44—51 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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