Ex Parte Savage et al

Patent Trial and Appeal Board

Jun 26, 2018

12650248 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/650,248 12/30/2009
23460 7590 06/28/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
John Savage
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
705890 6951
EXAMINER
OBAID,FATEHM
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SAVAGE, LUCY L YULKIN, NATALIA GOUDKOV A,
EDWARD GRANAGHAN, CALLIE THOMAS, KURT MAKSE, ERIN
SHEEHAN, and THOMAS CONNEALL Y
Appeal2017-003731
Application 12/650,248
Technology Center 3600
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
SHARON PENICK, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL 1
1 Appellants indicate the real party in interest is American International
Group, Inc. App. Br. 1.
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Application 12/650,248
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1-7. Appellants have cancelled claims 8-15. App. Br. 17. We have
jurisdiction under 35 U.S.C. § 6(b). We AFFIRM.
Representative Claim
Representative claim 1 under appeal reads as follows (emphasis,
formatting, and bracketed material added):
1. A computer-implemented method for posting a non-
machine journal entry to a general ledger, the method
compnsmg:
[A.] accessing a non-machine journal entry application
stored on a non-transitory computer readable storage medium
and operated on an accounting processor;
[B.] creating a non-machine journal entry using the non-
machine journal entry application;
[C.] electronically submitting the non-machine journal
entry for approval;
[D.] reviewing the non-machine journal entry for
compliance with a set of requirements;
[E.] ifthe non-machine journal entry complies with the set
of requirements, electronically posting the non-machine journal
entry to a computer-implemented general ledger application
stored on a non-transitory computer readable storage medium,
the general ledger application including machine journal entries.
References
Bickerton et al. US 6,684,384 Bl
Drelicharz et al. US 2005/0209880 Al
Stewart, III et al. US 2006/0190365 Al
2
Jan.27,2004
Sept. 22, 2005
Aug. 24, 2006
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Application 12/650,248
Re} ections2
1. The Examiner rejected claims 1-7 under 35 U.S.C. § 101 "because
the claimed invention is directed to a judicial exception (i.e., a law of nature,
a natural phenomenon, or an abstract idea) without significantly more," i.e.,
because the claimed invention is directed to patent-ineligible subject matter.
Non-Final Act. 2. 3
2. The Examiner rejected claims 1-7 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Bickerton, Drelicharz, and
Stewart, III. Non-final Act. 6. 4
Issues on Appeal
Did the Examiner err in rejecting claim 1 as being directed to patent-
ineligible subject matter?
Did the Examiner err in rejecting claim 1 as being obvious?
2 All citations to the "Non-final Action" are to the Non-final Action mailed
on March 12, 2015.
3 We select claim 1 as representative. Appellants argue patent eligibility
for claims 2-7 only by reference to claim 1. App. Br. 7. Except for our
ultimate decision, we do not discuss the § 101 rejection of claims 2-7
further herein.
4 We select claim 1 as representative. Appellants argue patentability for
claims 2-7 only by reference to claim 1. App. Br. 14. Except for our
ultimate decision, we do not discuss the§ 103 rejection of claims 2-7
further herein.
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ANALYSIS
We have reviewed the Examiner's rejections in light of Appellants'
Appeal Brief arguments that the Examiner has erred.
A. Section 101
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The
Supreme Court in Alice reiterated the two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 82-83 (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. The first step in
that analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. For example, a
fundamental economic practice is an abstract idea:
[In Bilski v. Kappas], the Court grounded its conclusion that all
of the claims at issue were abstract ideas in the understanding
that risk hedging was a "'fundamental economic practice."' 561
U.S., at 611.
Alice, 134 S. Ct. at 2357.
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, 566 U.S. at 71. We, therefore, look to whether the
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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
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016). If
the claims are not directed to 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 the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566
U.S. at 79, 78).
B. Examiner's§ 101 Rejection -Alice/Mayo - Steps 1and2
Applying step 1 of the Alice/Mayo analysis, the Examiner concludes
claim 1 is directed to an abstract idea because:
Claims 1-7 are directed to a series of steps for posting non-
machine journal entry to a general ledger, which are fundamental
economic practices.
Non-final Act. 2.
Claims 1-7 are directed to the medium, for fundamental
economic practices directed to a series of steps for posting non-
machine journal entry to a general ledger.
Non-final Act. 2-3.
Applying step 2 of the Alice/Mayo analysis, the Examiner concludes
"[ t ]he claims do not include additional elements that are sufficient to amount
to significantly more than the judicial exception because" (1 ):
[T]he claims require no more than a general purpose computer to
perform generic computer functions that are well-understood,
routine and conventional. The claims consist of mere methods
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and instructions to apply the abstract idea and there is no
improvement to another technology or technical field, no
improvements to the functioning of the computer itself, and no
meaningful limitations beyond generally linking the use of an
abstract idea to a particular technical environment.
Non-final Act. 2. Further (2):
[T]hey require no more than a generic computer to perform
generic computer functions (e.g., accessing, creating,
electronically submitting and posting) that are well-understood,
routine and conventional activities previously known in the
industry.
Non-final Act. 3.
C. Appellants ' § 101 Arguments
1.
Appellants first raise the following argument in contending that the
Examiner erred in rejecting claim 1 as directed to patent-ineligible subject
matter.
Claim 1 recites additional elements that amount to significantly
more than a judicial exception. In that regard, claim 1 satisfies
the machine-or-transformation test. For example, the method
of claim 1 includes: "accessing a non-machine journal entry
application stored on a non-transitory computer readable storage
medium and operated on an accounting processor;" . ... These
steps identify particular devices and require a particularly-
programmed machine. It is respectfully submitted that the use
of these features breathes life and meaning into the claims,
imposes a meaningful limit on the claim's scope, and involves
more than insignificant "extra-solution" activity.
App. Br. 4--5 (Appellants' emphasis omitted; Panel emphasis added).
We are unpersuaded by Appellants' argument. First, the Courts'
Alice/Mayo test is not trumped by the machine-or-transformation test.
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Cf Mayo, 566 U.S. at 88 ("[W]e have neither said nor implied that the
[machine-or-transformation] test trumps the 'law of nature' exclusion.").
Rather, the Alice/Mayo test is controlling.
Second, applying the Alice/Mayo analysis, we see no basis in the
argument (or record) to treat the 'journal entry" and "accounting" aspects of
Appellants' argument under step two of the Alice/Mayo analysis. Rather, we
conclude that these aspects are directed to the fundamental business practice
abstract idea under step one the Alice/Mayo analysis and not the
"significantly more portion" of step two of the Alice/Mayo analysis.
Third, even if we were to treat these aspects of the claim under step
two of the Alice/Mayo analysis, contrary to Appellants' argument,
Appellants' "non-machine journal entry application" and "accounting
processor" are not disclosed as particularly programmed machines. Rather,
at paragraphs 73 and 79-80, Appellants state as to the non-machine journal
entry application that the review and approval are performed by the user
("preparer" and "Approver" ("Approver can indicate his approval by using
an electronic signature of approval")) through a Review module and an
Approval module. As to the accounting processor, Appellants state:
The accounting processor 140 can generally include any
computational node including a mechanism for servicing
requests from a client for computational resources, data storage
resources, or a combination of computational and data storage
resources. Furthermore, the accounting processor 140 can
generally include any system that can be adapted to allow for the
selective transmission of non-machine journal entries from the
NMJE application 155 to the general ledger. The accounting
processor 140 can generally include any component of an
application that can receive input from the web users 197, 201,
process the input, and present the output to the general ledger
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application 150, the web server 180, and/or the database 160. The
accounting processor 140 can generally include any component
of an application that can process data, interact with the
database 160, and execute business logic for the administration
of the general ledger.
Spec. i-f 62 (emphasis added).
We find no particularity set forth for the accounting processor.
Further, the recited "any component of an application that can process data,
interact with the database 160, and execute business logic for the
administration of the general ledger," is equivalent to Appellants' general
ledger application 150 of which Appellants explicitly state:
The general ledger application 150 can be any suitable
computer-implemented application for maintaining a company's
general ledger, such as applications commercially available
from AXS-One Inc. of Rutherford, New Jersey, including AXS-
One' s General Ledger module of its Enterprise suite of
applications.
Spec. i-f 59 (emphasis added). We deem disclosing a claimed limitation as
"any suitable" item, such as a "commercially available" example, to be a
clear indication by Appellant that the claimed limitation is well-understood,
routine, and
conventional under the step two of the Alice/Mayo Analysis.
2.
Appellants also raise the following argument in contending that the
Examiner erred in rejecting claim 1 as directed to patent-ineligible subject
matter.
The claimed approach recited in claim 1 provides a
computer-implemented tool that helps a user validate non-
machine journal entries posted to the general ledger. See id. at
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i-f [0008]. The claimed method employs a specially-programmed
machine that includes a non-machine journal entry application
which can be used to "[create] a non-machine journal entry," as
recited in claim 1. "If the non-machine journal entry complies
with [a] set of requirements, ... the non-machine journal entry
[is electronically posted] to a computer-implemented general
ledger application stored on a non-transitory computer readable
storage medium." Claim 1. "Operating the non-machine journal
entry application, a user can store and maintain recurring entries
in a database; validate a journal batch before posting; post
recurring entries; correct existing entries; track journal entry
batches sent to the general ledger; report on types of journal
entries and posting history; and verify recurring batch
completeness from exception, summary and account detail
reports. The application centralizes the data entry and collection
processes [and] enforces strict validation and quality control
rules." Specification, pp. 2-3, i-f [0009]. This is a significant
improvement over any existing technological process known at
the time of the invention. See Alice Corp., 134 S. Ct at 2358
(holding claims become patent eligible when "they [improve] an
existing technological process"),
The claimed solution is rooted in computer technology in
order to satisfy persistent needs specifically arising in the field
of accounting, namely the need for a computer-implemented
method for posting non-machine journal entries to a general
ledger that helps support the validity of the non-machine journal
entries made.
App. Br. 6 (emphasis added).
We disagree. Accounting is not a "technological process" to be
improved, as such process could be done in the human mind or by a human
using pen and paper. "[T]he fact that the required calculations could be
performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter." Bancorp Servs., L.L. C. v.
Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed. Cir. 2012); see also
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FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016) ("the inability for the human mind to perform each claim step does not
alone confer patentability"). Contrary to Appellants' argument, neither the
problem nor the solution here are rooted in computer technology.
Appellants' Specification does not describe any new or unique computer
hardware or software, and the law is clear that simply programming a
computer to perform what would otherwise be an abstract idea is not
sufficient to impart patent eligibility. See Alice Corp. Pty. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2359 (2014).
3.
Appellants further raise the following argument in contending that the
Examiner erred in rejecting claim 1 as directed to patent-ineligible subject
matter.
[T]he applied references fail to render claim 1 unpatentable and
do not teach or suggest a computer-implemented method for
posting a non-machine journal entry to a general ledger having
the combination of steps and features recited in claim 1 .... The
claimed approach includes unconventional steps and
limitations that confine the claims to a particular useful
application.
App. Br. 7 (emphasis added).
Regarding Appellants' above argument, essentially Appellants argue
that because the system is specific and novel, claim 1 must add significantly
more to the alleged abstract idea. Appellants' argument does not persuade
us of Examiner error.
The fact that a claimed concept is "[g]roundbreaking, innovative, or
even brilliant" would not "itself satisfy the§ 101 inquiry." Ass 'nfor
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
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Although the second step in the Alice/ Mayo analysis includes a search for an
inventive concept, the analysis is not an evaluation of novelty or
nonobviousness, 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 upon the [ineligible concept] itself."' Alice,
134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78). Here the argued
feature, "posting a non-machine journal entry to a general ledger," is
directed to the abstract idea in the first step of the Alice/ Mayo analysis.
A claim directed to a unique and advantageous financial arrangement
is nonetheless directed to a financial arrangement and constitutes an abstract
idea. 5 "[U]nder the Mayo/Alice framework, a claim directed to a newly
discovered law of nature (or natural phenomenon or abstract idea) cannot
rely on the novelty of that discovery for the inventive concept necessary for
patent eligibility." Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369,
1376 (Fed. Cir. 2016); see Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
5 See Ultramercial, Inc. v. Hulu LLC, 772 F.3d. 709 (Fed. Cir. 2014). In
that case, the patentee argued that its financial arrangement (a method of
using advertising as an exchange or currency) was distinguishable from the
"routine," "long prevalent," or "conventional" abstract idea in Alice
because it was "directed to a specific method of advertising and content
distribution that was previously unknown." Id. at 714. The court rejected
the patentee's position that "abstract ideas remain patent-eligible under
§ 101 as long as they are new ideas, not previously well known, and not
routine activity." Id.
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D. Section 103 Arguments
1.
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Bickerton [] fails to teach or suggest the steps of electronically
submitting a non-machine journal entry for approval and
reviewing the non-machine journal entry for compliance with a
set of requirements as recited in claim 1. It is respectfully
submitted that the portions of Bickerton relied upon in the March
12, 2015 Office Action to support the conclusion that Bickerton
teaches these steps (i.e., Bickerton Fig. 1 and 8:31-67
(electronically submitting step) and Bickerton 18:39-63
(reviewing step) (March 12, 2015 Office Action, p. 6)) actually
do not teach or suggest such steps.
App. Br. 10-11 (emphasis added). Appellants provide further detail
regarding the disclosures of the cited portions of Bickerton. Id. at 11-12.
We conclude, after reviewing the Examiner's rejection and consistent
with Appellants' above argument as to claim 1, there is insufficient
articulated reasoning to support the Examiner's findings that Bickerton
discloses the argued submitting and reviewing limitations. Therefore, we
conclude that there is insufficient articulated reasoning to support the
Examiner's conclusion that claim 1 is rendered obvious by Bickerton based
on the Examiner's articulated reasoning.
2.
Appellants raise the following argument in contending that the
Examiner erred in rejecting claim 1 under 35 U.S.C. § 103(a).
Drelicharz and Stewart fail to cure the deficiencies of Bickerton.
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The March 12, 2015 Office Action/ails to identify any
portion of D[ r ]elicharz or Stewart as teaching or suggesting the
electronically submitting or reviewing the non-machine journal
entry steps of claim 1.
App. Br. 13 (emphasis added).
Although we agree with Appellants that the Office Action fails to
identify any portion of Stewart as teaching or suggesting the submitting and
reviewing limitations, we disagree with Appellants' general argument that
Stewart fails to cure the deficiencies of Bickerton identified by Appellants.
Rather, Stewart is directed to a non-machine journal entry at paragraph 49
("allow the user to re-select and/or re-enter the entered accounting data"),
and paragraphs 50-51 discussing entry review and approval processing. 6
CONCLUSIONS
(1) The Examiner has not erred in rejecting claims 1-7 under
35 U.S.C. § 101, as being directed to patent-ineligible subject matter.
(2) Appellants have established that the Examiner erred in rejecting
claims 1-7 as being unpatentable under 35 U.S.C. § 103(a).
(3) Claims 1-7 are not patentable.
6 As the Examiner has shown all the claims are unpatentable under 35
U.S.C. § 101, we do not also newly reject Appellants' claims 1-7 under
35 U.S.C. § 103 as being unpatentable over Stewart in view of Bickerton
and Drelicharz. However, should there be further prosecution of these
claims we direct the Examiner's attention to this issue.
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DECISION
The Examiner's rejection of claims 1-7 under 35 U.S.C. § 101, as
being directed to patent-ineligible subject matter, is affirmed.
The Examiner's rejection of claims 1-7 as being unpatentable under
35 U.S.C. § 103(a) is reversed.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner's decision is affirmed. See
37 C.F.R. § 41.50(a)(l).
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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