Ex Parte Schlossberg

Patent Trial and Appeal Board

Oct 31, 2017

13902476 (P.T.A.B. Oct. 31, 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.
13/902,476 05/24/2013 David SCHLOSSBERG 415012US8 4318
22850 7590 11/02/2017
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
11/02/2017 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):
patentdocket @ oblon. com
oblonpat @ oblon. com
tfarrell@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID SCHLOSSBERG
Appeal 2016-003460
Application 13/902,4761
Technology Center 3600
Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
MATTHEW S. MEYERS, Administrative Patent Judges.
WIEDER, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35U.S.C. § 134 from the
Examiner’s final rejection of claims 20, 23—26, 28, and 30-34. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 According to Appellant, the real party in interest is ASSURED
CONCEPTS GROUP LTD. (Appeal Br. 2.)
Appeal 2016-003460
Application 13/902,476
CLAIMED SUBJECT MATTER
Appellant’s claimed invention relates to a “portfolio allocation
method . . . that allows a novice user, i.e. a non-fmancial expert, to evaluate
a portfolio of investments from a return and risk perspective.” (Spec. 11.)
Claim 20 is the sole independent claim on appeal. It recites:
20. A method of allocating wealth to a plurality of investment
assets for a portfolio, the method comprising:
selecting the plurality of investment assets for the
portfolio;
storing the selected plurality of investment assets in a
memory;
assigning a percentage value of a total value of the wealth
to each of the plurality of investments assets of the portfolio;
storing each percentage value assigned to the plurality of
investment assets in the memory;
determining, with processing circuitry, at least one risk
statistic and at least one expected future return parameter for the
portfolio based on the percentage value assigned to each of the
plurality of investment assets for the portfolio to permit a user to
easily evaluate the at least one risk statistic and the at least one
expected future return parameter for the portfolio that includes
the plurality of investment assets;
displaying, on a display screen, the at least one risk
statistic and the at least one expected future return parameter for
the portfolio;
determining, with the processing circuitry, a plurality of
portfolios, each of the plurality of portfolios including different
percentage values of the total value of the wealth assigned to
each of the plurality of investment assets;
displaying a corresponding risk statistic and a
corresponding expected future return parameter for each of the
plurality of portfolios on the display screen;
selecting at least one portfolio from among the plurality of
portfolios; and
displaying a first risk statistic and a first expected future
return parameter for each investment asset of a corresponding
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Application 13/902,476
plurality of investment assets for the at least one selected
portfolio to permit the user to easily evaluate the first risk statistic
and the first expected future return for said each investment asset
in the plurality of portfolios.
REJECTION
Claims 20, 23—26, 28, and 30-34 are rejected under 35 U.S.C. § 101
as directed to non-statutory subject matter.
ANALYSIS
In 2014, the Supreme Court decided Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S. Ct. 2347 (2014). Alice applies a two-part framework, earlier set
out in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66
(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.
Under the two-part framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. If the claims
are determined to be directed to a patent-ineligible concept, then the second
part of the framework is applied to determine if “the elements of the
claim . . . contain[] an ‘inventive concept’ sufficient to ‘transform’ the
claimed abstract idea into a patent-eligible application.” Id. at 2357 (citing
Mayo, 566 U.S. at 72-73, 79).
With regard to part one of the Alice framework, the Examiner
determines that the claims are “directed to allocating wealth to a plurality of
investment assets for a portfolio, which is considered to be an abstract idea
inasmuch as such activity is considered both a fundamental economic
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Application 13/902,476
practice and a method of organizing human activity.” (Final Action 4.)
Appellant does not present any substantive argument in dispute. (See
Appeal Br. 10.) Therefore, we are not persuaded that the Examiner erred in
determining that claim 20 is directed to an abstract idea.
Part two of the Alice framework has been described “as a search for
an ‘ “inventive concept” ’ —i.e., 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 (citing Mayo, 566 U.S. at 72—73).
The introduction of a computer or “processing circuitry” into the
claim does not alter the analysis at step two.
[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 if ” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “ ‘to a particular technological environment.’ ”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement]” an abstract idea
“on ... a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of “additional featur[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Id. at 2358 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer.” Id. at 2359. They do not.
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Claim 20 relates to a method for collecting data (“selecting . . .
investment assets for [a] portfolio”), analyzing the data (“assigning a
percentage value ... to each of the . . . investments [sic] assets of the
portfolio,” “determining ... at least one risk statistic and at least one
expected future return parameter for the portfolio”), and displaying the data
(“displaying ... the at least one risk statistic and the at least one expected
future return parameter”). Claim 20 continues by again analyzing data
(“determining ... a plurality of portfolios . . . including different percentage
values of the total value”), displaying data (“displaying a corresponding risk
statistic and a corresponding expected future return parameter for each of the
plurality of portfolios”), and further displaying data (“displaying a first risk
statistic and a first expected future return parameter for each investment
asset of a corresponding plurality of investment assets for . . . at least one
selected portfolio”).
We note in particular that “[mjerely requiring the selection and
manipulation of information—to provide a ‘humanly comprehensible’
amount of information, useful for users—by itself does not transform the
otherwise-abstract processes of information collection and analysis” into
patent-eligible subject matter. Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1355 (Fed. Cir. 2016) (citations omitted).
Moreover, taking the claim elements separately, the function
performed by the computer at each step is purely conventional. Collecting,
analyzing, and displaying data are basic computer functions. Additionally,
the Specification discloses that the invention can be implemented using
generic computer components. (See, e.g., Spec. ]Hf 86—87.) In short, each
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Application 13/902,476
step does no more than require a generic computer to perform generic
computer functions.
Considered as an ordered combination, the computer components of
Appellant’s method add nothing that is not already present when the steps
are considered separately. The claims do not, for example, purport to
improve the functioning of the processing circuitry itself. Nor do they effect
an improvement in any other technology or technical field. Instead, the
claims at issue amount to nothing significantly more than an instruction to
apply the abstract idea of collecting and analyzing data using some
unspecified, generic computer. That is not enough to transform an abstract
idea into a patent-eligible invention. Alice, 134 S. Ct. at 2360.
Nonetheless, Appellant argues that claim 20 recites patent eligible
subject matter as evidenced by its
similarity] to Claim 2 in Example 21 of the July 2015 update on
subject matter eligibility (titled “July 2015 Update Appendix 1:
Examples,” p. 4 and 5), the claimed invention addresses an
Investment-centric challenge by permitting a novice user to
easily evaluate risk and reward characteristics of a portfolio,
which includes a plurality of investment assets.
(Appeal Br. 12, emphasis omitted.) We disagree.
In relevant part, claim 2 in Example 21 recites “[a] method of
distributing stock quotes over a network to a remote subscriber computer”
including the steps of
transmitting] the formatted stock quote alert over a
wireless communication channel to a wireless device associated
with a subscriber based upon the destination address and
transmission schedule,
wherein the alert activates the stock viewer application to
cause the stock quote alert to display on the remote subscriber
computer and to enable connection via the URL to the data
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source over the Internet when the wireless device is locally
connected to the remote subscriber computer and the remote
subscriber computer comes online.
July 2015 Update Appendix 1: Examples, 3 (2015), https://www.uspto.gov/
sites/default/files/documents/ieg-july-2015-appl.pdf; 2014 Interim Guidance
on Subject Matter Eligibility (2014 IEG), July 2015 Update: Subject Matter
Eligibility, 79 Fed. Reg. 74618 (Dec. 16, 2014). The Update Appendix
explains that
[t]he claimed invention addresses the Internet-centric challenge
of alerting a subscriber with time sensitive information when the
subscriber’s computer is offline. This is addressed by
transmitting the alert over a wireless communication channel to
activate the stock viewer application, which causes the alert to
display and enables the connection of the remote subscriber
computer to the data source over the Internet when the remote
subscriber computer comes online.
(Id. at 4.)
Example 1 of the Update is similar to Example 2 except that
Example 1 lacks the stock view application and, thus, does not address “the
Internet-centric challenge of alerting a subscriber . . . when the subscriber’s
computer is offline.” Example 1 is described as patent ineligible. Appellant
does not argue what step(s) of claim 20 is/are analogous to the stock view
application of Example 2. Nor does Appellant argue why claim 20 is more
analogous to Example 2 than to Example 1. Moreover, Appellant does not
explain why “an Investment-centric challenge” (Appeal Br. 12, emphasis
omitted) is indicative of patent-eligible subject matter. We do not find
Appellant’s arguments persuasive of error.
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We are not persuaded that that Examiner erred in rejecting claim 20
under § 101. Dependent claims 23—26, 28, and 30-34 are not separately
argued. Therefore, they fall with claim 20. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
The Examiner’s rejection of claims 20, 23—26, 28, and 30—34 under
35U.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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