Ex Parte SYCOFF

Patent Trial and Appeal Board

Oct 23, 2018

14589302 (P.T.A.B. Oct. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/589,302 01/05/2015 ANDREW GARRETT SYCOFF
718 7590 10/25/2018
REED SMITH LLP
P.O. Box488
PITTSBURGH, PA 15230-0488
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.
12-126-US-C 2314
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/25/2018 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):
ptoipinbox@reedsmith.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW GARRETT SYCOFF
Appeal2017-005438 1
Application 14/589,3022
Technology Center 3600
Before NINA L. MEDLOCK, BART A. GERSTENBLITH, 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 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellant's Appeal Brief ("App. Br.," filed
November 7, 2016) and Reply Brief ("Reply Br.," filed February 14, 2017),
and the Examiner's Answer ("Ans.," mailed December 14, 2016) and Final
Office Action ("Final Act.," mailed August 11, 2016).
2 Appellant identifies the inventor, Andrew Garrett Sycoff, as the real party
in interest. App. Br. 1.
Appeal2017-005438
Application 14/589,302
CLAIMED INVENTION
Appellant's claimed invention "relate[s] to monetizing financial
brokerage data" (Spec. ,r 2).
Claim 1, reproduced below, is the sole independent claim, and
representative of the claimed subject matter:
1. A computer-implemented method for monetizing
financial brokerage accounts, the method comprising:
storing in an information repository input data,
transactional data, and behavioral data for a customer of a
financial brokerage system;
creating an individual profile for the customer describing
attributes of the customer based on the input data, transactional
data, and behavioral data of the customer stored in the
information repository;
classifying the customer in one or more taxonomies;
mining data from the individual profile for the customer
and the one or more taxonomies;
monetizing the mined data; and
providing to the customer an unlimited number of free
trades for an unlimited period of time, wherein the at least one
computer module monetizes the mined data by performing data
analytics including generating rules to learn customer behavior
and to predict customer behavior.
REJECTION
Claims 1-18 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
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
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to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int '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., 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 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." Id.
(quoting Mayo, 566 U.S. at 79, 78).
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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
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As an initial matter, we are not persuaded of Examiner error to the
extent Appellant argues that the Examiner has failed to establish a prima
facie case of patent-ineligibility (App. Br. 3--4).
In rejecting the pending claims under § 101, the Examiner analyzed
the claims using the Mayo/Alice two-step framework, consistent with the
guidance set forth in the USPTO' s "2014 Interim Guidance on Patent
Subject Matter Eligibility," 79 Fed. Reg. 74618 (Dec. 16, 2014), in effect at
the time the Final Office Action was mailed (see Final Act. 2). Specifically,
the Examiner notified Appellant that the claims are directed to "monetizing
financial data," which the Examiner determined is a "longstanding
commercial practice" and, therefore, an abstract idea; and that the claims,
viewed as a whole, do not include an element or combination of elements
that is sufficient to amount to significantly more than the judicial exception
(id. at 4--5). The Examiner, thus, notified Appellant of the reasons for the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of§ 132. And we find that, in doing so, the Examiner set
forth a prima facie case of patent-ineligibility. See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (holding 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")
( alteration in original).
We also do not agree with Appellant that the Examiner has
oversimplified the claimed invention as directed to a method for monetizing
financial data, or that the Examiner has, otherwise, failed to consider the
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claims as a whole (App. Br. 4--5; see also Reply Br. 2). Taking claim 1 as
an example, and quoting the claim language, Appellant argues that claim 1
recites "much more than simply a 'method for monetizing financial data,"'
i.e., including, inter alia, creating individual profiles for customers
describing their attributes based on the input data, transactional data, and
behavioral data of the customer; classifying the customers into taxonomies;
and mining the data from the individual profile for the customer and one or
more taxonomies. But, there is no requirement that the Examiner's
formulation of the abstract idea must copy the claim language.
The Federal Circuit has explained that "the 'directed to' inquiry
applies a stage-one filter to claims, considered in light of the [S]pecification,
based on whether 'their character as a whole is directed to excluded subject
matter."' See Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016) (quoting Internet Patents Corp., 790 F.3d at 1346). It asks
whether the focus of the claims is on a specific improvement in relevant
technology or on a process that itself qualifies as an "abstract idea" for
which computers are invoked merely as a tool. See id. at 1335-36. The
Examiner's determination here -that the claims are directed to
"monetizing financial data" - is fully consistent with the Specification,
including the claim language (see, e.g., Spec., Title ("Monetizing Financial
Brokerage Data"), ,r 22 ("FIG. 1 illustrates a high-level overview of the
monetization model based on analytics of user brokerage data and other
data, according to certain embodiments of the invention."), Abstract
("Method and systems for monetizing financial brokerage accounts are
disclosed."), claim 1 ("A computer-implemented method for monetizing
financial brokerage accounts")).
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Appellant would seemingly characterize the claimed invention
differently than does the Examiner, e.g., by including additional claim
language; but, that difference only relates to the level of abstraction. An
abstract idea can be expressed at various levels of abstraction. See Apple,
Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) ("An abstract
idea can generally be described at different levels of abstraction. As the
Board has done, the claimed abstract idea could be described as generating
menus on a computer, or generating a second menu from a first menu and
sending the second menu to another location. It could be described in other
ways, including, as indicated in the specification, taking orders from
restaurant customers on a computer."). That the Examiner articulates the
abstract idea at a higher level of abstraction than does Appellant is an
insufficient basis for finding that the claims are not directed to an abstract
idea.
We also are not persuaded of Examiner error to the extent that
Appellant argues that the§ 101 rejection cannot be sustained because the
Examiner has provided no evidence that storing the specific information
required by claim 1, i.e., "input data, transactional data, and behavioral data
of the customer," was long-prevalent and, therefore, an abstract idea (App.
Br. 5; see also Reply Br. 4--5).
As an initial matter, we note that there is no requirement that an
examiner provide evidentiary support in every case before a conclusion can
be made that a claim is directed to an abstract idea. See Mortgage Grader,
Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325-26 (Fed. Cir.
2016) ("[I]t is also possible, as numerous cases have recognized, that a § 101
analysis may sometimes be undertaken without resolving fact issues.").
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Nonetheless, the Federal Circuit has made clear that examining earlier cases
can have a role in deciding whether a claim is directed to an abstract idea.
See Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1294
(Fed. Cir. 2016) ("Instead of a definition [that specifies what an "abstract
idea" entails], . . . the decisional mechanism courts now apply is to examine
earlier cases in which a similar or parallel descriptive nature can be seen -
what prior cases were about, and which way they were decided."). And,
significantly here, the court has repeatedly held that information collection
and analysis, including when limited to particular content, is within the
realm of abstract ideas. See, e.g., Elec. Power Grp., LLC v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) ("we have treated collecting
information, including when limited to particular content ( which does not
change its character as information), as within the realm of abstract ideas");
SAP Am., Inc. v. Investpic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) ("As
many cases make clear, even if a process of collecting and analyzing
information is 'limited to particular content' or a particular 'source,' that
limitation does not make the collection and analysis other than abstract."
(quoting Elec. Power Grp., 830 F.3d at 1355 (citing cases)).
Turning to the second step of the Mayo/Alice framework, Appellant
asserts that claim 1, for example, recites specific steps (i.e., including,
"creating an individual profile for the customer describing attributes of the
customer based on the input data, transactional data, and behavioral data of
the customer stored in the information repository"; "reclassifying the
customer in one or more taxonomies"; and "mining data from the individual
profile for the customer and the one or more taxonomies"), and, thus, on its
face, requires more than "'storing customer information, creating a profile
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and then classifying the customer, monetizing the data and providing free
trades' as alleged by the Examiner" (App. Br. 7 ( citing Final Act. 4)).
Appellant argues that "[t]hose limitations, and their novel combination,
recite significantly more than the idea of 'monetizing financial data"' (id.).
Yet, to the extent that Appellant maintains that the claims are patent-eligible
because they are allegedly novel and/or non-obvious in view of the prior art,
Appellant misapprehends the controlling precedent.
A finding of novelty or non-obviousness does not automatically lead
to the conclusion that the claimed subject matter is patent-eligible. 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 upon the [ineligible concept] itself."' Alice
Corp., 134 S. Ct. at 2355 (citation omitted). "Groundbreaking, innovative,
or even brilliant discovery does not by itself satisfy the § 101 inquiry."
Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591
(2013). A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; 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 § 101
categories of possibly patentable subject matter.").
Responding to the Examiner's Answer in the Reply Brief, Appellant
asserts that the present claims are analogous to the claims found patent-
eligible in Amdocs and "even more closely aligned" with those in Trading
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Technologies International, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir.
2017). But we find no parallel between the present claims and the claims at
issue in either of those cases.
In Amdocs, the Federal Circuit held the claim was patent-eligible
because the claim entails an unconventional technological solution
( enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases). The
solution required arguably generic components, including network devices
and "gatherers" which "gather" information. The court, however, concluded
that the claim's enhancing limitation necessarily requires that these generic
components operate in an unconventional manner to achieve an
improvement in computer functionality. Amdocs, 841 F.3d at 1300--01.
Similarly, in Trading Technologies, where the Federal Circuit
affirmed the 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." Trading Technologies, 675 F. App'x at 1004.3
3 Specifically, the district court found that with prior art graphical user
interfaces (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
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Appellant ostensibly maintains here that the present claims are
analogous to those in Amdocs and Trading Technologies because "[t]he
pending claims require storing specific information for a customer, creating
an individual profile for the customer describing attributes for the customer
based on specific data, classifying the customer into one or more
taxonomies, mining the data, and monetizing the data in a specific way"
(Reply Br. 4--5). But Appellant does not explain adequately how, and we
fail to see how, the Federal Circuit's rulings in Amdocs and Trading
Technologies somehow impact the patent-eligibility of the present claims.
For example, Appellant does not identify any technological problem that the
present claims allegedly solve. Nor, for example, does Appellant maintain
that the present claims, like those in Amdocs, achieve any improvement in
computer functionality.
We are not persuaded, on the present record, that the Examiner erred
in rejecting claims 1-18 under 35 U.S.C. § 101. Therefore, we sustain the
Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-18 under 35 U.S.C. § 101 is
affirmed.
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, at *4 (N.D. Ill. Feb. 24, 2015).
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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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