Ex Parte Tevanian et al

Patent Trial and Appeal Board

Jan 24, 2018

12021031 (P.T.A.B. Jan. 24, 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.
12/021,031 01/28/2008 Avadis Tevanian JR. TEV 2008-1 3141
23694 7590 01/26/2018
Law Office of J. Nicholas Gross, Prof. Corp.
PO BOX 9489
BERKELEY, CA 94709
EXAMINER
REAGAN, JAMES A
ART UNIT PAPER NUMBER
3688
NOTIFICATION DATE DELIVERY MODE
01/26/2018 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):
eofficeaction @ appcoll.com
jngross@pacbell.net
anthonygreek @ gmail. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte AVADIS TEVANIAN JR., MARK STEVANS, and
WILLIAM CHARLES HANKINSON
Appeal 2016-000875
Application 12/021,031
Technology Center 3600
Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.
MOHANTY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 18—21, 24, 31, 32, 39, and 40, which are all the claims
pending in the application. We have jurisdiction under 35 U.S.C. § 6(b).
SUMMARY OF THE DECISION
We AFFIRM. 37 C.F.R. § 41.50(b).
Appeal 2016-000875
Application 12/021,031
THE INVENTION
The Appellants’ claimed invention is directed to a system and method
for the specification and display of time-based predictions (Spec., page 6,
lines 2, 3). Claim 18, reproduced below, is representative of the subject
matter on appeal.
18. A method of presenting data to a user concerning a predicted
future performance of an item comprising:
providing one or more software routines within a graphical
interface controlled by the computing machine which is/are capable
of:
1) presenting identifying data for an item subjected to an online
community based vote;
2) presenting in graphical form one or more of: a user vote
including a user predicted performance parameter, an online
community aggregate vote including a community predicted
performance parameter and an actual performance;
3) presenting time related parameters associated with said user
predicted performance parameter and said community predicted
performance parameter including at least one from the group
consisting of a numerical form and a graphical form for said
user vote and said online community aggregate vote;
4) presenting a visual comparison in graphical form of said
user's vote expressed as a user predicted performance
parameter, and said online community aggregate vote expressed
as an online community predicted performance parameter
over a plurality of future time intervals;
5) presenting a prediction score determined by the computing
system indicating whether said item will achieve said online
community prediction performance parameter by a target date;
wherein said user is required to provide a prediction for an item
prior to viewing community voting data for such item.
App. Br. 17 (Claims Appendix).
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Appeal 2016-000875
Application 12/021,031
THE REJECTIONS
The following rejections are before us for review:
1. Claims 18—21, 24, 31, 32, 39, and 40 are rejected under
35 U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 18—21 and 24 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Ram (US 2006/0069635 Al, pub. Mar. 30, 2006),
Stinkski, (US 2007/0130040 Al, pub. June 7, 2007), Zahavi
(US 6,622,221 Bl, iss. Sept.16, 2003), and Hugonnard-Bruyere
(US 2007/0190505 Al, pub. Aug. 16, 2007).
3. Claims 31, 32, 39, and 40 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Ram, Stinkski, Zahavi, Hugonnard-Bruyere, and
Official Notice.
FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.1
ANALYSIS
Rejection under 35 U.S.C. §101
The Appellants argue that the rejection of claim 18 under 35 U.S.C.
§ 101 is improper (App. Br. 9; Reply Br. 2, 3).
In contrast, the Examiner has determined that the rejection of record is
proper (Ans. 5,21, 22). The Examiner has determined that the claim does
1 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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Application 12/021,031
not do more than “collect, store, display, and compare data to optimize a
prediction algorithm for a financial instrument on a generic computer”
(Ans. 5). The Examiner has also determined that the claim’s limitations fail
to transform the abstract nature of the claim (Ans. 22).
We agree with the Examiner. Under 35U.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: “laws of nature,
natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice
Corp. Pty Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014).
In judging whether claim 18 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim both individually and as “an ordered
combination” to determine whether the additional elements “transform the
nature of the claim” into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept” an element or combination of
elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id. The Court also stated that “the mere
recitation of a generic computer cannot transform a patent-ineligible abstract
idea into a patent-eligible invention”. Id at 2358.
Here, we determine that the claim is directed to the concept of
presenting a comparison of a user’s vote to a community vote and making a
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Application 12/021,031
prediction score indicating performance of the community vote. This is a
method of organizing human activities using a mathematical relationship in
the prediction and is an abstract idea beyond the scope of § 101.
We next consider whether additional elements of the claim, both
individually and as an ordered combination, transform the nature of the
claim into a patent-eligible application of the abstract idea, e.g., whether the
claim does more than simply instruct the practitioner to implement the
abstract idea using generic computer components. We conclude that it does
not.
Considering each of the claim elements in turn, the function
performed by the computer system at each step of the process is purely
conventional. Each step of the claimed method does no more than require a
generic computer to perform a generic computer function. See, e.g., Spec,
page 7, lines 23—31 (describing a generic computer).
Here, the claim is not rooted in technology, but rather in the concept
of presenting a comparison of a user’s vote to a community vote, and
making a prediction score indicating performance of the community vote.
This is a method of organizing human activities using a mathematical
relationship in the prediction and is an abstract idea. The claim limitations
also fail to transform the abstract nature of the claim.
For these above reasons, the rejection of claim 18 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter is sustained. The
remaining rejected claims are directed to similar subject matter and we
affirm the rejection of those claims as well. As our rationale differs from
that presented by the Examiner, we designate this a new ground of rejection.
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Application 12/021,031
Rejections under 35 U.S.C. § 103(a)
The Appellants argue that the rejection of claim 18 is improper
because the prior art fails to include several claim limitations (App. Br. 10—
12). The Appellants also argue that insufficient rationale is provided for the
rejection (App. Br. 12—15; Reply Br. 3—7).
In contrast, the Examiner has determined that the rejection is proper
(Ans. 15-17, 22-24).
We agree with the Appellants. Even taking the cited references of
Ram, Stinkski, Zahavi, and Hugonnard-Bruyere to include all the argued
claim limitations, there is a lack of articulated reasoning with rational
underpinnings to support a conclusion of obviousness.
For this reason the rejection of claim 18 and its dependent claims 19—
21 is not sustained. Claim 24 contains similar limitations and the rejection
of this claim is not sustained as well.
The rejection of claims 31, 32, 39, and 40 under 35 U.S.C. § 103(a) as
unpatentable over Ram, Stinkski, Zahavi, Hugonnard-Bruyere, and Official
Notice fails to correct the deficiencies in the base rejection and this rejection
also lacks articulated reasoning with rational underpinnings to support a
conclusion of obviousness and these rejections are not sustained.
NEW GROUND
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
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Application 12/021,031
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment
of the claims so rejected or new evidence relating to the claims
so rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to the
examiner....
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 37 C.F.R. § 41.50(b)(1), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to the affirmed rejection,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejection is overcome.
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejection, including any timely request for rehearing thereof.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
CONCLUSIONS OF LAW
We conclude that Appellants have not shown that the Examiner erred
in rejecting the claims under 35 U.S.C. § 101 as listed in the Rejections
section above.
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We conclude that Appellants have shown that the Examiner erred in
rejecting the claims under 35 U.S.C. § 103(a) as listed in the Rejections
section above.
DECISION
The Examiner’s rejection of claims 18—21, 24, 31, 32, 39, and 40 is
sustained.
AFFIRMED; 37 C.F.R, $ 41.50(b)
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