Ex Parte Thompson et al

Patent Trial and Appeal Board

Jul 28, 2017

13953310 (P.T.A.B. Jul. 28, 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.
13/953,310 07/29/2013 Whit Thompson 8053-5-1 6091
30448 7590 08/01/2017
AKERMAN LLP
P.O. BOX 3188
WEST PALM BEACH, FL 33402-3188
EXAMINER
VIG, NARESH
ART UNIT PAPER NUMBER
3622
NOTIFICATION DATE DELIVERY MODE
08/01/2017 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):
ip @ akerman.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WHIT THOMPSON, HENRIQUE MEYER,
LLOYD E. McCLENDON III, and DOUGLAS McCLENDON
Appeal 2016-005829
Application 13/953,310
Technology Center 3600
Before JAMES R. HUGHES, LARRY J. HUME, and
ALEX S. YAP, Administrative Patent Judges.
HUGHES, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134(a) of the
Examiner’s final decision rejecting claims 1—13, which constitute all the
claims pending in this application. Final Act. 1—2; Br. I.1 We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 We refer to Appellants’ Specification (“Spec.”) filed July 29, 2013 and
Appeal Brief (“Br.”) filed Oct. 15, 2015. We also refer to the Examiner’
Answer (“Ans.”) mailed Mar. 11, 2016, and Final Office Action (Final
Rejection) (“Final Act.”) mailed May 15, 2015.
Appeal 2016-005829
Application 13/953,310
Appellants ’ Invention
The invention generally relates to processing tax deed applications for
a real estate tracts, in particular, systems and methods for managing the
processing of tax deed applications. The system includes a user interface, a
memory storing instructions, and a processor executing instructions to
perform operations. The operations performed include receiving tax deed
application data for a tract of real, accessing tax certificate data associated
with the tract, determining the fees associated with the tax deed application
based on the amount of taxes and interest due for the associated tax
certificate(s), and receiving and accepting electronic payment of the fees.
Spec. H11—20; Abstract.
Representative Claim
Independent claim 1, reproduced below, further illustrates the
invention:
1. A system for processing a tax deed application for a
tract of real estate, the system comprising:
a user interface;
a memory that stores instructions;
a processor that executes the instructions from memory to
perform operations, the operations comprising:
receiving application data representative of the tax deed
application for the tract of real estate in connection with a tax
certificate associated with the tract of real estate;
accessing data representing every outstanding tax
certificate associated with the tract of real estate;
determining an amount of fees associated with the tax deed
application, wherein the amount of fees is based at least in part
on (a) the amount of taxes due in connection with said tax
certificate; (b) the amount of interest due in connection with said
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tax certificate; (c) the amount of taxes due in connection with
other outstanding tax certificates associated with the tract of real
estate, if any; and (d) the amount of interest due in connection
said other outstanding tax certificates, if any;
accepting electronic payment of the amount of the fees
associated with the tax deed application for the tract of real
estate;
determining that tax deed data associated with the tract of
real estate has been changed; and
displaying, in the user interface, at least a portion of the
tax deed data, the display providing an indication of the
determined changes to the tax deed data in the at least a portion
of the tax deed data.
Rejection on Appeal
The Examiner rejects claims 1—13 under 35 U.S.C. § 101 as not being
directed to patent-eligible subject matter.
ISSUE
Based upon our review of the record, Appellants’ contentions, and the
Examiner’s findings and conclusions, the issue before us follows:
Did the Examiner err in rejecting claims 1—13 under 35 U.S.C. § 101
as not being directed to patent-eligible subject matter?
ANALYSIS
Appellants argue independent claims 1 and 3 together as a group and
do not separately argue dependent claims 2 and 4—13. See Br. 16—19. We
select independent claim 1 as representative of Appellants’ arguments with
respect to claims 1—13. 37 C.F.R. § 41.37(c)(l)(iv).
The Examiner rejects the claims and, in particular, claim 1 as not
being directed to patent-eligible matter in that:
The claim as a whole, does not amount to significantly
more than the abstract idea itself. This is because the claim does
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not effect an improvement to another technology or technical
field; the claim does not amount to an improvement to the
functioning of a computer itself; and the claim does not move
beyond a general link of the use of an abstract idea to a particular
technological environment.
The claim merely amounts to the application or
instructions to apply the abstract idea (i.e. processing of tax deed
applications for certificates bought by investors/owners) on a
computer, and is considered to amount to nothing more than
requiring a generic computer system (e.g. a computer system
comprising a generic database; a generic element for providing
communication capability; a generic element for receiving user
input; a generic display to present user requests; and a generic
element to process payments) to merely carry out the abstract
idea itself. As such, the claim, when considered as a whole, is
nothing more than the instruction to implement the abstract idea
(i.e. processing of tax deed applications for certificates bought
by investors/owners) in a particular, albeit well-understood,
routine and conventional technological environment.
Final Act. 6; see Final Act. 4—6; Ans. 2—3. Appellants contend “Claim 1
provide [s] significant advantages over previous techniques of processing of
tax deed applications [and] . . . also amounts to significantly more than the
abstract idea of processing of tax deed applications, alleged by the Office
Action.” Br. 17 (internal quotation omitted); see Br. 16—18. Appellants
further contend “Claim 1 does not pre-empt the abstract idea of processing
of tax deed applications.” Br. 18 (internal quotation omitted).
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 “Tong held that
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty.
Ltd. v. CLS Bank Inti, 134 S. Ct. 2347, 2354 (2014) (quoting Assn for
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Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
(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, 77—80 (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” {id.), e.g., to an
abstract idea. 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 78, 79).
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
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
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
Turning to the first step of the eligibility analysis, the Examiner finds
claim 1 is directed to the abstract idea of processing tax deed applications.
See Final Act. 4—6; Ans. 2—3. Appellants do not contest that claim 1 is
directed to an abstract idea, but instead focus on the second step of the Alice
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analysis—whether the claim adds significantly more to the alleged abstract
idea. See By. 16—18.
We agree with the Examiner that Appellants’ claim 1 (and the other
pending claims) are directed to a patent-ineligible abstract idea. See Final
Act. 4—6; Ans. 2—3. Claim 1 utilizes a processor to receive tax deed
application data associated with the tract of real estate, which is associated
with one or more tax certificates. The recited process finds (accesses)
outstanding tax certificates associated with the tract and determines fees for
the tax deed application based on the taxes due for the tax certificate(s) and
the interest due for the tax certificate(s). The process then accepts electronic
payment of fees. The process also determines that tax deed data has been
changed and utilizes a user interface to display the tax deed data as well as
an indication of the changes to the tax deed data. Spec. ^fl[ 11—20.
The instant claims are akin to the claims for analyzing information
found to be abstract in Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1353—54 (Fed. Cir. 2016), or the claims directed to image data
processing discussed in Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (finding “a process that
employs mathematical algorithms to manipulate [data or information] to
generate additional information is [abstract and] not patent eligible”).
Having found Appellants’ claims are directed to an abstract concept
under Alice’s step 1 analysis, we next address whether the claims add
significantly more to the alleged abstract idea. See Final Act. 5—6; Ans. 2—3.
As directed by our reviewing Court, we search for an ‘“inventive concept’
sufficient to ‘transform the nature of the claim into a patent-eligible
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application.’” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299, 1312 (Fed. Cir. 2016) (quoting Alice, 134 S. Ct. at 2355).
Appellants contend claim 1 “amounts to significantly more than the abstract
idea itself’ (Br. 16) and “provide[s] significant advantages over previous
techniques of processing of tax deed applications” (Br. 17). We disagree
with Appellants’ unsupported and conclusory arguments. Appellants’
claim 1 does not recite any of the purported advantages. See Br. 16—18.
Indeed, the claim merely recites processes for manipulating data, e.g.,
utilizing database operations. Such steps — receiving tax deed application
data, finding and accessing outstanding tax certificates associated with the
tax deed application, determining fees, accepting payment, and displaying
data — are all routine and conventional computer functions (i.e.,
mathematical operations) of a general processor. The Specification supports
this view in discussing the processes implemented in software which
operates on generic computers to perform the recited data manipulation
steps. See Spec. 42—84; Figs. 1—11. Moreover, we find this type of
activity, i.e., receiving and processing data and determining fees includes
longstanding conduct that existed well before the advent of computers and
the Internet, and could be carried out by a human with pen and paper. See
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed.
Cir. 2011) (“That purely mental processes can be unpatentable, even when
performed by a computer, was precisely the holding of the Supreme Court in
Gottschalkv. Benson").2
2 Cybersource further guides that “a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101.” Cybersource, 654 F.3d at 1373.
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Appellants also contend claim 1 “does not pre-empt the abstract idea
of processing of tax deed applications,” in that it “would be very easy to
perform the abstract idea of processing of tax deed applications without
performing each and every limitation.” Br. 18 (internal quotation omitted).
We note, however, that lack of complete preemption does not make an
abstract concept patent-eligible. Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015) (“the absence of complete preemption
does not demonstrate patent eligibility”).
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of claim 1 under 35 U.S.C. § 101. Thus, we sustain the
Examiner’s rejection under § 101 of independent claims 1 and 3, and also
dependent claims 2 and 4—13, which fall with claims 1 and 3, respectively.
CONCLUSION
On this record, Appellants have not shown by a preponderance of the
evidence that the Examiner erred in rejecting claims 1—13 under 35 U.S.C.
§101.
DECISION
We affirm the Examiner’s rejection of claims 1—13.
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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