Ex Parte Tivey et al

Patent Trial and Appeal Board

Sep 26, 2018

14015146 (P.T.A.B. Sep. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/015,146 08/30/2013
21967 7590 09/26/2018
Hunton Andrews Kurth LLP
Intellectual Property Department
2200 Pennsylvania Avenue, N.W.
Washington, DC 20037
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Steven E. Tivey
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.
52493.000664 7316
EXAMINER
MCCORMICK, GABRIELLE A
ART UNIT PAPER NUMBER
3629
MAIL DATE DELIVERY MODE
09/26/2018 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN E. TIVEY, MATHEW F. LEAHY,
MUHAMMAD HAIDER, GARY A. OWINGS,
DONALD C. RICE, and DEBORAH K. DEMELL0 1
Appeal2017-002250
Application 14/015,146
Technology Center 3600
Before BRADLEY W. BAUMEISTER, JASON V. MORGAN, and
SHARON PENICK, Administrative Patent Judges.
BAUMEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 30-47, 49, and 50, which claims stand rejected
under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.
App. Br. l; Final Act. 3-7. 2 Claims 1-29 and 48 are cancelled. App. Br. 19,
22. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
1 Appellants identify Genworth Holdings, Inc. as the real party in interest.
Appeal Brief filed July 25, 2016 ("App. Br.") 1.
2 Rather than repeat the Examiner's positions and Appellants' arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
following documents for their respective details: the Final Action mailed
January 21, 2016 ("Final Act."); the Examiner's Answer mailed
Appeal2017-002250
Application 14/015, 146
THE INVENTION
Appellants describe the present invention as follows:
The invention provides systems and methods for
processing sales leads. Illustratively, the invention provides a
method of assigning sales leads in a network environment, the
sales leads relating to persons interested in effecting a purchase,
the method comprising: obtaining a lead, the lead including lead
information relating to a person interested in effecting a
purchase; loading the lead into a lead processing portion;
determining if the lead is auto-assignable; assigning the lead to a
sales agent; and outputting the lead information over the network
environment to a lead distribution portion, so as to be accessible
to the sales agent.
Abstract.
Appellants argue claim 50 as representative of independent claims 30
and 50, as well as the dependent claims 3:
50. A system that assigns sales leads using an Internet based
tool in a network environment based on an agent score and a
leads credit balance, the sales leads relating to persons interested
in effecting a purchase, the system comprising:
a database that stores data regarding agent data and lead
data inventory, the agent data including current lead inventory,
past performance, expertise and skills;
a computer server comprising a lead processing portion
that comprises a computer processor, the computer server
coupled to the database and programmed to:
obtain a lead, the lead including lead information relating
to a person interested in effecting a purchase;
September 14, 2016 ("Ans."); and the Reply Brief filed November 14, 2016
("Reply Br.").
3 Because Appellants argue the claims together as a group (see App. Br. 6),
we select independent claim 50 as representative. See 37 C.F.R.
§ 4I.37(c)(l)(iv) (2015).
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load the lead into the lead processing portion;
execute, by the lead processing portion, a set of rules to
generate an agent score for each agent that is a candidate for
assignment of the lead;
assign, by the lead processing portion, the lead to a sales
agent in conjunction with determining that the sales agent has a
leads credit balance above a minimum value, the leads credit
balance calculated as a value representing an agent's ability to
convert a lead to sales and being automatically generated and
adjusted by the lead processing portion based on lead
information associated with the agent and a running balance of
leads that an agent has in inventory; and
distribute, by the lead processing portion, the lead
information over the network environment to a lead distribution
processor, so as to be accessible to the sales agent; and
the lead information associated with the agent including
both (1) leads that an agent has converted to sales, and (2) a
number of new leads that the agent has obtained, and
the lead processing portion executing processing such that
converted leads are added, by the processing portion, to the lead
credit balance and new leads are detracted, by the processing
portion, from the lead credit balance.
THE DETERMINATIONS AND CONTENTIONS
The Examiner determines that the claims are patent-ineligible under
3 5 U.S. C. § 1 01 because the claims are directed to "organizing information
through mathematical correlations." Final Action 3 (citing July 2015
Update: Interim Eligibility Guidance Quick Reference Sheet 2 (July 30,
2015), https://www.uspto.gov/sites/default/files/documents/ieg-july-2015-
qrs.pdf).
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The Examiner further determines that the claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception. Final Act. 3. According to the Examiner,
The limitations of obtaining a lead and loading a lead are merely
insignificant data gathering steps. The step of outputting lead
information is merely a data transmission step. Using an Internet
based tool merely discloses that the Internet is the platform upon
which the method is executed. Executing a set of rules to
generate a score by the processing portion is the routine practice
of processing data.
Id. at 3--4. The Examiner determines that "[t]hese [steps] are well-known,
routine and conventional practices that require no more than a generic
computer to perform generic computer functions." Id. at 4 (citing, inter alia,
Spec. 64 ("the processing machine used to implement the invention may be a
general purpose computer")).
Appellants argue the rejection is improper because the claims are not
directed to an abstract idea (App. Br. 6-10), the claims recite limitations that
confine the scope of the claims (id. at 10-12), and the claims recite
significantly more than an abstract idea (id. at 12-17). We address these
general arguments and their supporting arguments below.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellants, and in light of the arguments and evidence
produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential). We note that the mailing of the Examiner's Answer and the
filing of Appellants' Reply Brief occurred prior to the Office issuing its
latest guidance on patent-eligibility in the Manual of Patent Examining
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Procedure (MPEP). See MPEP § 2106 (9 ed., rev. 8; issued January 2018).
We review the presently appealed rejection in light of recent relevant court
decisions and the guidance provided in the current revision of the MPEP.
Regarding the question of patent-eligibility 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 Bank Int 'l, 134 S. Ct.
2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 589 (2013)). Accordingly, in applying the
§ 101 exception, the Supreme Court cautioned:
[W]e must distinguish between patents that claim the
"'buildin[g] block[ s]"' of human ingenuity and those that
integrate the building blocks into something more, thereby
"transform[ing]" them into a patent-eligible invention. The
former "would risk disproportionately tying up the use of the
underlying" ideas, and are therefore ineligible for patent
protection. The latter pose no comparable risk of pre-emption,
and therefore remain eligible for the monopoly granted under our
patent laws.
Alice, 134 S. Ct. at 2354--55.
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 2355 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71-73 (2012)). In determining whether the§ 101
exception applies, "we must distinguish between patents that claim the
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'buildin[g] block[ s]' of human ingenuity and those that integrate the
building blocks into something more." Alice, 134 S. Ct. at 2354.
In the first step of the analysis, we determine whether the claim at
issue is "directed to" a judicial exception, such as an abstract idea. Id. at
2355. If not, the inquiry ends. Thales Visionix Inc. v. US., 850 F.3d 1343,
1346 (Fed. Cir. 2017); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339
(Fed. Cir. 2016). If the claim is determined to be directed to an abstract
idea, then we consider under step two whether the claim contains an
"inventive concept" sufficient to "transform the nature of the claim into a
patent-eligible application." Alice, 134 S. Ct. at 2355 ( quotations and
citation omitted).
In considering whether claims are directed to an abstract idea under
step one, we acknowledge, as did the Supreme Court, 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, 822 F.3d at 1336.
In the second step of the Alice analysis, if applicable, we must
consider whether the claim contains an element or a combination of
elements that is sufficient to transform the nature of the claim into a patent-
eligible application. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714
(Fed. Cir. 2014); Alice, 134 S. Ct. at 2355.
In applying step two of the Alice analysis, we must
"determine whether the claim[] do[es] significantly more than
simply describe [the] abstract method" and thus transform the
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abstract idea into patentable subject matter. We look to see
whether there are any "additional features" in the claim[] that
constitute an "inventive concept," thereby rendering the claim[]
eligible for patenting even if [it is] directed to an abstract idea.
Those "additional features" must be more than "well-understood,
routine, conventional activity."
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328 (Fed.
Cir. 2017) ( citations omitted). A claim that "merely require[ s] generic
computer implementation[] fail[ s] to transform [an] abstract idea into a
patent-eligible invention." Alice, 134 S. Ct. at 2357.
Central to our analysis herein is the fundamental principle that the
Alice framework must be applied to the claims, as properly construed. As
our reviewing court has stated, "The § 101 inquiry must focus on the
language of the Asserted Claims themselves." Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016); see also
Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F .3d
1336, 1345 (Fed. Cir. 2013) (admonishing that "the important inquiry for
a § 101 analysis is to look to the claim"); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat 'l Ass 'n, 776 F.3d 1343,
1346 (Fed. Cir. 2014) (focusing on "whether the claims of the asserted
patents fall within the excluded category of abstract ideas") ( emphasis
added)). These principles are based on long-established jurisprudence
that "[i]t is the claims [that] define the metes and bounds of the
invention entitled to the protection of the patent system." In re
Warmerdam, 33 F .3d 1354, 1360 (Fed. Cir. 1994) ( citing Zenith Lab.
Inc. v. Bristol-Myers Squibb Co., 19 F.3d 1418, 1424 (Fed. Cir. 1994));
see also In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998) ("[T]he
name of the game is the claim.").
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ANALYSIS
I.
Appellants argue the Examiner erred in determining that the claims
are directed to an abstract idea because, according to Appellants, the claims
do not recite either a mathematical algorithm or a fundamental economic or
longstanding commercial practice. App. Br. 7. Appellants characterize their
claims as "address[ing] a business challenge (e.g., assigning sales leads in a
network environment) that is particular to processing that involves
determining that the sales agent has a leads credit balance above a minimum
value." Id. Appellants argue that the courts have not identified any idea
similar to those claims as being abstract. Id. Appellants also argue that their
claimed invention is necessarily rooted in computer technology in order to
overcome a problem specifically arising the realm of computer networks.
Id. (citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257
(Fed. Cir 2014)).
Appellants' arguments are unpersuasive. We agree with the Examiner
that claims reasonably can be characterized as being directed to
mathematical relationships or formulas. Section 2106.04(a)(2) Part (IV) of
the MPEP includes a more specific subsection of abstract ideas-"Concepts
Relating To Performing Mathematical Calculations." Cases cited in this
subsection are relevant to the claimed system's process of "execut[ ing] ... a
set of rules to generate an agent score for each agent that is a candidate for
assignment of the lead." Claim 50. See, e.g., In re Maucorps, 609 F.2d 481
(CCP A 1979) (holding patent-ineligible, a claim directed to a computing
system that optimizes sales organizations and activities); see also In re
Grams, 888 F.2d 835, 836, 840 (Fed, Cir. 1989) (holding claims directed to
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identifying parameters that indicate an abnormal condition to constitute a
patent-ineligible "attempt to patent a mathematical algorithm rather than a
process for producing a product").
Even under Appellants' own, alternative, characterization of the
invention (App. Br. 7), the claims still can be reasonably interpreted as being
directed to another abstract idea-a method of organizing human activity.
See MPEP 2106.04(a)(2) Part (II). This section of the MPEP further
includes a more particular subsection of abstract ideas-"Concepts Relating
to Advertising, Marketing, & Sales Activities Or Behavior." Id. Cases cited
in this section include fact patterns supporting a determination that the
claimed processes of obtaining leads and organizing the lead information by
assigning the leads to sales agents (see claim 50) are directed to an abstract
idea. See, e.g., Maucorps.
Moreover, even were the claims reasonably characterized as being
directed to both of the abstract ideas outlined above, our determination
would be the same. A claim need not be addressed to a single abstract idea
to be patent ineligible. As our reviewing court has held, combining several
abstract ideas does not render the combination any less abstract.
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
("Adding one abstract idea ... to another abstract idea ... does not render
the claim non-abstract."); see also FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (patent-ineligible claims were
directed to a combination of abstract ideas).
Furthermore, we disagree with Appellants' conclusory argument that
the claimed invention is necessarily rooted in computer technology or
overcomes a problem specifically arising in the realm of computer networks.
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App. Br. 7. As Appellants acknowledge (id.), the present claims address a
business challenge that involves tracking leads for sales agents. Spec. 1.
Appellants set forth insufficient factual basis to support their argument that
tracking leads for sales agents is rooted in computer technology. The fact
that the claimed tracking and organizing of the information uses "a device
with a database, a computer server, a data entry input, a lead processing
portion comprising a computer processor, and a network environment"
(App. Br. 8), does not necessarily mean that the claims focus on a specific
means or method of improving any of these hardware components. Claims
that recite hardware alternatively may be directed to a result or effect that,
itself, is the abstract idea and merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336. We 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 id.
In the present case, the claims recite computer hardware components
in a manner that indicates the computer hardware components merely are
used to track and organize the sales-leads information more efficiently.
Whether the computer components add "significantly more" is a separate
inquiry we address under step two of the Alice framework.
Appellants argue that the claims are not directed to a patent-ineligible
abstract idea because the claims "were not subject to a prior art process that
was doing the same thing but outside a computing environment." App.
Br. 9; see also id. at 10-12. This argument is unpersuasive.
"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
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a claim falls within the § 101 categories of possibly patentable subject
matter." Diamond v. Diehr, 450 U.S. 175, 188-89 (1981). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90. See also Parker v. Flook, 437 U.S.
584, 594--95 (1978) (holding claims to "a new and presumably better
method for calculating alarm limit values," of undisputed usefulness, to be
directed to patent-ineligible subject matter); see also Myriad, 569 U.S. at
591 ("Groundbreaking, innovative, or even brilliant discovery does not by
itself satisfy the§ 101 inquiry.").
Appellants argue the claims are not directed to an abstract idea
because "allowing the pending claims would 'pose no comparable risk of
pre-emption,' or 'improperly [tying] up the future use of[] building blocks
of human ingenuity." App. Br. 10; see also id. at 11 ("[t]here is no risk of
preempting the abstract idea"). This argument is unpersuasive.
We recognize that the Supreme Court has described "the concern that
drives this exclusionary principle [i.e., the exclusion of abstract ideas from
patent-eligible subject matter] as one of pre-emption." See Alice, 134 S. Ct.
at 2354. However, characterizing preemption as a driving concern for
patent-eligibility is not the same as characterizing preemption as the sole test
for patent-eligibility. As our reviewing court has explained: "The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability" and "[ f]or this reason, questions on
preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
( citing Alice, 134 S. Ct. at 2354). Although "preemption may signal patent
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ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility." Id.
For the stated reasons, Appellants do not persuade us that the
Examiner erred in determining the claims are directed to one or more
abstract ideas. We therefore tum to the question of whether the claims recite
significantly more than an abstract idea under step two of the Alice
framework.
II.
Appellants present various arguments for why the claims recite
significantly more than an abstract idea. App. Br. 12-17. But in so doing,
Appellants discuss various aspects of the claim that are directed to the
underlying abstract idea, itself. For example, Appellants argue
The claimed invention addresses an Internet-centric challenge of
assigning sales leads in a network environment based on an agent
score and a leads credit balance. This is addressed by the
specifically programmed computer server that assigns, by the
lead processing portion, the lead to a sales agent in conjunction
with determining that the sales agent has a leads credit balance
above a minimum value, the leads credit balance calculated as a
value representing an agent's ability to convert a lead to sales and
being automatically generated and adjusted by the lead
processing portion based on lead information associated with the
agent and a running balance of leads that an agent has in
inventory, as claimed by Applicants.
Id. at 13; see also id. at 14 ("The pending claims are specific to a system that
assigns sales leads in a network environment based on an agent score and a
leads credit balance").
These arguments are unpersuasive. "It has been clear since Alice that
a claimed invention's use of the ineligible concept to which it is directed
cannot supply the inventive concept that renders the invention 'significantly
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more' than that ineligible concept." BSG Tech LLC v. BuySeasons, Inc., 899
F.3d 1281, 1290 (Fed. Cir. 2018).
Appellants argue "it is not possible for the steps of the claims to be
performed without a computer." App. Br. 15-16. According to Appellants,
"[t]hese claims are not an example of 'implementing an abstract concept
faster and more efficiently on a computer' -- instead, the process could not
occur absent a computer." Id. at 16. This argument is unpersuasive.
Following Appellants' theory, any claim to an abstract idea would be
rendered patent-eligible simply by additionally reciting a computer----even
by reciting a general computer performing well understood, routine, and
conventional activities. This simply is not the law. A claim that "merely
require[ s] generic computer implementation[] fail[ s] to transform [an]
abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2357.
Appellants finally argue "the claims improve efficiencies, both
physical and transactional, for 'assign[ing] sales leads in a network
environment based on an agent score and a leads credit balance.' Therefore,
the claimed embodiments both 'improve the functioning of the computer
itself' and 'effect an improvement in [a] technical field."' App. Br. 17.
We disagree. Appellants' invention entails using a computer to
perform an abstract idea more efficiently. Appellants do not provide
sufficient evidence that their invention improves upon any technical field.
"[M]ere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology." Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
Furthermore, the Examiner has provided a reasonable basis to
conclude that the invention does not improve upon computer technology,
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but, instead, only uses generic computers for well understood, routine, and
conventional tasks. For example, the Examiner cites to page 64 of
Appellants' Specification to support this conclusion. Final Act. 4. This
page of Appellants' disclosure expressly states that "the processing machine
used to implement the invention may be a general purpose computer." Spec.
64. Appellants provide insufficient evidence to rebut the Examiner's
conclusion that the claims do not recite significantly more.
III.
In addition to the § 101 rejection, discussed above, the record
indicates that an obviousness double patent rejection also is pending. See
Final Act. 3 ("The Examiner notes Applicant's request to hold [the
obviousness-type double patenting rejection] in abeyance until all other
substantive issues have been resolved"). Because Appellants present no
arguments pertaining to this pending obviousness double patenting rejection
(see generally App. Br.), we summarily sustain this rejection. See MPEP
§ 1205.02 ("If a ground of rejection stated by the examiner is not addressed
in the appellant's brief, that ground of rejection will be summarily sustained
by the Board.").
DECISION
The Examiner's decision rejecting claims 30-47, 49, and 50 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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