Ex Parte Vasinkevich

Patent Trial and Appeal Board

Jul 25, 2018

13785597 (P.T.A.B. Jul. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/785,597 03/05/2013
89220 7590
Antonio Papageorgiou
Meister Seelig & Fein LLP
125 Park Avenue
7th Floor
New York, NY 10017
07/27/2018
FIRST NAMED INVENTOR
Michael Vasinkevich
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.
227-017 8467
EXAMINER
ANDERSON, MICHAEL W
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/27/2018 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):
patents@msf-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOCHEN L. LEIDNER and FRANK SCHILDER
Appeal2017-004382
Application 13/785,597 1
Technology Center 3600
Before HUNG H. BUI, MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BUI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants seek our review under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1-30, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM. 2
1 According to Appellants, the real party in interest is Thomson Reuters
Global Resources. App Br. 1.
2 Our Decision refers to Appellants' Appeal Brief ("App. Br.") filed
September 26, 2016; Reply Brief ("Reply Br.") filed January 30, 2017;
Examiner's Answer ("Ans.") mailed November 29, 2016; Final Office
Action ("Final Act.") mailed April 26, 2016; and original Specification
("Spec.") filed March 16, 2012.
Appeal2017-004382
Application 13/785,597
STATEMENT OF THE CASE
Appellants' invention relates to "identifying and measuring and/or
scoring risks associated with an entity, e.g., a publicly traded company,
based at least in part on content obtained from news and other reliable
sources and generating an entity specific risk profile based on entity-specific
risks" and "predicting a movement in a security associated with an entity."
Spec. ,r 17; Abstract.
Claims 1 and 15 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below with disputed limitations in
italics:
1. A computer implemented automated method comprising:
a) receiving and transforming a first set of textual
content into a first set of risk scores using at least one
computational linguistic technique comprising at least one of the
following risk identification algorithms: binary sentence risk
classification, risk phrase tagging, named entity risk phrase
linking, word sequence mining, token pattern matching, syntax
structure mining, grammatical structure mining, tag based
algorithm mining, and binary grammatical dependency
relationship identification;
b) generating by a computer a current entity-specific
risk profile, wherein the current entity-specific risk profile is a
tuple profile data structure comprising a plurality of risk types
derived in part from the first set of risk scores and further
comprises the first set of risk scores derived from the first set of
textual content;
c) determining by a computer a risk difference
between a historical risk profile, the historical risk profile
comprising a second set of risk scores, the second set of risk
scores having been previously generated by transforming a
second set of content using at least one computational linguistic
technique, and the current entity-specific risk profile, wherein
the first set of content, collectively, is transformed in
2
Appeal2017-004382
Application 13/785,597
substantially real-time upon being received and temporally more
recent to the determining than is, collectively, the second set of
content;
d) based upon the risk difference, determining by a
computer a predicted movement of a price of a security
associated with an entity, the entity being the entity for which the
current entity-specific risk profile was generated; and
e) electronically transmitting by a computer the
predicted movement in substantially real-time upon receipt of the
first set of content.
Appeal Br. 32 (Claims App'x).
EXAMINER'S REJECTIONS & REFERENCES
(1) Claims 1-30 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to non-statutory subject matter. Final Act. 3---6.
(2) Claims 1-3, 7, 8, 11-13, 15-17, 21, 22, 25-27, 29, and 30 stand
rejected under 35 U.S.C. § I03(a) as being unpatentable over Madhavan et
al. (US 2004/0078319 Al; published Apr. 22, 2004; "Madhavan"), Hoogs et
al. (US 2005/0071217 Al; published Mar. 31, 2005; "Hoo gs"), and Psota et
al. (US 2009/0144070 Al; published June 4, 2009; "Psota"). Final Act. 6-
25.
(3) Claims 4, 5, 18, and 19 stand rejected under 35 U.S.C. § I03(a)
as being unpatentable over Madhavan, Hoogs, Psota, and Ricciardi (US
2002/0059126 Al; published May 16, 2002). Final Act. 25-30.
(4) Claim 20 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Madhavan, Hoogs, Psota, and Ronk (US 2008/0059353
Al; published Mar. 6, 2008). Final Act. 31-32.
3
Appeal2017-004382
Application 13/785,597
(5) Claim 6 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Madhavan, Hoogs, Psota, Ricciardi, and Ronk. Final Act.
32-33.
(6) Claims 9 and 23 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Madhavan, Hoogs, Psota, Bliznak (US
2009/0276259 Al; published Nov. 5, 1009), and Gould (US 2006/0253360
Al; published Nov. 9, 2006). Final Act. 33-36.
(7) Claims 10 and 24 stand rejected under 35 U.S.C. § I03(a) as
being unpatentable over Madhavan, Hoogs, Psota, Bliznak, Gould, and
Fickes (US 2005/0262014 Al; published Nov. 24, 2005). Final Act. 36-37.
ANALYSIS
35 US.C. § 101: Claims 1-30
In Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014), the
Supreme Court reiterates an analytical two-step framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566
U.S. 66, 79 (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
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Id. If the
claims are directed to eligible subject matter, the inquiry ends. Thales
Visionix Inc. v. United States, 850 F.3d 1343, 1349 (Fed. Cir. 2017); Enfzsh,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
step in the analysis is to consider the elements of the claims "individually
4
Appeal2017-004382
Application 13/785,597
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 79, 78).
In other words, the second step is to "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."' Id. (quoting Mayo, 566 U.S. at 72-73).
In rejecting claims 1-30 under 35 U.S.C. § 101, the Examiner
determines (1) these claims are directed to an abstract idea of "predicting
movement of a price of a security" and (2) the additional elements in the
claims, whether taken separately or in an ordered combination, do not
amount to significantly more than the abstract idea, because (i) "the claims
do not recite an improvement to another technology or technical field, nor do
they recite an improvement to the functioning of the computer itself' and
(ii) "the claims require no more than a generic computer ... to perform
generic computer functions that are well-understood, routine, conventional
activities previously known to the industry." Final Act. 4--5; Ans. 2---6. The
Examiner also determines these claims are directed to an abstract idea
because the process recited in these claims can be implemented mentally or
performed manually by a human with pen and pencil. Ans. 2; see also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011).
Alice/Mayo-Step 1 (Abstract Idea)
Turning to the first step of the Alice inquiry, Appellants argue "the
Examiner's characterization of the claim is overly broad," citing Enfzsh, LLC
v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. May 12, 2016) and a
memorandum from Robert W. Bahr, Deputy Commissioner for Patent
5
Appeal2017-004382
Application 13/785,597
Examination Policy, to Patent Examining Corps, Recent Subject Matter
Eligibility Decisions (May 19, 2016), which warn against "describing the
claims at such a high level of abstraction and untethered from the language
of the claims" and suggest such an abstraction will "all but ensure[] that the
exceptions to§ 101 swallow the rule." App. Br. 12-13 (quoting Enfish, 822
F.3d at 1336). Likewise, Appellants argue "the Examiner has not properly
considered each and every claim limitation in determining subject matter
eligibility under 35 U.S.C. § 101" and if these limitations "are considered
both individually and together, the claim is not directed to any previously
identified abstract idea." Reply Br. 1-3.
Appellants then argue "Claim 1 is not directed towards an abstract
idea" because:
(1) the Supreme Court's decision in Alice "narrowed the
concept of 'abstract ideas' to those concepts which are
fundamental and long prevalent, and possibly to concepts
which have been in use for an extensive period of time"
such as "the risk hedging claims of Bilski and the
intermediate settlement concept at issue in Alice," whereas
the subject matter of Appellants' claims relates to
"generating by a computer a current entity-specific risk
profile" that is "far removed from the concepts of risk
hedging and intermediate settlements";
(2) "[l]ike the claims at issue in Enfzsh and [McRO, Inc. v. Bandai
Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016)],
the claimed invention provides a technological improvement that
is not directed towards an abstract idea. The claimed method
provides an improvement over the prior art methods that can
produce results in near real-time where manual methods could
not have possibly yielded usable results"; and
6
Appeal2017-004382
Application 13/785,597
(3) like DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellants' "invention also solves a problem
specific to the computer or virtual environment, one specific to
the Internet that did not exist before the advent of computers and
computer technology" and "cannot possibly be achieved by a
human using mental steps or on pen and paper."
App. Br. 13-15.
According to Appellants, "generating, processing, communicating and
transforming electronic data for risk mining and management and the
creation of entity-specific risk profiles of the present invention solves a
problem specific to the computer field not related to the alleged abstract
idea." App. Br. 14.
Appellants' arguments are not persuasive. At the outset, we note
Appellants' characterizations of the Supreme Court's decision in Al ice and
the Federal Circuit's decisions in Enfzsh and McRO are incorrect. The
Supreme Court's decision in Alice is not limited to those "business method"
concepts that are "fundamental and long prevalent" such as "the risk hedging
claims of Bilski and the intermediate settlement concept at issue in Alice," as
Appellants argue. App. Br. 13. Rather, as recognized by the Examiner, the
Federal Circuit has identified numerous examples of "business method"
concepts as "abstract ideas that are not fundamental, long prevalent, or
concepts that have been in use for an extensive period of time." Ans. 3
( citing PTO' s examples located at
httns://www.uspto.gove/sites/ default/files/documents/ieg-duly-2015-
grs.pdf).
Appellants' Specification is directed to "identifying and measuring
and/or scoring risks associated with an entity, e.g., a publicly traded
company, based at least in part on content obtained from news and other
7
Appeal2017-004382
Application 13/785,597
reliable sources and generating an entity specific risk profile based on entity-
specific risks" and "predicting a movement in a security associated with an
entity." Spec. ,r 17; Abstract. Embodiments of Appellants' Specification,
such as depicted in Figure 17B, describe generating a current entity-specific
risk profile to predict stock movement. Thus, we agree with the Examiner
that the claims are directed to an abstract idea of "predicting movement of a
price of a security," which is "certain methods of organizing human
activity." Final Act. 4--5; Ans. 3--4. Such activities are squarely within the
realm of abstract ideas.
As also recognized by the Examiner (Ans. 3), predicting movement of
a price of a security can also be performed solely in the human mind, or by a
human using a pen and paper. See CyberSource, 654 F.3d at 1372-73 ("[A]
method that can be performed by human thought alone is merely an abstract
idea and is not patent-eligible under§ 101."); see also In re Comiskey, 554
F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes-or processes of human
thinking-standing alone are not patentable even if they have practical
application."); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("Phenomena
of nature ... , mental processes, and abstract intellectual concepts are not
patentable, as they are the basic tools of scientific and technological work"
( emphasis added)). Additionally, mental processes remain unpatentable
even when automated to reduce the burden on the user of what once could
have been done with pen and paper. CyberSource, 654 F.3d at 1375 ("That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson."). Contrary to Appellants' argument, all the steps/functions recited
in Appellants' claims 1 and 15, including: (1) "receiving and transforming a
8
Appeal2017-004382
Application 13/785,597
first set of textual content into a first set of risk scores"; (2) "generating ... a
current entity-specific risk profile"; (3) "determining . . . a risk difference
between a historical risk profile, the historical risk profile" (4) "based upon
the risk difference, determining ... a predicted movement of a price of a
security associated with an entity"; and (5) "electronically transmitting ...
the predicted movement" can be performed mentally, or by a human using a
pen and paper.
Moreover, contrary to Appellants' characterization of Enfzsh and
McRO, the steps/functions recited in Appellants' claims 1 and 15 are only
abstract processes of collecting, storing, and analyzing information of a
specific content, e.g., news/media content regarding an entity to assess
scoring risks and to predict movement in a security associated with that
entity. Information, as such, is intangible, and data analysis and algorithms
are also abstract ideas. See, e.g., Microsoft Corp. v. AT & T Corp., 550 U.S.
437, 451 n.12 (2007); Alice, 134 S. Ct. at 2355; Parker v. Flook, 437 U.S.
584, 589, 594--95 (1978) ("Reasoning that an algorithm, or mathematical
formula, is like a law of nature, Benson applied the established rule that a
law of nature cannot be the subject of a patent"); Gottschalk v. Benson, 409
U.S. 63, 71-72 (1972). "[C]ollecting information, including when limited to
particular content (which does not change its character as information)," and
"analyzing information by steps people go through in their minds, or by
mathematical algorithms, without more," are "within the realm of abstract
ideas." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54
(Fed. Cir. 2016); see also Internet Patents Corp. v. Active Network, Inc., 790
F.3d 1343, 1349 (Fed. Cir. 2015); Digitech Image Technologies, LLC v.
Electronics for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014);
9
Appeal2017-004382
Application 13/785,597
CyberSource, 654 F.3d at 1370. That is, "[ w ]ithout additional limitations, a
process that employs mathematical algorithms to manipulate existing
information to generate additional information is not patent eligible."
Digitech, 758 F.3d at 1349-50 ("Data in its ethereal, non-physical form is
simply information that does not fall under any of the categories of eligible
subject matter under section 101 ").
Appellants' claims 1 and 15 "do not improve the performance of a
computer" and, likewise, do not "solve a problem specific to computers or
computer networks," as correctly recognized by the Examiner. Ans. 3--4.
Appellants' Specification and arguments do not demonstrate the claims
"improve the way a computer stores and retrieves data in memory," as the
claims in Enfzsh did via a "self-referential table for a computer database."
See Enfzsh, 822 F.3d at 1336, 1339.
In fact, neither the steps recited in Appellants' claims 1 and 15 nor the
rest of Appellants' Specification supply any description or explanation as to
how these data manipulation steps are intended to provide: (1) a "solution
... necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks," as
explained by the Federal Circuit in DDR, 773 F.3d at 1257; (2) "a specific
improvement to the way computers operate," as explained in Enfzsh, 822
F.3d at 1336; or (3) an "unconventional technological solution ... to a
technological problem" that "improve[ s] the performance of the system
itself," as explained in Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288, 1302 (Fed. Cir. 2016).
Accordingly, we agree with the Examiner that claims 1-30 are
directed to an abstract idea of "predicting movement of a price of a
10
Appeal2017-004382
Application 13/785,597
security," which is considered "certain methods of organizing human
activity" as well as "mental steps" under Benson. As our reviewing court
has held, combining several abstract ideas does not render the combination
any less abstract. RecogniCorp, LLC v. Nintendo Co., Ltd., 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 Systems, Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) (Patent-
ineligible claims were directed to a combination of abstract ideas.).
Alice/Mayo-Step 2 (Inventive Concept)
In the second step of the Alice inquiry, Appellants argue the claims
amount to significantly more than an abstract idea because: (1) "subject
matter [that] provides something that cannot possibly be done on pen and
paper ... may be patentable subject matter," citing California Institute of
Technology v. Hughes Communications, Inc., 59 F. Supp. 3d 974 (C.D. Cal.
2014); (2) "[t]he entity-specific risk profile of the claimed invention is a
specific data structure, a tuple profile data structure, that comprises more
than one risk type" and, as such, "is significantly more than the alleged
abstract idea"; and (3) the "Examiner has not considered each and every
claim element of all the claims both independently and as an ordered
combination." App. Br. 16-19.
We disagree. At the outset, we note Appellants' reliance on
California Institute of Technology is misplaced because (1) district court
decisions are not binding legal authority on the Board, and (2) the district
court's holding in California Institute of Technology that claims directed to
"methods of error correction in data transmission" were not directed to an
11
Appeal2017-004382
Application 13/785,597
abstract idea is not analogous to Appellants' claims directed to "predicting
movement of a price of a security."
According to Alice, the second step is to "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 (quoting
Mayo, 566 U.S. at 72-73). The Federal Circuit cases on point include
(I) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir.
2014) and (2) Amdocs (Israel) Ltd. v. Openet Telecom, Inc. 841 F.3d 1288
(Fed. Cir. 2016), both of which involved business-centric inventions.
In DDR and Amdocs, the Federal Circuit opted to bypass Alice step 1
in favor of step 2. In particular, the Federal Circuit found DDR 's claims
contain an "inventive concept" under Alice step 2 because DDR 's claims
( 1) do not merely recite "the performance of some business practice known
from the pre-Internet world" previously disclosed in Bilski and Alice, but
instead (2) provide a technical solution to a technical problem unique to the
Internet, i.e., a "solution ... necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
networks." DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also
found Amdocs' claims contain a sufficient "inventive concept" because like
DDR, Amdocs' claims "entail[] an unconventional technological solution
( enhancing data in a distributed fashion) to a technological problem
(massive record flows which previously required massive databases)" and
"improve the performance of the system itself." Amdocs, 841 F.3d at 1300,
1302.
12
Appeal2017-004382
Application 13/785,597
Under current Federal Circuit precedent, an "inventive concept" under
Alice step 2 can be established by showing, for example, that the patent
claims:
(1) provide a technical solution to a technical problem
unique to the Internet, e.g., a "solution ... necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks" (see DDR, 773 F.3d
at 1257);
(2) transform the abstract idea into "a particular,
practical application of that abstract idea," e.g., "installation of a
filtering tool at a specific location, remote from the end-users,
with customizable filtering features specific to each end user"
(see BASCOM Global Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1352, 1350 (Fed. Cir. 2016)); or
(3) "entail[] an unconventional technological solution
([e.g.,] enhancing data in a distributed fashion) to a technological
problem ([e.g.,] massive record flows [that] previously required
massive databases)" and "improve the performance of the system
itself' (see Amdocs, 841 F.3d at 1300, 1302).
In this case, however, we find no element or combination of elements
recited in Appellants' claims 1 and 15 that contains any "inventive concept"
or adds anything "significantly more" to transform the abstract concept into
a patent-eligible application. Alice, 134 S. Ct. at 2357. As discussed supra,
we are not persuaded the added computer elements such as a processor and
memory can transform the abstract idea into a patent eligible invention. As
our reviewing court has observed, "after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR, 773 F.3d at 1256 ( citing Alice, 134
S. Ct. at 2358).
13
Appeal2017-004382
Application 13/785,597
Additional Argument
Appellants argue that the claims do not seek to tie up or preempt an
entire field, i.e., an abstract idea of "predicting movement of a price of a
security." App. Br. 15. However, this argument is not persuasive because,
although "preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015). "Where a patent's claims are deemed only to disclose patent
ineligible subject matter" under the Alice/Mayo framework, "preemption
concerns are fully addressed and made moot." Id.
Because Appellants' claims 1 and 15 are directed to a patent-ineligible
abstract concept and do not recite something "significantly more" under the
second prong of the Alice analysis, we sustain the Examiner's rejection of
claims 1-30 under 35 U.S.C. § 101.
35 US.C. § 103(a):
Claims 1-3, 7, 8, 11-13, 15-17, 21, 22, 25-27, 29, and 30
In support of the obviousness rejection of claim 1 and similarly, claim
15, the Examiner finds Madhavan teaches most aspects of Appellants'
claimed method of "predicting movement of a price of a security," including
"determining by a computer a risk difference between a historical risk
profile ... and the current entity-specific risk profile." Final Act. 6-9 ( citing
Madhavan ,r,r 19, 33).
The Examiner then relies on (1) Psota for teaching "the current entity-
specific risk profile is a tuple profile data structure comprising a
plurality of risk types derived in part from the first set of risk scores
14
Appeal2017-004382
Application 13/785,597
and further comprises the first set of risk scores derived from the first set of
textual content" (Final Act. 7-8 (citing Psota ,r,r 200,203, 213)); and
(2) Hoogs for teaching "the historical risk profile comprising a second set of
risk scores, the second set of risk scores having been previously generated
by transforming a second set of content using at least one computational
linguistic technique" (Final Act. 8-9 ( citing Hoo gs ,r,r 6, 7, 51) ).
Appellants dispute the Examiner's factual findings regarding
Madhavan and Psota. App. Br. 22-26. In particular, Appellants
acknowledge Madhavan teaches a method of "generating risk forecasts by
predicting future volatility of single stocks and portfolios of stocks" (App.
Br. 7 (quoting Madhavan ,r 9)) and such risk forecasts of a security (stock)
are based on "a set of 'risk factors' such as 'market, sector, industry, size,
and growth' depending on the security being analyzed."' App. Br. 22
( quoting Madhavan ,r 27). However, Appellants argue "[ n ]othing in
Madhavan, teaches, discloses, or suggests 'generating by a computer a
current entity-specific risk profile' or 'determining by a computer a risk
difference' as claimed." App. Br. 22. According to Appellants,
[a] risk difference as claimed is the difference between a
historical risk profile and a more temporally current entity-
specific risk profile. See Fig. 1 7B, Para. [0091]. This risk
difference may be used to predict the movement of the price of a
security. The key is that the determination is of a risk difference
between a historical risk profile and an entity specific risk
profile. The difference between the two profiles is in part what
enables the present invention to predict the movement of a price
of a security.
App. Br. 23.
Similarly, Appellants acknowledge Psota teaches a platform for users
to obtain information related to one another's transaction histories (i.e.,
15
Appeal2017-004382
Application 13/785,597
records of transactions among buyers and suppliers) and generate reports
regarding as to the quality of buyers and suppliers. App. Br. 7 (citing Psota
,r,r 7, 8); see also Psota Abstract. Appellants also acknowledge the cited
paragraphs 200-203 of Psota teach the use of "a tuple-based search" to
facilitate the capability of searching for entities related to a specific
parameter and the search results may be ranked on a number of factors,
including an "opportunity profile" and a "risk profile." App. Br. 25.
However, Appellants argue neither Psota's "opportunity profile" nor "risk
profile" corresponds to Appellants' claimed "entity-specific risk profile" that
"is a tuple profile data structure comprising a plurality of risk types derived
in part from the first set of risk scores" as recited in claims 1 and 15. App.
Br. 25-26. Because Madhavan and Psota fail to teach these features,
Appellants contend that there is no reason to incorporate Psota's "tuple-
based search" into Madhavan's system. App. Br. 26.
In response, the Examiner takes the position that:
(1) "Madhavan teaches a risk model equation that includes
variables that change over time. See Madhavan i-f[OO 19] and
[0033]. As time changes, risk changes. This risk change is a risk
difference used to explain stock price movements or volatility.
See Madhavan i-f[0036]. Therefore, Madhavan at least suggests
this risk difference";
(2) "[Madhavan's] risk profiles are nothing more than
quantitative risk scores. See claim 1, element b ), 'the current
entity-specific risk profile . . . comprises the first set of risk
scores derived from the first set of textual content.' These
'profiles' or 'scores' are historical and current ('temporally more
recent,' as described in the current application), meaning they
change over time. Risk scores based on risk factors that change
over time are taught by Madhavan, which meets this element of
the claims"; and
16
Appeal2017-004382
Application 13/785,597
(3) "[Psota's] data may be represented in tuples (see i"f[0213],
which is merely an ordered list of elements."
Ans. 7-9 ( emphasis added).
We do not agree with the Examiner. At the outset, we note
Appellants' claim 1 recites, inter alia: "generating by a computer a current
entity-specific risk profile, wherein the current entity-specific risk profile is
a tuple profile data structure comprising a plurality of risk types derived in
part from the first set of risk scores and further comprises the first set of risk
scores derived from the first set of textual content;" and "determining by a
computer a risk difference between a historical risk profile ... and the
current entity-specific risk profile" (see also claim 15).
As correctly recognized by Appellants, the claimed "entity-specific
risk profile" is specifically defined as "a tuple profile data structure
comprising a plurality of risk types derived in part from the first set of risk
scores" (Ans. 7) and such a definition is consistent with how that term is
described in the Specification as:
"a data structure based upon linguistic analysis wherein the data
structure preferably comprises one or more or all of four parts.
The four component risk parts that make up the data structure
are: a set of general risks (a set of pairs for a set of risk types that are applicable to all
companies); a set of idiosyncratic risks ( a set of pairs for a set of risk types that characterize
particularly the company under consideration); self trends (a set
of historic signals and a forecasting trend that relates the
company under consideration to its past overall risk exposure);
and peer trends ( a set of historic signals and a forecasting trend
that relates the company under consideration to the past overall
risk exposure of its industry peers)" and
"Definition of Entity or Company Risk Profile (ERP). Formally,
an ERP is a tuple profile that may be represented as
17
Appeal2017-004382
Application 13/785,597
(GenericRisk; IdiosyncraticRisk; Selffrend; PeerTrend).
General Risk set or 'GenericRisk' is a set of (riskType;riskScore)
tuples where risk Type E LegalRisks; OperationalRisks;
FinancialRisks; and MarketRisks. Idiosyncratic risk set or
'IdiosyncraticRisks' is a set of (riskType; riskScore) tuples."
Spec. ,r,r 17, 96.
Because the "entity-specific risk profile is a tuple profile data
structure comprising a plurality of risk types derived in part from the first
set," we agree with Appellants that the Examiner cannot broadly interpret
this phrase to encompass any "risk scores" as disclosed by Madhavan.
Reply Br. 7. Similarly, we also agree with Appellants that Madhavan's
disclosure of a risk model equation that includes variables that change over
time is not the same as Appellants' claimed "risk difference between a
historical risk profile ... and the current entity-specific risk profile" as
recited in claims 1 and 15. Ans. 18. Likewise, we agree with Appellants
that Psota's disclosure of a "tuple-based search" (Psota ,r 200) and data
searched and represented in tuples (Psota ,r 213) in the context of searching
for entities is not the same as Appellants' claimed "entity-specific risk
profile [] [as] a tuple profile data structure comprising a plurality of risk
types derived in part from the first set," recited in claims 1 and 15.
Because the Examiner has not accounted for these features and has
not shown the combination of prior art references teaches or suggests all the
claim limitations, we do not sustain the Examiner's obviousness rejection of
independent claims 1 and 15, and their respective dependent claims 2, 3, 7,8,
11-13, 16, 17, 21, 22, 25-27, 29, and 30.
For the same reasons discussed, we also do not sustain the Examiner's
remaining obviousness rejections, which include: (1) claims 4, 5, 18, and 19
as being obvious over Madhavan, Hoogs, Psota, and Ricciardi; (2) claim 20
18
Appeal2017-004382
Application 13/785,597
as being obvious over Madhavan, Hoogs, Psota, and Ronk; (3) claim 6 as
being obvious over Madhavan, Hoogs, Psota, Ricciardi, and Ronk;
(4) claims 9 and 23 as being obvious over Madhavan, Hoogs, Psota, Bliznak,
and Gould; and ( 5) claims 10 and 24 as being obvious over Madhavan,
Hoogs, Psota, Bliznak, Gould, and Fickes.
CONCLUSION
On the record before us, we conclude Appellants have not
demonstrated the Examiner erred in rejecting claims 1-30 under 35 U.S.C.
§ 101. However, Appellants have demonstrated the Examiner erred in
rejecting claims 1-30 under 35 U.S.C. § 103(a).
DECISION
As such, we AFFIRM the Examiner's rejection of claims 1-30 under
35 U.S.C. § 101. However, we REVERSE the Examiner's rejection of
claims 1-30 under 35 U.S.C. § 103(a).
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner's decision rejecting
claims 1-30. See 37 C.F.R. § 4I.50(a)(l).
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
19