Jonathan Axelrad et al.

Patent Trials and Appeals Board

Aug 25, 2020

2020000092 (P.T.A.B. Aug. 25, 2020)

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.
12/905,040 10/14/2010 Jonathan Axelrad PA5414US 7125
22830 7590 08/25/2020
CARR & FERRELL LLP
120 CONSTITUTION DRIVE
MENLO PARK, CA 94025
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
08/25/2020 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):
jsamson@carrferrell.com
patdocket@carrferrell.com
smather@carrferrell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN AXELRAD,
PING GE, PHILLIP HOARE, YUNUS MOHAMMAD,
AJAY B. MUMMANENI, and LINDA WAISSAR
Appeal 2020-000092
Application 12/905,040
Technology Center 3600
Before CAROLYN D. THOMAS, IRVIN E. BRANCH, and
MICHAEL J. ENGLE, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–21, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Wilson Sonsini Goodrich & Rosati as
the real party in interest. Appeal Br. 3.
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Application 12/905,040

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TECHNOLOGY
The application relates to “private equity fund formation.” Spec. ¶ 2.
Claim 10 is illustrative and reproduced below:
10. A method for private equity fund formation, comprising a
processor performing steps of:
accessing a website;
registering as a user of the website by selecting a user
name and password; and
interacting with the website to automatically generate a
subscription agreement for a private equity fund, the subscription
agreement incorporating information received in response to at
least one questionnaire, the investor information based at least in
part on an answer to a question, the question automatically
generated in response to an answer to a previous question and the
question only relevant to a selected subscriber type.
REJECTION
Claims 1–21 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter without significantly more. Final Act. 9–11.
ANALYSIS
Legal Background
“Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018). The Supreme Court has set forth a two-part test for § 101
to determine whether the subject matter of a claim is patentable:
(1) “whether the claims at issue are directed to” “laws of nature, natural
phenomena, and abstract ideas” and (2) “whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
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In 2019, the U.S. Patent & Trademark Office (“USPTO”) expanded
on the Supreme Court’s test with revised guidance. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”). Under that Guidance, we use the following steps to determine
whether a claim recites the following items:
USPTO
Step Does the claim recite ___? MPEP §
1 A process, machine, manufacture, or composition of matter 2106.03
2A,
Prong 1
A judicial exception, such as a law of nature or any
of the following groupings of abstract ideas:
1) Mathematical concepts, such as
mathematical formulas;
2) Certain methods of organizing human
activity, such as a fundamental economic
practice; or
3) Mental processes, such as an observation or
evaluation performed in the human mind.
2106.04
2A,
Prong 2
Any additional limitations that integrate the judicial
exception into a practical application
2106.05(a)–
(c), (e)–(h)
2B
Any additional limitations beyond the judicial
exception that, alone or in combination, were not
“well-understood, routine, conventional”
2106.05(d)
See Guidance, 84 Fed. Reg. at 52, 55, 56; see also USPTO, October 2019
Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/
default/files/documents/peg_oct_2019_update.pdf. Here, Appellant’s
dispute begins with USPTO Step 2A, Prong 1.
Representative Claim
According to the Federal Circuit, “[c]ourts may treat a claim as
representative in certain situations, such as if the patentee does not present
any meaningful argument for the distinctive significance of any claim
limitations not found in the representative claim.” Berkheimer v. HP Inc.,
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881 F.3d 1360, 1365 (Fed. Cir. 2018). We agree with the Examiner that in
the Appeal Brief, “Appellant argues claims 1–21 as a group.” Ans. 3. The
Examiner therefore determines that “[c]laim 10 is representative of the
subject matter on appeal.” Id. In the Reply Brief, Appellant argues “each of
the claims at issue warrant a discussion on the merits” and recites claim 21
in entirety, yet Appellant fails to identify any specific limitation or
distinctive significance of any claim. Reply Br. 6–8. We therefore adopt the
Examiner’s treatment of claim 10 as representative.
USPTO Step 2A, Prong 1
Independent claim 10 recites to generate a private equity fund
subscription agreement that incorporates information received in response to
a questionnaire in which a question “only relevant to a selected subscriber
type” is generated in response to an answer to a previous question.
The Examiner characterizes this as “simply a way of gathering data to
generate a subscription agreement for a private equity fund.” Ans. 4. The
Examiner further determines that the claimed steps “recite the abstract idea
of a private equity fund formation which falls under the abstract idea
grouping of certain methods of organizing human activity, fundamental
economic practice.” Id.
Appellant also argues that “only claims that are mathematical
concepts, certain methods of organizing human activity, and mental
processes can be rejected under 35 USC 101.” Appeal Br. 11 (emphasis
added). This is an incorrect characterization of the test under the Guidance
and precedent from both the Supreme Court and Federal Circuit, none of
which require that the entirety of the claims “are” an abstract idea. Instead,
“[t]o determine whether a claim recites an abstract idea in Prong One,
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examiners are now to: (a) Identify the specific limitation(s) in the claim
under examination (individually or in combination) that the examiner
believes recites an abstract idea; and (b) determine whether the identified
limitation(s) falls within the subject matter groupings of abstract ideas
enumerated . . . .” Guidance, 84 Fed. Reg. at 54 (emphases added); see also
Alice, 573 U.S. at 217 (asking whether the claims at issue are “directed to”
an abstract ideas, then addressing any “additional elements” under step 2).
Stated differently, the identified abstract idea need not encompass every
claim limitation. Otherwise, there would be no need for step two of the
Alice inquiry. Alice, 573 U.S. at 216.
Appellant further argues that “claims 1, 10, 19 and 21 do not recite a
judicial exception,” but Appellant fails to provide sufficient analysis to
support this assertion, including failing to address any specific claim
limitations. Appeal Br. 10–11.
Here, we agree with the Examiner that claim 10 recites gathering data
to generate a subscription agreement for a private equity fund, which is a
commercial or legal interaction and a fundamental economic practice falling
within certain methods of organizing human activity, and hence an abstract
idea. See, e.g., Guidance, 84 Fed. Reg. at 52 & n.13; buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (holding the concept of
“creating a contractual relationship—a ‘transaction performance guaranty’”
is an abstract idea); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1054 (Fed. Cir. 2017) (“the claims are directed to the abstract idea of
‘processing an application for financing a purchase’”).
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USPTO Step 2A, Prong 2
Beyond the abstract idea, the preamble of claim 10 recites that the
claimed steps are performed by “a processor.” Claim 10 further recites
“accessing a website”; “registering as a user of the website by selecting a
user name and password”; and that “interacting with the website” will
“automatically” generate the agreement and the question.
Such recitations are insufficient to integrate the abstract idea into a
practical application. “We have repeatedly held that such invocations of
computers and networks that are not even arguably inventive are insufficient
to pass the test of an inventive concept in the application of an abstract
idea.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed.
Cir. 2016) (quotation omitted); see also buySAFE, 765 F.3d at 1355 (“That a
computer receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
Appellant argues in conclusory fashion that “[t]he pending claims
allow for interaction with a computer system in ways that cannot be done
without it” and “are ‘directed to’ technology which is an improvement to the
speed of processing messages in a distributed computer system.” Appeal Br.
12. However, we agree with the Examiner that these arguments are not
persuasive because “Appellant has not identified . . . any features and/or
functions found in the claims or the specification that support this view” and
“has not identified any portions of the specification or claims that support
Appellant’s argument that the claims are directed to technology.” Ans. 5.
The Examiner correctly notes that the high-level components above
merely automate an otherwise manual process. Ans. 4–5 (e.g., “A person
can access information relating to the formation of a private equity fund,
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gather responses received from a questionnaire, and have a series of follow-
up questions, that will depend upon the answer to the previous question.”).
Thus, any “speed increase comes from the capabilities of a general-purpose
computer, rather than the patented method itself.” FairWarning IP, LLC v.
Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016). The Federal Circuit
has explained that “relying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015);
see also Univ. of Fla. Research Found., Inc. v. Gen. Elec. Co., 916 F.3d
1363, 1367 (Fed. Cir. 2019) (“This is a quintessential ‘do it on a computer’
patent: it acknowledges that [such] data . . . was previously collected,
analyzed, manipulated, and displayed manually, and it simply proposes
doing so with a computer. We have held such claims are directed to abstract
ideas.”). “Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process.” Credit
Acceptance, 859 F.3d at 1057.
The claimed “network”; “application server”; “memory”;
“application”; “engine”; “electronic” questionnaire; and “home page” in
independent claims 1, 19, and 21 fail to render the claims eligible for the
same reasons.
Therefore, the additional elements fail to integrate the abstract idea
into a practical application.
USPTO Step 2B
We agree with the Examiner that the additional limitations identified
above were well-understood, routine, and conventional. “[T]he mere
recitation of a generic computer cannot transform a patent-ineligible abstract
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idea into a patent-eligible invention.” Alice, 573 U.S. at 222–23. Here,
“receiving transmitted data over a network and displaying it to a user merely
implicates purely conventional activities that are the ‘most basic functions of
a computer.’” Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d
1315, 1331 (Fed. Cir. 2017) (quoting Alice, 573 U.S. at 225); see also Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir. 2016) (“the
claims do not go beyond requiring the collection, analysis, and display of
available information in a particular field, stating those functions in general
terms, without limiting them to technical means for performing the functions
that are arguably an advance over conventional computer and network
technology”). The Examiner correctly notes that the Specification similarly
treats such components as generic. E.g., Spec. ¶ 10 (“Network 116 may be
any type of electronic communication network, including but not limited to,
a Local Area Network (LAN), a Wide Area Network (WAN), an intranet, an
internet, and a wireless network.”).
Appellant also argues that the claims are patentable under § 101
because “no substantive art-based rejections of the claims under 35 U.S.C.
§ 102 or 35 U.S.C. § 103 remain.” Appeal Br. 8–9; Reply Br. 8–9.
However, the Supreme Court and Federal Circuit have both rejected this
argument: “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.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981). “[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.” Genetic
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Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); see also
SAP Am., 898 F.3d at 1163 (“Nor is it enough for subject-matter eligibility
that claimed techniques be novel and nonobvious in light of prior art,
passing muster under 35 U.S.C. §§ 102 and 103.”).
Conclusion
Appellant therefore fails to persuade us of Examiner error in the
Examiner’s determination that the claims are directed to patent-ineligible
subject matter without significantly more.
Accordingly, we sustain the Examiner’s rejection of claims 1–21.
OUTCOME
The following table summarizes the outcome of each rejection:
Claims Rejected 35 U.S.C. § Basis Affirmed Reversed
1–21 101 Eligibility 1–21
TIME TO RESPOND
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.36(a)(1)(iv).
AFFIRMED