Pascal J. Gauthereon et al.

Patent Trials and Appeals Board

Jul 29, 2019

10562185 - (D) (P.T.A.B. Jul. 29, 2019)

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.
10/562,185 02/01/2007 Pascal J. Gauthereon 10022/802 3864
28164 7590 07/29/2019
BGL/Accenture - Chicago
BRINKS GILSON & LIONE
P O BOX 10395
CHICAGO, IL 60610
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
07/29/2019 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 PASCAL J. GAUTHEREON, ASHWIN FIELD,
MARK L. McDOUGALL, and BENNETT CHEN
____________

Appeal 2017-010075
Application 10/562,1851
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 15–18, 22–30, 32–43, and 66–68. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
Appellants’ “invention relates generally to a system and method of
investing funds.” (Spec. 1, l. 3.)

1 According to Appellants, the real party in interest is Accenture Global
Services Limited. (Appeal Br. 3.)
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Claims 15, 22, 26, 30, and 40 are the independent claims on appeal.
Claim 15 is illustrative. It recites:
15. A funds investment system for managing funds from a
plurality of different investors aggregated from individually
managed account (IMA) portfolios, where the aggregated funds
from the plurality of different investors are allocated to a
plurality of individual asset manager programs through a
plurality of intermediate allocations of the funds that form a
hierarchy of allocation categories, where an intermediate
allocation receives funds from a superior allocation category and
allocates funds to a subordinate allocation category according to
a predefined rule, and where the most subordinate allocations
represent the allocation of funds to an individual asset manager
program, with all superior intermediate allocations effected at a
hierarchy level above the plurality of individual asset manager
programs, the system comprising:
a reception interface configured to receive value data
relating to the value of the invested funds held by the plurality of
individual asset manager programs;
at least one processor coupled to the reception interface
and configured to:
determine the value of intermediate allocations that
represent the distribution of invested funds for each
investor to the plurality of individual asset manager
programs according to the value data received;
compare the determined value of intermediate
allocations with the predefined rules for same; and
determine a new allocation of funds to the plurality
of individual asset manager programs, in accordance with
the predefined rules for intermediate allocations, when a
variance between the determined intermediate allocations
and the predefined rules for the intermediate allocations is
greater than a predetermined amount, wherein the new
allocation of funds is achieved by buying and selling
investment instruments of one or more of the plurality of
individual asset manager programs.

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REJECTION
Claims 15–18, 22–30, 32–43, and 66–68 are rejected under 35 U.S.C.
§ 101 as directed to non-statutory subject matter.

ANALYSIS
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. Section 101, however,
“‘contains an important implicit exception: Laws of nature, natural
phenomena, and abstract ideas are not patentable.’” Alice Corp. Pty. Ltd. v.
CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Assoc. for Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
Alice applies a two-step framework, earlier set out in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(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, 573 U.S. at 217.
Under the two-step framework, it must first be determined if “the
claims at issue are directed to a patent-ineligible concept.” Id. at 218. If the
claims are determined to be directed to a patent-ineligible concept, e.g., an
abstract idea, then the second step of the framework is applied to determine
if “the elements of the claim . . . contain[] an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Id. at 221 (citing Mayo, 566 U.S. at 72–73, 79).
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With regard to step one of the Alice framework, we apply a “directed
to” two prong test to: 1) evaluate whether the claim recites a judicial
exception, and 2) if the claim recites a judicial exception, evaluate whether
the claim “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception.” See USPTO, 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50, 54 (Jan. 7, 2019) (hereinafter “2019 Guidance”).
Here, the Examiner determines that “claim 15 . . . is simply directed to
the abstract idea of managing funds from a plurality of different investors
aggregated from individually managed account (IMA) portfolios on generic
computer [sic] performing conventional activities.” (Answer 8.) The
Examiner further determines that “[m]anaging funds in an individually
managed account portfolio, according to the court, is a ‘method of
organizing human behavior.’” (Id. at 5; see also Final Action 5.) The
Examiner also determines that the claims are directed to “behaviors and
could be performed in the human mind, or by a human using a pen and
paper,” i.e., mental processes. (Final Action 5.)
Appellants do not directly dispute the Examiner’s determination that
the claims are directed to an abstract idea. Nonetheless, we review the
Examiner’s determination. (See generally 2019 Guidance.)
Under step one of the Alice framework, we “look at the ‘focus of the
claimed advance over the prior art’ to determine if the claim’s ‘character as a
whole’ is directed to excluded subject matter.” Affinity Labs of Texas, LLC
v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016)).
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The ‘directed to’ inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural phenomenon
. . . . Rather, the ‘directed to’ inquiry applies a stage-one filter to
claims, considered in light of the specification, based on whether
‘their character as a whole is directed to excluded subject
matter.’ Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015).

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In
other words, the first step of the Alice framework “asks whether the focus of
the claims is on the specific asserted improvement in [the relevant
technology] or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Id. at 1335–36; see also
2019 Guidance at 54–55.
The Specification provides evidence as to what the claimed invention
is directed. In this case, the Specification discloses that the “invention
relates generally to a system and method of investing funds.” (Spec. 1, l. 3.)
Claim 15 provides further evidence. Claim 15 recites “[a] funds investment
system for managing funds . . . comprising: a reception interface configured
to receive value data,” “at least one processor coupled to the reception
interface . . . to: determine the value of intermediate allocations,” “compare
the determined value . . . with the predefined rules,” “and determine a new
allocation.” In other words, claim 15 is directed to a fundamental economic
practice, i.e., managing funds. Thus, claim 15 is directed to the abstract idea
of certain methods of organizing human activity. See, e.g., SAP America,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (“The focus of
the claims . . . is on selecting certain information, analyzing it using
mathematical techniques, and reporting or displaying the results of the
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analysis. That is all abstract.”); see also 2019 Guidance at 52. Claim 15 is
also directed to the abstract idea of mental processes; in this case, evaluation
through steps that “could be performed in the human mind, or by a human
using a pen and paper.” (See Final Action 5; see also 2019 Guidance at 52.)
“[W]e have treated collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas.” Elec. Power Grp., 830 F.3d at 1353. “In
a similar vein, we have treated analyzing information by steps people go
through in their minds, or by mathematical algorithms, without more, as
essentially mental processes within the abstract-idea category.” Id. at 1354.
Additionally, the Federal Circuit has “recognized that merely presenting the
results of abstract processes of collecting and analyzing information, without
more (such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis.” Id.
Although we and the Examiner describe, at different levels of
abstraction, to what the claims are directed, it is recognized that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That
need not and, in this case does not, “impact the patentability analysis.” See
id. at 1241.
Claim 15 achieves the claimed system by an interface to receive data
coupled to a processor configured to determine a value, compare a value
with a rule, and determine an additional value. However, we note that “with
respect to the use of a [processor] to obtain [or determine values for] data,
adjust account balances, and issue automated instructions; all of these
computer functions are ‘well-understood, routine, conventional activit[ies]’
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previously known in the industry.” Alice, 573 U.S. at 225 (quoting Mayo,
566 U.S. at 73). We do not see how the recitation of a “reception interface”
coupled to a processor, even in conjunction with the recited functions,
“ensure[s] ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].” Id. at 221 (brackets in original) (quoting
Mayo, 566 U.S. at 77.) In short, claim 15 merely uses a generic interface
and processor as tools to perform the abstract idea. (See Spec. 6, l. 28 – 7,
l. 3 (“In any embodiment, the data input, output and calculating means could
include any one or more of the following: a laptop personal computer; a
notebook personal computer; . . . or a cell phone having connection facilities
to the data communications network.”).)
Appellants argue that the claimed invention “use[s] unconventional
rules implemented on a computer to manage data aggregation and allocation
in this distributed network of allocations. This technical solution is far from
an abstract idea as it relates to database enhancements.” (Reply Br. 6.) We
do not find this argument persuasive.
The limitations of claim 15 do not recite implementation details.
Instead, they recite functional results to be achieved. In other words, the
claims do not recite “a particular way of programming or designing the
software . . . , but instead merely claim the resulting systems.” Apple, Inc.,
842 F.3d at 1241. And “the recited physical components merely provide a
generic environment in which to carry out the abstract idea.” In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016).
Additionally, we note that “an improvement to the information stored by a
database is not equivalent to an improvement in the database’s
functionality.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288
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(Fed. Cir. 2018). Here, Appellants do not persuasively argue how the
claimed system provides an improvement in database functionality.
In view of the above, we agree with the Examiner that claim 15 is
directed to an abstract idea.
Step two of the Alice framework has been described “as a 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, 573 U.S.
at 217–18 (citing Mayo, 566 U.S. at 72–73).
Appellants argue that “[u]nder [BASCOM Global Internet Services.,
Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)], a claimed
combination, that does not preempt the generic concept or abstract idea to
which the invention is directed, is patent eligible subject matter.” (Reply
Br. 3; see also id. at 5.) We disagree.
In BASCOM, the court determined that “an inventive concept can be
found in the non-conventional and non-generic arrangement of known,
conventional pieces.” BASCOM, 827 F.3d at 1350. Specifically, “[t]he
inventive concept described and claimed in the ’606 patent is the installation
of a filtering tool at a specific location, remote from the end-users, with
customizable filtering features specific to each end user.” Id. at 1350. The
Federal Circuit determined that “its particular arrangement of elements is a
technical improvement over prior art ways of filtering.” Id.
Here, Appellants do not persuasively argue a particular arrangement
of elements resulting in a technical improvement. Moreover, “[w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
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fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). In other words, “preemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id.
Appellants also seek to analogize claim 15 to the claims in Amdocs
(Israel) Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016).
(Reply Br. 6–7.) Specifically, Appellants argue that
the present claim 15 in the words of the Amdocs claims, can be
compared to requiring first accounting records from a first
hierarchical category to be compared with predefined rules, and
variances from the rule then require “correlating” second
accounting records from a second hierarchical category at a
different level from the first hierarchical category to be adjusted
to “enhance” the first accounting records.

(Id. at 7.)
In relevant part, claim 1 of Amdocs recites “computer code for using
the accounting information with which the first network accounting record is
correlated to enhance the first network accounting record.” Amdocs, 841
F.3d at 1299 (emphasis added). In an earlier opinion, Amdocs (Israel)
Limited v. Openet Telecom, Inc., 761 F.3d 1329 (Fed. Cir. 2014) (Amdocs I),
the court had “construed ‘enhance’ as meaning ‘to apply a number of field
enhancements in a distributed fashion.’ [Amdocs I] at 1340. We took care
to note how the district court explained that ‘[i]n this context, “distributed”
means that the network usage records are processed close to their sources
before being transmitted to a centralized manager.’ [Amdocs I] at 1338.”
Amdocs, 841 F.3d at 1300.
In view of the above claim interpretation of the term “enhance,” we
do not find Appellants’ argument persuasive. Specifically, Appellants do
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not explain what limitations in claim 15 correspond to the claim element “to
enhance the first network accounting record,” when the term “enhance” is
properly construed.
Nor do we find persuasive Appellants’ argument that claim 15 recites
patent eligible subject matter because it recites unconventional “features
relating to determining variances in allocations and reallocating the funds in
response to the determined variances.” (Appeal Br. 11–12.) Appellants’
argument relies on the ineligible concept itself to establish that the claims
recite an inventive concept. But “[i]t 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
more’ than that ineligible concept.” BSG Tech LLC, 899 F.3d at 1290.
Moreover, “[n]o matter how much of an advance in the finance field the
claims recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.” SAP
America, Inc., 898 F.3d at 1163; see also id. at 1168.
Appellants also argue that “the claimed invention is a narrowly
tailored combination of steps that are not well-understood, not routine and
not conventional, as admitted by the lack of a prior art rejection.” (Reply
Br. 3.) We do not find this argument persuasive. “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).
Taking the claim elements separately, the functions performed by the
generic “reception interface” and processor are purely conventional.
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Determining a value, comparing a value with a rule, and determining an
additional value are basic computer functions, i.e., they are well-understood,
routine, and conventional functions previously known to the industry. See
Elec. Power Grp., 830 F.3d at 1356 (The claims “do not include any
requirement for performing the claimed functions of gathering, analyzing,
and displaying in real time by use of anything but entirely conventional,
generic technology. The claims therefore do not state an arguably inventive
concept . . . .”); see also In re Katz Interactive Call Processing Patent Litig.,
639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming.”).
Considered as an ordered combination, the generic components of
Appellants’ system add nothing that is not already present when the
limitations are considered separately. For example, claim 15 does not, as
discussed above, purport to improve the functioning of the reception
interface or processor. Nor does it effect an improvement in any other
technology or technical field. Instead, claim 15 amounts to nothing
significantly more than an instruction to apply the abstract idea using generic
computer components performing routine computer functions. That is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
In view of the above, we are not persuaded that the Examiner erred in
rejecting claim 15. Claims 16–18, 22–25, 36–43 and 66–68 are argued with
claim 15, and thus fall with claim 15. See 37 C.F.R. § 41.37(c)(1)(iv).
Claims 26–30 and 32–35 are argued under a separate topic heading (see
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Appeal Br. 14–15), but rely on the arguments made with regard to claim 15.
For the reasons discussed, we are also not persuaded of error in the rejection
of claims 26–30 and 32–35.

DECISION
The Examiner’s rejection of claims 15–18, 22–30, 32–43, and 66–68
under 35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED