Ex Parte Greenstein

Patent Trial and Appeal Board

Aug 28, 2018

14203768 (P.T.A.B. Aug. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/203,768 03/11/2014 Mark Greenstein
23364 7590 08/30/2018
BACON & THOMAS, PLLC
625 SLATERS LANE
FOURTH FLOOR
ALEXANDRIA, VA 22314-1176
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.
GREE3014/FJD 9931
EXAMINER
GREGG, MARY M
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
08/30/2018 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):
MAIL@BACONTHOMAS.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MARK GREENSTEIN
Appeal2017-004087
Application 14/203,768
Technology Center 3600
Before JEREMY J. CURCURI, BARBARA A. BENOIT, and
DAVID J. CUTITTA, II, Administrative Patent Judges.
CURCURI, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
rejection of claims 1-12. Final Act. 1. We have jurisdiction under 35 U.S.C.
§ 6(b ).
Claims 1-12 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more. Final Act. 5-6.
Claims 1, 2, 4, 7, 9, and 10 are rejected under pre-AIA 35 U.S.C.
§ 102(b) as anticipated by Tarbox (US 2002/0169701 Al; Nov. 14, 2002).
Final Act. 6-9.
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Application 14/203,768
Claims 3 and 5 are rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Tarbox and Abrahamson (US 8,060,428 Bl; Nov. 15, 2011).
Final Act. 10-14.
Claim 6 are rejected under pre-AIA 35 U.S.C. § I03(a) as obvious
over Tarbox and Shah (US 2006/0031247 Al; Feb. 9, 2006). Final Act. 14--
15.
Claim 8 are rejected under pre-AIA 35 U.S.C. § I03(a) as obvious
over Tarbox and Barton (AU 2009251072 Al). Final Act. 15.
Claims 11 and 12 are rejected under pre-AIA 35 U.S.C. § I03(a) as
obvious over Tarbox, Abrahamson, and Barton. Final Act. 16-17.
We affirm.
STATEMENT OF THE CASE
Appellant's invention relates to "a computer-aided method for
assist[ing a] person to save sufficient amounts to fund an adequate
retirement income[;] the method including the automatic adjustment of
amounts saved to increase the probability of achieving a projected income in
retirement." Abstract. Claim 1 is illustrative and reproduced below:
1. One or more computers with associated software programmed
to:
receive, at a processor and store using one or more storage devices
employing memory, data corresponding to invested amounts and using one
or more computers with associated software including algorithms and
employing such software and algorithms to:
utilize a projected amount of income at a future date for at least one
person;
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automatically adjust the amount such person saves incorporating the
projected income amount so that achieving such projected income amount is
more likely; and
invest the saved amounts saved in one or more investment vehicles.
PRINCIPLES OF LAW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 107 5 (BP AI 2010) (precedential).
ANALYSIS
THE 35 U.S.C. § 101 REJECTION OF CLAIMS 1-12
Contentions
The Examiner concludes claims 1-12 are directed to a judicial
exception without significantly more. See Final Act. 5---6; see also Ans. 1-7.
In particular, the Examiner concludes
Computer software instructed Claim 1 is directed to
receiving data (mere data gathering an insignificant activity);
using algorithms in order to calculate a projected amount of
future income ( using mathematical relationships and formulas to
identify options), adjust principle amount saved in order to meet
projected income (mitigate risk of meeting goals) and invest
principle amount saved in investment vehicles ( create a
contractual relationship).
The claim(s) does/do not include additional elements that
are sufficient to amount to significantly more than the judicial
exception because the claims as a whole, do not amount to
significantly more than the abstract idea itself. This is because
the claims do not affect an improvement to another technology
or technical field; the claims do not amount to an improvement
to the functioning of a computer itself; and the claims do not
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move beyond a general link of the use of an abstract idea to a
particular technological environment. The claims merely amount
to the application or instructions to apply the abstract idea using
a computers, processor and storage devices, and is considered to
amount to nothing more than requiring a generic processors,
storage devices and a generic computers to merely carry out the
abstract idea itself. As such, the claims, when considered as a
whole, are nothing more than the instruction to implement the
abstract idea in a particular, albeit well-understood, routine and
conventional technological environment.
Final Act. 5-6; see also Ans. 2 ("claims that are solely directed toward
economic practices without significantly more have been held by the courts
as non-statutory (see Alice, Bilski)") and Ans. 7 (appellant's argument is
directed toward finding a solution for human behavior, using technology to
implement the idea").
Appellant presents the following principal arguments:
1. The claims are not directed to an abstract idea because "the
claims are a novel approach to the problems of individuals not saving
sufficient funds for their retirements." App. Br. 6; see also Reply Br. 2---6,
14--16.
11. The claims amount to significantly more than any abstract idea
because "[t ]he claims here are a material improvement over simply
increasing amounts saved without regard to whether or how the amount of
the increase is relates to the goal of achieving a certain level of income."
App. Br. 8; see also Reply Br. 6-8.
Our Review
A patent may be obtained for "any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
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thereof." 35 U.S.C. § 101. The Supreme Court has held that this provision
contains an important implicit exception: laws of nature, natural phenomena,
and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S.Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67 (1972)
("Phenomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work."). Notwithstanding that a law of nature or
an abstract idea, by itself, is not patentable, the application of these concepts
may be deserving of patent protection. Mayo Collaborative Services v.
Prometheus Labs., Inc., 566 U.S. 66, 71-72 (2012). In Mayo, the Court
stated that "to transform an unpatentable law of nature into a patent-eligible
application of such a law, one must do more than simply state the law of
nature while adding the words 'apply it."' Mayo, 566 U.S. at 72 ( citation
omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of these 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." Id. If the claims are directed to a patent-
ineligible concept, then the second step in the analysis is to consider the
elements of the claims "individually and 'as an ordered combination"' to
determine whether there are additional elements that "'transform the nature
of the claim' into a patent-eligible application." Id. (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
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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).
"A claim that recites an abstract idea must include 'additional features' to
ensure 'that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea]."' Id. at 2357 (quoting Mayo, 566 U.S. at 77-
78). The prohibition against patenting an abstract idea "cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment or adding 'insignificant post[-]solution activity."'
Bilski v. Kappas, 561 U.S. 593, 610-11 (2010) (citation omitted). The Court
in Alice noted that "' [ s ]imply appending conventional steps, specified at a
high level of generality,' [was] not 'enough' [in Mayo] to supply the
'inventive concept."' Alice, 134 S.Ct. at 2357 (quoting Mayo, 566 U.S. at
82-83, 77-78, and 72-73).
Step one: Are the claims at issue directed to a patent-ineligible concept?
Appellant's Specification describes the invention as follows:
FIG 4 illustrates how to implement a new automatic
mechanism which can operate in concert with the new taxation
system described in this Disclosure. A goal 92 is established for
an Investor 90 has a goal 92 such as saving for retirement. A
Computer 4 attached to a Storage Device 2 using Software 6
automatically adjusts different elements such as the Amount
Saved 96 which can be accomplished for example by adjusting
amounts deducted from the Investor's 90 wages and
automatically investing such amounts and coordinating such
adjustments with adjustments to Investments 50 in order to
increase the chances of obtaining the goal. Ideally, one or more
of the elements used to make such automatic adjustments will be
based on criteria and or algorithms supplied or approved by an
independent third party. For example, the third party could
supply the basis for converting the amount saved to an income
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stream, which would in tum affect the adjustments to the Amount
Saved 96 and Investments 50.
Spec. 13-14. In particular, Claim 1 recites "automatically adjust the amount
such person saves incorporating the projected income amount so that
achieving such projected income amount is more likely; and invest the saved
amounts saved in one or more investment vehicles."
Adjusting the amount a person saves and choosing investments for the
saved amounts, with the goal of saving enough for retirement, is a
fundamental economic practice, long prevalent in our system of commerce,
like the risk hedging in Bilski (see Bilski v. Kappas, 561 U.S. 593 (2010)),
the intermediated settlement in Alice (see Alice, 134 S.Ct. at 2356-57),
verifying credit card transactions in CyberSource (see CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)), collecting and
analyzing information to detect and notify of misuses in FairWarning (see
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir.
2016)), and guaranteeing transactions in buySAFE (see buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014)).
In short, claim 1 recites saving and investing for retirement, a
fundamental economic practice. Automatic adjustment of the amount saved
is part of the abstract idea. Thus, adjusting the amount a person saves and
choosing investments for the saved amounts, with the goal of saving enough
for retirement, like the fundamental economic practices above, is an
"abstract idea" beyond the scope of§ 101. See Alice 134 S.Ct. at 2356.
Accordingly, we do not see error in the Examiner's determination that the
claims are directed to a fundamental economic practice (see Ans. 2).
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Step two: Is there something else in the claims that ensures they are directed
to significantly more than a patent-ineligible concept?
Because claim 1 is directed to an abstract idea, the question to be
settled next, according to Alice, is whether claim 1 recites an element, or
combination of elements, that is enough to ensure that the claim is directed
to significantly more than the abstract idea.
Claim 1 recites "One or more computers with associated software
programmed to ... " and "using one or more computers with associated
software including algorithms and employing such software and algorithms
to .... " These claimed computers are generic, purely conventional elements.
Appellant's Specification confirms that the recited "one or more computers"
are generic, conventional elements. See Spec. 9-11 ("Computers can be
implemented as general-purpose computers ... "). Thus, the claims do no
more than require generic computer elements to perform generic computer
functions, rather than improve computer capabilities. Put another way,
looking beyond the abstract idea of adjusting the amount a person saves and
choosing investments for the saved amounts, with the goal of saving enough
for retirement, we do not see any inventive concept in the remaining claim
limitations individually or in combination. Claiming various combinations
of conventional computers is not enough to transform the idea into a patent-
eligible invention. See Alice, 134 S.Ct. at 2358 ("[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.").
Appellant's arguments
Regarding Appellant's arguments (i) and (ii), these arguments do not
show any error in the Examiner's conclusions because, for reasons discussed
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above, we conclude adjusting the amount a person saves and choosing
investments for the saved amounts, with the goal of saving enough for
retirement, like the fundamental economic practices discussed above, is an
"abstract idea" beyond the scope of§ 101. See Alice 134 S.Ct. at 2356.
Regarding any novelty of the claimed approach to saving for
retirement, these arguments do not show error in the Examiner's conclusions
because automatic adjustment of the amount saved is part of the abstract
idea. The claims do no more than require generic computer elements to
perform generic computer functions, rather than improve computer
capabilities. Put another way, "[t]he '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 [section] 101
categories of possibly patentable subject matter." Intellectual Ventures I
LLCv. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (quoting
Diamond v. Diehr, 450 U.S. 175, 188-89 (1981)).
Conclusion
We sustain the Examiner's rejection under 35 U.S.C. § 101 of claim 1.
We also sustain the Examiner's rejection under 35 U.S.C. § 101 of claims 2-
12, which are not separately argued with particularity. See Appeal Br. 5-9,
see also Reply Br. 2-8, 14--16.
THE ANTICIPATION REJECTION OF CLAIMS 1, 2, 4, 7, 9, AND 10 BY TARBOX
Contentions
The Examiner finds Tarbox describes all limitations of claim 1. Final
Act. 6-7. In particular, the Examiner finds Tarbox describes "utilize a
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projected amount of income at a future date for at least one person." Final
Act. 7 (citing Tarbox ,r,r 63---65, 110-112); see also Ans. 8-9.
Appellant presents the following principal argument:
The cited portions of Tarbox do not describe "utilize a projected
amount of income at a future date for at least one person" because "[there] is
not any mention nor any discussion ... of a projected amount of income."
App. Br. 9; see App. Br. 10-11; see also Reply Br. 9 ("Examiner's response
is premised on a false analogy by stating that assisting in withdrawal
strategies is identical (i.e.) to utilizing a projected amount of income") and
Reply Br. 11-12 (discussing net present value).
Our Review
Tarbox discloses "Savings plan services 12 are those services that
assist investors during the accumulation mode such as helping to determine
or simply implementing the timing and amount of amounts deducted from a
paycheck for contribution to a savings arrangement or vehicle such as a
Benefit Plan." Tarbox ,r 92. Thus, Tarbox describes automatic saving and
investing. Accordingly, this appeal hinges on whether or not Tarbox, as part
of those services, describes "utilize a projected amount of income at a future
date for at least one person" as recited in claim 1.
Tarbox further discloses the following:
The program services 12, 14, 16 are coordinated on a
continuing basis and are specifically tailored to each individual
plan participant's 18 individual circumstances and short-term,
intermediate-term and long-term funding needs, including
retirement finding needs. The systems and methods utilized in
the present investment program 10 are particularly valuable
because they provide individual plan participants 18 with much
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needed asset allocation services 14, 16 and while possibly
formulating, and in all cases taking into account the individual
plan participant's savings 12, including the present value of all
current and future savings (including social security benefits and
benefits under other pension plans) so that each individual plan
participant 18 will, once the investment program 10 is
implemented, maintain a disciplined investment policy while
being responsive to the best interests of each individual plan
participant 18. Moreover, the investments will generally be
professionally allocated at 50, rebalanced at 92, reallocated at 94,
and disbursed at 94 pursuant to criteria established or approved
by Independent Experts 38, generally with the on-going
assistance of facilitators 80 to exploit opportunities in all types
of market conditions in a manner that most individual plan
participants 18, would not or could not exploit on their own
without competent, conflict free assistance.
Tarbox ,r 112 ( emphasis added).
We find Tarbox discloses "utilize a projected amount of income at a
future date for at least one person," as recited in claim 1, because Tarbox's
services are tailored to an individual's retirement funding needs (projected
amount of income at a future date). Further, Tarbox specifically takes into
account social security benefits and other pension benefits, which are also
projected amounts of income at a future date. Further customization of the
way the projected income amounts are utilized is not required by the claim
language.
We, therefore, sustain the Examiner's rejection based on Tarbox of
claim 1. 1 We also sustain the Examiners rejection based on Tarbox of claims
2, 4, 7, 9, and 10, which are not separately argued with particularity.
1 If prosecution continues, we note that the claim language "automatically
adjust the amount such person saves incorporating the projected income
amount so that achieving such projected income amount is more likely" is
not entirely clear. For example, if the person does not have enough money
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THE OBVIOUSNESS REJECTIONS
Appellant further argues that the cited portions of Tarbox do not
describe "utilize a projected amount of income at a future date for at least
one person." See App. Br. 12-13; see also Reply Br. 12-14, 16-17.
We find these arguments unpersuasive of any error in the Examiner's
findings for reasons discussed above when addressing claim 1.
We, therefore, sustain:
the Examiner's rejection of claims 3 and 5 as obvious over Tarbox
and Abrahamson;
the Examiner's rejection of claim 6 as obvious over Tarbox and Shah;
the Examiner's rejection of claim 8 as obvious over Tarbox and
Barton; and
the Examiner's rejection of claims 11 and 12 as obvious over Tarbox,
Abrahamson, and Barton.
ORDER
The Examiner's decision rejecting claims 1-12 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)(l).
AFFIRMED
saved, then saving a greater amount of money will always make the person
more likely to reach the saving goal.
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