Ex parte Axelrad

• Decision Date: 25 August 2020
• Docket Number: Application 12/905,Appeal 2020-000092,040
• Parties: Ex parte JONATHAN AXELRAD, PING GE, PHILLIP HOARE, YUNUS MOHAMMAD, AJAY B. MUMMANENI, and LINDA WAISSAR Technology Center 3600
• Court: Patent Trial and Appeal Board

Ex parte JONATHAN AXELRAD, PING GE, PHILLIP HOARE, YUNUS MOHAMMAD, AJAY B. MUMMANENI, and LINDA WAISSAR Technology Center 3600

Appeal 2020-000092

Application 12/905, 040

United States Patent and Trademark Office, Patent Trial and Appeal Board

August 25, 2020

FILING DATE: 10/14/2010

Before CAROLYN D. THOMAS, IRVIN E. BRANCH, and MICHAEL J. ENGLE Administrative Patent Judges.

DECISION ON APPEAL

ENGLE Administrative Patent Judge.

STATEMENT OF THE CASE

Appellant^[1] 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.

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)).

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., 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, 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'").

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, 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...