Ex parte Canfield

• Docket Number: Appeal 2022-004170,Application 14/911,901,Technology Center 3600
• Decision Date: 26 January 2024
• Parties: Ex parte JOHN R. CANFIELD
• Court: Patent Trial and Appeal Board

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Ex parte JOHN R. CANFIELD

Appeal 2022-004170

Application 14/911,901

Technology Center 3600

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

January 26, 2024

FILING DATE: 02/12/2016

Before BIBHU R. MOHANTY, TARA L. HUTCHINGS, and ROBERT J. SILVERMAN, Administrative Patent Judges.

DECISION ON APPEAL

MOHANTY, Administrative Patent Judge.

STATEMENT OF THE CASE

Pursuant to 35 U.S.C. § 134(a), Appellant^[1] appeals from the Examiner's decision to reject claims 1-20. We have jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF THE DECISION

We AFFIRM.

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CLAIMED SUBJECT MATTER

The Appellant's claimed invention relates to systems and methods for analyzing risk data (Spec, para. 2). Claim 8, reproduced below, is representative of the subject matter on appeal.

8. A method for analyzing risk data, wherein said method comprises

transmitting a plurality of risk variables that are associated with risk data to a computing device

associating the plurality of risk variables, via the computing device, with a plurality of nodes such that each of the plurality of risk variables corresponds to a separate node; analyzing each of the plurality of nodes to identify a level of consistency or a level of inconsistency for each of the plurality of nodes, wherein

analyzing each of the plurality of nodes comprises obtaining previously stored node data for the plurality of nodes and comparing the risk data associated with each of the plurality of nodes with the previously stored node data

determining that each separate node of the plurality of nodes is associated with at least one associated related node of the plurality of nodes;

creating a plurality of links such that each of the plurality of links connects each separate node of the plurality of nodes with the at least one associated related node;

using each of the plurality of links to record data related to the level of consistency or the level of inconsistency identified for the corresponding connected nodes, wherein each of the plurality of links corresponds to separate recorded data;

providing a score for each of the plurality of links based on the corresponding recorded data;

determining a threat of a viable risk based on the provided score of each of the plurality of links by comparing the score with an existing score obtained from the memory device; and

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transmitting a notification to a remote device identifying the determined threat of the risk, wherein the notification causes the remote device to cancel a transaction.

THE REJECTION

The following rejection is before us for review:

Claims 1-20 are rejected under 35U.S.C.§101as being directed to non-statutory subject matter.

FINDINGS OF FACT

We have determined that the findings of fact in the Analysis section below are supported at least by a preponderance of the evidence^[2].

ANALYSIS

Rejection under 35 U.S.C. §101

The Appellant argues that the rejection of claim 8 is improper because the claim is not directed to an abstract idea (App. Br. 11-17; Reply Br. 2-6). The Appellant argues further that the claim is integrated into a "practical application" (App. Br. 17-21). The Appellant also argues that the claim is "significantly more" than the alleged abstract idea (App. Br. 21-24).

In contrast, the Examiner has determined that the rejection of record is proper (Final Action 2-6; Ans. 2-7).

We agree with the Examiner. An invention is patent eligible if it claims a "new and useful process, machine, manufacture, or composition of

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matter." 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: "[l]aws of nature, natural phenomena, and abstract ideas" are not patentable. E.g., Alice Corp. v. CLS Banklnt'l, 573 U.S. 208, 216 (2014).

In determining whether a claim falls within an excluded category, we are guided by the Supreme Court's two-step framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See Alice, 573 U.S. at 219 ("On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk."); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk . . . .").

Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 192 (1981)); "tanning, dyeing, making waterproof cloth, vulcanizing India rubber, smelting ores" (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267-68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).

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In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 187; see also id. at 191 ("We view respondents' claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula."). Having said that, the Supreme Court also indicated that a claim "seeking patent protection for that formula in the abstract... is not accorded the protection of our patent laws, and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment." Id. (internal citation omitted) (citing Benson andFlook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.").

In January 2019, the USPTO published revised guidance on the application of § 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.Reg. 50 (Jan. 7, 2019) ("Guidance"). Under the Guidance, we first look to whether the claim recites:

(1)any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and

(2)additional elements that integrate the judicial

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