ALLSTATE INSURANCE COMPANY

Patent Trials and Appeals Board

May 13, 2020

13834161 - (D) (P.T.A.B. May. 13, 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.
13/834,161 03/15/2013 Suchandra Banerjee 006591.00457 4029
71823 7590 05/13/2020
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 006591
71 SOUTH WACKER DR.
SUITE 3600
CHICAGO, IL 60606
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
05/13/2020 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):
PTO-71823@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUCHANDRA BANERJEE, JENNIFER A. BRANDMAIER,
MARK E. FAGA, ROBERT H. JOHNSON, CLINT J. MARLOW, CURTIS
MURPHY, KURT M. STRICKER, and JOSH CAMPBELL
____________

Appeal 2019-006061
Application 13/834,161
Technology Center 3600
____________

Before ERIC S. FRAHM, CATHERINE SHIANG, and
JOHN D. HAMANN, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 19 and 23–42, which are all the claims pending and
rejected in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies Allstate Insurance Company as the real party in interest.
Appeal Br. 2.

Appeal 2019-006061
Application 13/834,161

2
STATEMENT OF THE CASE
Introduction
The present invention relates to “systems and methods for analyzing
damage to an item for insurance purposes.” Spec. ¶ 2. In particular,
A mobile device may transmit data (e.g., images, video, etc.)
related to damage associated with an insured item to an
enhanced claims processing server. The enhanced claims
processing server may manage analysis of damage associated
with the insured item and settlement of a claim related to the
damage.
Spec. ¶ 7. Claim 19 is exemplary:
19. A mobile computing device comprising:
a processor;
a wireless network interface;
a camera;
a display screen configured to present a viewfinder for
the camera; and
a memory in signal communication with the processor
and storing computer-readable instructions, when executed by
the processor, cause the mobile computing device at least to:
(a) present, on the display screen and using the
viewfinder, a view of a damaged object;
(b) indicate a proper positioning of the damaged
object within the viewfinder by presenting, on the display
screen and within the viewfinder, a visual marker
indicating a location at which to position a portion of the
view of the damaged object that depicts a side of the
damaged object;
(c) obtain, using the camera, an image of the
damaged object;
(d) transmit, via the wireless network interface and
to an insurance claim processing server, the image
obtained;
(e) receive, via the wireless network interface and
in response to a determination by the insurance claim
processing server that the image transmitted does not
Appeal 2019-006061
Application 13/834,161

3
satisfy a criterion specifying a predetermined image
quality, a request for an additional image of the damaged
object;
(f) obtain, using the camera and in response to
receipt of the request, the additional image of the
damaged object;
(g) transmit, using the wireless network interface,
the additional image of the damaged object; and
(h) iteratively repeat (c)-(g) until the insurance
claim processing server determines that the insurance
claim processing server has received a set of images of
the damaged object that are acceptable for processing an
insurance claim.

Rejection2
Claims 19 and 23–42 are rejected under 35 U.S.C. § 101 for being
directed to patent-ineligible subject matter. Final Act. 2–9.

ANALYSIS

35 U.S.C. § 101
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contentions that the Examiner erred in this case.
Section 101 of the Patent Act provides “[w]hoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may

2 Throughout this opinion, we refer to the (1) Final Office Action dated Oct.
9, 2018 (“Final Act.”); (2) Appeal Brief dated May 8, 2019 (“Appeal Br.”);
(3) Examiner’s Answer dated June 17, 2019 (“Ans.”); and (4) Reply Brief
dated Aug. 12, 2019 (“Reply Br.”).
Appeal 2019-006061
Application 13/834,161

4
obtain a patent therefor, subject to the conditions and requirements of this
title.” 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. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
Appeal 2019-006061
Application 13/834,161

5
(15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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. (citing Benson and Flook); 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.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “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. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
Appeal 2019-006061
Application 13/834,161

6
The United States Patent and Trademark Office published revised
guidance on the application of § 101. USPTO’s 2019 REVISED PATENT
SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”).3 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) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th ed. rev.
08.2017 2018) (Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Turning to Step 2B of the Guidance, “[t]he second step of the Alice
test is satisfied when the claim limitations ‘involve more than performance
of []well-understood, routine, [and] conventional activities previously
known to the industry.’” Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed.
Cir. 2018) (quoting Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) and

3 The Guidance was updated in October 2019.
Appeal 2019-006061
Application 13/834,161

7
Alice, 573 U.S. at 225). “Whether something is well-understood, routine,
and conventional to a skilled artisan at the time of the patent is a factual
determination.” Berkheimer, 881 F.3d at 1369.
In this case, Appellant argues:
the Examiner has [] failed to provide the evidence necessary to
[show] the claimed “visual marker” having explicitly recited
characteristics is a specific limitation that is not well-
understood, routine, or conventional thus demonstrating the
claims recite an inventive concept under Step 2B. The record to
date lacks any evidence sufficient to show otherwise, e.g., a
citation to an express statement in the present application's
specification, a citation to a relevant court decision, a citation to
a relevant publication, or a statement the Examiner is taking
official notice of such. See, e.g., “Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), p.
3–4.
Appeal Br. 11; see also Reply Br. 8–10.
The Examiner has not responded with the evidence required by
Berkheimer. See Berkheimer, 881 F.3d at 1369. In particular, although the
Examiner cites some paragraphs of the Specification (Ans. 14), the cited
paragraphs do not even discuss the claimed “visual marker.” As a result, we
agree with Appellant (Appeal Br. 11; Reply Br. 8–10) that the Examiner has
not provided any of the four categories of information required by the
USPTO Memorandum, dated April 19, 2018, of Changes in Examination
Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter
Eligibility Decision (Berkheimer v. HP, Inc.) (“Berkheimer Memorandum”):
1. A citation to an express statement in the specification or to a
statement made by an applicant during prosecution that
demonstrates the well-understood, routine, conventional
nature of the additional element(s). . . .
Appeal 2019-006061
Application 13/834,161

8
2. A citation to one or more of the court decisions discussed in
MPEP § 2106.05(d)(II) as noting the well-understood,
routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-
understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official notice of the
well-understood, routine, conventional nature of the
additional element(s). . . .

Berkheimer Memorandum at 3–4.
Therefore, the Examiner erred with respect to Step 2B of the
Guidance, and we are constrained by the record to reverse the Examiner’s
rejection of claims 19 and 23–42 on procedural grounds.

CONCLUSION
We reverse the Examiner’s decision rejecting claims 19 and 23–42
under 35 U.S.C. § 101.
In summary:

Claims
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
19, 23–42 101 Eligibility 19, 23–42

REVERSED