ALLSTATE INSURANCE COMPANY Download PDFPatent Trials and Appeals BoardMay 13, 20202019006061 (P.T.A.B. May. 13, 2020) Copy Citation 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 Copy with citationCopy as parenthetical citation