Ex Parte Becerra et alDownload PDFPatent Trials and Appeals BoardMar 27, 201912313740 - (D) (P.T.A.B. Mar. 27, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/313,740 11/24/2008 93485 7590 03/29/2019 Brient IP Law, LLC 1175 Grimes Bridge Road Suite 100 Roswell, GA 30075 FIRST NAMED INVENTOR Manuel Becerra 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. 1045-02003-US 9103 EXAMINER POLLOCK, GREGORY A ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 03/29/2019 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): info@brientip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte MANUEL BECERRA and MARIA C. MANDULEY Appeal2017-010981 Application 12/313,740 Technology Center 3600 Before MARC S. HOFF, JUSTIN BUSCH, and LINZY T. McCARTNEY, Administrative Patent Judges. McCARTNEY, Administrative Patent Judge. DECISION ON APPEAL Appellants seek review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2017-010981 Application 12/313,740 BACKGROUND This patent application generally relates to "insurance policy claims submitted by policyholder customers." Specification 1 :7-8, filed November 24, 2008 ("Spec."). Claims 1, 16, and 17 are independent. Claim 1 illustrates the claimed invention: 1. A computer-implemented automated system for processing a claimed loss event by a claimant under a beneficial coverage contract issued by an insurance company or financial institution, the system comprising: (a) a database stored on a non-transitory, computer- readable medium coupled to a processor; (b) a software program stored on a non-transitory, computer-readable medium coupled to the processor; ( c) beneficial coverage contract data and the terms of its coverage for at least one beneficial coverage contract stored in the database; ( d) a processor configured for providing a communication interface configured for enabling the claimant to provide facts characterizing the claimed loss event under the beneficial coverage contract; ( e) a processor configured for running a risk assessment process tool within the software configured for assigning a numerical risk assessment score via a statistical model or set of business rules stored within the database to the claimed loss event under the beneficial coverage contract for characterizing the risk that the claim is fraudulent or erroneous using statistical modeling techniques; (f) a correlation table stored within the database configured for associating, by a processor, with the numerical risk assessment score assigned to the claimed loss event a total confidence level ("TCL") value required by the insurance company or financial institution to verify the claimed loss event; (g) a lookup table stored within the database configured for pre-selecting, by a processor, based upon the TCL value of 2 Appeal2017-010981 Application 12/313,740 the claimed loss event one or more corroborating secondary data sources with each one characterized by a confidence level value chose or statistically modeled by the insurance company or financial institution for corroborating secondary data source's ability to verify the claimed loss event; (h) a processor configured for automatically consulting one of the corroborating secondary data sources to determine whether its informational content matches information provided by the claimant for the claimed loss event, and only in the event of a positive match, the pre-assigned confidence level value of the corroborating data source being added to an accumulated verification value ("A VV") score for the claim; (i) a processor configured for determining a remaining verification value ("R VV") required to verify the claimed loss event by subtracting the A VV score from the TCL value (i.e., RVV = TCL - AVV); (j) a processor configured for iteratively repeating steps (h) and (i) with successive corroborating secondary data sources in response to determining that the R VV value is less than the TCL value; (k) wherein the computer system, in response to determining that the A VV score for the claim equals at least the required TCL value, is configured to: treat the claimed loss event as verified for adjudication in accordance with the rules of the beneficial coverage contract for ultimate disposition without requiring the claimant to supply direct proof of the validity of the claimed loss event; and display to the claimant, via the communication interface, an indication that the claimed loss event has been verified; and (1) wherein the computer system is configured to treat the claimed loss event as unverified in response to determining that the accumulated A VV value does not equal or exceed the required TCL value with no other corroborating data source available having a pre-assigned confidence level value that would bridge the difference between the A VV value and required TCL value if it was consulted by the system. 3 Appeal2017-010981 Application 12/313,740 Supplemental Appeal Brief 32-33, filed February 28, 2017 ("App. Br."). REJECTION Basis 1-17 § 101 DISCUSSION Section 101 of the Patent Act provides that "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof' is patent eligible. 35 U.S.C. § 101. But the Supreme Court has long recognized an implicit exception to this section: "Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. v. CLS Bankint'l, 573 U.S. 208,216 (2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). To determine whether a claim falls within one of these excluded categories, the Court has set out a two-part framework. The framework requires us first to consider whether the claim is "directed to one of those patent-ineligible concepts." Alice, 573 U.S. at 217. If so, we then examine "the elements of [the] claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)). That is, we examine the claim for an "inventive concept," "an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself."' Alice, 573 U.S. at 217-18 ( alteration in original) ( quoting Mayo, 566 U.S. at 72-73). 4 Appeal2017-010981 Application 12/313,740 The Patent Office recently issued guidance about this framework. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Revised Guidance"). Under the Revised Guidance, to decide whether a claim is directed to an abstract idea, we evaluate whether the claim (1) recites an abstract idea listed in the guidance ("Prong One") and (2) fails to integrate the recited abstract idea into a practical application ("Prong Two"). See Revised Guidance, 84 Fed. Reg. at 51. If the claim is directed to an abstract idea, as noted above, we then determine whether the claim has an inventive concept. The Revised Guidance explains that when making this determination, we should consider whether the additional claim elements add "a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field" or "simply append[] well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality." Revised Guidance, 84 Fed. Reg. at 56. With these principles in mind, we tum to the Examiner's § 101 rejection. Abstract Idea The Examiner determined that claim 1 is "directed to a method and system of processing a claimed loss event by a claimant under a beneficial coverage contract issued by an insurance company or financial institution." Final Office Action 3, mailed June 30, 2016 ("Final Act."). The Examiner determined that this concept is similar to concepts that courts have determined are fundamental economic principles or practices or mental processes, among other concepts. See Final Act. 5 (listing decisions), 10. For 5 Appeal2017-010981 Application 12/313,740 the reasons explained below, Appellants have not persuaded us that the Examiner erred. Prong One Claim 1 recites limitations ( d}-(1) reproduced in full above. Under the broadest reasonable interpretation of these limitations, the limitations recite processing insurance policy claims ( that is, a "claimed loss event by a claimant under a beneficial coverage contract issued by an insurance company or financial institution") because each limitation recites an operation used to process this type of claim. See App. Br. 32-33. People can perform the recited processing in their heads or using pen and paper. The written description indicates that people do not need a computer to perform the recited processing. See, e.g., Spec. 19:23-25 ( explaining that "a beneficial coverage contract company employee who manually conducts the claim validation exercise" can use a lookup table ( emphasis added)). And each limitation encompasses an act that people can perform mentally or by hand. For example, limitation (d) enables a claimant to provide facts characterizing the claimed loss event. See App. Br. 32. People can provide facts about a loss event by writing the information on a piece of paper. In fact, as the written description explains, a typical insurance claim validation process involves a person providing "mailing information to receive a claim form" and responding to the questions on the form, presumably in writing. Spec. 3:22-25. Limitations ( e }-(g) respectively (1) assign a risk assessment score to the claimed loss event, the score characterizing the risk the claim is fraudulent or erroneous; (2) associate the score with a total confidence level (TCL) required to verify the event; and (3) pre-select corroborating 6 Appeal2017-010981 Application 12/313,740 secondary data sources based on the TCL, each data source having a confidence level value for corroborating the source's ability to verify the loss event. See App. Br. 32. People can perform each of these steps in their minds or by using pen and paper. People can assign a risk score to a claimed loss event by writing a number representing the risk that the claim is wrong or fraudulent next to the name of the event or mentally associating the score with the event. A person can associate the score with a TCL by writing the score next to the TCL or mentally associating the two numbers. And people can mentally pre-select corroborating secondary data sources based on the TCL or write the information in a table. Indeed, the written description suggests that information written in a table can represent each of the assignments and associations recited in limitations ( e }-(g). See, e.g., Spec. 17:26-28, 19:25-28, 20 (Table 2), 21:16-19, 21 (Table 3), Figs. 5-7, 21-22. Limitation (h) recites consulting a corroborating secondary data source to determine whether the source's information matches the information provided by the claimant, and if so, adding the source's confidence level value to an accumulated verification value (A VV). See App. Br. 32-33. People can perform this step by, for example, mentally comparing a date of death provided by a claimant with the date of death listed in a newspaper obituary or a government database, and if they match, mentally adding the confidence level value for the corroborating source to the A VV. Similarly, limitations (i) and (j) respectively determine a remaining verification value (RVV) required to verify the claimed loss event and repeat limitations (h) and (i) if the RVV is less than the TCL. See App. Br. 33. People can perform the function recited in limitation (i) by mentally subtracting the AVV from the TCL to determine the RVV. And people can 7 Appeal2017-010981 Application 12/313,740 satisfy limitation (j) by repeating the mental processes required by limitations (h) and (i) until the RVV is less than the TCL. 1 Limitation (k) recites that, after determining that the A VV at least equals the required TCL, treating the loss event as verified without requiring the claimant to provide direct proof of the validity of the loss event and displaying an indication that the loss event has been verified. See App. Br. 33. A person can perform these steps by recognizing that the AVV equals or exceeds the required TCL, considering the loss event verified without requiring the recited proof, and writing the word "verified" on the claimant's claim form. Finally, limitation (1) recites treating the loss event as unverified after determining that the accumulated A VV does not at least equal the required TCL and there are no other corroborating data sources with a confidence level that would make up the difference between the A VV and the required TCL. See App. Br. 33. A person can mentally perform these steps by simply recognizing that the recited condition is true and considering the loss event unverified. Taken as a whole, these limitations recite a process that people can perform in their heads or using pen and paper. Because people can perform this process mentally or by hand, the recited process is no different from other concepts courts have determined are mental processes. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ( determining that a claim whose "steps can be performed in the human mind, or by a human using a pen and paper" is directed to an 1 Limitation (j) appears to infinitely repeat if limitation (h) first creates an A VV greater than zero. 8 Appeal2017-010981 Application 12/313,740 unpatentable mental process). This is true even though claim 1 recites that computer elements perform some of the claimed functions. "Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person's mind." Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015). See also Revised Guidance, 84 Fed. Reg. at 52 n.14 ("If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind."). We therefore conclude that claim 1 recites a mental process, one of the abstract idea groupings in the Revised Guidance. See Revised Guidance, 84 Fed. Reg. at 52. Claim 1 thus recites an abstract idea. The recited process is also a fundamental economic practice. As discussed above, limitations ( d}-(1) each involves an operation that allows the claimed system to process an insurance claim. See App. Br. 32-33. Processing an insurance claim is an economic act, and we see no meaningful distinction between the recited process and concepts that courts have determined are fundamental economic practices. See, e.g., Alice, 573 U.S at 219-20 (intermediated settlement); Bilski v. Kappas, 561 U.S. 593, 611-12, (2010) (hedging); Bancorp Servs., L.L. C. v. Sun Life Assur. Co. of Canada (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (managing a stable value protected life insurance policy). As a result, we conclude that claim 1 also recites a fundamental economic practice, one of the certain methods of organizing human activity identified in the Revised Guidance. See Revised 9 Appeal2017-010981 Application 12/313,740 Guidance, 84 Fed. Reg. at 52. For this added reason, claim 1 recites an abstract idea. Appellants' arguments have not persuaded us otherwise. Appellants contend that the Examiner erred because the Examiner did not consider claim 1 as a whole and described claim 1 "at a high level of abstraction untethered from the language of the claim." App. Br. 26-27. In support of these arguments, Appellants point to the following statement from the "Response to Arguments" section of the Final Office Action: "[i]n combination as a whole the claims are directed toward insurance." App. Br. 27 ( quoting Final Act. 10). We see no persuasive evidence-and Appellants have pointed to none-that the Examiner failed to consider claim 1 as a whole. And Appellants' arguments about the Examiner's characterization of the abstract idea ignore that the Examiner found that claim 1 is "directed to a method and system of processing a claimed loss event by a claimant under a beneficial coverage contract issued by an insurance company or financial institution." See Final Act. 3. This characterization corresponds to the plain language of the claim, and Appellants describe the claimed invention in a similar fashion. See App. Br. 32 (preamble of claim 1 ); App. Br. 7 ("The invention generally discloses a computer-implemented automated system for processing a claimed loss event by a claimant under a beneficial coverage contract issued by an insurance company or financial institution."), 24 ("Generally speaking, [ c ]laims 1, 16, and 17 are directed to a computer- implemented automated system for processing a claimed loss event by a claimant under a beneficial coverage contract issued by an insurance company or financial institution."). 10 Appeal2017-010981 Application 12/313,740 Although we describe the fundamental economic practice differently than the Examiner, we see no error in the Examiner's characterization of the idea. "An abstract idea can generally be described at different levels of abstraction." Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). The level of abstraction an examiner uses to describe an abstract idea need not "impact the patentability analysis." Apple, 842 F.3d at 1241. That is true here. Regardless of the level of generality used to describe the fundamental economic practice recited in claim 1, the result is the same: claim 1 recites a fundamental economic practice. Cf Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45 (Fed. Cir. 2013) ("Although not as broad as the district court's abstract idea of organizing data, it is nonetheless an abstract concept."). Prong Two Because we conclude that claim 1 recites abstract ideas, we next evaluate whether claim 1 integrates these ideas into a practical application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we consider whether there are any additional elements beyond the abstract ideas that, individually or in combination, "integrate the [ abstract ideas] into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit." Revised Guidance, 84 Fed. Reg. at 54--55. Along with the abstract ideas recited in claim 1, the claim recites "a computer system," "a software program," one or more "processors" that perform various functions, a "computer-readable medium," "a database," "a correlation table," "a lookup table," and "beneficial coverage data." App. Br. 32-33. The written description suggests that these elements are generic computer components used to perform abstract ideas. For example, the 11 Appeal2017-010981 Application 12/313,740 written description explains that "[t]he computer system on which the system resides may be a standard PC, laptop, mainframe, handheld wireless device, or any automated data processing equipment capable of running software for monitoring the progress of the transplantable material." Spec. 12:26-28. The written description discloses that "software program 34 may be designed to be an expression of an organized set of instructions in a coded language. These instructions are programmed to facilitate the intake of claims information, assessment of the risk associated with that claim, and validation of the claim against fraud or error." Spec. 12: 22-25. The written description states that processor 24 ( often called a central processing unit or CPU) "controls the computer system and is capable of running the system stored in memory." Spec. 12:29-30; see also id. at 12:9-10 (referring to "central processing unit" 24), Fig. 2 (showing a box labeled "Processor" with reference number 24). Similarly, although the term "computer-readable medium" does not appear in the written description, the written description explains that "memory may include, for example, internal memory such [as] RAM and/or ROM, external memory such as CD-ROMs, DVDs, flash drives, or any currently existing or future data storage means." Spec. 12:30-13:1 ( emphasis added). The written description describes "database 40" in terms of what it contains ("records of beneficial coverage contracts, claimant data, and claims data"). Spec. 12:12-13. And the written description provides no suggestion that the recited "correlation table," "lookup table," and "beneficial coverage data" are anything but generic tables and data. In fact, the written description suggests that the tables are generic. See, e.g., Spec. 17:26-28, 19:25-29, 20 (Table 2), 21:16-19, 21 (Table 3), Figs. 5-7, 21-22. 12 Appeal2017-010981 Application 12/313,740 Appellants acknowledge that "certain embodiments of the claimed invention can be implemented on a general purpose computer," but argue that "the invention still offers an improvement to the technical field and functioning of a computer." App. Br. 25. Appellants assert that the recited "beneficial coverage contract," "correlation table," "lookup table" and "remaining verification value" are "all specific types of data structures that 'improve the way a computer stores and retrieves data in memory."' App. Br. 29 (quoting Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016)). For example, according to Appellants, "by locally storing" the coverage contract and the verification value, "the system is enabled to more quickly access and retrieve the information in" these elements. App. Br. 29. Appellants also assert that by pre-assembling the correlation table and pre- selecting based on the lookup table, "the system is allowed to more quickly process and execute 'claimed loss event' requests." App. Br. 29. We find these arguments unpersuasive. To begin, Appellants have provided no support for the assertion that locally storing the coverage contract and verification value allows the system to access these elements more quickly than normal. See App. Br. 29. Even if the system can access these elements more quickly than normal, this is not an improvement to the computer itself as asserted by Appellants. The computer still accesses the contract and value in the same manner. Any improvement flows from the location of the elements, and at least in this circumstance, changing the location of these elements does not amount to an improvement in the functioning of the computer itself. Similarly, pre-assembling the correlation table and pre-selecting based on the lookup table do not amount to an improvement in the computer itself. Like locally storing the coverage 13 Appeal2017-010981 Application 12/313,740 contract and verification value, these alleged improvement result from preprocessing, not improving how a computer functions. The recited beneficial coverage contract, correlation table, lookup table, and remaining verification value are unlike the self-referential table at issue in Enfzsh. There, the claims specifically recited a self-referential table that embodied an improvement to the way computers operate. See Enfish 822 F.3d at 1336, 1337. In contrast, claim 1 does not recite at least some elements that Appellants assert provide the supposed improvements. For example, the claim does not recite "locally storing" the remaining verification value. See App. Br. 32-33. And, according to the Enfzsh court, the written description before it made clear that the claimed self-referential table functioned differently than conventional database sources. See Enfzsh, 822 F.3d at 1337. The written description before us makes no such assertions about the elements relied on by Appellants. We therefore disagree that these elements are "a specific type of data structure designed to improve the way a computer stores and retrieves data in memory." Enfzsh, 822 F.3d at 1339. Appellants point out that the written description states that "the present invention enables pre-calculation and storage of the [risk assessment scores (RAS)] and TCL scores ... to speed up the automated claim processing ... in reliance upon the fact that the system can utilize stored rules to modify the RAS and TCL scores in real time in the interest of accuracy." App. Br. 29 (quoting Spec. 37:21-26) (emphases modified). Like the other advantages cited by Appellants, pre-calculation and storage leads to "speed[ing] up the automated claim processing," not an improvement in computer technology. And claim 1 does not require using stored rules to 14 Appeal2017-010981 Application 12/313,740 modify either the RAS or the TCL "in real time," so this argument is unpersuasive. Cf Versata, 793 F.3d at 1335 (rejecting the argument that the claims recite improvements in computer performance when the "supposed benefits are not recited in the claims at issue"). Even if modifying the RAS and TCL scores in real time were reflected in the claim, this advantage is a product of pre-calculation and pre-storage, not an improvement in computer technology. Finally, Appellants argue that the Examiner improperly "doomed" the claims because a general-purpose computer can implement the invention and suggest that claim 1 recites a special-purpose computer. See App. Br. 25-27. We see no merit in these arguments. The Examiner explicitly noted that "a general purpose computer can be used to implement patent eligible subject matter" but determined that is not the case here. Ans. 4. For the reasons discussed above, we agree. As for the suggestion that claim 1 recites a special-purpose computer, in Alice the Supreme Court rejected the argument that claims that recite "specific hardware" configured to perform "specific computerized functions" are patent eligible when the hardware was simply "a handful of generic computer components configured to implement" an abstract idea. Alice, 573 U.S. at 226. That is the case here. As explained above, we see no indication that the additional elements are anything but generic computer components used to perform an abstract idea. In sum, the additional elements recited in claim 1 are generic computer components used as a tool to perform abstract ideas. We thus determine that claim 1 does not integrate the recited abstract ideas into a practical application. See Alice, 573 U.S. at 223-24 ("[W]holly generic computer implementation is not generally the sort of 'additional featur[ e]' 15 Appeal2017-010981 Application 12/313,740 that provides any 'practical assurance that the process is more than a drafting effort designed to monopolize the [ abstract idea] itself."' ( quoting Mayo, 566 U.S. at 77)). Inventive Concept We next consider whether claim 1 has an "inventive concept." That is, we examine "the elements of [the] claim both individually and 'as an ordered combination' to determine whether the additional elements 'transform the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78, 79). Under the Revised Guidance, we evaluate whether the additional claim elements add "a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field" or "simply append[] well- understood, routine, conventional activities previously known to the industry, specified at a high level of generality." Revised Guidance, 84 Fed. Reg. at 56. The additional elements recited in claim 1 "simply append[] well- understood, routine, conventional activities previously known to the industry, specified at a high level of generality." Revised Guidance, 84 Fed. Reg. at 56. The additional claim elements are generic computer components, and the written description suggests these components function in a well- understood, routine, and conventional fashion. See, e.g., Spec. 12:8-13:4, 17:26-28, 19:25-28, 20 (Table 2), 21:16-19, 21 (Table 3), Figs. 5-7, 21-22. Appellants have provided no persuasive evidence to the contrary. Considered individually or together, these elements do not "'transform the nature of the claim' into a patent-eligible application." Alice, 573 U.S. at 217 16 Appeal2017-010981 Application 12/313,740 (quoting Mayo, 566 U.S. at 78, 79). We therefore determine that claim 1 does not recite an inventive concept. CONCLUSION For the above reasons, we agree with the Examiner that claim 1 is directed to abstract ideas and does not contain an inventive concept. Accordingly, we sustain the Examiner's rejection of claim 1 under§ 101. Because Appellants' arguments for the remaining claims are substantially similar to Appellants' arguments for claim 1, we also sustain the Examiner's rejection of claims 2-17 under§ 101. DECISION 1-17 § 101 1-17 Summar 1-17 No period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 17 Copy with citationCopy as parenthetical citation