Ex Parte Bell et al

Patent Trials and Appeals Board

May 31, 2019

13969329 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/969,329 08/16/2013 John C. Bell
500 7590 06/04/2019
SEED INTELLECTUAL PROPERTY LAW GROUP LLP
701 FIFTH A VE
SUITE 5400
SEATTLE, WA 98104
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.
750068.401 3682
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
06/04/2019 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):
USPTOeAction@SeedIP.com
pairlinkdktg@seedip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN C. BELL and COLM M. KEENAN
(Applicant: Pilot Catastrophe Services, Inc.)
Appeal 2017-011148
Application 13/969,329 1
Technology Center 3600
Before DENISE M. POTHIER, BETH Z. SHAW, and
NORMAN H. BEAMER, Administrative Patent Judges.
BEAMER, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-13, 15-18 and 20. Claims 14 and 19 are
cancelled. We have jurisdiction over the pending rejected claims under 35
U.S.C. § 6(b ).
We affirm.
1 Appellants identify Pilot Catastrophe Services, Inc. as the real party in
interest. (App. Br. 2.)
Appeal 2017-0011148
Application 13/969,329
THE INVENTION
Appellants' disclosed and claimed invention is directed to an
insurance claim report generating system which makes use of an interactive
voice response (IVR) system, a voice recognition server, and a voice
activated database (VAD) device. (Abstract.)
Independent claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method to generate an electronic insurance claim
report, comprising:
configuring an interactive voice response (IVR)
system to:
receive a telephone call from a remote
device;
deliver, to the remote device, an audio script
having prompts in response to the received
telephone call and in further response to data
received from the remote device, the prompts
associated with a template used to generate the
electronic insurance claim report;
receive at least one of dual-tone, multi-
frequency (DTMF) signaling tone information and
human voice information in response to the
prompts; and
store an entire audio recording of the
telephone call;
configuring a voice recognition server to generate
text from human speech, the voice recognition server
arranged to statistically match phonemes of the human
speech to entries in a dictionary that includes insurance
relevant terms, the voice recognition server configured to
further generate a text-based transcript representing the
entire audio recording of the telephone call;
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configuring a voice activated database (VAD)
device to:
receive first digital information from the
IVR system, the first digital information derived
from the DTMF signaling tone information or
receive second digital information from the voice
recognition server, the second digital information
derived from the human voice information passed
through the voice recognition server; and
generate the electronic insurance claim
report from at least some of the first or second
digital information;
provide concurrent access to the entire audio
recording of the telephone call, a transcription file
of the text generated from the human speech, and
the electronic insurance claim report; and
accept user input to update the transcription
file and the electronic insurance claim report based
on the concurrent access to the entire audio
recording, the transcription file, and the electronic
insurance claim report; and
communicating the electronic insurance claim
report to a claims management device.
REJECTION
The Examiner rejected claims 1-13, 15-18 and 20 under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter. 2 (Final Act. 2---6.)
Our review in this appeal is limited to the above rejection and the
issues raised by Appellants. Arguments not made in the Appeal Brief are
waived. See 37 C.F.R. § 4I.37(c)(1)(iv)(2016).
2 The rejections of the claims under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over prior art references was withdrawn. (Ans. 5.)
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Application 13/969,329
ISSUE ON APPEAL
Appellants' arguments in the Appeal and Reply Briefs present the
following issue: 3
Whether the Examiner erred in finding claims 1-13, 15-18 and 20 as
directed to non-statutory subject matter. (App. Br. 8-17; Reply Br. 2-7.)
ANALYSIS
The Examiner concludes claims 1-13, 15-18 and 20 are patent-
ineligible under 35 U.S.C. § 101 because the claims are directed to the
abstract idea of "generating an electronic insurance claim report," and in
particular, the abstract idea of:
configuring IVR system to receive calls, deliver or play an
audio script with prompts where caller selects choices using
DTMF, play more audio scripts based on the received DTMF,
receive response from the caller, [and] record the DTMF and
voice data of the caller, using voice/speech recognition software
[to] generate text from the speech and transcribe[] the callers
spoken information, [and] configur[ing] voice activated
database to receive digital information from IVR system[ and]
generate insurance claim based on the transcribed human voice
information.
(Final Act. 2-3.) The Examiner finds that there is nothing in the claims that
is significantly more than this abstract idea because, "additional computer
elements such as: voice recognition server, telephone/mobile device, IVR,
PBX, and database which are recited at a high level of generality, provide
3 Rather than reiterate the arguments of Appellants and the positions of the
Examiner, we refer to the Appeal Brief (filed May 15, 2017); the Reply
Brief (filed Aug. 28, 2017); the Final Office Action (mailed Oct. 11, 2016);
and the Examiner's Answer (mailed June 27, 2017) for the respective
details.
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Application 13/969,329
conventional computer functions that do not add meaningful limits to
practicing the abstract idea." (Id. at 3.)
Appellants argue the instant claims are analogous to those considered
in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016), in that the claims are "'directed to something
narrower' than simply a broad, abstract concept." (App. Br. 12.) Appellants
elaborate:
In the present case, the inventive concept includes the
generation of an electronic insurance claim report over a
network in reliance on interactive communication with a remote
user device. The input information from the remote user may
include DTMF signaling tones, voice information, or both
DTMF tones and voice information, and a voice recognition
server is configured to generate text from the voice information.
This design provides benefits over traditional pen-and-paper
report generation by generating a computer-based (i.e.,
electronic) claim report in real time, and the system also
provides for greater accuracy because a voice activated
database (V AD) is configured to provide for concurrent access
to the entire audio recording of the telephone call and the
electronic insurance claim report, user input to update the
electronic insurance claim report based on the concurrent
access to the entire audio recording and the electronic
insurance claim report, and communication of the electronic
insurance claim report to a claims management device . ...
[T]he invention described in the present claims is a specific
application and improvement to technologies in the marketplace
that is not so abstract that it overrides the statutory language
and framework of the Patent Act.
(Id. at 15-16.) For the first time in the Reply Brief, Appellants also argue,
"the Examiner also provides no evidence that a voice recognition server
arranged to statistically match phonemes of the human speech to entries in a
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dictionary that includes insurance relevant terms is well-understood,
routine, or conventional." (Reply Br. 5.)
We agree with the Examiner that the subject matter of the claims at
issue are directed to non-statutory subject matter. An invention is patent-
eligible if it claims a "new and useful process, machine, manufacture, or
composition of matter." 35 U.S. C. § 101. Here, independent claim 1 and
its dependent claims are directed to a method, independent claim 11 and its
dependent claims are directed to a system, and independent claim 15 and its
dependent claims are directed to a non-transitory computer readable storage
medium - each a process, machine or manufacture. However, the Supreme
Court has long held that "[l]aws of nature, natural phenomena, and abstract
ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S.
208, 216 (2014) ( quoting Assoc. for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 598-99 (2013)). The "abstract ideas" category
embodies the longstanding rule that an idea, by itself, is not patentable.
Alice, 573 U.S. at 216-217.
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Id. at 217. The first step in the analysis is to "determine whether
the claims at issue are directed to one of those patent-ineligible concepts,"
such as an abstract idea. Id. 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 v.
Kappas, 561 U.S. 593, 611 (2010); mathematical concepts (Parker v. Flook,
437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalk v. Benson,
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409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include
physical and chemical processes, such as "molding rubber products"
(Diamondv. 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. 252, 267---68 (1853))); and
manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94
U.S. 780, 785 (1876))).
If the claims are directed to a patent-ineligible concept, the second
step in the Alice/Mayo analysis is to consider the elements of the claims
"individually and 'as an ordered combination'" to determine whether there
are additional elements that "'transform the nature of the claim' into a
patent-eligible application." 573 U.S. at 217 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). In other
words, the second step is to "search for an 'inventive concept' - i.e., 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."' 573 U.S. at 217-218 (quoting Mayo, 566 U.S.
at 72-73.) 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. 573 U.S. at 221. A transformation into a
patent-eligible application requires more than simply stating the abstract idea
while adding the words "apply it." Id.
Further to the Alice/Mayo analytical framework, after the mailing of
the Answer and the filing of the Briefs in this case, the USPTO published
revised guidance on the application of Section 101. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
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Application 13/969,329
(hereinafter "Revised Guidance"). Under the Revised 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 exception into
a practical application (see MPEP § 2106.0S(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, does the Office then look to whether
the claim:
(3) adds a specific limitation beyond the judicial exception that
are not "well-understood, routine, conventional" in the field
(see MPEP § 2106.0S(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.
See Revised Guidance.
In evaluating the claims at issue, we consider claim 1 as
representative, as Appellants provide no arguments that would differentiate
the remaining claims. See 37 C.F.R. § 41.37(c)(1)(iv)(20I6). As stated in
the preamble, claim 1 is directed to "generat[ing] an ... insurance claim
report." Each of the specific limitations of claim 1 elaborate on generating
the insurance claim report, as set forth below (italicizing portions of the
claim directed to additional technological elements that are discussed
separately in more detail to follow): (i) "receive a telephone call from a
remote device [e.g., an insurance adjuster using a telephone]" ( via "an
interactive voice response (IVR) system"); (ii) "deliver, to the remote device,
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a[] ... script having prompts in response to the received telephone call and
in further response to data received from the remote device, the prompts
associated with a template used to generate the ... insurance claim report";
(iii) "receiv[ing] ... human voice information in response to the prompts"
(and/or "dual-tone, multi-frequency (DTMF) signaling tone information");
(iv) "storing an entire audio recording of the telephone call"; (v) "generating
a text-based transcript representing the entire audio recording of the
telephone call" ( via a "voice recognition server arranged to statistically
match phonemes of the human speech to entries in a dictionary that includes
insurance relevant terms"); (vi) (by a "voice activated database, "4)
"receiv[ing] ... the human voice information (as "digital information . ..
derived from ... the voice recognition server" and "derived from the DTMF
signaling tone information"); (vii) "generat[ing] the ... insurance claim
report from at least some of the first or second ... information" (in "digital"
form); (viii) "provid[ing] concurrent access to the entire audio recording of
the telephone call, a transcription file of the text generated from the human
speech, and the ... insurance claim report"; (ix) "accept[ing] user input to
update the transcription file and the ... insurance claim report based on the
concurrent access to the entire audio recording, the transcription file, and the
... insurance claim report"; and (x) "communicating the ... insurance claim
report to a claims management device."
Apart from the use of generic technology (specified above in italics
and discussed further below), each of these limitations describe activities
that would normally be performed by an insurance adjuster or home-office
4 The Specification coins the term "voice activated database," which, as
discussed below, is simply a conventional database.
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insurance personnel in generating an insurance claim report: limitations (i}-
(iii) are directed to receiving information about the insurance claim pertinent
to preparing a claim report; limitations (iv}-(v) involve maintaining a record
of the received information; limitations (vi}-(vii) involve preparing the
report from the received information; and limitations (viii}-(x) involve
reviewing and updating the record and the report and sending it on.
As stated in the Revised Guidance, insurance transactions are an
example of a fundamental economic practice. (Revised Guidance, 84 Fed.
Reg. at 52). The applicable authorities are in accord. E.g., Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344--45
(Fed. Cir. 2013) (considering claims reciting "generalized software
components arranged to implement an abstract concept ... [ of generating
insurance-policy-related tasks based on rules to be completed upon the
occurrence of an event] on a computer"), Bancorp Servs., L.L.C. v. Sun Life
Assur. Co. of Canada (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
( considering claims reciting the use of a computer "employed only for its
most basic function, the performance of repetitive calculations," to
implement the abstract idea of managing a stable-value protected life
insurance policy).
Thus, the subject matter of claim 1, preparation of an insurance claim
report, is a fundamental economic practice, which is one of the certain
methods of organizing human activity identified in the Revised Guidance.
Therefore, we agree with the Examiner that the subject matter of claim 1 is
directed to an abstract idea.
Further pursuant to the Revised Guidance, we consider whether there
are additional elements set forth in claim 1 that integrate the judicial
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exception into a practical application. Revised Guidance, 84 Fed. Reg. at
54--55. As indicated above, the abstract idea of claim 1 is carried out using
various additional elements to facilitate the preparation of the electronic
insurance claim report: a "remote device" (e.g., a telephone); an interactive
voice response (IVR) system; use of dual-tone, multi-frequency (DTMF)
signaling tone information; a voice recognition server arranged to
statistically match phonemes of the human speech to entries in a dictionary
that includes insurance relevant terms; and digitalized information received
by a voice activated database. (See App. Br. 11 ("claim 1 is directed toward
generation of an electronic insurance claim report using an interactive voice
system, a telephone call from a remote device, a voice recognition server
that generates text from human speech, concurrent access to a recording of
the telephone call and the electronic insurance claim report .... "))
None of these additional elements integrate the judicial exception into
a practical application. In particular, whether taken individually or in
combination, these additional technical elements do not reflect an
improvement in the functioning of a computer, or an improvement to other
technology or technical field. Revised Guidance, 84 Fed. Reg. at 55.
Although the use of an IVR system, signaling tone information, voice
recognition, and a database facilitate the preparation of an electronic
insurance claim report, as compared to the prior art manual approach
described in Figure 1 of the Specification, "merely adding computer
functionality to increase the speed or efficiency of the process does not
confer patent eligibility on an otherwise abstract idea." Intellectual Ventures
I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015); see
also Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1057
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(Fed. Cir. 1057). Although, as Appellants argue, the subject matter of claim
1 "provides benefits over traditional pen-and-paper report generation,"
Appellants provide only conclusory, unpersuasive assertions that the subject
matter provides any improvements to technology. (App. Br. 15-16.)
Nor does the subject matter of claim 1 contain additional elements
that implement the judicial exception with a "particular machine," because
the claims do not specify any particular IVR system, voice recognition
server, database, or combination thereof. See MPEP § 2106.05 (b ). Further,
the method does not transform matter; at best it transforms information. See
MPEP § 2106. 05(c). Nor does claim 1 have any other meaningful
limitations (MPEP § 2106. 05 ( e) ), or any of the other considerations set
forth in the Revised Guidance regarding a determination of whether
additional elements integrate the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. at 55. Rather, the claim
"merely includes instructions to implement an abstract idea on a computer,
or merely uses a computer as a tool to perform an abstract idea." Id. 5
Turning to the second step of the Alice inquiry, we do not agree with
Appellants that additional elements of claim 1 add "significantly more" to
the basic abstract idea encompassed by the claim sufficient to transform the
claimed abstract idea into a patent-eligible application. Alice, 134 S. Ct. at
2357. The record supports the Examiner's finding that the additional
elements - using an IVR system, signaling tone information, voice
5 As depicted in Figure 2A and accompanying description in the
Specification, the interactive voice response (IVR) system; voice recognition
server, and voice activated database consist of software on general purpose
computing devices. (Spec. Figs. 2A, 3, 6:7-23, 32:27-34:8).
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Application 13/969,329
recognition server, and voice activated database - are well-understood,
routine, and conventional, specified at a high level of generality. See
Revised Guidance, 84 Fed. Reg. at 56. In particular, Appellants concede
that "telephone calls, DTMF signaling, generating text from human speech,
or simply generating a report," are not inventive. (App. Br. 14.) Also, the
voice activated database is simply a conventional database, for example a
"Microsoft SQL Server," that is accessed by the digital voice information
generated during the operation of the IVR system. (Spec. 8: 17-22, 14: 17).
Moreover, Specification merely refers to the use of an IVR system, signaling
tone information, voice recognition server, and voice activated database by
name, without any further elaboration, and suggests that these technologies
are preexisting, routine tools that are adapted to the abstract idea of the
claim. (E.g., Spec. Figs. 2A, 3, 6:7-23, 32:27-34:8).
In addition, Franklin-Barr, which is of record, establishes that it was
conventional to use an IVR system to detect and recognize user input,
provide responses based on user input, and collect the caller input, where the
input includes dual-tone multi frequency (DTMF) tones and/or spoken input
digitized by a speech recognition module. (Franklin-Barr, et al., US
2011/0243310 Al, ,r,r 10-11, 17 .) As stated in that reference:
IVR applications may be utilized in various situations,
including as an interface to a mapping system for an automobile
or other vehicle. Exemplary IVR applications may also be used
in telecommunications systems to support functionality
including by way of example telephone banking, telephone
voting, flight scheduling, movie ticket show-time retrieval,
ticket purchase, and credit card transactions.
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(Id. ,r 10; see also, Hilborn, US2009/0240531 Al, ,r,r 22-23). 6 As discussed
above, Appellants single out the use of "a voice recognition server arranged
to statistically match phonemes of the human speech to entries in a
dictionary that includes insurance relevant terms" as unconventional.
(Reply Br. 5.) However, the IVR examples enumerated in Franklin-Barr
adapt speech recognition to various applications, including banking,
telephone voting, flight scheduling, movie ticket show-time retrieval, ticket
purchase, and credit card transactions - indicating doing the same for the
insurance field would not have unconventional.
Appellants' reliance on in Bascom is not persuasive. (App. Br. 12.)
In Bascom, the claims were directed to a specific implementation of
"providing Internet-content filtering in a manner that can be customized for
the person attempting to access such content while avoiding the need for
(potentially millions of) local servers or computers to perform such filtering
and while being less susceptible to circumvention by the user." 827 F.3d at
1348. The Court found "the claims may be read to 'improve[] an existing
technological process."' 827 F.3d at 1351 (quoting Alice, 134 S.Ct. at
2358.) As discussed above, Appellants provide only conclusory,
unpersuasive assertions that the subject matter of claim 1 provides any
improvements to technology. (App. Br. 15-16.)
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claim 1. Appellants provide no arguments that would differentiate the
6 Although the Examiner withdrew the obviousness rejections based on these
references, a novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304; Genetic
Techs. Ltd. v. Meri al L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
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remaining claims. Thus, the foregoing analysis of claim 1 is exemplary of
that for claims 2-13, 15-18 and 20. See 37 C.F.R. § 4I.37(c)(1)(iv)(2016).
Therefore, we also sustain the Examiner's 35 U.S.C. § 101 rejection of those
claims.
DECISION
The Examiner's rejection of claims 1-13, 15-18 and 20 under
35 U.S.C. § 101 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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