Ex Parte Beyda et alDownload PDFPatent Trial and Appeal BoardAug 21, 201813310528 (P.T.A.B. Aug. 21, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/310,528 12/02/2011 23460 7590 08/23/2018 LEYDIG VOIT & MA YER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON A VENUE CHICAGO, IL 60601-6731 FIRST NAMED INVENTOR Peter Beyda 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. 709201 2886 EXAMINER CHAKRA V ART!, ARUNA VA ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 08/23/2018 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte PETER BEYDA, ARCHANA SETH, IRA APSEL, and MICHAEL GITTER Appeal2017-003901 Application 13/310,528 1 Technology Center 3600 Before DAVID M. KOHUT, JOHN P. PINKERTON, and MATTHEW J. McNEILL, Administrative Patent Judges. McNEILL, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's rejection of claims 11-15, 19, 20, 24-28, and 30-35, which are all the claims pending in this application. Claims 1-10, 16-18, 21-23, and 29 were cancelled. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 According to Appellants, the real party in interest is American International Group, Inc. Br. 1. Appeal2017-003901 Application 13/310,528 STATEMENT OF THE CASE Introduction Appellants' application relates to systems and methods for processing a claimant's insurance claim using an infrastructure that allows for legacy systems to participate in a service-oriented manner. Abstract. Claim 11 illustrates the appealed subject matter and reads as follows: 11. A system for processing insurance claims comprising: a physical computer-readable medium including a global claims online application, the global claims online application including: a user interface layer adapted to allow a user to interface with the global claims online application to input insurance claim data through a first notice of loss sequence, a business rules management module adapted to manage logical rules for segmenting the insurance claim or a feature thereof to follow a predetermined workflow based on the insurance claim data from the first notice of loss sequence, and a workflow management module adapted to determine a sequence of work objects to be completed for the insurance claim and to determine which user of a set of users works on each of the work objects relating to the insurance claim and to add each work object to a respective work basket of said user; a physical computer-readable medium housing an enterprise messaging system having an enterprise service bus (ESB) adapted to route messages for processing service requests; a processor adapted to execute the global claims online application contained on the physical computer-readable medium and to deploy and execute services of a service-oriented architecture through the ESB; a data integration hub operably arranged with the processor through the ESB, the data integration hub adapted to invoke a data transformation service of the service-oriented 2 Appeal2017-003901 Application 13/310,528 architecture to integrate insurance claims data from different repositories associated with the processor into a standardized data model, the data integration hub adapted to provide a data interface with at least one legacy system; a global claims data repository operably arranged with the processor and the data integration hub through the ESB, the global claims data repository adapted to store the insurance claim data from the first notice of loss sequence and the integrated insurance claims data with the standardized data model; a web server operably arranged with the global claims online application, the web server adapted to display the user interface layer of the global claims online application on a user interface browser to receive requests from a user and send responses to the user, the web server configured to selectively connect the global claims online application and the data integration hub with at least one in-country server. The Examiner's Rejections Claims 11-15, 19, 20, 24-28, 30-35 stand rejected under 35 U.S.C. § 101 as being directed to unpatentable subject matter. Final Act. 2-3. Claims 11-15, 19, 20, 24-28, 30-35 stand rejected under 35 U.S.C. § I03(a) as being unpatentable over Cartledge et al. (US 2009/0132331 Al; May 21, 2009) and Shapira et al. (US 2010/0161362 Al; June 24, 2010). Final Act. 3-21. ANALYSIS We have reviewed the Examiner's rejections in light of Appellants' contentions that the Examiner has erred. We disagree with Appellants' contentions. Except as noted below, we adopt as our own: (1) the findings and reasons set forth by the Examiner in the Final Action from which this appeal is taken; and (2) the reasons set forth by the Examiner in the 3 Appeal2017-003901 Application 13/310,528 Examiner's Answer in response to Appellants' Appeal Brief. We concur with the Examiner's conclusions. We highlight the following additional points. Patentable Subject Matter Under 35 U.S.C. § 101, a patent may be obtained for "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof." The Supreme Court has "long held that this provision contains an important implicit exception: Laws of nature, natural phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts." Alice, 134 S. Ct. at 2355. Assuming that a claim nominally falls within one of the statutory categories of machine, manufacture, process, or composition of matter, the first step in the analysis is to "determine whether the claims at issue are directed to one of those patent-ineligible concepts." Id. For example, abstract ideas include, but are not limited to, fundamental economic practices, methods of organizing human activities, an idea of itself, and mathematical formulas or relationships. Id. at 23 5 5-57. If the claim is directed to a judicial exception, such as an abstract idea, the second step is to determine whether additional elements in the claim "'transform the nature of the claim' into a patent- eligible application." Id. at 2355 (quoting Mayo, 566 U.S. at 78). This 4 Appeal2017-003901 Application 13/310,528 second step is described as "a search for an "'inventive concept'"-i.e., an element or combination of elements that is ' ... significantly more than ... the [ineligible concept] itself."' Id. (alteration in original) (quoting Mayo, 566 U.S. at 72-73). Alice Step One "[T]he first step in the Alice inquiry ... asks whether the focus of the claims is on the specific asserted improvement in computer capabilities ... or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool." Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). "The abstract idea exception prevents patenting a result where 'it matters not by what process or machinery the result is accomplished."' McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299, 1312 (Fed. Cir. 2016) (quoting O'Reilly v. Morse, 56 U.S. (15 How.) 62, 113 (1854)). "We therefore look to whether the claims ... focus on a specific means or method that improves the relevant technology or are instead directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery." McRO, 837 F.3d at 1314. The Examiner finds, and we agree, claim 11 is directed to insurance claims processing, which is a fundamental economic practice. See Final Act. 2, Ans. 2-3. Appellants do not contest that claim 11 is directed to an abstract idea, instead arguing that each of the claims includes significantly more than the judicial exception itself. See Br. 7. Accordingly, Appellants have not persuaded us of Examiner error with respect to Alice step one. 5 Appeal2017-003901 Application 13/310,528 Alice Step Two The second step in the Alice analysis requires a search for an "inventive concept" that "must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer." Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). There must be more than "computer functions [that] are 'well-understood, routine, conventional activit[ies]' previously known to the industry." Alice, 134 S. Ct. at 2359 (second alteration in original) (quoting Mayo, 566 U.S. at 73). Appellants argue the claimed invention provides significantly more than an abstract idea because claim 11 recites a specially-programmed machine that includes computer-implemented architecture components and a highly-cohesive infrastructure that allows for legacy systems to participate in a service-oriented manner. Br. 7-8. According to Appellants, the claimed solution is necessarily rooted in computer technology to satisfy needs arising in the field of insurance claims processing, including improving efficiency, dealing with non-standardized data, and coordinating the claims processing effort over different geographical sites. Id. at 8. Appellants contend the claimed system cannot be replaced by a human and requires the recited hardware to operate. Id. at 8. Finally, Appellants argue the claimed approach includes unconventional steps and limitations that confine the claims to a particular useful application. Id. at 9. Appellants have not persuaded us of Examiner error. The Examiner finds, and we agree, the claims recite no more than the abstract idea itself, generic computer structure to perform generic computer functions, and instructions to implement the idea on a computer. Ans. 4. 6 Appeal2017-003901 Application 13/310,528 Appellants' argument that that the claims are necessarily rooted in computer technology is not persuasive. In DDR Holdings, the Federal Circuit found claims drawn to "generating a composite web page that combines certain visual elements of a 'host' website with content of a third- party merchant" provided a solution "necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1248, 1257 (Fed. Cir. 2014). In contrast, claim 11 solves a problem of segmenting an insurance claim to follow a predetermined workflow and determining a sequence to be completed for processing the insurance claim. As found by the Examiner, the claims "merely describe the routine process of claims processing from receiving a claim to allocating resources to its processing." Ans. 3. The Examiner further finds, and we agree, "[ t ]he claims contain nothing more than a series of sequential steps starting with entering into an online application database a first notice of loss insurance claim, followed by a workflow process that determines which set ofuser(s) will work on the claim processing." Ans. 3. That is, claim 11 addresses a business challenge that was previously addressed using a manual process; it does not embody a solution to a computer-based problem. Thus, claim 11 is akin to the type of claim the Federal Circuit admonished against in DDR Holdings. 773 F.3d at 1257 ( differentiating the claims at issue from claims that "merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet"). Appellants' argument that the claims recite computer structure that improves the efficiency of insurance claim processing (see Br. 8) is also 7 Appeal2017-003901 Application 13/310,528 unpersuasive. Our reviewing court has made it clear that merely making the practice of an abstract idea more effective by implementing the idea on a computer does not suffice to meet the inventive concept requirement of Alice. See OIP Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible."). We are also not persuaded by Appellants' conclusory argument that the claims recite unconventional steps and limitations. See Br. 9. Appellants have not identified any particular limitations that are allegedly unconventional. Nor have Appellants explained how the ordered combination of steps and limitations is unconventional. Our reviewing court has "made clear that mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology." Credit Acceptance Corp. v. Westlake Svcs., 2016-2001, at 19 (Fed. Cir. June 9, 2017). Like the claims in Credit Acceptance, the focus of the claims is on the business practice, "and the recited generic computer elements 'are invoked merely as a tool."' Id. (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016)); see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) (collecting cases). Accordingly, for these reasons, we agree with the Examiner that claim 11 does not recite an "inventive concept" sufficient to transform the claims from an abstract idea to a patent eligible application. We, therefore, sustain the rejection of claim 11 under 35 U.S.C. § 101 as being directed to patent 8 Appeal2017-003901 Application 13/310,528 ineligible subject matter. We also sustain the rejection of claims 12-15, 19, 20, 24, and 25, for which Appellants offer no separate arguments. See Br. 9. Appellants argue the Examiner erred in rejecting claims 26 and 35 under 35 U.S.C. § 101 for the same reasons as claim 11. See Br. 9-14. We sustain the rejection of claims 26 and 35 under 35 U.S.C. § 101 for the same reasons as claim 11. We also sustain the rejection of dependent claims 27, 28, and 30-34, for which Appellants offer no separate arguments. See Br. 12. Obviousness Appellants argue the Examiner erred in rejecting claim 11 under 35 U.S.C. § 103 as unpatentable over Cartledge and Shapira. Br. 14-19. In particular, Appellants argue an ordinarily skilled artisan would not have had any reason to modify Cartledge' s workflow management system with any of the features of the other references to arrive at the claimed system. Br. 15- 16. The Examiner finds, and we agree, an ordinarily skilled artisan would have been motivated to combine Cartledge and Shapira to monitor and track task-based business processes. Final Act. 16. We are not persuaded by Appellants' argument because Appellants fail to identify an error in the Examiner's reasoning. Instead, we find the Examiner's expressed motivation to combine the references is based on rational underpinnings. Moreover, Appellants have not provided persuasive evidence to show combining Cartledge' s workflow management system with the cited features of Shapira was "uniquely challenging or difficult for one of ordinary skill in the art." See Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 9 Appeal2017-003901 Application 13/310,528 1162 (Fed. Cir. 2007) (citing KSR Int'! Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007)). Appellants further argue the Examiner erred because the combined system fails to teach or suggest: a business rules management module adapted to manage logical rules for segmenting the insurance claim or a feature thereof to follow a predetermined workflow based on the insurance claim data from the first notice of loss sequence, and a workflow management module adapted to determine a sequence of work objects to be completed for the insurance claim and to determine which user of a set of users works on each of the work objects relating to the insurance claim and to add each work object to a respective work basket of said user; a data integration hub operably arranged with the processor through the ESB, the data integration hub adapted to invoke a data transformation service of the service-oriented architecture to integrate insurance claims data from different repositories associated with the processor into a standardized data model, the data integration hub adapted to provide a data interface with at least one legacy system; a web server operably arranged with the global claims online application, the web server adapted to display the user interface layer of the global claims online application on a user interface browser to receive requests from a user and send responses to the user, the web server configured to selectively connect the global claims online application and the data integration hub with at least one in-country server. Br. 16-19. In particular, Appellants argue Cartledge teaches a system and method for workflow management that is "person oriented," focusing on a "work pool," not the recited workflow management module. Id. at 17-18. According to Appellants, Cartledge fails to teach or suggest using data acquired through a "first notice of loss sequence" as the basis for 10 Appeal2017-003901 Application 13/310,528 "segmenting the insurance claim or a feature thereof to follow a predetermined workflow." Id. at 18. Appellants have not persuaded us of Examiner error. The Examiner finds, and we agree, Shapira teaches a Java-based system that can be used for claim handling. Ans. 6 (citing Shapira ,r,r 103, 104, 128, 132). The Examiner further finds, and we agree, Cartledge teaches a workflow management system that assigns lists of tasks to workers based on worker functions, work schedule, and priority. Ans. 6-7 ( citing Cartledge ,r,r 26, 30, 3 8, 41, 44 ). We agree with the Examiner that the combined system of Cartledge and Shapira, in which Shapira teaches claim handling, teaches or at least suggests assigning tasks to workers to process, support, and notice loss claims, including using data from a first notice of loss that initiates the claim. Ans. 6-8. Appellants' conclusory arguments to the contrary do not persuasively identify error in these findings. Accordingly, Appellants have not persuaded us of Examiner error. We, therefore, sustain the obviousness rejection of claim 11. We also sustain the obviousness rejection of claims 12-15, 19, 20, 24, and 25, for which Appellants do not offer separate argument. See Br. 19. Appellants nominally provide separate argument for independent claim 26 (see Br. 19-21 ); dependent claims 27, 28, and 30-34 (see Br. 21 ); and independent claim 35 (see Br. 21-22). However, Appellants' arguments for these claims are conclusory, merely stating certain limitations are not taught by the combination of references without further explanation. See id. at 19-22. As stated by the Federal Circuit, Rule 41.37 "require[s] more substantive arguments in an appeal brief than a mere recitation of the claim elements and a naked assertion that the corresponding elements were not 11 Appeal2017-003901 Application 13/310,528 found in the prior art." In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011). Accordingly, we are not persuaded of Examiner error in the obviousness rejections of these claims. We, therefore, sustain the obviousness rejections of claims 26-28 and 30-35. DECISION We affirm the decision of the Examiner rejecting claims 11-15, 19, 20, 24-28, and 30-35. 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). See 37 C.F.R. § 41.50(±). AFFIRMED 12 Copy with citationCopy as parenthetical citation