Ex Parte Bonissone et al

Patent Trial and Appeal Board

Nov 14, 2018

10425610 (P.T.A.B. Nov. 14, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/425,610 04/30/2003
20995 7590 11/16/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Piero Patrone Bonissone
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.
52493.000308 6437
EXAMINER
CAMPEN, KELLY SCAGGS
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
11/16/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte PIERO PATRONE BONISSONE,
RAJESH VENKA T SUBBU, WEIZHONG YAN, and
ANINDYA CHAKRABORTY
Appeal2017-005750
Application 10/425,610 1
Technology Center 3600
Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1, 3, 4, 6, 8-11, 13, 14, 16, 18-20, 31, 33, 34, 36, 38, and 39, which
are all of the claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b). Claims 2, 5, 7, 12, 15, 17, 21-30, 32, 35, 37, and 40 have
been cancelled.
We AFFIRM.
1 According to Appellants, the real party in interest is Genworth Holdings,
Inc. (App. Br. 1 ).
Appeal2017-005750
Application 10/425,610
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to an automated
insurance underwriting system for classifying insurance applications (Spec.
,r 55, Abstract). Claim 1, reproduced below, is representative of the claimed
subject matter:
1. A computer implemented system for underwriting an
insurance application based on a plurality of previous insurance
application underwriting decisions, where underwriting the
insurance application includes assigning a classification to the
insurance application, the system disposed in computer-usable
medium, the system comprising:
a pre-processing module tangibly embodied, where the
pre-processing module:
a) processes a plurality of features associated with
the insurance application;
b) normalizes ranges of the plurality of features so
as to allow for comparison of the plurality of features to a
given value;
c) generates a tag for each of a plurality of rule sets
applied to the plurality of features, wherein the tag starts
with a default value and is modified based on a
comparison of one of the plurality of features to at least
one threshold within one of the rule sets; and
d) outputs a processed result for each of the plurality
of features;
a plurality of binary classifiers, where there is a binary
classifier for each classification and where each of the binary
classifiers:
a) receives the plurality of processed results; and
b) outputs a classification result for the insurance
application based on the plurality of processed results;
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at least one post-processor module tangibly embodied,
where the at least one post-processor module:
a) processes each of the classification results; and
b) outputs a plurality of processed classification
results based on the processing of the classification results;
and
a classification selector tangibly embodied for selecting
one of the processed classification results, where the selection
indicates a classification assignment for the insurance
application and selects the most statistically supported of the
processed classification results.
REJECTION
Claims 1, 3, 4, 6, 8-11, 13, 14, 16, 18-20, 31, 33, 34, 36, 38, and 39
stand rejected under 35 U.S.C. § 101 as being directed to patent-ineligible
subject matter (Final Act. 3-9).
Our review in this appeal is limited only to the above rejection and the
issues raised by Appellants. Arguments not made are waived (see MPEP
§ 1205.02; 37 C.F.R. §§ 4I.37(c)(l)(iv) and 4I.39(a)(l)).
ISSUE
35 us.c. § 101
Appellants argue their invention as recited in claims 1, 3, 4, 6, 8-11,
13, 14, 16, 18-20, 31, 33, 34, 36, 38, and 39 is directed to patent-eligible
subject matter (App. Br. 11-21). The issue presented by Appellants'
arguments is:
Issue: Has the Examiner erred in concluding the invention as recited
is directed to patent-ineligible subject matter?
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ANALYSIS
Turning to subject matter eligibility, 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" (Alice Corp. Pty. Ltd. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012))). The first step in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts" (id.). If so, the second step is to
consider the elements of the claims "individually and 'as an ordered
combination' to determine whether the additional elements 'transform the
nature of the claim' into a patent-eligible application" (id. (quoting Mayo,
132 S. Ct. at 1297-98)). 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"' (id. (brackets in original)
(quoting Mayo, 132 S. Ct. at 1294)).
Step One
As an initial matter, we observe that independent claims 1, 8, 11, 18,
31, and 3 8 recite systems, methods, and non-transitory computer readable
media. As such, the claims are directed to statutory classes of invention
within 35 U.S.C. § 101.
Turning to the first step of the Alice analysis, we agree with the
Examiner that the present claims are directed to "the abstract idea of
underwriting insurance for creating an insurance contract" by "assigning a
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classification to the insurance application" (Final Act. 5; see Ans. 8). We
also agree with the Examiner's determination that the processes recited in
the claims are abstract processes performed for insurance underwriting
(Final Act. 5). The claims support the Examiner's determination, reciting
limitations for "underwriting an insurance application" by performing steps
including "process[ing]," "receiv[ing]," and "output[ting]" data.
Appellants' arguments that the claims are not directed to an abstract
idea because the "claims do not recite ... a fundamental economic or
longstanding commercial practice" or any other abstract idea "previously
found by the courts" (App. Br. 11-12, 15-16; Reply Br. 4), are not
persuasive. Appellants agree with the Examiner that the "claims address
[the] business challenge" of "underwriting an insurance application based on
a plurality of previous insurance application underwriting decisions" (id. at
11 ). Initially, aside from the preamble, the claims do not recite limitations
explaining how previous underwriting decisions are used to underwrite the
insurance application. Further, our reviewing court has determined that
insurance policy management is an abstract idea. Bancorp Servs., L.L. C. v.
Sun Life Assur. Co. of Canada (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
( describing "managing a stable value protected life insurance policy" as an
abstract idea). Moreover, insurance underwriting is a long-standing
fundamental economic practice. The background of Appellants'
Specification explains the "underwriting process consists of assigning a
given insurance application ... to one of the risk categories ( also referred to
as rate classes)" which "affect[ s] the premium paid by the applicant, e.g., the
higher the risk category, the higher the premium" (Spec. ,r 3). That is,
insurance underwriting is a form of risk management or protection based on
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classifying the risk of an insurance application. Claims directed to "the
basic concept of hedging, or protecting against risk" recite "a fundamental
economic practice." Bilski v. Kappas, 561 U.S. 593, 611 (2010) (citations
omitted). Further, although the claims recite steps describing the collection
of insurance application information to classify the insurance application,
the collection, analysis, and classification of information are abstract
concepts. In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 613 (Fed.
Cir. 2016) ( determining that "classifying and storing digital images" is an
abstract idea); Content Extraction & Transmission LLC v. Wells Fargo
Bank, Nat. Ass 'n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (determining that
claims reciting "1) collecting data, 2) recognizing certain data within the
collected data set, and 3) storing that recognized data in a memory" are
directed to an abstract idea).
Additionally, Appellants' argument that the claims are not directed to
an abstract idea because the claims are instead "directed to a specific
computer implemented system that includes a pre-processing module
tangibly embodied; a plurality of binary classifiers; a post-processor module
tangibly embodied and a classification selector tangibly embodied" (App.
Br. 12-13) is unpersuasive. Contrary to Appellants' argument that the
claims are directed to a "specific" computer system, Appellants'
Specification teaches "the systems and processes described in this invention
may be implemented on any general purpose computational device" (Spec.
,r 277 (emphasis added)). Furthermore, the Specification describes that
modules and classifiers are "implemented using software code on a
processor" (Spec. ,r,r 119, 275), i.e., the modules and classifiers are software-
coded features executed by a generic processor. Moreover, the claimed
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"pre-processing module," "binary classifiers," "post-processor module," and
"classification selector" do not define any particular computer or computing
elements (see Claim 1 ). Instead, those elements are defined by the broadly
recited functions that they perform without any particular detail as to how
those functions are performed, e.g., "process a plurality of features,"
"output[] a classification result," "process[] each of the classification
results," "select[] one of the processed classification results" (see Claim 1 ).
As such, the claimed modules and classifiers describe generic computing
elements for implementing the abstract idea identified by the Examiner.
This implementation of the abstract idea using generic computing
elements is not "override[ n ]" because "the claims are specific to
underwriting an insurance application based on a plurality of previous
insurance application underwriting decisions, where underwriting the
insurance application includes assigning a classification to the insurance
application" (App. Br. 15). The "attempt[] to limit the abstract concept to a
computer implementation and to a specific industry," here, insurance
underwriting, "do[es] not provide additional substantive limitations" that
save the claims from patent-ineligibility (Accenture Glob. Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013)).
Step Two
Because the claims are directed to an abstract idea, we next consider
whether the additional elements recited by the claims transform the claims
into a patent-eligible application of the claimed subject matter. We agree
with the Examiner that the claims do not recite any additional limitations
that amount to significantly more than the abstract idea itself and instead
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provide a "generic recitation of a computer and a computer network
performing their generic computer functions" to implement the abstract idea
(Final Act. 7).
Appellants' argument that the claims are "significantly more than the
alleged abstract idea of underwriting insurance" because the claims recite
"generat[ing] a tag for each of a plurality of rule sets applied to the plurality
of features, wherein the tag starts with a default value and is modified based
on a comparison of one of the plurality of features to at least one threshold
within one of the rule sets" (App. Br. 16) is unpersuasive. The limitation
Appellants argue is a feature of the abstract idea discussed supra, i.e., a
process for underwriting an insurance application by classifying the
insurance application. Appellants' Specification defines a tag as "essentially
an ordinal categorical variable developed from a collection of indicators for
the various decision boundaries as defined by human experts" to "provide a
utilization of the available human expert knowledge" (Spec. ,r,r 211-212
( emphasis added)). That is, the human-defined tag appended to the
application data is part of the abstract classification processes, discussed
supra. Moreover, we agree with the Examiner's finding that the claimed
tagging of insurance information is a "generic computer function[]" (Ans.
8).
Further, Appellants' argument that the "claimed invention addresses
[a] computer-centric challenge" (App. Br. 17-18) is not persuasive. The
"challenge" addressed by the claimed invention, as described by Appellants
and by the Specification, is "a business challenge," namely, "underwriting
an insurance application" (App. Br. 11 (emphasis added); Spec. ,r,r 4--7). As
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such, we determine the claimed invention does not solve a computer
technology problem.
Furthermore, the "improve [ men ts] [to] the functioning of a computer
processing system" that Appellants argue (App. Br. 19--20) are "so only in
the sense that the claims permit automation of previously manual
processing" tasks ( Credit Acceptance Corp. v. Westlake Servs., 859 F .3d
1044, 1055 (Fed. Cir. 2017). And our reviewing court has "made clear ...
mere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology" ( Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017)).
Here, Appellants' Specification describes that the insurance underwriting
challenge is solved by automating the manual process of insurance
underwriting (see Spec. ,r,r 4 ("manual underwriting, however, is not only
time-consuming, but also often inadequate in consistency and reliability"),
55 ("provide an automated process for consistent and accurate underwriting
decisions for insurance applications")). Although Appellants argue "an
embodiment of the present invention improve[s] the performance of neural
network classifiers" (App. Br. 17), the claims do not recite neural network
classifiers. Nor have Appellants adequately explained how, or provided any
evidence that, the claims improve neural network classifiers, let alone use
neural network classifiers. Accordingly, the claimed automation of
insurance underwriting does not amount to a patentable improvement in
computer technology.
Additionally, Appellants' argument that "the claims here are
admittedly novel and nonobvious" (Reply Br. 3--4) does not persuade us
that the claims are patent-eligible. Our reviewing court has held that it is not
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"enough for subject-matter eligibility that claimed techniques be novel and
nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and
103." SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir.
2018). As discussed supra, we determine that the claims do not recite
significantly more than the abstract idea itself and, in this case, the absence
of prior art that anticipates or renders obvious the claimed invention does not
persuade us that the claims are patent-eligible.
Additionally, Appellants' argument that "[ t ]here is no risk of
preempting the abstract idea" (App. Br. 15; see App. Br. 14, 17; see also
Reply Br. 5) does not persuade us that the claims are directed to patent-
eligible subject matter. Although preemption is characterized as a driving
concern for patent eligibility, preemption itself is not the test for patent
eligibility. Rather, "[ w ]hile preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility" (Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015)). Where claims are deemed to recite only patent-ineligible
subject matter under the two-step Alice analysis, as they are here,
"preemption concerns are fully addressed and made moot" (id.).
Accordingly, Appellants have not persuaded us independent claims 1,
8, 11, 18, 31, and 38 are directed to patent-eligible subject matter. Further,
Appellants have not proffered sufficient evidence or argument to persuade
us that any of the limitations in the dependent claims provide a meaningful
limitation that transforms the claims into a patent eligible application.
Therefore, we sustain the rejection of claims 1, 3, 4, 6, 8-11, 13, 14, 16, 18-
20, 31, 33, 34, 36, 38, and 39 under 35 U.S.C. § 101 as not being directed to
statutory subject matter.
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DECISION
The Examiner's rejection of claims 1, 3, 4, 6, 8-11, 13, 14, 16, 18-20,
31, 33, 34, 36, 38, and 39 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). See 37 C.F.R.
§ 41.50(±).
AFFIRMED
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