Ex Parte Broodryk

Patent Trial and Appeal Board

Jan 2, 2019

12340197 (P.T.A.B. Jan. 2, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/340,197 12/19/2008
23460 7590 01/04/2019
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Maximilian Nicholas Broodryk
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.
703309 8612
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
01/04/2019 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MAXIMILIAN NICHOLAS BROODRYK
Appeal2017-010982
Application 12/340, 197 1
Technology Center 3600
Before MAHSHID D. SAADAT, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 20, 22, and 25-37. 2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to selling multiple insurance products. Spec.
,r 2. Claim 20 is illustrative of the invention and is reproduced below:
20. A computer implemented method of selling an
insurance product, the method comprising the steps of:
1 According to Appellant, American International Group, Inc. is the real
party in interest. Br. 1.
2 Claims 1-19, 21, 23, and 24 are canceled. Br. 17-18.
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using a web server to execute a computer software
framework residing on a nontransitory computer readable
medium, the web server arranged with a database of data
pertaining to at least a first and a second insurance product;
receiving a first request comprising data pertaining to the
first insurance product from a graphical user interface having a
number of data fields displayed on a web page by the web server;
using the web server to process the first request. to
determine data related to the first insurance product;
displaying a response comprising the data related to the
first insurance product in a set of presentation data fields of the
graphical user interface arranged in a presentation format;
receiving a second request comprising data pertaining to
the second insurance product from the graphical user interface;
using the web server to process the second request to
determine data related to the second insurance product; and
displaying a response comprising the data related to the
second insurance product in the presentation data fields of the
graphical user interface using the same presentation format;
displaying by the web server a quotation for at least one of
the first and second insurance products, wherein the quotation is
pre-underwritten subject to a set of eligibility criteria related to
said associated insurance product;
displaying by the web server the set of eligibility criteria
for at least one of the first and second insurance products;
only after receiving a confirmation from the user by the
web server that the user meets the set of eligibility criterion for
at least one of the first and second insurance products, allowing
the user to pay the quotation to bind coverage for each confirmed
insurance product.
App. Br. 17-18 (Claims Appendix).
REJECTIONS AT ISSUE
Claims 20, 22, and 25-37 stand rejected under 35 U.S.C. § 101 as
being directed to patent ineligible subject matter. Final Act. 2--4.
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Application 12/340, 197
Claims 20, 22, and 25-37 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Solanki (US 7,860,734 B2; filed Oct. 2, 2003).
Final Act 4--12.
ANALYSIS
1. Rejection Under 35 US.C. § 101
a. The Examiner's Conclusions and Appellant's Arguments
The Examiner concludes that the present claims are directed to an
abstract idea of a fundamental economic activity and a method of organizing
human activity (i.e., the Examiner concludes this is a mental process). Final
Act. 2.
In addition, the Examiner finds the present claims are not significantly
more than any abstract idea because they implement instructions using
generic components that are well-understood, routine, and conventional to
the abstract idea. Final Act. 2-3.
Appellant argues the present claims are significantly more than any
abstract idea because they satisfy the machine-or-transformation test. Br. 6,
9. And Appellant argues the present claims are significantly more than any
abstract idea because the present claims recite a solution rooted in computer
technology that satisfies persistent needs specifically arising in the field of
insurance; in particular, by providing efficiency improving features that
allow the provider to issue quotes for more than one insurance product
through the same graphical user interface. Id. at 7-8, 10-11. We disagree
with Appellant.
b. Legal Principles
Section 101 of the Patent Act provides "[ w ]hoever invents or
discovers any new and useful process, machine, manufacture, or
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composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title." 35 U.S.C. § 101. The Supreme Court has long held that this
provision contains an implicit exception: "'[l]aws of nature, natural
phenomena, and abstract ideas are not patentable."' Alice Corp. Pty. v. CLS
Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589-90 (2013)). The
Court has set forth a two-part inquiry to determine whether this exception
applies.
First, we must "determine whether the claims at issue are directed to
one of those patent-ineligible concepts." Alice, 134 S. Ct. at 2355. Second,
if the claims are directed to one of those patent-ineligible concepts, we
consider "the elements of each 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, 134 S. Ct. at
2355 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 77-78 (2012)). Put differently, we must search the claims for an
"inventive concept," that is, "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, 134 S. Ct. at 2355
(alteration in original) (quoting Mayo, 566 U.S. at 72-73).
c. Discussion
i. Alice Step 1
On this record, we discern no error in the Examiner's analysis and
conclusion that the present claims are directed to an abstract idea of a
fundamental economic activity and a method of organizing human activity
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(i.e., a mental process). Final Act. 2. Moreover, we conclude the present
claims are similar to the abstract idea of determining a price using
organizational and product group hierarchies in Versata Software, Inc., v.
SAP America, Inc., 717 F.3d 1255 (Fed. Cir. 2013).
Appellant does not make any arguments pertaining to Alice step 1.
Because the present claims are directed to an abstract idea, we proceed to
step (2) of the Alice, two-part test.
ii. Alice Step 2
On this record, we discern no error in the Examiner's analysis and
finding that present claims are not significantly more than any abstract idea
because they implement generic components that are well-understood,
routine, and conventional to the abstract idea. Final Act. 2-3. In particular,
paragraphs 26, 34, 55, and 76 discuss the generic nature of the software and
hardware components used to implement the abstract idea. Spec. ,r,r 26, 34,
55, 76.
We, therefore, disagree with Appellant's argument that the present
claims satisfy the machine-or-transformation test (Br. 6, 9) because the
present claims recite an abstract idea similar to Versata that implements
generic components as acknowledged in Appellant's Specification.
We also disagree with Appellant's argument that the present claims
recite a solution rooted in computer technology that satisfies persistent needs
specifically arising in the field of insurance; that is, by providing efficiency
improving features that allow the provider to issue quotes for more than one
insurance product through the same graphical user interface (id. at 7-8, 10-
11 ). We disagree because we conclude the present claims are directed to a
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solution to an abstract idea discussed supra that implements the abstract idea
using generic components.
Moreover, we note that accelerating a mental process with a processor
does not make claims patent eligible. Bancorp Servs., LLC v. Sun Life
Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012) ("Using a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.").
Appellant does not argue separately claims 22, 25-27, and 29-37 with
particularity, but asserts the rejections of those claims should be withdrawn
for at least the same reasons as the rejection for claim 20 should be
withdrawn. Br. 9, 11. Accordingly, we sustain the Examiner's rejection of
independent claims 20, 22, and 25-37 under 35 U.S.C. § 101.
2. Rejection Under 35 USC§ 103
The Examiner finds Solanki teaches approving a user's contract
quotes prior to acceptance and execution of the contract, which the
Examiner maps to the limitation
only after receiving a confirmation from the user by the web
server that the user meets the set of eligibility criterion for at least
one of the first and second insurance products, allowing the user
to pay the quotation to bind coverage for each confirmed
insurance product
as recited in claim 20 (and similarly recited in claim 28). Ans. 4 (citing
Solanki, 2:65-3:8). Additionally, the Examiner finds a person having
ordinary skill in the art at the time of the invention would have modified
Solanki's first request so that it could be repeated for a second request. Final
Act. 6.
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Appellant argues the Solanki fails to teach the user is allowed to pay
for at least one of the first and second insurance products to bind coverage
only after confirming that the user meets the associated eligibility
requirements. Br. 13. In addition, Appellant argues a person having
ordinary skill in the art at the time of the invention would not have been
motivated to arrive at the method recited in claim 20. Id. at 13-14.
The cited portions of Solanki teach approving a user's contract quotes
prior to acceptance and execution of the contract, which teaches the
limitation
only after receiving a confirmation from the user by the web
server that the user meets the set of eligibility criterion for at least
one of the first and second insurance products, allowing the user
to pay the quotation to bind coverage for each confirmed
insurance product
recited in claim 20 (and similarly recited in claim 28). Ans. 4 (citing
Solanki, 2:65-3:8). Furthermore, we agree with the Examiner's finding that
a person having ordinary skill in the art at the time of the invention would
have modified Solanki' s first request so that it could be repeated for a
second request. Final Act. 6. The Examiner provides this new finding
( citing Solanki, 2:65-3 :8) in the Answer and Appellant does not rebut it
because Appellant did not file a Reply Brief. Compare Final Act. 5-7, 12-
13 (no citation to Solanki, 2:65-3:8) with Ans. 4 (citing Solanki, 2:65-3:8).
And Appellant does not argue the specifics of why a person having ordinary
skill in the art at the time of the invention would not have been motivated to
arrive at the method recited in claim 20.
Moreover, in order to rebut a prima facie case ofunpatentability,
Appellant must distinctly and specifically point out the supposed Examiner
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errors, and the specific distinctions believed to render the claims patentable
over the applied references. See 37 C.F.R. § 4I.37(c)(vii) ("A statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."); see also In re Lovin, 652
F.3d 1349, 1357 (Fed. Cir. 2011) ("[W]e hold that the Board reasonably
interpreted Rule 41.3 7 to require 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 found in the prior art."); cf In re
Baxter Travenol Labs., 952 F.2d 388,391 (Fed. Cir. 1991) ("It is not the
function of this court to examine the claims in greater detail than argued by
an appellant, looking for [patentable] distinctions over the prior art.").
In this case, Appellant does not articulate sufficiently a specific
argument addressing any portions of Solanki. Instead, Appellant argues
Solanki fails to teach or suggest a limitation without giving specifics as to
what the cited portions of Solanki teach and why the cited portions of
Solanki fail to teach the limitation. Also, Appellant provides conclusory
allegations that a person having ordinary skill in the art at the time of the
invention would not have been motivated to arrive at the method recited in
claim 20 (App. Br. 13-14) rather than providing specific arguments.
Therefore, we are not persuaded of Examiner error in rejecting claim 20 as
obvious over Solanki.
Appellant does not argue separately claims 22, and 25-37 with
particularity, but asserts the rejections of those claims should be withdrawn
for at least the same reasons as the rejection for claim 20 should be
withdrawn. Br. 14--15. Accordingly, we sustain the Examiner's rejection of
independent claims 20, 22, and 25-37 under 35 U.S.C. § 103.
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We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
make, in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 20, 22, and 25-37
under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 20, 22, and 25-37
under 35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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