Ex Parte Burgoon et al

Patent Trials and Appeals Board

Jun 27, 2019

14290546 - (D) (P.T.A.B. Jun. 27, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/290,546 05/29/2014
321 7590 07/01/2019
STINSONLLP
7700 FORSYTH BOULEVARD, SUITE 1100
ST LOUIS, MO 63105
FIRST NAMED INVENTOR
J. David Burgoon JR.
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.
RGAR 5603.lC 6990
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
07/01/2019 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):
stl.uspatents@stinson.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte J. DAVID BURGOON JR., DAVID L. SNELL, and
SUSAN L. WEHRMAN
Appeal2017-008860 1
Application 14/290,5462
Technology Center 3600
Before ANTON W. PETTING, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-18. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("Br.," filed Oct. 3,
2016), and the Examiner's Answer ("Ans.," mailed Dec. 16, 2016) and Final
Office Action ("Final Act.," mailed May 3, 2016).
2 Appellants identify RGA Reinsurance Company as the real party in
interest. Br. 1.
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Application 14/290,546
CLAIMED INVENTION
Appellants' claimed invention "translate[ s] and map [ s] information
about an insurance applicant into a structured database," which "enables the
information to be more effectively and efficiently underwritten by either an
electronic program or a human underwriter." Spec. ,r 22.
Claims 1, 14, and 16 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A computerized method of transforming disparate
data for use in rendering a decision involving a potentially
insurable applicant, said method comprising:
[(a)] receiving, by a computer, data relating to the
applicant from a plurality of sources connected to the computer
by a communications network, said data being stored in a
memory of the computer in a plurality of formats;
[ (b)] accessing, by the computer, the received data stored
in the memory; and
[( c )] executing, by the computer, computer-executable
instructions for:
[ ( d)] extracting the received data from the memory
by inferential analysis;
[ ( e)] converting the extracted data from the
plurality of formats into one or more standard formats,
said converted data relating to insurability of the
applicant;
[ ( f)] filtering the converted data by one or more
relevancy factors assigned to the converted data, said
relevancy factors being a function of a decision to be
rendered by an underwriter regarding the insurability of
the applicant;
[ (g)] generating, from the filtered data, presentable
knowledge;
[(h)] presenting, via a visual tool, the presentable
knowledge to the underwriter for rendering the decision;
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[(i)] gathering collective information from
repeated and combined actions of independent individual
underwriters on the presentable knowledge as presented
to the underwriter by monitoring one or more repeated
and combined actions thereof on the presentable
knowledge via the visual tool;
[ U)] generating feedback as a function of the
monitored repeated and combined actions in response to
said gathering; and
[(k)] adjusting the presentable knowledge as
presented to the underwriter by adapting one or more of
said extracting, converting, and filtering steps as a
function of the generated feedback.
REJECTIONS
Claims 1-18 are rejected under 35 U.S.C. § 101 as judicially excepted
from statutory subject matter.
Claims 1, 3, 6, 8, 10, 11, 15, 3 and 174 are rejected under 35 U.S.C.
§ I03(a) as unpatentable over Collins (US 2011/0077977 Al, pub. Mar. 31,
2011), Pelenur (US 8,073,717 B2, iss. Dec. 6, 2011), and Bonissone
(US 7,844,477 B2, iss. Nov. 30, 2010).
Claim 13 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Pelenur, Bonissone, and Kareem S. Aggour et al., Automating the
Underwriting of Insurance Applications, AI MAGAZINE, Fall 2006 at 36-50
(hereinafter "AI").
3 It is unclear how the Examiner rejects claim 15 in view of its dependence
from claim 14, which is rejected over a different set of references.
4 It is unclear how claim 17 is rejected in view of its dependence from
claim 16, which is rejected over a different set of references.
3
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Claim 2 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Collins, Pelenur, Bonissone, and Imrey (US 2011/0178902 Al, iss. July 21,
2011).
Claims 4, 5, 9, and 12 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Collins, Pelenur, Bonissone, and Roudaut
(US 2009/0326987 Al, pub. Dec. 31, 2009).
Claims 145 and 186 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Collins, Roudaut, Pelenur, and Michael P. Voelker, The
(Business) Intelligence Community For Insurance: Insurers are Giving
More Information Access to the Business and Putting Control of New BI
Tools in the Hands Of Business Users, TECHDECISIONS FOR INSURANCE
(March 2010),
http://search.proquest.com/docview/832550494?accountid=14753
(hereinafter "Tech").
Claim 16 is rejected over Collins, Roudaut, Marc H. Meyer et al., The
Strategic Use of Expert Systems for Risk Management in the Insurance
Industry, ACM 551-572 (1999).
5 Claim 14 is additionally rejected over Bonissone, as set forth at pages 32-
33 of the Final Office Action.
6 It is unclear how the Examiner rejects claim 18 "using the same rationale
as claim 12," given the different references applied in the rejections of claim
18, which depends from claim 16, and claim 12, which depends from
claim 1.
4
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Claim 7 is rejected under 35 U.S.C. § I03(a) as unpatentable over
Collins, Pelenur, Bonissone, and Lange (US 2007 /0299760 Al, pub. Dec.
27, 2007). 7
ANALYSIS
Judicially-Excepted Subject Matter
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. Alice Corp. v. CLS Bank Int 'l, 573 U.S.
208,216 (2014).
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 Corp., 573 U.S. at 217.
The first step in that analysis is to "determine whether the claims at issue are
directed to one of those patent-ineligible concepts." Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered "individually and 'as an ordered combination'"
to determine whether there are additional elements that "'transform the
7 We treat the Examiner's omission of the Bonissone reference in the
rejection heading of claim 7 as inadvertent, in view of the claim's
dependence from claim 1.
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nature of the claim' into a patent-eligible application." Id. (quoting Mayo,
566 U.S. at 79, 78).
The Court acknowledged in Mayo, that "all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas." Mayo, 566 U.S. at 71. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
The U.S. Patent and Trademark Office (the "USPTO") published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. That guidance
"extracts and synthesizes key concepts identified by the courts as abstract
ideas to explain that the abstract idea exception includes" the following three
groupings: (1) mathematical concepts; (2) certain methods of organizing
human activity, e.g., fundamental economic principles or practices,
commercial or legal interactions; and (3) mental processes. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52
(Jan. 7, 2019) (the "2019 Revised Guidance"). 8
Under the 2019 Revised Guidance, in determining whether a claim is
patent-eligible, we first look to whether the claim recites a judicial
exception, including one of the enumerated groupings of abstract ideas
8 The Revised Guidance, by its terms, applies to all applications, and to all
patents resulting from applications, filed before, on, or after January 7, 2019.
84 Fed. Reg. 50.
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("Step 2A, Prong One"). Id. at 54. If so, we next consider whether the
claim includes additional elements, beyond the judicial exception, "that
integrate the uudicial] exception into a practical application," i.e., apply, rely
on, or use the judicial exception in a manner that imposes a meaningful limit
on the judicial exception, such that the clam is more than a drafting effort
designed to monopolize the judicial exception. ("Step 2A, Prong Two"). Id.
at 54--55.
Only if the claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application do we then look to
whether the claim "[a]dds a specific limitation or combination of
limitations" that is not "well-understood, routine, conventional activity in the
field" or simply "appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception" ("Step 2B"). Id. at 56.
With the legal principles outlined above, and the 2019 Revised
Guidance in mind, we tum to the Examiner's § 101 rejection. In rejecting
the pending claims under 35 U.S.C. § 101, the Examiner notified Appellants
that the claims are directed to transforming and presenting data to an
underwriter, which the Examiner concluded is similar to other concepts that
the courts have held abstract, such as a mathematical relationship. Final
Act. 18-19. The Examiner also determined that the claims do not include
additional elements or a combination of elements sufficient to amount to
significantly more than the abstract idea itself. Id. at 19-20. Specifically,
the Examiner determined that claim 1 requires no more than a general
purpose computer to perform generic functions that are well-understood,
routine, and conventional activities. Id. at 21.
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The Examiner, in our view, set forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of 35 U.S.C. § 132. And we find that, in doing so, the
Examiner established a prima facie case of patent-ineligibility. See In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (holding that the USPTO carries
its procedural burden of establishing a prima facie case when its rejection
satisfies the notice requirements of 35 U.S.C. § 132 by notifying the
applicant of the reasons for the rejection, "together with such information
and references as may be useful in judging the propriety of continuing []
prosecution"). Appellants' arguments to the contrary are unpersuasive. See
Br. 12-13.
Judicial Exception: Step One of the Mayo/Alice Framework; Step 2A, Prong
1 of the 2019 Revised Guidance
We are not persuaded that the Examiner overgeneralized claim 1 or
ignored how the transforming and presenting data is achieved. Br. 11. The
Federal Circuit has explained that "the 'directed to' inquiry applies a stage-
one filter to claims, considered in light of the [S]pecification, based on
whether 'their character as a whole is directed to excluded subject matter."'
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp., 790 F.3d at 1346). Here, the Specification,
including the claim language, make clear that the claims focus on an abstract
idea, and not on any improvement to computer technology and/or
functionality. The Specification is entitled "TRANSFORMING DAT A
FOR RENDERING AN INSURABILITY DECISION." The Specification
describes, in the Background section, that insurance companies typically
determine insurance premiums and rates for applicants based on the process
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of underwriting, which "measur[ es] risk exposure and determin[ e] the
premium that needs to be charged to insure that risk." Spec. ,r 1. Life
insurance underwriting involves determining an individual's relative
mortality; whereas, health insurance underwriting involves determining an
individual's relative morbidity. Id. The Specification describes that the
underwriting process studies a "a river of data," both medical and
nonmedical data from a plurality of internal and external sources, and an
"insurance underwriter is faced with the task of drinking from the fire hose."
Id. ,r 2. The standards for one source often vary widely from the standards
for another source. Id. Known underwriting processes use the information
to evaluate the risk of the applicant for insurance based on the type of
coverage involved; sometimes insurance companies use automated
underwriting systems to deliver an underwriting decision. Id. ,r 3. The
invention seek to "translate and map data from a medical record or the like
into a structured database to enable the data to be underwritten by either an
electronic program or a human underwriter." Id. ,r 4.
Consistent with this disclosure, claim 1 recites a computer-
implemented method for transforming disparate data for use in rendering a
decision involving a potentially insurable applicant, comprising: "receiving
... data relating to the applicant from a plurality of sources ... , said data
being stored ... in a plurality of formats" (limitation (a)); "accessing ... the
received data stored" (limitation (b) ); and "executing ... instructions for
[performing limitations (d)-(k)]" (limitation (c)); "extracting the received
data ... by inferential analysis" (limitation ( d) ); "converting the extracted
data from the plurality of formats into one or more standard formats, said
converted data relating to insurability of the applicant" (limitation ( e) );
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"filtering the converted data by one or more relevancy factors assigned to
the converted data, said relevancy factors being a function of a decision to
be rendered by an underwriter regarding the insurability of the applicant"
(limitation (f)); "generating, from the filtered data, presentable knowledge"
(limitation (g)); "presenting ... the presentable knowledge to the
underwriter for rendering the decision" (limitation (h)); "gathering collective
information from repeated and combined actions of independent individual
underwriters on the presentable knowledge as presented to the underwriter
by monitoring one or more repeated and combined actions thereof on the
presentable knowledge" (limitation (i)); "generating feedback as a function
of the monitored repeated and combined actions in response to said
gathering" (limitation U)); and "adjusting the presentable knowledge as
presented to the underwriter by adapting one or more of said extracting,
converting, and filtering steps as a function of the generated feedback"
(limitation (k)). These limitations, when given their broadest reasonable
interpretation, recite a method for processing and presenting data to an
underwriter for use in rendering a decision involving a potentially insurable
applicant, i.e., a fundamental economic practice, which is a certain method
of organizing human activity, and, therefore, an abstract idea. See 2019
Revised Guidance 52.
Practical Application: Step One of the Mayo/Alice Framework; Step 2A,
Prong 2 of the 2019 Revised Guidance
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we next consider whether the claim recites additional elements
that integrate the judicial exception into a practical application. Here, the
additional elements recited in claim 1, beyond the abstract idea, include the
claimed "computer" that performs the method steps (limitations (a}-( c) ),
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"memory" of the computer (limitations (a), (b ), ( d) ), "a plurality of sources"
(limitation (a)), a "communications network" (limitation (a)), computer-
executed instructions" for performing limitations ( d}-(k), and a "visual tool"
(limitations (h), (i)). These elements are described in the Specification at a
high level of generality, i.e., as an assembly of generic computer
components. See, e.g., Spec. ,r,r 72 ("the present invention may comprise a
... general purpose computer including a variety of computer hardware), 73
("computer-readable media for carrying or having computer-executable
instructions or data structures stored thereon ... can be any available media
that can be access by a general purpose ... computer").
We find no indication in the Specification, nor do Appellants direct us
to any indication, that the operations recited in claim 1 require any
specialized computer hardware or other inventive computer components,
i.e., a particular machine, invoke any assertedly inventive programming, or
that the claimed invention is implemented using other than generic computer
components to perform generic computer functions. See DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.").
Citing Enfzsh, Appellants argue that the claim 1 is "directed to a
specific implementation of a solution to a problem in the software arts."
Br. 8. Specifically, Appellants contend that the present invention addresses
a problem with conventional underwriting techniques in which an
underwriter must display the beginning of a file and scroll through, which is
akin to "'drinking from the fire hose."' Id. ( quoting Spec. ,r 2). Appellants
assert that the present application "solves a complex problem in
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transforming and presenting disparate data for rendering an underwriting
decision" that "actually 'improve[ s] the functioning of the computer itself."'
Id. at 9 (quoting Alice, 573 U.S. at 211).
However, Appellants make clear that the problem the claimed
invention seeks to address is not a problem peculiar to the software arts.
See, e.g., Spec. ,r,r 2-3 ( describing that the underwriting process faces
challenges in processing a large volume data, and that insurance companies
"sometimes use automated underwriting systems"). The Specification also
makes clear that the solution is not directed to an improvement to a
computer, but rather seeks to improve the abstract idea itself. See, e.g.,
Spec. ,r,r 8 ( describing that the claim invention "translate[ s] and map[ s] data
from a medical record or the like into a structured database to enable the
data to be underwritten by either an electronic program or a human
underwriter"); 22 ( describing that the structured data output by the claimed
invention enables such "information to be more effectively and efficiently
underwritten by either an electronic program or a human underwriter); and
22 ("[t]he structured data is preferably used for further underwriting
evaluation, either by an automated system or by a human underwriter").
We find nothing in the Specification, nor do Appellants direct us to
anything in the Specification, that attributes any improvement in computer
resource utilization to the claimed invention. Instead, it appears that
translating and mapping data into a structured data makes the process of
underwriting evaluation easier and more manageable for a human
underwriter or an automated system. This may well assist implementing the
abstract idea, but it is not an improvement in computer technology and/or
functionality.
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We also are not persuaded by Appellants' arguments regarding
preemption. Br. 9. Although the Supreme Court has described "the concern
that drives [the exclusion of abstract ideas from patent eligible subject
matter] as one of pre-emption" (Alice Corp., 573 U.S. at 216), characterizing
preemption as a driving concern for patent eligibility is not the same as
characterizing preemption as the sole test for patent eligibility. "The
Supreme Court has made clear that the principle of preemption is the basis
for the judicial exceptions to patentability" and "[ fJor this reason, questions
on preemption are inherent in and resolved by the§ 101 analysis." Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
( citing Alice Corp., 573 U.S. at 216). "[P]reemption may signal patent
ineligible subject matter, [but] the absence of complete preemption does not
demonstrate patent eligibility." Id.
In sum, we are not persuaded by Appellants' arguments that claim 1
includes additional elements or a combination of elements that improves
computer technology and/or functionality, effects a transformation or
reduction of a particular article to a different state or thing, or otherwise
integrates the abstract idea into a "practical application," as that phrase is
used in the Revised Guidance.
Inventive Concept: Step Two of the Mayo/Alice Framework; Step 2B of the
2019 Revised Guidance
Having determined under Step 2A that claim 1 is directed to an
abstract idea, we next consider under Step 2B, the second step of the
Mayo/Alice framework, whether claim 1 adds specific limitations beyond the
judicial exception that are not "well-understood, routine, conventional" in
the field, or simply appends well-understood, routine, conventional activities
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previously known to the industry, specified at a high level of generality, to
the judicial exception.
As described above, the only claim elements beyond the abstract idea
are the claimed generic computing components used to perform that
performs the method steps. Appellants cannot reasonably maintain, nor do
they, that there is a genuine issue of material fact regarding whether
operation of any of these components is well-understood, routine, or
conventional, where, as here, there is nothing in the Specification to indicate
that the operations recited in claim 1 require any specialized hardware or
inventive computer components or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions, e.g., receiving, processing, and transmitting
information. Indeed, the Federal Circuit, in accordance with Alice, has
"repeatedly recognized the absence of a genuine dispute as to eligibility"
where claims have been defended as involving an inventive concept based
"merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality."
Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J.,
concurring) ( citations omitted); see also BSG Tech. LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1291 (Fed. Cir. 2018) ("BSG Tech does not argue that other,
non-abstract features of the claimed inventions, alone or in combination, are
not well-understood, routine and conventional database structures and
activities. Accordingly, the district court did not err in determining that the
asserted claims lack an inventive concept.").
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We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner's rejection of claim 1, and its dependent claims.
With respect to independent claims 14 and 16, these claims recite
substantially similar subject matter and are argued together with claim 1.
See Br. 7-11. However, Appellants additionally summarily assert that the
Examiner's rejection of claims 14 and 16, like the rejection of claim 1,
ignores how the abstract idea is achieved, as specified by claims 14 and 16.
See id. at 11. Appellants assert that claim 14 results in improved computer
functioning by dynamically adjusting the presentable knowledge, and claim
16 improves the functioning of the computer by adjusting the heuristic
engine as a function of the decision to be rendered. Id. at 10. Yet, for the
same reasons described with respect to claim 1, the improvement described
by Appellants with respect to claims 14 and 16 is to the abstract idea, not an
improvement in computer functionality. Appellants do not provide any
substantive analysis or technical reasoning to support these assertions.
Accordingly, we are not persuaded that the Examiner erred in rejecting
claims 14--18 under 35 U.S.C. § 101.
Obviousness
Independent Claim 1 and Dependent Claims 2-17
We are persuaded that the Examiner erred in rejecting claim 1 under
35 U.S.C. § 103(a) because Bonissone does not teach or suggest limitations
U) and (k), as recited in claim 1. The Examiner relies on Bonissone at
column 32, line 63 to column 33, line 12 as disclosing these limitations.
Bonissone relates to a process for underwriting insurance applications
based on a flexible fuzzy rule logic based system. Bonissone, col. 1, 11. 14--
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1 7. In the Background section, Bonissone describes that a large amount of
variability exists in the insurance underwriting process performed by
individual underwriters. Id. at col. 1, 11. 31-33. Standards cannot cover all
situations, and the underwriter's subjective judgment almost always plays a
role. Id. at col. 1, 11. 33-38. "Most of the key information for automated
insurance underwriting is structured and standardized." Id. at col. 1, 11. 58-
59. However, some sources, such as an attending physician statement
("APS"), tend to be unique, non-standard, and not amenable to
standardization. Id. at col. 1, 11. 59---63; see also id. at col. 28, 11. 43--45 ("the
free-form nature of an attending physician statement (APS) may not be
suitable to automated parsing and interpretation"). Many applications
require the use of one or more APS, and in such cases, the application
underwriting process cannot be automated. Id. at col. 1, 11. 63---67.
Conventionally, human underwriters read the APS, which may be a
document several tens of pages long. Id. at col. 2, 11. 1--4; see also id. at col.
32, 11. 32-34 ("the APS itself can be several tens of pages of doctor's
notes").
Bonissone describes a summarization tool that converts essential input
variables from the APS into a structured form, suitable for storage in a
database. Id. at col. 28, 11. 46--48. The APS summarization tool captures the
relevant variables that characterize a medical impairment, allowing an
automated reasoning system to determine the degree of severity of such
impairment and to estimate the underlying insurance risk. Id. at col. 29,
11. 6-10. The summarizer verifies that the APS corresponds to the correct
applicant by matching information on the APS with information about the
applicant known by the system, such as applicant's name, date of birth, and
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social security number. Id. at col. 29, 11. 41--42. A general form provides a
fixed structure to capture the data. Id. at col. 29, 11. 65----67. A condition
form may be required after the general form is completed and validated. Id.
at 30, 11. 54--56. These forms are written in HTML and JavaScript. Id. at 32,
11. 58----60. Once the summarization is complete for the general form and any
selected condition-specific forms, the summarizer submits the results. Id. at
col. 32, 11. 18-20. The APS summary is designed to capture only the data
fields that are relevant to the problem at hand. Id. at col. 32, 11. 34--35.
Bonissone describes that the invention has been tested by experienced
underwriters. Id. at col. 32, 11. 63----64. In particular, the experienced
underwriters view the general and condition-specific summary forms and the
data from an actual APS entered onto the form. Id. at col. 32, 11. 63----66. The
underwriter provides comments and feedback on the form to aid "continual
improvement of the forms." Id. at col. 32, 1. 66-col. 33, 1. 1.
The Examiner takes the position that "the underwriter comments are
used to continually improve the forms," and provide "a feedback, or a
modification to improve the forms by evaluating the comments on the
forms." Yet, the feedback provided in Bonissone is generated by an
underwriter providing comments regarding the summary forms in light of
data from the APS. Because the underwriter comments are directly provided
and submitted, the feedback cannot be generated "as a function of the
monitored repeated and combined actions in response to said gathering
[gathering collective information from repeated and combined actions of
independent individual underwriters on the presentable knowledge as
presented to the underwriter by monitoring one or more repeated and
combined actions thereof, i.e., limitation (i)]," as recited by limitation U).
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Likewise, that Bonissone teaches that the summary forms have been tested
by underwriters does not teach that the presentable knowledge presented to
the underwriter has been adjusted by adapting one or more of limitations
( d}-( f) as a function of the generated feedback.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 1 and dependent claims 3, 6, 8, 10, and 11 under
35 U.S.C. § 103(a).
The Examiner's rejections of dependent claims 2, 4--5, 7 and 12 under
35 U.S.C. § 103(a) does not cure the deficiency in the rejection of
independent claim 1. Therefore, we do not sustain the Examiner's rejections
of claims 2, 4--5, 7, and 12 under 35 U.S.C. § 103(a) for similar reasons set
forth above with respect to claim 1.
Independent Claim 14 and Dependent Claim 15
Claim 14 recites language similar to claim 1, and is rejected based on
a similar erroneous findings regarding Bonissone as applied to claim 1. See
Final Act. 32-33. Therefore, we do not sustain the Examiner's rejection of
independent claim 14 under 35 U.S.C. § 103(a) for similar reasons to those
presented above with respect to independent claim 1.
The Examiner's rejections of dependent claim 15 under 35 U.S.C.
103(a) does not cure the deficiency in the rejection of independent claim 14
and, thus, is not sustained.
Independent Claim 16 and Dependent Claims 17 and 18
Claim 16 recites a system comprising a computer that executes "a
heuristic engine for analyzing the transformed data for relevancy to a
decision to be rendered involving the potentially insurable applicant and
assigning one or more relevancy factors to the analyzed data as a function of
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Appeal2017-008860
Application 14/290,546
the decision to be rendered, said relevancy factors providing an improved
user experience by enabling the computer to adjust the heuristic engine as a
function of the decision to be rendered." The Examiner relies on Roudaut as
disclosing the argued limitation. Final Act. 34--35 (citing Roudaut ,r,r 29, 38,
41, 43, and 44).
We have reviewed the cited portions of Roudaut. Yet, we find
nothing in the cited portions that teaches the argued limitation. Roudaut
discloses that heuristics techniques are used to determine insurance
coverage. Roudaut ,r,r 6, 29. For example, we find nothing in the cited
portions describing making adjustments to Roudaut' s heuristics techniques
as a function of the insurance coverage ( e.g., decision to be rendered), as
required by claim 16. Additionally, we find nothing in the cited portion
describing a heuristic engine analyzing the transformed data for relevancy to
a decision to be rendered involving the potentially insurable applicant, as
required by claim 16.
In view of the foregoing, we do not sustain the Examiner's rejection
of independent claim 16.
The Examiner's rejections of dependent claims 17 and 18 under
35 U.S.C. § 103(a) does not cure the deficiency in the rejection of
independent claim 16. Therefore, we also do not sustain the Examiner's
rejections of claims 17 and 18 under 35 U.S.C. § 103(a).
DECISION
The Examiner's rejection of claims 1-18 under 35 U.S.C. § 101 is
affirmed.
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Appeal2017-008860
Application 14/290,546
The Examiner's rejections of claims 1-18 under 35 U.S.C. § 103(a)
are reversed.
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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