Ex Parte Collopy et al

Patent Trial and Appeal Board

Jan 12, 2018

14101208 (P.T.A.B. Jan. 12, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/101,208 12/09/2013 Fred Collopy VSBLP101USK 7113
23623 7590 01/17/2018
AMIN, TUROCY & WATSON, LLP
127 Public Square
57 th Floor, Key Tower
CLEVELAND, OH 44114
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
01/17/2018 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):
hmckee@thepatentattomeys.com
rveri@thepatentattorneys.com
docket @ thepatentattorney s. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FRED COLLOPY,
CRAIG ALLEN NARD, HIMANSHU S. AMIN,
GREGORY TUROCY, SEYED VAHID SHARIFI TAKIEH,
RONALD CHARLES KROSKY, DAVID NOONAN,
GUSTAVO ARNALDO NARVAEZ, and BRIAN ASQUITH
Appeal 2017-008273
Application 14/101,208
Technology Center 3600
Before ERIC S. FRAHM, STEVEN M. AMUNDSON, and
JASON M. REPKO, Administrative Patent Judges.
AMUNDSON, Administrative Patent Judge.
DECISION ON APPEAL
Appellants1 seek our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1 and 3—21, i.e., all pending claims. We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm.
1 Appellants identify the real party in interest as Great Lakes Incubator,
LLC. Br. 2.
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Application 14/101,208
STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns “optimizing
insurance from the perspective of both the insurance provider and the
insurance purchaser” by using “real time (or near real time) analytics ... to
selectively provide information related to a potential adjustment to insurance
premiums, coverage, and other parameters.” Spec. 1 5.2 The Specification
explains that “[djynamic insurance rate adjustments are communicated to a
vehicle operator in order to allow the vehicle operator to adjust various
parameters before an actual change to an insurance rate is communicated to
a service provider or trusted third party.” Abstract. The communication to
the vehicle operator can include: (1) “a statement (e.g., ‘Based on your
current speed, you can be accessed a surcharge of ten percent.’, ‘Since you
have been driving the correct speed limit for the past two hours, you can
expect a fifteen percent discount in your insurance base rate this month.’)”;
or (2) “a question (e.g., ‘Would you like to continue driving erratically for
an insurance surcharge of ten dollars per week, bringing your total costs to
xxx dollars per month?’, ‘Since you have been operating your vehicle in the
proper manner, would you like a rebate or would you like to apply your
earned discount to your current policy and extend that policy by one
month?’).” Spec. 36—37.
2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed December 9, 2013; “Final Act.” for the Final Office
Action, mailed April 1, 2016; “Br.” for the Appeal Brief, filed November 1,
2016; and “Ans.” for the Examiner’s Answer, mailed January 31, 2017.
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Exemplary Claims
Independent claims 1 and 11 exemplify the claims at issue and read as
follows:
I. A method, comprising:
receiving, by a system comprising a processor and
memory that stores thereon computer executable instructions,
real-time machine data relating to operation of a vehicle and
environmental data relating to operation of the vehicle, the
environmental data including at least weather and road
condition information collected from sensors associated with
the vehicle or sensors external to the vehicle;
analyzing, by the system in real-time, the received
vehicle operation machine data and environmental data;
determining, by the system in real-time, a change to an
insurance premium based on the received real-time machine
data associated with the vehicle and environmental data;
outputting, by the system in real-time, the change to the
insurance premium to an operator of the vehicle while the
vehicle is being operated;
entering into a dialogue with the operator regarding
whether or not the operator accepts the change to the insurance
premium;
receiving, by the system, a response from the operator
while the vehicle is being operated, the response is related to
the change to the insurance premium; and
determining, by the system in real-time, another change
to the insurance premium based at least in part on the response.
II. A system, comprising:
a processor; and
a memory that stores executable instructions that, when
executed by the processor, facilitate performance of operations,
comprising:
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receiving real-time machine data related to
operation of a vehicle and environmental data relating to
operation of the vehicle, the environmental data
including at least weather and road condition information
collected from sensors associated with the vehicle or
sensors external to the vehicle;
analyzing the received real-time vehicle operation
machine data and environmental data;
dynamically determining, based in part on the
received real-time vehicle operation machine data and
environmental data, an insurance premium;
outputting a first change to the insurance premium
to an operator of the vehicle while the vehicle is being
operated;
entering into a dialogue with the operator
regarding whether or not the operator accepts the change
to the insurance premium;
receiving a response from the operator while the
vehicle is being operated, the response is related to the
first change to the insurance premium; and
determining a second change to the insurance
premium based at least in part on the response.
Br. 78, 80 (Claims App.).
The Rejection on Appeal
Claims 1 and 3—21 stand rejected under 35U.S.C. § 101 as directed to
non-statutory subject matter. Final Act. 2.
ANALYSIS
We have reviewed the rejection in light of Appellants’ arguments that
the Examiner erred. For the reasons explained below, we disagree with
Appellants’ assertions regarding Examiner error. We concur with the
Examiner’s conclusion concerning unpatentability under § 101. We adopt
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the Examiner’s findings and reasoning in the Final Office Action (Final
Act. 2—5) and Answer (Ans. 3—5). We add the following to address and
emphasize specific findings and arguments.
The §101 Rejection of Claims 1 and 3—21
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or 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. In Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice
Corp. v. CLS Bank International, 134 S. Ct. 2347, 2354 (2014), the Supreme
Court explained that § 101 “contains an important implicit exception” for
laws of nature, natural phenomena, and abstract ideas. See Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter:
First, “determine whether the claims at issue are directed to” a patent-
ineligible concept, such as an abstract idea. Alice, 134 S. Ct. at 2355. If so,
“consider the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements” add enough to
transform the “nature of the claim” into “significantly more” than a patent-
ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see
Affinity Labs of Tex., LLCv. DIRECTV, LLC, 838 F.3d 1253, 1257
(Fed. Cir. 2016).
Step one in the Mayo!Alice framework involves looking at the “focus”
of the claims at issue and their “character as a whole.” Elec. Power Grp.,
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LLCv. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLCv.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves
the search for an “inventive concept.” Alice, 134 S. Ct. at 2355; Elec. Power
Grp., 830 F.3d at 1353. An “inventive concept” requires more than “well-
understood, routine, conventional activity already engaged in” by the
relevant community. RapidLitig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d
1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80). But “an
inventive concept can be found in the non-conventional and non-generic
arrangement of known, conventional pieces.” BASCOM Global Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
Under step two, “an inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
A Prima Facie Case of Unpatentability
Appellants argue that the Examiner erred in rejecting the independent
claims 1,11, and 17 under § 101 because the Examiner “fails to address
each element of the independent claim separately as required under the law
in a 35 U.S.C. § 101 analysis of patent-eligible subject matter,” and
therefore “has not made a prima facie case that the independent claim is
abstract and not patentable . . . .” Br. 31—32, 52, 74. Appellants similarly
argue that the Examiner “fails to address each element of’ each dependent
claim, and therefore “has not made a prima facie case that the dependent
claim is abstract and not patentable . . . .” Id. at 32—35, 53—54, 74—75.
Appellants’ arguments do not persuade us of Examiner error because
they rest on an incorrect view a patent-eligibility analysis according to Mayo
and Alice. Under Mayo!Alice step one, “the claims are considered in their
entirety to ascertain whether their character as a whole is directed to
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excluded subject matter.” Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015).
Further, the Federal Circuit has repeatedly explained that “the prima
facie case is merely a procedural device that enables an appropriate shift of
the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir.
2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The
“PTO carries its procedural burden of establishing a prima facie case when
its rejection satisfies 35 U.S.C. § 132, in ‘notifying] the applicant. . . [by]
stating the reasons for [its] rejection, or objection or requirement, together
with such information and references as may be useful in judging of the
propriety of continuing the prosecution of [the] application.’” In re Jung,
637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132) (alterations
in original). The PTO violates § 132 “when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to counter the
grounds for rejection.” Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir.
1990). But if the PTO “adequately explain[s] the shortcomings it perceives
. . . the burden shifts to the applicant to rebut the prima facie case with
evidence and/or argument.” Hyatt, 492 F.3d at 1370.
We conclude that the Final Office Action adequately explains the
§101 rejection. See Final Act. 2—5. The Examiner determines that the
claims are directed to the fundamental economic practices of calculating an
insurance premium and “forming a new insurance contract” through a
“dialogue” with an operator regarding “accepting the new contract.” Final
Act. 3 (emphasis omitted); see Ans. 3^4. The Examiner also determines that
the additional elements in the claims individually and in combination
amount to “no more than: mere instructions to implement the [abstract] idea
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on a computer and recitation of generic computer structure that serves to
perform generic computer functions that are well-understood, routine, and
conventional activities previously known to the pertinent industry.” Final
Act. 3^1.
The Examiner’s statements satisfy § 132 because they apply the
Mayo!Alice analytical framework and apprise Appellants of the reasons for
the § 101 rejection under that framework. As discussed in more detail
below, Appellants recognize the Examiner’s Mayo/Alice analysis and
present arguments regarding each step. See Br. 14—32, 35—52, 55—74.
Appellants do not respond by alleging a failure to understand the rejection.
Id. at 14—76. As the Examiner explains, the Examiner “did consider each
and every claim” including “each and every dependent claim[] and nothing
was found to help the claims viewed as a whole to” satisfy Mayo!Alice
step one or step two. Ans. 5.
Mayo/Alice Step One
Appellants assert that independent claims 1,11, and 17 “are clearly
not an abstract idea” because they recite: (1) “a combination of components,
elements, steps or means plus function that in total describe a meaningful
improvement to the field of dynamically adjusting an insurance rate” based
on real-time data; (2) “using a particular machine”; (3) a “transformation of
information”; and (4) “specific limitations that confine the claims to the
particular useful application” of adjusting an insurance premium based on
real-time data. Br. 16—18, 37—39, 58—59.
Appellants’ assertions do not persuade us of Examiner error because
we agree with the Examiner that the claims are directed to the fundamental
economic practices of calculating an insurance premium and “forming a new
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insurance contract” through a “dialogue” with an operator regarding
“accepting the new contract.” Final Act. 3 (emphasis omitted); see
Ans. 3^4. The claims encompass the business practice of updating (or
attempting to update) an insurance contract based on the most current
information. For instance, insurance companies often update (or attempt to
update) insurance contracts annually based on the most current information,
e.g., accidents occurring and speeding tickets received within the last twelve
months. See Ans. 4 (discussing “‘dynamically generated’ bank statements
[received] in ‘real time’”). Consistent with this, the Specification notes that
real-time data may be provided to an operator “for information purposes
only and an actual change in an insurance premium might be based on
information gathered over time (e.g., one week, two months, a year, and so
forth).” Spec. 153.
Appellants’ contentions concerning “a meaningful improvement to the
field of dynamically adjusting an insurance rate” based on real-time data do
not persuade us of Examiner error because the claimed systems and methods
do not improve the functioning of any product or technological process. See
Alice, 134 S. Ct. at 2358 (explaining that “the claims in Diehr were patent
eligible because they improved an existing technological process”); see also
Ans. 3—5. For example, the claims do not cover an improved sensor for
obtaining real-time data or an improved driver-communication system. See
Ans. 4. Instead, the claims seek to “optimiz[e] insurance from the
perspective of both the insurance provider and the insurance purchaser” by
updating or adjusting an insurance premium based on real-time data. See,
e.g., Spec. 11 5-9, 32, 49, 53-57, 69-77, Figs. 5-6; Br. 15-16, 36-37, 57;
see also Final Act. 3. As the Examiner determines, “calculation of the
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insurance premium is a fundamental economic practice.” Final Act. 3
(emphasis omitted).
Appellants’ contentions concerning “using a particular machine” do
not persuade us of Examiner error because implementing an abstract idea
using a “physical machine” does not impart patent eligibility. See Mayo,
566 U.S. at 84. In Alice, for example, “[a]ll of the claims [we]re
implemented using a computer.” 134 S. Ct. at 2353, 2360. “[N]ot every
claim that recites concrete, tangible components escapes the reach of the
abstract-idea inquiry.” In re TLI Commc ’ns LLC Patent Litig., 823 F.3d
607,611 (Fed. Cir. 2016).
Appellants’ contentions concerning a “transformation of information”
do not persuade us of Examiner error because the Federal Circuit has ruled
that claims covering the transformation of information in one form
(“a functional description of a logic circuit”) into another form (“a hardware
component description of the logic circuit”) were directed to abstract ideas.
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 1150—51
(Fed. Cir. 2016); see Gottschalkv. Benson, 409 U.S. 63, 71—74 (1972)
(holding that claims covering methods for converting binary-coded decimal
numbers to binary numbers did not satisfy § 101).
Appellants’ contentions concerning a “particular useful application”
do not persuade us of Examiner error because “limiting an abstract idea to
one field of use” does not impart patent eligibility. See Bilski v. Kappos,
561 U.S. 593, 612 (2010); see also Parker v. Flook, 437 U.S. 584, 589—90
(1978); Affinity Labs, 838 F.3d at 1259.
Appellants argue that “the present application is a clear improvement
over existing computerized technologies” and existing “technological
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systems (e.g., existing insurance rate and policy selection and adjustment
tools, etc.).” Br. 16, 18, 37, 39, 58, 60. Appellants also argue that “the
various embodiments disclosed by the present application provide
improvements to the functionality and use of a conventional computerized
device (e.g., a server, computer, controller device, a wireless device, etc.).”
Id. at 18-19, 39-40, 60.
Appellants’ arguments do not persuade us of Examiner error.
“[Rjelying on a computer to perform routine tasks more quickly or more
accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Here, the
claimed “processor” performs routine tasks involving data collection,
communication, and processing. See Final Act. 3^4; Ans. 3^4. The Federal
Circuit has ruled that claims covering data collection, communication, and
processing were directed to abstract ideas. See, e.g., Credit Acceptance
Corp. v. Westlake Servs., 859 F.3d 1044, 1047, 1054—56 &n.6 (Fed. Cir.
2017); Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d
1332, 1339-40 (Fed. Cir. 2017); Elec. Power Grp., 830 F.3d at 1351-54.
Based on Enfish v. Microsoft, Appellants contend that the claims
concern “improvements in computer capabilities,” i.e., repeated (1) “real­
time analysis of’ data, (2) recalculations of insurance premiums, and
(3) driver communications concerning changed insurance premiums.
Br. 14—16, 35—37, 55—58. Appellants assert that “[t]his is a significant
advancement in computer capabilities” because “the computer . . . collects]
in real-time machine operation and environmental data, analyzes] it, and in
turn determines] in real-time changes to insurance premiums.” Id.
at 15-16, 36-37, 57.
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We disagree. The “mere automation of manual processes using
generic computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance, 859 F.3d at 1055. Here, the claims
automate the manual processes of collecting information relevant to the
recalculation of an insurance premium, performing the recalculation, and
communicating the changed insurance premium. See, e.g., Br. 15—16,
36—37, 57. Appellants do not describe an advance in hardware or software
that, for example, causes a computer to operate faster or more efficiently.
The claims do not concern an improvement to computer functionality but
instead use computers as tools to perform tasks computers routinely perform,
e.g., data processing. See Elec. Power Grp., 830 F.3d at 1354; see also Final
Act. 3—5. In contrast to the claims here, the claims in Enfish were directed
to a “specific improvement to the way computers operate,” i.e., an improved
database configuration that permitted faster searching for data. Enfish,
822 F.3d at 1330-33, 1336.
Appellants assert that: (1) claims 1,11, and 17 require acts that
“inherently cannot be done by humans because humans cannot” perform the
claimed acts; and (2) “the impossibility of implementation by a human”
establishes patent eligibility. Br. 19, 24, 40, 45, 61, 66. But the inability of
a human to accomplish each limitation “does not alone confer patentability.”
See FairWarning, IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016).
Appellants cite Intellectual Ventures I v. Capital One and quote the
special master’s analysis for one patent, i.e., the ’081 patent. Br. 28—29,
49—50, 70—71; see Intellectual Ventures I LLC v. Capital One Fin. Corp.,
No. PWG-14-111, 2015 WL 13609788, at *8 (D. Md. May 12, 2015).
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Based on that analysis, Appellants contend that claims 1,11, and 17 are
directed to a “specific implementation” and “not an ‘abstract idea’ of
‘merely adjusting insurance premiums’.” Br. 29, 50, 71—72. Appellants
misplace their reliance on the special master’s analysis in Intellectual
Ventures I v. Capital One. The district court rejected the special master’s
conclusions concerning patent eligibility for the asserted ’081 patent claims
and decided that they did not satisfy § 101. Intellectual Ventures ILLC v.
Capital One Fin. Corp., 127 F. Supp. 3d 506, 509, 515-26 (D. Md. 2015).
On appeal, the Federal Circuit concluded that “the asserted claims of the
’081 patent d[id] not meet the standard for eligibility under § 101 and
affirm[ed] the district court’s entry of summary judgment” against the
patentee. Intellectual Ventures I, 850 F.3d at 1340-42.
Appellants cite Intellectual Ventures I v. Symantec and quote the
district court’s analysis for one asserted claim, i.e., ’610 patent claim 7.
Br. 29—30, 50—51, 72; see Intellectual Ventures I LLC v. Symantec Corp.,
100 F. Supp. 3d 371, 396, 400 (D. Del. 2015). Based on that analysis,
Appellants contend that claims 1,11, and 17 are directed to an “insurance
centric problem” having “specific computer and network centric
implications,” and therefore patent eligible under Mayo!Alice step one.
Br. 30, 51, 72—73. Appellants misplace their reliance on the district court’s
analysis in Intellectual Ventures I v. Symantec. On appeal, the Federal
Circuit decided that all asserted claims, including ’610 patent claim 7, did
not satisfy § 101. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d
1307, 1316, 1319-22 (Fed. Cir. 2016).
Appellants argue that “the claims clearly do not preempt or cover the
full abstract idea of ‘switching insurance’, and thus are eligible for patent
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protection . . . Br. 28, 49, 70. That argument does not persuade us of
Examiner error. See Final Act. 4—5 (addressing preemption); Ans. 4
(addressing preemption). While preemption may denote patent ineligibility,
its absence does not demonstrate patent eligibility. See FairWarning,
839 F.3d at 1098. For claims covering a patent-ineligible concept,
preemption concerns “are fully addressed and made moot” by an analysis
under the MayolAlice framework. Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Appellants note that in PNC Bank v. Secure Axcess, LLC, CBM2014-
00100, 2014 WF 4537440, at *12 (PTAB Sept. 9, 2014), the Board cited
Alice footnote 3 in its analysis under step one. Br. 22, 43, 64. Footnote 3
concerns step two, not step one. Alice, 134 S. Ct. at 2355 & n.3. Footnote 3
and the sentence it relates to read as follows:
We have described step two of this analysis as a 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.”3
3 Because the approach we made explicit in Mayo considers all
claim elements, both individually and in combination, it is
consistent with the general rule that patent claims “must be
considered as a whole.” Diamond v. Diehr, 450 U.S. 175,
188 (1981).
Alice, 134 S. Ct. at 2355 & n.3 (alteration in original) (additional citations
omitted).
Mayo!Alice Step Two
Appellants assert that claims 1,11, and 17 satisfy Mayo!Alice step two
because: (1) they recite “complex” and “demonstrably innovative” systems
and methods “with respect to existing technological systems in this field”;
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(2) “no art has disclosed or suggested the subject claims”; and (3) the
Examiner “fails to cite suitable references that anticipate or make obvious”
the claimed subject matter. Br. 20-21, 23—24, 26, 41—42, 44^45, 47, 62—63,
65—66, 68.
Appellants’ assertions do not persuade us of Examiner error. “The
search for a § 101 inventive concept is . . . distinct from demonstrating § 102
novelty.” Synopsys, 839 F.3d at 1151; see Two-Way Media Ltd. v. Comcast
Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017). “[Ujnderthe
Mayo!Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility.” Genetic
Techs. Ltd. v. MerialL.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016).
“[A] claim for a new abstract idea is still an abstract idea.” Synopsys,
839 F.3d at 1151. Similarly, a claim for a beneficial abstract idea is still an
abstract idea. SeeAriosa Diagnostics, 788 F.3d at 1379-80. Further, the
Federal Circuit has expressly rejected the notion that “abstract ideas remain
patent-eligible under § 101 as long as they are new ideas, not previously
well known, and not routine activity.” Ultramercial, Inc. v. Hulu, LLC,
772 F.3d. 709, 714—16 (Fed. Cir. 2014). Thus, the claims’ alleged novelty,
nonobviousness, and benefits fail to provide an “inventive concept” needed
to satisfy § 101.
We agree with the Examiner that the additional elements in the claims
do not provide meaningful limitations and do not individually or in
combination transform the claims into “significantly more” than patent-
ineligible abstract ideas. See Final Act. 3^4; Ans. 3—5. As additional
elements, claims 1 and 11 recite a “processor” and a “memory.” Br. 78, 80
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(Claims App.). Thus, the claims recite generic computer components that
operate conventionally for data collection, communication, and processing.
Final Act. 3^4; Ans. 3^4. The recitation of generic computer components
“cannot transform a patent-ineligible abstract idea into a patent-eligible
invention.” Alice, 134 S. Ct. at 2358.
Citing DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245
(Fed. Cir. 2014), Appellants assert that the claims “are directed to a
particular insurance premium adjustment problem that did not exist before
the recently developed advanced technologies associated with” data
collection and analysis. Br. 21,42, 63. DDR Holdings does not help
Appellants. There, the Federal Circuit determined that certain claims
satisfied Mayo!Alice step two because “the claimed solution amounted] to
an inventive concept for resolving [a] particular Internet-centric problem,”
i.e., a challenge unique to the Internet. DDR Holdings, 773 F.3d at 1257—59;
see Synopsys, 839 F.3d at 1151 (noting that “[i]n DDR Holdings, we held
that claims ‘directed to systems and methods of generating a composite web
page that combines certain visual elements of a ‘host’ website with content
of a third-party merchant’ contained the requisite inventive concept”). The
Federal Circuit explained that the patent-eligible claims specified “how
interactions with the Internet are manipulated to yield a desired result. . .
that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d at 1258.
The court reasoned that those claims recited a technological solution
“necessarily rooted in computer technology” that addressed a “problem
specifically arising in the realm of computer networks.” Id. at 1257.
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The claims here do not address a similar problem and do not contain a
similar inventive concept as the patent-eligible claims in DDR Holdings.
See Br. 78—82 (Claims App.). The claims concern “optimizing insurance
from the perspective of both the insurance provider and the insurance
purchaser” by updating or adjusting an insurance premium based on real­
time data. See Spec. 5—9, 32, 49, 53—57, 69-77, Figs. 5—6; Br. 15—16,
36—37, 57; see also Final Act. 3.
According to the Federal Circuit, “DDR Holdings does not apply
when ... the asserted claims do not ‘attempt to solve a challenge particular
to the Internet.’” Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364, 1375 (Fed. Cir. 2017) (quoting TLI Commons, 823 F.3d
at 613). The claims here do not attempt to solve a challenge particular to the
Internet. They concern a business problem rather than technological
problem.
Citing Messaging Gateway Solutions, LLC v. Amdocs, Inc., Nos.
14-732-RGA to 14-737-RGA, 2015 WL 1744343 (D. Del. Apr. 15, 2015),
Appellants contend that claims 1,11, and 17 are “tethered to the technology
(e.g. networks and contextual data) that created issues associated with
equitable and accurate insurance rate provisioning,” and therefore patent
eligible under Mayo!Alice step two. Br. 30-31, 51—52, 73—74. That case
does not support Appellants. There, the district court determined that the
asserted claims resembled the patent-eligible claims in DDR Holdings
because they addressed a “problem specifically arising in the realm of
computer networks,” i.e., a “problem unique to text-message
telecommunication between a mobile device and a computer.” 2015 WL
1744343, at *5 (quoting DDR Holdings, 773 F.3d at 1257). As explained
17
Appeal 2017-008273
Application 14/101,208
above, however, the claims here do not address a “problem specifically
arising in the realm of computer networks” and do not contain a similar
inventive concept as the patent-eligible claims in DDR Holdings.
Although Appellants contend that the claims include “enough to
escape the ineligibility exception under Alice,” Appellants wrongly rely on
the features constituting the abstract ideas to support those contentions.
Br. 26—27, 47-48, 68—69; see Intellectual Ventures I, 850 F.3d at 1340-41
(noting that “the underlying concept embodied by the limitations [alleged to
provide a concrete solution] merely encompasses the abstract idea itself’).
Summary for Independent Claims 1,11, and 17
For the reasons discussed above, Appellants’ arguments have not
persuaded us that the Examiner erred in rejecting claims 1,11, and 17 under
§101. Hence, we sustain the § 101 rejection.
Dependent Claims 3-10,12-16, and 18-21
For dependent claims 3—10, 12—16, and 18—21, Appellants do not
argue patent eligibility separately under Mayo!Alice step one or step two.
Br. 32—35, 53—54, 75—76. Because Appellants do not argue the claims
separately, we sustain the § 101 rejection of the dependent claims for the
same reasons as the independent claims. See 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision to reject claims 1 and 3—21.
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(f).
AFFIRMED
18