Ex Parte Dubens

Patent Trial and Appeal Board

Nov 15, 2018

14016993 (P.T.A.B. Nov. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
14/016,993
11951 7590
LeClairRyan
70 Linden Oaks
Suite 210
FILING DATE
09/03/2013
11/19/2018
Rochester, NY 14625
FIRST NAMED INVENTOR
Edmund S. Dubens
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.
38336.0100 2248
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
11/19/2018 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):
USPTOinboxroc@leclairryan.com
kelly.badum@leclairryan.com
phoebe.jones@leclairryan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDMUND S. DUBENS
Appeal2017-005014
Application 14/016,993
Technology Center 3600
Before JEAN R. HOMERE, JOSEPH P. LENTIVECH, and
AARON W. MOORE, Administrative Patent Judges.
LENTIVECH, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner's decision to reject claims 1-21 2, the only claims pending in the
application on appeal. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b).
We affirm.
1 Appellant states that the real party in interest is Interactive Driving
Systems, Inc. Br. 1.
2 Herein, we refer to the Specification, filed Sept. 3, 2013 ("Spec."); the
Final Office Action, mailed Jan. 8, 2016 ("Final Act."); the Appeal Brief,
filed Nov. 8, 2016 ("Br."); and the Examiner's Answer, mailed Dec. 14,
2016 ("Ans."). No reply brief has been filed.
Appeal2017-005014
Application 14/016,993
STATEMENT OF THE CASE
Appellant's Invention
Appellant's invention generally relates to "facilitating a motor vehicle
insurance exchange and, more particularly, for providing prospective
customers with insurance underwriting rates generated by insurance
providers based on a comprehensive profile or motor vehicle driver data."
Spec. ,r 1. Claim 1, which is representative, reads as follows:
1. A method for facilitating a motor vehicle insurance
exchange for motor vehicle drivers using an optimized set of data
obtained from networked performance data source devices, the
method comprising:
receiving, by an insurance exchange device, an insurance
underwriting offer request from a client computing device
associated with a motor vehicle driver and via one or more
communication networks;
obtaining, by the insurance exchange device, at least
historical risk event data and telematic data for the motor vehicle
driver, wherein at least a portion of the historical risk event data
or telematic data is obtained via another one or more
communication networks from a plurality of third party server
devices associated with a plurality of third parties comprising at
least one government entity and at least one of a current or past
insurance provider or broker for the motor vehicle driver or a
leasing entity associated with the motor vehicle driver;
generating, by the insurance exchange device, an
electronic performance profile for the motor vehicle driver,
wherein the electronic performance profile comprises the
historical risk event data and telematic data;
requesting, by the insurance exchange device, an
insurance underwriting offer for the motor vehicle driver from a
plurality of motor vehicle insurance providers, the requesting
comprising providing the electronic performance profile
comprising the historical risk event data and telematic data for
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Application 14/016,993
the motor vehicle driver to one or more computing devices
associated with the plurality of motor vehicle insurance
providers via an additional one or more communication
networks;
receiving, by the insurance exchange device, an electronic
insurance underwriting offer from two or more of the plurality of
motor vehicle insurance providers via the additional one or more
communication networks, wherein the electronic insurance
underwriting offers each comprise an indication of an insurance
premium for a prospective insurance policy corresponding to
insurance coverage for a period of time and irrespective of any
particular trip; and
sending, by the insurance exchange device, the electronic
insurance underwriting offers to the client computing device
associated with the motor vehicle driver in response to the
received request and via the one or more communication
networks.
See Br., Claims Appendix, 16-17.
Rejection3
Claims 1-21 stand rejected under 35 U.S.C. § 101 because the
claimed subject matter is judicially-excepted from patent eligibility under
§ 101. Final Act. 2-5.
PRINCIPLES OF LAW
Under 35 U.S.C. § 101, a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." The Supreme Court has "long held that
3 The rejection of claims 1-21 under 35 U.S.C. § 103 has been withdrawn.
Ans. 4.
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Application 14/016,993
this provision contains an important implicit exception: Laws of nature,
natural phenomena, and abstract ideas are not patentable." Alice Corp. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (quotingAss'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
The Supreme Court in Alice reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-84 (2012), "for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts." Alice, 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
issue are directed to one of those patent-ineligible concepts," such as an
abstract idea. Id. The inquiry often is whether the claims are directed to "a
specific means or method" for improving technology or whether they are
simply directed to an abstract end-result. McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Circ. 2016). If the claims are
not directed to a patent-ineligible concept, 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 the additional elements 'transform the
nature of the claim' into a patent-eligible application." Alice, 134 S. Ct. at
2355 (quoting Mayo, 566 U.S. at 78-79). We, therefore, look to whether the
claims focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery. See
Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016).
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Application 14/016,993
CONTENTIONS AND ANALYSIS
We have reviewed the Examiner's rejections in light of Appellant's
arguments that the Examiner has erred. We disagree with Appellant's
conclusions. We adopt as our own the findings and reasons set forth by the
Examiner in the Final Office Action from which this appeal is taken and the
reasons set forth in the Examiner's Answer in response to Appellant's
Appeal Brief. Final Act. 2-5; Ans. 9-13. We highlight and address specific
findings and arguments for emphasis as follows.
Step 1
Appellant contends the claims are not directed to an abstract idea.
Br. 11-13. Appellant argues the claims, instead,
[ A ]re directed to a specific, significant, and meaningful claimed
invention, rooted in computer technology, that enables
generation of electronic motor vehicle insurance underwriting
offers from networked insurance provider devices using
electronic performance profiles for motor vehicle drivers that
include an optimized set of data obtained over communication
networks from various performance data source devices and
differs from underwriting offers obtained using prior human-
performed methods.
Br. 11-12. Appellant further argues the claims "require meaningful
computer technology processing to obtain underwriting offers ... in a
manner not possible with prior human-performed methods." Br. 11-12.
We find Appellant's arguments unpersuasive. The Specification
provides that the invention "relates to methods and devices for facilitating a
motor vehicle insurance exchange." Spec. ,r 1; see also Spec., Title
("METHODS FOR FACILITATING A MOTOR VEHICLE INSURANCE
EXCHANGE AND DEVICES THEREOF"); Claim 1, preamble ("A method
for facilitating a motor vehicle insurance exchange for motor vehicle drivers
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using an optimized set of data obtained from networked performance data
source devices"). We agree with the Examiner that the claims are directed
to a method for facilitating a motor vehicle insurance exchange for motor
vehicle drivers, which is a fundamental economic practice; and, therefore,
that the claims are directed to an abstract idea. Ans. 10-11. That the claims
require the use of a computer and for data to be exchanged via one or more
communication networks does not cause the claims to be directed to
something other than an abstract idea. See OIP Techs., Inc. v. Amazon.com,
Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) ("At best, the claims describe the
automation of the fundamental economic concept of offer-based price
optimization through the use of generic-computer functions."); CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011)
(computer-implemented system for "verifying the validity of a credit card
transaction[] over the Internet" was patent-ineligible).
We are not persuaded by Appellant's argument that the claims "do not
preempt any overall abstract idea or subject matter category" (Br. 13)
because claims that are otherwise directed to patent-ineligible subject matter
cannot be saved by arguing the absence of complete preemption. Return
Mail, Inc. v. US. Postal Service, 868 F.3d 1350, 1370 (Fed. Cir. 2017).
"While 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 a patent's claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot." Id.
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Step 2
Turning to the second step of the analysis, we agree with the
Examiner that the claim limitations, when viewed individually and as a
whole, do not transform the claim to something significantly more than an
abstract idea. Final Act. 3--4; Ans. 11-13.
Appellant contends the claims recite "significantly more" because the
claims "are directed to issues rooted in computer technology for not just
providing for insurance coverage online, but for significant and meaningful
limitations directed towards solving issues related to obtaining sufficient
data from various electronic sources in order to make more informed
insurance underwriting decisions as well as interfacing electronically with
multiple insurance providers in order to obtain underwriting offers." Br. 14.
Appellant argues:
[T]he claimed technology has developed an insurance exchange
system that allows insurance providers to obtain sufficient and
particular data from various sources and generate an electronic
performance profile in order to make more accurate underwriting
decisions, thereby reducing risk, and motor vehicle drivers to
interface with one web application to receive competitive and
favorable insurance underwriting rates from two or more
insurance providers. The claimed technology has not been
utilized in this technical field before to solve long standing
technical issues relating to insurance web portals and insurance
data processing not possible with prior human performed
methods for more effective and accurate predictive modeling.
Br. 14. Appellant further contends the claims recite "'significantly more'
than the abstract idea asserted by the [Examiner] because they are
specifically tied to computer technology." Br. 14 (citing DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014)). Appellant argues
the claims are similar to the claims in DDR, in which claims addressing a
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business challenge (retaining website visitors) that is particular to the
Internet were held patent-eligible, because:
[T]he limitations relating to requesting insurance underwriting
offers from motor vehicle insurance providers by generating an
electronic performance profile of obtained telematic and
historical risk event data and then transmitting and receiving
electronic insurance underwriting offers from two or more of the
motor vehicle insurance providers overcome problems relating
to prior ineffective predictive modeling systems which lack this
generated electronic profile and inefficient electronic
transmission of predictive modeling data to facilitate web-based
motor vehicle insurance purchases, which only exists in
computer networks.
Br. 14.
We find Appellant's arguments unpersuasive. Unlike the claims at
issue in cases such as DDR (see DDR, 773 F.3d at 1257 (claims at issue are
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks")) and Enfish (see
Enfish, 822 F.3d at 1339 ( claims at issue are "directed to a specific
implementation of a solution to a problem in the software arts")), the claims
here merely address business challenges related to obtaining sufficient data
for making informed insurance underwriting decisions and providing motor
vehicle drivers seeking to purchase motor vehicle insurance underwriting
offers from multiple insurance providers (see Br. 14). The claims address
these business challenges through the use of generic, computer-related
recitations that do not add meaningful limitations to steps otherwise directed
to an abstract idea. See Alice, 134 S. Ct. at 2358 (concluding claims "simply
instruct[ing] the practitioner to implement the abstract idea of intermediated
settlement on a generic computer" not patent eligible); see also Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1333-34 (Fed. Cir. 2012) ("[s]imply adding a
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Application 14/016,993
'computer aided' limitation to a claim covering an abstract concept, without
more, is insufficient to render [a] claim patent eligible" (internal citation
omitted)).
Conclusion
Because Appellant's claims are directed to a patent-ineligible abstract
concept and do not recite something "significantly more" under the second
prong of the Alice analysis, we sustain the Examiner's rejection of claims 1-
21 under 35 U.S.C. § 101 as being directed to judicially-excepted subject
matter in light of Alice and its progeny.
DECISION
We affirm the Examiner's rejection of claims 1-21 under 35 U.S.C.
§ 101.
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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