Ex Parte Fisher et alDownload PDFPatent Trial and Appeal BoardAug 28, 201811960766 (P.T.A.B. Aug. 28, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/960,766 12/20/2007 46159 7590 08/28/2018 SUGHRUE MION PLLC USPTO CUSTOMER NO WITH IBM/SVL 2100 PENNSYLVANIA A VENUE, N.W. WASHINGTON, DC 20037 FIRST NAMED INVENTOR Amit Fisher 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. IL920070118US1/A9826 5076 EXAMINER POLLOCK, GREGORY A ART UNIT PAPER NUMBER 3695 MAIL DATE DELIVERY MODE 08/28/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte AMIT FISHER and DANIEL M. YELLIN Appeal2016-006463 Application 11/960, 7 66 1 Technology Center 3600 Before, JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and ALYSSA A. FINAMORE, Administrative Patent Judges. FISCHETTI, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner's final rejection of claims 1-26. We have jurisdiction under 35 U.S.C. § 6(b). SUMMARY OF DECISION We AFFIRM. 1 Appellants identify International Business Machines Corporation as the real party in interest. Appeal Br. 2. Appeal 2016-006463 Application 11/960,766 THE INVENTION Appellants' invention is related to the field of electronic systems for insurance transactions. Spec. ,r 1. Claim 1 reproduced below, is representative of the subject matter on appeal. 1. A system for electronic insurance transactions, the system comprising: a server, implemented by a computer, which: receives a risk description posted by a customer through a customer terminal; publishes the risk description to one or more insurer terminals; receives one or more questions from the one or more insurer terminals; transmits the one or more questions regarding characteristics of the client to one or more terminals different from the customer terminals; receives from the one or more terminals different from the customer terminals one or more answers to the one or more questions regarding characteristics of the client; and determines whether or not to underwrite an insurance covering at least a portion of a risk included in the risk description based on an analysis of aggregated data related to the risk description received from the customer terminals and the one or more answers regarding characteristics of the client received from the one or more terminals different from the customer terminals. Appeal Br. (Claims App.). 2 Appeal 2016-006463 Application 11/960,766 THE REJECTIONS The following rejections are before us for review. Claims 1-26 are rejected under 35 U.S.C. § 101 as patent ineligible. (Final Act. 2). Claims 1, 14, 18, and 20 are rejected under 35 U.S.C. § I03(a) as unpatentable over Yager (US 2007/0136109 Al, pub. June 14, 2007) in view ofWolff (2002/0029158 Al, pub. Mar. 7, 2002). (Final Act. 4). Claims 2-13, 15-19, and 21-26 are rejected under 35 U.S.C. § I03(a) as unpatentable over Yager in view of Wolff and Robertson (US 2004/0024620 Al, pub. Feb. 5, 2004). (Final Act. 5). ANALYSIS 35 U.S.C. § 103 REJECTION Each of independent claims 1, 14, 18, and 20 requires, in one form or another, a server, implemented by a computer, which: receives a risk description posted by a customer through a customer terminal; publishes the risk description to one or more insurer terminals; receives one or more questions from the one or more insurer terminals; and transmits the one or more questions regarding characteristics of the client to one or more terminals different from the customer terminals. 3 Appeal 2016-006463 Application 11/960,766 The Examiner cites to Yager and Wolfe to disclose the claimed limitations. (Final Act. 4--5). The Examiner relies on Wolfe to disclose the above noted features. Id. at 4. But, Wolfe discloses using an intermediate wholesaler ( corresponding to the claimed "server") which "issues a request for insurance ratings from multiple insurers 230 by utilizing the Insurance File Assembly System 140." Wolfe ,r 34. But, the claims require the questions be received from (i.e., sent by) the insurer(s), and not an intermediary wholesaler. The Examiner does not explain why receiving questions from an intermediary wholesaler is the same as "receive[ing] one or more questions" from the insurer( s ). Yager only discloses publishing of "need states" to package insurance needs (i-f 36), but no mention of who publishes the offering. Therefore, we will not sustain the rejection of the independent claims under 35 U.S.C. § 103(a). Since claims 2-13, 15-17, 19, and 21-26 depend from claims 1, 14, 18, and 20 and since we cannot sustain the rejection of the independent claims, and since Robertson fails to remedy the deficiency discussed above, the rejection of dependent claims 2-13, 15-17, 19, and 21-26 likewise cannot be sustained. 4 Appeal 2016-006463 Application 11/960,766 35 U.S.C. § 101 REJECTION We will sustain the rejection of claims 1-26 under 35 U.S.C. § 101. The Supreme Court set forth a framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts. First, ... determine whether the claims at issue are directed to one of those patent-ineligible concepts. If so, we then ask, "[ w ]hat else is there in the claims before us?" To answer that question, . . . 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. [The Court] 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." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (internal citations omitted) ( quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)). To perform this test, we must first determine whether the claims at issue are directed to a patent-ineligible concept. Although the Court in Alice made a direct finding as to what the claims were directed to, we determine that in this case, the claims themselves and the Specification provide enough information to inform one as to what they are directed to. The steps in representative claim 1 result in: 5 Appeal 2016-006463 Application 11/960,766 determin[ ing] whether or not to underwrite an insurance covering at least a portion of a risk included in the risk description based on an analysis of aggregated data related to the risk description received from the customer terminals and the one or more answers regarding characteristics of the client received from the one or more terminals different from the customer terminals. The Examiner determined that the claims are directed to "application or instructions to apply the abstract idea (i.e. insurance transactions) on a computer, and is considered to amount to nothing more than requiring a generic computer system to merely carry out the abstract idea itself." (Final Act. 2). The Specification states: In some systems, an agent of the insurance company may manually review the data entered by the user and may manually calculate an insurance quote. In other systems, a predefined algorithm may be used to automatically calculate the insurance quote based on the data entered by the user. After the insurance quote is calculated (manually or automatically), the insurance company may provide to the user the insurance quote (e.g., premium amount, coverage amount, and other terms) through the electronic system. Spec. ,r 3. Thus, the record shows that claim 1 is directed to determining whether to underwrite an insurance covering at least a portion of a risk included in a risk description based on aggregated data related to the risk description. It follows from prior Supreme Court cases, Gottschalk v. Benson, 409 U.S. 63 (1972), in particular, that the claims at issue here are directed to an abstract idea. Determining whether to underwrite an insurance covering at least a 6 Appeal 2016-006463 Application 11/960,766 portion of a risk included in a risk description based on aggregated data related to the risk description is a fundamental economic principle because insurance is a risk based monetary award. The patent-ineligible end of the 35 U.S.C. § 101 spectrum includes fundamental economic principles. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357. Thus, determining whether or not to underwrite an insurance covering at least a portion of a risk included in a risk description based on an analysis of aggregated data related to the risk description is an "abstract idea" beyond the scope of § 101. As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise contours of the "abstract ideas" category in this case. It is enough to recognize that there is no meaningful distinction in the level of abstraction between the concept of an intermediated settlement in Alice and the concept of determining whether to underwrite an insurance covering at least a portion of a risk included in the risk description based on an analysis of aggregated data related to the risk description, at issue here. Both are squarely within the realm of "abstract ideas" as the Court has used that term. That the claims do not preempt all forms of the abstraction or may be limited to insurance transactions, does not make them any less abstract. See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1360-61 (Fed. Cir. 2015). Claim 1, unlike the claims held non-abstract in prior cases, uses generic computer technology to perform data reception, transmission, and linkage and does not recite an improvement to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 7 Appeal 2016-006463 Application 11/960,766 F.3d 1299, 1314--15 (Fed. Cir. 2016) (determining claims not abstract because they "focused on a specific asserted improvement in computer animation"). The introduction of a computer into the claims does not alter the analysis at Mayo step two. [T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea "while adding the words 'apply it"' is not enough for patent eligibility. Nor is limiting the use of an abstract idea "'to a particular technological environment."' Stating an abstract idea while adding the words "apply it with a computer" simply combines those two steps, with the same deficient result. Thus, if a patent's recitation of a computer amounts to a mere instruction to "implemen[t]" an abstract idea "on . . . a computer," that addition cannot impart patent eligibility. This conclusion accords with the pre-emption concern that undergirds our § 101 jurisprudence. Given the ubiquity of computers, wholly generic computer implementation is not generally the sort of "additional featur[ e ]" that provides any "practical assurance that the process is more than a drafting effort designed to monopolize the [ abstract idea] itself." Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (alterations in original) (internal citations omitted). "[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea ... on a generic computer." Id. at 2359. They do not. Taking the claim elements separately, the function performed by the computer at each step of the process is purely conventional. Using a 8 Appeal 2016-006463 Application 11/960,766 computer to retrieve, select, and apply decision criteria to data and modify the data as a result amounts to electronic data query and retrieval----one of the most basic functions of a computer. All of these computer functions are well-understood, routine, conventional activities previously known to the industry. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1354, 1353 (Fed. Cir. 2016); see also In re Katz Interactive Call Processing Patent Litig, 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ... those functions can be achieved by any general purpose computer without special programming."). In short, each step does no more than require a generic computer to perform generic computer functions. As to the data operated upon, "even if a process of collecting and analyzing information is 'limited to particular content' or a particular 'source,' that limitation does not make the collection and analysis other than abstract." SAP Am. Inc. v. InvestPic, LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018) (internal citation omitted). Considered as an ordered combination, the computer components of Appellants' method add nothing that is not already present when the steps are considered separately. The sequence of data reception-analysis- access/ display is equally generic and conventional or otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (holding that the sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 9 Appeal 2016-006463 Application 11/960,766 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis, modification, generation, display, and transmission), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling, and monitoring). The ordering of the steps is, therefore, ordinary and conventional. The method claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. The Specification spells out different generic equipment and parameters that might be applied using this concept and the particular steps such conventional processing would entail based on the concept of information access under different scenarios. See, e.g., Spec. ,r,r 17-18. The Specification does not describe any particular improvement in the manner a computer functions, at least with respect to the claims in the instant application. Instead, the claims at issue amount to nothing significantly more than instructions to apply the abstract idea of information access and retrieval using some unspecified, generic computer. This is not enough to transform an abstract idea into a patent-eligible invention. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2360. We have reviewed all the arguments (Appeal Br. 13-18) Appellants have submitted concerning the patent eligibility of the claims before us that stand rejected under 35 U.S.C. § 101. We find that our analysis above substantially covers the substance of all the arguments, which have been made. But, for purposes of completeness, we will address various 10 Appeal 2016-006463 Application 11/960,766 arguments in order to make individual rebuttals of same. Appellants argue that claims 1-26 are unrelated to any of the examples which were listed in the Interim Guidance on Patent Subject Matter Eligibility issued December 16, 2014. (Appeal Br. 13-14). However, Appellants fail to list the Interim Guidance's listing of "creating a contractual relationship" as one of the several examples cited at page 74622 in the Federal Register, Vol. 79, No 241/ Tuesday, December 16, 2014/ Rules and Regulations Notice. In our view, the fundamental principle of insurance is a contractual relationship. Appellants, citing to Research Corp. Tech., Inc. v. Microsoft Corp., 2 argue that its system "allows the insurance company to efficiently handle unfamiliar type insurance requests with accuracy, therefore, it is clearly an improvement in the field." (Appeal Br. 15). We disagree with Appellants. Claim 1 in Research Corp. was directed to "[a] method for the halftoning of gray scale images by utilizing a pixel-by-pixel comparison of the image against a blue noise." This is a clear improvement in the technology of digital imaging. By contrast, the claims before us cover the desired effect in insurance underwriting of determining whether or not to underwrite an insurance covering at least a portion of a risk included in the risk description based on an analysis of aggregated data related to the risk description, and not computer technology improvement 2 Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 859 (Fed. Cir. 2010). 11 Appeal 2016-006463 Application 11/960,766 Appellants further argue, "Appellant respectfully submits that the impact of the claimed features is far beyond the routine or conventional business practice using computer. Appellant respectfully submits that the ruling in DDR Holdings, LLC v. Hotels.com, L.P. supports the patent eligible nature of the pending claims." (Appeal Br. 16). We disagree with Appellants. We understand the Examiner, through citation to the July 2015 Update (Answer 5, 10-11), to rely on prior court decisions finding that certain computer functions are well-understood, routine, and conventional functions. These prior court decisions adequately support this finding to satisfy the requirement to set forth a prima facie case ofunpatentability under 35 U.S.C. § 101. The Examiner's analysis was thus sufficient to put Appellants on notice of the basis for the ground of rejection and to allow Appellants to recognize and seek to counter the grounds of rejection. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Nor, is the ruling in DDR analogous. (Appeal Br. 16-17). In DDR we point out, that the claims at issue involved, inter alia, "web pages displays [with] at least one active link associated with a commerce object associated with a buying opportunity of a selected one of a plurality of merchants" (claim 1 of US 7,818,399). There is no such claim element directed to technology with this degree of detail here before us. All that is required by the claims is a generically recited "terminal" and a "computer". Concerning Appellants' arguments to dependent claims 6-9, ( Appeal Br. 17-18), and specifically to the argument that "generating a quote" or 12 Appeal 2016-006463 Application 11/960,766 "output results" cause the claims to be patent eligible, we disagree. Instead, we find such steps to be insignificant extra solution activities and/or the transmitting of information of a particular content. CONCLUSIONS OF LAW We conclude the Examiner did not err in rejecting claims 1-26 under 35 U.S.C. § 101. We conclude the Examiner did err in rejecting claims 1-26 under 35 U.S.C. § 103. DECISION The decision of the Examiner to reject claims 1-26 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED. 13 Copy with citationCopy as parenthetical citation