Ex Parte Hargrove

Patent Trial and Appeal Board

Jul 30, 2018

13958360 (P.T.A.B. Jul. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/958,360 08/02/2013
79804 7590 08/01/2018
Duncan Galloway Egan Greenwald, PLLC
9750 Ormsby Station Road, Suite 210
Louisville, KY 40223
FIRST NAMED INVENTOR
David G. Hargrove
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.
113068.0lUSl 6415
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
08/01/2018 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):
kduncan@dgeglaw.com
carnold@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID G. HARGROVE
Appeal2017-004877 1
Application 13/958,360
Technology Center 3600
Before JEAN R. HOMERE, IRVINE. BRANCH, and ADAM J. PYONIN,
Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from a final
rejection of claims 1-22, which are all the pending claims. See App. Br. 1.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 The real party in interest is identified as the inventor, David G. Hargrove.
App. Br. 1.
Appeal2017-004877
Application 13/958,360
STATEMENT OF THE CASE
Introduction
The Application is directed to "a system and method for easily
entering, processing, and managing information related to the insurance
claims adjustment process to be used in the creation of activity and narrative
reports and insurance claims estimates." Spec. ,r 37.
Claims 1 and 12 are independent. Claim 1 is reproduced below for
reference:
1. A computer-implemented method for capturing, labeling,
and storing digital images of damaged property in an insurance
claims adjustment process, the method comprising:
providing by a server for display on a client access device
a first user interface comprising a first set of commands and
functions, retrieved from a server database;
capturing a digital image of damaged property using the
client access device;
storing the digital image as an individual image file on the
client access device;
loading the individual image file from the client access
device into the first user interface;
associating a label with the individual image file using the
first set of commands and functions, the label comprising a
description of the image file;
storing the label in a separate file;
receiving additional information related to the image file
by user input from the first set of commands and functions in the
first user interface and appending the additional information to
the separate file as sentence fragments and tags;
accessing the individual image file and the separate file;
automatically generating at least one document
comprising the information in the separate file, the document
comprising a textual narrative component, the textual narrative
component generated by transforming data in the separate file
including the sentence fragments and tags into a textual narrative
format, and the individual image file;
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storing the at least one document and the separate file in
the server database; and
wherein the at least one document is generated for
submission during an insurance claims adjustment process.
The Examiner's Rejection
Claims 1-22 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 2; Ans. 3-7.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellant's
arguments. We have considered in this Decision only those arguments
Appellant actually raised in the Briefs. Any other arguments Appellant
could have made but chose not to make are deemed waived. See 37 C.F.R.
§ 4I.37(c)(l)(iv).
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: laws of nature, natural phenomena, and abstract ideas are not
patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct.
2347, 2354 (2014); see also Rubber-Tip Pencil Co. v. Howard, 87 U.S. 498,
507, (1874) ("An idea of itself is not patentable."). 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, 134 S. Ct. at 2355. The first step in
that analysis is to "determine whether the claims at issue are directed to one
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of those patent-ineligible concepts," e.g., to an abstract idea. Alice, 134 S.
Ct. at 2355. If the claims are directed to a patent-ineligible concept, 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 nature of the
claim' into a patent-eligible application." Id. at 2355 ( quoting Mayo, 566
U.S. at 79, 78).
In the Answer, the Examiner issues a new grounds of rejection of the
claims pursuant to 35 U.S.C. § 101, determining the claims "recite a method
and system for insurance claim adjustment by capturing, labeling and storing
images of damaged property," a "fundamental commercial and technological
practice long prevalent in our system of commerce, which is in the realm of
abstract ideas identified by the Supreme Court." Ans. 4, 6. The Examiner
further determines the claims "do not purport to improve the functioning of
the computer itself, or to improve any other technology or technical field.
Use of an unspecified computer does not transform an abstract idea into a
patent-eligible invention. Thus, the claim does not amount to significantly
more than the abstract idea itself." Ans. 6-7.
Appellant argues the Examiner's rejection is in error, because"[ w ]hen
considered as a whole and not entirely out of context, claim 1 is not an
abstract idea and provides significantly more than Examiner's alleged
abstract idea." Reply Br. 3. Particularly, Appellant argues that:
When properly considered as an ordered combination the
patentable subject matter of claim 1 provides a specific way to
manage and store information, receive and process input, and
generate and store a document. Claim 1 provides specific rules,
as with the rules for animating 3d models in McRo, and is
provides a specific solution tied to specific technological
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environment, as with the methods for improving accounting in
Amdocs.
Reply Br. 4 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d
1299 (Fed. Cir. 2016) and Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841
F.3d 1288 (Fed. Cir. 2016)).
We are not persuaded the Examiner errs. We adopt the Examiner's
findings and conclusions as our own, and we add the following for
emphasis.
I. Independent Claim 1.
Claim 1 is a "computer-implemented method for capturing, labeling,
and storing digital images of damaged property in an insurance claims
adjustment process," and includes steps of providing a user interface,
processing an image and associated labels, and creating a document for
submission during an insurance claims adjustment. We agree with the
Examiner that the claim is directed to the abstract concept of insurance claim
adjustment using images. See Ans. 4---6; Final Act. 3.
We find claim 1 is comparable to concepts our reviewing courts have
found to be abstract. See Ans. 2-3; see also In re TL! Commc 'ns LLC
Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) ("the claims, as noted, are
simply directed to the abstract idea of classifying and storing digital images
in an organized manner"); Accenture Glob. Servs., GmbH v. Guidewire
Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir. 2013) ("the abstract idea of
handling insurance-related information," which includes "generating tasks
[based on] rules ... to be completed upon the occurrence of an event")
(internal quotations and citation omitted); Content Extraction and
Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347
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(Fed. Cir. 2014) ("The concept of data collection, recognition, and storage is
undisputedly well-known"); Elec. Power Grp. LLC v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing
it, and displaying certain results of the collection and analysis" are "a
familiar class of claims 'directed to' a patent-ineligible concept"); In re
Salwan, 681 F. App'x 938, 941 (Fed. Cir. 2017) (affirming the rejection
under § 101 of claims directed to "storing, communicating, transferring, and
reporting patient health information," noting that "while these concepts may
be directed to practical concepts, they are fundamental economic and
conventional business practices").
Additionally, we are not persuaded by Appellant's comparison of
claim 1 to claims found patent eligible by our reviewing court, such as the
claims in McRO and Amdocs. See Reply Br. 4. Unlike the claims in these
cases, Appellant's claim 1 does not provide improvements to the underlying
or other technology. The claim, as described by Appellant, provides a
specific way to manage and store information, receive and process input, and
generate and store a document (see Reply Br. 4); we agree with the
Examiner that, considered as a whole, the claimed process is "the
employment of a computer to do what a computer is supposed to do: receive
and store information, reduce error and speed things up" (Ans. 7). See Spec.
,r 2 ("The invention automates and streamlines the claims adjustment process
and provides the user with an all in one solution for documenting a claim
and for creating the claims estimate and other documents needed to close the
insurance claim."); see also Spec. ,r,r 38--41, 50; DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) ("after Alice, there
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can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent-eligible").
Thus, we agree with the Examiner that-in contrast to a technical
benefit-the claims may improve the business process of insurance claims
submission. Ans. 7; Final Act. 7; see also Spec. ,r,r 6-7 ("An adjuster's job
is to take adequate pictures to support the estimate and prove the loss" to
"'re-tell' the story of the damage and recommended repairs as a narrative
and/or in the form of several activity reports."); ,r 1 O; see also TL!
Communications, 823 F.3d at 612 (("[T]he claims here are not directed to a
specific improvement to computer functionality. Rather, they are directed to
the use of conventional or generic technology in a nascent but well-known
environment, without any claim that the invention reflects an inventive
solution to any problem presented by combining the two."). Therefore, we
are not persuaded the Examiner erred in determining "the claim does not
amount to significantly more than the abstract idea itself." Ans. 7.
Accordingly, we are not persuaded the Examiner erred in finding
claim 1 patent ineligible.
II. Dependent Claims 3 and 7-11.
Appellant further argues dependent claim limitations may be directed
to statutory subject matter:
For example, in claim 3 the separate file is exported to a separate
computer program, connecting the method of the claimed
invention to a specific computer environment. Furthermore,
claims 7 -11 recite specific commands and functions, like the
rules in McRO, that more narrowly claim the invention of the
independent claim in a way that further separates claims 7 -11
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from the alleged abstract idea identified by the Examiner in claim
1.
Reply Br. 5.
We are not persuaded the Examiner erred. Appellant does not explain
how these dependent claim limitations are meaningfully different from the
independent claims for purposes of the Alice analysis. Rather, we conclude
these claims are directed to the same abstract idea, without reciting
significantly more, as their parent independent claims discussed above.
Accordingly, we are not persuaded the Examiner erred in rejecting
dependent claims 3 and 7-11 under 35 U.S.C. § 101. Cf Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1349 (Fed. Cir. 2015)
("additional limitations of these dependent claims do not add an inventive
concept, for they represent merely generic data collection steps or siting the
ineligible concept in a particular technological environment").
CONCLUSION
We are not persuaded the Examiner erred in determining claims 1, 3,
and 7-11 are unpatentable under 35 U.S.C. § 101. Final Act. 2. Appellant
does not provide additional substantive arguments for the remaining claims.
See Reply Br. 5. Therefore, we sustain the rejection of claims 2, 4--6, and
12-22 for the same reasons as discussed above.
DECISION
The Examiner's decision rejecting claims 1-22 is affirmed.
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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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