Ex Parte Harvey

Patent Trial and Appeal Board

Nov 2, 2016

14103568 (P.T.A.B. Nov. 2, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/103,568 12/11/2013
123508 7590
Thomas D,Harvey
4001 Montpelier Road
Rockville, MD 20853
11/04/2016
FIRST NAMED INVENTOR
Thomas Danaher Harvey
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.
Gun Insurance 5452
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
11/04/2016 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):
redredroad@yahoo.com
tom@guninsuranceblog.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS DANAHER HARVEY
Appeal2016-006577 1
Application 14/103,568 2
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and AMEE A. SHAH,
Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's
final decision rejecting claims 19-31 under 35 U.S.C. § 101 as being
directed to nonstatutory subject matter. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
1 Throughout this opinion, we refer to the Appellant's Appeal Brief
("Appeal Br.," filed Feb. 6, 2016), Reply Brief ("Reply Br.," filed June 19,
2016), and Specification ("Spec.," filed Dec. 11, 2013), and the Examiner's
Answer ("Ans.," mailed June 3, 2016) and Final Office Action ("Final Act.,"
mailed Jan. 5, 2016).
2 According to the Appellant, the real party in interest is "Thomas Danaher
Harvey, the applicant of record." Appeal Br. 3.
Appeal2016-006577
Application 14/103,568
STATEMENT OF THE CASE
The Appellant's invention "relates to a method of settling claims of
injured victims of dangerous objects such as firearms, ballistic weapons or
other similar objects, using a system that maintains dangerous object and
insurer related information." Spec. i-f 2.
Claims 19 and 26 are the independent claims on appeal. Claim 19,
which we reproduce below, is illustrative of the subject matter on appeal:
19. A method for settling insurance claims comprising:
producing a digital representation of an identifying
physical feature of a dangerous object;
issuing an insurance policy contracting to pay claims
directly to persons injured by the dangerous object; and
storing the digital representation in a database with an
interface accessible to persons having a potential claim under the
insurance policy: wherein said interface when searched with
information sufficiently matching the digital representation
reveals the identity of the issuer of the insurance policy and
conceals the identity of the owner of the dangerous object.
Appeal Br. 21 (Claims App.).
ANALYSIS
Independent claims 19 and 2 6
The Appellant argues independent claims 19 and 26 as a group, noting
that the analysis for independent claims 19 and 26 "would be almost
identical" (id. at 13). We consider claim 19 as representative of the group;
claim 26 stands or falls with claim 19. See 37 C.F.R. § 41.37(c)(l)(iv).
The patent statute provides that a patent may be obtained for "any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof." 35 U.S.C. § 101. Yet the Supreme
Court has "long held that this provision contains an important implicit
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exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable." Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354
(2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics, Inc.,
133 S. Ct. 2107, 2116 (2013)). The Court has, thus, made clear that
"[p ]henomena of nature, though just discovered, mental processes, and
abstract intellectual concepts are not patentable, as they are the basic tools of
scientific and technological work." Gottschalk v. Benson, 409 U.S. 63, 67
(1972).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
132 S. Ct. 1289, 1300 (2012), "for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-
eligible applications of [these] 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." Id. If so, the second
step is to consider the elements of the claims "individually and 'as an
ordered combination'" to determine whether the additional elements
"'transform the nature of the claim' into a patent-eligible application." Id.
(quoting Mayo, 132 S. Ct. at 1291, 1297). In other words, the second step is
to "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.'" Id.
(alteration in original) (quoting Mayo, 132 S. Ct. at 1294).
In rejecting claim 19 under 35 U.S.C. § 101, the Examiner finds that:
(1) claim 19 is directed to an abstract idea, i.e. a method of organizing
human activities, including interpersonal activities, or alternatively, a
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fundamental economic practice, namely issuing an insurance policy; (2) the
limitations recited in the claim involve processes that require no more than
generic components to perform generic functions that are well-understood,
routine and conventional activities previously known to the industry; and
(3) the claim elements, when viewed both individually and in combination,
do not amount to significantly more than the abstract idea itself. Final Act.
3-5; see also Ans. 3-5).
The Appellant contends the Examiner's rejection is in error because:
(1) the Examiner fails to make a prima facie case in that the rejection "does
not identify the additional elements of the claims or explain why they do not
amount to significantly more than the exception" (Appeal Br. 11); (2) "[t]he
claims of this invention viewed as a whole are not directed to a judicial
exception" (id. at 12) (emphases omitted); and (3) the claim "includes
elements that are 'significantly more' than any judicial exception" (id. at 15)
(emphases omitted). Upon careful review of the Appellant's Appeal and
Reply Briefs, we disagree with the Appellant's contention for at least the
reasons discussed below.
The Appellant first argues
[t]he rejections contend that two elements "issuing an insurance
policy" and "data processing" are judicial exceptions but does
[sic] not identify the additional elements of the claims or explain
why they do not amount to significantly more than the exception.
Therefore, the rejections attempt improperly to shift the initial
burden to the applicant and the applicant is denied the
opportunity to respond and to rebut the arguments of the
exammer.
Appeal Br. 11. We find this unpersuasive at least because the Examiner
clearly articulates the reasons why the claim is not statutory. The Examiner
provides multiple ways in which the claim is directed to a patent-ineligible
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Application 14/103,568
abstract idea, and provides adequate explanation of the consideration of the
elements of the claim individually and as an ordered combination in
determining that the additional elements do not transform the nature of the
claim into a patent-eligible application. See Final Act. 3-5 and Ans. 3-5;
see also Alice, 134 S. Ct. at 2355.
The Appellant argues that the claim is not directed to a judicial
exception, i.e., an abstract idea, and thus "passes steps 2A of the Mayo test."
(Appeal Br. 12 (emphasis omitted)), because the claim as a whole is not
directed to a judicial exception (see id. at 12-14; see also Reply Br. 3--4).
We disagree. The Court found in Alice that it need not labor to delimit the
precise contours of the "abstract ideas" category in that case. See Alice, 134
S. Ct. at 2357. By Appellant's own admission "[t]he claimed invention
relates to guaranteeing the availability of insurance benefits for injured
parties. The claim is directed towards payment of benefits, to providing
only such information to potential claimants as is necessary to file claims[,]
and to securing the privacy of dangerous object owners and users." Appeal
Br. at 12. The Appellant also makes clear that the goal of the invention is
"protecting potential victims of the dangerous objects and compensating
those actually injured." Id. at 17; see also Reply Br. 4 ("the current claimed
invention is directed to the narrow goals of making certain that insurance is
available to protect victims of dangerous objects"). Whether the claim
relates to guaranteeing insurance benefits, payment of such benefits, or
compensating those injured, we agree with the Examiner that the claim is
directed to the abstract idea of providing insurance policies and benefits,
both a method of organizing human activity and a fundamental economic
practice. See Bancorp Svcs. V. Sun Life, 687 F.3d 1266, 1278 (Fed. Cir.
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2012) (finding managing of an insurance policy an abstract idea); and
Accenture Gloabs Svcs, GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1341--45 (finding the system and method claims were directed to the abstract
idea of handling insurance-related information).
Citing the July 2015 Update, 3 the Appellant further argues that the
claim "includes elements that are 'significantly more' than any judicial
exception," because it includes several of the factors listed therein as
"render[ing] an element significant," and, thus, "passes step 2B of the Mayo
test." Appeal Br. 15 (emphases omitted); see also Reply Br. 4--5. The
Appellant contends the claim: ( 1) adds "unconventional steps that confine
the claim to a particular useful application" including identifying the insurer
from a physical feature of the object, concealing the identity of the owner
from a claimant, continuing insurer responsibility, and paying claims
directly to injured persons; (2) transforms a particular article to a different
state or thing by transforming physical features to a digital representation
and physical marks to a search key; (3) includes limitations not well-
understood, routine, or conventional in the field requiring insurers to remain
responsible and identifying the insurer without knowing the owner; and (4)
includes "meaningful limitations that do more than link an abstract idea to a
technological environment" including limitations regarding dangerous
objects, concealing owners, continuance of insurer responsibility, and direct
payment. Id. at 15-16 (emphases omitted).
3 July 2015 Update on Subject Matter Eligibility," 80 Fed. Reg. 146, 45429
(July 30, 2015). The July 2015 Update supplements the December 2014
"Interim Guidance on Patent Subject Matter Eligibility," 79 Fed. Reg. 241,
7 4618, that provides examples of limitations that may comprise
"significantly more." Id. at 74624.
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The Appellant's argument is not persuasive. Claim 19 is directed to a
method for settling insurance claims reciting steps of producing a digital
image, issuing an insurance policy, and storing the representations in an
accessible database that, when searched, reveals the issuer and conceals the
identity of the owner (id. at 21) - steps that all are part of the process for
providing an insurance policy, i.e., the abstract idea. The additional
limitations beyond the abstract idea are directed to insurance processing.
Claim 19 does not recite that the steps are performed by a computer, nor any
particular computer process to implement the identifying, concealing, and
paying; the steps recited can all be performed manually. Although,
arguably, the steps of producing and storing the digital representation may
be performed by a computer, these steps do not transform the article into a
different article. The data, such as serial numbers, remain data. Further,
producing, storing, and recognizing a digital representation of a physical
object are "well-understood, routine, [and] conventional activities previously
known to the industry." Content Extraction and Transmission LLC v. Wells
Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347--49 (Fed. Cir. 2014) ("The
concept of data collection, recognition, and storage is undisputedly well-
known. Indeed, humans have always performed these functions .... the use
of a scanner or other digitizing device to extract data from a document was
well-known at the time of filing, as was the ability of computers to translate
the shapes on a physical page into typeface characters"). The
"unconventional steps" and "limitations other than those well-understood,
routine and conventional" are business-related steps that simply elaborate on
the abstract idea.
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For at least the reasons above, we are not persuaded of Examiner error
by the Appellant's argument that at least one of the elements or combination
amounts to significantly more than the abstract idea. Appeal Br. 17.
In view of the foregoing, we sustain the Examiner's rejection under
35 U.S.C. § 101 of claim 19, and thus also claim 26 which falls with claim
19.
Dependent claims 20--25 and 27-31
The Appellant argues that the Examiner's rejection of dependent
claims 20-25 and 27-31under35 U.S.C. § 101 is in error because each of
the dependent claims provide "additional significant elements" that are also
significantly more than the abstract idea. See Appeal Br. 18-19. For
reasons similar to those discussed above with respect to claim 19, we
disagree. Further, the elements of dependent claims 20 and 27 narrow the
type of item being insured, but, contrary to the Appellant's assertion, do not
specify that the limitation is performed by a specific machine. Id. at 18.
The elements of dependent claims 21-25 and 28-31 provide additional
insurance policy restrictions and specifications, but do not "link the claim to
a particular technological environment" or "ensure" that the claim "is more
than a drafting effort designed to monopolize the [abstract idea]." Alice, 134
S.Ct. at 2357 (citing Mayo, 132 S.Ct. at 1297).
Thus, we sustain the Examiner's rejection under 35 U.S.C. § 101 of
dependent claims 20-25 and 27-31.
DECISION
The Examiner's rejection of claims 19-31 under 35 U.S.C. § 101 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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