Ex Parte Jayaram et al

Patent Trial and Appeal Board

Oct 18, 2017

13622967 (P.T.A.B. Oct. 18, 2017)

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.
13/622,967 09/19/2012 Jaideep Jayaram 1004.00044 1023
97510 7590 10/19/2017
The Law Office of James Baudino, PLLC
2313 ROOSEVELT DRIVE
SUITE A
ARLINGTON, TX 76016
EXAMINER
PATEL, JAGDISH
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
10/19/2017 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 JAIDEEP JAYARAM and NAGARAJ V. RAO
(WEBCETERA, L.P.)
____________

Appeal 2016-001397
Application 13/622,967
Technology Center 3600
____________

Before NINA L. MEDLOCK, KENNETH G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 1–11 under 35 U.S.C. § 101 as directed to
non-statutory subject matter. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed May 5, 2015), Reply Brief (“Reply Br.,” filed Nov. 17,
2015), and Specification (“Spec.,” filed Sept. 19, 2012), and to the
Examiner’s Answer (“Ans.,” mailed Sept. 18, 2015) and Final Action
(“Final Act.,” mailed Dec. 5, 2014).
2 According to the Appellants, the real party in interest is Webcetera, L.P.
Appeal Br. 2.
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STATEMENT OF THE CASE
The Appellants’ invention relates to “providing location-based
insurance rate quotes.” Spec. ¶¶ 2–7.
Claims 1, 5, and 9 are the independent claims on appeal. Claim 1
(Appeal Br. 18 (Claims App.) is representative of the subject matter on
appeal and is reproduced below:
1. A method of providing location-based insurance rate
quotes, comprising:
prompting, by a mobile electronic device, a user of the
mobile electronic device to input a name into the mobile
electronic device;
transmitting, by the mobile electronic device over a
network to a server, the name input by the user and global
positioning system (GPS)-based location data corresponding to
a location of the mobile electronic device;
receiving from the server by the mobile electronic device
an indication of an insurable property based on the location
data; and
receiving and displaying on the mobile electronic device
a response received from the server including an insurance rate
quote for the insurable property.

ANALYSIS
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
this provision contains an important implicit 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’n for
Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116
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(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) (emphasis added).
The Supreme Court in Alice reiterated the two-step framework, set
forth previously in Mayo Collaborative Services v. Prometheus
Laboratories, 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 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.” 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.
(citing Mayo, 132 S. Ct. at 1298). 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) (citing Mayo, 132 S. Ct. at 1294).
The Court acknowledged in Mayo, that “all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural phenomena,
or abstract ideas.” Mayo, 132 S. Ct. at 1293. We, therefore, look to whether
the claims focus “on the specific asserted improvement in computer
capabilities ... or, instead, on a process that qualifies as an ‘abstract idea’ for
which computers are invoked merely as a tool.” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016).
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Turning to the first step of the analysis, the Appellants argue that
independent claims 1, 5, and 9 are “not directed toward a fundamental
economic practice, such as hedging,” nor any abstract idea. Appeal Br. 6, 9–
10, 14. The Appellants characterize claims 1, 5, and 9 as directed to “a
mobile electronic device that transmits GPS-based location data to receive
an indication of an insurable property based on the GPS-based data.” Id.;
Reply Br. 3, 6, 9. This argument is not persuasive.
The Examiner finds that the claims are directed to the abstract idea of
“determining a rate quote for an insurable property based on the location
(i.e. address) of the property and providing the rate quote to a requesting
person.” Final Act. 3. Claim 1 is not directed to a device, but to “[a]
method of providing location-based insurance rate quotes.” Appeal Br. 18
(Claims App.). Independent claim 5 is directed to a storage device with
instructions that would implement the process of claim 1. Id. at 19.
Independent claim 9 is directed to a system comprising a processor with
modules that perform the functions similar to those of claim 1. Id. at 20.
The limitations of claim 1 (and of claims 5 and 9) provide for prompting
input of data, transmitting data, receiving data, and displaying data including
a rate quote. Id. at 18–20. The Specification provides that the invention is
directed to a location-based insurance quote system and method. Spec.
¶¶ 2–7, 33. In that context, we find that claims 1, 5, and 9 are directed to
receiving, transmitting, and displaying data of location-based insurance
quotes,3 an idea of itself, a method of organizing human activity, and a

3 We note that “[a]n abstract idea can generally be described at different
levels of abstraction. . . . The Board’s slight revision of its abstract idea
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fundamental economic practice long prevalent in commerce. This abstract
idea is similar to ones our reviewing courts have deemed ineligible. See
Versata Dev. Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1333–34
(Fed. Cir. 2015) (determining a price), Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (tailoring content
based on a user’s address or location), Bancorp Svcs., L.L.C. v. Sun Life
Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1278–79 (Fed. Cir. 2012)
(managing a life insurance policy), Credit Acceptance Corp. v. Westlake
Svcs., 859 F.3d 1044, 1054 (Fed. Cir. 2017) (processing an application for
financing a purchase), Content Extraction & Transmission LLC v. Wells
Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (collecting,
recognizing, and storing data), Elec. Power Grp., LLC v. Alstom S.A., 830
F.3d 1350, 1354 (Fed. Cir. 2016) (gathering and analyzing information), and
OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir. 2015)
(offer-based price optimization). The steps and functions recited in claims 1,
5, and 9 involve nothing more than transmitting, receiving, and displaying
data without any specific technology – an abstract idea. See Elec. Power,
830 F.3d at 1354.
Turning to the second step of the analysis, the Examiner finds that the
elements of the claims, taken individually and as an ordered combination,
are not “‘significantly more’ than the abstract idea. Final Act. 5–7. We
agree with and adopt the Examiner’s findings that the claims’ limitations
require no more than a generic computer, do not improve the functioning of
the device or server, nor effect an improvement in any technology or

analysis does not impact the patentability analysis.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed. Cir. 2016).
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technical field. Id. We find unpersuasive the Appellants’ arguments
contending otherwise.
For example, we find unpersuasive the Appellants’ argument that each
of the independent claims “at least recites limitations other than what is
well-understood, routine and conventional in the field, or adds
unconventional steps that confine the claim to a particular useful
application.” Appeal Br. 7, 11, 15; Reply Br. 3, 7, 9. The Specification
supports the Examiner’s finding that the steps of transmitting, receiving, and
displaying data are routine, conventional, well-understood functions of a
generic computer (Final Act. 5–6) in providing for generic servers and
mobile electronic devices for performing the functions. See Spec. ¶¶ 8–11,
13, 16, 20, 26, Figs. 1–3. There is no further specification of particular
technology for performing the steps. See Versata, 793 F.3d at 1334; see also
Enfish, 822 F.3d. at 1336 (focusing on whether the claim is “an
improvement to [the] computer functionality itself, not on economic or other
tasks for which a computer is used in its ordinary capacity”); DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible. The bare fact
that a computer exists in the physical rather than purely conceptual realm ‘is
beside the point’” (citation omitted) (quoting Alice, 134 S. Ct. at 2358)).
The introduction of a computer to implement an abstract idea is not a
patentable application of the abstract idea. Alice, 134 S. Ct. at 2357–58.
The computer implementation here is purely conventional and performs
basic functions. See id. at 2359–60. The Appellants do not provide
evidence to the contrary.
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To the extent the Appellants argue that the use of GPS data to identify
a property is not a conventional, routine, well-understood function of a
generic computer (Appeal Br. 7, 11, 15; Reply Br. 3, 7, 15), we note that
claims 1 and 5 recite receiving an indication of a property based on GPS
location data, and claim 9 recites determining a property affiliated with the
address/converted GPS coordinates. However, none of the independent
claims recites how such an identification or determination would be
performed. See TDE Petroleum Data Sols., Inc., v. AKM Enter., Inc., 657
F. App’x 991, 993 (Fed. Cir. 2016), cert. denied, 137 S. Ct. 1230 (2017)
(“As we discussed at greater length in Electric Power, the claims of the ‘812
patent recite the what of the invention, but none of the how that is necessary
to turn the abstract idea into a patent-eligible application”) (citing Elec.
Power, 830 F.3d at 1353); see also Internet Patents Corp. v. Active Network,
Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015) (“As the district court observed,
claim 1 contains no restriction on how the result is accomplished.”). Rather,
claims 1, 5, and 9 recite receiving, transmitting, determining (in claim 9),
and displaying data using existing, generic technology. See Appeal Br. 18–
20 (Claims App.).
We also find unpersuasive the Appellants’ argument that the claims
are “rooted in computer technology” and “provide a technical connection.”
Reply Br. 8, 11. The Appellants do not identify the technology in which the
claims are rooted, or how the steps of transmitting, receiving, and displaying
data improve computer technology or provide a “technical connection” in a
way that is not generic, i.e., via generic networks.
We further find unpersuasive the Appellants’ argument that “the
claimed invention is not attempting to preclude others from obtaining an
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insurance rate quote for an insurable property or from providing an
insurance rate quote.” Appeal Br. 8, 12, 16; Reply Br. 4, 7, 11 (emphasis
omitted). Although the Supreme Court has described “the concern that
drives this exclusionary principle [i.e., the exclusion of abstract ideas from
patent eligible subject matter] as one of pre-emption,” see Alice, 134 S. Ct.
at 2354, characterizing pre-emption or monopolization as a driving concern
for patent eligibility is not the same as characterizing pre-emption as the sole
test for patent eligibility. “The Supreme Court has made clear that the
principle of preemption is the basis for the judicial exceptions to
patentability,” and “[f]or this reason, questions on preemption are inherent in
and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice, 134 S. Ct. at 2354).
Although “preemption may signal patent ineligible subject matter, the
absence of complete preemption does not demonstrate patent eligibility.” Id.
For at least the reasons above, we are not persuaded of Examiner error
in the rejection of independent claims 1, 5, and 9 under 35 U.S.C. § 101.
Thus, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of claims
1, 5, and 9, and also of dependent claims 2–4, 6–8, 10, and 11, not argued
separately.

DECISION
The Examiner’s rejection of claims 1–11 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)(1)(iv).

AFFIRMED