Ex Parte KETZEF

Patent Trials and Appeals Board

Jul 8, 2019

12949367 - (D) (P.T.A.B. Jul. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/949,367 11/18/2010
60956 7590 07/10/2019
Professional Patent Solutions
P.O. BOX654
HERZELIYA PITUACH, 46105
ISRAEL
FIRST NAMED INVENTOR
AlonKETZEF
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.
DVS-PU-001-USl 5688
EXAMINER
BAIRD, EDWARD J
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
07/10/2019 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):
office@propats.com
vsherman@propats.com
utalmi@propats.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALON KETZEF
Appeal2017-009073
Application 12/949,367 1
Technology Center 3600
Before ELENI MANTIS MERCADER, BETH Z. SHAW, and SCOTT E. BAIN,
Administrative Patent Judges.
BAIN, Administrative Patent Judge.
DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1-11, 13-23, 36, and 37, which constitute all claims pending in
the application. Claims 12, 24--35, and 38 have been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.
1 Appellant identifies Davidshield, L.I.A. as the real party in interest. App. Br. 2.
Appeal2017-009073
Application 12/949,367
BACKGROUND
The Claimed Invention
The invention relates to "automated insurer-insured interactions." Spec.
,r,r 6-7. More specifically, the invention relates to an efficient insurance claim
payment system, whereby an insured person is paid or reimbursed immediately
upon reporting the cost of an insured event, such as medical treatment for an
accident. Id.
Claims 1, 11, 36, and 37 are independent. Claim 1, reproduced below, is
illustrative of the invention and the subject matter in dispute:
1. A computerized immediate settlement insurance claim payment
system comprising:
at least one which instructions, when read by said at least one
computer, cause said at least one computer to:
issue an insurance policy from an insurer to an insured, and to
associate said insurance policy with an insurance card to be carried
by said insured and, upon occurrence of an insured event, to be
employed as a method of payment by said insured in association with
a card reader to pay for at least part of a cost of said insured event,
said insurance policy including a charge back provision allowing said
insurer to charge back payments made to said insurance card carried
by said insured via an identified credit card of said insured;
automatically verify, in response to presentation of said
insurance card, a right of said insured to receive payment from said
insurer by automatically verifying at least one of:
a value of said payment,
the insured entitled to receive said payment as identified by said
card reader, and
a location of said insurance card as identified by said card
reader;
credit said payment to said insurance card carried by said
insured, in response to said automatically verifying and prior to said
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Application 12/949,367
employing said insurance card by said insured to pay for said at least
part of said cost of said insured event;
request from said insured, at the initiative of said insurer,
following paying of said payment to said insured, documentation
relating to said insured event; and
charge back, at the initiative of said insurer, if said
documentation is not received from said insured by a predetermined
time, at least part of said payment via said identified credit card of
said insured.
App. Br. 18-19 (Claims Appendix) ( emphases added).
The Rejection on Appeal
Claims 1-11, 13-23, 36, and 37 are rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Ans. 2-8. 2
DISCUSSION
The Examiner determined that the claims constitute ineligible subject matter
because they recite the abstract idea of "immediate settlement of an insurance
claim payment," and do not include additional elements that are sufficient to
amount to significantly more than the abstract idea. Ans. 2--4 ( citing Alice Corp. v.
CLS Bank lnt'l, 573 U.S. 208,217 (2014) (describing two-step framework "for
distinguishing patents that claim laws of nature, natural phenomena, and abstract
ideas from those that claim patent-eligible applications of those concepts")).
Appellant argues the Examiner erred because the claimed systems and methods
"provide[] a new and useful improvement to ... computerized immediately
settlement ... whereby the insurer is able to advance a payment to the insured with
2 In the Answer, the Examiner designated the present§ 101 rejection (and
accompanying explanation) as New Grounds of Rejection, and withdrew the
previous§ 101 rejection (and other rejections) set forth in the Final Action.
Appellant addressed the new grounds in the Reply Brief. Reply Br. 3-7.
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Application 12/949,367
minimal risk of not being reimbursed," and therefore "relates to eligible subject
matter under 35 U.S.C. [§] 101." Reply Br. 5.
After the Briefs were filed and Answer mailed in this case, the USPTO
published "Revised Subject Matter Eligibility Guidance" synthesizing case law and
providing agency instruction on the application of§ 101. USPTO's January 7,
2019, 2019 Revised Patent Subject Matter Eligibility Guidance 84 Fed. Reg. 50
(Jan. 7, 2019) ("Guidance"). Under the Guidance, we must look to whether the
claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human activity
such as a fundamental economic practice, or mental processes) ("Step 2A,
Prong One") 3; and
(2) additional elements that integrate the judicial exception into a practical
application (see MPEP § 2106.05(a}-(c), (e}-(h)) ("Step 2A, Prong Two").
See 84 Fed. Reg. at 54--55.
Only if a claim recites a judicial exception and does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not "well-
understood, routine, conventional" in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception.
3 The Guidance refers to "Step One" as determining whether the claimed subject
matter falls within the four statutory categories identified by 35 U.S.C. § 101:
process, machine, manufacture, or composition of matter. This step is not at issue
here, as Appellant's claims recite systems (machines) and methods (processes).
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See id. at 56 ( collectively "Step 2B").
After considering Appellant's arguments in light of the Guidance and
corresponding case law, we are not persuaded the Examiner erred in rejecting the
claims as patent ineligible.
We first address claim 1. We agree with the Examiner's determination that
claim 1 recites an abstract idea. See Guidance at Section III ( describing Step 2A,
Prong One). Specifically, claim 1 recites instructions causing a computer to "issue
an insurance policy," "automatically verify ... a right of [the] insured to receive
payment from [the] insurer," "credit [the] payment" to an insurance card, "request
... documentation," and "charge back" payment if documentation is not received.
App. Br. 18-19. Issuing an insurance policy, verifying the right to receive an
insurance payment (reimbursement of claim), and crediting payment all are basic
aspects of insurance, which, as the Examiner determines, is a fundamental
economic practice. A fundamental economic practice is one of the certain methods
of organizing human activity described as abstract in the Guidance Step 2A, Prong
One. Appellant argues that the claimed system is a "new and useful improvement"
to insurance claim settlement, but new and useful insurance claim settlement is still
insurance claim settlement, which, as described above, is one of certain methods of
organizing human activity.
Proceeding to the next step of the analysis (Guidance Step 2A, Prong Two),
we do not discern (and Appellant does not attempt to identify) any improvement to
computer technology or other integration of the abstract idea into a practical
application. Although claim 1 recites a "computer in which computer program
instructions are stored," nothing in the claim or Specification indicates anything
other than generic computing elements, and the claimed steps themselves pertain to
an insurance claim payment, not to the way a computer operates. Spec. Figs. 1 C,
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Application 12/949,367
IE; App. Br. 18-19. Neither claim 1 nor the Specification provides any details as
to how the computer performs the recited tasks. Reciting a result-oriented solution
that lacks any details as to how the computer performed the modifications is the
equivalent of the words "apply it." Intellectual Ventures Iv. Capital One Fin.
Corp., 850 F.3d 1332, 1341--42 (Fed. Cir. 2017) (citing Elec. Power Grp., LLC,
830 F.3d 1350, 1356 (Fed. Cir. 2016) (cautioning against claims "so result focused,
so functional, as to effectively cover any solution to an identified problem")).
Furthermore, several of the recited steps involve mere data gathering
or output. See MPEP § 2106. 05(g). For example, "issu[ing] an insurance policy,"
"verifying" the "right of [the] insured to receive payment from [the] insurer," and
then crediting the "payment" are data gathering and output steps necessary for any
insurance claims settlement process. See CyberSource v. Retail Decisions, Inc.,
654 F.3d 1366, 1375 (Fed. Cir. 2011) (obtaining information about transactions
using the Internet to verify credit card transactions is data gathering). These steps
do not add meaningfully to the recited insurance settlement transaction.
Finally, Appellant does not identify, and we do not discern, any additional
limitation that is not "well-understood, routine [or] conventional" (Guidance Step
2B). Appellant argues that claim 1 recites a system whereby "the insurer is able to
advance a payment to the insured with minimal risk of not being reimbursed."
Reply Br. 4. We agree with the Examiner's determination, however, that the
"elements involved in the process [ even if they result in the advantage Appellant
alleges] undertake their roles in performance of their activities according to their
generic functionalities[,] which are well-understood, routine and conventional."
Ans. 6. Claim 1, for example, recites an "insurance card to be carried by [the]
insured," which is used in association with a "card reader" to pay for the cost of an
insured event, and be reimbursed for said cost by the insurer. App. Br. 18. As the
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Examiner explains, the use of a card reader (in association with a card) to receive
and send data is recited in claim 1 at a "high level of generality," and does not
impose any meaningful limit on the computer implementation of the abstract idea
of claims settlement. A card and card reader are merely generic components being
used for their conventional functions. See Spec. f 32 ( describing generic insurance
card and credit card).
Even assuming, without deciding, that the claimed invention can process
insurance claims faster than doing so manually, any speed increase comes from the
capabilities of the generic computer components-not the recited process
itself. See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (citing Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278
(Fed. Cir. 2012) ("[T]he fact that the required calculations could be performed
more efficiently via a computer does not materially alter the patent eligibility of the
claimed subject matter.")); see also Intellectual Ventures I LLC v. Erie Indemnity
Co., 711 F. App'x 1012, 1017 (Fed. Cir. 2017) (unpublished) ("Though the claims
purport to accelerate the process of finding errant files and to reduce error, we have
held that speed and accuracy increases stemming from the ordinary capabilities of
a general-purpose computer 'do[] not materially alter the patent eligibility of the
claimed subject matter."'). Like the claims in Fair Warning, the focus of claim 1 is
not on an improvement in computer processors as tools, but on an independently
abstract idea (see supra) that use generic computing components as tools. See
FairWarning, 839 F.3d at 1095.
Accordingly, the Examiner did not err in concluding that claim 1 is directed
to ineligible subject matter. Appellant makes the same arguments regarding
independent claims 11, 36, and 37, all of which recite limitations commensurate in
scope with claim 1, and does not argue the dependent claims separately. For the
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same reasons discussed above, we are not persuaded the Examiner erred as to these
remaining claims. We, therefore, sustain the Examiner's rejection of claims 1-11,
13-23, 36, and 37 under 35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision rejecting claims 1-11, 13-23, 36, and 37
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). See 37 C.F.R. §
41.50(±).
AFFIRMED
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