Ex Parte Longtine et al

Patent Trial and Appeal Board

May 7, 2018

13632568 (P.T.A.B. May. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/632,568 10/01/2012
23460 7590 05/09/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Andrew Longtine
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.
710811 3170
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
05/09/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW LONGTINE and SARA STROIK
Appeal2017-002826
Application 13/632,568
Technology Center 3600
Before JOHN A. JEFFERY, JOHN P. PINKERTON, and
SCOTT B. HOWARD, Administrative Patent Judges.
JEFFERY, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1-5 and 7-10. We have jurisdiction under
35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention generates dynamic messages to market
products, such as insurance. In one implementation, when a customer buys a
particular travel-related product from a partner site, a message is sent to a
provider that sells related products, including travel insurance. Spec. i-fi-1 3 6-
1 Appellants identify the real party in interest as American International
Group, Inc. Br. 1.
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37; Fig. 1. After receiving the message, the provider accesses a database to
retrieve content for a "return message" that can be related to that particular
customer's purchased travel product. Spec. i-fi-138--40. This return message,
which also includes a price quotation, is sent to the partner site and relayed
to the customer. Spec. i-fi-151-54; Fig. 3. Claim 1 is representative:
1. A system for dynamic messaging comprising:
a physical computer-readable medium having computer-
executable instructions stored thereon, the computer-executable
instructions comprising a dynamic messaging program
including computer executable instructions comprising a user
interface module, a message-content determining module, a
product price calculating module, and a factor group lists sub-
module;
a processor adapted to execute the dynamic messaging
program contained on the physical computer-readable medium;
a physical computer-readable medium having computer-
executable instructions stored thereon, the computer-executable
instructions comprising a web-enabled interface module
executably arranged with the processor, the web-enabled
interface module adapted to exchange information with a
partner site over the internet; and
a data storage device operably arranged with the
processor, the data storage device containing a plurality of
message-contents relating to a plurality of travel insurance
products;
wherein the product price calculating module includes
computer executable instructions adapted to calculate a price
quotation for a travel insurance product based upon information
received from the partner site through the web-enabled interface
module, the information relating to a travel product selected on
the partner site by a customer, and the message-content
determining module includes computer executable instructions
adapted to select, based upon the information relating to the
travel product selected on the partner site by the customer, at
least one message-content related to the travel product from the
message-contents stored in the data storage device, and wherein
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the factor group lists sub-module is adapted to allow a user to
create through the user interface module a list of message-
contents that are classified according to a data field parameter
received in the information relating to the travel product
selected on the partner site by the customer.
THE REJECTION
The Examiner rejected claims 1-5 and 7-102 under 35 U.S.C. § 101
as directed to non-statutory subject matter. Final Act. 8-9. 3
CONTENTIONS
The Examiner finds that the claimed invention is directed to an
abstract idea, namely providing insurance products-a fundamental
economic practice. Final Act. 8-9. According to the Examiner, the claimed
elements do not add significantly more to the abstract idea because, among
other things, the claims recite generic computing functionality that performs
the recited fundamental economic practice. Final Act. 9; Ans. 2-9. Based
on these findings, the Examiner concludes that the claims are ineligible
under§ 101.
Appellants argue that claim 1 recites specific physical equipment
configured to exchange information over the internet to select dynamic
messages. Br. 4. According to Appellants, claim 1 satisfies the machine-or-
transformation test by including the recited processor, web-enabled interface
2 Although the Examiner includes cancelled claims 11, 12, 14, and 15 in the
rejection (Final Act. 8), we nonetheless omit those claims here for clarity,
and treat the Examiner's error in this regard as harmless.
3 Throughout this opinion, we refer to (1) the Final Rejection mailed
February 26, 2015 ("Final Act."); (2) the Appeal Brief filed February 23,
2016 ("Br."); and (3) the Examiner's Answer mailed July 29, 2016 ("Ans.").
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module, and data storage device operably arranged with the processor. Br.
5. Appellants add that the claimed invention is rooted in computer
technology to satisfy persistent needs arising in the field of travel insurance
sales over the internet by providing tailored information responsive to
information provided by a customer over the internet. Br. 6. Appellants
also argue that the limitations of claims 3 and 4 further link the claimed
system to the recited functionality to help increase marketability of travel
insurance products for which quotes are delivered. Br. 7-8.
ISSUE
Has the Examiner erred in rejecting claims 1-5 and 7-10 by
concluding that they are directed to ineligible subject matter under § 101?
This issue turns on whether the claimed invention is directed to a patent-
ineligible abstract idea and, if so, whether the claim's elements---considered
individually and as an ordered combination-transform the nature of the
claim into a patent-eligible application of that abstract idea.
ANALYSIS
To determine whether claims are patent eligible under§ 101, we apply
the Supreme Court's two-step test articulated in Alice Corp. Proprietary Ltd.
v. CLS Bank International, 134 S. Ct. 2347 (2014). First, we determine
whether the claims are directed to a patent-ineligible concept: laws of nature,
natural phenomena, and abstract ideas. Id. at 2354--55. If so, we then
proceed to the second step and examine the claim's elements-both
individually and as an ordered combination-to determine whether the claim
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contains an "inventive concept" sufficient to transform the claimed abstract
idea into a patent-eligible application. Id. at 2357.
Alice Step One
Applying Alice step one, we are not persuaded of error in the
Examiner's finding that the claimed invention is directed to an abstract idea,
namely, creating messages to promote insurance products to a customer-a
fundamental economic practice. See Final Act. 8-9.
Independent claim 1 recites a dynamic messaging system that
comprises, among other things, various modules for performing specified
functions, where a "product price calculating module," can calculate a price
quotation for a travel insurance product based on information received from
a partner site through a web-enabled interface module, where the
information relates to a travel product that a customer selects on the partner
site. The claim further recites a "message-content determining module" that
selects "message-content" related to the travel product from a data storage
device. Lastly, the claim recites a "factor group lists sub-module" that
allows a user to create a list of "message-contents" that are classified
according to a data field parameter in the received information.
According to Appellants' Specification, when a customer buys a
particular travel-related product from a partner site 102, a message is sent to
provider 100 that sells products related to those offered by the partner sites,
including travel insurance. Spec. i-fi-136-37; Fig. 1. After receiving the
message, the provider accesses a database to retrieve content for a "return
message" that can be related to that particular customer's purchased travel
product. Spec. i-fi-138--40. This return message, which also includes a price
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quotation, is sent to the partner site and relayed to the customer. Spec.
ifif 51-54; Fig. 3.
As noted in the Specification's paragraph 60, users can create or
modify lists of message-contents that are classified or organized according
to various parameters received from incoming requests. Thus, users can
create reusable messages lists that are stored in a database for use when
messages are dynamically constructed. Spec. if 60.
In essence, the system of claim 1 enables: (1) calculating a price for
travel insurance related to a travel product selected by a customer at a
partner site; (2) selecting particular content for a message related to that
product; and (3) creating a list of particular items of content that are
classified according to received parameters.
Despite Appellants' arguments to the contrary (Br. 5-7), we agree
with the Examiner that claim 1 is directed to an abstract idea, namely,
creating messages to promote insurance products to a customer, given that
the recited dynamic messaging system is directed to that end and, therefore,
a fundamental economic practice as the Examiner indicates. Final Act. 9.
Such fundamental economic and business practices are often held to be
abstract. See, e.g., Alice, 134 S. Ct. at 2356 (holding the concept of
intermediated settlement is an abstract idea directed to a "fundamental
economic practice long prevalent in our system of commerce" (citation
omitted)); see also buySAFE v. Google, Inc., 765 F.3d 1350, 1353-54 (Fed.
Cir. 2014) (citing cases where contractual relations at issue constituted
fundamental economic practices, and noting that forming or manipulating
economic relations may involve an abstract idea); Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass 'n, 776 F.3d 1343, 1347
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(Fed. Cir. 2014) (explaining that claims directed to "the mere formation and
manipulation of economic relations" and "the performance of certain
financial transactions" have been held to involve abstract ideas).
Furthermore, it well settled that collecting information is within the
realm of abstract ideas---even when the information is limited to particular
content. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016). It is also well settled that analyzing information by steps people
go through in their minds, or by mathematical algorithms, without more, is
essentially a mental process within the abstract idea category. Id. at 1354.
And merely presenting the results of abstract processes of collecting and
analyzing information, without more (such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis.
Id.
Similar to the claims at issue in Electric Power, the claimed invention
here gathers, manipulates, analyzes, and presents information of a specified
content, but does not use any particular inventive technology for performing
those functions. Cf Credit Acceptance Corp. v. Westlake Servs., 859 F.3d
1044, 1047, 1054--56 (Fed. Cir. 2017) (holding claims reciting system for
generating financing packages based on financial information received from
a user terminal via a network for presenting financing terms to the user for
immediate purchase were directed to an abstract idea); see also EasyWeb
Innovations, LLC v. Twitter, Inc., 689 F. App'x 969, 969--71 (Fed. Cir.
2017) (non-precedential) (holding claims reciting message publishing
system that ( 1) converted part of a received message to a different format,
and (2) published the converted portion were directed to the abstract idea of
receiving, authenticating, and publishing data).
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That Appellants' claimed invention calculates a price quotation based
on received information does not make the recited abstract idea less abstract.
See OIP Techs. v. Amazon.com, Inc., 788 F.3d 1359, 1361-63 (Fed. Cir.
2015) (holding that method of pricing a product for sale using offer-based
price optimization was directed to an abstract idea). We reach the same
conclusion regarding the user's ability create a list of particular items of
content that are classified according to received parameters, for it is well
settled that classifying and storing data in an organized manner is likewise
an abstract idea. See TL! Comm., LLC v. AV Auto., LLC, 823 F.3d 607, 610,
613 (Fed. Cir. 2016).
In short, the claimed invention is directed to creating messages to
promote insurance products to a customer-a fundamental economic and
business practice. Even assuming, without deciding, that the claimed
invention enhances the customer's shopping experience and increases travel
insurance sales as Appellants contend (Br. 6), that does not change the fact
that the claimed invention is, in essence, directed to a fundamental business
practice and, therefore, an abstract idea. A claim for a useful or beneficial
abstract idea is still an abstract idea. See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379-80 (Fed. Cir. 2015).
We, therefore, agree with the Examiner that claim 1 is directed to an
abstract idea.
Alice Step Two
Nor do the recited elements---considered individually and as an
ordered combination-transform the nature of claim 1 into a patent-eligible
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application of the abstract idea to ensure that the claim amounts to
significantly more than that idea. See Alice, 134 S. Ct. at 2357.
That the recited dynamic messaging system includes (1) computer-
readable media with computer-executable instructions, (2) a processor, and
(3) a data storage device does not change our conclusion. As the Examiner
indicates, the claimed invention merely uses generic computing components
to perform the recited abstract idea. Final Act. 9; Ans. 4---6. Indeed, these
generic computing components merely do that which can be performed
mentally or with a pen and paper---exclusive mental functions ineligible for
patent protection under § 101. See CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011).
Even assuming, without deciding, that the recited components add
efficiency, any speed increase comes from the capabilities of the generic
computer components-not the recited process itself. See FairWarning IP,
LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) ("[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." (quoting Bancorp Servs., LLC v. Sun Life Assurance Co.,
687 F.3d 1266, 1278 (Fed. Cir. 2012))). Like the claims in FairWarning,
the focus of claim 1 is not on an improvement in computer processors as
tools, but on certain independently abstract ideas that use generic computing
components as tools. See FairWarning, 839 F.3d at 1095 (citations and
quotation marks omitted); accord Ans. 9 (noting that the claimed invention
uses existing technology to solve a business problem-not a technical
problem).
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In short, merely reciting these generic computing components cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Alice, 134 S. Ct. at 2358. In other words, merely reciting an abstract idea
while adding the words "apply it with a computer" does not render an
abstract idea non-abstract: there must be more. See id. at 2359. Nor does
the claimed invention improve the computer processor device's functionality
or efficiency, or otherwise change the way that device functions. Cf Enfzsh
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016).
Nor do we find availing Appellants' contention that claim 1 satisfies
the machine-or-transformation test. Br. 5. The machine-or-transformation
test, although not the only test, can nevertheless provide a "useful clue" in
the second step of the Alice framework. Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 716 (Fed. Cir. 2014) (quoting Bilski v. Kappas, 561 U.S. 593,
604 (2010)). Under the machine-or-transformation test, a claimed process is
patent-eligible if: (1) it is tied to a particular machine or apparatus, or (2) it
transforms a particular article into a different state or thing. In re Bilski, 545
F.3d 943, 954 (Fed. Cir. 2008), aff'd sub nom. Bilski v. Kappas, 561 U.S.
593 (2010).
Our emphasis underscores that the machine-or-transformation test
applies to claimed processes-a category of subject matter under § 101 that
is distinct from the dynamic messaging system recited in claim 1 that falls
within the apparatus category in that statute. Nevertheless, Appellants'
contention that (1) the recited processor, web-enabled interface module, and
data storage device recite a particularly-programmed machine, and (2) using
these features "breathes life and meaning" into the claims (Br. 5) falls well
short of proving that these features add significantly more to the recited
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abstract idea by improving these elements' functionality or efficiency, or
otherwise change the way they function. Cf Enfzsh, 822 F.3d at 1335. As
noted previously, these elements merely use generic computing components
to implement the recited abstract idea.
For the foregoing reasons, the recited elements---considered both
individually and as an ordered combination---do not contain an "inventive
concept" sufficient to transform the claimed abstract idea into a patent-
eligible application. Therefore, we are not persuaded that the Examiner
erred in rejecting claim 1, and claims and 2, 5, and 7-10 not argued
separately with particularity.
Claims 3 and 4
We also sustain the Examiner's rejection of claim 3 reciting that the
dynamic messaging system is adapted to send (1) the price quotation
information, and (2) the selected message-content to the partner site through
the web-enabled interface. Claim 4 adds that these two data elements are
combined and sent to the partner site as a message packet.
Even assuming, without deciding, that these additional features further
link the claimed system to the functionality of claim 1 that helps increase the
marketability of the travel product for which a quote is delivered as
Appellants contend (Br. 7), the fact that the recited data is combined and
sent through a web-enabled interface as a packet does not add significantly
more to the abstract idea. It is well settled that sending and receiving
packetized data via a network, such as the internet, is conventional generic
computing functionality. See buySAFE, 765 F.3d at 1355 ("That a computer
receives and sends the information over a network-with no further
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specification-is not even arguably inventive."); accord Ans. 10-12 (noting
generic computing functionality in the Specification and noting the claimed
invention does not improve computing technology).
Therefore, we are not persuaded that the Examiner erred in rejecting
claims 3 and 4.
CONCLUSION
The Examiner did not err in rejecting claims 1-5 and 7-10 under
§ 101.
DECISION
We affirm the Examiner's decision to reject claims 1-5 and 7-10.
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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