Ex Parte Machnicki et al

Patent Trial and Appeal Board

Apr 26, 2018

14139876 (P.T.A.B. Apr. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/139,876 12/24/2013
12394 7590
Travelers Companies
c/o Fincham Downs LLC
90 Grove Street Suite 205
Ridgefield, CT 06877
04/30/2018
FIRST NAMED INVENTOR
John P. Machnicki
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.
TRO 1-034-01 2002
EXAMINER
TIBLJAS, SHACOLE C
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
04/30/2018 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):
bripple@travelers.com
docketing@finchamdowns.com
docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN P. MACHNICKI, ROBERT J. KREUZER,
and KEITH D. ANDERSEN
Appeal2017-000965
Application 14/139,876
Technology Center 3600
Before JEAN R. HOMERE, KARA L. SZPONDOWSKI, and
SHARON PENICK, Administrative Patent Judges.
SZPONDOWSKI, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 8-14, constituting all claims pending in the current
application. App. Br. 1. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
Appeal2017-000965
Application 14/139,876
STATEMENT OF THE CASE
Appellants' claimed subject matter is directed to insurance
applications utilizing virtual engineering data to perform claim handling
processes. Spec. i-f 13. Claim 8, reproduced below, is representative of the
claimed subject matter:
8. An insurance claim handling system for resolving an
insurance claim for an insurance liability policy based on remotely
measured engineering data, comprising:
a first remote wireless sensor device coupled to measure
first engineering data at a first location, the first engineering data
being descriptive of a first value of an engineering parameter for a
first object that is not covered by the insurance liability policy;
a second remote wireless sensor device coupled to measure
second engineering data at a second location, the second
engineering data being descriptive of a second value of the
engineering parameter for a second object that is not covered by
the insurance liability policy;
a processing device in communication via a
telecommunications network with each of the first and second
remote wireless sensor devices; and
a non-transitory memory device in communication with the
processing device, the non-transitory memory device storing
instructions that when executed by the processing device result in:
receiving, by the processing device and from the first
remote wireless sensor device, the first engineering data;
receiving, by the processing device and from the
second remote wireless sensor device, the second
engineering data;
determining, based on the first and second
engineering data and historic insurance claims data for the
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first and second objects, a mathematical relationship
between the engineering parameter and a likelihood of loss;
providing, by the processing device and to a remote
mobile device, and after the determining of the
mathematical relationship, an interface configured to
receive current insurance claim data;
receiving, via the interface, the current insurance
claim data, the current insurance claim data comprising a
current value for the engineering parameter;
determining, based on an application of the
mathematical relationship to the current value for the
engineering parameter from the current insurance claim
data, whether the current insurance claim should be (i)
denied or (ii) allowed; and
outputting, via the interface, an indication of the
determination.
REJECTIONS
Claims 8-14 stand rejected under 35 U.S.C. § 101 as being directed to
non-patent eligible subject matter.
Claims 8, 12, and 14 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination of Ochs et al. (US 2006/0015374 Al;
published Jan. 19, 2006) ("Ochs"), Collins (US 2011/0161119 Al; published
June 30, 2011), and Huynh et al. (US 2015/0088557 Al; published Mar. 26,
2015) ("Huynh").
Claim 10 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Ochs, Collins, Huynh, and Finnell (US
2002/0139056 Al; published Oct. 3, 2002).
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Claim 11 stands rejected under 35 U.S.C. § 103 as being unpatentable
over the combination of Ochs, Collins, Stephens (US 2007 /0203 7 5 8 A 1;
published Aug. 30, 2007), and the NDT Resource Center, "Piezoelectric
Transducers", available at https://www.nde-ed.org/Education
Resources/CommunityCollege/Ultrasonics/EquipmentTrans/piezotransducer
s.htm (last visited April 16, 2018) ("NDT").
Claims 9 and 13 stand rejected under 35 U.S.C. § 103 as being
unpatentable over the combination Ochs, Collins, Stephens, and Kumar et al.
(US 2006/0100912 Al; published May 11, 2006) ("Kumar").
ANALYSIS
35 USC§ 101 Rejections
Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347
(2014) identifies a two-step framework for determining whether claimed
subject matter is judicially-excepted from patent eligibility under 35 U.S.C.
§ 101. In the first step, "[ w ]e must first determine whether the claims at
issue are directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner determines the claims are "directed towards receiving
information, comparing data, providing a way to receive data, receiving
data, and determining an outcome which is simply collecting and comparing
data to make a determination on an insurance claim using a mathematical
relationship, both of which have identified by the court to be abstract ideas."
Ans. 3; see also Final Act. 4.
Appellants argue the Examiner applies the wrong judicial exception.
App. Br. 12-13. According to Appellants, the judicial exception within the
claims is "the recited 'mathematical relationship,' which is akin to a 'law of
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nature."' App. Br. 13. Appellants contend the claims provide "a specific
manner of defining and utilizing the 'law of nature' to determine whether a
commercial insurance transaction is economically advantageous (e.g., based
on calculated risk)." App. Br. 13; see also Reply Br. 2-3. Appellants
further argue the claims track those of Diamond v. Diehr, 450 U.S. 175,
188-189 (1981 ), where "a mathematical formula was utilized to effectuate
an improvement in a commercial process." App. Br. 13.
Appellants argue the claims are not directed to an abstract idea, but,
rather, are directed to a law of nature. In other words, Appellants admit the
claims are directed to a judicial exception to patentability. See Alice, 134 S.
Ct. at 2354. Appellants have not persuasively argued why the claimed
mathematical relationship is a "law of nature" instead of an "abstract idea."
Mathematical formulas have been labelled by the courts as both abstract
ideas and laws of nature. See MPEP 2106.04; Alice Corp. Pty. Ltd. v. CLS
Bank Intern., 134 S. Ct. 234 7, 23 50 (2014) (citing to Gottschalk v. Benson,
93 S. Ct. 253 (1972), Parker v. Flook, 437 U.S. 584 (1987), and Bilski v.
Kappas, 130 S. Ct. 3218 (2010). However, for purpose of the analysis, it
does not specifically matter which judicial exception to patentability we find
the claimed mathematical relationship to be. The Examiner has sufficiently
identified a judicial exception.
We agree with the Examiner that Appellants' claims are directed to
the abstract idea of resolving an insurance claim by receiving information,
comparing data, providing a way to receive data, receiving data, and
determining and outputting a result. See, e.g., Elec. Power Grp. LLC v.
Alstom, 830 F.3d 1350 (Fed. Cir. 2016) (characterizing collecting
information, analyzing information by steps people go through in their
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minds, or by mathematical algorithms, and presenting the results of
collecting and analyzing information, without more, as matters within the
realm of abstract ideas); Content Extraction & Transmission LLC v. Wells
Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014) (characterizing collecting data,
recognizing certain data within the collected data set, and storing the
recognized data in memory as drawn to an abstract idea); SmartGene, Inc. v.
Advanced Biological Labs., SA, 555 Fed. Appx. 950, 955 (Fed. Cir. 2014)
("comparing new and stored information and using rules to identify medical
options" is an abstract idea); Digitech Image Techs., LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) ("\Vithout additional
limitations, a process that emp 1oys mathematical algorithms to manipulate
existing infonnation to generate additional infon1mtion is not patent
eligible.").
Moreover, Appellants admit the claimed engineering analysis was
performed manually by third party engineering resources in the prior art.
See Spec. i-f 1, 15. Thus, the recited steps involve no more than abstract
concepts that could be performed in the human mind, or by a human using
pen and paper, without the need of a computer. See CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson.").
Bancorp Services L.L.C. v. Sun L(fe Assur. Co. o,f Canada, 687 F.3d 1266
(Fed. Cir. 2012) ("Here, in contrast, the computer merely permits one to
manage a stable value protected life insurance policy more etlicient1y than
one could mentally. Using a computer to accelerate an ineligible mental
process does not make that process patent-eligible.").
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We are not persuaded the claims are similar to those in Diehr. In
Diehr, an uncured product was transformed into a cured product when
raising the temperature caused a chemical change in the physical state of the
product. Diehr, 450 U.S. at 187. The Court held that the claimed method
was patent eligible, notwithstanding its use of a known mathematical
equation (the Arrhenius equation). Diehr, 450 U.S. at 177. The Court found
the claims were not an attempt to patent an unpatentable principle (e.g.,
mathematical fonnula), but rather an industrial process "which, when
considered as a whole, is performing a function which the patent laws were
designed to protect" even though it implemented or applied a mathematical
formula." Id. at 192. Unlike in Diehr, we fail to see a transformation to "a
different state or thing," as a part of the claimed invention. Diehr, 450 U.S.
at 184.
In the second step of the Alice analysis, we "consider the elements of
each claim both individually and 'as an ordered combination' to determine
whether the additional elements 'transform the nature of the claim' into a
patent-eligible application." Alice, 134 S. Ct. at 2355 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)).
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, 566
U.S. at 72-73).
The Examiner further determines the additional elements in the claims
(e.g. sensor devices, processing device, and memory devices) do not provide
meaningful limitations to transform the abstract idea into a patent eligible
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application of the abstract idea such that the claims amount to significantly
more than the abstract idea itself. Final Act. 4.
Appellants argue "the components of the recited system can[ not]
reasonably be characterized as 'a generic computer."' App. Br. 14.
According to Appellants, the "recited wireless sensors, such as the vibration
sensor, a strain sensor, a displacement sensor, and a fluid sensor of claim 11,
are not 'generic', nor is the type of analysis required for determining of the
mathematical relationship." App. Br. 14; see also Reply Br. 3. Appellants
further argue "the functional limitations in addition to and supporting the
utilization of the mathematical relationship comprise something more in and
of themselves." App. Br. 14.
We are not persuaded by Appellants' arguments and agree with the
Examiner. See Final Act. 4; Ans. 3. The claims recite a "remote wireless
sensor device," a "processing device," a "memory device," and an
"interface." See App. Br. 28-30. Claim 11, which is dependent on claim 8,
further recites where "remote wireless sensor devices comprise one or more
of a vibration sensor, a strain sensor, a displacement sensor, and a fluid
sensor." See App. Br. 29. Appellants have not adequately shown how the
claims are performed such that they are not routine, conventional functions
of a generic computing device, nor have Appellants provided evidence why
the claims are not routine and conventional functions of a generic computing
device. The functions performed in the claims, i.e. measuring data,
receiving data, analyzing data, and outputting data, are routine,
conventional, and well-known functions, and require nothing more than a
generic computer performing generic computer functions. As such, the
claims amount to nothing significantly more than an instruction to
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implement the abstract idea on a generic computer -- which is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 134 S.
Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
claims 8-14.
35 US. C. § 103 Rejections
Claim 8
Appellants argue the Examiner erred in finding the combination of
Ochs, Collins, and Huynh teaches or suggests "determining, based on the
first and second engineering data and historic insurance claims data for the
first and second objects, a mathematical relationship between the
engineering parameter and a likelihood of loss," as recited in independent
claim 8. App. Br. 16-22.
Appellants argue "it is unclear how [Ochs'] 'first yield per unit land'
is reasonably believed to be equivalent to the claimed first and second
engineering data." App. Br. 19. According to Appellants, the "first yield
per unit land" is described as "measurement of actual yield for a crop grown
in a given field" and even under the broadest reasonable interpretation of the
claim language, "engineering data does not encompass crop yield data."
App. Br. 19. Appellants further argue it is not clear "how it can reasonably
be asserted that the single 'first yield' data is equivalent to two (2) separate
pieces of engineering data ('first' and 'second') as claimed." App. Br. 19.
We are not persuaded. Appellants do not explicitly define
"engineering data" in the Specification, nor do Appellants direct our
attention to or provide an explicit definition. Appellants' Specification
states, in part, "engineering data ... may, for example, be descriptive of
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structure characteristics, machinery characteristics, event characteristics
(e.g., details descriptive of construction activities and/or events and/or
details of weather events), soil types, flood zone, flood history, and/or other
flood related data." Spec. i-f 39.
Ochs teaches a sensor measuring a first yield per land unit of a
particular crop associated with a field, where the sensor can comprise one or
more of a mass sensor, weight sensor, flow sensor, moisture sensor,
piezoelectric transducer, grain flow sensor, grain moisture sensor, ground
speed sensor, head position switch, impact force sensor, plate displacement
sensor, volume measurement device, load cell system, radiometric system,
and a capacitance sensor. Ochs i-f 31. For example, the sensor "may include
a moveable member (e.g., a plate) that is associated with the path of
harvested agricultural product and mounted via a piezoelectric transducer or
another electromechanical device for measuring force or displacement
associated with the flow of the agricultural product (e.g., grain)." Ochs i-f 26.
During operation of the sensor, "the movable member is displaced by the
flow of agricultural product (e.g., grain) associated with a harvester,
combine or other agricultural equipment such that the amount of
displacement or force measured by piezoelectric transducer indicates the
quantity, volume, or weight of harvested grain." Ochs i-f 26. The sensor may
also include a moisture detector for measuring the moisture content of the
grain, and used to adjust the weight, volume, or quantity of the harvested
grain "to compensate for grain moisture to accurately determine the yield of
a particular crop." Ochs i-f 26. Ochs also describes that "each soil zone
within the field may be associated with a corresponding yield or yield range
for the particular crop." Ochs i-f 45. In other words, Ochs' first yield per
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land unit is determined based on data from one or more sensors, which
collect or measure a range of different types of data. Under the broadest
reasonable interpretation in light of the Specification, particularly
Appellants' description of engineering data in paragraph 39, we agree with
the Examiner that the first yield per land unit teaches or suggests
engineering data. For example, the first yield per land unit may be
descriptive of a machinery characteristic (force) and/or an event
characteristic (moisture) and/ or soil type (soil zone). Moreover, we agree
with the Examiner that because more than one sensor may be used, the first
yield per land unit data can encompass first and second pieces of
engineering data. See Ans. 4--5; see also, e.g., i-f 45 ("each distinct soil zone
within the field may be associated with a corresponding yield or yield range
for the particular crop").
Appellants further argue "it is unclear how [Ochs'] 'second yield per
unit land' is reasonably believed to be the equivalent to the claimed historic
insurance claims data/or the first and second objects." App. Br. 19.
Appellants argue "[h ]istoric crop yield data is simply not equivalent to
historic insurance claim data." App. Br. 19.
We are not persuaded. Appellants do not explicitly define "historic
insurance claims data" in the Specification, nor do they provide a definition
in the Briefs. Under the plain and ordinary meaning of the claim language,
we interpret "historic insurance claims data" to refer to any historic data
relating to an insurance claim.
Ochs describes estimating a second yield per land unit of the
particular crop associated with the defined geographic area. Ochs i-f 32. The
second yield per land unit data is estimated using historic yield data and may
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be estimated in accordance with various techniques, including estimating
excluding yields associated with compliant fields (e.g., compliance with
insurance policy requirements) or estimating excluding yields associated
with noncompliant fields (e.g., noncompliant with insurance policy
requirements.) Ochs i-f 17, 32. Because the second yield per land unit may
take into account historic compliance or noncompliance with insurance
policy requirements, we agree with the Examiner that the second yield per
land unit teaches or at least suggests historic insurance claims data.
Appellants also argue "the pending claims recite a determination of a
mathematical relationship between the engineering parameter and a
likelihood of loss, a feature which the Examiner ignores, and which Ochs
simply and entirely fails to contemplate." App. Br. 20. Appellants argue the
"comparison of the crop yield data in Ochs has nothing to do with a 'risk
(likeliness) of loss'. Instead, it is reviewed upon an actual occurrence of a
loss to determine ifthe grower should be paid or not." Reply Br. 4.
We are not persuaded. Ochs is generally directed to an insurance
management system that "may be applied to managing an insurance policy
or endorsement for yield-monitored crop insurance, Best Management
Practices (BMP) crop insurance, another form of crop insurance, or risk
management of growing practices." Ochs i-f 27, Fig. 1 (emphasis added).
Ochs describes "[a]n insurance product comprises a crop risk insurance
policy and an endorsement assembly associated with the crop insurance
policy. The crop risk insurance policy component may insure against risk of
loss for drought or another type of loss, for example. An endorsement
assembly is associated with the crop risk insurance policy component."
Ochs i-f 83 (emphasis added). Ochs describes determining the difference or
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variation between the first yield unit data and the second yield unit data.
Ochs i-f 16. The difference or an indicator based thereon may be provided to
another entity, such as a person or business associated with claims and
insurance on the field. Ochs i-fi-116, 62. Under another embodiment, the
difference or indicator is only transmitted if it the difference exceeds a
minimum threshold. Ochs i-f 21. In other words, Ochs teaches managing an
insurance policy, including risk management and insuring against risk of
loss, as well as providing an indicator or difference to the insurer of the
comparison between the first yield unit data and second yield unit data.
Based on these disclosures, we agree with the Examiner that Ochs teaches or
at least suggests the disputed limitation.
Appellants further argue "the motivation to combine the cited
references is not supported by the references themselves and is not relevant
to the pending claims." App. Br. 21. Appellants argue "given the disparate
setups and functionality disclosed in both Ochs and Collins, it is unclear why
anyone would have looked to these references to search for a different
manner of claim analysis, much less the specifically recited system for
deriving a mathematical formula to facilitate claims handling based on
acquired engineering data." App. Br. 21-22.
We are not persuaded by Appellants' arguments because they do not
persuasively address the Examiner's findings. The Examiner has articulated
how the claimed features are met by the proposed combination of the
reference teachings with some rational underpinning consistent with the
guidelines stated in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007). See
Final Act. 7. Contrary to Appellants' contentions, the motivation for
combining the references need not be found in the references sought to be
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combined, but may be found in any number of sources, including common
knowledge, the prior art as a whole, or the nature of the problem itself.
Dystar Textilfarben GmbH & Co. Deustchland KG v. CH Patrick Co., 464
F.3d 1356, 1361 (Fed. Cir. 2007). In addition, although Appellants argue
that the combination is no more than impermissible hindsight (App. Br. 22),
this argument is not persuasive because Appellants do not identify, nor do
we discern, any knowledge that the Examiner relied upon that was gleaned
only from Appellants' disclosure and that was not otherwise within the level
of ordinary skill at the time of the invention. In re Cree, Inc., 818 F .3d 694,
702 n.3 (Fed. Cir. 2016) (Appellant's hindsight argument of no moment
where the Examiner provides a sufficient, non-hindsight reason to combine
the references).
Accordingly, we are not persuaded the Examiner erred in rejecting
independent claim 8 under 35 U.S.C. § 103 and we, therefore, sustain the
rejection. For the same reasons, we sustain the 35 U.S.C. § 103 rejection of
dependent claims 11-14, which were not separately argued.
Claim 10
Appellants argue the Examiner errs in finding the combination of
Ochs, Collins, Huynh, and Finnell teaches or suggests "wherein the engineer
parameter is descriptive of at least one of: (1) a utility strike event; (ii) a
building collapse event; (iii) a reactive aggregate event; (iv) a mold event;
(v) an expansive soils event; (vi) a pipe-related event; (vii) a sprinkler
damage event; (viii) a fire event; (ix) a retaining wall failure event; (x) an ice
dam event; (xi) a concrete failure event; (xii) a roof damage event; (xiii) a
dezincification event; (xiv) a galvanization event; and (xv) a soil settlement
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event," as recited in dependent claim 10. App. Br. 23-26. Specifically,
Appellants dispute "that a heat sensor detecting heat of an approaching fire
is equivalent to the claimed engineering parameter ... descriptive of . .. a
fire event." App. Br. 24. Appellants argue "[t]he claimed engineering
parameter as-claimed ... is recited as being utilized to develop a
mathematical relationship with respect to a likelihood of loss ... [and] [ n Jo
such relationship or determination is described in Finnell." App. Br. 24.
We are not persuaded by Appellants' arguments. The Examiner relies
on Finnell's heat sensor that is used to detect an approaching fire to teach or
suggest an engineering parameter descriptive of a (viii) fire event. Final
Act. 8, citing Finnell i-f 8. The Examiner modifies the sensing system of
Ochs, Collins, and Stevens to monitor fire events as taught by Finnell.
Appellants' arguments do not address the combination of references as
relied upon by the Examiner. The Examiner relies on Ochs, not Finnell, to
teach or suggest the mathematical relationship with respect to a likelihood of
loss, as discussed above. Accordingly, we are not persuaded the Examiner
erred.
Appellants present similar arguments as to the combination of Ochs,
Collins, Stephens, and Finnell, as presented above with respect to claim 8.
For the same reasons as discussed above, we are not persuaded by
Appellants' arguments.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection of
dependent claim 8.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 8-14 is affirmed.
The Examiner's 35 U.S.C. § 103 rejection of claims 8-14 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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