Ex Parte McKay et al

Patent Trials and Appeals Board

May 31, 2018

11968923 - (D) (P.T.A.B. May. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
11/968,923 01/03/2008
23460 7590 06/04/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Stephen McKay
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.
702407 9794
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/04/2018 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 STEPHEN McKAY and DUNCAN SPENCER
Appeal2017-001245 1
Application 11/968,923
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and
PHILIP J. HOFFMANN, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the Final Rejection of claims 1-10, 13, 15, 17,
20, 21, and 23. We have jurisdiction to review the case under 35 U.S.C.
§§ 134 and 6.
The invention relates generally to "assessment of environmental risk
associated with a parcel of real property." Spec. ,r 2.
Claim 1 is illustrative:
1 The Appellants identify American International Group, Inc. as the real
party in interest. Appeal Br. 1.
Appeal2017-001245
Application 11/968,923
1. A method of assessing the environmental risk associated
with a parcel of real property comprising the following steps:
(a) determining a current use or uses of the property;
(b) determining an intended use or uses of the property;
( c) determining whether the property will be redeveloped;
( d) determining whether underground storage tanks are
present on the property;
( e) determining a water distance from the property to a
nearest body of surface water;
( f) determining a residential distance from the property to
a nearest residential parcel of real property;
(g) determining an agriculture distance from property to a
nearest agricultural parcel of real property;
(h) using the above determinations of steps (a) - (g) to
generate an environmental risk assessment report, wherein said
report is not based upon a physical inspection of the property;
(i) providing said report to at least one person;
(j) determining whether the property qualifies for an
automatic quotation for environmental insurance, and, if so:
( 1) generating a quotation for environmental
insurance based upon said environmental risk assessment report,
and
(2) providing, via an electronic communication,
the quotation for environmental insurance to at least one
recipient of said environmental risk assessment report;
wherein steps (a) - (h) and are performed with a computer
by at least accessing at least one electronic database via the
computer, and
wherein said report is based on data gathered by accessing
via the computer at least one electronic database selected from
the group consisting of historical land use databases,
environmental agency recorded pollution incident databases,
sites determined as contaminated land databases, landfill site
databases, environmental agency waste site databases, current
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Application 11/968,923
industrial sites databases, petroleum and fuel site databases,
groundwater vulnerability databases, soil leaching potential
databases, government designated property databases, and
databases representing combinations thereof.
Claims 1-10, 13, 15, 17, 20, 21, and 23 are rejected under
35 U.S.C. § 101 as directed to ineligible subject matter in the form of
abstract ideas.
We AFFIRM.
ANALYSIS
Claims 1-10. 13. and 15
We are not persuaded by the Appellants' argument that the two
wherein clauses transform the abstract idea, to which claim 1 is directed,
into eligible subject matter, because the limitations "identify particular
devices and require a particularly-programmed machine and particularly-
populated database structures." Br. 8. According to the Appellants, the
computer and electronic databases involve "more than insignificant 'extra-
solution' activity," are "rooted in computer technology," "apply ... to a new
and useful end" (id.), and include "unconventional steps and limitations that
confine the claims to a particular useful application" (id. 9).
In claim 1, the first seven recited limitations involve "determining"
information. The Specification does not explicitly describe how the
determinations are made, except that they are based on information obtained
from the databases and from data input by the user ordering the report. The
Specification states that the report is "based on using one or more databases
to prepare the report" (Spec. ,r 19), and that the "system also utilizes specific
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Application 11/968,923
knowledge of the site (built up through database and map interrogation),
such as groundwater vulnerability and information obtained during the
ordering of the report" (id. ,r 22; see also ,r 23). In one embodiment, "the
report uses determinations from various commercially- and publicly-
available databases." Id. ,r 28. The determining steps, construed broadly,
thus, involve obtaining basic input information through user input and
database queries, and are mere data gathering steps. See Bilski v. Kappas,
545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd sub nom Bilski v.
Kappas, 561 U.S. 593 (2010) (characterizing data gathering steps as
insignificant extra-solution activity).
The remaining two steps performed by a computer recite generating a
report and determining whether the property, to which the report is directed,
qualifies for an insurance quotation.
The Specification describes various techniques for generating the
report, such as "known mapping techniques and technology to locate a
property and its surrounding area by postcode and address" (Spec. ,r 18), that
"a report is issued as a copy of an already existing report" (id. ,r 19), that
"[i]f no information is found under a particular search category, then a
negative response is logged" (id. ,r 20), and that "the databases are used to
make determinations that are then combined to render at least one report (id.
,r 22)." "In addition, factors such as the presence of residential properties,
surface water features, and sensitive habitats can be used to build up a
picture of a site's sensitivity to contamination. Contaminative liability can
be assessed using a source-pathway-target approach." Id. Thus, the report
essentially copies information from other sources, about the particular
property at issue.
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Application 11/968,923
As to the determining whether the property qualifies for an insurance
quotation, because the claim language recites that steps (1) and (2), to
generate and provide the report, are done only when the quotation
determination is positive, steps ( 1) and (2) are not necessarily performed,
and the method need not invoke the steps. See Ex parte Schulhauser, No.
2013-007847, 2016 WL 6277792, at *3-6 (PTAB April 28, 2016)
( concluding the broadest reasonable interpretation of a claim encompassed
situations in which conditional method steps "need not be reached")
(precedential).
Without citing anything directly for the insurance quotation
determining in step (j), but in support of claim 1 generally, the Appellants
direct us to paragraphs 7, 8, 19-22, 27, 33, and 35 of the Specification.
Br. 2. However, at the cited locations, and elsewhere in the Specification,
we are unable to discern any description of how this determination is made. 2
The most applicable statement is that the "report can also provide an
insurance quotation automatically under certain conditions," but no such
conditions are articulated. Spec. ,r 46. The remainder of the Specification
repeatedly describes that insurance quotations can be generated
automatically, but without further detail. We, thus, discern only that
standard, well-known techniques are used for determining if a property
qualifies for an automatic insurance quotation, and for generating the
quotation.
The Examiner finds, and the Appellants fail to dispute with evidence
or argument, that the claimed method "can be performed mentally." Final
2 The quotation eligibility determination limitation also does not appear in
the claims as originally filed.
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Act. 2. We agree, because we find that nothing in the claim nor the
Specification excludes a person from performing the generation of the report
or the determination about an insurance quotation using purely mental steps,
except the recited language that the method is "performed with a computer."
The Federal Circuit has held that if a method can be performed by human
thought alone, or by a human using pen and paper, it is merely an abstract
idea and is not patent-eligible under § 101. CyberSource Corp. v. Retail
Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can
be performed by human thought alone is merely an abstract idea and is not
patent-eligible under§ 101."). Additionally, mental processes, e.g.,
generating a report or making determinations, as recited in claim 1, remain
ineligible even when automated to reduce the burden on the user of what
once could have been done with pen and paper. Id. at 1375 ("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,
[409 U.S. 63 (1972)].").
The Specification does not describe the computer used in performing
the claimed methods. The Specification describes by example that
"computational analyses" may be utilized, but does not describe them. See
Spec. ,r 35.
Therefore, we are unpersuaded that any "particular devices" or "a
particularly-programmed machine" is required or claimed, or that the claims
are "rooted in computer technology," as argued, because instead they are
based on the use of a generic computer. Br. 8. We are also unpersuaded that
the claims are patent-eligible because of "particularly-populated database
structures." Br. 8. This argument attempts to distinguish the claims using
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Application 11/968,923
the specific content of data in the queried databases. But, the Appellants
describe that "[ d]ata may typically be commercially obtained; however,
public databases are also easily used for the process of the invention." Spec.
,r 20. The data, therefore, is commonly available, and its particular
organization is not significant to the performance of the method as long as
the data is "accessible via a computer network and/or via the internet, for
example." Id. ,r 19. Because we discern no specific, novel or unobvious
method for making determinations or generating a report, we are
unpersuaded also that the claim recites any "unconventional steps and
limitations," as argued.
For these reasons, we are unpersuaded of error on the part of the
Examiner in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain
the rejection of claim 1 as directed to ineligible subject matter, as well as
dependent claims 2-10, 13, and 15, which were not argued separately. Br. 9.
Claims 17 and 20
In addition to advancing the same arguments we found unpersuasive
for claim 1, the Appellants also assert that claim 1 7 "satisfies the machine-
or-transformation test." Br. 9. We are unpersuaded by this argument,
because the Supreme Court has made clear that a patent claim's failure to
satisfy the machine-or-transformation test is not dispositive of the§ 101
inquiry. CyberSource, 654 F.3d at 1371. Here, as we set forth above, the
claims do not require any specific machine, and therefore, the recitation of a
generic "computer" fails to transform the claim into eligible subject matter.
For these reasons, we sustain the rejection of independent claim 17, as
well as dependent claim 20 that was not argued separately. Br. 11.
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Claims 21 and 23
Independent claim 21 differs from independent claim 1 primarily by
automatically supplying an insurance quotation with the generated report,
without determination of whether the property qualifies for the quotation.
In addition to repeating the arguments found unpersuasive for claim 1,
that the claim identifies particular devices and requires a particularly-
programmed machine and particularly-populated database structures, and is
deeply rooted in computer technology (Br. 12-13), the Appellants argue "the
claimed solution could not be performed without the use of the computer,
inasmuch as the method explicitly recites that there is no physical inspection
of the property" (id. 13). We are unpersuaded by this argument, because the
method can be performed manually by consulting written documents without
a physical inspection of a property, which does not require the use of a
computer.
For these reasons, we sustain the rejection of independent claim 21, as
well as dependent claim 23 that was not argued separately. Br. 14.
DECISION
We affirm the rejection of claims 1-10, 13, 15, 17, 20, 21, and 23 as
reciting ineligible subject matter 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).
AFFIRMED
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