Ex Parte Menendez

Patent Trial and Appeal Board

Jan 31, 2017

11709649 (P.T.A.B. Jan. 31, 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.
9164/99159 3436
EXAMINER
GOTTSCHALK, MARTIN A
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
11/709,649 02/22/2007 Dale Menendez
24628 7590 01/31/2017
Husch Blackwell LLP
Husch Blackwell Sanders LLP Welsh & Katz
120 S RIVERSIDE PLAZA
22ND FLOOR
CHICAGO, IL 60606
01/31/2017 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 DALE MENENDEZ
Appeal 2015-0028351
Application 11/709,649
Technology Center 3600
Before: MURRIEL E. CRAWFORD, JOSEPH A. FISCHETTI, and
MICHAEL W. KIM, Administrative Patent Judges.
KIM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 57—75 and 77. We
have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The invention relates generally to the payment of claims on insurable
losses. Spec. 11.
1 The Appellant identify the Inventor, Dale Menendez, as the real party in
interest. Appeal Br. 2.
Appeal 2015-002835
Application 11/709,649
Claim 57 is illustrative:
57. A method of expediting, automatically processing and
resolving an insurance claim submitted under one of a plurality
of different policy types of insurance, such method comprising
the steps of:
providing in a memory of a processor apparatus plural sets
of keywords, wherein each set of keywords is associated with at
least one of the plurality of policy types and wherein the
keywords in each set of said plural sets of keywords are
descriptive of insurance requirements, terms, conditions,
exclusions, limitations and damages associated with a respective
policy type of the plurality of policy types;
receiving and saving in the memory via a processor
apparatus a claim reported from an insured, their agent, broker or
others through at least an Internet connection wherein the
received claim contains a description of how the loss occurred,
where the description is used for determining a who, what and
why about how the loss occurred;
determining via a processor apparatus a policy type of the
plurality of policy types from said received claim;
identifying via a processor apparatus an insurance criteria
for evaluating the claim from said determined policy type,
wherein the insurance criteria is based upon the insurance criteria
of the determined policy type, insuring agreements, exclusions,
coverage limits, terms, conditions and limitations selected from
the group of different insurance criteria consisting of all risk of
loss, named perils, accident to object, supplemental coverage,
consequential loss, coverage extensions, endorsements,
exclusions, limitations, property covered and not covered or
limited;
retrieving from said memory via a processor apparatus a
set of keywords of the plurality of keywords, said retrieved
keywords being associated with said determined policy type and
with said identified insurance criteria;
matching via a processor apparatus said retrieved set of
keywords with words contained within the claim and the
description of how the loss occurred of said received claim;
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Application 11/709,649
assigning via a processor apparatus the claim to an adjuster
when any matched or unmatched word or words of said matching
step meets a predetermined criteria; and
paying via a processor apparatus the claim without
assigning the claim to an adjuster when said matching step does
not meet the predetermined criteria and any auxiliary criteria.
Claims 57—75 and 77 are rejected under 35U.S.C. § 101 as reciting
ineligible subject matter in the form of an abstract idea.
Claim 77 is rejected under 35U.S.C. § 101 as reciting ineligible
subject matter that encompasses signals.
Claims 57—75 are rejected under 35U.S.C. § 112, second paragraph,
as indefinite.
Claims 57—74 and 77 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Aquila (US 2002/0035488 Al, pub. Mar. 21, 2002) and
McCormack (US 6,049,773, iss. Apr. 11, 2000).
Claim 75 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Aquila, McCormack, and Hall (US 7,085,735, iss. Aug. 1, 2006).
We AFFIRM.
ANALYSIS
Rejection of Claims 57—75 and 77 under 35 U.S.C. § 101
We are not persuaded by the Appellant’s argument that the claims are
not an abstract idea, because they “are directed to a very precise set of steps
set in the context of structure for executing those steps.” Reply Br. 2.
Based primarily on the wording of the claims as a whole, the
Examiner finds that the claims are directed to the abstract idea of processing
an insurance claim, including identifying a policy type from words in the
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Application 11/709,649
claim, and making a decision whether to pay the claim or assign the claim to
an adjuster, which amounts to both a fundamental economic practice, and/or
a method of organizing human activities. Answer 23—24. The Examiner
also finds all additional claimed elements merely represent instructions to
implement the abstract idea on a general-purpose computer. Answer 24.
The Appellant has not persuasively demonstrated error in the
Examiner’s rejection. The following constitutes the entirety of the
Appellant’s assertions concerning this rejection: “A simple review of the
claims reveals that the claims are directed to a very precise set of steps set in
the context of structure for executing those steps.” Reply Br. 2. As an
initial matter, we are unclear how any amount of “precision” in the method
steps, convert an otherwise ineligible abstract idea into eligible subject
matter. Moreover, even if “precision” could generally be shown to cause
such conversion, here, the Appellant has not provided any analysis as to how
any particular “precise” limitation or limitations would facilitate such a
conversion. Indeed, the Appellant does not identify any limitations at all.
For these reasons, we sustain the rejection of claims 57—75 and 77
under 35 U.S.C. § 101 as reciting an ineligible abstract idea.
Rejection of Claim 77 under 35 U.S.C. §101
We are not persuaded by the Appellant’s argument that the memory in
claim 77 “is not directed to transient signals” (Appeal Br. 8—9), and the
claimed memory “by definition” is non-transient (Reply Br. 2). The claim
does not limit the memory to exclude a transient storage medium, and the
Specification does not define or limit memory to be limited to any particular
technology, or to exclude transient signals as a storage medium. In spite of
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Application 11/709,649
the Appellant’s assertion that transient signals were not claimed, the
broadest reasonable interpretation of the claim language encompasses
memory in the form of transient signals, which is not eligible subject matter.
In re Nuijten, 500 F.3d 1346, 1355 (Fed. Cir. 2007).
The USPTO also provides the following guidance:
The broadest reasonable interpretation of a claim drawn to a
computer readable medium . . . typically covers forms of non-
transitory tangible media and transitory propagating signals per
se in view of the ordinary and customary meaning of computer
readable media, particularly when the specification is silent. . . .
When the broadest reasonable interpretation of a claim covers a
signal per se, the claim must be rejected under 35 U.S.C. § 101
as covering non-statutory subject matter.
David J. Kappos, Subject Matter Eligibility of Computer Readable Media,
1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010).
Rejection of claims under 35 U.S.C. § 112, Second Paragraph
We agree with the Appellant that the “determined policy type”
language of claim 57 is clear on its face. Appeal Br. 9. The Examiner
asserts that the phrase “from said determined policy type” in the identifying
step of claim 57 is unclear because, according to the Examiner, it is not clear
if the words “are intended to modify the term ‘identifying’” or the term
“claim.” Answer 3^4.
The claim language of the “determining” step clearly indicates that a
“policy type” is determined from a received claim, and the “identifying” step
clearly indicates that “insurance criteria” are identified based on the
“determined policy type.” Thus, the phrase “from said determined policy
type” does not modify either the “identifying” or the “claim,” because it
merely indicates from what source particular information is determined.
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Application 11/709,649
We also agree with the Appellant that the “selected from the group”
language of claim 57 is clear on its face. Appeal Br. 9. According to the
Examiner, it is not clear what the words “selected from the group” refers to.
Answer 4—5. The language at issue is as follows:
the insurance criteria is based upon the insurance criteria of the
determined policy type, insuring agreements, exclusions,
coverage limits, terms, conditions and limitations selected from
the group of different insurance criteria consisting of all risk of
loss, named perils, accident to object, supplemental coverage,
consequential loss, coverage extensions, endorsements,
exclusions, limitations, property covered and not covered or
limited.
The plain meaning of the aforementioned language is that insurance
criteria are based on, at a minimum, six information types, labeled 1)
insurance criteria of the determined policy type, 2) insuring agreements, 3)
exclusions, 4) coverage limits, 5) terms, and 6) conditions. The claim also
includes, however, optionally selected “limitations” from additionally-
recited information types labeled as “different insurance criteria consisting
of all risk of loss, named perils, accident to object, supplemental coverage,
consequential loss, coverage extensions, endorsements, exclusions,
limitations, property covered and not covered or limited.”
Because the language of claim 57 is clear, we do not sustain the
rejection of claims 57—75 as indefinite under 35U.S.C. § 112, second
paragraph.
Rejection of Claims 57—74 and 77 under 35 U.S.C. § 103(a)
We are not persuaded by the Appellant’s argument that, according to
the Appellant, Aquila does not match keywords, as claimed, because instead
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Application 11/709,649
Aquila uses answers from questions to generate a score. Appeal Br. 10; see
also Reply Br. 3^4.
The Examiner finds Aquila discloses providing keywords from
“policy profile information” and other sources. Answer 6—9, (citing Aquila
Figures 1 and 19, and paragraphs 20, 38, 53, 83, 138-41, 155, 162, 213, and
218); see also Answer 27 (citing Aquila paragraphs 142, 172—211, 214, and
215). The Examiner finds Aquila discloses that words are matched with
keywords to generate a score. Answer 10—11 (citing Aquila paragraphs
160-62, 184, 205, 213, 214, and Figure 6). Aquila, thus, uses words from
questions, matched against keywords from a database containing at least
“policy profile information,” to generate a score. The Appellant asserts that
Aquila does not disclose using keywords for matching, but has not shown
error in any findings the Examiner has made related to providing keywords
and matching keywords.
The Appellant argues Aquila teaches away, because “Aquila
discourages the claimed invention because it instead pays on a score rather
than upon any matching of keywords.” Reply Br. 4. We disagree with the
Appellant. “A reference may be said to teach away when a person of
ordinary skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a direction
divergent from the path that was taken by the applicant.” In re Kahn, 441
F.3d 977, 990 (Fed. Cir. 2006) (citations and internal quotation marks
omitted). Because Aquila uses keywords for matching, in order to generate
a score, as we advanced above, Aquila does not discourage the use of
keywords. In addition, the Appellant does not provide any citation to
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indicate where Aquila discourages the use of keywords, and, thus, have not
persuasively shown error in the Examiner’s use of Aquila.
We are finally unpersuaded by the Appellant’s argument that
McCormack does not disclose using keywords to pay a claim, because
McCormack is directed to reinsurance. Appeal Br. 10. The Examiner finds
Aquila discloses the use of keywords in automatically paying a claim, as
claimed, but does not explicitly disclose the word “keyword,” which the
Examiner finds in McCormack. Answer 12. The Examiner did not rely on
McCormack as disclosing the claim language about paying a claim, which is
disclosed in Aquila, but only for the explicit use of the term “keyword.” A
reference does not have to satisfy an ipsissimis verbis test to disclose a
claimed element. In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009). So
the fact that McCormark may or may be directed to reinsurance is irrelevant
to the Examiner’s reliance on McCormack for the narrow disclosure
“keyword” in a general insurance context. Furthermore, we note that, in any
case, Aquila discloses keywords, as claimed, so the disclosure of
McCormack is cumulative.
We are not persuaded by the Appellant’s argument that the
combination of Aquila and McCormack does not disclose the claim
language because “Aquila is merely directed to assigning claims to agents
and McCormack et al. to reinsurance.” Appeal Br. 13. The Appellant here
is making a sweeping allegation that Aquila does not disclose the claim
language, as the Examiner specifically finds and articulates at pages 6—12 of
the Answer (and pages 6—12 of the Final Action), because Aquila assigns
claims to agents. The Examiner, however, has clearly shown that Aquila
discloses far more than merely assigning claims to agents, and the Appellant
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Application 11/709,649
has not advanced arguments of error specific to the findings on the record.
A general allegation that the art does not teach any of the claim limitations is
no more than merely pointing out the claim limitations. A statement which
merely points out what a claim recites will not be considered an argument
for separate patentability of the claim. 37 C.F.R. § 41.37(c)(l)(vii).
We are not persuaded by the Appellant’s argument that the
combination of Aquila and McCormack does not “recognize the problem
solved by the claimed invention,” and that, therefore, there would be no
reason to combine the references. Appeal Br. 13. It is not necessary for the
prior art to serve the same purpose as that disclosed in the Appellant’s
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016. All
that is required is for the Examiner to provide “some articulated reasoning
with some rational underpinning to support the legal conclusion of
obviousness.” KSR International Co. v. Teleflex Inc. 550 U.S. 398, 418
(2007). To that end, the Appellant has not persuasively shown why the
Examiner’s proffered reasons to combine, even if different from the
Appellant’s, are legally deficient.
For these reasons, we sustain the rejection of claims 57—74 and 77
under 35 U.S.C. § 103(a).
Rejection of Claim 75 under 35 U.S.C. § 103(a)
The Appellant’s do not advance argument specific to the separate
rejection of claim 75. We, therefore, sustain the rejection of claim 75 for the
same reasons given above.
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DECISION
We AFFIRM the rejections of claims 57—75 and 77 under 35 U.S.C.
§101.
We REVERSE the rejection of claims 57—75 under 35 U.S.C. § 112,
second paragraph as indefinite.
We AFFIRM the rejections of claims 57—75 and 77 under 35 U.S.C.
§ 103(a).
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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