Ex Parte Sagalow et al

Patent Trial and Appeal Board

Aug 7, 2018

12390895 (P.T.A.B. Aug. 7, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/390,895 02/23/2009
23460 7590 08/09/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Ty R. Sagalow
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.
704500 6001
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
08/09/2018 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 TY R. SAGALOW, CHARLES P. ORLOWICZ,
SUSAN E. BURELL, PHYLLIS ANN MOONEY, ROBERT E. JOHNSON,
AKIKO SHIMOMURA, MICHAEL FEIGHAN, and LEAH C. PEDERSEN
Appeal2017-000484
Application 12/390,895 1
Technology Center 3600
Before ANTON W. PETTING, BIBHU R. MOHANTY, and
ROBERT J. SILVERMAN, Administrative Patent Judges.
SILVERMAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-12. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 The Appellants identify American International Group, Inc. as the real
party in interest. Appeal Br. 1.
Appeal2017-000484
Application 12/390,895
ILLUSTRATIVE CLAIM
1. A method for an insurance product development
process in an insurance corporate environment, the method
compnsmg:
receiving a new insurance product idea from one
or more users submitted electronically using an idea
submission software application running on at least one
computer server;
storing the insurance product idea in an electronic
repository using the idea submission software
application, the electronic repository operably connected
to the at least one computer server via a communication
network;
organizing and storing work product for the
insurance product development process in the electronic
repository, according to each stage in the insurance
product development process, using a process
management software application running on the at least
one computer server;
presenting tasks according to each stage of a series
of predetermined insurance product development process
stages on at least one graphical user interface displayed
by a display device, using a task management software
application running on the at least one computer server,
the tasks being organized in one of a number of task
categories corresponding to the series of insurance
product development process stages, the display device
operably connected to the at least one computer server
via the communication network;
for each task category, presenting a list of tasks for
the respective task category on the at least one graphical
user interface upon receiving a corresponding task
selection signal from the at least one graphical user
interface;
presenting access to work product according to
each stage of the series of predetermined insurance
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Application 12/390,895
product development process stages on at least one
graphical user interface displayed by the display device,
using a document management software application
running on the at least one computer server, the work
product being organized in one of a number of work
product categories corresponding to the task categories;
for each work product category, presenting a list of
work product for the respective work product category on
the at least one graphical user interface upon receiving a
corresponding work product selection signal from the at
least one graphical user interface;
constructing a rater for the new insurance product
using a rater software application running on the at least
one computer server, the rater being adapted to generate
quotes for the new insurance product under different
conditions; and
creating an insurance application for the new
insurance product wherein the rater is mapped to the
insurance application.
REJECTION
Claims 1-12 are rejected under 35 U.S.C. § 101 as ineligible subject
matter.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Laws of nature, natural phenomena, and abstract ideas are deemed
ineligible for patenting, because they are regarded as the basic tools of
scientific and technological work, such that their inclusion within the
domain of patent protection would risk inhibiting future innovation premised
upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569
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Appeal2017-000484
Application 12/390,895
U.S. 576, 589 (2013) ("Myriad"). Of course, "[a]t some level, 'all
inventions ... embody, use, reflect, rest upon, or apply"' these basic tools of
scientific and technological work. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l,
134 S. Ct. 2347, 2354 (2014). Accordingly, ascertaining ineligible subject
matter involves a two-step framework for "distinguish[ing] between patents
that claim the buildin[g] block[ s] of human ingenuity and those that integrate
the building blocks into something more, thereby transform[ing] them into a
patent-eligible invention." Id. (internal quotation marks and citation
omitted). The first step determines whether the claim is directed to
judicially excluded subject matter (such as a so-called "abstract idea"); the
second step determines whether there are any "additional elements" recited
in the claim that ( either individually or as an "ordered combination") amount
to "significantly more" than the identified judicially excepted subject matter
itself. Id. at 2355.
As to the first Alice step, the Final Office Action states that claims 1-
12 are directed to "submitting ideas over a computer system and then rating
them" and to "presenting the information," which the Examiner considers to
be an abstract idea "inasmuch as such activity could be performed by human
actors." Final Action 3. Further, the Examiner's Answer states that the
claims are directed to "a method for developing an insurance product
through the solicitation of ideas," which is characterized as "a fundamental
economic practice long prevalent in our system of commerce." Answer 5.
As to the second Alice step, the rejection states that the recited
elements, considered individually and in combination, perform "according to
their generic functionalities which are well-understood, routine and
conventional," such that they do not amount to significantly more than the
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Application 12/390,895
abstract idea, but merely provide "a general link of the use of an abstract
idea to a particular technological environment." Final Action 4.
The Appellants purport not to "acquiesc[ e] in any way" to the
Examiner's determination that the claims are directed to the identified
abstract idea, under the first Alice step; however, the Appellants do not
challenge such determination. Appeal Br. 4.
With regard to the second Alice step, the Appellants contend that
claim 1 (the sole independent claim) recites additional features that amount
to significantly more than an abstract idea. Id. at 5. The Appellants state
that "[t]he claimed approach includes unconventional steps and limitations
that confine the claims to a particular useful application." Id. at 8. Yet, the
Appellants identify none. To the contrary, the Examiner's Answer addresses
specific elements of the claimed subject matter, pointing out that such
elements are either well-understood, routine, and conventional
implementations of generic technology, or constitute data-gathering features,
such that they cannot give rise to patent eligibility. See Answer 5-8.
Additionally, the Appellants do not explain the position that the
claims are patent-eligible, on account of being allegedly "rooted in computer
technology." Appeal Br. 7. Rather than showing that the claimed features
somehow relate to the niceties of the computer-implementation, the Appeal
Brief states that the claimed subject matter "addresses the problems
associated with insurance product development" and "can be performed to
create a more marketable insurance product - a particularly useful
application." Id. at 7-8 (citing Juicy Whip, Inc. v. Orange Bang, Inc., 185
F.3d 1364, 1368 (Fed. Cir. 1999)). However, this argument and the
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attendant citation, to Juicy Whip, concern the so-called "utility" requirement
of 35 U.S.C. § 101, rather than the issue of subject-matter eligibility.
Similarly, the asserted benefits of the claimed technology (see Appeal
Br. 6-7) and its improvements over the prior art (see id. at 8) are not
sufficient to establish patent eligibility. A determination of novelty or
nonobviousness does not necessarily lead to the conclusion that subject
matter is patent-eligible. "Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the§ 101 inquiry." Myriad, 569 U.S. at
591.
The Appellants' assertion that claim 1 "satisfies the machine-or-
transformation test" (Appeal Br. 5) also does not establish patent-eligibility.
The Supreme Court has explained that the machine-or-transformation test
may be an important and useful clue, but "it is not a definitive test of patent
eligibility." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S.
66, 76 (2012). In particular, the machine-or-transformation test does not
subvert the Alice framework.
Accordingly, we sustain the rejection of independent claim 1 and
dependent claims 2-12 under 35 U.S.C. § 101.
DECISION
We AFFIRM the Examiner's decision rejecting claims 1-12 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).
AFFIRMED
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