Ex Parte Taylor et al

Patent Trial and Appeal Board

Dec 14, 2016

11823371 (P.T.A.B. Dec. 14, 2016)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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P.O.Box 1450
Alexandria, Virginia 22313-1450
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/823,371 06/26/2007 Beth Taylor 159841-0028(P007) 4985
29000 7590 12/16/2016
TRFT T fr MANFT T A T T P
EXAMINER
840 NEWPORT CENTER DR. MISIASZEK, AMBER ALTSCHUL
SUITE 400
NEWPORT BEACH, CA 92660 ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
12/16/2016 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):
patents @ irell.com
slangworthy@irell.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BETH TAYLOR, DENIS BARRETTE,
RICHARD LAVOIE, MICHEL BARRETTE,
and FREDERIC D. BERSOT
Appeal 2015-0022541
Application 11/823,3712
Technology Center 3600
Before JOSEPH A. FISCHETTI, JAMES A. WORTH, and
MATTHEW S. METERS, Administrative Patent Judges.
MEYERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 2—11. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1. Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
July 16, 2014) and Reply Brief (“Reply Br.,” filed January 5, 2015), the
Examiner’s Answer (“Ans.,” mailed November 4, 2014), and Final Office
Action (“Final Act.,” mailed April 11, 2014).
2. Appellants identify Audatex North America, Inc. as the real party in
interest (Appeal Br. 2).
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Application 11/823,371
CLAIMED INVENTION
Appellants’ claimed invention relates to “a method and system for
reviewing insurance estimates” (Spec. 1).
Claims 2 and 7 are the independent claims on appeal. Claim 7,
reproduced below, with added bracketed notations and paragraphing, is
illustrative of the subject matter on appeal:
7. A method for processing an insurance estimate,
comprising:
[a] creating an insurance estimate of a vehicle at an
estimating station that generates at least a portion of said
insurance estimate with a program that is operated by the
estimating station;
[b] reviewing the insurance estimate at a reviewer station;
[c] requesting a reinspection by selecting a graphical user
interface displayed by the reviewing station;
[d] transmitting the request to a reinspection station; and,
[e] reviewing the insurance estimate of the vehicle at a
reinspection station.
REJECTIONS
Claims 2—11 are rejected under 35U.S.C. § 101 as directed to non-
statutory subject matter.3
Claims 2—11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Obora (US 2005/0246206 Al, pub. Nov. 3, 2005) and Aquila (US
2002/0035488 Al, pub. Mar. 21, 2002).
3 Appellants indicate that “[t]he Answer included a new ground rejecting
claims 7—11 under 35 U.S.C. § 101” (Reply Br. 1). However, the Examiner
Answer indicates that claims 2—11 are rejected, and specifically addresses
claims 2—6 at page 4 of the Answer.
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Application 11/823,371
ANALYSIS
Non-statutory subject matter
In rejecting claims 2—11 under 35U.S.C. § 101, the Examiner
concludes that the claims, considered as a whole, are directed to an abstract
idea of “processing an insurance estimate” without additional elements that
transform it into a patent-eligible application of that idea (see Ans. 3—5).
Appellants do not appear to dispute the Examiner’s finding that claim
7 is directed to an abstract idea. Instead, Appellants argue that the rejection
is improper because “claims 7—11 do not amount to a monopoly on the
concept of processing insurance” (Reply Br. 2).
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “laws of nature, natural phenomena, and
abstract ideas” are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Banklnt’l, 134 S. Ct. 2347, 2354 (2014).
In determining whether claim 1 falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court’s two-
step framework, described in Mayo and Alice. Id. at 2355 (citing Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296—97
(2012)). In accordance with that framework, we first determine whether the
claim is “directed to” a patent-ineligible abstract idea. If so, we then
consider the elements of the claim — both individually and as an ordered
combination — to assess whether the additional elements transform the
nature of the claim into a patent-eligible application of the abstract idea. Id.
This is a search for an “inventive concept” — an element or combination of
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elements sufficient to ensure that the claim amounts to “significantly more”
than the abstract idea itself. Id.
Here, we agree with the Examiner that claim 1 is directed generally to
“processing an insurance estimate” (Ans. 4). This concept amounts to a
method of organizing human activity, which, like the concept of risk
hedging in Bilski, falls squarely within the realm of abstract ideas. See Alice
Corp., 134 S. Ct. at 2356; Bilski, 561 U.S. 593, 611 (2010); see also
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1339 (Fed. Cir. 2013) (claim to maintaining an “insurance transaction
database containing information related to an insurance transaction
decomposed into a plurality of levels” and “allowing an authorized user to
edit. . . and to update the information related to the insurance transaction”
held to be an abstract idea). We also find that “processing an insurance
estimate” is a fundamental economic concept because it directly affects the
solvency of both the insured and the insurer.
We next consider whether additional elements transform the nature of
the claim into a patent-eligible application of the abstract idea, e.g., whether
the claim does more than simply instruct the practitioner to implement the
abstract idea on generic computer components. We conclude that it does
not.
Independent claim 7 is directed to “[a] method for processing an
insurance estimate” and includes steps which “creat[e] an insurance
estimate,” “review[s] the insurance estimate,” “requests] a reinspection by
selecting a graphical user interface,” “transmits] the request,” and
“review[s] the insurance estimate.” Here, considering each of the claim
elements in turn, we find them all to be directed to well-understood, routine,
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conventional activities previously known to the industry. And, when viewed
as a whole, the computer components (e.g., “estimating station,” “reviewer
station,” “reinspection station”) of Appellants’ method add nothing that is
not already present when the steps are considered separately.
Appellants argue that “[t]he claims recite a specific way to request a
reinspection, by selecting a graphical user interface, that does not pre-empt
all means of such a request” (Reply Br. 2—3 (citing DDR Holdings LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed Cir. 2014)). At the outset, we find the
use of a graphical user interface is also well-known and conventional and
disagree with Appellants’ contention that independent claim 7 is like those at
issue in DDR Holdings. In DDR Holdings, the Federal Circuit found that the
claims were directed to patentable subject matter because they “specify how
interactions with the Internet are manipulated to yield a desired result—a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d at
1258. Significantly, the Federal Circuit identified this limitation as
differentiating from claims that “recite a commonplace business method
aimed at processing business information, applying a known business
process to the particular technological environment of the Internet, or
creating or altering contractual relations using generic computer functions
and conventional network operations” and were, thus, found directed to
patent-ineligible subject matter. Id. at 1258—59.
Here, independent claim 7 does not purport to improve the
functioning of the computer system itself. Nor does it effect an
improvement in any other technology or technical field. Instead,
independent claim 7 amounts to nothing significantly more than an
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instruction to implement the abstract idea of “processing an insurance
estimate” using generic computer components. This is insufficient to
transform an abstract idea into a patent-eligible invention.
We also note that Appellants’ preemption argument does not alter our
§101 analysis. Preemption concerns are fully addressed and made moot
where a patent’s claims are deemed to disclose patent ineligible subject
matter under the two-part framework described in Mayo and Alice. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“While preemption may signal patent ineligible matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 7—11 under 35 U.S.C. § 101.
In rejecting claims 2—6 under 35 U.S.C. § 101, the Examiner found
independent claim 2 is “directed to the system for performing the method
steps [of independent claim 7, and] is rejected for substantially the same
reasons, in that the generically recited computer components in the system
claim adds nothing of substance to the underlying abstract idea” (Ans. 4).
Appellants do not provide any response to the Examiner’s rejection of
claims 2—6 under 35 U.S.C. § 101. However, as the Examiner points out,
there is no meaningful distinction between independent claim 7 and
independent claim 2.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 7—11 under 35 U.S.C. § 101.
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Obviousness
Appellants argue claims 2—11 as a group (Appeal Br. 4—5). We select
independent claim 7 as representative. The remaining claims stand or fall
with independent claim 7. See 37 C.F.R. § 41.37(c)(l)(iv).
We are not persuaded by Appellants’ argument that the Examiner
erred in rejecting independent claim 7 under 35 U.S.C. § 103(a) because the
combination of Obora and Aquila does not disclose or suggest “requesting a
reinspection by selecting a graphical user interface displayed by the
reviewing station,” as recited by limitation [c] of independent claim 7 (see
Appeal Br. 4—5; see also Reply Br. 3). Instead, we agree with, and adopt the
Examiner’s findings and rationale as set forth at pages 5—7 of the Answer.
In making this determination, we note that Obora is directed “a
method and system of reinspecting individual insurance claims from the
initial claim filing to post-completion of the final settlement, as well as
overall management and control of the reinspection process” (Obora 12).
Obora discloses that its “insurance claim appraisals are each contained
within a respective electronic workfile, each of the workfiles holding all
pertinent data for processing an insurance claim” (id. 17). Obora further
discloses that its “insurance claim workfiles includes a loss estimate section,
an appraisal section and a reinspection section, the reinspection section
contains data on a reinspection of an insurance claim estimate” (id. 1 8; see
also id. 20, 23). Obora also discloses that its “reinspection tool is
preferably stored in a computer readable medium residing on a second
computer. The second computer is in communication with the first
computer over the wide area network” (id. 1 8; see also id. H 20-21). In
this regard, Obora discloses that its “system 10 includes a communications
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server 12 in communication with various remote computers 14, including
those located at vendors, body shops, salvage yards, insurance companies,
and other terminals which may be used in an insurance processing
environment” (id. 119), which enables “insurance company managers,
claims office personnel, and reinspectors and others involved in the
insurance claims process” to access insurance claim workfiles (id. || 20-
21).
Obora discloses
a remote terminal 14 for use by a reinspector includes several
customizable databases for storing predetermined exception
rules 63, calculations 65, status reminders 67, and report forms
68 for each insurance company utilizing the system 10. The
exception rules 63, as explained in greater detail below, are
guidelines for determining whether an appraisal meets with a
particular insurance company’s practice.
(Id. 126). Obora further discloses
report forms database 68 preferably contains electronic forms
customized to each insurance company's standards for the
reinspector to use in preparing reports to appraisers and repair
shops on their performance. The report forms database 68 may
also contain forms for the reinspector to prepare and send directly
to an insurance company concerning the performance of
appraisers/repair shops performing work for the insurance
company.
(Id.). Obora also discloses that its communications server routes the
assignment of each claim to the “appropriate appraiser/adjuster or body shop
who will handle the claim (at step 72)” and “also routes a copy of the
assignment to the responsible reinspector who will handle the reinspection
of the claim (at step 74)” (id. 128; see also id. at Fig. 6). “[W]hen an
assignment is completed by the appraiser or shop, the completed workfile is
uploaded to the communications server (at step 80). The communications
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server routes this completed workfile to the responsible reinspector’s
mailbox and performs an electronic appraisal review 82 of the workfile (at
steps 82, 84)” {id. 128; see also id. at Fig. 6). Following the electronic
appraisal review 82 of the workfile, the “results of the electronic appraisal
review are routed to the responsible reinspector’s mailbox in a report format
(at step 88)” {id. 132) and the reinspector selects a workfile, i.e., insurance
claims, to review and reinspect at the user interface on the reinspector’s
terminal 14 {id. Tflf 30-35).
We also note that Aquila is directed to insurance claim processing
system which administers, tracks and manages insurance claim processing
(Aquila 13). Aquila’s system includes “[an] audit sub-system applies
insurance carrier specific business rules, government regulations, and
comprehensive trending analysis to detect and rectify any inconsistencies
and irregular processing of claims, by auditing internal processes or user or
service providers submitted data” {id. 123). More particularly, Aquila
discloses that “[according to certain business rules, the audit sub-system
240 can remove claims from the automated process and refer them back to
the insurance carrier for personal attention” {id. 1267). Aquila also
discloses that “the audit sub-system 240 and the automated audit process can
be initiated by a human participant such as a[n] insurance carrier appraiser
after a certain amount of human auditing has already taken place. In one
embodiment, claim data can be sent directly to the audit sub-system 240
directly” {id. 1269).
In their Reply Brief, Appellants contend that “[t]he Examiner
concedes that Obora does not disclose the claimed graphical user interface”
and instead relies on “paragraphs 0266-0269 in Aquila for disclosure of the
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claimed graphical user interface” (Reply Br. 3). Based on this contention,
Appellants now argue that because “Aquila discloses the network as being
the Internet.... [t]he means for initiating the audit process may include
entering a URL, not the selection of a graphical user interface as required by
the claims” {id. (citing Aquila 171)).
Initially, we note that the Examiner does not concede that Obora fails
to disclose a “graphical user interface;” (Ans. 5—7); but instead, the
Examiner acknowledges that “Obora et al. does not explicitly disclose the
limitation that the request for reinspection is given from a graphical user
interface displayed by the reviewing station” {id. at 5). And, to address this
deficiency, the Examiner turns to Aquila as disclosing a “user sending] the
request for re-inspection through the audit sub-system interface” {id. 5—
7(citing Aquila H 125, 266—269)). Furthermore, Obora discloses that its
“system 10 includes a communications server 12 in communication with
various remote computers 14, including those located at vendors, body
shops, salvage yards, insurance companies, and other terminals which may
be used in an insurance processing environment” {id. 119), which enables
“insurance company managers, claims office personnel, and reinspectors and
others involved in the insurance claims process” to access and update
insurance claim workfiles {id. H 20-21, 34—35). Obora further discloses
that its system includes a
graphic user interface not only permits a user to enter and retrieve
information from a workfile, but also permits the user to execute
tasks involved in reinspection processing such as manipulating a
plurality of claim workfiles, opening a specific work file and
working on estimate data or correspondence related to the open
file.
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(Id. 138). Thus, Appellants’ argument is not persuasive to show error in the
Examiner’s rejection of independent claim 7.
In view of the foregoing, we sustain the Examiner’s rejection of
independent claim 7 under 35 U.S.C. § 103(a). We also sustain the
Examiner rejection of claims 2—6 and 7—11 which were not separately
argued, and as such, fall with independent claim 1.
DECISION
The Examiner’s rejection of claims 2—11 under 35 U.S.C. § 101 is
sustained.
The Examiner’s rejection of claims 2—11 under 35 U.S.C. § 103(a) is
sustained.
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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