Ex Parte Wallquist et al

Patent Trial and Appeal Board

Dec 27, 2016

13179464 (P.T.A.B. Dec. 27, 2016)

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.
13/179,464 07/08/2011 Dianna M. Wallquist TR01-009-01 1505
12394 7590
Travelers Companies
c/o Fincham Downs LLC
90 Grove Street Suite 205
Ridgefield, CT 06877
12/29/2016 EXAMINER
GOODBODY, JOAN T
ART UNIT PAPER NUMBER
CSDM
NOTIFICATION DATE DELIVERY MODE
12/29/2016 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):
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 DIANNA M. WALLQUIST and WILLIAM W. SCARFF
Appeal 2014-0081191
Application 13/179,4642
Technology Center 3600
Before NINA L. MEDLOCK, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.
HUTCHINGS, 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 9, 12, 14—23, 26, and 27. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
1 Our decision references Appellants’ Appeal Brief (“Appeal Br.,” filed
Feb. 14, 2014) and Reply Brief (“Reply Br.,” filed July 17, 2014), and the
Examiner’s Answer (“Ans.,” mailed June 2, 2014) and Final Office Action
(“Final Act.,” mailed Aug. 14, 2013).
2 Appellants identify “The Travelers Indemnity Company” as the real party
in interest. Appeal Br. 3.
Appeal 2014-008119
Application 13/179,464
CLAIMED INVENTION
Appellants’ claimed invention relates to enhanced business
classification. Spec. 13. According to Appellants, “a substantial percentage
of underwriting decisions are based on incorrect classifications.” Id. 11.
Claims 9 and 16 are the independent claims on appeal. Independent
claim 9, reproduced below with added bracketed notations, is illustrative of
the subject matter on appeal:
9. A specially-programmed computerized processing
device, comprising:
a computerized processor; and
a memory in communication with the processor, the
memory storing specially programmed instmctions that when
executed by the computerized processor result in:
[(a)] receiving, from a user device, an indication of
at least one of a location and a name of a business for
which an underwriting product is sought;
[(b)] determining, based on data of a third-party and
utilizing the at least one of the location and the name of
the business to query a database of the third-party, a
business classification of the business;
[(c)] determining at least one available insurance
policy type based on the business classification;
[(d)] providing, to the user device, an indication of
at least one underwriting question that is based on the
business classification of the business;
[(e)] receiving, from the user device and in response
to the providing of the at least one underwriting question,
an indication of an answer to the at least one underwriting
question;
[(f)] determining, based on the answer to the at least
one underwriting question, a new business classification
of the business; and
[(g)] providing, to the user device, an indication of
the new business classification of the business.
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Appeal 2014-008119
Application 13/179,464
REJECTION
Claims 9, 12, 14—23, 26, and 27 are rejected under 35 U.S.C. § 103(a)
as unpatentable over Helitzer (US 7,610,210 B2, iss. Oct. 27, 2009) and
Pearce, Esther, History of the Standard Industrial Classification, Executive
Office of the President, Bureau of the Budget, Office of Statistical
Standards, July 10, 1957 [sic],
http://www.census.gov/epcd/www/sichist.htm (retrieved on Dec. 20, 2012)
(hereinafter, “Pearce”).
ANALYSIS
We are persuaded by Appellants’ argument that the Examiner erred in
rejecting claims 9 and 16 under 35 U.S.C. § 103(a) because the combination
of Helitzer and Pearce does not disclose or suggest limitations (b) and (f), as
recited in claim 9, and similarly recited in claim 16. Appeal Br. 12—16; see
also Reply Br. 2-4. The Examiner, in the Final Office Action, relies on a
combination of Helitzer and Pearce as disclosing limitation (b) (Final Act. 7
(citing Helitzer, col. 12,11. 6—24 and Pearce 1, para. 4, 3, para. 1, 4, para.
2)), and on Helitzer as disclosing limitation (f) (id. at 10 (citing Helitzer,
Abstract, Fig. 4, col. 1,11. 9—14, col. 2,1. 1—col. 3,1. 11, col. 11,1. 40-col.
12,1. 24, col. 12,1. 6-24, col. 13,11. 21^17, col. 14,1. 48-col. 15,1. 3)). In
the Answer, the Examiner relies on Pearce and Helitzer as disclosing
limitation (f). See Ans. 10—13 (citations omitted). We have carefully
reviewed the cited portions. However, we fail to see anything in the cited
portions of Helitzer and Pearce, individually or in combination, that
discloses or suggests the argued limitations.
In rejecting claims 9 and 16, the Examiner finds that Helitzer teaches
“determining business type and restrictions using SIC.” Final Act. 7. The
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Appeal 2014-008119
Application 13/179,464
Examiner acknowledges that “Helitzer does not explicitly teach where the
business classification is obtained.” Id. But the Examiner finds that Pearce
cures the deficiency of Helitzer by describing “the use of a standardized
business classification and based on third-party data (is the third party).” Id.
By way of background, Helitzer generally relates to using sensors to
underwrite an insurance policy. Helitzer, Abstract. Technology is used to
acquire and assess data regarding qualities, variables, and parameters that
impact an underwriting premium. Id. To underwrite an insurance policy, a
user (insurance underwriter) enters information relating to the insured party
to be underwritten. Id. col. 11,1. 60-col. 12,1. 1. Exemplary information
includes a description of the insured’s operation and at least one standard
industrial code (“SIC”) associated with the insured’s business. Id. col. 12,
11. 1—5. The SIC(s) associated with the insured’s business are stored in a
database, and each SIC record is linked to underwriting guidelines provided
by the insurance carrier, such as minimum premiums, hazard rating,
underwriting authority, and referral criteria. Id. col. 12,11. 6—14.
A plurality of candidate risk modifier codes associated with one or
more technologies that mitigate a risk associated with the insurable property
are displayed for selection. Id. col. 12,1. 14—17. The risk modifier code is
an actuarial function of the mitigation of risk due to the incorporation by the
insured’s business of a specific technology. Id. col. 12,11. 27—29. The
selected risk modifier code is added to the SIC record for the insured’s
business. Id. col. 12,11. 18—20. And a quote is developed based not only on
the description of the insured’s operation and SIC code provided by the user,
but also on the selected risk modifier code. Id. col. 12,11. 21—24.
Thus, Helitzer describes an underwriting process in which an
underwriter manually enters SIC codes for a business for which an
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Appeal 2014-008119
Application 13/179,464
underwritten process is sought. But none of the cited portions of Helitzer
discloses or suggests determining a business classification by querying a
database of a third party using at least one of a location and a name of the
business for which an underwriting product is sought (limitation (b)), as
required by claim 9, and similarly required by claim 16. We also see
nothing in Helitzer that describes providing at least one underwriting
question based on the determined business classification (limitation (d)), let
alone determining based on the answer to the at least one underwriting
question a new business classification of the business (limitation (f)), as
recited in claim 9, and similarly recited in claim 16.
Pearce’s historical overview of the SIC, including its ongoing
revisions, fails to cure the deficiencies in Helitzer. As best we understand
the rejection, the Examiner reasons that because SIC codes for all industry in
the United States are published, SIC codes themselves constitute data from a
third party, as required by claim 9 and similarly required by claim 16. See,
e.g., Ans. 9 (“[it’s] obvious [in view of Pearce] that the SIC codes [described
in Helitzer] are from a published source — thus a third party.”) But the
Examiner does not adequately explain how, and we do not see how, a listing
of SIC codes, as described by Pearce, discloses or suggests determining a
business classification of the business “utilizing the at least one of the
location and the name of the business [for which an underwriting product is
sought] to query a database of the third-party,” as recited in claim 9 and
similarly recited in claim 16.
Likewise, the Examiner explains in the Answer that “Pearson [sic]
discloses the rich history and beginnings of the SIC system and that the SIC
system was to be used in a robust manner that included ongoing revision.”
Ans. 13. But the Examiner does not adequately explain how, and we do not
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Application 13/179,464
see how, ongoing revision of SIC codes, as described by Pearce, discloses or
suggests determining “a new business classification of the business,” as
recited in claim 9 and similarly recited in claim 16.
In view of the foregoing, we reverse the Examiner’s rejection of
independent claims 9 and 16 under 35 U.S.C. § 103(a). For the same
reasons, we also reverse the rejection of dependent claims 12, 14, 15, 17—23,
26 and 27.
DECISION
The Examiner’s rejection of claims 9, 12, 14—23, 26 and 27.under
35 U.S.C. § 103(a) is reversed.
REVERSED
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