Ex Parte Yee

Patent Trials and Appeals Board

May 31, 2019

12547318 - (D) (P.T.A.B. May. 31, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/547,318 08/25/2009
23460 7590 06/04/2019
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Jonathan Yee
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.
704091 5049
EXAMINER
CHAMPAGNE, LUNA
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
06/04/2019 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 JONATHAN YEE 1
Appeal2017-007051
Application 12/547,318
Technology Center 3600
Before MURRIEL E. CRAWFORD, MICHAEL C. ASTORINO, and
BRADLEY B. BAY AT, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134 of the Examiner's
final rejection of claims 1, 12, 13, 15-17 and 19-22. We have jurisdiction
under 35 U.S.C. § 6(b).
SUMMARY OF DECISION
We AFFIRM.
THE INVENTION
Appellant claim a method and system for retaining customers with
interrupted payment streams. (Spec. ,r 6, Title).
1 According to Appellant, the real party in interest is American International
Group, Inc. See Appeal Br. 1.
Appeal2017-007051
Application 12/547,318
Claim 1 is representative of the subject matter on appeal.
1. A method for a provider to retain customers with interrupted
payment streams, comprising:
employing a processor to execute computer executable
instructions stored on a tangible computer-readable medium to
generate a payment order for an unpaid periodic payment fom a
customer that purchased an insurance policy with a series of periodic
payments according to a schedule and to submit electronically the
payment order to a bank processor for payment, the payment order
based on customer billing information stored in a customer
information database contained on an electronic storage device and
accessed by the processor;
employing the processor to execute computer executable
instructions stored on the tangible computer-readable medium to
identify the customer as an at-risk-for-lapse customer based on
receiving an electronic indication from the bank processor that the
payment order is refused, wherein the insurance policy has not yet
lapsed;
employing the processor to execute computer executable
instructions stored on the tangible computer-readable medium to place
the at-risk-for-lapse customer in at least one of a plurality of different
segments of at-risk-for-lapse customers based upon customer
information stored in the customer information database contained on
the electronic storage device and accessed by the processor;
employing the processor to execute computer executable
instructions stored on the tangible computer-readable medium to
contact said at-risk-for-lapse customer prior to the insurance policy
lapsing by use of at least one of a set of communication channels
following one of a plurality of different contact protocols, the
selection of the contact protocol based upon the segment of at-risk-
for-lapse customers in which the at-risk-for-lapse customer is placed,
wherein the different contact protocols vary in at least one of message
content, contact timing, and frequency of contact attempts, the contact
being configured to request a payment mechanism for the unpaid
periodic payment to prevent the insurance policy from lapsing, the set
of communication channels including an electronic message sent to
said at-risk-for-lapse customer using an electronic contact information
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Application 12/547,318
entry stored within said customer information database, a postal mail
letter generated by a postal mail generation device adapted to generate
printed matter containing the message content of the selected contact
protocol and sent to a mailing address of said at-risk-for-lapse
customer stored within said customer information database, and an
outbound telephonic connection between an automated call distributor
and said at-risk-for-lapse customer using said automated call
distributor using one of a set of scripted messages and telephone
contact information of said at-risk-for-lapse customer stored within
said customer information database;
employing the processor to execute computer executable
instructions stored on the tangible computer-readable medium to
record a transaction record indicative of said at least one failed billing
attempt in a transaction history for said at-risk-for-lapse customer
stored in the customer information database contained on the
electronic storage device and accessed by the processor.
THE REJECTION
Claims 1, 12, 13, and 19-22 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
Claims 1, 12, 13, and 19-22 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Kosiba in view of Kolling and Ruth.
Kolling et al. (Kolling) US 5,920,847 July 6, 1999
Kosiba et al. (Kosiba) US 6,098,052 Aug. 1, 2000
Ruth et al. (Ruth) US 2002/0169715 Al Nov. 14, 2002
ANALYSIS
35 U.S.C. § 101 REJECTION
We will sustain the rejection of claims 1, 12, 13, and 19-22 under 35
U.S.C. § 101.
The Supreme Court
set forth a framework for distinguishing patents
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Application 12/547,318
that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible
applications of those concepts. First, ... determine
whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, ... then
ask, "[ w ]hat else is there in the claims before us?"
. . . To answer that question, . . . consider the
elements of each claim both individually and "as
an ordered combination" to determine whether the
additional elements "transform the nature of the
claim" into a patent-eligible application .... [The
Court] described step two of this analysis as a
search for an "'inventive concept'"-i.e., an
element or combination of elements that is
"sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon
the [ineligible concept] itself."
Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73
(2012)) ( citations omitted).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Federal Circuit has
explained that "the 'directed to' inquiry applies a stage-one filter to claims,
considered in light of the [S]pecification, based on whether 'their character
as a whole is directed to excluded subject matter."' See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the
focus of the claims is on a specific improvement in relevant technology or
on a process that itself qualifies as an "abstract idea" for which computers
are invoked merely as a tool. See id. at 1335-36.
In so doing we apply a "directed to" two prong test: 1) evaluate
whether the claim recites a judicial exception, and 2) if the claim recites a
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Application 12/547,318
judicial exception, evaluate whether the judicial exception is integrated into
a practical application. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Peg. Reg. 50, 50-57 (Jan. 7, 2019) ("Guidance").
The Examiner determines that the claims are directed to a judicial
exception specifically identifying and contacting customers with delinquent
accounts. (Final Act. 2). The Examiner determines that monitoring
payment account status in order to minimize loss by businesses due to
delinquent accounts is well-understood, routine and conventional activity
previously known to the industry. (Final Act. 2). In the Answer, the
Examiner determines that the claims are directed to a fundamental economic
practice and a certain method of organizing human activity. (Ans. 3). The
Examiner also finds that the additional elements recited include employing a
processor to group the customers and record customer data and do not
amount to significantly more than the judicial exception. (Final Act. 2).
Appellant's Specification discloses that in operating an insurance
business, customers are billed on a regular, periodic basis and that the
payments are made by a debit to an account or the payments are remitted
periodically by mail, internet or phone. (Spec. ,r 1-3). If a payment is not
remitted or cannot be debited, for example because the payment cannot be
charged to the customer's billing information on file, the insurance coverage
can lapse. (Spec. ,r 4). The present invention is a proactive retention
initiative that provides the carrier with the ability to reconnect with
customers and ask them to provide alternate billing methods when the billing
methods on file are not adequate for providing the carrier with the premium
payments that become due. (Spec. ,r 5). This ability to reconnect with
customers provides an opportunity to continue coverage on policies that may
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Application 12/547,318
otherwise have lapsed. The advantage of the invention is that turnover of
customers may be reduced, thus reducing the cost of providing continuing
coverage. The invention also helps in building and maintaining a stronger
relationship with the customer base.
Claim 1 recites the steps of employing a processor to execute
instructions to "generate a payment order," "identify the customer as an at-
risk-for-lapse customer based on receiving an electronic indication ... that
the payment order is refused, wherein the insurance policy has not yet
lapsed," "place the at-risk-for-lapse customer in at least one of a plurality of
different segments," "contact said at-risk-for-lapse customer," and "record a
transaction record indicative of said at least one failed billing attempt."
We agree with the Examiner's determination that the claims are
directed to identifying and contacting customers with delinquent insurance
premium accounts. Appellants agree with this in that they state that the
claims are directed to a method for a provider to retain customers with
interrupted payment streams. (Brief 6). Certain methods of organizing
human activity such as are related to insurance and commercial practices
such as collecting payments are judicial exceptions. Guidance, 54.
Also, we determine the steps of employing a processor to "generate a
payment order," "identify the customers," "place ... customer in ...
different segments," select "contact protocol based upon the segment," and
"record a transaction record" constitute analyzing information by steps
people go through in their minds, or by mathematical algorithms, and are
essentially mental processes within the abstract-idea category." Elec. Power
Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016); see also
buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (claims
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directed to certain arrangements involving contractual relations are directed
to abstract ideas). Thus, the claim recites judicial exceptions.
Turning to the second prong of the "directed to test", claim 1 merely
requires a "processor." The recitation of the word "processor" does not
integrate the judicial exception into a practical application. Guidance 52.
In this regard, the recitation does not affect an improvement in the
functioning of a processor or other technology, does not recite a particular
machine or manufacture that is integral to the claims, and does not transform
or reduce a particular article to a different state or thing. Id. Thus, the claim
is directed to an "abstract idea."
Turning to the second step of the Alice analysis, because we find that
the claims are directed to abstract ideas, the claims must include an
"inventive concept" in order to be patent-eligible, i.e., there must be an
element or combination of elements that is sufficient to ensure that the claim
in practice amounts to significantly more than the abstract idea itself. See
Alice, 134 S. Ct. at 2355 (alteration in original) (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012)).
The introduction of a processor, into the claims does not alter the
analysis at Alice step two.
[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-
eligible invention. Stating an abstract idea "while adding
the words 'apply it'" is not enough for patent eligibility.
Nor is limiting the use of an abstract idea "'to a particular
technological environment."' Stating an abstract idea
while adding the words "apply it with a computer"
simply combines those two steps, with the same deficient
result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t ]" an
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abstract idea "on ... a computer," that addition cannot
impart patent eligibility. This conclusion accords with
the preemption concern that undergirds our § 101
jurisprudence. Given the ubiquity of computers, wholly
generic computer implementation is not generally the sort
of "additional featur[ e ]" that provides any "practical
assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself."
Alice, 134 S. Ct. at 2358 (alterations in original) ( citations omitted).
Instead, "the relevant question is whether the claims here do more
than simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Id. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to retrieve, select, and apply decision criteria to data and modify
the data as a result amounts to electronic data query and retrieval----one of
the most basic functions of a computer. All of these computer functions are
well-understood, routine, conventional activities previously known to the
trading industry. See Elec. Power Grp., 830 F.3d at 1354; see also In re
Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316 (Fed.
Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). In short,
each step does no more than require a generic computer to perform generic
computer functions. In addition, the sequence of data reception-analysis-
access/ display is equally generic and conventional or otherwise held to be
abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir.
2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction), Inventor
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Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract), Two-Way Media Ltd. v.
Comcast Cable Commc 'ns, LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017)
(holding sequence of processing, routing, controlling, and monitoring was
abstract). The ordering of the steps is, therefore, well understood, routine
and conventional.
As we stated above, the claims do not affect an improvement in any
other technology or technical field. The recitation of a postal mail
generation device to send mail and an automated call distributor make calls
are recitations of insignificant post-solution activity. This limitation is
similar to the post-solution activity in Parker v. Flook, 437 U.S. 584, 590
( 1978), in that they are merely the final steps perfonned after the processing
of the data. Each of these limitations amounts to no more than instructions
on how to apply the result of the judicial exception using a generic devices.
In this regard, claim 1 does not recite an irnprovement to the postal mail
generation device or automated call distributor. Thus, the claims at issue
amount to nothing significantly more than the abstract idea. Under our
precedents, that is not enough to transform an abstract idea into a patent-
eligible invention. See Alice, 134 S. Ct. at 2360.
\Ve have reviewed all the arguments (Appeal Br. 4---20) Appellant has
submitted concerning the patent eligibility of the claims before us that stand
rejected under 35 LLS.,C .. § 10L \Ve find that our analysis above
substantially covers the substance of aH the arguments, which have been
made. But, for purposes of completeness, we will address various
arguments in order to make individual rebuttals of same . .....
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We are not persuaded of error on the part of the Examiner by
Appellant's argument that the claims require a particularly-programmed
machine. (Brief 1 ). However, the steps of claim 1 represent, at most,
programmed steps in a general purpose computer, rather than meaningful
actions that tie the method to a particular computer or a particular machine.
In this regard, the Appellant has not directed our attention to a disclosure in
the Specification or a recitation in claim I of any improvements to the
processor used to implement the steps. As such, we find that any general
purpose computer can implement the invention.
We are also not persuaded of error on the pmi of the Examiner by
Appellant's argument that claim 1 is directed to a new and unconventional
steps. (Brief 8). To the extent Appellant maintains that the limitations of
claim 1 necessarily amount to "significantly more" than an abstract idea
because the claimed apparatus is allegedly patentable over the prior art,
Appellant misapprehends the controlling precedent. Although the second
step in the Alice/114ayo framework is termed a search for an "inventive
concept," the analysis is not an evaluation of novelty or non-obviousness,
but rather, a search for "an element or combination of elements that is
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself"' Alice, 134 S. Ct. at 2355.
A novel and nonobvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 132 S. Ct. at 1304.
We are lastly not persuaded of error on the part of the Examiner by
Appellant's arguments that the claims improve the operation of the claimed
method by initiating contact prior to the policy lapsing and tailoring the
contact to the at-risk-for-lapse customer. (Brief 8). The Federal Circuit
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stated in Enfish, LLC v. Microsoft Corp., 822 F.3d. 1327 (Fed. Cir. 2016)
that in regard to rejecting a § 101 challenge at the step one stage in the Alice
analysis, the claims at issue in that case focused not on asserted advances in
uses to which existing computer capabilities could be put, but on a specific
type of data structure, i.e., a self-referential table for a computer database,
designed to improve the way a computer carries out its basic functions of
storing and retrieving data. Id. at 1335-36. The alleged improvement that
Appellant touts does not concern an improvement to computer capabilities
but instead relates to an alleged improvement in collecting payments from
customers for which a computer is used as a tool in its ordinary capacity.
In view of the foregoing, we will sustain the Examiner's rejection of claim 1
under 35 U.S.C. § 101 For the same reasons as discussed above, we will
also sustain the rejection of claims 12, 13, and 19-22.
REJECTION UNDER 35 U.S.C. § 103(a)
We will not sustain this rejection because we agree with the Appellant
that the prior art does not disclose "employing the processor ... to contact
said at-risk-for-lapse customer prior to the insurance policy lapsing" as
required by claim 1. The Examiner relies on Kosiba at col. 3, lines 62---64;
col. 4, lines 64---67; and col. 9, lines 3-7 for teaching this subject matter.
Final Act. 4.
Column 3, lines 62---64 of Kosiba discloses that a particular collection
strategy could lead to multiple options such as 2 phone contacts and 1
mailing. This portion of Kosiba does not disclose anything about the lapsing
of an insurance policy.
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Column 4, lines 64---67 of Kosiba discloses that collection strategies
are further defined automatically by the consumer's experience
characterized in terms of attributes such as number of phone contacts or
mailings per month. This portion of Kosiba does not disclose anything
about the lapsing of an insurance policy.
Column 9, lines 3-7 of Kosiba discloses customers with higher
amounts due have the lowest collectability in the delinquency phase but have
a much higher probability of making a payment when intense strategies are
used. This portion of Kosiba does not disclose anything about the lapsing of
an insurance policy.
In view of the foregoing, we will not sustain this rejection of claim 1
and of claims 12, 13, and 19-22 dependent therefrom.
CONCLUSIONS OF LAW
We conclude the Examiner did not err in rejecting claims 1, 12, 13,
19-22 under 35 U.S.C. § 101.
We conclude the Examiner did err in rejecting claims 1, 12, 13, 19-22
under 35 U.S.C. § 103(a).
DECISION
The decision of the Examiner to reject the claims under 35 U.S.C.
§ 101 is affirmed.
The decision of the Examiner to rejection the claims under 35 U.S.C.
§ 103(a) is not affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
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AFFIRMED
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