Grieder, Ralph et al.

Patent Trials and Appeals Board

Mar 27, 2020

12064464 - (D) (P.T.A.B. Mar. 27, 2020)

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.
12/064,464 08/04/2008 Ralph Grieder 321548US28PCT 1100
22850 7590 03/27/2020
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
EXAMINER
CRANFORD, MICHAEL D
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
OBLONPAT@OBLON.COM
iahmadi@oblon.com
patentdocket@oblon.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RALPH GRIEDER, TOBIAS MUSTER,
ANDREAS MAECHLER, YVAN PANNATIER,
and ROLF TANNER
____________

Appeal 2018-009102
Application 12/064,464
Technology Center 3600
____________

Before BIBHU R. MOHANTY, AMEE A. SHAH,
and MATTHEW S. MEYERS, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 23, 25–28, 30, 32–35, 37, 39–42, and
47. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were
presented on March 12, 2020.

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Swiss Reinsurance
Company Ltd. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a computer system and
computer implemented method for determining an insurance rate for
terrorism-related property insurance (Spec. paragraph 1). Claim 30,
reproduced below with the italics added, is representative of the subject
matter on appeal.

30. A computer implemented method for determining a risk of a
terrorist attack and an insurance rate for terrorism-related property
insurance in a computer-based rating process without determining
probability distributions of terrorist attacks or estimating the expected
loss caused by terrorist attacks, the method comprising:
providing a user with a user interface for user selection and
activation;
managing plural target classification attributes and associated
rate values upon the user selection and activation;
storing sets of the plural target classification attributes and the
associated rate values assigned to the plural target classification
attributes, each said set of the plural target classification attributes
including geographic classification attributes, divided into a plurality
of categories, indicative of a geographic location of a property,
ownership classification attributes indicative of an owner of the
property, technical classification attributes indicative of a practical or
symbolic significance of the property including at least one of a
special use of the property and a landmark associated with the
property, defined ratios of the property being assigned to different
technical classification attributes, and publicity classification
attributes indicative of public exposure and/or political perception of
the property including an assessment of exposure of the property to
the public based on activities and disputes related to the property,
wherein a target classification attribute includes at least an attribute
type, attribute subtype for hierarchically structured attribute types, and
an attribute value, wherein at least the technical classification
attributes are divided into subsets of different subtypes, wherein for
the attribute type or the attribute subtype of the target classification
attribute, a specific rate value is assigned, and wherein the plural
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target classification attributes and the associated rate values are
adapted over time based on information on varying political, social,
and economic developments received from the at least one external
source over the communication link;
receiving through said user interface property information data
comprising at least a monetary amount indicating a limit of liability, a
monetary amount indicating a total risk-exposed sum, and a monetary
amount indicating an attachment point to the total risk-exposed sum;
receiving a selection by the user of one or more industry
classification attributes indicative of an industry segment associated
with the property stored in a database and a level of attribute value,
wherein each attribute value has a specific assigned rate value;
determining a basic rate from the total risk-exposed sum and
the rate value assigned to the industry classification attributes
selected and assigning the basic rate values to the industry
classification attributes, wherein an industry classification attribute is
structured hierarchically including levels of attribute values defining
an industry segment, wherein each level of attribute value of the
industry classification attribute includes a list of defined attribute
values, and wherein each industry classification attribute is defined by
the level attribute values having a specific assigned rate value
selected;
selecting the plural target classification attributes indicative of
an attractiveness as a target for terrorism of the property;
selecting the geographic classification attributes, wherein different
ratios of the property are assigned to different geographic
classification attributes and wherein labels indicating a particular
category of geographic intensifiers are configured to be activated by
the user and assigned to the respective category;
determining, using a processor, an aggregated aggravating rate based
on the ratios specified from the different geographic classification
attributes and the rate values assigned to the respective geographic
classification attributes, the associated rate values being assigned to
each of the plural target classification attributes, a first rate value,
from among the associated rate values assigned to each of the plural
target classification attributes, being assigned to the geographic
classification attributes and being determined based on ratios specified
for each of the plurality of categories of the geographic classification
attributes;
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determining the insurance rate by modifying the basic rate based on
the aggregated aggravating rate and by multiplying the aggregated
aggravating rate with the basic rate, wherein the aggregated
aggravating rate is determined by aggregating multiple aggravating
rates determined based on the plural target classification attributes
selected for the property, at least one of different geographic
classification attributes, different ownership classification attributes,
the different technical classification attributes, and different publicity
classification attributes are assigned to different defined portions of
the property, the different defined portions of the property
corresponding to different parts of the property situated in different
geographic locations, and the aggregated aggravating rate is
determined based on the at least one of the different geographic
classification attributes, the different ownership classification
attributes, the different technical classification attributes, and the
different publicity classification attributes assigned to the different
defined portions of the property, and based on the defined ratios of the
property assigned to the different technical classification attributes
and the associated rate values assigned to the technical classification
attributes;
assigning different target classification attributes to the
different defined portions of the property; and
determining the aggregated aggravating rate based on the
different target classification attributes assigned to the different
defined portions of the property.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 23, 25–28, 30, 32–35, 37, 39–42, and 47 are rejected
under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
2. Claims 23, 25–28, 30, 32–35, 37, 39–42, and 47 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Helitzer (US 7,711,584 B2,
iss. May 4, 2010), Henderson (US 2004/0249679 A1, pub. Dec. 09, 2004),
and Chen (US 2005/0203778 A1, pub. Sept. 15, 2005).
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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence2.

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 30 is improper
because the claim is not directed to an abstract idea (App. Br. 14, 19; Reply
Br. 4, 5). The Appellant argues further that the claim is “significantly more”
than the alleged abstract idea (App. Br. 15–20; Reply Br. 4, 5).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Action 9–13; Ans. 35–37).
We agree with the Examiner. An invention is patent eligible if it
claims a “new and useful process, machine, manufacture, or composition of
matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
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to limit the use of the formula to a particular technological environment.”
Id. (internal citation omitted) (citing Benson and Flook); see, e.g., id. at 187
(“It is now commonplace that an application of a law of nature or
mathematical formula to a known structure or process may well be deserving
of patent protection.”).
The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we first look to
whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to
monopolize the judicial exception.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
See Guidance.
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
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elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The Specification at paragraph 1 states that the invention relates to a
method for determining an insurance rate for terrorism-related property
insurance. Here, the Examiner has determined that the claim sets forth
determining an insurance rate and which is analogous to a method of
organizing human activity and fundamental economic practice (Final Act.
12). We substantially agree with the Examiner. We determine that the
claim sets forth the subject matter in italics above which describes the
concept determining an insurance rate for a property which is a certain
method of organizing human activity and a fundamental economic practice,
or mental process, i.e. a judicial exception. In Accenture Global Servs. v.
Guidewire, 728 F.3d 1336, 1342 (Fed. Cir. 2013) claims for “generating
tasks to be performed in an insurance organization” were held to be an
abstract concept. In Bancorp Servs. v. Sun Life, 687 F.3d 1266, 1277 (Fed.
Cir. 2012) claims for “a life insurance policy management system” were
held to be an abstract concept. See Electric Power Group, LLC v. Alstom
S.A., 830 F.3d 1350 (Fed. Cir. 2016) where collecting information, analyzing
it, and displaying results from certain results of the collection and analysis
was held to be an abstract idea.
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We next determine whether the claim recites additional elements that
integrate the judicial exception into a practical application. See Guidance,
84 Fed. Reg. at 54–55. The Revised Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
Here, the claim does not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in
claim 30 imposes a meaningful limit on the judicial exception, such that the
claim more than a drafting effort to monopolize the judicial exception.
For example, the steps of [1] “managing plural target classification
attributes”; [2] “storing sets of the plural target classification attributes and
the associated rate values assigned to the plural target classification
attributes”; [3] “receiving through said user interface property information
data comprising at least a monetary amount indicating a limit of liability”;
[4] “receiving a selection by the user of one or more industry classification
attributes indicative of an industry segment associated with the property”;
[5] “determining a basic rate from the total risk-exposed sum and the rate
value assigned to the industry classification attributes selected and assigning
the basic rate values to the industry classification attributes”; [6] “selecting
the plural target classification attributes indicative of an attractiveness as a
target for terrorism of the property”; [7] “selecting the geographic
classification attributes”; [8] “determining…an aggregated aggravating rate
based on the ratios specified from the different geographic classification
attributes and the rate values assigned to the respective geographic
classification attributes”; [9] “determining the insurance rate by modifying
the basic rate based on the aggregated aggravating rate and by multiplying
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the aggregated aggravating rate with the basic rate”; [10] “assigning
different target classification attributes to the different defined portions of
the property”; and [11] “determining the aggregated aggravating rate based
on the different target classification attributes”, are merely steps performed
by a generic computer that do not improve computer functionality. That is,
these recited steps [1]–[11] “do not purport to improve the functioning of the
computer itself” but are merely generic functions performed by a
conventional processor. Likewise, these same steps [1]–[11] listed above do
not improve the technology of the technical field and merely use generic
computer components and functions to perform the steps. Also, the recited
method steps [1]–[11] above do not require a “particular machine” and can
be utilized with a general purpose computer, and the steps performed are
purely conventional. In this case the general purpose computer is merely an
object on which the method operates in a conventional manner. Further, the
claim as a whole fails to effect any particular transformation of an article to
a different state. The recited steps [1]–[11] fail to provide meaningful
limitations to limit the judicial exception and rather are mere instructions to
apply the method to a generic computer.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
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Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well-
understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
the art and they are recited at a high level of generality. For example, the
Specification at page 7 describes using conventional computer components
such as a keyboard, pointing device, and processor in a conventional
manner. The claim specifically includes recitations for a processor to
implement the method but the processor is used in a manner that is well-
understood, routine, and conventional in the field. Here, the claimed generic
computer components, which are used to implement the claimed method, are
well understood, routine, or conventional in the field. The Appellant has not
demonstrated that the computer components described in the Specification at
page 7 for instance are not general purpose computer components known to
perform similar functions in a well-understood manner. Here, the claim has
not been shown to be “significantly more” than the abstract idea.
The Appellant at page 15 of the Appeal Brief has also cited to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the
claim is not abstract. However, the claims in Enfish are not similar in scope
to those here, and were in contrast, directed to a self-referential data table.
The Appellant at page 14 of the Appeal Brief has also cited to McRO,
Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016)
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but the claims in that case are distinguished from this case in being directed
to rules for lip sync and facial expression animation.
For these above reasons the rejection of claim 30 is sustained. The
Appellant has provided the same arguments for the remaining claims which
are drawn to similar subject matter, and the rejection of these claims is
sustained for the same reasons given above.

Rejection under 35 U.S.C. § 103
The Appellant argues that the rejection of claim 23 is improper
because the cited prior art fails to disclose “assigning different geographic
classification attributes to different portions of a property” (App. Br. 23;
Reply Br. 8, 9).
In contrast, the Examiner has determined that the argued claim
limitation is suggested by citations to Helitzer (abstract), Henderson (para.
35), and Chen (para. 69) (Ans. 37–39).
We agree with the Appellant. Claim 23 requires “select[ing] the
geographic classification attributes, wherein different ratios of the property
are assigned to different geographic classification attributes.” Helitzer, at
the cited portion, discloses summed weights for insurance rates for a
building. Henderson, at paragraph 35, discloses taking location variables
into account. Chen, at paragraph 69, discloses taking exposure location into
account. However, the above citations fail to specifically disclose or suggest
select[ing] the geographic classification attributes, wherein different ratios of
the property are assigned to different geographic classification attributes.”
Accordingly, this rejection of record is not sustained. The remaining claims
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contain a similar limitation, and the rejection of these claims is not sustained
as well.

CONCLUSIONS OF LAW
We conclude that the Appellant has not shown that the Examiner
erred in rejecting claims 23, 25–28, 30, 32–35, 37, 39–42, and 47 under 35
U.S.C. § 101.
We conclude that the Appellant has shown that the Examiner erred in
rejecting claims 23, 25–28, 30, 32–35, 37, 39–42, and 47 under 35 U.S.C.
§ 103(a).

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
23, 25–28,
30, 32–35,
37, 39–42,
47
101 Eligibility 23, 25–28,
30, 32–35,
37, 39–42,
47

23, 25–28,
30, 32–35,
37, 39–42,
47
103 Helitzer,
Henderson, and
Chen
23, 25–28,
30, 32–35,
37, 39–42,
47
Overall
Outcome
23, 25–28,
30, 32–35,
37, 39–42,
47

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TIME PERIOD FOR RESPONSE
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)(1)(iv).

AFFIRMED