Grieder, Ralph et al.Download PDFPatent Trials and Appeals BoardMar 27, 202012064464 - (D) (P.T.A.B. Mar. 27, 2020) Copy Citation 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. Appeal 2018-009102 Application 12/064,464 2 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 Appeal 2018-009102 Application 12/064,464 3 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; Appeal 2018-009102 Application 12/064,464 4 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). Appeal 2018-009102 Application 12/064,464 5 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). Appeal 2018-009102 Application 12/064,464 6 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 Appeal 2018-009102 Application 12/064,464 7 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 Appeal 2018-009102 Application 12/064,464 8 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. Appeal 2018-009102 Application 12/064,464 9 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 Appeal 2018-009102 Application 12/064,464 10 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). Appeal 2018-009102 Application 12/064,464 11 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) Appeal 2018-009102 Application 12/064,464 12 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 Appeal 2018-009102 Application 12/064,464 13 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 Appeal 2018-009102 Application 12/064,464 14 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 Copy with citationCopy as parenthetical citation