John Chandler. Hopkins

Patent Trials and Appeals Board

Oct 2, 2019

11851792 - (D) (P.T.A.B. Oct. 2, 2019)

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.
11/851,792 09/07/2007 John Chandler HOPKINS US-0289.01 | 59197.21555 9944
122328 7590 10/02/2019
BakerHostetler / USAA
1050 Connecticut Avenue, N.W., Suite 1100
Washington, DC 20036
EXAMINER
HOLLY, JOHN H
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN CHANDLER HOPKINS
Appeal 2018-008422
Application 11/851,792
Technology Center 3600
Before MURRIEL E. CRAWFORD, PHILIP J. HOFFMANN, and
BRADLEY B. BAYAT, Administrative Patent Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 John Chandler Hopkins,
appeals from the Examiner’s decision to finally reject claims 34, 35, 37,
40–43, 45, 47–51, and 55–58. Final Act. 1. We have jurisdiction under
5 U.S.C. § 6(b).
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 United
Services Automobile Association (USAA). Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claims are directed to systems and methods for processing vehicle
performance data. Claim 34, reproduced below, is illustrative of the claimed
subject matter:
34. A method comprising:
receiving from a user a request for a vehicle insurance
policy for a vehicle with a processor;
querying the user for acceptance of a behavior processing
module;
receiving a notification of acceptance from the user of the
behavior processing module;
providing the behavior processing module;
installing the behavior processing module on the vehicle,
the behavior processing module operatively coupled with at least
one vehicle performance sensor for detecting vehicle
performance data and at least one vehicle location sensor for
detecting vehicle location data, the behavior processing module
configured to receive the vehicle performance data and the
vehicle location data and to calculate, via the vehicle’s processor,
behavior data based on the use of the vehicle performance data
and vehicle location data, the vehicle location data including
routes traveled and mileage;
receiving, with a receiving module of the behavior
processing module, behavior data on a plurality of drivers of the
vehicle;
activating a bridge vehicle insurance policy for the user,
the bridge vehicle insurance policy providing vehicle insurance
for the user for a period of time to receive sufficient behavior
data to determine a premium for a non-bridge vehicle insurance
policy;
receiving sufficient behavior data with the receiving
module to determine the premium for the non-bridge vehicle
insurance policy;
determining, that the behavior data corresponds to a
different premium than the bridge vehicle insurance policy;
determining the premium for the non-bridge vehicle
insurance policy; and
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activating the non-bridge vehicle insurance policy.

REJECTIONS
The Examiner rejected claims 34, 35, 37, 40–43, 45, 47–51, and
55–58 under 35 U.S.C. § 101 as directed to ineligible subject matter in the
form of abstract ideas.
The Examiner rejected claims 34, 35, 37, 40, 42, 43, 45, 47–51, and
55–58 under 35 U.S.C. § 103(a) as unpatentable over Bauer et al. (US
2004/0153362 A1, pub. Aug. 5, 2004) (“Bauer”) and Dawn Love,
“Progressive’s Black Box: Is Big Brother Good for the Industry?”, Insurance
Journal West Magazine, Dec. 6, 2004 (retrieved on Sept. 10, 2019 from
http//www.insurancejournal.com/magazines/features/2004/12/06/50322.htm)
(“Love”).
The Examiner rejected claim 41 under 35 U.S.C. § 103(a) as
unpatentable over Bauer, Love, and Alemayehu et al. (US 2007/0226014
A1, pub. Sept. 27, 2007) (“Alemayehu”).
OPINION
Rejection 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.
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. Pty. Ltd. 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
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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,
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, 191
(1981)); “tanning, dyeing, making water-proof 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
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protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (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.”).
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
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 (quotation marks 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. (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 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 (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)).
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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.
The Examiner finds the claims are directed to a fundamental
economic practice, and are similar to claims found abstract “such as
comparing new and stored information and using rules to identify options
(Electric Power Group).” Final Act. 5.
Independent claim 34 recites “determining, that the behavior data
corresponds to a different premium than the bridge vehicle insurance
policy,” and “determining the premium for the non-bridge vehicle insurance
policy.” The determining is based on the information received in steps
recited before the determining step. Each of those steps, which begin with
receiving a request for a policy, and querying the user for acceptance of a
behavior processing module are part of a process to gather data for the
determining step. The final recited step is “activating the non-bridge vehicle
insurance policy.” The Specification describes that “a non-bridge policy is
issued,” but provides no other details on “activating.” Spec. ¶ 48. In
addition, the “module” is “configured to receive the vehicle performance
data and the vehicle location data and to calculate, via the vehicle's
processor, behavior data.” The Specification does not provide an algorithm
to “calculate behavior data,” but provides an example that it may provide a
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“driving rating” as the behavior data. Spec. ¶ 35; see also ¶ 51 (“more than
one behavior is calculated, such as aggressive driving behavior, maintenance
behavior, acceleration behavior, lane change behavior and the like.”).
Determining a price for an insurance policy, which is a basic part of
the claimed method, based on gathered and “calculated” information, and
issuing an insurance contract, are fundamental economic practices, because
it relates both to agreements between people (MPEP § 2106.04(a)(2)(I)(A))
and a method to mitigate risk (MPEP § 2104.06(a)(2)(I)(B)). Claim 32 is
thus directed to an abstract idea under Prong One of Revised Step 2A of the
Guidance. See Guidance, 84 Fed. Reg. at 52.
Turning to Revised Step 2A, Prong Two of the Guidance, we
determine if the claim is integrated into a practical application of the abstract
idea. Here, claim 34 recites steps that receive data, make determinations
from the data, and activate a new insurance contract. The method does not
improve the underlying vehicle recited in the claim, nor the claimed
“processor,” because any computer can be used to execute the claimed
method. See Spec. ¶ 53. In addition, the method is directed to “a method of
processing vehicle performance data [which] includes underwriting a vehicle
insurance policy” (Spec. ¶ 4), and as such the claimed method does not
improve another technology. MPEP § 2106.05(a). Because a particular
computer is not required, the claim also does not define or rely on a
“particular machine.” MPEP § 2106.05(b). Further, the method does not
transform matter. MPEP § 2106.05(c). Instead, the claim receives data,
makes determinations from the data, and initiates a new contractual
agreement. As such, the method has no other meaningful limitations (MPEP
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§ 2106.05(e)), and thus merely recites instructions to execute the abstract
idea on a computer (MPEP
§ 2106.05(f)).
Therefore, under Prong Two, the method is not integrated into a
practical application. Guidance, 84 Fed. Reg. at 54–55.
We next, in Step 2B, look at limitations that are “additional elements”
which may recite “something more” than an abstract idea, to determine if an
element or combination of elements is “well-understood, routine,
conventional activity.” Guidance, 84 Fed. Reg. at 56. Here, the manner in
which data for the determining step is gathered may represent “something
more.” The data gathering process in claim 34 involves several steps to
gather data from a vehicle, using “a behavior processing module,” installed
on the vehicle, and “operatively coupled with at least one vehicle
performance sensor for detecting vehicle performance data and at least one
vehicle location sensor for detecting vehicle location data.”
However, the Examiner has not provided evidence that the data
gathering, which may overall be insignificant extra-solution activity (MPEP
§ 2106.05(g)), is well-understood, routine, and conventional in the insurance
applications to which the claims are directed. See Berkheimer v. HP Inc.,
881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is well-
understood, routine, and conventional to a skilled artisan at the time of the
patent is a factual determination.”). The prior art references cited alone are
insufficient to establish whether that operation is well-understood, routine,
and conventional in the computing arts. Id. (“Whether a particular
technology is well-understood, routine, and conventional goes beyond what
was simply known in the prior art. The mere fact that something is disclosed
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in a piece of prior art, for example, does not mean it was well-understood,
routine, and conventional.”).
The same issue is present with systems recited in independent
claims 42 and 50, as argued by the Appellant. Reply Br. 5 (“Because no
evidence that all elements of the claims are WRC, and because the Rejection
does not meet the requirements to show ineligibility as described in the
Berkheimer Memo, this rejection should be reversed.”)
Thus, based on the record before us, under Berkheimer, we do not
affirm the 35 U.S.C. § 101 rejection.

Rejection of Claims 34, 35, 37, 40, 42, 43, 45, 47–51, 55, 56, and 58
under 35 U.S.C. § 103(a)
With the exception of dependent claim 57, the Appellant argues all
claims together as a group. Appeal Br. 40–44. We select claim 34 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv).
We are not persuaded by Appellant’s argument that Love “does not
describe a bridge policy, and does not suggest two or more policies based on
evolving understanding of driver behavior.” Appeal Br. 42.
Love discloses that “drivers will install a data-logging device
provided by Progressive into their cars and then upload the data to the
insurance company for up to 25 percent in potential savings.” Love, 1.
Love thus discloses a policy with a different price after data is uploaded.
We interpret the post-uploaded, discounted policy period to be a different
policy, because it has different contract terms, such as a discounted price as
compared to the earlier period of coverage. We discern no difference
between a policy whose price is changed, and two separate policies. The
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Specification provides no other information that would distinguish an
amended policy from two separate policies with the same terms as the
amended policy versions. See Spec. ¶¶ 47–48 (cited at Appeal Br. 3–4).
Additionally, Bauer discloses an existing customer with an in-force
policy that later uploads data to receive a different price, in that after
“receiving and reviewing the data, the insurer applies the appropriate
discounts and/or surcharges to the cost of insurance for the party.” Bauer
¶ 208. Bauer thus discloses what is essentially one contract at one price
before the upload of data, and a second contract at a second price at a second
time, thus also meeting the claim language.
We also are unpersuaded by the Appellant’s argument that the
“rejection sets forth no motivation to combine the references to arrive at the
claimed solution, simply stating that modification of Bauer with Love
‘would have been obvious’ without explaining why.” Appeal Br. 43–44.
The rejection articulates a “motivation according to one KSR Exemplary
Rationale where a known technique is used to improve similar methods and
systems in the same [way] by offering drivers discounts based on how much,
how fast and when they drive.” Final Act. 25 (emphasis added). The
Examiner has thus provided a rationale, which the Appellant has not
recognized, but has not disputed the merit of the motivation.
The Appellant also asserts that “essential Graham factors are ignored
– for example, the rejection never establishes the level of ordinary skill in
the art.” Appeal Br. 44. It is not necessary to establish a level of ordinary
skill in the art when the references reflect an appropriate level. Okajima v.
Bourdeau 261 F.3d 1350, 1355 (Fed. Cir. 2001) (citing Litton Indus. Prods.,
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Inc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir. 1985)); see also
MPEP § 2141.03(II).
We also are not persuaded by the Appellant’s argument of
impermissible hindsight because the cited references in the combination
“cannot be combined.” Appeal Br. 44. The Appellant provides no evidence
or reasoning to support this assertion about combining references. In
addition, we do not agree there is impermissible hindsight guiding the
combination, because the Examiner “articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Because the Appellant has not established error in the rejection, we
sustain the rejection of obviousness of claims 34, 35, 37, 40, 42, 43, 45,
47–51, 55, 56, and 58.
Rejection of Claim 57 under 35 U.S.C. § 103(a)
Claim 57, which depends from independent system claim 50, recites
“wherein the first vehicle insurance policy has a variable duration based on
time required for development of the behavior data.” The Examiner cites
paragraph 194 of Bauer as disclosing the claim language. Final Act. 41.
The Appellant argues “[n]othing [in ¶ 194] . . . relates in any way to a
variable duration for an insurance policy based on time required for
development of behavior data.” Appeal Br. 43.
We disagree, because the ordinary artisan would understand that
collecting some information, such as the vehicle identification number,
stored in the electronics of a vehicle, would take far less time to collect than,
for example, the “location information” or “mileage information” that would
require data from a longer period of time. Further, Bauer discloses “location
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information recorded by the device can be compared against ‘garage
location’ information provided in a policy renewal form.” Bauer ¶ 194. It
could take less time to collect this information than “mileage information”
that tracks the amount of driving done each day, over a period of time. The
ordinary artisan would thus recognize from Bauer’s disclosure that the
length of time to collect and “develop” data varies based on what data is
necessary, and how long it would take to collect that data.
Seeing no error, we sustain the rejection of claim 57 as obvious.
Rejection of Claim 41 under 35 U.S.C. § 103(a)
We also sustain the separate rejection of claim 41 as obvious, because
no argument as to the rejection was advanced by the Appellant.
CONCLUSION
The Examiner’s rejection under 35 U.S.C. § 101 is REVERSED.
The Examiner’s rejections under 35 U.S.C. § 103(a) are AFFIRMED.
In summary:
Claims
Rejected
Basis Affirmed Reversed
34, 35, 37, 40–43,
45, 47–51, and
55–58
§ 101 34, 35, 37, 40–43,
45, 47–51, and
55–58
34, 35, 37, 40–43,
45, 47–51, and
55–58
§ 103 34, 35, 37, 40–43, 45,
47–51, and 55–58

Overall Outcome

34, 35, 37, 40–43, 45,
47–51, and 55–58

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).
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AFFIRMED