METROPOLITAN LIFE INSURANCE CO.

Patent Trials and Appeals Board

Dec 15, 2021

2021002579 (P.T.A.B. Dec. 15, 2021)

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.
14/092,618 11/27/2013 Terrance Luciani 107574-MET_000025.1US 7652
169807 7590 12/15/2021
Metlife c/o Polsinelli PC
2049 Century Park East, Suite 2900
Los Angeles, CA 90067
EXAMINER
POE, KEVIN T
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/15/2021 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):
APDTeam@polsinelli.com
MetIP@metlife.com
patentdocketing@polsinelli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TERRANCE LUCIANI
____________

Appeal 2021-002579
Application 14/092,618
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, NINA L. MEDLOCK, and
BRADLEY B. BAYAT, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1–4 and 6–9. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed December 2, 2020) and Reply Brief (“Reply Br.,” filed March 4, 2021),
and the Examiner’s Answer (“Ans.,” mailed January 6, 2021) and Final
Office Action (“Final Act.,” mailed July 24, 2020). Appellant identifies
Metropolitan Life Ins. Co. as the real party in interest (Appeal Br. 2).
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CLAIMED INVENTION
The Specification states, “[d]isclosed herein is a system and a
computer implemented method for automatically adjusting a customer’s
insurance product or insurance portfolio upon a triggering event according to
predefined guidelines” (Spec. Abstr.).
Claims 1 and 6 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A system to optimize insurance coverage in
response to life events, the system comprising:
a risk management server in communication with one or
more customer devices and an external vehicle registration
database over a network, the risk management server hosting a
policy selection website, an actuarial database configured to
store one or more actuarial tables and corresponding actuarial
rules, and an insurance adjustment engine configured to adjust
an insurance policy profile based on an event trigger, the risk
management server having at least one processor configured to:
[(a)] provide a graphical user interface through the policy
selection website, the graphical user interface facilitating remote
access to the one or more customer devices customers [sic] over
the network;
[(b)] receive, via the graphical user interface,
identification information for at least one customer;
[(c)] receive, via the graphical user interface, a selection
input from the at least one customer corresponding to a request
for an automatic insurance adjustment option;
[(d)] generate, based on the selection input, a first
automatic insurance adjustment option and a second automatic
insurance option, wherein the first automatic insurance
adjustment option is associated with a cost savings goal, and the
second automatic insurance adjustment option is associated with
a maximum coverage goal;
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[(e)] provide, via the graphical user interface, the first
automatic insurance adjustment option and the second automatic
insurance option to the at least one customer for display;
[(f)] receive, via the graphical user interface, the selected
option from one of the first automatic insurance adjustment
option and the second automatic insurance adjustment option;
[(g)] store the selected option for the at least one
customer in a selection database;
[(h)] store a plurality of insurance policy profiles in a
policy database;
[(i)] transmit an inquiry to the external vehicle
registration database to scan for an event related to the at least
one customer;
[(j)] receive event data from the external vehicle
registration database;
[(k)] determine the event data indicates a vehicle
purchase event for the at least one customer;
[(l)] determine an optimal level of auto insurance
coverage for the at least one customer based on actuarial rules
for similarly situated vehicle owners coverage and the selected
option stored in the selection database;
[(m)] adjust an insurance policy profile associated with
the at least one customer to add the new auto insurance policy
based on the vehicle purchase event;
[(n)] update the insurance policy profile associated with
the at least customer in the policy database to include the new
auto insurance policy;
[(o)] generate a notification outlining terms of the new
auto insurance policy; and
[(p)] send the notification to the at least one customer to
report the new auto insurance policy.
REJECTION
Claims 1–4 and 6–9 are rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
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ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 7–12).
We select independent claim 1 as representative. The remaining claims
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Under 35 U.S.C. § 101, “[w]hoever invents or discovers any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof, may obtain a patent therefor.” 35 U.S.C.
§ 101. The Supreme Court, however, has long interpreted § 101 to include
an implicit exception: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216
(2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
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patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019, for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7,
2019) (the “2019 Revised Guidance”).2 That guidance revised the USPTO’s
examination procedure with respect to the first step of the Mayo/Alice
framework by (1) “[p]roviding groupings of subject matter that [are]
considered an abstract idea”; and (2) clarifying that a claim is not “directed
to” a judicial exception if the judicial exception is integrated into a practical
application of that exception. Id. at 50.
The first step, as set forth in the 2019 Revised Guidance (i.e.,
Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to
whether the claim recites a judicial exception, e.g., one of the following
three groupings of abstract ideas: (1) mathematical concepts; (2) certain
methods of organizing human activity, e.g., fundamental economic
principles or practices, commercial or legal interactions; and (3) mental
processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next
determine, in Step 2A, Prong Two, whether the claim as a whole integrates
the recited judicial exception into a practical application, i.e., whether the
additional elements recited in the claim beyond the judicial exception, apply,
rely on, or use the judicial exception in a manner that imposes a meaningful

2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates
the revised guidance and subsequent updates at Section 2106 (9th ed.
Rev. 10.2019, rev. June 2020).
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limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception. Id. at 54–55. Only if
the claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea. Id.
If the claim is determined to be directed to a judicial exception under
revised Step 2A, we next evaluate the additional elements, individually and
in combination, in Step 2B, to determine whether they provide an inventive
concept, i.e., whether the additional elements or combination of elements
amounts to significantly more than the judicial exception itself; only then, is
the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56.
Here, in rejecting the pending claims under 35 U.S.C. § 101, the
Examiner determined that independent claim 1 recites optimizing insurance
coverage in response to life events, i.e., “an abstract idea of generating
consolidated data [that] correspond[ ] to ‘Certain Methods of Organizing
Human activity’ (commercial or legal interactions)” (Final Act. 3–6). The
Examiner also determined that the recited abstract idea is not integrated into
a practical application (id. at 6); that claim 1 does not include additional
elements sufficient to amount to significantly more than the abstract idea
itself (id.); and that independent claim 6 and dependent claims 2–4 and 7–9
are patent ineligible for substantially the same reasons (id. at 7).
We are not persuaded, as an initial matter, by Appellant’s argument
that the Examiner has failed to establish a prima facie case of patent
ineligibility (Appeal Br. 8–9; see also Reply Br. 1–2). Appellant charges
that the Examiner has failed “to demonstrate the claimed invention is
directed to any abstract idea because [the Office Action] fails to identify any
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‘specific limitation(s) in the claim under examination (individually or in
combination) that the examiner believes recites an abstract idea’” (Appeal
Br. 8). Appellant also maintains that the Office Action “fails to provide any
specific analysis or sufficient notice to support its rejections of alleged
ineligibility to enable an effective response, as required by the 2019 Revised
Guidance” (id.). We disagree.
The Examiner explained in the Final Office Action that claim 1 recites
a system to optimize insurance coverage in response to life events; and the
Examiner reproduced the claim language, explaining that “[t]hese limitations
(with the exception of italicized limitations) describe an abstract idea of
generating consolidated data and correspond[ ] to Certain Methods of
Organizing Human Activity (commercial or legal interactions)” (Final
Act. 4–5). The Examiner also directed Appellant’s attention to the Federal
Circuit’s decision in Bancorp Servs., L.L.C v. Sun Life Assurance Co., 687
F.3d 1266, 1278 (Fed. Cir. 2012), explaining, in the Answer, that the present
claims are directed toward optimizing insurance coverage and, thus, similar
to the claims that the court determined in Bancorp are directed to an abstract
idea (Ans. 4–6).
The Federal Circuit, moreover, has observed repeatedly that “the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The court has, thus, held that the USPTO “satisfies its initial burden of
production by ‘adequately explain[ing] the shortcomings it perceives so that
the applicant is properly notified and able to respond.”’ In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011) (quoting Hyatt, 492 F.3d at 1369–70). Thus,
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what is required of the Office is that it sets forth the statutory basis of the
rejection in a sufficiently articulate and informative manner as to meet the
notice requirement of 35 U.S.C. § 132. Id.; see also Chester v. Miller,
906 F.2d 1574, 1578 (Fed. Cir. 1990) (“Section 132 is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection.”). Here, the Examiner did
precisely what § 132 requires. And, in doing so, the Examiner established a
prima facie case of patent ineligibility.
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
We also are not persuaded that the Examiner erred in determining that
claim 1 is directed to an abstract idea. The Federal Circuit has explained
that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered
in light of the specification, based on whether ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v.
Active Network, Inc., 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. Here, it is clear from the
Specification (including the claim language) that claim 1 focuses on an
abstract idea, and not on an improvement to technology and/or a technical
field.
The Specification is titled “SYSTEM AND METHOD FOR
AUTONOMOUS INSURANCE SELECTION,” and describes, in the
Background section, that customers generally do not consider shopping for
insurance an enjoyable task (Spec. ¶ 3). Thus, even in situations where a life
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event, e.g., a marriage or the birth of a child, has changed a customer’s
insurance needs, “customers often will not endeavor to change their
insurance products or portfolio due to the inconvenience” (id.). “Therefore,
there is a need for an effective means of automatically adjusting a
customer’s insurance product or portfolio in response to events that change
the customer’s insurance needs” (id. ¶ 4).
The claimed invention is ostensibly intended to satisfy this need by
providing a system and method to automatically adjust a customer’s
insurance product or portfolio in response to the occurrence of a life-altering
event (Spec. ¶ 7). The Specification, thus, describes that, in a preferred
embodiment, the system uses actuarial tables to create a set of data-driven
rules for customers (id.). For example, actuarial tables and other heuristics
may be used to determine that customers who have a child require 30% more
life insurance benefits; accordingly, when a child is born, the system
automatically raises the customer’s life insurance benefits by 30% (id.).
In another aspect, new insurance products may be added to the
customer’s insurance portfolio; for example, an auto insurance product may
added if the customer purchases his or her first car (Spec. ¶ 8). And, in yet
another aspect, the customer, when choosing the automatic adjustment
option, may customize the plan, e.g., to prioritize “cost efficiency,” such that
the system adjusts the customer’s insurance portfolio with cost savings (or
lower premiums) as the goal, or alternatively to prioritize “best protection,”
such the insurance portfolio is adjusted with a goal of maximizing coverage
(id.).
Consistent with this disclosure, claim 1 recites a system to optimize
insurance coverage in response to life events comprising a risk management
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server having at least one processor configured to: (1) receive, via a
graphical user interface (“GUI”), a request for an automatic insurance
adjustment option from at least one customer, i.e.,
provide a graphical user interface through the policy
selection website, the graphical user interface facilitating remote
access to the one or more customer devices customers [sic] over
the network;
receive, via the graphical user interface, identification
information for at least one customer; [and]
receive, via the graphical user interface, a selection input
from the at least one customer corresponding to a request for an
automatic insurance adjustment option
(limitations (a) through (c)); (2) generate a first adjustment option associated
with a cost saving goal and a second adjustment option associated with a
maximum coverage goal; provide the adjustment options, via the GUI, to the
at least one customer for display; receive the customer’s selection of the first
adjustment option or the second adjustment option; and store the customer’s
selected option in a selection database and an insurance policy profile for the
customer in a policy database, i.e.,
generate, based on the selection input, a first automatic
insurance adjustment option and a second automatic insurance
option, wherein the first automatic insurance adjustment option
is associated with a cost savings goal, and the second automatic
insurance adjustment option is associated with a maximum
coverage goal;
provide, via the graphical user interface, the first
automatic insurance adjustment option and the second automatic
insurance option to the at least one customer for display;
receive, via the graphical user interface, the selected
option from one of the first automatic insurance adjustment
option and the second automatic insurance adjustment option;
store the selected option for the at least one customer in a
selection database; [and]
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store a plurality of insurance policy profiles in a policy
database
(limitations (d) through (h)); and (3) scan an external vehicle registration
database for a vehicle purchase event for the customer and, if such an event
is detected, determine an optimal level of auto insurance coverage for the
customer (based on actuarial rules for similarly situated vehicle owners’
coverage and the selected option stored in the selection database); update the
customer’s insurance policy profile in the policy database to include the new
auto insurance policy; and notify the customer of the new policy, including
the policy terms, i.e.,
transmit an inquiry to the external vehicle registration
database to scan for an event related to the at least one customer;
receive event data from the external vehicle registration
database;
determine the event data indicates a vehicle purchase
event for the at least one customer;
determine an optimal level of auto insurance coverage for
the at least one customer based on actuarial rules for similarly
situated vehicle owners[,] coverage and the selected option
stored in the selection database;
adjust an insurance policy profile associated with the at
least one customer to add the new auto insurance policy based on
the vehicle purchase event;
update the insurance policy profile associated with the at
least customer in the policy database to include the new auto
insurance policy;
generate a notification outlining terms of the new auto
insurance policy; and
send the notification to the at least one customer to report
the new auto insurance policy
(limitations (i) through (p)). We agree with the Examiner that these
limitations, when given their broadest reasonable interpretation, recite
optimizing, i.e., adjusting, a customer’s insurance portfolio in response to
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life events, i.e., a commercial or legal interaction, which is one of “[c]ertain
methods of organizing human activity,” which are an abstract idea. See
2019 Revised Guidance, 84 Fed. Reg. at 52.
Appellant argues that “independent claim 1 recites numerous
operations that are not ordinarily performed as part of ‘insurance selection,’
‘sales activities,’ ‘adjusting a customer's insurance,’ or in a ‘consolidated
data’ environment,” and that these “recitals provide specific and non-
abstract operations that detect new vehicle purchase events and
automatically change a customer’s insurance” (Appeal Br. 9). Yet, that,
even if true, is of no moment where, as here, claim 1, ostensibly by
Appellant’s own admission, recites operations that are, for example, sales
activities, i.e., a method of organizing human activity and, therefore, an
abstract idea.
We also are not persuaded of Examiner error by Appellant’s argument
that claim 1 includes additional elements that integrate the recited abstract
idea into a “practical application” (Appeal Br. 9–12).
The Revised Guidance references MPEP, Ninth Edition
(rev. Jan 2018) (available at https://www.uspto.gov/web/offices/pac/
mpep/old/mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in
non-exhaustively listing considerations indicative that an additional element
or combination of elements may have integrated a recited judicial exception
into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55.
In particular, the Guidance describes that an additional element may have
integrated the judicial exception into a practical application if, inter alia, the
additional element reflects an improvement in the functioning of a computer
or an improvement to other technology or technical field. Id. At the same
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time, the Guidance makes clear that merely including instructions to
implement an abstract idea on a computer, or merely using a computer as a
tool to perform an abstract idea; adding insignificant extra-solution activity
to the judicial exception; or only generally linking the use of the judicial
exception to a particular technological environment or field are not sufficient
to integrate the judicial exception into a practical application. Id.
Appellant argues here that claim 1 addresses “specific problems
relating to customer engagement and convenience, and provides a new
technical interface/platform that performs specific operations in the context
of new vehicle ownership” (Appeal Br. 9–10). And, Appellant asserts that
“independent claim 1 recites a number of additional non-abstract limitations
that address the foregoing problems in a practical real-world application”
(id. at 10).
Appellant charges that the “Office Action fails to properly consider
the specific additional operations recited by independent claim 1, which
advantageously function to solve specific problems relating to customer
engagement, new vehicle ownership, and managing insurance” (Appeal
Br. 10). Yet, the operations that Appellant identifies (i.e., soliciting
customer data and an automatic insurance adjustment preference;
transmitting inquiries to an external vehicle databases to scan for events
related to the customer; determining the event data indicates a vehicle
purchase event; determining an optimal level of auto insurance coverage for
the customer based on actuarial rules for similarly situated vehicle owners;
generating new auto insurance policies based on the optimal levels of
insurance coverage and selected options; adjusting insurance policy profiles;
generating notifications regarding the new insurance policy; and reporting
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the notification to the customer (see id. at 10; see also Reply Br. 6)) are, in
combination, the claimed invention itself.
Appellant maintains that these operations integrate any alleged
abstract idea into a practical application. Yet, the relevant question under
Step 2A, Prong 2 is not whether the claimed invention itself, i.e.,
automatically adjusting a customer’s insurance coverage in response to life
events, is a practical application; instead, the question is whether the claim
includes additional elements beyond the judicial exception that integrate the
judicial exception into a practical application.
The only additional elements in claim 1 beyond the abstract idea are
“a risk management server”; “one or more customer device;’ “an external
vehicle registration database”; “a network”; “a policy selection website”; “an
actuarial database”; “an insurance adjustment engine”; “a graphical user
interface”; “a policy database”; and “a selection database,” i.e., generic
computer components (Final Act. 2 6; see also Spec. ¶¶ 13–17). “And after
Alice, there can remain no doubt: recitation of generic computer limitations
does not make an otherwise ineligible claim patent-eligible.” DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly 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
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effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo,
566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is
directed to an abstract idea.3
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance,
84 Fed. Reg. at 56.
We agree with the Examiner that claim 1 does not include additional
elements or a combination of elements that provides an inventive concept
(Final Act. 6–7). And Appellant presents no arguments to the contrary.
We are not persuaded, for the reasons set forth above, that the
Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.

3 Appellant argues that the Examiner’s same Art Unit 3692 previously
determined, in allowing claims in other applications, that “analogous claim
recitals” are “‘indicative of integration into a practical application’ and not
merely reciting the abstract idea of certain methods of organizing human
activity implemented by a computer” (Appeal Br. 11–12). But, we are not
persuaded that the Art Unit’s handling of different claims in different
applications has any bearing on the propriety of the present rejection.
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Therefore, we sustain the Examiner’s rejection of claim 1, and claims 2–4
and 6–9, which fall with claim 1.
CONCLUSION
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 6–9 101 Eligibility 1–4, 6–9
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