Michael P. Castelli et al.

Patent Trials and Appeals Board

Feb 7, 2020

11364440 - (D) (P.T.A.B. Feb. 7, 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.
11/364,440 02/28/2006 Michael P. Castelli 239139 8817
23460 7590 02/07/2020
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
FEACHER, LORENA R
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
02/07/2020 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL P. CASTELLI, DONALD WHITEMAN, and
SCOTT WALKER
____________

Appeal 2018-004493
Application 11/364,440
Technology Center 3600
____________

Before JOSEPH A. FISCHETTI, CYNTHIA L. MURPHY, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, 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, 3–8, 10–12, 14–17, 19, and 20. 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 Sept. 28, 2017), and the Examiner’s Answer (“Ans.,” mailed Jan. 22,
2018) and Final Office Action (“Final Act.,” mailed Aug. 30, 2016).
Appellant identifies American International Group, Inc. as the real party in
interest. Appeal Br. 1.
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CLAIMED INVENTION
Appellant’s claimed invention “relates, in general, to enterprise
software applications and more particularly, to tools and techniques for
accounting and providing for shared services within such applications”
(Spec. ¶ 3).
Claims 1 and 12 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of generating quantitative indicators for a
performance assessment of a safety program, comprising:
[(a)] operating an application server, the application
server being programmed to present a safety program
performance assessment questionnaire having a plurality of
sections each having a plurality of questions, each section being
directed to one area of performance assessment of the safety
program;
[(b)] presenting, by the application server through an
electronic user interface, the safety program performance
assessment questionnaire;
[(c)] receiving, through the electronic user interface,
answers for respective questions in the safety program
performance assessment questionnaire, wherein the step of
receiving includes presenting through the electronic user
interface a set of possible answers for a question for selection by
a user, and wherein each one of said plurality of possible answers
has a pre-defined score associated therewith;
[(d)] assigning, by the application server, scores to the
questions in the safety program performance assessment
questionnaire based on received answers for the respective
questions;
[(e)] applying, by the application server, a pre-assigned
question weight to the score of each question, each pre-assigned
question weight adapted to reflect a degree of contribution the
respective question provides to the safety performance in the area
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of performance assessment of the section containing said
question;
[(f)] for each section, summing, by the application
server, weighted scores for questions in each section to provide
a section score;
[(g)] normalizing, by the application server, each section
score on a scale in which a maximum score of each section is a
common value;
[(h)] applying, by the application server, a pre-assigned
section weight to each normalized section score, each pre-
assigned section weight adapted to reflect a degree of
contribution the respective section provides to an overall
performance of the safety program;
[(i)] summing, by the application server, the weighted
section scores to provide an overall score; and
[(j)] performing, by the application server, a statistical
regression analysis to identify a correlation between the overall
score and a loss factor using a set of past performance
assessments and associated loss factor data.

REJECTIONS
Claims 1, 3–8, 10–12, 14–17, 19, and 20 are rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter.
Claims 1, 3–8, 10–12, 14–17, 19, and 20 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Nagan (US 2003/0126049 A1, pub. July 3,
2003), Rodrigue (US 2006/0259338 A1, pub. Nov. 16, 2006), and Schaf
(US 2005/0065754 A1, pub. Mar. 24, 2005).
ANALYSIS
Patent-Ineligible Subject Matter
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.”
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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
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the claims under 35 U.S.C. § 101, the Examiner
determined that claim 1 recites steps for presenting an assessment
questionnaire, receiving answers to questions on the assessment, assigning
scores and weights to each question, summing weighted scores for questions
in each section, normalizing each section score, applying a weight to each
normalized section score, summing the section scores, and identifying a
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correlation between the overall score and a loss factor. Final Act. 10. The
Examiner found that the claim 1, thus, recites steps for performing
assessments, which is related to concepts that have been held by the courts
to be directed to abstract ideas, such as organizing information through
mathematical correlation. Id. The Examiner also determined that
performing assessments is an application of a mathematical concept, which
is an abstract idea. Id. The Examiner further determined that these claims
do not include additional elements that provide significantly more beyond
linking the abstract idea to a technological environment. Id. at 10–11.
The U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
eligibility under 35 U.S.C. § 101. That guidance “extracts and synthesizes
key concepts identified by the courts as abstract ideas to explain that the
abstract idea exception includes” the following three groupings:
(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 PATENT SUBJECT
MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (the
“Revised Guidance”).
Under the Revised Guidance, in determining whether a claim is
patent-eligible, we first look to whether the claim recites a judicial
exception, including one of the enumerated groupings of abstract ideas
(“Step 2A, Prong One”). Id. at 54. If so, we next consider whether the
claim includes additional elements, beyond the judicial exception, “that
integrate the [judicial] exception into a practical application,” i.e., apply, rely
on, or use the judicial exception in a manner that imposes a meaningful limit
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on the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception. (“Step 2A, Prong Two”). 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 then look to
whether the claim “[a]dds a specific limitation or combination of
limitations” that is not “well-understood, routine, conventional activity in the
field” or simply “appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception” (“Step 2B”). Id. at 56.
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong One)
Here, Appellant’s Specification is titled “METHOD AND SYSTEM
FOR PERFORMING BEST PRACTICE ASSESSMENTS OF SAFETY
PROGRAMS,” and states that the disclosure relates “generally relates to
evaluation of safety programs implemented at business facilities, and more
particularly to a method and system for computer-assisted best practice
assessments of safety programs.” Spec. ¶ 1. The Background of the
Invention section of Appellant’s Specification describes an “interest of a
business entity to implement an effective safety program.” Id. ¶ 2. But,
“[h]aving a well-implemented and functional safety program is . . . not an
easy task.” Id. ¶ 3. For example, business management must consider
numerous related issues, such as enforcing compliance with governmental
rules, as well as allocation of resources and safety management. See id.
Often, businesses retain outside consultants to provide a safety program
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assessment that helps indicate whether the business entity complies with
various best practices for safety management. See id. ¶ 4.
During this best practice assessment, a reviewer typically visits a
client’s facility to discuss with pertinent personnel and review documents to
gather relevant information, and prepares a written report based on the
information collected from the site survey. Id. However, there is no
standardized algorithm for the analysis, and the report often has a narrative
description that makes it it is hard to tell from the report whether meaningful
improvements have been made since the previous review. Id. For example,
“[i]t is extremely difficult to compare . . . the safety performance of one
client with other clients or the industry as a whole” and “it is also difficult to
derive from the report a useful prediction of the losses the client might
expect in the future.” Id. To address these shortcomings, the claimed
invention performs best practice assessments for safety programs in a
manner that facilitates clear and easy comparison with past performance of
the client, with other clients, and with the industry as a whole. Id. ¶ 5.
Consistent with this disclosure, claim 1 recites a method for
monitoring a process on a data processing system by: (1) “operating . . . to
present a safety program performance assessment questionnaire having a
plurality of sections each having a plurality of questions, each section being
directed to one area of performance assessment of the safety program” (step
(a)); (2) “presenting . . . the safety program performance assessment
questionnaire” (step (b)); (3) “receiving . . . answers for respective questions
in the safety program performance assessment questionnaire, wherein the
step of receiving includes presenting . . . a set of possible answers for a
question for selection by a user, and wherein each one of said plurality of
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possible answers has a pre-defined score associated therewith” (step (c));
(4) “assigning . . . scores to the questions in the safety program performance
assessment questionnaire based on received answers for the respective
questions” (step (d)); (5) “applying . . . a pre-assigned question weight to the
score of each question, each pre-assigned question weight adapted to reflect
a degree of contribution the respective question provides to the safety
performance in the area of performance assessment of the section containing
said question” (step (e)); (6) “for each section, summing . . . weighted scores
for questions in each section to provide a section score” (step (f)); (7)
“normalizing . . . each section score on a scale in which a maximum score of
each section is a common value” (step (g)); (8) “applying . . . a pre-assigned
section weight to each normalized section score, each pre-assigned section
weight adapted to reflect a degree of contribution the respective section
provides to an overall performance of the safety program” (step (h));
“summing . . . the weighted section scores to provide an overall score” (step
(i)); and “performing . . . a statistical regression analysis to identify a
correlation between the overall score and a loss factor using a set of past
performance assessments and associated loss factor data” (step (j)). These
limitations, given their broadest reasonable interpretation, recite steps for
performing a safety program performance assessment. Although claim 1
recites that the steps are performed by an “application server” the underlying
steps recited in the claim are all acts that, could be performed by a human
mentally or manually, using pen and paper, without the use of a computer or
any other machine. For example, a person could present a safety program
performance assessment questionnaire, receive answers for the respective
answers in the questionnaire, and assign scores to the questions. The person
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could perform calculations in his or her head, or using pen and paper, to
apply a pre-assigned question weight to the score of each question, sum the
weighted scores for each section, normalize each section score, apply a pre-
assigned section weight to each normalized section score, sum the weighted
section score, and perform a statistical regression analysis to identify a
correlation between the overall score and a loss factor. Simply put, claim 1
recites a concept, including an observation, evaluation, or judgment, that can
be performed in the human mind, which is a mental process and, therefore,
an abstract idea. See Revised Guidance, 84 Fed. Reg. at 52. See also
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed.
Cir. 2011) (holding that method steps that can be performed in the human
mind, or by a human using a pen and paper, are unpatentable mental
processes). Claim 1 also recites mathematical relationships, formulas,
questions or calculations, which is a mathematical concept and, thus, an
abstract idea. See Revised Guidance, 84 Fed. Reg. at 52.
Step One of the Mayo/Alice Framework (Revised Guidance, Step 2A,
Prong Two)
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong One), we next consider whether the claim
recites “additional elements that integrate the judicial exception into a
practical application” (Step 2A, Prong Two).
Beyond the abstract idea, claim 1 recites an “application server” that
is “programmed” to present a safety program performance assessment
questionnaire, and an “electronic user interface.” Appellant argues that
claim 1 satisfies the machine-or-transformation test by requiring an
application server programmed to present the safety program performance
assessment program and perform the claimed steps. Appeal Br. 7 (“claim 1
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require[s] a particularly-programmed machine to perform the steps relating
to generating quantitative indicators for the performance assessment of the
safety program.”) Appellant also claims that these elements confine the
judicial exception to a particular useful application. Id. at 9.
However, we find no indication in the Specification, nor does
Appellant direct us to any indication, that the operations recited in claim 1
invoke any assertedly inventive programming, require any specialized
computer hardware or other inventive computer components, i.e., a
particular machine, or that the claimed invention is implemented using other
than generic computer components to perform generic computer functions
(e.g., “operating” (step (a)), sending data (step (b)), receiving data (step (c)),
and processing data (steps (d)–(j))). 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).
Appellant also asserts that claim 1 “provides a claimed solution that is
rooted in computer technology in order to satisfy persistent needs
specifically arising in the field of safety program assessments.” Appeal
Br. 8; see also id. at 9 (contending claim 1 advances the technology in
existence at the time of the invention by a new process.”) However, we are
not persuaded that claim 1 provides a technological improvement, as
opposed to an improvement in a process that is itself the abstract idea.
Appellant similarly asserts that the claimed approach “improves the
operation and use of the claimed ‘electronic user interface.’” Id. at 9.
However, Appellant does not identify how claim 1 purportedly improves the
operation and use of an electronic user interface. We see no indication that
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claim 1 requires more than using an electronic user interface in its ordinary
capacity to present and receive data.
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology and/or a technical field to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a “practical application,” as that phrase is used in the
Revised Guidance.2
We find nothing of record, that attributes an improvement in
technology and/or a technical field to the claimed invention or that otherwise
indicates that the claimed invention integrates the abstract idea into a
“practical application,” as that phrase is used in the Revised Guidance. See
Revised Guidance, 84 Fed. Reg. at 55. At best, the additional elements
recited in claim 1, considered individually and as an ordered combination,
do no more than implement the abstract idea using generic computer
components.
Accordingly, we are not persuaded that the Examiner erred in
determining that claim 1 is directed to an abstract idea.

2 The Revised Guidance references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h) in describing the
considerations that are indicative that an additional element or combination
of elements integrates the judicial exception, e.g., the abstract idea, into a
practical application. Revised Guidance, 84 Fed. Reg. at 55. If the recited
judicial exception is integrated into a practical application, as determined
under one or more of these MPEP sections, the claim is not “directed to” the
judicial exception.
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Step Two of the Mayo/Alice Framework (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
Revised Guidance, the second step of the Mayo/Alice framework, whether
claim 1 adds any additional element or combination of elements that
provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. Revised Guidance, 84 Fed. Reg.
at 56.
As described above, the only additional elements recited in claim 1
beyond the abstract idea is an “application server” that is “programmed,”
and an “electronic user interface.”
Appellant asserts that claim 1 recites “unconventional steps and
limitations that improve the operation and use of the claimed ‘electronic user
interface.’” Appeal Br. 9. Yet, claim 1 requires the electronic user interface
to “present” the questionnaire and “receive” answers for respective questions
in the questionnaire. But this element is described in the Specification at a
high level of generality, i.e., as a generic computer components used to
perform generic computer functions (e.g., receiving and processing data).
See, e.g., Spec. ¶¶ 17, 38. The Federal Circuit, in accordance with Alice, has
“repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
“merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality.”
Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J.,
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concurring) (citations omitted); see also BSG Tech. LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1291 (Fed. Cir. 2018) (“BSG Tech does not argue that other,
non-abstract features of the claimed inventions, alone or in combination, are
not well-understood, routine and conventional database structures and
activities. Accordingly, the district court did not err in determining that the
asserted claims lack an inventive concept.”).
Here, Appellant has not identified, and we do not find, any additional
elements recited in claim 1 that, individually or in combination, provide
significantly more than the abstract idea. Instead, the additional elements
are conventional) computer elements, arranged in a conventional manner, for
executing the abstract idea. We are not persuaded, on the present record,
that the Examiner erred in rejecting independent claim 1 under 35 U.S.C.
§ 101.
Appellant’s arguments regarding the remaining claims are similar to
those presented for independent claim 1. We are not persuaded that the
Examiner erred in rejecting these claims under 35 U.S.C. § 101 for the same
reasons described above with respect to claim 1.
Obviousness
We are persuaded by Appellant’s argument that the Examiner erred in
rejecting independent claims 1 and 12 under 35 U.S.C. § 103(a) because
Rodrigue does not teach or suggest “applying, by the application server, a
pre-assigned section weight to each normalized section score, each pre-
assigned section weight adapted to reflect a degree of contribution the
respective section provides to an overall performance of the safety program”
(limitation (h)), as recited in independent claim 1, and similarly recited in
independent claim 12. The Examiner finds that Rodrigue at paragraphs 29,
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36, 37, and claim 3 teaches limitation (h). Final Act. 15. However, we have
reviewed the portions of Rodrigue cited by the Examiner, and we agree with
Appellant that none of the cited passages discloses limitation (h), as recited
in claim 1.
Rodrigue relates to assisting businesses organize resources and
develop operations plans based on desired outcomes. Rodrigue ¶ 3. More
particularly, a business status indication and improvement planning system
is provided that enables manufacturers to obtain a quantifiable indication of
the state of the business, such as where weaknesses exist, time relationships
among business actions and events, and the business’ ability to target
improvements. Id. ¶ 28. Rodrigue’s method includes identifying one or
more groups of people having some association with the business. Id. ¶ 33.
The groups include business customers, business strategists, business
operations personnel, and business financial personnel. Id. Information
from members of the group is gathered in terms of identifiable and
measurable “outcomes.” Id. Outcomes are specific activities events,
actions, results or the like that may be of importance to any of the groups.
Id. There are 134 outcomes of importance for most groups of most
businesses. Id. ¶ 33.
Each outcome is associated with two parameters: importance and
satisfaction. Id. ¶ 35. For each listed outcome, each member of the groups
surveyed assigns a value (e.g., 1–5) for importance, and a value (e.g., 1–5)
for satisfaction. Id. The raw numbers of each group of people is normalized
with respect to that specific group to establish a single importance value and
a single satisfaction number for each outcome for the group. Id. An
opportunity score is determined for each outcome from its respective
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importance and satisfaction numbers, e.g., opportunity = importance +
(importance – satisfaction). Id. ¶ 37. Other formulas may be used to
calculate opportunity, such as one that “weight[s] satisfaction more heavily.”
Id. A reporting function provides a listing of the results of the survey in
order of business importance. Id. ¶ 29. The list preferably includes a
normalization of the results and the extent of the importance of each
outcome for each of the identified groups. Id.
Claim 1 of Rodrigue recites a method to enable a business to generate
a representation of operations status and identify operations to improve. The
method includes a step (c) for “normalizing the outcome rankings and
ratings values for each of the one or more outcomes for each of the one or
more groups.” Claim 3 of Rodrigue further recites a step of weighting the
normalized outcome rankings and ratings values as a function of the identity
of a particular group.
Thus, Rodrigue teaches calculating and normalizing (approximately
134) outcomes for each group. However, Rodrigue does not teach a section
score, where a section has a plurality of questions and is directed to an area
of performance assessment of the safety program, much less applying a pre-
assigned section weight to each normalized section score, as required by
limitation (h) of claim 1. At best, Rodrigue teaches weighting each of the
normalized outcomes for a particular group. But Rodrigue’s group is based
on the identity of the people taking the survey (e.g., customers, financial
personnel), and does not have a plurality of questions directed to an area of
performance assessment of the safety program, as recited in claim 1.
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In view of the foregoing, we do not sustain the Examiner’s rejection
of independent claims 1 and 12, and dependent claims 3–8, 10, 14–17, 19,
and 20 under 35 U.S.C. § 103.

CONCLUSION
In summary:
Claims
Rejected 35 U.S.C. §  Basis Affirmed Reversed
1, 3–8, 10–
12, 14–17,
19, 20
101  Eligibility
1, 3–8, 10–
12, 14–17,
19, 20

1, 3–8, 10–
12, 14–17,
19, 20
103  Nagan, Rodrigue, Schaf
1, 3–8,
10–12,
14–17, 19,
20
Overall Outcome 1, 3–8, 10–
12, 14–17,
19, 20

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED