Otman Basir

Patent Trials and Appeals Board

Dec 18, 2020

2020003988 (P.T.A.B. Dec. 18, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/598,254 10/30/2009 Otman A. Basir 60449-194 PUS1 8036
26096 7590 12/18/2020
CARLSON, GASKEY & OLDS, P.C.
400 WEST MAPLE ROAD
SUITE 350
BIRMINGHAM, MI 48009
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
12/18/2020 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):
cgolaw@yahoo.com
ptodocket@cgolaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte OTMAN A. BASIR
Appeal 2020-003988
Application 12/598,254
Technology Center 3600
Before MAHSHID D. SAADAT, JAMES R. HUGHES, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, 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 1, 5–8, 11–14, 16, 17, 20, 21, and 23.
See Final Act. 1. We have jurisdiction under 35 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. Appellant identifies the real party in interest as Appy Risk
Technologies Limited. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The invention, according to Appellant, generally relates to a recording
and reporting of driving characteristics with privacy protection. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A method of recording vehicle usage comprising the steps of:
a) sensing data indicative of at least one vehicle operation
characteristic, including sensing a location of the vehicle with a
GPS receiver;
b) generating at least one code with a processor based
upon the data wherein the at least one code is generated based
upon a comparison of the location of the vehicle to a geographic
risk code map in which a plurality of noncontiguous geographic
areas have a same risk code associated therewith, such that the at
least one code is generated based upon the risk code associated
with geographic area corresponding to the location of the
vehicle;
c) transmitting the at least one code to a server without
transmitting the location of the vehicle; and
d) determining an insurance cost based upon the at least
one code with the server without reference to the data.
Appeal Br. 9 (Appendix of Claims).
REJECTION
Claims 1, 5–8, 11–14, 16, 17, 20, 21, and 23 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to patent-
ineligible subject matter. Final Act. 2–11.
ANALYSIS
Appellant argues the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter is in error. To the extent
Appellant has not advanced separate, substantive arguments for particular
claims, or other issues, such arguments are waived. 37 C.F.R.
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§ 41.37(c)(1)(iv). Appellant argues claims 1, 5–8, 11–14, 16, 17, 20, 21, and
23 as a group. Appeal Br. 8. Given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1, 5–8, 11–14, 16,
17, 20, 21, and 23 based on representative claim 1.
Principles of Law
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 U.S. 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 Court’s two-part 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, 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, 67 (1972)). Concepts
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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 waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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
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 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 to limit the use of the
formula to a particular technological environment.” Id. (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.”).
If the claim is “directed to” an abstract idea, we turn to the second part
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 (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.
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(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.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.2, 3
Under MPEP § 2106, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).4
MPEP § 2106.04(a)) and § 2106.04(d).

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at Section 2106 (9th ed. Rev.
10.2019, rev. June 2020). All references to the MPEP are to the Ninth
Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise
indicated.
4 “Examiners evaluate integration into a practical application by: (1)
identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether” the claim as
a whole “integrates the exception into a practical application.” MPEP
§ 2106.04(d)II.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,5 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional activity” in the field; 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.6
MPEP § 2106.05(d).
Step 1
Claim 1, as a method claim, falls within the process category of § 101.
See 2019 Revised Guidance, 84 Fed. Reg. at 53–54 (citing MPEP
§§ 2106.03, 2106.06).
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 relates to a method for
recording usage of a vehicle for determining an insurance premium. Final
Act. 6. According to the Examiner, “[t]he practice of determining an
insurance premium based on location is a fundamental business practice
long prevalent in our system of commerce.” Id. at 7. Thus, the Examiner

5 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is not
directed to an abstract idea under part one of the Alice framework, “we do
not need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
6 This corresponds to Alice part two where it is determined whether the
claim “contains an ‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221
(citation omitted).
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determined that claim 1 recites an abstract fundamental economic practice.
Id.
The Examiner identified the recited steps (a)–(d) in claim 1, minus the
“GPS receiver” and “processor” elements, as part of the recited abstract idea
Ans. 5.
The Specification acknowledges that it is a normal practice to
calculate insurance premiums “based upon information gathered by in-
vehicle sensors that indicate where the vehicle was driven, how fast the
vehicle was driven, times of day and days of the week, etc.” Spec. ¶ 2.
Consistent with Appellant’s description of the claims (Spec. ¶¶ 1, 4), steps
(a)–(d) relate to adjusting vehicle insurance premiums based on location and
vehicle operation characteristics (i.e., risk), which is fairly characterized as a
fundamental economic practice, and which falls into the “certain methods of
organizing human activity” category of abstract ideas. See 84 Fed. Reg. at
52.
Appellant argues in a conclusory manner that the Examiner erred
because “[t]he category of ‘certain methods of organizing human activity’ is
limited to those that claim the method of organizing human activity itself.”
Appeal Br. 4. According to Appellant, “‘[d]etermining an insurance
premium’ is not abstract, while a contractual obligation to insure against a
risk would be.” Id.
We are not persuaded that the Examiner erred. The Supreme Court
has rejected an attempt to patent the basic concept of hedging risk. See
Bilski, 561 U.S. 593 (2010). Appellant has not persuaded us that determining
an insurance cost based on the risk associated with a geographic area
fundamentally differs from the abstract concept of hedging risk. Further,
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collecting and comparing information to determine risk—such as the sensing
and generating steps of claim 1 (above) (where the generating includes a
comparison)—is an abstract concept. See Classen Immunotherapies, Inc. v.
Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (collecting and comparing
known information to determine the risk of a disorder); PerkinElmer, Inc. v.
Interna Ltd., 496 Fed. App’x 65, 70 (Fed. Cir. 2012) (nonprecedential)
(“The claims thus recite the mental process of comparing data to determine a
risk level.”)
Moreover, the “generating” and “determining” steps are mental
processes because such tasks can be performed by the human mind or with
pen and paper. The 2019 Revised Guidance explains that “mental processes”
include acts that people can perform in their minds or using pen and paper,
even if the claim recites that a generic computer component performs the
acts. See 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”); see
also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”), quoted in
84 Fed. Reg. at 52 n.14.
Here, the “generating” and “determining” steps are recited at a high
level of generality and merely use computers as a tool to perform the
processes. Claim 1 recites no details as to how “the at least one code” is
generated “based upon a comparison of the location of the vehicle to a
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geographic risk code map in which a plurality of noncontiguous geographic
areas have a same risk code associated therewith.” Nor does claim 1 recite
details, such as an algorithm, for “determining an insurance cost based upon
the at least one code with the server without reference to the data.” Thus,
such tasks can be performed by the human mind or practicably with pen and
paper.
Because we agree with the Examiner that the claim recites an abstract
idea, we proceed to Prong Two of Step 2A to determine if the idea is
integrated into a practical application, in which case the claim as a whole
would not be “directed to” merely an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
Because we determined that claim 1 recites a patent-ineligible
concept, we next determine whether the recited judicial exception is
integrated into a practical application of that exception by: (a) identifying
whether there are any additional elements recited in the claim beyond the
judicial exception(s); and (b) evaluating those additional elements
individually and in combination to determine whether they integrate the
exception into a practical application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Revised Guidance at 55 n.24. In claim 1, the additional elements include the
limitations “GPS receiver” and “processor.” The “sensing” step amounts to
mere data gathering, which is insignificant extra-solution activity that is
insufficient to integrate the judicial exception into a practical application.
See, e.g., MPEP § 2106.05(g); OIP Techs., Inc., 788 F.3d at 1363 (collecting
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and analyzing data amounted to mere data gathering). Similarly, the
“transmitting” step is insignificant extra-solution activity.
To integrate the exception into a practical application, the additional
claim elements must, for example, improve the functioning of a computer or
any other technology or technical field (see MPEP § 2106.05(a)), apply the
judicial exception with a particular machine (see MPEP § 2106.05(b)), affect
a transformation or reduction of a particular article to a different state or
thing (see MPEP § 2106.05(c)), or apply or use the judicial exception in
some other meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment (see MPEP
§ 2106.05(e)). See 2019 Revised Guidance.
The Examiner determined that none of the additional limitations is
sufficient to integrate the fundamental economic practice into a practical
application because the additional computer elements do not limit the
judicial exception in a meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment. See Final
Act. 9–10.
Appellant argues, without providing persuasive argument or objective
evidence, that “[t]here is no ‘generic computer’ that can generate at least one
code on the vehicle, transmit that code to a server (or second location) and
determine an insurance cost on the server (or second location).” Appeal Br.
6. Appellant also argues that claim 1 is analogous to the claims in DDR
Holdings v. Hotels.com, 773 F.3d 1245, 1258–59 (Fed. Cir. 2014). Appeal
Br. 6; Reply Br. 3. According to Appellant, the “problem” in DDR “was not
in itself technical at all and neither was the solution.” Appeal Br. 6.
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We disagree. The Federal Circuit found the claims in DDR to be
patent-eligible under step one of the Alice test because “the claimed solution
is necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks.” DDR Holdings, 773
F.3d at 1257. Specifically, the Federal Circuit found the claims addressed
the “challenge of retaining control over the attention of the customer in the
context of the Internet.” Id. at 1258. We find the rejected claims are
dissimilar to DDR’s web page with an active link, and the Specification does
not support the view that the computer-related claim elements are not
generic. See Spec. ¶¶ 9–13, 25.
For the first time in the Reply Brief, Appellant argues that claim 1 is
similar to the claims in Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016). Reply Br. 2. Appellant,
however, has waived this argument because it was presented for the first
time in the Reply Brief, without a showing of good cause. See 37 C.F.R.
§ 41.41(b)(2) (2012); accord Ex parte Borden, 93 USPQ2d 1473, 1473–74
(BPAI 2010 (informative opinion) (“[T]he reply brief [is not] an opportunity
to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner's rejections, but were not.”).
Even if Appellant’s argument were timely, however, it is not
persuasive. In Bascom, the claims were directed to the inventive concept of
providing customizable Internet-content filtering which was found to
transform the abstract idea of filtering content into a patent-eligible
invention. Although the underlying idea of filtering Internet content was
deemed abstract, the claims carved out a specific location for the filtering
system, namely a remote Internet service provider (ISP) server, and required
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the filtering system to give users the ability to customize filtering for their
individual network accounts. We find no analogy between Appellant’s
claimed insurance premium determination claim and the claims in Bascom.
Appellant further argues that alleges claim 1 is patent-eligible because
its practice does not preempt practice by others. Appeal Br. 5. While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility, “[w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“that the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract”).
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in DDR and
Bascom. Claim 1 as a whole merely uses instructions to implement the
abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Here, the additional limitation(s) do not
integrate the judicial exception into a practical application. More
particularly, the claims do not recite (i) an improvement to the functionality
of a computer or other technology or technical field; (ii) a “particular
machine” to apply or use the judicial exception; (iii) a particular
transformation of an article to a different thing or state; or (iv) any other
meaningful limitation. See 84 Fed. Reg. at 55. Rather, claim 1 recites an
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abstract ideas as identified in Step 2A(i), supra, and none of the limitations
integrates the judicial exception into a practical application.
Therefore, because the abstract idea is not integrated into a practical
application, we conclude that the claim is directed to the judicial exception.
Step 2B — “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs of
Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). We look to see whether there are any “additional features” in the
claims that constitute an “inventive concept,” thereby rendering the claims
eligible for patenting even if they are directed to an abstract idea. Alice, 573
U.S. at 221. Those “additional features” must be more than “well-
understood, routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner determined that the additional elements in claim 1 do
not amount to significantly more than the recited judicial exception because
the function performed by the computer at each step of the process is purely
conventional. Final Act. 10.
Appellant argues that “[t]he Examiner has to show, not just that the
hardware is preexisting, but that the specific limitation and combination of
limitations are well-understood, routine, or conventional activity in the
field.” Appeal Br. 7. Appellant further argues summarily that “[c]learly it is
not ‘generic, routine, or conventional’ to calculate a code on the vehicle
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based upon location or driving behavior, transmit the code off the vehicle,
and use that code off the vehicle to determine an insurance cost.” Id. at 7–8.
We are not persuaded by Appellant’s arguments that the Examiner
erred. Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as receiving data,
comparing data, transmitting data, and determining cost data from other
data. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014) (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive”); In
re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 614 (Fed. Cir. 2016)
(server that receives data, extracts classification information from the
received data, and stores the digital images insufficient to add an inventive
concept); Alice, 573 U.S. at 225–26 (receiving, storing, sending information
over networks insufficient to add an inventive concept).
Because the Specification describes the additional elements in general
terms, without describing the particulars, we conclude the claim limitations
may be broadly but reasonably construed as reciting conventional computer
components and techniques, particularly in light of Appellant’s
Specification, as cited above. See Spec. ¶¶ 9–13, 25. We conclude claim 1
does not have an inventive concept because the claim, in essence, merely
recites various computer-based elements along with no more than mere
instructions to implement the identified abstract idea using the computer-
based elements.
Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner's § 101 rejection of independent
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claim 1 and grouped claims 5–8, 11–14, 16, 17, 20, 21 and 23, not argued
separately with particularity.
DECISION
We affirm the Examiner’s decision rejecting claims 1, 5–8, 11–14, 16,
17, 20, 21 and 23.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
1, 5–8, 11–14,
16, 17, 20, 21,
23
101 Eligibility 1, 5–8, 11–14,
16, 17, 20, 21,
23

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