Ryan Misch et al.Download PDFPatent Trials and Appeals BoardOct 9, 201913679168 - (D) (P.T.A.B. Oct. 9, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/679,168 11/16/2012 Ryan Misch SF-16091.106002 6389 164349 7590 10/09/2019 Faegre Baker Daniels/State Farm 300 N. Meridian Street Suite 2500 Indianapolis, IN 46204 EXAMINER KWONG, CHO YIU ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 10/09/2019 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): inteas@faegrebd.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte RYAN MISCH, TOM POTTER and JOE YOUNG ____________ Appeal 2018-008412 Application 13/679,168 Technology Center 3600 ____________ Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and STEVEN M. AMUNDSON, Administrative Patent Judges. SZPONDOWSKI, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1–3, 5–9, 11–15, 17, and 18, which constitute all of the claims pending in this application. 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 State Farm Mutual Automobile Insurance Company. Appeal Br. 2. Appeal 2018-008412 Application 13/679,168 2 STATEMENT OF THE CASE Appellant’s invention relates “generally to methods and systems for automating the insurance quotation process, and particularly to automatically generating quotation information from driver information.” Spec. 1. Claim 1, reproduced below, is representative of the claimed subject matter: 1. An insurance quotation automation system comprising: a quotation application including a data processing module for installation on a data capture device for enabling the user to communicate an image of a user data form; an application server for receiving the image of the user data form; a database configured to store a template user data form that identifies a location of customer data on the user data form, wherein the database is communicatively coupled to the application server; an optical character recognition (“OCR“) server communicatively coupled to the application server, the OCR server configured to: receive a first data set, the first data set related to the image of the user data form after the image has been subjected to a data integrity check by the data capture device, wherein the data integrity check comprises a check of whether the first user data form is appropriately aligned and if the first user data form is misaligned, the data processing module of the data capture device provides feedback to the user indicating improper alignment; and generate a second data set related to the image of the first user data form, the second data set resulting from an OCR process applied to the first data set, wherein the OCR process compares the image of the first user data form to the template user data form to locate customer data in the image of the first user data form; and Appeal 2018-008412 Application 13/679,168 3 the application server configured to: receive the second data set; verify that the second data set includes information necessary to complete an insurance quotation; apply a plurality of business rules to the second data set in order to generate the insurance quotation; and communicate the insurance quotation via the internet to the quotation application, wherein the insurance quotation activates the quotation application to cause the insurance quotation to display on the data capture device using the quotation application. REJECTIONS Claims 1–3, 5–9, 11–15, 17, and 18 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. Final Act. 2. Claims 1–3, 5, 7–9, 11, 13–15, and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Hanson et al. (US 2013/0066656 A1; published Mar. 14, 2013) (“Hanson”), Chapman et al. (US 2010/0331043 A1; published Dec. 30, 2010) (“Chapman”), and Quine et al. (US 2007/0058851 A1; published Mar. 15, 2007) (“Quine”). Final Act. 4. Claims 6, 12, and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Hanson, Chapman, Quine, and Moldovan (US 2009/0106052 A1; published Apr. 23, 2009). Final Act. 17. ANALYSIS Section 101 Rejection An invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. Appeal 2018-008412 Application 13/679,168 4 However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, 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 v. Kappos, 561 U.S. 593, 611 (2010)); 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 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). Appeal 2018-008412 Application 13/679,168 5 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 (internal 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. (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. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Memorandum”). Under that 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 MPEP § 2106.05(a)–(c), (e)–(h) (9th ed. rev. 08.2017, Jan. 2018)). See Memorandum, 84 Fed. Reg. at 52, 54–55. 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 Appeal 2018-008412 Application 13/679,168 6 (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 id. at 56. USPTO Memorandum, Step 2A, Prong 1 Under the first step of the Alice/Mayo framework, the Examiner concludes that the claims are “directed to collecting, extracting and analyzing user data to generate an insurance quote,” which is “an idea of itself similar to the concepts that have been identified as abstract by the courts, such as collecting information, analyzing it, and displaying certain results of the collection and analysis” and “data recognition and storage.” Final Act. 2–3 (citing Electric Power Grp., LLC v. Alstom, S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2017); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343 (Fed. Cir. 2014)); see Ans. 4. Appellant argues the “Examiner improperly partially characterizes the invention as merely generating an insurance quote.” Reply Br. 3. Instead, Appellant argues that “while the claims involve insurance quotation, the character of the claims is directed to obtaining verifiable data from properly aligned images.” Id. at 4. Specifically, Appellant contends that the claims “are not directed to an abstract idea,” and rather are “directed to a new and useful technique” for checking “whether the image is appropriately aligned.” Appeal Br. 6–7. We are not persuaded by Appellant’s arguments and agree with the Examiner that the claims recite a mental process. See Final Act. 2–3; 84 Fed. Reg. at 52. Appellant’s invention is titled “System and Method for Automating Insurance Quotation Processes.” Spec. 1. In the Specification, Appellant describes that “[i]nsurance companies use various types of Appeal 2018-008412 Application 13/679,168 7 customer information in order to generate a quotation for the cost of insurance services,” and that currently “[i]nformation collection is done as a manual or on the part of the insurance company.” Spec. 2. Appellant recognizes that “processes requiring manual data entry have several drawbacks, including increased time for the customer due to data collection, potential data integrity and/or accuracy issues, and delay in the customer obtaining a quotation.” Id. Accordingly, Appellant describes the need to “automat[e] an insurance quotation.” Id. at 3; see also id. at 1 (“[t]he present disclosure generally relates to methods and systems for automating the insurance quotation process, and particularly to automatically generating quotation information from driver information”). Appellant seeks to solve this problem by “receiving a first data set” that “relate[s] to the image of the user data form” after the image has been subjected to a data integrity check, “generating a second data set” from the first data set, and applying “business rules to the second data set in order to generate an insurance quotation.” Id. at 3. For example, claim 1 recites a system performing a method comprising: receive a first data set, the first data set related to the image of the user data form after the image has been subjected to a data integrity check . . . wherein the data integrity check comprises a check of whether the first user data form is appropriately aligned and if the first user data form is misaligned, . . . provid[ing] feedback to the user indicating improper alignment; and generate a second data set related to the image of the first user data form, the second data set resulting from an OCR process applied to the first data set, wherein the OCR process compares the image of the first user data form to the template user data form to locate customer data in the image of the first user data form; and Appeal 2018-008412 Application 13/679,168 8 . . . receive the second data set; verify that the second data set includes information necessary to complete an insurance quotation; apply a plurality of business rules to the second data set in order to generate the insurance quotation; and communicate the insurance quotation . . . wherein the insurance quotation activates the quotation application to cause the insurance quotation to display . . . using the quotation application. Appeal Br. 15–16 (Claims App.) (emphasis added). Claim 7 recites similar limitations in a “system comprising . . . a data capture device . . . a database . . . a processor.” Appeal Br. 17 (Claims App.). Claim 13, likewise, recites a “method” claim with similar limitations. Appeal Br. 19 (Claims Appendix). Appellant has not persuasively argued why the claim limitations italicized above cannot be practically performed by a human, either mentally, manually, or with the use of pen and paper. See, e.g. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Can. (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012). For example, a person can manually receive a set of data (e.g., a printout of a driver’s license) and provide manual feedback to a user if the data is misaligned (e.g., tell or otherwise communicate to the user that the data is misaligned), generate a second set of data relating to the image of the first user data form that compares the image of the first user data form to a template user data form to locate the customer data (e.g., compare the information in the printout of the driver’s Appeal 2018-008412 Application 13/679,168 9 license to a template in order to locate the user data, such as the address, date of birth, or gender), manually receive that second set of data (e.g., the address, date of birth, or gender), verify that the second data includes the information necessary to complete an insurance application (e.g., compare the second set of data to the data necessary to complete the insurance application), apply a plurality of business rules to the second data set in order to generate the insurance quotation (e.g., manually generate an insurance quotation based on business rules), and communicate and display the insurance quotation (e.g., manually send or provide the insurance quotation to the user). As stated in the Specification, Appellant seeks to automate a manual process, which is insufficient to render the claim patent eligible. See Spec. 3 (“[a] system [and] method for automating an insurance quotation are disclosed”); Spec. 2 (“[t]ypically, this information collection is done as a manual or on the part of the insurance company,” including “the customer may call an insurance agent to report the required data or may enter the required data into a form on a website”); Spec. 6 (“Customer 102 may take a picture of customer data form 106 and then transmit data related to that image to insurer 110”); see, e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible”). Moreover, the recitation of certain computer components in the claims (e.g. “data capture device,” “processor,” “application server,” “database,” “optical character recognition (‘OCR’) server”) does not impose sufficiently meaningful limitations on claim scope beyond these mental Appeal 2018-008412 Application 13/679,168 10 steps. Intellectual Ventures, 838 F.3d at 1318; Bancorp, 687 F.3d at 1278– 79. Accordingly, we conclude claims 1, 7, and 13 recite a mental process as identified in the Memorandum, and thus an abstract idea. USPTO Memorandum, Step 2A, Prong 2 In determining whether claim 1 is “directed to” the identified abstract idea, we next consider whether the claims recite additional elements that integrate the judicial exception into a practical application. For the reasons set forth below, we discern no additional element (or combination of elements) recited in claim 1 that integrates the judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54–55. Appellant argues that the claims “‘improve[] the existing technological process’ by allowing the automation of further tasks,” similar to the claims in McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal Br. 8–9. Specifically, Appellant argues that the claimed invention provides the “technical advantage . . . that correct data may be collected and transmitted simply and hassle-free for the customer” so that “the customer stays engaged in the insurance quote process long enough to receive a quote without giving up on the process mid-stream.” Appeal Br. 11; see Reply Br. 9. Appellant argues “the template and alignment rules are embodied in computer software that is processed by [a] general purpose computer” and “the humans (bank tellers) did not previously employ the type of rules and templates required by the claims.” Reply Br. 9–10. Appellant also argues that the claimed invention is similar to that in Trading Technologies International, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017), and “imparts a specific functionality, Appeal 2018-008412 Application 13/679,168 11 i.e., properly aligned images for data collection, to a quotation system ‘directed to a specific implementation of a solution to a problem in the software arts.’” Reply Br. 5. We are not persuaded by Appellant’s arguments and agree with the Examiner’s findings and conclusions. See Ans. 4–8; Final Act. 2–3. Appellant has not sufficiently shown that the claims are directed to an improvement to the computer system or technological process. Rather, we agree with the Examiner that the claimed invention is simply “the mere automation of a manual task that a human teller informing a customer that a submitted image is misaligned,” with the only difference being “merely that the alignment check and the feedback are performed by an OCR server, which is analogous to a human teller or clerk in terms of the extracting of data.” Ans. 5–6; see Final Act. 3. As the Examiner properly reasons, the “alleged advantage is not an improvement over another technology or the functionality of the computer itself as the claim recites no more than the use of technological elements, such as data capturing device, OCR server, etc.” Ans. 7. The Examiner finds, and we agree, that the “claimed invention at best provides improvement to the abstract idea of collecting data by ensuring the correctness of data, similar to the improvement resulting from a bank teller manually verifying completeness of form.” Id. Appellant characterizes the claims as “enabl[ing] a customer to enter data in a manner that is so easy and hassle-free” and providing a technical advantage in that “correct data may be collected and transmitted simply and hassle-free for the customer,” because the data is collected from an image rather than inputted manually or verbally, and the system ensures the image is correctly aligned. Appeal Br. 9, 11; see Reply Br. 9. However, Appellant Appeal 2018-008412 Application 13/679,168 12 has not shown that the data integrity check for proper alignment changes the manner in which the computer operates or changes the functionality of the computer itself. For example, the fact that the computer program may automatically check to make sure the data is properly aligned merely automates what a human being would do upon visually looking at the data. Moreover, Appellant does not direct our attention to any disclosure in the Specification that indicates the claimed computer components used to perform the limitations in the claim, such as the “data capture device,” “processor,” “application server,” “database,” and “optical character recognition (‘OCR’) server” are anything other than generic computer components. For example, the Specification describes that the data integrity check may be performed by the data capture device 104 and/or through data processing module 116. Spec. 6, 8. The data capture device is generically described as an electronic device, such as a cellular telephone, and the data processing module 116 “may be any hardware, software, firmware, and/or any combination thereof configured to process data captured by data capture component 112 of data capture device 104.” Spec. 5–6. Simply implementing an abstract idea using conventional machines or devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a mathematical principle on a physical machine” does not suffice for patent eligibility (citing Gottschalk v. Benson, 409 U.S. 63, 64–65, 71 (1972))). We are also not persuaded the claims here are similar to those in McRO or Trading Technologies. In McRO, the claims recited a “specific . . . improvement in computer animation” using “unconventional rules” that related “sub-sequences of phonemes, timings, and morph weight sets” to Appeal 2018-008412 Application 13/679,168 13 automatically animate lip synchronization and facial expressions for three- dimensional characters that only human animators could previously produce. McRO, 837 F.3d at 1302–03, 1307–08, 1313–15. There, the recited process automatically animated characters using particular information and techniques, which was an improvement over manual 3-D animation techniques and, therefore, not abstract. Id. at 1316. Unlike the claims in McRO that improved how the physical display operated to produce better quality images, the claimed invention here merely uses generic computer components to receive, analyze, and communicate data with no improved display mechanism. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167–68 (Fed. Cir. 2018) (distinguishing McRO). Moreover, the determination that the claims in McRO were patent eligible was not merely based on the incorporation of a claimed rule, but rather, on the fact that the claims, when considered as a whole, were directed to a “technological improvement over the existing, manual 3-D automation techniques and used the limited rules in a process specifically designed to achieve an improved technological result in conventional industry practice.” 837 F.3d at 1316. We are not persuaded that a comparable situation is presented here. Likewise, Trading Technologies does not lead us to finding that the claims integrate the abstract idea into a practical application. In Trading Technologies, the claims were “directed to a specific improvement in the way computers operate” because “the claimed graphical user interface method impart[ed] a specific functionality to a trading system ‘directed to a specific implementation of a solution to a problem in the software arts.’” Trading Techs., 675 F. App’x at 1006. There, the claims recited a graphical user interface that improved upon a prior graphical user interface. In that Appeal 2018-008412 Application 13/679,168 14 way, the claims were more similar to those in McRO, in that they were directed to a technical improvement. By contrast, the claims here do not appear to fall under this category of cases because the computer system is merely used to automate a method for receiving and analyzing data in order to generate an insurance quote. However, as discussed above, relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible. See Alice, 573 U.S. at 224 (“use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept); Bancorp, 687 F.3d at 1278 (a computer “employed only for its most basic function . . . does not impose meaningful limits on the scope of those claims”); MPEP § 2106.05(f)(2) (“Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more.”); OIP Techs., 788 F.3d at 1363. Moreover, the “mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.” Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Appellant further contends that the claims “are not directed to an abstract idea” because they are similar to the claims in Thales Visionix, Inc. v. U.S., 850 F.3d 1343 (Fed. Cir. 2017), and are “directed to a new and useful technique” for checking “whether the image is appropriately aligned.” Appeal Br. 6–7. Appeal 2018-008412 Application 13/679,168 15 We are not persuaded. In Thales, the patent at issue disclosed “an inertial tracking system for tracking the motion of an object relative to a moving reference frame.” Thales, 850 F.3d at 1344. The Federal Circuit determined that the claims satisfied § 101 under Mayo/Alice step one because they were directed to using “inertial sensors in a non-conventional manner to reduce errors in measuring the relative position and orientation of a moving object on a moving reference frame.” Id. at 1348–49. Unlike the claims in Thales, the claims here do not require any sensors. Appeal Br. 15– 16, 17, 19; see Ans. 6–7; Final Act. 3. Nor do they specify a non-conventional manner for arranging conventional components. For example, as the Examiner correctly determines, the claimed “[e]lectronically scanning or extracting data from a physical document (OCR) and transmitting data over a network are both well-known, routine and conventional activit[ies].” Ans. 6–7. Appellant also analogizes the claims here to the claims in Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011). Reply Br. 6–8. Appellant argues the claims here, like those in Classen, “are directed to a specific system for obtaining verifiable data from properly aligned images” and identify two groups of information: aligned images and misaligned images. Reply Br. 8. The claims here are unlike the claims in Classen. In Classen, the Court held that although the analysis step was an abstract mental process that collected and compared known information, the immunization step was meaningful in that it integrated the results of the analysis into a specific and tangible method that resulted in the method “moving from the abstract scientific principle to the specific application.” 659 F.3d at 1066–68. Appeal 2018-008412 Application 13/679,168 16 Appellant compares the immunization step in Classen to the recited step “apply[ing] a plurality of business rules to the second data set in order to generate the insurance quotation,” (Reply Br. 7). We are not persuaded that these steps are comparable; rather, the recited step seems more akin to the collecting and comparing known information steps in Classen. As discussed above, the recited step may be practically performed by a human being, and Appellant has not sufficiently explained how it is comparable to the immunization step in Classen. Accordingly, for the foregoing reasons, the claims fail to integrate the abstract mental process into a practical application. USPTO Memorandum, Step 2B Turning to step 2 of the Alice/Mayo framework, we look to whether the claims (a) add a specific limitation or combination of limitations that are not well-understood, routine, conventional activity in the field, or (b) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Memorandum, 84 Fed. Reg. at 56. Appellant argues the claimed “data processing module of the data capture device provides feedback to the user indicating improper alignment” is not a well-understood, routine, or conventional activity because, “in prior art methods, there is no reason to inform a customer to align an image, because the data is not collected from an image.” Appeal Br. 10; see Appeal Br. 11. Appellant’s argument is not persuasive because it improperly conflates the requirements for eligible subject matter (§ 101) with the independent requirements of novelty (§ 102) and nonobviousness (§ 103). Appeal 2018-008412 Application 13/679,168 17 Although the second step in the Alice framework is termed a search for an “inventive concept,” the analysis is not an evaluation of novelty or non- obviousness. Alice, 573 U.S. at 217–18. A novel and nonobvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 78–79. Further, “under the Mayo/Alice framework, a claim directed to a newly discovered law of nature (or natural phenomenon or abstract idea) cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility.” Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016). Consistent with the Examiner’s findings (see Final Act. 3, Ans. 6) and as discussed above, the Specification describes the claimed computer-system components generically and evidences their conventional nature. See, e.g., Spec. 5–6, 8, 10. As an example, the Specification describes a “data capture device” may “be any electronic device configured to capture customer data from [a] customer data form,” including “a personal computer, tablet computer, cellular telephone, or any other suitable device.” Id. at 5. The data capture device “may be a cellular telephone with an integrated digital camera” or “a digital camera (for capturing an image) that may be plugged into a laptop computer (for transmission of the image).” Id. As another example, a “server” (e.g., “application server,” “optical character recognition (‘OCR’) server”) “may be any hardware, software, firmware, and/or any combination thereof configured to provide server-related functionality.” Id. at 10. Appellant has not directed our attention to anything in the Specification that indicates the computer components perform anything other than well-understood, routine, and conventional functions, such as Appeal 2018-008412 Application 13/679,168 18 receiving, processing, and transmitting data. See Electric Power, 830 F.3d at 1355 (“Nothing in the claims, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information”); 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, and sending information over networks insufficient to add an inventive concept). Given the claimed generic computer-system components that perform generic computer functions, we conclude that the combination of limitations in each independent claim does not supply an “inventive concept” that renders the claim “significantly more” than an abstract idea. Thus, each claim does not satisfy § 101 under Mayo/Alice step two. For at least the above reasons, we sustain the Examiner’s rejection of claim 1 as being directed to patent-ineligible subject matter, as well as independent claims 7 and 13 with commensurate limitations, and dependent claims 2, 3, 5, 6, 8, 9, 11, 12, 14, 15, 17, and 18, which were not separately argued. Section 103 Rejections Issue: Did the Examiner err in finding that the combination of Hanson, Chapman, and Quine teaches or suggests “the data integrity check Appeal 2018-008412 Application 13/679,168 19 comprises a check of whether the first user data form is appropriately aligned and if the first user data form is misaligned, the data processing module of the data capture device provides feedback to the user indicating improper alignment,” as recited in independent claim 1 and commensurately recited in independent claims 7 and 13? Appellant argues “Quine does not have anything to do with misalignment” and does not teach that “the data integrity check comprises a check of whether a check image is appropriately aligned.” Appeal Br. 12 (citing Quine ¶ 24); see Reply Br. 10. Specifically, Appellant argues “Quine teaches that the bank customer, who is scanning the checks, must detect a check misalignment” and that “the bank customer must perform the data integrity check,” rather than the “data processing module of the data capture device provides feedback to the user indicating improper alignment.” Reply Br. 10–11 (citing Quine ¶ 49). We are not persuaded by Appellant’s arguments. Rather, we agree with the Examiner’s finding that Quine teaches a data integrity check to check whether a check image is appropriately aligned, and providing feedback to the user indicating improper alignment. Final Act. 7 (citing Quine ¶¶ 25–26, 44, 49). Specifically, we agree with the Examiner’s findings that Quine’s “paper check is functionally equivalent to the claimed ‘user data form,’” as “both are objects to be scanned”; and that Quine’s “resubmission mode” that “is prompted for misalignment of the check during scanning” requires an “examination of the misalignment of the check” and “teaches a data integrity check comprises a check of whether the first user data form is appropriately aligned.” Ans. 8. Appeal 2018-008412 Application 13/679,168 20 For example, Quine discloses that “the computer 102 examines the check image to determine whether the quality of the image is acceptable, since errors in scanning or transmission may in some cases result in disruption in the image data.” Quine ¶ 44. After that, “[i]f the image is not satisfactory, then the computer 102 . . . sends a message to the check scanning device (or to the bank customer by another channel) requesting that the check be re-scanned so that the check image is resubmitted to the computer 102.” Id. In other words, Quine teaches the computer examining if the image scanning is acceptable, and providing feedback when it is not. Quine explicitly teaches to allow for remediation of “misalignment of the check during scanning.” Id. at ¶ 49. Thus, we agree with the Examiner’s finding that Quine’s image quality check, and subsequent sending of a message to the bank customer requesting a re-scanning of the image when the quality is not acceptable, teaches “the data integrity check comprises a check of whether the first user data form is appropriately aligned and if the first user data form is misaligned, the data processing module of the data capture device provides feedback to the user indicating improper alignment,” as recited by claim 1. For at least the above reasons we sustain the Examiner’s § 103 rejection of independent claims 1, 7, and 13. For the same reasons, we sustain the Examiner’s § 103 rejections of dependent claims 2, 3, 5, 6, 8, 9, 11, 12, 14, 15, 17, and 18, not argued separately. See Reply Br. 11. CONCLUSION We affirm the Examiner’s rejection of claims 1–3, 5–9, 11–15, 17, and 18 under 35 U.S.C. § 101. Appeal 2018-008412 Application 13/679,168 21 We affirm the Examiner’s rejections of claims 1–3, 5–9, 11–15, 17, and 18 under 35 U.S.C. § 103. DECISION SUMMARY In summary: Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1–3, 5–9, 11–15, 17, 18 101 Eligibility 1–3, 5–9, 11–15, 17, 18 1–3, 5, 7–9, 11, 13–15, 17 103 Hanson, Chapman, Quine 1–3, 5, 7–9, 11, 13–15, 17 6, 12, 18 103 Hanson, Chapman, Quine, Moldovan 6, 12, 18 Overall Outcome 1–3, 5–9, 11–15, 17, 18 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)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED Copy with citationCopy as parenthetical citation