Ex Parte Berger et al

Patent Trial and Appeal Board

Nov 26, 2018

14133894 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/133,894 12/19/2013 Lee M. Berger
101600 7590 11/28/2018
MH2 TECHNOLOGY LAW GROUP LLP (TRAVELERS)
MH2 TECHNOLOGY LAW GROUP, LLP
1951 KIDWELL DRIVE
SUITE 310
VIENNA, VA 22182
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0137.0004 2544
EXAMINER
SHARVIN, DAVID P
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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):
docketing@mh2law.com
bripple@travelers.com
docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LEE M. BERGER, EULAH SHEFFIELD,
and JAMES J. GAUTHIER JR.
Appeal2017-008974
Application 14/133,894 1
Technology Center 3600
Before JOHN A. EV ANS, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-7, 9-13, and 15-18.2 We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.
INVENTION
The invention is directed to altering content experienced by each user
of an automated insurance quotation system in order to create a consultative
interaction with the user and to define an insurance product that fits the
1 According to Appellants, The Travelers Indemnity Company is the real
party in interest. App. Br. 2.
2 The listing of claims filed on May, 10, 2016 indicate that claims 8 and 14
are canceled.
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Application 14/133,894
user's desires and requirements. Abstract. Claim 1 is illustrative of the
invention and is reproduced below:
1. A consultative insurance system for consultative
insurance quoting, the system comprising:
a display;
a memory containing instructions; and
a processor, operably connected to the memory, that
executes the instructions for a coverage comparison engine that
performs operations comprising:
providing, to a user, first content related to an insurance
product;
receiving, from the user, first information responsive to
the first content;
determining, based on the first information from the user
responsive to the first content, second content related to the
insurance product, wherein the second content comprises query-
related content and consultative content;
providing, to the user, the second content related to the
insurance product;
receiving, from the user, second information responsive to
the second content;
generating a quote for the insurance product that is
customized according to at least one of the first information and
the second information;
determining a set of insurance-product coverages for the
user that correspond to the quote;
determining insurance-product coverages previously
purchased by one or more customers having characteristics
substantially the same as characteristics of the user;
comparing the set of insurance-product coverages for the
user to the insurance-product coverages previously purchased by
the one or more customers;
determining a coverage comparison indicator indicating a
difference or a similarity between the insurance-product
coverages previously purchased by the one or more customers
and the set of insurance-product coverages for the user;
providing the quote and the coverage comparison indicator
to the user via the display;
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modifying the set of insurance-product coverages for the
user based on choices received from the user after providing the
coverage comparison indicator to the user;
generating a second quote based on the modified the set of
insurance-product coverages;
comparing the modified set of insurance-product
coverages for the user to the insurance-product coverages
previously purchased by the one or more customers;
determining a second coverage comparison indicator
comparing the insurance-product coverages previously
purchased by the one or more customers to the modified set of
insurance-product coverages for the user; and
providing the second quote and the second coverage
comparison indicator to the user via the display.
REJECTION AT ISSUE3
Claims 1-7, 9-13, and 15-18 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more. Final Act.
2---6.
We have only considered those arguments that Appellants actually
raised in the Briefs. Arguments Appellants could have made, but chose not
3 The Examiner states claims 1-18 are rejected, while also stating claims 8
and 14 are canceled. Compare Final Act. 2 ("Status of Claims"), with id.
("Claim Rejections - 35 USC § 101 "), with App. Br. 6, n.1. As the listing of
claims filed on May, 10, 2016 indicate, claims 8 and 14 are canceled. We,
therefore, construe this as a typographical error and interpret claims 1-7, 9-
13, and 15-18 as rejected under 35 U.S.C. § 101.
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to make, in the Briefs have not been considered and are deemed to be
waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
ANALYSIS
35 u.s.c. § 132
The Examiner concludes the present claims are directed to an abstract
idea of generating an insurance quote and the present claims are analogous
to those in Electric Power Grp, LLC v. Alstom S.A., 830 F. 3d 1350 (Fed.
Cir, 2016). Final Act. 4; Ans. 3. In particular, the Examiner maps claim
elements to abstract concepts and concludes the claims recite abstract ideas
using a generic computer to implement the abstract idea. Final Act. 3--4;
Ans. 3-5. Furthermore, the Examiner concludes these computer functions
are well-understood, routine, and conventional activities that do not purport
to improve the functioning of the computer itself or improve any other
technology or technical field. Final Act 5. The Examiner concludes the
generic computer does not transform the abstract idea into a patent-eligible
invention. Id.
Appellants argue the Examiner fails to establish a prima facie case of
unpatentability under 35 U.S.C. § 101 because the Examiner over
generalizes the claim by ignoring limitations. App. Br. 9-11; Reply Br. 2--4.
We disagree with Appellants.
We conclude that the rejection satisfies the requirements of 35 U.S.C.
§ 132 because it notifies the applicant of the reasons for rejection, together
with such information "as may be useful in judging of the propriety of
continuing the prosecution of [the] application." See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011). Accordingly, the Examiner has carried the
procedural burden of establishing a prima facie case.
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Application 14/133,894
35 u.s.c. § 101
The Examiner concludes, and we agree, that the claims are directed to
one of the four statutory classes. Final Act. 3.
Moreover, the Examiner concludes the present claims are directed to
an abstract idea of generating an insurance quote and the present claims are
analogous to Electric Power Grp. Id. at 4; Ans. 3. The Examiner concludes
the claims use a generic computer to implement the abstract idea. Id. The
Examiner finds these computer functions are well-understood, routine, and
conventional activities that do not purport to improve the functioning of the
computer itself or improve any other technology or technical field. Id. at 5.
The Examiner concludes the generic computer does not transform the
abstract idea into a patent-eligible invention. Id.
Appellants argue the present claims are directed to a specific and
unique improvement to the "consultative insurance system" to interact with
users by providing dynamic human-computer interface that tailors the
information provided to each particular user. App. Br. 12-14 (citing Spec.
i15); Reply Br. 5.
Appellants argue, under the machine-or-transformation test, the
present claims do not have a 35 U.S.C. § 101 problem. App. Br. 14, 17;
Reply Br. 9-10. Appellants argue the physical components recited in the
present claims are not well-understood, routine, and conventional because
they are directed to a "consultative insurance system" using a new "coverage
comparison indicator" display technology. App. Br. 14--15; Reply Br. 9.
Appellants argue the present claims are significantly more than an abstract
idea because the Examiner ignores limitations and the specific order of the
limitations. App. Br. 11-12, 15-16; Reply Br. 6-7, 11-12. Appellants
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argue the present claims are directed to meaningful limitations beyond a
generic computer implementing an abstract idea by reciting the "consultative
insurance system" to provide a "coverage comparison indicator." App. Br.
16. And Appellants argue the present claims improves upon "invariant
computerized insurance quotation systems." App. Br. 16-17 (citing Spec.
,r 5). We disagree with Appellants.
Following the decision in Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134
S. Ct. 2347 (2014), (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66, 82-84 (2012)), we analyze claims where the
abstract idea judicial exception to the categories of statutory subject matter is
at issue using the following two-part analysis set forth in Mayo:
1) Determine whether the claim is directed to an abstract idea; and 2) if an
abstract idea is present in the claim, determine whether any element, or
combination of elements, in the claim is sufficient to ensure that the claim
amounts to significantly more than the abstract idea itself. See Alice, 134 S.
Ct. at 2350.
As to the first part of the analysis, examples of abstract ideas
referenced in Alice include: fundamental economic practices4; certain
methods of organizing human activities5; "[a]n idea ofitself'6; and,
4 Alice Corp., 134 S. Ct. at 2350: e.g., intermediated settlement, i.e., the use
of a third party intermediary to mitigate settlement risk.
5 Id. at 2356: e.g., a series of steps instructing how to hedge risk ( citing
Bilski, 561 U.S. at 599).
6 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk
v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175
(1852)).
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mathematical relationships or formulas. 7 Claims that include abstract ideas
like these are examined under the second part of the analysis to determine
whether the abstract idea has been applied in an eligible manner.
As to the second part of the analysis, we consider the claim as a whole
by considering all claim elements, both individually and in combination. Id.
at 2355. Limitations referenced in Alice that may be enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: Improvements to another
technology or technical field8; improvements to the functioning of the
computer itself9; and meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment. 10
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words "apply it" (or an
equivalent) with an abstract idea 11; mere instructions to implement an
abstract idea on a computer12; or requiring no more than a generic computer
7 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a
catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95
(1978)), or a formula for converting binary-coded decimal numerals into
pure binary form (Benson, 409 U.S. at 71-72).
8 Id. at 2358: e.g., a mathematical formula applied in a specific rubber
molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)).
9 Id. at 2359.
10 Id. at 2360: noting that none of the hardware recited "offers a meaningful
limitation beyond generally linking 'the use of the [method] to a particular
technological environment,' that is, implementation via computers" ( citing
Bilski, 561 U.S. at 610-11).
11 Id. at 2357-58.
12 Id.: e.g., simply implementing a mathematical principle on a physical
machine, namely a computer ( citing Mayo, 566 U.S. at 84--85).
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to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 13
If there are no meaningful limitations in the claim that transform the
abstract idea into a patent eligible application such that the claim amounts to
significantly more than the abstract idea itself, the claim is directed to non-
statutory subject matter under 35 U.S.C. § 101.
The Federal Circuit held "merely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes, whose implicit
exclusion from § 101 undergirds the information-based category of abstract
ideas." Elec. Power, 830 F.3d at 1355. In addition, "merely presenting the
results of abstract processes of collecting and analyzing information, without
more (such as identifying a particular tool for presentation), is abstract as an
ancillary part of such collection and analysis." Id. at 1354. The Federal
Circuit further stated:
[ t ]he claims in this case do not even require a new source or type
of information, or new techniques for analyzing it. ... As a result,
they do not require an arguably inventive set of components or
methods, such as measurement devices or techniques, that would
generate new data. They do not invoke any assertedly inventive
programming. Merely requiring the selection and manipulation
of information-to provide a "humanly comprehensible" amount
of information useful for users ... by itself does not transform
the otherwise-abstract processes of information collection and
analysis.
Id. at 1355 (internal citations omitted).
13 Id. at 2359: e.g., using a computer to obtain data, adjust account balances,
and issue automated instructions.
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Alice Step 1
On this record, we see no error in the Examiner's analysis and
conclusion that the present claims are directed to an abstract idea. Non-Final
Act. 4; Ans. 3. In particular, we disagree with Appellants' argument that the
Examiner ignored limitations (App. Br. 9--11; Reply Br. 2--4) and we agree
with the conclusion that the present claims are similar to the claims in
Electric Power because the present claims are directed to collecting
information, analyzing it, and displaying certain results of the collection and
analysis (Ans. 3).
We also disagree with Appellants' argument that the present claims
are directed to a specific and unique improvement to the "consultative
insurance system" to interact with users by providing dynamic human-
computer interface that tailors the information provided to each particular
user (App. Br. 12-14 (citing Spec. ,r 5); Reply Br. 5) because the present
claims do not improve the underlying technology; rather, the present claims
are directed to an improved abstraction that happen to use computer tools in
a nominal manner.
In addition, the present claims are similar to the abstract idea of
fundamental economic practices in OIP Technologies, Inc. v. Amazon.com,
Inc., 788 F.3d 1359 (Fed. Cir. 2015). In OIP Technologies, the Federal
Circuit held that claims directed to offer based price optimization are
abstract. 788 F.3d at 1363. In the present case, the claims are directed to
presenting price quotes of insurance coverage.
Additionally, we note that automating a mental process and making
trades does not make the claims patent eligible. Bancorp Servs., LLC v. Sun
Life Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012) ("Using a
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computer to accelerate an ineligible mental process does not make that
process patent-eligible.").
Because the present claims are directed to an abstract idea, we
proceed to step (2) of the Alice, two-part test.
Alice Step 2
On this record, we see no error in the Examiner's analysis and
conclusion that the present claims are directed to significantly more than the
abstract idea. Final Act. 4. In particular, we disagree with Appellants'
argument that the physical components recited in the present claims are not
well-understood, routine, and conventional because they are directed to a
"consultative insurance system" using a new "coverage comparison
indicator" display technology that are meaningful beyond a generic
computer implementing an abstract idea (App. Br. 14--16; Reply Br. 9);
rather, we agree with the Examiner's findings that the present claims use
generic components that operate using well-understood, routine, and
conventional functions (Final Act. 5). 14
We also disagree with Appellants' arguments that the Examiner
ignores limitations and the specific order of the limitations that render the
claims as significantly more than an abstract idea (App. Br. 11-12, 15-16;
14 The Specification states, "[i]t will be readily apparent that the various
methods and algorithms described herein may be implemented by, e.g.,
appropriately and/or specially-programmed general purpose computers
and/or computing devices" (emphases added). Spec. ,r 115. And the
Specification states "[a] 'processor' generally means any one or more
microprocessors, CPU devices, computing devices, microcontrollers,
digital signal processors, or like devices" ( emphases added). Id. ,r 116. We,
therefore, conclude the Specification recites generic elements that are well-
understood, routine, and conventional. Alice at 2359.
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Reply Br. 6-7, 11-12) because the present claims are analogous to the
claims in Electric Power. As discussed supra in the Alice, step 1 analysis,
the present claims are directed to an abstract idea similar to the abstract idea
in Electric Power. Furthermore, in Electric Power, the Federal Circuit
stated
Merely reqmnng the selection and manipulation of
information-to provide a "humanly comprehensible" amount of
information useful for users . . . by itself does not transform the
otherwise-abstract processes of information collection and
analysis
Id. at 1355 (internal citations omitted).
We also disagree with Appellants' argument that the present claims
improve upon "invariant computerized insurance quotation systems" (App.
Br. 16-17 ( citing Spec. ,r 5)) because the present claims do not improve the
underlying technology; rather, the present claims are directed to an improved
abstraction that uses computer tools in a nominal manner. 15 Additionally,
we note that automating a mental process and making trades does not make
the claims patent eligible. Bancorp Servs., LLC v. Sun Life Assurance Co.,
687 F.3d at 1279.
We disagree with Appellants that the present claims involve a
machine or transformation (App. Br. 14 16, 17; Reply Br. 9-10) because the
present claims do not involve a physical transformation like the claims in
15 Seen.14.
16 Although Appellants characterize the machine-or-transformation test as an
Alice, step 1 test (App. Br. 14) and Alice, step 2 (App. Br. 17), we think the
argument is misplaced under Alice, step 1 and we view it as an Alice, step 2
inquiry. Nonetheless, the present claims are directed to an abstract idea that
does not amount to significantly more than the abstract idea for the reasons
discussed supra and infra.
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Diamond v. Diehr, 450 U.S. 17 5 ( 1981) or a transformation of data as in In
re Abele, 684 F.2d 902, 909 (CCPA 1982) from the "modified" data in the
present case, particularly in light of In re Bilski, 545 F.3d 943, 962---63 (Fed.
Cir. 2008) (en bane) (explaining why Abele was a transformation of data).
Although there is collecting data from a device and using that data in the
present case to generate an insurance quote, this is not the type of data
"transformation" contemplated by the decision in Abele. Notably, in Bilski,
the Federal Circuit explains dependent claim 6 was patent eligible because it
transformed raw data into a particular visual depiction of a physical object
(i.e., the structure of bones, organs, and other body tissues) on a display. In
re Bilski, 545 F.3d at 962---63. In the present case, it is unclear what
transformation of raw data into a particular visual depiction of a physical
object on a display, if any, the present claims. The present claims, therefore,
do not amount to significantly more than an abstract idea.
Accordingly, we sustain the Examiner's rejection of: (1) independent
claims 1 and 9; and (2) dependent claims 2-7, 10-13, and 15-18 under
35 U.S.C. § 101.
DECISION
We affirm the Examiner's decision rejecting claims 1-7, 9-13, and
15-18 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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