Ex Parte Reeser et al

Patent Trial and Appeal Board

Sep 25, 2018

13455677 (P.T.A.B. Sep. 25, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/455,677 04/25/2012 Andrew G. Reeser
86528 7590 09/27/2018
Slayden Grubert Beard PLLC
401 Congress Avenue
Suite 1650
Austin, TX 78701
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.
16091.105008 4694
EXAMINER
WEISBERGER, RICHARD C
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/27/2018 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):
trosson@sgbfirm.com
patent@sgbfirm.com
dallen@sgbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ANDREW G. REESER, STACY L. KENNEDY,
and SHAWN M. CALL
Appeal2017-007599 1
Application 13/455,677
Technology Center 3600
Before ELENI MANTIS MERCADER, NORMAN H. BEAMER, and
ADAM J. PYONIN, Administrative Patent Judges.
PYONIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) from the
Examiner's Final Rejection of claims 1--4, 8-14, 18-23, and 25. App. Br. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 State Farm Mutual Automobile Insurance Company is identified as the real
party in interest. App. Br. 2.
Appeal2017-007599
Application 13/455,677
STATEMENT OF THE CASE
Appellants' disclosure relates to "investigating a casualty claim" and
"generat[ing] a contents inventory for investigation of the casualty claim."
Abstract. Claims 1, 13, 23, and 25 are independent. Claim 1 is reproduced
below for reference:
1. A method for generating an electronic contents inventory
for investigating a casualty claim, the method comprising:
receiving an electronic prompt at a programmed
processor via the Internet, wherein the electronic prompt
comprises an identification of one or more email accounts
associated with a policy holder;
accessing the one or more email accounts associated with
the policy holder with the programmed processor;
automatically analyzing with the programmed processor
stored data from one or more data storage devices associated
with emails from the one or more email accounts identified by
the electronic prompt, to identify electronic documents having
information related to the acquisition of personal property, the
electronic documents including electronic purchase orders,
confirmations, delivery notices, or receipts;
gathering with the programmed processor the
information related to the acquisition of personal property from
the electronic documents identified as having information
related to the acquisition of personal property; and
generating, using the programmed processor, a personal
property file based on the information related to the acquisition
of personal property gathered from the electronic documents
identified by the analyzing step, the personal property file
comprising an electronic contents inventory for investigation of
the casualty claim; and
transmitting the personal property file from the
programmed processor to a remote computer over the Internet.
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Application 13/455,677
The Examiner's Rejection
Claims 1--4, 8-14, 18-23, and 25 stand rejected under 35 U.S.C. § 101
as being directed to a judicial exception to patent eligibility. Ans. 2.
ANALYSIS
We have reviewed the Examiner's rejection in light of Appellants'
arguments, considering only those arguments Appellants actually raised in
the briefs. See 37 C.F.R. § 4I.37(c)(l)(iv).
Alice Corp. Pty. v. CLS Bankint'l, 134 S. Ct. 2347 (2014), identifies a
two-step framework for determining whether claimed subject matter is
judicially excepted from patent eligibility under 35 U.S.C. § 101. In the first
step, "[ w ]e must first determine whether the claims at issue are directed to a
patent-ineligible concept." Alice, 134 S. Ct. at 2355. In the second step of
the Alice framework, we "consider the elements of each claim both
individually and 'as an ordered combination' to determine whether the
additional elements 'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 78-79 (2012)). In other words, the
second step is to "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. (alteration in original) (quoting Mayo, 566 U.S. at 72-
73).
Appellants argue the Examiner errs in finding the claims are patent
ineligible pursuant to the Alice framework. See App. Br. 8-9. We are not
persuaded the Examiner errs. We adopt the Examiner's findings and
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Application 13/455,677
conclusions in the Final Action and Examiner's Answer as our own, and we
add the following primarily for emphasis.
Appellants argue that "when the limitations of Independent Claim 1
are considered together as an ordered combination, the claim recites an
invention that is not merely the routine or conventional use of the Internet,
rendering it patent-eligible just like the claims upheld in DDR Holdings."
App. Br. 9, Reply Br. 3; citing DDR Holdings, LLC v. Hotels.com, L.P., 773
F.3d 1245 (Fed. Cir. 2014). Appellants contend "there is no attempt to claim
all computer-based insurance or casualty claims handling. In fact, there is
no [reasonable] argument that the claims cover all [ or even most] computer-
implemented methods of generating a contents inventory." App. Br. 9,
Reply Br. 3.
We are not persuaded by Appellants' arguments and agree with the
Examiner that "[ t ]he claims are directed to identifying insured purchases in
an email account" which is an abstract idea. Ans. 2. The claims are directed
to collecting information ( e.g., "accessing the one or more email accounts,"
"gathering ... information"), analyzing the information ( e.g., "automatically
analyzing ... to identify electronic documents"), and displaying the
information ( e.g., "generating ... a personal property file"). The claims are,
thus, comparable to claims found to be directed to abstract ideas. See, e.g.,
SAP Am., Inc. v. InvestPic LLC, 890 F.3d 1016, 1022 (Fed. Cir. 2018) ("As
many [Federal Circuit] cases make clear, even if a process of collecting and
analyzing information is 'limited to particular content' or a particular
'source,' that limitation does not make the collection and analysis other than
abstract." (Quoting Electric Power Group, LLC v. Alstom S.A., 830 F.3d
1350, 1353, 1355 (Fed. Cir. 2016))); Clarilogic, Inc. v. FormFree Holdings
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Application 13/455,677
Corp., 681 F. App'x 950, 954 (Fed. Cir. 2017) (non-precedential) (holding
that claims "for collection, analysis, and generation of information reports,
where the claims are not limited to how the collected information is
analyzed or reformed, is the height of abstraction"); Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1371-72
(Fed. Cir. 2017) (forming and collecting data for financial transactions in a
certain field); Accenture Global Servs., GmbH v. Guidewire Software, Inc.,
728 F.3d 1336, 1344--45 (Fed. Cir. 2013) (claims reciting "generalized
software components arranged to implement an abstract concept [ of
generating insurance-policy-related tasks based on rules to be completed
upon the occurrence of an event] on a computer" not patent eligible);
Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d
1266, 1280 (Fed. Cir. 2012) ("the abstract idea of managing a stable value
protected life insurance policy by performing calculations and manipulating
the results."); Audatex North America, Inc. v. Mitchell Int 'l, Inc., 703 F.
App'x 986, 987-90 (Fed. Cir. 2017) (unpublished) (holding ineligible
method for obtaining automobile insurance claim valuation report by
transmitting the report from a valuation server to a web server before
transmitting the report to the client computer).
In the second step of the Alice framework, we "consider the elements
of each claim both individually and 'as an ordered combination' to
determine whether the additional elements 'transform the nature of the
claim' into a patent-eligible application." Alice, 134 S. Ct. at 2355
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66,
78-79 (2012)). In other words, the second step is to "search for an
'inventive concept' - i.e., an element or combination of elements that is
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Application 13/455,677
'sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the [ineligible concept] itself."' Id. (alteration in original)
(quoting Mayo, 566 U.S. at 72-73).
The Examiner finds, and we agree, that "[t]he elements in addition to
the abstract idea are receiving an electronic prompt at a programmed
processor via the Internet and a computer processor." Ans. 3; see also Final
Act. 4, quoting Spec. ,r 26. The Examiner further finds, and we agree, that
"[t]he claims do not make any improvements to any of the other recited
conventional components and features. None of the individual steps, viewed
both individually and as an ordered combination transform the nature of the
claim into patent-eligible subject matter." Final Act. 3.
We are unpersuaded by Appellants' comparison to the claims in DDR
Holdings. See App. Br. 9. In that case, the Federal Circuit determined that,
although the patent claims at issue involved conventional computers and the
Internet, the claims addressed the problem of retaining website visitors who,
if adhering to the routine, conventional functioning of Internet hyperlink
protocol, would be transported instantly away from a host's website after
"clicking" on an advertisement and activating a hyperlink. DDR Holdings,
773 F.3d at 1257. The Federal Circuit, thus, held that the claims were
directed to statutory subject matter because they claim a solution
"necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks." Id. We agree with
the Examiner that, unlike the claimed invention in DDR Holdings,
Appellants' claimed invention solves "no problem arising out of the realm of
computers. Rather, the claims recite a commonplace business method which
at its core is processing business information." Ans. 4; see also Spec. ,r,r 4--7
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Application 13/455,677
( describing the difficulty of collecting files for insurance claims). Claim 1
recites a method of generating "contents inventory for investigating a
casualty claim," which is as applicable to physical files-such as paper
receipts-as it is for computer files. See, e.g., DDR Holdings, 773 F.3d at
1256 ("[ A ]fter Alice, there can remain no doubt: recitation of generic
computer limitations does not make an otherwise ineligible claim patent-
eligible. The bare fact that a computer exists in the physical rather than
purely conceptual realm is beside the point." (Internal citations and
quotation marks omitted)). Appellants do not persuade us the Examiner errs
in determining the additional claim limitations "only limit[] the claims to a
particular technological environment. But without more, without a solution
rooted in technology, this is insufficient to transform them into patent-
eligible applications of the abstract [concept]." Ans. 4; see also Spec. ,r,r
26-31.
Further, Appellants' argument that the claims do not "cover all or
even most computer-implemented methods of generating a contents
inventory" is not persuasive. Reply Br. 3. Preemption is not the sole test for
patent eligibility, and any questions on preemption in the instant case have
been resolved by the above analysis. As our reviewing court has explained:
"questions on preemption are inherent in and resolved by the § 101
analysis," and, although "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015); cf OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
13 59, 13 62-63 (Fed. Cir. 2015) ("[T]hat the claims do not preempt all price
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Application 13/455,677
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.").
Accordingly, we are not persuaded the Examiner errs. We sustain the
Examiner's 35 U.S.C. § 101 rejection of claims 1--4, 8-14, 18-23, and 25.
DECISION
The Examiner's decision rejecting claims 1--4, 8-14, 18-23, and 25
under 35 U.S.C. § 101 is affirmed.
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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