Esurance Insurance Services, Inc.

Patent Trials and Appeals Board

Jun 28, 2021

2021000568 (P.T.A.B. Jun. 28, 2021)

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. 15/200,765 07/01/2016 Joseph S. Laurentino 006591.02501\US 1042 71823 7590 06/28/2021 BANNER & WITCOFF , LTD ATTORNEYS FOR CLIENT NUMBER 006591 71 SOUTH WACKER DR. SUITE 3600 CHICAGO, IL 60606 EXAMINER DEGA, MURALI K ART UNIT PAPER NUMBER 3697 NOTIFICATION DATE DELIVERY MODE 06/28/2021 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): PTO-71823@bannerwitcoff.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JOSEPH S. LAURENTINO and PHILIP RODONI Appeal 2021-000568 Application 15/200,765 Technology Center 3600 ____________ Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and MICHAEL A. VALEK, Administrative Patent Judges. LEBOVITZ, Administrative Patent Judge. DECISION ON APPEAL The Examiner rejected claims 1, 2, 4-11, and 13-21 under 35 U.S.C. § 101 being directed to patent ineligible subject matter. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject the claims. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 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 Esurance Insurance Services, Inc. Appeal Br. 2. Appeal 2021-000568 Application 15/200,765 2 STATEMENT OF THE CASE The Examiner rejected claims 1, 2, 4-11, and 13-21 in the Final Office Action (“Final Act”) under 35 U.S.C. § 101 because “the claimed invention is directed to non-statutory subject matter.” Final Act. 2. Claim 1 is representative and copied below. The claim is annotated with bracketed numbering for reference to the claim limitations. 1. A method comprising; [1] establishing, by a remote system associated with a claims adjuster, a video conferencing session between the remote system and a mobile device associated with a user; [2] generating, by the remote system, a user interface configured to receive, from the claims adjuster, one or more instructions for requesting remote control of a set of functions on the mobile device associated with the user during the video conferencing session, [2a] wherein the set of functions includes [2ai] providing a location of the mobile device and [2aii] capturing an image with a camera comprising the mobile device; [3] receiving, via the user interface, [3ai] a first instruction for requesting the location of the mobile device and [3aii] a second instruction for requesting the mobile device to capture the image; [4] transmitting, during the video conferencing session, [4ai] a first request configured to cause the mobile device to provide the location of the mobile device and [4aii] a second request configured to cause the mobile device to capture the image; and [5] receiving, at the remote system, [5ai] the location of the mobile device and [5aii] the image captured by the mobile device, wherein [5b] the image captured by the mobile device is verified based at least on the location of the mobile device. Appeal 2021-000568 Application 15/200,765 3 PATENT ELIGIBILITY Principles of Law Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” However, not every discovery is eligible for patent protection. Diamond v. Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme Court articulated a two-step analysis to determine whether a claim falls within an excluded category of invention. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012). In the first step, it is determined “whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If it is determined that the claims are directed to an ineligible concept, then the second step of the two-part analysis is applied in which it is asked “[w]hat else is there in the claims before us?” Id. (alteration in original) (citation and quotation marks omitted). The Court explained that this step involves a search for an “‘inventive concept’”-i.e., an element or combination of elements that is “sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Alice, 573 U.S. at 217-18 (alteration in original) (citing Mayo, 566 U.S. at 75-77). Alice, relying on the analysis in Mayo of a claim directed to a law of nature, stated that in the second part of the analysis, “the elements of each claim both individually and ‘as an ordered combination’” must be considered “to determine whether the additional elements ‘transform the Appeal 2021-000568 Application 15/200,765 4 nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217 (citation omitted). The PTO published revised guidance on the application of 35 U.S.C. § 101, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Eligibility Guidance”) (throughout this decision, we cite to the Federal Register where the Eligibility Guidance is published). This guidance provides additional direction on how to implement the two- part analysis of Mayo and Alice. Step 2A, Prong One, of the Eligibility Guidance, looks at the specific limitations in the claim to determine whether the claim recites a judicial exception to patent eligibility. In Step 2A, Prong Two, the claims are examined to identify whether there are additional elements in the claims that integrate the exception in a practical application, namely, is there a “meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg. 54 (Prong Two). If the claim recites a judicial exception that is not integrated into a practical application, then as in the Mayo/Alice framework, Step 2B of the 2019 Eligibility Guidance instructs us to determine whether there is a claimed “inventive concept” to ensure that the claims define an invention that is significantly more than the ineligible concept itself. 84 Fed. Reg. 56. With these guiding principles in mind, we proceed to determine whether the claimed subject matter in this appeal is eligible for patent protection under 35 U.S.C. § 101. Appeal 2021-000568 Application 15/200,765 5 Discussion Claim 1 is directed to a method. A method is also a “process,” one of the broad statutory categories of patent-eligible subject matter under 35 U.S.C. § 101. Therefore, we find that the claim is directed to a statutory class of invention, and proceed to Step 2A, Prong One, of the Eligibility Guidance. Step 2A, Prong One In Step 2A, Prong One, of the Eligibility Guidance, the specific limitations in the claim are examined to determine whether the claim recites a judicial exception to patent eligibility, namely, whether the claim recites an abstract idea, law of nature, or natural phenomenon. Each limitation in the claim must be searched to determine whether it recites a judicial exception. Eligibility Guidance, 84 Fed. Reg. at 54. The Examiner found that claim 1 recites “a process directed to commercial interactions between an insurance customer and insurance claims adjuster, because it is directed to investigating an insurance claim information and analyzing the received information.” Final Act. 3. Commercial interactions fall into the category of abstract ideas of “certain methods of organizing human activity.” Eligibility Guidance, 84 Fed. Reg. at 52. Appellant contends that the clams do not recite an abstract idea. Appeal Br. 6. First, it argues that the claim is directed to “far more” than a fundamental economic practice or commercial interaction. Id. at 7. Second, Appeal 2021-000568 Application 15/200,765 6 citing the PEG Update,2 they argue that the features of the claim do not fall into any of the enumerated categories of abstract ideas. Id. at 7. Before we address Appellant’s arguments, we must consider each of the limitations in the claim to determine whether an abstract idea is recited in the claim. Step [1] of the claim establishes a video conference session between a remote system of a claims adjuster and a mobile device of a user. The Specification indicates that the claims adjuster is working for an insurance company to determine an insurance claim of a customer. Spec. ¶¶ 1-4. The mobile device user is the customer requesting the insurance claim adjustment. The remote system, in the second step [2] of the claim, generates a user interface which allows the claims adjuster to request remote control of the mobile device of the user during the video conferencing session. We interpret the claim to require that the user interface is on the remote system of the claims adjuster. See Spec. ¶¶ 32, 39. The user interface can receive instructions from the adjuster to request remote control from the mobile device to [2ai] provide the location of the mobile device and to [2aii] capture an image with a camera comprising the mobile device. The instructions are received by the user interface in step [3] to make the requests to the mobile device for [3ai] location and [3aii] image capture. The claims adjuster therefore uses the user interface on the remote system to 2 Available at https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p df (last accessed Dec. 31, 2020) (“PEG Update”). Appeal 2021-000568 Application 15/200,765 7 request the location of the mobile device of a customer making an insurance claim and to capture an image from the customer’s mobile device. The requests are transmitted to the mobile device of the customer making the insurance claim in step [4] of the claim to [4ai] provide the location of the mobile device and to [4aii] cause the mobile device to capture the image. In the last step [5] of the claim, the remote system of the claims adjuster receives the location of the mobile device and the image captured by it. The claim as a whole recites a method of organizing human activity because it involves an insurance claims adjuster collecting information that can be used in an insurance claim adjustment. Steps [1]-[4] of the claim comprise setting up the remote system and mobile device so that the remote system can receive a location and image from the mobile device. These steps when considered individually do not fall within any of the enumerated categories of abstract ideas. Step [5] of the claim in which the location of the mobile device and the image captured by the mobile device are received at the remote system of the claims adjuster, is also integral to the method organizing human activity. Specifically, as explained in the background section of the Specification, a customer would typically “submit an insurance claim and schedule a time for a claims adjuster to come to the customer’s home and view the damage” for the insured item. Spec. ¶ 3. Therefore, the collection of the information about the insurance claim in steps [5] is also a part of the recited method of organizing human activity. There are, however, other aspects of these steps that are not part of the recited judicial exception. Specifically, the steps in the claim in which the Appeal 2021-000568 Application 15/200,765 8 video conference is established (step [1]) and a user interface is generated which allows the adjuster to control the remote system, e.g., a claimant’s mobile device, to collect location and image information (steps [2]-[4]) are additional elements of the claim, beyond the judicial exception, because they are not the necessary steps to accomplish the abstract idea of insurance claim adjustment. These steps are directed to the specific improvements in the claim adjustment process described by Appellant. Appeal Br. 7. Compare claim 1 of Example 42 of the Subject Matter Eligibility Examples (Jan. 7, 2019) (“SMEE”)3 in which the claim was determined to recite a method of organizing human activity when the claim was evaluated as a whole, but the each of the specific steps in the claim were found to be “additional elements that recite a specific improvement over prior art system.” SMEE 18. In contrast, in BOOM! PAYMENTS, Inc. v. Stripe, Inc., 839 Fed.Appx. 528, 532-533 (Fed. Cir. 2021), certain claim steps were considered part of the abstract idea when “these steps only explicate the necessary steps of an escrow arrangement and do not change the direction of the claims.” Here, the recited steps [1]-[4] are not the necessary steps of insurance claim adjustment. Appellant’s argument that the recited method of organizing human activity is not an abstract idea because it is not one of the specifically “enumerated groupings” (Appeal Br. 6) is not persuasive because insurance adjustment is human activity that falls under the umbrella of certain methods of organizing human activity, which is a category of abstract ideas. There is 3 https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_ 20190107.pdf (last accessed Jun. 8, 2021). Appeal 2021-000568 Application 15/200,765 9 no indication from the PEG Update that all examples of the specifically identified groupings of abstract ideas need to be disclosed in the Eligibility Guidance to be characterized as an abstract idea. Appellant’s argument is therefore unpersuasive. Accordingly, we conclude that the claim recites an abstract idea. Step 2A, Prong Two Prong Two of Step 2A under the Eligibility Guidance asks whether there are additional elements that integrate the exception into a practical application. We must look at the claim elements individually and “as an ordered combination” to determine whether the additional elements integrate the recited abstract idea into a practical application. As explained in the Eligibility Guidance, integration may be found when an additional element “reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” or “applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception.” Eligibility Guidance, 84 Fed. Reg. at 55. The PEG Update further explains that “the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” PEG Update 12. We thus look at the Specification to determine whether an improvement is described. The Specification discloses that when “an insured item is damaged, a customer may submit an insurance claim and schedule a time for a claims adjuster to view the damage to the insured item.” Spec. ¶ 3. Appeal 2021-000568 Application 15/200,765 10 The Specification further discloses that arranging such in-person meetings may be inconvenient and finding a time, when both the customer and adjuster can meet, difficult. Spec. ¶ 4. Furthermore, the Specification notes that “travelling to the location where the damaged item may be viewed may be time consuming and costly.” Id. To address this problem, the Specification describes a user interface that enables “the claims adjuster 140 to remotely control the mobile device 105” and therefore “process the user’s insurance claim more efficiently.” Spec. ¶ 34. The Specification explains: For example, the claims adjuster 140 may not need to provide the user with lengthy instructions on how to capture an image of the insured object and hope the user understands what the claims adjuster 140 intends. Instead, the claims adjuster 140 may be able to process the claim more efficiently with fewer instructions being given to the user and/or possibly less chance for confusion or miscommunication. For example, the claims adjuster 140 may be able to ask the user to hold the mobile device l 05 in a way such that the claims adjuster 140 may take an image. Id. Thus, the Specification explains how implementing the user interface on the remote system associated with an insurance claims adjuster addresses problems with the conventional prior art approach which required the adjuster to be at the site in-person with the customer. Moreover, the claim recites that “the image captured by the mobile device is verified based at least on the location of the mobile device,” thus providing verification that image is from the location it is said to be from. As explained above, there are aspects of steps [1]-[4] that go beyond the abstract idea of collecting information for an insurance claim. These additional elements recited in the claim are asserted by Appellant to provide Appeal 2021-000568 Application 15/200,765 11 a technical improvement to the abstract idea recited in the claim, integrating the abstract idea into a practical application. Appeal Br. 7-8. The Examiner responds that the “additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.” Ans. 5. The Examiner states that “the additional element of using computing devices for collecting information, transferring information and processing information, amounts to no more than mere instructions to apply the exception using a generic computer component.” Id. We are not persuaded by the Examiner that the additional elements in the claim are insufficient to confer patent-eligibility on the claim. The principal question is whether the asserted improvement is to the abstract idea, alone, or whether it is to a technical feature that enables or improves a technical process. See In re Board of Trustees of Leland Stanford Junior University, 989 F.3d 1367, 1373 (Fed. Cir. 2021) (“We have also examined, consistent with our precedent, whether the claimed advance demonstrates an improvement on a technological process or merely enhances an ineligible concept.”). In this case, the improvement is not for a task that computers are used for in their ordinary capacity.4 Instead, the interface on the remote system 4 “But we have declined to read Alice ‘broadly [to] hold that all improvements in computer-related technology are inherently abstract and, therefore, must be considered at step two.’ Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). In fact, we have explained that claims directed to ‘an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity,’ are patent eligible. Id. at 1336; Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1354 (Fed. Cir. 2016) (explaining that the claims in Appeal 2021-000568 Application 15/200,765 12 improves the insurance adjustment process by eliminating the need for a claims adjuster to meet in-person with the customer, while at the same time providing the image that the claim adjuster chooses remotely, with the added security of verifying that the customer is at the location they say they are at. The use of the user interface at the remote system is not merely automating a task that a computer ordinary performs, but instead is providing a technical improvement and enhancement to the process of insurance claims adjustment. Contrast Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“mere automation of manual processes using generic computers does not constitute a patentable improvement in computer technology.”). The technical improvement is not to the abstract idea, itself. The claim is also not merely “replacing the human intermediary with a GUI [graphical user interface] as in cxLoyalty, Inc. v. Maritz Holdings Inc., 986 F.3d 1367, 1377 (Fed. Cir. 2021). Rather, the claim provides additional elements, for example in steps [1]-[4], that eliminate the necessity for a claims adjuster to meet in-person with a customer making an insurance claim, while still providing verification of the customer’s location. Moreover, as the Specification explains, allowing the claims adjuster to remotely control the customer’s device, as opposed to telling the customer how to operate their device to provide the necessary information, further improves the process because it avoids the need for “lengthy instructions” Enfish were eligible ‘because [they] focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement . . . in how computers could carry out one of their basic functions’).” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed Cir. 2019). Appeal 2021-000568 Application 15/200,765 13 that may be miscommunicated or otherwise confuse the customer. See Spec. ¶ 34. Even if the technology for remote operation of a mobile device was known, the Examiner did not provide evidence that it had been used to improve insurance claims adjustment in the way recited in steps [1]-[4] of rejected claim 1. As explained in BASCOM Glob. Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016), while filtering content was “already a known concept,” the claims “recite a specific, discrete implementation of the abstract idea of filtering content.” In BASCOM, the claims provided “a technology-based solution . . . to filter content on the Internet that overcomes existing problems with other Internet filtering systems.” Id. at 1351. Likewise, the remote system recited in claim 1 addresses the problem identified in the background of the Specification with existing approaches to assessing insurance adjustment claims. Spec. ¶¶ 3, 4. For the foregoing reasons, we concluded that the abstract idea recited in claim 1 is integrated into a practical application. It is therefore unnecessary to proceed to Step 2B of the analysis. The rejection of claim 1 under 35 U.S.C. § 101 is reversed. Each of claims 2, 4-11, and 13-21 incorporate the same limitations of claim 1 and are reversed for the same reasons. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4-11, 13-21 101 Eligibility 1, 2, 4-11, 13-21 Appeal 2021-000568 Application 15/200,765 14 REVERSED