Ex Parte Adams et al

Patent Trials and Appeals Board

Jun 21, 2019

14271915 - (D) (P.T.A.B. Jun. 21, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/271,915 05/07/2014 Beverley Adams
30636 7590 06/21/2019
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
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.
40191/01701 1679
EXAMINER
MCATEE,PATRICK
ART UNIT PAPER NUMBER
3689
MAIL DATE DELIVERY MODE
06/21/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BEVERLEY ADAMS and GARETH BOWERS
Appeal 2018-001525
Application 14/271,915 1
Technology Center 3600
Before ANTON W. PETTING, BRUCE T. WIEDER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
1 According to Appellants, the real party in interest is Guy Carpenter &
Company, LLC (Appeal Br. 2).
Appeal 2018-001525
Application 14/271,915
STATEMENT OF THE CASE2
Beverley Adams and Gareth Bowers (Appellants) seek review under
35 U.S.C. § 134 of a final rejection of claims 1-20, the only claims pending
in the application on appeal. We have jurisdiction over the appeal pursuant
to 35 U.S.C. § 6(b).
The Appellants invented measuring and/or predicting the performance
of an insurance company's post-event operational response process for
different CAT event scenarios. Specification para. 23.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method, comprising:
[l] receiving, by a processor, claims information
for a catastrophic ("CAT") event,
the claims information including a number of claims for
the CAT event;
[2] identifying, by the processor, an insurance company
configured to respond to the CAT event,
the insurance company having predefined CAT event
handling parameters;
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed July 25, 2017) and Reply Brief ("Reply Br.," filed November 28,
2017), and the Examiner's Answer ("Ans.," mailed September 28, 2017),
and Final Action ("Final Act.," mailed April 25, 2017).
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[3] receiving, by the processor, a plurality of variable modifiers
for a response to the CAT event by the identified insurance
company,
wherein the variable modifiers include an output of at
least one sub-model having a defined sub-model time
period,
the sub-model time period being a parameter
selected to configure the sub-model,
wherein the sub-model performs a probabilistic analysis
of new claim arrivals within the sub-model time period,
wherein the sub-model is transitioned from the sub-
model time period to a further time period greater than
the sub-model time period,
the variable modifiers including primary variable
modifiers and secondary variable modifiers,
the primary variable modifiers corresponding to a cost
and an efficiency in the response to the CAT event,
the secondary variable modifiers corresponding to a
weighting factor based on the predefined CAT event
handling parameters used in customizing simulations;
[ 4] adjusting the sub-model time period,
the further time period, and the secondary variable
modifiers based on the predefined CAT event handling
parameters of the identified insurance company;
[5] running, by the processor, a model simulation
of the response to the CAT event by the identified
insurance company based on the claims information and
the primary and adjusted secondary variable modifiers,
wherein the model simulation is based on a defined
model time period that is different from the adjusted sub-
model time period,
the model time period being a parameter used to
configure the model;
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and
[ 6] outputting results of the simulation
where the simulation measures a simulated performance
of a post-event operational response strategy of the
msurance company.
The Examiner relies upon the following prior art:
Lyakovetsky US 2005/0203828 Al
Pednault
Johnson
Modi
US 7,072,841 Bl
US 7,076,036 Bl
US 2014/0058783 Al
Sept. 15, 2005
July 4, 2006
July 11, 2006
Feb.27,2014
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1-5, 7-9, 11-15, and 17-19 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Modi and Lyakovetsky.
Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Modi, Lyakovetsky, and Pednault.
Claims 10 and 20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Modi, Lyakovetsky, and Johnson.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of obviousness tum primarily on whether the recited
weighting factor is deserving of patentable weight and if so, whether the art
describes this.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Modi
01. Modi is directed to handling of catastrophe insurance claims,
and more particularly, to the optimization of catastrophe-based
resources for handling a projected number of catastrophe
insurance claims for a forecasted catastrophic event. Modi
para. 1.
02. Modi describes determining the number of persons needed to
process a projected number of insurance claims expected from a
forecasted catastrophic event. Modi describes a resource-
modeling program for determining the number of persons needed
to process the projected number of insurance claims expected
from the forecasted catastrophic event. A database stores one or
more insurance claim-reporting patterns and time estimates for
processing insurance claims for various types of catastrophic
events. The processor executes the resource-modeling program
stored in a data storage device to determine the number of persons
needed to process the projected number of insurance claims. The
resource-modeling program receives information regarding the
projected number of insurance claims expected from the
forecasted catastrophic event and receives a selection of a
reporting pattern corresponding to the type of forecasted
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catastrophic event from the one or more insurance claim-reporting
patterns stored in the database. The resource-modeling program
determines the number of persons needed to process the projected
number of insurance claims, based on at least the projected
number of insurance claims, a selected reporting pattern, and one
of the time estimates corresponding to the forecasted catastrophic
event. Modi para. 4.
03. Modi describes how claim reporting patterns define the
percentage of total projected insurance claims for a catastrophic
event that are expected to be reported on a daily basis for the
duration of the catastrophic event (i.e., the period of time for all
insurance claims to be reported). For instance, for a large
hurricane-type catastrophic event, 2-7% of the total projected
claims are expected to be reported by day 1 of the catastrophic
event. For day 10 of a large hurricane-type catastrophic event,
60-65% of the total projected claims are expected to be reported
and 1-3% of the total projected claims are expected to be newly
reported claims. For day 20 of a large hurricane-type catastrophic
event, 75-80% of the total projected claims are expected to be
reported and 0-2% of the total projected claims are expected to be
newly reported claims. The exemplary claim-reporting pattern
represents the historical averages of percentages of total claims
reported by day for multiple past large hurricane-type catastrophic
events. Modi para. 40.
04. Modi describes how the percentage of claims handled by each
type of claim adjuster may be used as a baseline by its Catastrophe
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Resource-Modeling program. However, the percentage of claims
handled by each type of claim adjuster may be adjusted upward or
downward based on the strain on the claims organization at any
given time. The breakdown of percentages of claims handled by
different claim adjusters may vary depending on factors such as
region affected, severity of the catastrophic event, types of
damage being seen, and number of catastrophic events directly or
indirectly affecting a region ( e.g., catastrophic event in recent past
still occupying resources or catastrophic in nearby region
occupying resources). Based on these types of factors affecting
the strain on the claims organization, some claims may be shifted
from one type of claim adjuster to another type of claim adjuster.
Modi para. 48.
L yakovetsky
05. Lyakovetsky is directed to an insurance claim processing
system, and more particularly, to a system that monitors claims,
compiles metrics, displays metrics in a customizable manner, and
alerts a user to a situation that may require attention by the user.
L yakovetsky para. 2.
06. Lyakovetsky describes an insurance claim processing system.
An agent converts a data point from a first format into a uniform
format. The data point represents data from an insurance claim.
A collector receives the data point in the uniform format and sends
the data point to a data store. The data point is a member of a
plurality of data points in the uniform format in the data store. An
analyzer retrieves the plurality of data points from the data store
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and produces a metric from the plurality of data points.
L yakovetsky para. 8.
ANALYSIS
Claims 1-20 rejected under 35 U.S.C. § 1 OJ as directed to a judicial
exception without significantly more
STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, ...
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, "[ w ]hat else
is there in the claims before us? To answer that question, ...
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. [The Court] described step two of this
analysis as 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 Corp. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citations
omitted) ( citing Mayo Collaborative Services v. Prometheus Laboratories,
3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) ("2019 Guidance").
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Inc., 566 U.S. 66 (2012)). To perform this test, we must first determine
what the claims are directed to. This begins by determining whether the
claims recite one of the judicial exceptions (a law of nature, a natural
phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims "apply, rely on,
or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception." 2019 Guidance 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
Method claim 1 recites receiving claims information and variable
modifiers, identifying an insurance company, adjusting data representing a
time period, running a model simulation, and outputting the model results.
Identifying an insurance company is a rudimentary analysis and transmission
of insurance company data. Adjusting data representing a time period is
modifying such data. Running a model simulation is a generic analysis of
data. Outputting data is either a display or transmission of data. Thus, claim
1 recites receiving, analyzing, modifying, transmitting and displaying data.
None of the limitations recite technological implementation details for any
of these steps, but instead recite only results desired by any and all possible
means.
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From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the 2019 Guidance, which extracts
and synthesizes key concepts identified by the courts, abstract ideas include
(1) mathematical concepts,4 (2) certain methods of organizing human
activity, 5 and (3) mental processes. 6 Among those certain methods of
organizing human activity listed in the 2019 Guidance are fundamental
economic practices and commercial or legal interactions. Like those
concepts, claim 1 recites the concept of providing insurance. Specifically,
claim 1 recites operations that would ordinarily take place in advising one to
model an insurance carrier's response to data representing an insurable
event. The advice to model an insurance carrier's response to data
representing an insurable event involves providing insurance, which is an
economic act, and analyzing an insurable event, which is an act ordinarily
performed in the stream of commerce. For example, claim 1 recites
"receiving ... a number of claims for the CAT [catastrophic] event," which
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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is an activity that would take place whenever one is providing insurance
against catastrophe. Similarly, claim 1 recites "identifying ... an insurance
company" and "a post-event operational response strategy of the insurance
company," which are also characteristics of purchasing insurance coverage.
The Examiner determines the claims to be directed to running a model
simulation of the response to a CAT event using data received about the
CAT event, and customizing the variable quantities and weighting factors
based on an insurance company's predefined parameters. Final Act. 5.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in modelling an insurance company's response to a
catastrophic event, absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitations 1 and 3 recite rudimentary
data gathering steps. Although limitation 3 recites a wherein clause that
further recites "the sub-model performs a probabilistic analysis of new claim
arrivals within the sub-model time period," this is not a functional part of the
limitation 3 step of receiving data, but instead is an aspirational
characterization of the sub-model output data received in limitation 3. Such
non-functional data is generally undeserving of patentable weight. King
Pharm., Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1279 (Fed. Cir. 2010).
Limitation 2 recites identifying data representing an insurance company,
which is generic data analysis at the most rudimentary level. Limitation 4
recites conventional data modification. Limitation 6 recites conventional
data output. Limitation 5 is the only step to ultimately perform what the
claim produces and recites performing generic modelling, which is simply
simulating an insurance company response. The limitations thus recite
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advice for modeling an insurance carrier's response to data representing an
insurable event. To advocate modeling an insurance carrier's response to
data representing an insurable event is conceptual advice for results desired
and not technological operations.
The Specification at paragraph 23 describes the invention as relating to
measuring and/or predicting the performance of an insurance company's
post-event operational response process for different CAT event scenarios.
Thus, all this intrinsic evidence shows that claim 1 is directed to evaluating
an insurance provider, i.e. providing insurance. This is consistent with the
Examiner's determination.
This in tum is an example of fundamental economic practices and
commercial or legal interactions as a certain method of organizing human
activity because providing insurance is both a fundamental economic
practice and a way to have risk assumed by entering into a commercial
transaction. To model an insurance carrier's response to data representing
an insurable event is abstract advice for evaluating a carrier providing
msurance. The steps recited in claim 1 describe a conceptual performance of
this.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (creating a transaction performance
guaranty for a commercial transaction on computer networks such as the
Internet); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1338 (Fed. Cir. 2013) (generating rule-based tasks for processing
an insurance claim); Bancorp Servs., L.L. C. v. Sun Life Assur. Co. of Can.
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (managing a stable value
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protected life insurance policy); Dealertrack, Inc. v. Huber, 674 F.3d 1315,
1333 (Fed. Cir. 2012) (processing loan information through a
clearinghouse); Smart Sys. Innovations, LLC v. Chicago Transit Auth., 873
F.3d 1364, 1372 (Fed. Cir. 2017) (collection, storage, and recognition of
data).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of receiving, analyzing,
modifying, transmitting and displaying data mimic human thought processes
of observation, evaluation, judgment, and opinion, perhaps with paper and
pencil, where the data interpretation is perceptible only in the human mind.
See In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed.
Cir. 2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-
94 (Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data reception, analysis,
modification, transmission, and display and does not recite an improvement
to a particular computer technology. See, e.g., McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims
not abstract because they "focused on a specific asserted improvement in
computer animation"). As such, claim 1 is directed to receiving, analyzing,
modifying, transmitting and displaying data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 is directed
to providing insurance by modeling an insurance carrier's response to data
representing an insurable event.
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STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, "all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas."
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. "[ A Jpplication[ s ]" of
such concepts "'to a new and useful end,"' we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the "'buildin[g] block[s]"' of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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ubiquity of computers, wholly genenc computer
implementation is not generally the sort of "additional
featur[ e ]" that provides any "practical assurance that the
process is more than a drafting effort designed to monopolize
the [ abstract idea] its elf."
Alice, 573 U.S. at 223-24 ( citations omitted).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Steps 1 and 3 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step 6
is insignificant post solution activity, such as storing, transmitting, or
displaying the results. Steps 2, 4, and 5 recite generic computer processing
expressed in terms of results desired by any and all possible means and so
present no more than conceptual advice. All purported inventive aspects
reside in how the data is interpreted and the results desired, and not in how
the process physically enforces such a data interpretation or in how the
processing technologically achieves those results.
Viewed as a whole, Appellants' claim 1 simply recites the concept of
providing insurance by modeling an insurance carrier's response to data
representing an insurable event as performed by a generic computer. This is
no more than conceptual advice on the parameters for this concept and the
generic computer processes necessary to process those parameters, and do
not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
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technology or technical field. The Specification spells out different generic
equipment8 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of providing insurance by modeling an insurance carrier's response
to data representing an insurable event under different scenarios. It does not
describe any particular improvement in the manner a computer functions.
Instead, claim 1 at issue amounts to nothing significantly more than an
instruction to apply providing insurance by modeling an insurance carrier's
response to data representing an insurable event using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or a technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation
or reduction of a particular article to a different state or thing, 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.
We conclude that claim 1 is directed to achieving the result of
providing insurance by advising one on modeling an insurance carrier's
8 The Specification describes an Intel x86 based platform with compatible
operating system, a Mac platform and MAC OS. Spec. para. 112.
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response to data representing an insurable event as distinguished from a
technological improvement for achieving or applying that result. This
amounts to fundamental economic practices and commercial or legal
interactions, which fall within certain methods of organizing human activity
that constitute abstract ideas. The claim does not integrate the judicial
exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for receiving, analyzing,
modifying, transmitting and displaying data amounts to electronic data query
and retrieval-one of the most basic functions of a computer. The limitation
of "the sub-model performs a probabilistic analysis of new claim arrivals
within the sub-model time period" is not an operational part of the
limitation 3 step of receiving data, but instead is an aspirational
characterization of the sub-model output data received in limitation 3. All of
these computer functions are generic, routine, conventional computer
activities that are performed only for their conventional uses. See Elec.
Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see
In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303,
1316 (Fed. Cir. 2011) ("Absent a possible narrower construction of the terms
'processing,' 'receiving,' and 'storing,' ... those functions can be achieved
by any general purpose computer without special programming"). None of
these activities are used in some unconventional manner nor do any produce
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some unexpected result. Appellants do not contend they invented any of
these activities. In short, each step does no more than require a generic
computer to perform generic computer functions. As to the data operated
upon, "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." SAP Am., Inc. v. InvestPic
LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants' claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data reception, analysis,
modification, transmission and display is equally generic and conventional.
See Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction); Inventor Holdings,
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission); Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874
F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
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are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long "warn[ ed] . . . against" interpreting § 101
"in ways that make patent eligibility 'depend simply on the
draftsman's art. '"
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by providing insurance
by advising one on modeling an insurance carrier's response to data
representing an insurable event, without significantly more.
APPELLANTS' ARGUMENTS
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 2-12 and Answer 3-18 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that
the claims are directed to a new and improved way of
outputting results of a model simulation based on claims
information and variable modifiers in which the variable
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modifiers are customized through modification of predefined
CAT event handling parameters associated with an identified
insurance company. The claims recite a process by which an
insurance company identity may be included to determine the
predefined CAT event handling parameters which are used to
modify sub-model time periods and secondary variable
modifiers that provide inputs to the model simulation. That is,
logical structures and processes are utilized to realize an
improvement to how an analysis of CAT events are to be
handled.
Reply Br. 3. Outputting results of a model is itself an abstraction, as a
model is an abstract representation of something. The claims recite advice
on how to do so without any technological implementation details. The
recited inputs are equally abstract data, representing nothing technological
and not created by something technological. As in SAP America,
The claims in this case are directed to abstract ideas. The focus
of the claims, as reflected in what is quoted above, is on
selecting certain information, analyzing it using mathematical
techniques, and reporting or displaying the results of the
analysis. That is all abstract.
SAP Am., Inc. v. InvestPic LLC, 898 F.3d at 1167.
We are not persuaded by Appellants' argument that the decision in
Thales Visionix Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) holds
otherwise. Reply Br. 3-4.
[I]n Thales Visionix Inc. v. United States, 850 F.3d 1343, 1348-
49 (Fed. Cir. 2017), the improvement was in a physical tracking
system. The use of mathematics to achieve an improvement no
more changed the conclusion that improved physical things and
actions were the subject of the claimed advance than it did in
Diamond v. Diehr, 450 U.S. 175, 101 S. Ct. 1048, 67 L.Ed.2d
155 (1981 ). Here, in contrast, the focus of the claims is not a
physical-realm improvement but an improvement in wholly
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abstract ideas-the selection and mathematical analysis of
information, followed by reporting or display of the results.
SAP Am., Inc. v. InvestPic LLC, 898 F.3d at 1168.
We are not persuaded by Appellants' argument that Rapid Litig.
Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042 (Fed. Cir. 2016) holds
otherwise. Reply Br. 4. As in Thales, with the claims in Rapid Litigation
the improvement was in something physical. This is not so in the instant
claims.
We are not persuaded by Appellants' argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 8-9. The claims differ from those found patent
eligible in Enfish, where the claims were "specifically directed to a self-
referential table for a computer database." 822 F.3d at 1337. The claims
thus were "directed to a specific improvement to the way computers
operate" rather than an abstract idea implemented on a computer. Id. at
1336. Here, by contrast, the claims are not directed to an improvement
in the way computers operate. Though the claims purport to accelerate and
improve the accuracy of the process of modeling insurance company
responses, our reviewing court has held that speed and accuracy increases
stemming from the ordinary capabilities of a general purpose computer "do[]
not materially alter the patent eligibility of the claimed subject matter."
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012). Instead, the claims are more analogous to
those in FairWarning, 839 F.3d 1089 (Fed. Cir. 2016), wherein claims
reciting "a few possible rules to analyze the audit log data" were found
directed to an abstract idea because they asked "the same questions (though
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perhaps phrased with different words) that humans in analogous situations
detecting fraud have asked for decades." 839 F.3d at 1094, 1095.
Appellants also attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016). Reply Br. 6-7. Although the processes in McRO were previously
performed by humans, "the traditional process and newly claimed method
... produced ... results in fundamentally different ways." FairWarning v.
Iatric Systems, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO). In McRO, "[i]t is the incorporation of the claimed rules,
not the use of the computer, that improved the existing technological
process," because the prior process performed by humans "was driven by
subjective determinations rather than specific, limited mathematical rules."
837 F.3d at 1314 (internal quotation marks, citation, and alterations
omitted). In contrast, the claims of the instant application merely implement
an old practice of using decision criteria in making insurance decisions in a
new environment. Appellants have not argued that the claimed processes of
selecting insurance products apply rules of selection in a manner
technologically different from those which humans used, albeit with less
efficiency, before the invention was claimed. Merely pigeon-holing the
objects of decision making to aid decision making is both old and itself
abstract.
The claims in McRO were not directed to ... "a specific
asserted improvement in computer animation, i.e., the
automatic use of rules of a particular type." We explained that
"the claimed improvement [was] allowing computers to
produce 'accurate and realistic lip synchronization and facial
expressions in animated characters' that previously could only
be produced by human animators." The claimed rules in McRO
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transformed a traditionally subjective process performed by
human artists into a mathematically automated process
executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
Claims 1-5, 7-9, 11-15, and 17-19 rejected under 35 U.S.C. § 103(a) as
unpatentable over Modi and Lyakovetsky
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from Final Action 13-26 and Answer 18-25 and
reach similar legal conclusions. We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that
In response to the weighting feature recited in the claims,
the Examiner notes that Modi discloses a particular manner of
adjusting or varying a parameter to adjust a weighting.
Specifically, the Examiner cites to Modi describing how a
claims organization may experience a strain and a particular
claim adjuster type may be given a different distribution of the
claims. 9/28/17 Examiner's Answer, pp. 20 - 21, citing Modi
,-J [0048]. However, it is unclear how such a change to the
distribution has any relevance to aligning how CAT event
responses are to be handled based on predefined CAT event
handling parameters as chosen by the insurance company. As
was previously submitted, the change in the distribution of
claims has no effect on the fact that the weighting in Modi is
based on the data alone with no association to the insurance
company or the needs of the insurance company in aligning
with how CAT event responses are handled. Instead, the
change to the distribution of claims to the claim adjuster types
is simply how claims were assigned based on availability as
some claim adjuster types may have been assigned an
inordinate number of claims and placing a strain on a particular
department of the claims organization. Although the claims
may also be used to handle logistical factors such as how claims
are to be distributed among available claims adjusters, it is
unclear how changing a distribution of claims is comparable to
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predefined CAT event handling parameters as recited in claim 1
such as "claim handling arrangements and targets... suited to
which types of CAT event[ s]." Specification ,i [0025].
Reply Br. 7-8. To put this in perspective, we repeat the weighting limitation
at issue
receiving ... a plurality of variable modifiers for a response to
the CAT event by the identified insurance company, ... the
variable modifiers including primary variable modifiers and
secondary variable modifiers, . . . the secondary variable
modifiers corresponding to a weighting factor based on the
predefined CAT event handling parameters used in customizing
simulations.
(Emphasis added).
Initially, we repeat our determination from the 101 analysis, viz, that
the step is that of receiving data, not of using the data. The characteristic of
data as being weighting factors presents no functional effect in this
limitation. Any functional effect is presented in the limitation "running ... a
model simulation of the response to the CAT event by the identified
insurance company based on the claims information and the primary and
adjusted secondary variable modifiers." Although this limitation recites that
the simulation is run based on the secondary variable modifiers, it does not
recite what that basis is or how it is implemented, and it does not recite that
the basis is upon all of the secondary modifiers. Further, the secondary
variable modifiers correspond to a weighting factor, but the claim does not
recite the manner, implementation, or even degree of such correspondence.
In light of this, we are not persuaded by Appellants' argument that "it
is unclear how such a change to the distribution has any relevance to
aligning how CAT event responses are to be handled based on predefined
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CAT event handling parameters as chosen by the insurance company."
Reply Br. 8. There is no clear recitation of a functional effect of the
weighting factor upon how CAT event responses are based on predefined
CAT event handling parameters and even less on whether such basis
amounts to being handled as such. Beyond that, to the extent Modi' s data
regarding percentage of claims handled by each type of claim adjuster and
percentages of work for each phase to be accomplished by certain days
correspond to the recited weight factors, these factors would weigh the
simulation results in terms of relative performance by carrier and day. As to
the argument regarding Specification paragraph 25, we do not import the
Specification into the claims.
Though understanding the claim language may be aided by the
explanations contained in the written description, it is important
not to import into a claim limitations that are not a part of the
claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim
language is broader than the embodiment.
SuperGuide Corp. v. DirecTV Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir.
2004).
Claims 6 and 16 rejected under 35 U.S.C. § 103(a) as unpatentable over
Modi, Lyakovetsky, and Pednault
Appellants rely on the above arguments which we find unpersuasive.
Claims 10 and 20 rejected under 35 U.S.C. § 103(a) as unpatentable over
Modi, Lyakovetsky, and Johnson
Appellants rely on the above arguments which we find unpersuasive.
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CONCLUSIONS OF LAW
The rejection of claims 1-20 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1-5, 7-9, 11-15, and 17-19 under 35 U.S.C.
§ 103(a) as unpatentable over Modi and Lyakovetsky is proper.
The rejection of claims 6 and 16 under 35 U.S.C. § 103(a) as
unpatentable over Modi, Lyakovetsky, and Pednault is proper.
The rejection of claims 10 and 20 under 35 U.S.C. § 103(a) as
unpatentable over Modi, Lyakovetsky, and Johnson is proper.
DECISION
The rejection of claims 1-20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l .136(a). See 37 C.F.R.
§ l.136(a)(l)(iv) (2011).
AFFIRMED
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