Ex Parte Bonissone et al

Patent Trial and Appeal Board

Nov 20, 2018

12509703 (P.T.A.B. Nov. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/509,703 07/27/2009
20995 7590 11/23/2018
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
FIRST NAMED INVENTOR
Piero Patrone Bonissone
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.
52493.000579 1575
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
11/23/2018 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):
j ayna.cartee@knobbe.com
efiling@knobbe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PIERO PA TRONE BONISSONE
and NARESH SUNDARAM IYER
Appeal2017-004017
Application 12/509,703
Technology Center 3600
Before ANTON W. PETTING, NINA L. MEDLOCK, and
MATTHEWS. MEYERS, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Piero Patrone Bonissone and Naresh Sundaram Iyer (Appellants2)
seek review under 35 U.S.C. § 134 of a final rejection of claims 42, 43, and
47--49, the only claims pending in the application on appeal. We have
jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
1 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed June 13, 2016) and Reply Brief ("Reply Br.," filed January 9,
2017), and the Examiner's Answer ("Ans.," mailed November 7, 2016), and
Final Office Action ("Final Act.," mailed November 13, 2015).
2 "The real party in interest of the present application is Genworth Holdings,
Inc. and its parents and subsidiary companies." App. Br. 1.
Appeal2017-004017
Application 12/509,703
The Appellants invented a way of underwriting insurance applications
based on dominance classification. Spec. para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 42, which is reproduced below (bracketed matter and some
paragraphing added).
42. A computer implemented system that
performs processing to underwrite an insurance
application based on a plurality of previous insurance
application underwriting decisions and first and second
dominated determinations,
the system comprising:
a database that stores a plurality of previous insurance
application underwriting decisions;
a computer server comprising a computing device, the
computer server coupled to the database and programmed to:
[ 1] access, by the computing device from the database, the
plurality of previous insurance application underwriting
decisions, where the plurality of decisions have resulted in the
same classification for respective prior applications to which
the decisions are associated with, the plurality of decisions each
comprise a plurality of features;
[2] receive, via a communication network by the computing
device, a request to underwrite an insurance application, where
the request includes information about at least one application
component;
[3] automatically identify, by the computing device, a first set
comprising at least one of the plurality of previous insurance
application underwriting decisions that is not dominated by any
other of the plurality of previous insurance application
underwriting decisions, such that the first set constitutes a first
subset, the first subset representing the least risky candidates
within a given risk category;
[ 4] automatically identify, by the computing device, a second
set comprising at least one of the plurality of previous insurance
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application underwriting decisions that does not dominate any
of the other of the plurality of previous insurance application
underwriting decisions, such that the second set constitutes a
second subset, the second subset representing the most risky
candidates within the given risk category, the first set and the
second set being constituted by different previous insurance
application underwriting decisions;
[ 5] the first set and the second set associated with respective
prior applications;
and
[ 6] compare, by the computing device, the insurance application
to the first set and the second set;
and
[7] wherein the insurance application comprises a plurality of
features;
and
where the computer server is further programmed to:
[8] compare the at least one feature to a corresponding
feature in the at least one of the plurality of previous
insurance application underwriting decisions in the first
set;
and
[9] compare the at least one feature to a corresponding
feature in the at least one of the plurality of previous
insurance application underwriting decisions in the
second set;
and
where:
[ 10] comparing the at least one feature to a
corresponding feature in the first set further
comprises determining if the at least one feature in
the insurance application is dominated by the
corresponding feature in the first set to generate a
first dominated determination;
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and
[ 11] comparing the at least one feature to a
corresponding feature in the second set further
comprises determining if the at least one feature in
the insurance application is dominated by the
corresponding feature in the second set to generate
a second dominated determination;
[12] each of the comparings including determining whether
each of said feature in the insurance application represents
greater or less risk than the corresponding feature in the first set
or second set, respectively;
[ 13] based on the first and second dominated determinations,
assessing, by the computing device, whether all the features of
the application are dominated by all the corresponding features
of the first set, and the assessing including determining whether
all the features of the application are dominated by all the
corresponding features of the second set;
the computer server is further programmed to:
[ 14] assign, by the computing device, a risk assessment
to the insurance application based on the assessing;
and
[ 15] output, by the computing device, the risk
assessment;
[ 16] wherein the first subset is determined by the computing
device generating a Pareto best subset, such that the first subset
constitutes a Pareto best subset;
and
[ 1 7] wherein the second subset is determined by the computing
device generating a Pareto worst subset, such that the second
subset constitutes a Pareto worst subset.
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Application 12/509,703
Claims 42, 43, and 47--49 stand rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more. 3
Claim 42 stands rejected under statutory double patenting as claiming
the same subject matter as that of claim 1 of U.S. Patent 7,567,914 B2.
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.
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 Claim Construction
01. A Pareto-best subset is the best, non-dominated subset for a given
risk category that contains all such applications that are not
dominated by another application within that risk category. Spec.
para. 168.
02.A Pareto-worst subset is the worst, non-dominated subset for a
given risk category that contains all such applications that are not
3 A rejection under 35 U.S.C. § 112(a) or 35 U.S.C. § 112 (pre-AIA), first
paragraph, as failing to comply with the written description requirement
(Final Act. 3) was withdrawn in an Advisory Action (mailed Feb. 25, 2016).
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Application 12/509,703
dominated by another application within that risk category. Spec.
para. 169.
03. If two insurance applicants A and B are compared where
applicants A and B are identical along all features, except that the
applicant B has a higher BMI than A, then the risk associated with
applicant A cannot be greater than that associated with B. In other
words, the premium associated to the rate class assigned to A
should not be higher than the one assigned to B. The above
reasoning principle is referred to, in decision theory, as the
principle of dominance and in the above example applicant A
dominates applicant B. Spec. para. 148.
ANALYSIS
System claim 42 recites a computer performing a process that includes
accessing previous insurance application underwriting decisions, receiving
an insurance application underwriting request, identifying and comparing
two sets of previous insurance application underwriting decisions that each
meet criteria, determining if a feature and then all of the features in the
insurance application is/are dominated by features in either set, and
assigning a risk assessment to the insurance application. Thus, claim 42
recites retrieving, analyzing, and transmitting data. None of the limitations
recites implementation details for any of these steps, but instead recite
functional results to be achieved by any and all possible means. Data
retrieval, analysis, and transmission are all generic, conventional
data processing operations to the point they are themselves concepts
awaiting implementation details. The sequence of data
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retrieving-analyzing-transmitting is equally generic and conventional.
The ordering of the steps is, therefore, ordinary and conventional. The
remaining claims merely describe analysis parameters, with no
implementation details.
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. Pty. Ltd. v. CLS Bank Intl, 134 S. Ct. 2347, 2355 (2014) (citing
Mayo Collaborative Serv. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine whether the claims at
issue are directed to a patent-ineligible concept. The Examiner finds the
claims directed to underwriting insurance. Final Act. 6.
Although the Court in Alice Corp. Pty. Ltd. made a determination as
to what the claims were directed to, we find that this case's claims
themselves and the Specification provide enough information to inform one
as to what they are directed to.
The preamble to claim 42 recites that it is a system that performs
processing to underwrite an insurance application based on a plurality of
previous insurance application underwriting decisions and first and second
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dominated determinations. The steps in claim 42 result in assigning and
outputting a risk assessment for an insurance application absent any
technological mechanism other than a conventional computer for doing so.
The Specification at paragraph 1 recites that the invention relates to
underwriting insurance applications based on dominance classification.
Thus, all this evidence shows that claim 42 is directed to underwriting
insurance applications based on dominance classification, i.e., underwriting
insurance. This is consistent with the Examiner's finding.
It follows from prior Supreme Court cases, and Bilski (Bilski v
Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
underwriting insurance is a fundamental economic practice long prevalent in
our system of commerce. 4 The use of underwriting insurance is also a
building block of ingenuity in commercial risk assumption, which is itself an
abstract idea. Thus, underwriting insurance, like hedging, is an "abstract
idea" beyond the scope of§ 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at
2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of
underwriting insurance at issue here. Both are squarely within the realm of
4 E.g., Lloyd's of London, Corporate History of 1750 (first underwriting
reference) (https://www .lloyds.com/ about-lloyds/history/ corporate-history)
(last visited Nov. 13, 2018).
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"abstract ideas" as the Court has used that term. See Alice Corp. Pty. Ltd.,
134 S. Ct. at 2357.
Further, claims involving data collection, analysis, and display are
directed to an abstract idea. Elec. Power Grp., LLC v. Alstom S.A., 830 F .3d
1350, 1353 (Fed. Cir. 2016) (holding that "collecting information, analyzing
it, and displaying certain results of the collection and analysis" are "a
familiar class of claims 'directed to' a patent ineligible concept"); see also 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 42, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data retrieval, analysis, and
transmission 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 42 is directed to the abstract idea of retrieving,
analyzing, and transmitting data.
The remaining claims merely describe analysis parameters. We
conclude that the claims at issue are directed to a patent-ineligible concept.
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
the 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
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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 ubiquity of computers, wholly
generic 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] itself."
Alice Corp. Pty. Ltd., 134 S. Ct. at 2358 (internal 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 Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for retrieving, analyzing, and transmitting data amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
conventional activities previously known to the industry. See Elec. Power
Grp. v. Alstom S.A., supra. Also see In re Katz, 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"). 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) (internal citation omitted).
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Considered as an ordered combination, the computer components of
Appellants' claims add nothing that is not already present when the steps are
considered separately. The sequence of data retrieving-analyzing-
transmitting is equally generic and conventional or, otherwise, held to be
abstract. 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.
Viewed as a whole, Appellants' claims simply recite the concept of
underwriting insurance as performed by a generic computer. To be sure, the
claims recite doing so by advising one to use the observed relationship
between features in the instant application and those in two reference sets of
policies in making a risk assessment. But this is no more than abstract
conceptual advice on the parameters for such underwriting insurance and the
generic computer processes necessary to process those parameters, and does
not recite any particular implementation.
The claims do not, for example, purport to improve the functioning of
the computer itself. Nor do they effect an improvement in any other
technology or technical field. The Specification spells out different generic
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equipment5 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of underwriting insurance under different scenarios. They do not
describe any particular improvement in the manner a computer functions.
Instead, the claims at issue amount to nothing significantly more than an
instruction to apply the abstract idea of underwriting insurance using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice Corp.
Pty. Ltd., 134 S. Ct. at 2360.
As to the structural claims, they
are no different from the [comparable] 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 Corp. Pty. Ltd., 134 S. Ct. at 2360 (internal citation omitted).
As to Appellants' Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from the Final Office Action at pages 3-7 and
the Examiner's Answer at pages 3-13 and reach similar legal conclusions.
We now tum to the Reply Brief.
We are not persuaded by Appellants' argument that "the ordered
combination of the claim elements results in significantly more than an
5 The Specification describes the computer as a standard computer
comprising an input device, an output device, a processor device, and a data
storage device. Spec. para. 278.
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abstract idea. Notably, the claims are not simply directed to automating a
known process." Reply Br. 3. Appellants then cite each of the steps in the
claim. As to whether the process is known or not, "[a] claim for a new
abstract idea is still an abstract idea. The search for a § 101 inventive
concept is thus distinct from demonstrating§ 102 novelty." Synopsys, Inc.
v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). As we
determine supra, all of the recited steps are conventional data retrievals,
comparisons and other forms of data analysis, and transmission. Such
claims are directed to an abstract idea. See Elec. Power Grp. v. Alstom S.A.,
supra.
We are not persuaded by Appellants' argument that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit's findings in BASCOM
(BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Reply Br. 3-5. Initially, we remind Appellants that BASCOM did
not find claims eligible on the substance, but rather that the Appellees did
not provide sufficient evidence to support a 12(b )( 6) motion to dismiss in
which facts are presumed in the non-movant's favor.
The key fact in BASCOM was the presence of a structural change in
"installation of a filtering tool at a specific location, remote from the
end-users, with customizable filtering features specific to each end user.
This design gives the filtering tool both the benefits of a filter on a local
computer and the benefits of a filter on the ISP server." BASCOM, 827 F.3d
at 1350. The instant claims have no analogous structural benefit.
Appellants point to "processing to underwrite an insurance application based
on a plurality of previous insurance application underwriting decisions and
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first and second dominated determinations." Reply Br. 4, id. As we
determined supra, this is no more than conventional data reads, writes, and
analysis. At best, this includes a novel algorithm, which is itself an
abstraction.
We are not persuaded by Appellants' argument that the claims would
not preempt the idea. Reply Br. 5. "Where a patent's claims are deemed
only to disclose patent ineligible subject matter under the Mayo[/Alice]
framework, as they are in this case, preemption concerns are fully addressed
and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015).
Claim 42 rejected under statutory double patenting as claiming the same
subject matter as that of claim 1 of US. Patent 7,567,914 B2
We summarily affirm this uncontested rejection.
CONCLUSIONS OF LAW
The rejection of claims 42, 43, and 47--49 under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more is proper.
The rejection of claim 42 under statutory double patenting as claiming
the same subject matter as that of claim 1 of U.S. Patent 7,567,914 B2 is
proper.
DECISION
The rejections of claims 42, 43, and 47--49 are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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