Ramsey Devereaux et al.

Patent Trials and Appeals Board

Jul 22, 2019

14572413 - (D) (P.T.A.B. Jul. 22, 2019)

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.
14/572,413 12/16/2014 Ramsey Devereaux US-1043.01|USCO:0305 5692
130735 7590 07/22/2019
Fletcher Yoder PC / USAA
P.O. Box 692289
Houston, TX 77269
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
07/22/2019 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):
docket@fyiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RAMSEY DEVEREAUX, DAVID C. AULT,
CHRISTINA N. NICKEL, ELIZABETH J. RUBIN,
DANIELA WHEELER, JUSTIN D. HASLAM, THUY HUGOS,
SPENCER READ, and ANN C. TARRILLION
____________

Appeal 2018-009188
Application 14/572,4131
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

SILVERMAN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision rejecting claims 1, 3–13, and 15–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 The Appellants identify United Services Automobile Association as the
real party in interest. Appeal Br. 1.
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ILLUSTRATIVE CLAIM
1. A computer system for processing insurance data,
comprising:
a memory configured to store instructions; and
a processor disposed in communication with the memory,
wherein upon execution of the instructions is configured to:
receive a budget amount associated with operating
a property for a predetermined period of time;
receive informatic data from at least one sensor
device relating to a utility operation of the property;
apply predefined business rules to the informatic
data to determine an operational aspect associated with
the utility operation of the property;
compare the determined operational aspect to the
budget amount;
identify an adjustment to the utility operation of
the property, for the predetermined period of time, to
reconcile the operational aspect with the budget amount;
identify a controller device governing the utility
operation for the property;
determine an instruction for the controller device
to implement the adjustment to the utility operation for
the predetermined period of time; and
transmit the command to the controller device.
REJECTIONS
Although we alter the ordering that is employed in the Final Office
Action (pages 2–7), the following rejections are at issue in the present
Appeal.
I. Claims 1, 3–13, and 15–20 are rejected under 35 U.S.C. § 101
as ineligible subject matter.
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II. Claims 1, 3–13, and 15–202 are rejected under 35 U.S.C.
§ 112(a)3 as failing to comply with the written-description requirement.
III. Claims 1, 3–13, and 15–20 are rejected under 35 U.S.C.
§ 112(b) as being indefinite for failing to particularly point out and distinctly
claim the subject matter that the Appellants regard as the invention.
RELATED CASES
We note that at the time the Appeal Brief was filed in the present case,
Notices of Appeal had been filed in at least two related U.S. patent
applications: 14/303,336 (Appeal 2018-001359) and 14/273,889 (Appeal
2018-004448). Appellants fail to cite these cases as related Appeals as
required by 37 C.F.R. § 41.37(c)(ii). We remind Appellants and counsel to
review pending proceedings before the Board, so as to ensure that all related
Appeals are identified.
FINDINGS OF FACT
The findings of fact relied upon, which are supported by a
preponderance of the evidence, appear in the following Analysis.
ANALYSIS
Subject-Matter Eligibility
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.”

2 The Final Office Action (page 3) states that only independent claims 1
and 13 are rejected for violating provisions of 35 U.S.C. § 112. Because
such defects would also apply to claims depending therefrom, we include
such dependent claims in Rejections II and III.
3 We cite the AIA version of 35 U.S.C. § 112 herein, because the filing date
of the Application under review is later than the effective date of Section
4(c) of the Leahy-Smith America Invents Act (AIA) (September 16, 2012).
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35 U.S.C. § 101. Yet, subject matter belonging to any of the statutory
categories may, nevertheless, be ineligible for patenting. The Supreme
Court has interpreted § 101 to exclude laws of nature, natural phenomena,
and abstract ideas, because they are regarded as the basic tools of scientific
and technological work, such that including them within the domain of
patent protection would risk inhibiting future innovation premised upon
them. Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013).
Of course, “[a]t some level, ‘all inventions . . . embody, use, reflect,
rest upon, or apply’” these basic tools of scientific and technological work.
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (internal citation
omitted). Accordingly, evaluating ineligible subject matter, under these
judicial exclusions, involves a two-step framework for “distinguish[ing]
between patents that claim the buildin[g] block[s] of human ingenuity and
those that integrate the building blocks into something more, thereby
transform[ing] them into a patent-eligible invention.” Id. (internal quotation
marks and citation omitted). The first step determines whether the claim is
directed to judicially excluded subject matter (such as a so-called “abstract
idea”); the second step determines whether there are any “additional
elements” recited in the claim that (either individually or as an “ordered
combination”) amount to “significantly more” than the identified judicially
excepted subject matter itself. Id. at 217–18.
The USPTO recently published revised guidance on the application of
§ 101, in accordance with judicial precedent. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50, 52 (Jan. 7, 2019) (“2019
Revised Guidance”). Under the 2019 Revised Guidance, a claim is “directed
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to” an abstract idea, only if the claim recites any of (1) mathematical
concepts, (2) certain methods of organizing human activity, and (3) mental
processes — without integrating such abstract idea into a “practical
application,” i.e., without “apply[ing], rely[ing] on, or us[ing] 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.” Id. at 52–55. The considerations
articulated in MANUAL OF PATENT EXAMINING PROCEDURE § 2106.05(a)–(c)
and (e)–(h) (“MPEP”) bear upon whether a claim element (or combination
of elements) integrates an abstract idea into a practical application. Id. at 55.
A claim that is “directed to” an abstract idea constitutes ineligible subject
matter, unless the claim recites an additional element (or combination of
elements) amounting to significantly more than the abstract idea. Id. at 56.
Although created “[i]n accordance with judicial precedent” (id. at 52),
the 2019 Revised Guidance enumerates the analytical steps differently than
the Supreme Court’s Alice opinion. Step 1 of the 2019 Revised Guidance
addresses whether the claimed subject matter falls within any of the statutory
categories of § 101. Id. at 53–54. Step 2A, Prong One, concerns whether
the claim at issue recites ineligible subject matter and, if an abstract idea is
recited, Step 2A, Prong Two, addresses whether the recited abstract idea is
integrated into a practical application. Id. at 54–55. Unless such integration
exists, the analysis proceeds to Step 2B, in order to determine whether any
additional element (or combination of elements) amounts to significantly
more than the identified abstract idea. Id. at 56.
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In the present Appeal, there is no dispute that the claims satisfy Step 1
of the 2019 Revised Guidance — i.e., that the claims are drawn to subject
matter within the scope of § 101.
In relation to Step 2A, Prong One, of the 2019 Revised Guidance, we
note that the Examiner states that claim 1’s limitations of “receive a budget
amount associated with operating a property for a predetermined period of
time” and “receive informatic data from at least one sensor device relating to
a utility operation of the property” describe ideas “analogous to the basic
concepts of data recognition and storage,” pointing out that the Examiner
treats “data, including when limited to a particular context (which does not
change its character as data), as within the realm of the abstract ideas.”
Final Action 5 (citing Content Extraction & Transmission LLC v. Wells
Fargo Bank, 776 F.3d 1343 (Fed. Cir. 2014)). The Examiner also addresses
claim 1’s limitations of “apply predefined business rules to the informatic
data to determine an operational aspect associated with the utility operation
of the property,” “compare the determined operational aspect to the budget
amount,” “identify an adjustment to the utility operation of the property, for
the predetermined period of time, to reconcile the operational aspect with the
budget amount,” “identify a controller device governing the utility operation
for the property,” “determine an instruction for the controller device to
implement the adjustment to the utility operation for the predetermined
period of time,” and “transmit the command to the controller device,” stating
that these limitations
describe idea(s) which are analogous to the basic concepts of
collecting information, analyzing the collected information, and
displaying (transmitting) certain results (Electric Power Group
LLC, organizing human activity (i.e., human analog that can be
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performed by hand or by merely thinking) (Alice Corp. Pty. Ltd
v CLS Bank lnter’l), and a fundamental economic practice
(Alice Corp. Pty. Ltd v CLS Bank lnter’l) all of which have
been found by the courts to be an abstract idea. Additionally,
the transmitting step can be considered an extra solution
activity any general purpose computer can perform.
As an ordered combination, the claims are directed
toward identifying operational changes for an insured property
so as to reconcile with a budget amount which is analogous to
organizing human activity (activities which can be performed
mentally by a human using a pencil and paper) and to the
fundamental economic practices found to be abstract ideas by
the courts (Alice Corp. Pty. Ltd v CLS Bank lnter’l, Bilski v
Kappos, buySAFE, Inc. v Google, Inc, Ultramercial, LLC v
Hulu). Thus the concept(s) described in the claimed invention
is [sic] not meaningfully different than those concepts found by
the courts to be abstract ideas.
Id. at 5–6.
Yet, the rejection does not fairly characterize claim 1’s limitations of
“receive a budget amount associated with operating a property for a
predetermined period of time” and “receive informatic data from at least one
sensor device relating to a utility operation of the property” as merely “data
recognition and storage” (id. at 5). Nor are the other identified claim
limitations fairly reduced to simply “collecting information, analyzing the
collected information, and displaying (transmitting) certain results” or (if the
limitations of claim 1 were regarded as an “ordered combination” thereof)
simply “identifying operational changes for an insured property so as to
reconcile with a budget amount.” Id. at 5–6. Indeed, our reviewing court
has cautioned that one “‘must be careful to avoid oversimplifying the
claims’ by looking at them generally and failing to account for the specific
requirements” therein. McRO, Inc. v. Bandai Namco Games Am. Inc., 837
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F.3d 1299, 1313 (Fed. Cir. 2016) (quoting In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) and citing Diamond v. Diehr, 450
U.S. 175, 189 n.12 (1981)).
Accordingly, the rejection does not adequately indicate that claim 1
recites a judicial exception, within the meaning of the 2019 Revised
Guidance (84 Fed. Reg. at 52), such that the rejection errs in the analysis
corresponding to Step 2A, Prong One, of the 2019 Revised Guidance.
The Examiner applies the analysis of claim 1 to the other claims in the
Appeal. See Final Action 5–7. Therefore, in view of the foregoing, we do
not sustain the rejection of claims 1, 3–13, and 15–20 under 35 U.S.C.
§ 101.
Written Description
Pursuant to the written-description requirement of 35 U.S.C. § 112(a),
“the test for sufficiency is whether the disclosure of the application relied
upon reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co, 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc) (citations omitted). “[T]he level of detail required to satisfy the
written description requirement varies depending on the nature and scope of
the claims and on the complexity and predictability of the relevant
technology.” Id. (citation omitted).
According to the Final Office Action (page 3), the Specification lacks
adequate support for independent claim 1’s recited “determine an instruction
for the controller device to implement the adjustment to the utility operation
for the predetermined period of time” and for the corresponding feature of
independent claim 13.
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The Appellants submit that the following portion of the Specification
provides the requisite written-description support for the claim limitation in
question:
Insurance server 106 may also be configured and operational to
adjust one or more operational aspects of the insured
property 300 so as to reconcile its operating costs with a
budgeted amount as described above. For instance, once it is
determined certain thermostat adjustments are to be made in
insured property 300 during certain time periods, insurance
server . . . 106, via network 100, communicates and controls
one or more thermostat devices located in the insured
property 300 to the affect the determined adjustments. As
another example, insurance server 106, via network 100,
communicates and controls one or more water flow devices
in the insured property 300 to reduce water flow to a
prescribed value. It is to be understood and appreciated
insurance server 106 is preferably configured and operational to
control any device 15 and/or appliance having an operating
adjustment mechanisms susceptible to remote adjustment
by insurance server 106, preferably via network 100.
Appeal Br. 4 (quoting Spec. 27, ll. 6–16) (Appellants’ emphases).
The Examiner’s Answer responds by stating that “[t]he present
application does not sufficiently identify how the function of ‘determine an
instruction for the controller device to implement the adjustment to the
utility operation for the predetermined period of time’ is performed or result
is achieved.” Answer 3–4. The Examiner’s Answer further states that
“none” of the portions of the Specification cited by the Appellants, in the
Appeal Brief, “provide an algorithm or steps/procedures for performing the
functions and the functions are not explained at all or are not explained in
sufficient detail.” Id. at 4. “For example,” the Answer continues,
there is no specific discussion of how the determination of the
instruction is generated for a specific controller, there is no
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mention of specific controller devices (merely the use of
generic terms such as thermostats and water flow devices), or
any mention of the protocol and transmission medium used for
transmitting the instruction to the controllers. Merely stating
that one skilled in the [sic] could implement or would know
how to implement a function is not enough to show possession
of a claimed invention.
Id.
Yet, the Examiner does not adequately establish that the absence of
the identified additional implementation details, which are not set forth in
the claims, indicates that the Appellants did not possess the claimed subject
matter, as of the critical date.
Accordingly, we are persuaded of error and do not sustain the
rejection of claims 1, 3–13, and 15–20 under 35 U.S.C. § 112(a) as failing to
comply with the written-description requirement.
Indefiniteness
The Final Office Action (page 3) rejects independent claims 1 and 13
for failing to comply with the definiteness requirement of 35 U.S.C.
§ 112(b), because the claim term “the command” lacks sufficient antecedent
basis.
The Appellants do not dispute the propriety of the rejection — instead
stating that the expression “‘the command’ can be modified to ‘the
instruction’ in a subsequent filing to correct to antecedent basis issues.”
Appeal Br. 3.
Because the Appellants present no argument disputing the Examiner’s
determination, we summarily sustain the rejection of independent claims 1
and 13, along with dependent claims 3–12 and 15–20, under 35 U.S.C.
§ 112(b).
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DECISION
We REVERSE the Examiner’s decision rejecting claims 1, 3–13, and
15–20 under 35 U.S.C. § 101.
We REVERSE the Examiner’s decision rejecting claims 1, 3–13, and
15–20 under 35 U.S.C. § 112(a).
We AFFIRM the Examiner’s decision rejecting claims 1, 3–13, and
15–20 under 35 U.S.C. § 112(b).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED