Ramsey Devereaux et al.Download PDFPatent Trials and Appeals BoardJul 22, 201914572413 - (D) (P.T.A.B. Jul. 22, 2019) Copy Citation 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. Appeal 2018-009188 Application 14/572,413 2 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. Appeal 2018-009188 Application 14/572,413 3 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). Appeal 2018-009188 Application 14/572,413 4 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 Appeal 2018-009188 Application 14/572,413 5 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. Appeal 2018-009188 Application 14/572,413 6 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 Appeal 2018-009188 Application 14/572,413 7 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 Appeal 2018-009188 Application 14/572,413 8 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. Appeal 2018-009188 Application 14/572,413 9 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 Appeal 2018-009188 Application 14/572,413 10 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). Appeal 2018-009188 Application 14/572,413 11 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 Copy with citationCopy as parenthetical citation