Reynaldo Medina et al.

Patent Trials and Appeals Board

Sep 24, 2019

14199829 - (D) (P.T.A.B. Sep. 24, 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.
14/199,829 03/06/2014 Reynaldo Medina III US-0451.06 | 59197.21716 6454
122328 7590 09/24/2019
BakerHostetler / USAA
1050 Connecticut Avenue, N.W., Suite 1100
Washington, DC 20036
EXAMINER
FU, HAO
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
09/24/2019 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):
eofficemonitor@bakerlaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte REYNALDO MEDINA III, CHARLES LEE OAKES,
BRADLY JAY BILLMAN, and MICHAEL PATRICK BUECHE JR.
____________

Appeal 2018-004319
Application 14/199,829
Technology Center 3600
____________

Before MAHSHID D. SAADAT, KEVIN F. TURNER, and
JOHN A. EVANS, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 21, 29, 30, 34, 36–38, and 41–54, which constitute
all the claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.

1 Appellant identifies United Services Automobile Association of San
Antonio, TX, as the real party in interest. Appeal Br. 1.
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STATEMENT OF CASE
Introduction
Appellant’s Specification describes systems and methods for
“automobile accident claims initiation” by using a mobile device where the
provided data may be analyzed to verify or derive further information and be
used for arranging services for the insured. See Spec. ¶¶ 3–4.
Exemplary claim 21 under appeal reads as follows;
21. A method comprising:
determining, at a system comprising a server
communicatively coupled to a network, that an accident claims
initiation application on a mobile device associated with a user
has been activated, wherein the accident claims initiation
application is activated based on at least one detection device
on a first vehicle communicating to the mobile device that the
first vehicle has been in an accident;
establishing a network connection with the mobile device
based on the determination that the accident claims initiation
application has been activated;
receiving, from the mobile device through the network
connection, image data indicative of a portion of a license plate
associated with a second vehicle;
determining the portion of a license plate number of the
license plate based on analysis of the received image data;
identifying, based on the portion of the license plate
number, a legal status of the second vehicle, the legal status
comprising at least one of a stolen status, an inspection status,
or an owner registration status;
receiving, from the mobile device through the network
connection, an identification of a driver of the second vehicle;
determining an authenticity of the identification of the
driver based on the identification of the driver and the portion
of the license plate number;
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causing an indication of the legal status and an indication
of the authenticity of the identification of the driver to be
rendered on the mobile device; and
causing a plurality of selectable options to be rendered on
the mobile device, the plurality of selectable options based at
least on the portion of the license plate number and the plurality
of selectable options comprising at least one of an initiate claim
option, a contact law enforcement option, or a request rental
vehicle option.
Rejection on Appeal
Claims 21, 29, 30, 34, 36–38, and 41–54 stand rejected under
35 U.S.C. § 101 for being directed to patent-ineligible subject matter. See
Final Act. 11–19.

ANALYSIS
Principles of Law
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (citation omitted).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
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intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding . . . rubber products” (Diamond v. Diehr, 450 U.S. 175,
193 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
(15 How.) 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S.
at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “a claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
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commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent protection.”
(emphasis omitted)).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The USPTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (hereinafter “Guidance”). Under the Guidance, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (9th ed.
2018).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
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(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance. Patent eligibility under 35 U.S.C. § 101 is a question of law
that is reviewable de novo. See Dealertrack, Inc. v. Huber, 674 F.3d 1315,
1333 (Fed. Cir. 2012).
Arguments
The Examiner determines that the claims are directed to non-statutory
subject matter. Final Act. 11. The Examiner finds:
In the instant case, the claims are directed towards initiating an
insurance claim. Initiating an insurance claim is a fundamental
economic practice and “an idea of itself”, thus the claims
include an abstract idea. The claims do not include limitations
that are “significantly more” than the abstract idea because the
claims do not include an improvement to another technology or
technical field, an improvement to the functioning of the
computer itself, or meaningful limitations beyond generally
linking the use of an abstract idea to a particular technological
environment. Note that the limitations, in the instant claims,
are done by the generically recited mobile device. The
limitations are merely instructions to implement the abstract
idea on a computer and require no more than a generic
computer to perform generic computer functions that are well-
understood, routine and conventional activities previously
known to the industry.
Final Act. 11–12. The Examiner specifically finds the recited claim steps
“describe an automated process of insurance claiming process, which was
previously done without computer (i.e. using telephone, fax, and mail to
communicate and submit claim information).” Final Act. 13. With respect
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to the additional elements and whether they amount to significantly more
than the judicial exception, the Examiner finds “[t]he recitation of the
computer limitations amounts to mere instructions to implement the abstract
idea on a computer. Taking the additional elements individually and in
combination, the computer components at each step of the process perform
purely generic computer functions.” Final Act. 15.
Appellant argues that the claimed invention is not directed to an
abstract idea because limitations such as “‘determining . . . that an accident
claims initiation application on a mobile device associated with a user’” and
“causing a plurality of selectable options to be rendered on the mobile
device” cannot be performed without technology or in human mind with pen
and paper. Appeal Br. 9–10. According to Appellant, the claims require
“non-generic technology” such as the “‘detection device’ on a vehicle that is
configured to determine the occurrence of an accident and to communicate
with a mobile device.” Appeal Br. 11.
Step 2A, Prong One – Recited Judicial Exception
Step 2A of the Guidance is a two-prong inquiry. In Prong One we
evaluate whether the claim recites a judicial exception. For abstract ideas,
Prong One represents a change as compared to prior guidance because we
here determine whether the claim recites mathematical concepts, certain
methods of organizing human activity, or mental processes.
We conclude at least the following limitation of claim 1 recites a
mental process that practically could be performed via pen and paper or in a
person’s mind:
receiving, . . ., image data indicative of a portion of a
license plate associated with a second vehicle;
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determining the portion of a license plate number of the
license plate based on analysis of the received image data;
identifying, based on the portion of the license plate
number, a legal status of the second vehicle, the legal status
comprising at least one of a stolen status, an inspection status,
or an owner registration status;
receiving, from the mobile device through the network
connection, an identification of a driver of the second vehicle;
determining an authenticity of the identification of the
driver based on the identification of the driver and the portion
of the license plate number;
. . . .
Appeal Br. 13 (Claim App.). We agree with the Examiner that:
The claimed process is very similar to conventional insurance
claiming process via telephone, which has been a long standing
practice. In traditional insurance claim process, a claimant calls
a human agent of an insurance company to provide information
related to parties involved in the accident, including the license
plate number and driver identification number of both parties,
the agent looks up a database to determine the authenticity of
the information and reports the results to the claimant and then
provides assistance options to the claimant over the phone. The
present claimed process merely changes the communication
device from a telephone to a mobile device and automates
known manual process.
Ans. 4. Other than reciting “from the mobile device through the network”
and “causing a plurality of selectable options to be rendered on the mobile
device,” the claim includes nothing that could not be performed manually
and in the human mind. Appellant’s Specification describes that the recited
systems and methods facilitate the collection of insurance claim data, which
may be difficult when the insured is involved in an accident. Spec. ¶¶ 9–10.
Therefore, contrary to Appellant’s argument that “the technological
limitations of the claims are not fundamental economic practices simply
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being performed on a computer” (see Appeal Br. 10), claim 21, as a whole,
is directed to collecting information related to an accident which facilitates
initiating a claim and taking appropriate actions. See Spec. ¶¶ 37–39.
Additionally, we conclude that claim 21 recites a fundamental
economic practice, such as “determining . . . an accident claims initiation
application” and collecting and analyzing information related to the vehicles
involved in an accident for identifying options for the insured. Appeal Br.
13 (Claims App.). Thus, we conclude the claim recites a method of
fundamental economic principles or practices (including hedging, insurance,
mitigating risk) and commercial or legal interactions (including agreements
in the form of contracts; legal obligations; advertising, marketing or sales
activities or behaviors; business relations), which also fall within the “certain
methods of organizing human activity” category of abstract ideas
enumerated in the Guidance. See also Ans. 6 (determining “initiating an
insurance claim via mobile device, which is an automated version of a
longstanding economic practice of initiating claim via telephone”). Our
reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
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Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
Similar limitations are recited in claim 29 (“a system comprising a
processor” for performing the above-discussed functions) and claim 37 (“a
non-transitory computer-readable medium comprising instructions” for
performing the above-discussed functions).
Because we conclude the independent claims recite an abstract idea,
we proceed to Prong Two to determine whether the claims are “directed to”
the judicial exception.
Step 2A, Prong Two –Practical Application
If a claim recites a judicial exception, in Prong Two we determine
whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and
(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
If the recited judicial exception is integrated into a practical application, the
claim is not directed to the judicial exception.
Here, claim 21 recites the additional elements of “causing an
indication of the legal status and an indication of the authenticity of the
identification of the driver to be rendered on the mobile device” and
“causing a plurality of selectable options to be rendered on the mobile
device, the plurality of selectable options based at least on the portion of the
license plate number and the plurality of selectable options comprising at
least one of an initiate claim option, a contact law enforcement option, or a
request rental vehicle option,” which allow an insured to choose the
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appropriate actions following an accident. Although we agree with the
Examiner that “merely utilizing mobile device’s basic function of
transmitting information via network to automate a longstanding manual
practice” used for “determining an authenticity of the identification of the
driver” without specifying a particular algorithm “is simply automating
mental task[s]” (Ans. 9–10), Appellant’s Specification describes the claimed
steps facilitate the claim processing or recovery from the accident. Spec.
¶ 38. The disclosed process responds to the need for accident claim
initiation when an application on the mobile device requests and transmits
data which is analyzed to provide helpful options to the insured, such as
insurance agent information, rental car information, or request for
emergency services. Spec. ¶¶ 41–45, 53–59 (describing the details of
data/image collection and analysis).
Considering claim 21 as a whole, the above-mentioned limitations do
“integrate[] a judicial exception into a practical application . . . [in that they]
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit[ation] on the judicial exception, such that the claim is more
than a drafting effort designed to monopolize the judicial exception.”
Guidance at 53. Specifically, the manner in which an indication of the legal
status and authenticity of the identification of the driver is rendered on the
mobile device and rendering a plurality of selectable options on the mobile
device, . . . comprising at least one of an initiate claim option, a contact law
enforcement option, or a request rental vehicle option, amounts to more than
the mere manipulation of data. See MPEP 2106.05(c). In fact, the recited
“rendering” steps are the types of functions more typical of computer
operations, as opposed to human activity. The human analogy equivalent
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would be an individual performing all the data collection, analysis, and
presenting options on the insured mobile device or another graphical
representation, which is plausible, but far-fetched given the technical nature
of the claimed steps in light of the Specification.
In summary, the above-discussed limitations result in a claim
initiation process which renders the information and selectable options on
the insured mobile device, and amounts to more than the mere manipulation
of data. See MPEP § 2106.05(c) (“Particular Transformation”). Thus, we
conclude that claim 21 recites additional elements that integrate the abstract
idea into a practical application. Claims 29 and 37 similarly integrate the
abstract idea into a practical application. Because claims 21, 29, and 37
integrate the recited judicial exception into a practical application, they are
not “directed to” a judicial exception and, therefore, our inquiry ends.

Conclusion
For at least the above reasons, under the Guidance, we do not sustain
the Examiner’s § 101 rejection of independent claims 21, 29, and 37, as well
as the Examiner’s rejection of dependent claims 30, 34, 36, 38, and 41–54,
which stand with the independent claims from which they depend.

DECISION
We reverse the Examiner’s rejection of claims 21, 29, 30, 34, 36–38,
and 41–54 under 35 U.S.C. § 101.
In summary:

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Claims
Rejected
Basis  Affirmed Reversed
21, 29, 30, 34, 36–
38, and 41–54
§ 101  21, 29, 30, 34,
36–38, and 41–54

REVERSED