Sushmita Biswas et al.

Patent Trials and Appeals Board

Aug 5, 2019

14214052 - (D) (P.T.A.B. Aug. 5, 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.
14/214,052 03/14/2014 Sushmita Biswas 055478/511970 2598
826 7590 08/05/2019
ALSTON & BIRD LLP
BANK OF AMERICA PLAZA
101 SOUTH TRYON STREET, SUITE 4000
CHARLOTTE, NC 28280-4000
EXAMINER
KING JR., JOSEPH W
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
08/05/2019 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):
usptomail@alston.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SUSHMITA BISWAS and NEHA AGARWAL
____________________

Appeal 2017-011610
Application 14/214,052
Technology Center 3600
____________________

Before BETH Z. SHAW, ADAM J. PYONIN, and NABEEL U. KHAN,
Administrative Patent Judges.

SHAW, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a rejection of
claims 8–15 and 17–20 (“appealed claims”). Claims 1–7 are withdrawn. We
have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
INVENTION
The appealed claims are directed to procuring home repair services
using e-commerce. Spec. p. 1. Claim 8, reproduced below, is illustrative of
the claimed subject matter:

1 Appellant identifies Liberty Mutual Insurance Company, as the real party
in interest. App. Br. 1.
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8. A method comprising:
receiving a notification that a customer has navigated to a
website for repair of a home;
performing analytics to predict repair for the customer by
analyzing data on interiors of the home, including type of
material used, age of flooring, roofing, paint, and past repairs in
the home, as well as data on local climate, rainfall, humidity,
wind, and past repairs in a geographic area;
presenting a result of the analytics and a menu of home
repair services to the customer;
displaying a menu of different types of materials to the
customer for the repair;
electronically ranking contractors based on customer
feedback, quality assurance ratings from home repair
inspectors, and adherence to service agreements; and
showing a list of ranked contractors to the customer for
selection of a contractor to commence the repair.

REJECTIONS
The Examiner rejected the appealed claims under 35 U.S.C. § 101. In
the Answer, the Examiner withdrew a rejection of the appealed claims under
35 U.S.C. § 112. Ans. 3.

CONTENTIONS AND ANALYSIS
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
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the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “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.” Alice, 573 U.S. at 217 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claims for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Eligibility Guidance”). Under the guidance, to decide
whether a claim is “directed to” an abstract idea, we evaluate whether the
claim (1) recites an abstract idea grouping listed in the guidance and (2) fails
to integrate the recited abstract idea into a practical application. See 2019
Eligibility Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an
abstract idea, as noted above, we then determine whether the claim recites an
inventive concept. The guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” 2019 Eligibility Guidance, 84 Fed. Reg. at 56.
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With these principles in mind, we turn to the Examiner’s § 101
rejection.
Abstract Idea
We first address independent claim 8.
The steps of claim 8, including, with italics added:
receiving a notification that a customer has navigated to a
website for repair of a home;
performing analytics to predict repair for the customer by
analyzing data on interiors of the home, including type of material
used, age of flooring, roofing, paint, and past repairs in the home, as
well as data on local climate, rainfall, humidity, wind, and past
repairs in a geographic area;
presenting a result of the analytics and a menu of home repair
services to the customer;
displaying a menu of different types of materials to the
customer for the repair;
electronically ranking contractors based on customer feedback,
quality assurance ratings from home repair inspectors, and adherence
to service agreements; and
showing a list of ranked contractors to the customer for
selection of a contractor to commence the repair

recite steps of “receiving a notification,” “performing analytics to predict
repair” by analyzing various types of data, “presenting a result” “ranking
contractors” and showing the list of ranked contractors to the customer. The
claimed invention is described in the Specification as useful for procuring
“home repair services.” Spec. p. 1. The system uses analytics to rank
contractors based on customer feedback, quality assurance ratings from
home repair inspectors, and adherence to service agreements. Claims App’x.
That is, the method ranks contractors and shows the list to the customer.
Claim 8 is thus similar to claims that courts have concluded recite a
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fundamental economic practice. See, e.g., Bilski v. Kappos, 561 U.S. 593,
611 (2010) (determining that hedging risk is a “fundamental economic
practice long prevalent in our system of commerce” (citation omitted));
Alice, 573 U.S. at 219–20 (determining that intermediated settlement is a
fundamental economic practice); see also 2019 Eligibility Guidance, 84 Fed.
Reg. at 52 n.13.
Indeed, the Federal Circuit has determined that many patents relate to
“a fundamental economic practice long prevalent in our system of
commerce.” Alice, 576 U.S. 208 at 219 (quoting Bilski, 561 U.S. at 611);
see, e.g., Intellectual Ventures I LLC v. Capital One Bank, 792 F.3d 1363
(Fed. Cir. 2015) (an advertisement taking into account the time of day and
tailoring the information presented to the user based on that information is
another “fundamental . . . practice long prevalent in our system”); Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017) (patent
claims directed to system and method for providing financing to allow a
customer to purchase a product selected from an inventory of products
maintained by a dealer patent-ineligible as directed to the abstract idea of
processing an application for financing a purchase, an economic practice
long prevalent in commerce). Procuring home repair services by selecting a
contractor is a fundamental economic practice.
Accordingly, claim 8 recites an abstract idea because the claim recites
a certain methods of organizing human activity, one of the abstract idea
groupings listed in the 2019 Eligibility Guidance. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 52, 53 (listing “[c]ertain methods of organizing
human activity—fundamental economic principles or practices (including
hedging, insurance, mitigating risk; commercial or legal interactions
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(including agreements in the form of contracts; legal obligations;
advertising, marketing or sales activities or behaviors; business relations);
managing personal behavior or relationships or interactions between people
(including social activities, teaching, and following rules or instructions)” as
one of the “enumerated groupings of abstract ideas”).
Claim 8 also recites another abstract idea grouping listed in the 2019
Eligibility Guidance: “mental processes.” See 2019 Eligibility Guidance, 84
Fed. Reg. at 52, 53 (listing “[m]ental processes—concepts performed in the
human mind (including an observation, evaluation, judgment, opinion)” as
one of the “enumerated groupings of abstract ideas” (footnote omitted)). The
guidance explains that “mental processes” include acts that people can
perform in their minds or using pen and paper, even if the claim recites that
a generic computer component performs the acts. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its broadest reasonable
interpretation, covers performance in the mind but for the recitation of
generic computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the mind.”); see
also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318
(Fed. Cir. 2016) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”), quoted in
2019 Eligibility Guidance, 84 Fed. Reg. at 52 n.14.
The method recited in claim 8 executes steps that people can perform
in their minds or using pen and paper. A person can perform the “performing
analytics” step by using his mind (or pen and paper) to “analyzing data on
interiors of the home.” A person can rank “contractors based on customer
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feedback, quality assurance ratings from home repair inspectors, and
adherence to service agreements,” using his mind or pen and paper.
The remaining elements recited in claim 8 do not integrate these
abstract ideas into a practical application. In addition to the steps discussed
above, claim 8 recites “a website,” “electronically,” ranking contractors, and
“displaying.” The written description discloses that the recited website and
display encompass generic components. See, e.g., Spec. 3:23–24. (“The
home repair service computer 106 has a hardware structure that is capable of
presenting home repair service options to the customer 102.”). Simply
programming a general-purpose computer to perform abstract ideas does not
integrate those ideas into a practical application. See 2019 Eligibility
Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to
implement an abstract idea on a computer” as an example of when an
abstract idea has not been integrated into a practical application).
Appellant’s arguments do not persuade us claim 8 is “directed to” a
patent-eligible concept. As for Appellant’s argument that claim 8 does not
raise preemption concerns (App. Br. 26), even if the claim does not preempt
all ways of showing a list of ranked contractors to a customer, this fact does
not make the claim any less abstract. See, e.g., OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”). We therefore find this argument unpersuasive.
As for Appellant’s argument that the system leads to improved “costs,
timeliness, and better quality” (App. Br. 18, 24, 36), even assuming, without
deciding, that claimed invention can rank contractors faster than doing so
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manually, any speed increase comes from the capabilities of the generic
computer components—not the recited process itself. See FairWarning IP,
LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing
Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d
1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could
be performed more efficiently via a computer does not materially alter the
patent eligibility of the claimed subject matter.”)); see also Intellectual
Ventures I LLC v. Erie Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir.
2017) (unpublished) (“Though the claims purport to accelerate the process
of finding errant files and to reduce error, we have 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.’”). Like the claims in FairWarning, the focus of
claim 8 is not on an improvement in computer processors as tools, but on
certain independently abstract ideas that use generic computing components
as tools. See FairWarning, 839 F.3d at 1095 (citations and quotation marks
omitted).
Thus, the claims do not integrate the judicial exception into a practical
application. The claims do not (1) improve the functioning of a computer or
other technology, (2) are not applied with any particular machine (except for
a generic computer), (3) do not effect a transformation of a particular article
to a different state, and (4) are not applied in any 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. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
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Inventive Concept
Because we determine claim 8 is “directed to” an abstract idea, we
consider whether claim 8 recites an “inventive concept.” The Examiner
determined claim 8 does not recite an inventive concept because the
additional elements in the claim do not amount to “significantly more” than
an abstract idea. See Final Act. 7, 8.
We agree. The additional elements recited in the claim include the
“website” and “displaying.” The claim recites the website at a high level of
generality, and the written description indicates that these elements are
generic computer components. See, e.g., Spec. 3. Using generic computer
components to perform abstract ideas does not provide the necessary
inventive concept. See Alice, 573 U.S. at 223 (“[T]he mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention.”). Thus, these elements, taken individually or
together, do not amount to “significantly more” than the abstract ideas
themselves.
Appellant contends various elements recited in the claim provide the
necessary “inventive concept.” App. Br. 33. But these elements form part of
the recited abstract ideas and thus are not “additional elements” that
“‘transform the nature of the claim’ into a patent-eligible application.” Alice,
573 U.S. at 217 (quoting Mayo, 566 U.S. at 78); see also 2019 Eligibility
Guidance, 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the term
‘additional elements’ to refer to claim features, limitations, and/or steps that
are recited in the claim beyond the identified judicial exception.” (emphasis
added)).
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For at least the above reasons, we agree with the Examiner that claim
8 is “directed to” an abstract idea and does not recite an “inventive concept.”
Accordingly, we sustain the Examiner’s rejection of claim 8 under 35 U.S.C.
§ 101. For the same reasons, we sustain the Examiner’s rejection of claim
20.2
Dependent Claims
Appellant argues, for each of dependent claims 9–15 and 17–19, that
the Examiner’s rejection was improper for failing to look at the claim “as an
ordered combination” and for allegedly ignoring the claim limitations of
each dependent claim. App. Br. 58–73. Yet, the Examiner considered each
of the claim elements of the dependent claims, as explained in the Answer.
Ans. 21–32. We determine the claimed elements of each of dependent
claims 9–15 and 17–19 are insignificant extra-solution activity insufficient
to integrate the abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
In the Reply Brief, Appellant does not point to any specific limitations
of any of the dependent claims that integrate the abstract idea into a practical
application. For these reasons and for the reasons discussed above with
respect to independent claim 8, we sustain the Examiner’s Section 101
rejection of dependent claims 9–15 and 17–19.

2 Claim 20 recites identical steps as method claim 8, but the preamble of
claim 20, instead of reciting “A method comprising,” recites “A computer-
readable medium, which is non-transitory, having computer-executable
instructions stored thereon for implementing a method comprising . . . .”
Claims App’x.
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DECISION
For the above reasons, the Examiner’s rejection of claims 8–15 and
17–20 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED