Ex Parte Betz et al

Board of Patent Appeals and Interferences

Sep 17, 2010

11737457 (B.P.A.I. Sep. 17, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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BENESCH, FRIEDLANDER, COPLAN & ARONOFF LLP
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SUITE 2300
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APPLICATION NO.
I EXAMINER I
NGUYEN, TRAN N
111737,457 0411 912007 Andrew L. Betz I11 29763.5 5646
FILING DATE
I ARTUNIT I PAPERNUMBER I
FIRST NAMED INVENTOR
Please find below andlor attached an Office communication concerning this application or proceeding.
NOTIFICATION DATE
The time period for reply, if any, is set in the attached communication.
ATTORNEY DOCKET NO.
DELIVERY MODE
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
CONFIRMATION NO.
09/21/2010 ELECTRONIC
patent @ beneschlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
Exparte ANDREW L. BETZ, I11 and
DRAGOS MIRZA
Appeal 2009-005935
Application 111737,457
Technology Center 3600
Before HUBERT C. LORIN, FRANCISCO C. PRATS, and
BIBHU R. MOHANTY, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL'
1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. 5 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. 5 41.52, begins to run from the "MAIL DATE"
(paper delivery mode) or the "NOTIFICATION DATE" (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-005935
Application 111737,457
STATEMENT OF THE CASE
Andrew L. Betz, 111, et al. (Appellants) seek our review under 35
U.S.C. 5 134 (2002) of the final rejection of claims 1, 2, 4, and 6-29. We
have jurisdiction under 35 U.S.C. 5 6(b) (2002). Claims 3 and 5 have been
cancelled.
SUMMARY OF DECISION
We REVERSE2 and enter a new ground of rejection pursuant to 37
C.F.R. 5 41.50(b).
THE INVENTION
This invention is a system and method "for calculating an insurance
credit score for an insurance coverage." Specification [OOOl].
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A method of furnishing a quote for an
automobile insurance product for a user
comprising :
receiving a request from a user for a quote
for an automobile insurance product, wherein the
request includes a user identifier and an
identification of a coverage option selected from
the group consisting of bodily injury, property
damage, personal injury protection,
comprehensive, collision, uninsured motorist,
2 Our decision will make reference to the Appellants' Appeal Brief ("App.
Br.," filed Jul. 14, 2008) and Reply Brief ("Reply Br.," filed Oct. 20, 2008),
and the Examiner's Answer ("Answer," mailed Aug. 20, 2008).
Appeal 2009-005935
Application 111737,457
liability, physical damage, and combined
coverage;
retrieving user credit information based on
the user identifier, the user credit information
having a plurality of attributes, each attribute
having a value, wherein each coverage option is
associated with a subset of attributes;
selecting from the user credit information
the values of the subset of attributes associated
with the identified coverage option;
generating weight factors associated with
the selected values;
inputting the selected values and the weight
factors into an insurance credit score algorithm to
calculate a user insurance credit score for the
selected coverage option;
inputting the calculated user insurance credit
score into an insurance quote algorithm to
calculate a quote for the automobile insurance
product; and
providing the quote for the automobile
insurance product to the user.
THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability :
Greco US 5,809,478 Sep. 15, 1998
The Appellants' admitted prior art on pages 2-3 of the Specification.
[Hereinafter, AAPA.]
Michael J. Miller and Richard Smith. The Relationship of Credit-
Based Insurance Scores to Private Passenger Automobile Insurance Loss
Propensity, (Jun. 2003). [Hereinafter, Miller.]
Appeal 2009-005935
Application 111737,457
The following rejections3 are before us for review:
1. Claims 1, 2,4, 6-12, and 29 are rejected under 35 U.S.C. 5 112,
second paragraph for failing to particularly point out and
distinctly claim the subject matter which the applicants regard
as the invention.
2. Claims 1, 2,4, 6-12, and 29 are rejected under 35 U.S.C. 5
103(a) as being unpatentable over Greco, AAPA, and Miller.
3. Claims 13-20 and 25-28 are rejected under 35 U.S.C. 5 103(a)
as being unpatentable over Greco and Miller.
4. Claims 21-24 are rejected under 35 U.S.C. 5 103(a) as being
unpatentable over Greco, Miller, and AAPA.
ISSUES
The first issue is whether claims 1, 2, 4, 6-12, and 29 are indefinite for
failing to particularly point out and distinctly claim the subject matter which
the applicants regards as the invention under 35 U.S.C. 5 112, second
paragraph. Specifically, the major issue is whether the use of the term
"combined coverage" renders claim 1 indefinite.
The second issue is whether claims 1, 2,4, 6-12, and 29 are
unpatentable under 35 U.S.C. 5 103(a) over Greco, AAPA, Official Notice
and Miller. Specifically, the issue is whether the combination of Greco,
3 The Appellants also traverse the objection to claim 1 for lack on antecedent
basis and the object to claim 4 for failing to further limit the subject matter
of the independent claims. App. Br. 8-10 and Reply Br. 3-4. However,
these objections are petitionable matters and not appealable matters and,
therefore, we will not address them. See In re Hengehold, 440 F.2d 1395,
1403-1404 (CCPA 1971).
Appeal 2009-005935
Application 111737,457
AAPA, and Miller teaches that each coverage option is associated with a
subset of attributes of the user's credit information.
The third issue is whether claims 13-1 8 are unpatentable under 35
U.S.C. 5 103(a) over Greco and Miller. Specifically, the issue is whether the
combination of Greco and Miller teaches a step of identifying at least one
pre-selected attribute associated with the selected automobile line coverage
option."
The fourth issue is whether claims 19, 20, and 25-28 are unpatentable
under 35 U.S.C. 5 103(a) over Greco and Miller. Specifically, the issue is
whether the combination of Greco and Miller teaches data selection logic
configured to select some, but not all, of the data from the user credit
information according to the automobile insurance line coverage selection.
The rejection of claims 21-24 under 35 U.S.C. 5 103(a) as being
unpatentable over Greco, Miller and AAPA also turns on this issue.
FINDINGS OF FACT
We find that the following enumerated findings of fact (FF) are
supported by at least a preponderance of the evidence. Ethicon, Znc. v.
Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988) (explaining the general
evidentiary standard for proceedings before the Office).
1. Paragraph [0002] of the Specification states:
In the automobile insurance industry, several
different types of coverage are available, including
bodily injury coverage, property damage coverage,
personal injury protection coverage,
comprehensive coverage, collision coverage,
uninsured motorist coverage. These coverage
types are sometimes referred to as line coverage.
Appeal 2009-005935
Application 111737,457
Additionally, some firms offer broader insurance
coverage, such as liability coverage, sometimes
referred to a BIPD coverage, which, broadly
speaking, may be a hybrid of bodily injury
coverage, property damage coverage, and personal
injury coverage. Firms also offer physical damage
coverage, sometimes referred to as PhysDam
coverage, which broadly speaking, may be a
hybrid of collision coverage and comprehensive
coverage. Further, firms also offer combined
coverage, which includes all of the above
described line coverages.
2. Paragraph [0022] of the Specification states "[i[f the credit report
includes adequate information, the insurance provider filters the
credit information to retrieve values related to pre-selected
variables (step 240). The pre-selected variables are independent of
the coverage the user selects. In other words, the same variables
are used for each insurance coverage selection."
3. Page 15 of Miller states "[flor instance, the credit attributes and the
weighting of those attributes to develop an insurance score for
private passenger automobile insurance may be different than a
score used for commercial automobile insurance, or for
homeowners insurance"
ANALYSIS
The rejection of claims 1, 2, 4, 6-1 2, and 29 under 35 U.S. C. § 112, second
paragraph for failing to particularly point out and distinctly claim the
subject matter which the applicants regards as the invention.
Appeal 2009-005935
Application 111737,457
Claims 1, 2, 6-12, and 29
Claim 1 recites "wherein the request includes . . . and an identification
of a coverage option selected from the group consisting of bodily injury,
property damage, personal injury protection, comprehensive, collision,
uninsured motorist, liability, physical damage, and combined coverage."
The Examiner found that inclusion of "combined coverage" above rendered
claim 1 indefinite because the Examiner was unable to determine whether
"combined coverage" refers to a combination of previously recited elements
or any combination of elements whether previously recited or not. Answer
4. See also Answer 37-39. The Appellants argue that the use of "combined
coverage" does not render claim 1 indefinite (Answer 10- 1 1 and Reply Br.
4-5) and that:
To persons of ordinary skill in the automobile
insurance art, the term "combined coverage" is
understood to include all of the above listed line
coverage options (b, bodily injury coverage,
property damage coverage, personal injury
protection coverage, comprehensive coverage,
collision coverage, and uninsured motorist
coverage). Indeed, this plain meaning of the term
is reflected in the "Background" section of the
application, which states, "firms also offer
combined coverage, which includes all of the
above described line coverages." (See [0002]).
App. Br. 10.
The 'distinctly claiming' requirement means that
the claims must have a clear and definite meaning
when construed in the light of the complete patent
document. Standard Oil Co. v. American
Cyanamid Co., 774 F.2d 448, 452, (Fed. Cir.
Appeal 2009-005935
Application 111737,457
1985). Section 112 thus ensures definiteness of
claim language. See In re Zletz, [893 F 2d. 319,]
(Fed. Cir. 1989). The test for definiteness is
whether one skilled in the art would understand the
bounds of the claim when read in light of the
specification. Orthokinetics, 806 F.2d [1565,]
1576. If the claims read in light of the specification
reasonably apprise those skilled in the art of the
scope of the invention, Section 112 demands no
more. Hybritech, 802 F.2d [1367,] 1385. The
degree of precision necessary for adequate claims
is a function of the nature of the subject matter. Id.
Miles Labs. Znc. v. Shandon Znc., 997 F.2d 870, 874-5 (Fed. Cir. 1993). The
question is: do the claims read in light of the specification reasonably
apprise those skilled in the art of the scope of the invention? Answering that
question "requires a construction of the claims according to the familiar
canons of claim construction. Only after a thorough attempt to understand
the meaning of a claim has failed to resolve material ambiguities can one
conclude that the claim is invalid for indefiniteness." All Dental Prodx LLC
v. Advantage Dental Prods. Znc., 309 F.3d 774,780 (Fed. Cir. 2002). This is
so because
[tlhe requirement to "distinctly" claim means that
the claim must have a meaning discernible to one
of ordinary skill in the art when construed
according to correct principles. Union Pac. Res.
Co. v. Chesapeake Energy Corp., 236 F.3d 684,
692 (Fed. Cir. 2001); Rosemount, Znc. v. Beckman
Instruments, Znc., 727 F.2d 1540, 1547 (Fed. Cir.
1984). Only when a claim remains insolubly
ambiguous without a discernible meaning after all
reasonable attempts at construction must a court
declare it indefinite. Exxon Research & Eng 'g Co.
v. United States, 265 F.3d 1371, 1375 (Fed. Cir.
Appeal 2009-005935
Application 111737,457
Metabolite Labs. Znc. v. Laboratory Corp. of Am. Holdings, 370 F.3d 1354,
1366 (Fed. Cir. 2004).
We agree with the Appellants. The Examiner has not established that
claim 1 is insolubly ambiguous and that the claim, read in light of the
Specification (see FF I), does not reasonably apprise those skilled in the art
of the scope of the invention. Accordingly, we find that the Appellants have
overcome the rejection of claim 1, 2, 4, 6-12, and 29 under 35 U.S.C. 5 112,
second paragraph for failing to particularly point out and distinctly claim the
subject matter which the applicants regard as the invention.
Claim 4
Claim 4 recites "wherein the coverage option is a line coverage
option." The Examiner found that "it is not clear if Appellant intends to
recite additional line coverage options, i.e. in effect changing 'the group
consisting' to the 'the group comprising."' Answer 4-5. (Emphasis
original). The Appellants respond: "Claim 1 is written to include the group
consisting of line coverage options liability, physical damage, and
combined coverage. Claim 4, by contrast, is limited to line coverage
options, and therefore excludes liability, physical damage, and combined
coverage - it calls out a narrower subset of claim 1, without specifically
reciting additional limitations." App. Br. 10- 1 1. (Emphasis original).
Again, we agree with the Appellants. The Examiner has not
established that claim 4 is insolubly ambiguous and that the claim, read in
light of the Specification (see FF I), does not reasonably apprise those
Appeal 2009-005935
Application 111737,457
skilled in the art of the scope of the invention. Accordingly, we find that the
Appellants have overcome the rejection of claim 4 under 35 U.S.C. 5 112,
second paragraph for failing to particularly point out and distinctly claim the
subject matter which the applicants regard as the invention.
The rejection of claims 1, 2, 4, 6-12, and 29 under 35 U.S. C. §103(a) as
being unpatentable over Greco, AAPA, and Miller.
Claim 1 recites a step of "receiving user credit information based on
the user identifier, the user credit information having a plurality of attributes,
each attribute having a value, wherein each coverage option is associated
with a subset of attributes" and recites that "the coverage option was
selected from the group consisting of bodily injury, property damage,
personal injury protection, comprehensive, collision, uninsured motorist,
liability, physical damage, and combined coverage." (Emphasis added.) In
rejecting claim 1, the Examiner relies upon AAPA and Miller to teach that
the recited coverage options (i.e. bodily injury, property damage, etc.) are
known. Answer 7-8. The Examiner also relies upon paragraph [0022] of
AAPA and page 15 of Miller to teach associating each insurance coverage
option with a subset of attributes. See Answer 9-10. The Examiner then
combines these teachings to conclude that one of ordinary skill in the art
would have associated each of the recited coverage options with a subset of
attributes as recited in claim 1. Answer 10.
To traverse the rejection of claim 1, the Appellants argue that the
Examiner has misinterpreted the scope of the teachings of AAPA and Miller
and that one of ordinary skill in the art would not have been led to associate
each of the specifically recited coverage options with a subset of attributes.
Appeal 2009-005935
Application 111737,457
App. Br. 11-13. The Appellants assert that paragraph [0022] of AAPA
teaches that the attributes are independent of the selected coverage options,
which is the opposite of the recited limitation. App. Br. 11-12. Further, the
Appellants argue Miller's page 15 teaches selecting credit attributes and
weighting the attributes to create an insurance score based on a general class
of insurance, such as private passenger automobile insurance, commercial
automobile insurance or homeowners insurance and not based on the
specifically recited coverage options. App. Br. 12.
We agree with the Appellants. While we agree with the Examiner
that AAPA and Miller both describe that the recited coverage options are
known (see Answer 6 4 , the Examiner has not adequately explained why
either paragraph [0022] of AAPA or page 15 of Miller (see FF 2-3) clearly
teaches associating each of the specifically recited coverage options with a
subset of attributes. Further, neither AAPA nor Miller provide any general
teaching of associating line coverage options (i.e. bodily injury, property
damage, etc.) or anything other than a general class of insurance (i.e.
liability, physical damage, or combined coverage) with a subset of attributes.
See FF 2-3. Without such evidence, we find that the Examiner has failed to
establish a prima facie showing of obviousness. The conclusion that the
claimed subject matter is prima facie obvious must be supported by
evidence, as shown by some objective teaching in the prior art or by
knowledge generally available to one of ordinary skill in the art that would
have led that individual to combine the relevant teachings of the references
to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074 (Fed.
Cir. 1988).
Appeal 2009-005935
Application 111737,457
Accordingly, we find that the Appellants have overcome the rejection
of claim 1, and claims 2,4, 6-12, and 29, dependent thereon, under 35
U.S.C. 5 103(a) over Greco, AAPA, and Miller.
The rejection of claims 13-20 and 25-28 under 35 U.S.C. §103(a) as being
unpatentable over Greco and Miller.
Claims 13-18
Claim 13 recites a method which includes the steps of "identifying at
least one pre-selected attribute associated with the selected automobile line
coverage option." Similar to their argument traversing the rejection of claim
1 above, the Appellants argue that neither reference discloses this limitation.
App. Br. 15 and Reply Br. 9. Further, the Appellants argue that the
Examiner's has unreasonably broadly construed "line coverage" given the
context of the claim language and paragraph [0002] of the Specification.
Reply Br. 5. The Appellants provide a definition of "line" as "the amount of
insurance written for a particular risk." Id.
The Examiner has construed "line coverage" to be "protection under a
specific class of insurance policies" and has asserted that this encompasses
"any coverage for auto insurance" and also "any coverage for any class of
insurance." Answer 36. The Examiner seems to argue that "line coverage"
includes any coverage for general classes of insurance such as life insurance,
property insurance, or workers compensation insurance. See Id. The
Examiner seems to have used their broad construction of "line coverage" to
conclude that page 15 of Miller, which describes associating a general class
of insurance to a subset of attributes (see FF 3), teaches the step at issue.
Appeal 2009-005935
Application 111737,457
"Analysis begins with a key legal question -- what is the invention
claimed? Courts are required to view the claimed invention as a whole. 35
U.S.C. 5 103(a). Claim interpretation, in light of the specification, claim
language, other claims, and prosecution history, is a matter of law and will
normally control the remainder of the decisional process." Panduit Corp. v.
Dennison Mfg. Co., 810 F.2d 1561, 1568 (Fed. Cir. 1987).
Claim construction involves the search for
the ordinary and customary meaning of a claim
term to a person of ordinary skill in the art.
Phillips, 415 F.3d at 13 12- 13. This meaning may
be informed by the surrounding claim language,
the specification, the prosecution history, and
extrinsic evidence. Id. at 13 14- 19. Though not
preferred over intrinsic evidence, id. at 13 17,
extrinsic evidence in the form of expert testimony
can be useful to a court for a variety of purposes,
such as to provide background on the technology
..., to explain how an invention works, to ensure
that the court's understanding of the technical
aspects of the patent is consistent with that of a
person of ordinary skill in the art, or to establish
that a particular term in the patent or prior art has a
particular meaning in the pertinent field.
Conoco, Inc. v. Energy & Environmental Intern., L. C., 460 F.3d 1349, 1362
(Fed. Cir. 2006).
We agree with the Appellants. The Examiner has unreasonably
broadly construed the term "line coverage" to encompass general classes of
insurance, such as life insurance or property insurance. We note that claim
13 recites "automobile line coverage options. " Since the line coverage
options are already described as being part of a general class of insurance -
automobile- it would be unreasonable to conclude that line coverage options
Appeal 2009-005935
Application 111737,457
could include other general classes of insurance, such as home owner's
insurance. Further, the Examiner's construction is inconsistent with
paragraph [0002] of the Specification, which state that in the automobile
insurance industry coverage options, such as bodily injury, are referred to as
line coverage. FF 1. Given our finding that the Examiner's construction of
"line coverage" erroneously interprets claim 13 as encompassing general
classes of insurance, we do not agree with the Examiner that page 15 of
Miller, which teaches associating attributes with general classes of insurance
(FF 3), teaches identifying at least one pre-selected attribute associated with
the selected automobile line coverage option. Accordingly, we find that the
Appellants have overcome the rejection of claim 13, and claims 14-18,
dependent thereon, under 35 U.S.C. 5 103(a) over Greco and Miller.
Claims 19, 20, and 25-28
Claim 19 recites an article which includes "data selection logic
configured to select some, but not all, of the data from the user credit
information according to the automobile insurance line coverage selection."
The Appellants argue that neither reference discloses selecting data from the
user credit information according to the automobile insurance line coverage
selection for reasons similar to those used to traverse the rejection of claim
1. App. Br. 16 and Reply Br. 9. For the same reason as discussed above
with regards to claim 13, we find that the Examiner has failed to establish a
prima facie showing of obviousness. Accordingly, we find that the
Appellants have overcome the rejection of claim 13, and claims 14-18,
dependent thereon, under 35 U.S.C. 5 103(a) over Greco and Miller.
Appeal 2009-005935
Application 111737,457
The rejection of claims 21 -24 under 35 U.S. C. §103(a) as being
unpatentable over Greco, Miller, and AAPA.
This rejection is directed to claims dependent on claim 19, whose
rejection we have reversed above. For the same reasons, we will not sustain
the rejection of claims 21-24 over the cited prior art. Cf. In re Fritch, 972
F.2d 1260, 1266 (Fed. Cir. 1992) (" [Dlependent claims are nonobvious if the
independent claims from which they depend are nonobvious.").
NEW GROUND OF REJECTION
Pursuant to 37 CFR 41.50(b) we enter a new ground of rejection on
claims 19-28. We reject claims 19-28 under 35 U.S.C. 5 101 as being
directed to non-statutory subject matter.
Taking claim 19 as representative, claim 19 recites "[a] computer-
readable medium" comprising three data logic elements. We note that the
Specification is silent as the meaning of "a computer-readable medium."
Giving claim 19 the broadest reasonable construction, we find that claim 19
encompasses forms of the data logic being disposed on transitory
propagating signals per se. A signal does not fit within at least one of the
four statutory subject matter categories under 35 U.S.C. 5 101. In re Nuijten,
500 F.3d 1346, 1357 (Fed. Cir. 2007). Accordingly, we reject claims 19-28
under 35 U.S.C. 5 101 as being directed to non-statutory subject matter.
4 See Subject Matter Eligibility of Computer Readable Media, 135 1 Off.
Gaz. Pat. Office 212 (Feb. 23, 2010).
Appeal 2009-005935
Application 111737,457
DECISION
The decision of the Examiner to reject claims 1, 2,4, and 6-29 is
reversed.
This decision contains a new ground of rejection pursuant to
37 C.F.R. 5 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. 5 41.50(b) provides "[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review."
37 C.F.R. 5 41.50(b) also provides that the Appellants, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new ground of rejection
to avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected,
or both, and have the matter reconsidered by the examiner, in which
event the proceeding will be remanded to the examiner . . . .
(2) Request rehearing. Request that the proceeding be reheard under
5 41.52 by the Board upon the same record . . . .
REVERSED; 37 C.F.R. 41.50(b)
mev
BENESCH, FRIEDLANDER, COPLAN & ARONOFF LLP
ATTN: IP DEPARTMENT DOCKET CLERK
200 PUBLIC SQUARE, SUITE 2300
CLEVELAND OH 441 14-2378