Ex Parte Doelling et al

Patent Trial and Appeal Board

Jul 27, 2018

13051814 (P.T.A.B. Jul. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/051,814 03/18/2011
23460 7590 07/31/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Jonathan Doelling
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
706870 5250
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
07/31/2018 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN DOELLING, MATTHEW FRANCIS, and
TIMOTHY JACOBI
Appeal2017-005684
Application 13/051,814 1
Technology Center 3600
Before TERRENCE W. McMILLIN, KARA L. SZPONDOWSKI, and
SCOTT B. HOWARD, Administrative Patent Judges.
McMILLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1, 3-7, and 9-22. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 According to Appellants, the real party in interest is American
International Group, Inc. Br. 1.
Appeal2017-005684
Application 13/051,814
THE CLAIMED INVENTION
The present invention relates generally to "a system, method, and
computer product for determining workers' compensation claims using an
average weekly wage calculator application." Spec. ,r 2. Independent claim
1 is directed to a computer-implemented system; independent claim 12 is
directed to a method; and independent claim 22 is directed to a non-
transitory, tangible computer-readable medium. Br. 13, 15, 16.
Claim 1, reproduced below, is representative of the claimed subject
matter:
1. A computer-implemented system for processing a
claimant's workers' compensation claim comprising:
a physical computer-readable medium including an
average weekly wage calculating program; and
a processor adapted to execute the average weekly wage
calculating program based on claimant's workers' compensation
claim contained on the physical computer readable medium;
wherein the average weekly wage calculating program
includes a calculating module having computer executable
instructions adapted to determine the average weekly wage based
upon a predetermined formula using the claimant's wage
information and based upon an average daily rate, and the
calculating module is adapted to determine the average weekly
wage based upon claim information relating to at least one of the
benefit state, the date of injury, the claimant's pay cycle, the
claimant's employment status, and the duration of time the
claimant had been employed on the date of injury.
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Application 13/051,814
REJECTION ON APPEAL
Claims 1, 3-7, and 9-22 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter. Final Act.
3.
ANALYSIS
35 US. C. § 1 OJ Rejection
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 134 S. Ct. 2347 (2014)
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent eligibility under 35 U.S.C. § 101.
In the first step, "[ w ]e must first determine whether the claims at issue are
directed to a patent-ineligible concept." Alice, 134 S. Ct. at 2355.
The Examiner concludes the claimed invention is directed towards
"processing a claimant's workers' compensation claim," which is an abstract
idea. Final Act. 3. Specifically, the Examiner determines the claimed
invention is directed to a "fundamental economic practice and a
mathematical formula." Id.
Appellants contend that claim 1 is directed to a statutory class, namely
a machine (i.e., a computer-implemented system) (Br. 5); claim 12 is
directed to a statutory class, namely a process (i.e., a method) (Br. 7); and
claim 22 is directed to a statutory class, namely an article of manufacture
(i.e., a non-transitory, tangible computer-readable storage medium) (Br. 9-
10). As such, Appellants contend the claims are directed to patent-eligible
subject matter.
We are not persuaded by Appellants' arguments. We agree with the
Examiner that the claims are directed to the abstract idea of "processing a
claimant's workers' compensation claim" and specifically a mathematical
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Application 13/051,814
formula "which can be done using paper and pencil or using generic
computer functions." Ans. 4 ( emphasis omitted); see Final Act. 3.
Here, the claims are directed to receiving claim information,
determining a payment period, receiving wage information for the payment
period, and calculating the average weekly wage based on the received claim
information and wage information. The claims are directed to the abstract
idea of organizing information (i.e., received claim information and wage
information) through mathematical calculations (i.e., calculating average
weekly wage). See Digitech Image Technologies, LLC v. Electronics for
Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014) (the "process of
organizing information through mathematical correlations" is an abstract
idea).
Moreover, the claims are directed to a computerized method for
calculating average weekly wage and processing a workers' compensation
claim, and uses a computer-readable medium and processor with a
calculating program including a calculating module to automate a human
activity (i.e., organize data, perform mathematical calculations). Our
reviewing court has found that if a method can be performed by human
thought (i.e., organize data, perform mathematical calculations), these
processes remain unpatentable even when automated (i.e., using a computer-
readable medium and a processor to execute the calculating program and
calculating module) to reduce the burden to the user. CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("That purely
mental processes can be unpatentable, even when performed by a computer,
was precisely the holding of the Supreme Court in Gottschalk v. Benson,
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Application 13/051,814
[409 U.S. 63 (1972)]."). Appellants have not adequately shown the claims
are not directed to an abstract idea.
In the second step of Alice, we "consider 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, 134 S. Ct. at 2355 (quoting Mayo Collaborative
Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289, 1297-1298
(2012)). In other words, the second step is to "search for an 'inventive
concept' - i.e., 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."' Id. (quoting Mayo, 132 S. Ct. at 1294).
Appellants argue that the claimed elements add significantly more to
the alleged abstract idea. See Br. 5-7; see also Br. 8-11. Specifically,
Appellants argue that the claims provide a specially-programmed machine
that includes an average weekly wage calculating program to improve
accuracy, consistency, and compliance in calculating average weekly wage.
Br. 5---6 ( citing Spec. ,r 6); see Br. 8, 10. Appellants contend the claimed
invention significantly improves existing technological systems and
processes known at the time of the invention. Id. at 6. Appellants further
argue the claimed solution is "rooted in computer technology in order to
satisfy persistent needs specifically arising in the field of workers'
compensation claims, namely determining an average weekly wage for use
in processing a claimant's workers' compensation claim." Br. 6; see also
Br. 8, 10. According to Appellants, the claimed steps are unconventional
and the limitations confine the claims to a particular useful application. Br.
7; see also Br. 9, 11.
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Application 13/051,814
We are not persuaded by Appellants' argument and agree with the
Examiner's finding and conclusion that the claimed limitations "require no
more than adding insignificant extra-solution activity to the judicial
exception, e.g., mere collecting data (e.g. 'receiving pre-defined claim
information ... receiving wage information') and performing of generic
computer functions ( e.g. automating mental tasks ( defining a set of payment
periods ... calculating the average weekly wage ... ) )" and that the claimed
limitations "are well-understood, routine and conventional activities
previously known to the industry." Ans. 4. We further agree with the
Examiner that the claimed invention do not provide unconventional steps
that improve another technology or technical field. Ans. 4; see also Final
Act. 3. "[R ]elying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible." OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015), cert.
denied, 136 S. Ct. 701 (2015) (citing Alice, 134 S. Ct. at 2359 ("use of a
computer to create electronic records, track multiple transactions, and issue
simultaneous instructions" is not an inventive concept)).
This case is similar to Electric Power, in which our reviewing court
found the claims patent-ineligible because "[t]he claims at issue do not
require any nonconventional computer, network, or display components, or
even a 'non-conventional and non-generic arrangement of known,
conventional pieces,' but merely call for performance of the claimed
information collection, analysis, and display functions 'on a set of generic
computer components' and display devices." Elec. Power Group, LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (citing BASCOM Global
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349-52 (Fed.
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Cir. 2016) ). Similarly, the claims in this case merely recite the use of
generic computer (i.e., a processor) components to gather data (i.e., receive
claim information and wage information), and analyze the data (i.e., defining
payment periods and calculating average weekly wage).
Appellants' Specification describes the "computing environment 100
can include a number of computer systems, which generally can include any
type of computer system based on: a microprocessor, a mainframe computer,
a digital signal processor, a portable computing device, a personal organizer,
a device controller, or a computational engine within an appliance." Spec
,r 37. Nothing in the claim or Specification requires that the device must be
able to perform any special functions. Instead, the claim merely requires the
conventional function of receiving information (i.e., claim information and
wage information) and performing a mathematical calculations (i.e.,
calculating average weekly wage).
The claims, when viewed as a whole, are nothing more than
conventional processing functions that courts have routinely found
insignificant to transform an abstract idea into a patent-eligible invention.
As such, the claims amount to nothing significantly more than an instruction
to implement the abstract idea on a generic computer - which is not enough
to transform an abstract idea into a patent-eligible invention. See Alice, 134
S. Ct. at 2360.
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
independent claim 1, as well as commensurate independent claims 12 and
22, argued for the same reasons as claim 1, and dependent claims 3-7, 9-11,
and 13-21, not separately argued. See Br. 7-11.
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DECISION
The Examiner's rejection of claims 1, 3-7, and 9-22 under 35 U.S.C.
§ 101 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)(l )(iv).
AFFIRMED
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