Ex Parte Doelling et al

Patent Trial and Appeal Board

Sep 24, 2018

13051878 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/051,878 03/18/2011
23460 7590 09/26/2018
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.
706871 5376
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/26/2018 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
Appeal2017-006033
Application 13/051,878 1
Technology Center 3600
Before DEBRA K. STEPHENS, CARL WHITEHEAD JR. and NABEEL
KHAN, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-11, which are all of the claims pending in the application. We
have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
CLAIMED SUBJECT MATTER
According to Appellants, the claims are directed to a system, method,
and computer program product for determining workers compensation
claims with a rules-based Average Weekly Wage ("A WW") calculator
1 According to Appellants, the real party in interest is American
International Group, Inc. (App. Br. 1 ).
Appeal2017-006033
Application 13/051,878
(Title, Abstract). Claim 1, reproduced below, is illustrative 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;
a processor adapted to execute the average weekly wage
calculating program contained on the physical computer-
readable medium; and
a graphical user interface embodied within a display
device associated with the processor and adapted to input
information into the average weekly wage calculating program
and receive output information from the average weekly wage
calculating program, the graphical user interface including a
wage information section adapted to receive the claimant's
wage information, the wage information section including
a plurality of fields adapted to receive information relating to
the claimant's wages during a set of required payment periods,
wherein the set of required payment periods includes at least
two payment periods;
wherein the average weekly wage calculating program
includes a calculating module having computer executable
instructions adapted to determine the claimant's average weekly
wage based upon a predetermined formula using the claimant's
wage information for the set of required payment periods and to
display the calculated average weekly wage value in the
graphical user interface, wherein the predetermined formula
is configured to determine an average daily wage for the
claimant and to determine the claimant's average weekly wage
by multiplying the average daily wage for the claimant by
seven.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
2
Appeal2017-006033
Application 13/051,878
Gamble et al. (hereinafter
"Gamble")
Reynolds et al. (hereinafter
"Reynolds")
Hampton
us 6,014,632 Jan. 11, 2000
US 2007/0021985 Al Jan. 25, 2007
US 2011/0161115 Al Jun. 30, 2011
Michael R. Hoffman (hereinafter "Hoffman"), Rate, HOFFMANN LAW FIRM,
PC, FAQ's (Aug. 28, 2008, 11 :58:40 AM),
https://web.archive.org/web/20080828115840/www.iowaworkcomp.com/rat
e.html,
https://web.archive.org/web/20160708035 832/http://www.hoffmannlawfirm.
com/rate.html ( accessed by searching for iowaworkcomp or
hoffmannlawfirm in the Internet Archive Index).
REJECTIONS
Claims 1-11 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent ineligible matter (Final Act. 3-10).
Claims 1-5 stand rejected under 35 U.S.C. §I03(a) as being
unpatentable over Hampton, Hoffman, and Gamble (Final Act. 10-17).
Claims 6-11 stand rejected under 35 U.S.C. §I03(a) as being
unpatentable over Hampton, Hoffman, Gamble, 2 and Reynolds (Final Act.
18-20).
ISSUE 1
35 US.C. § 101: Claims 1-11
Appellants argue their invention as recited in claims 1-11, is directed
to patent-eligible subject matter (App. Br. 3). The issue presented by the
arguments is whether the Examiner erred in concluding the invention as
recited is directed to ineligible statutory subject matter.
2 Examiner's heading for the rejection of claims 6-11 states the claims are
"unpatentable over Hampton and Hoffman as applied to claim 1 above in
view of Reynolds" (Final Act. 18); however, Examiner relies on Hampton,
Hoffman, and Gamble to reject claim 1. We consider this harmless error.
3
Appeal2017-006033
Application 13/051,878
Section 101 defines patentable subject matter: "Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
title" (35 U.S.C. § 101). The Supreme Court, however, has "long held that
this provision contains an important implicit exception" that "[l]aws of
nature, natural phenomena, and abstract ideas are not patentable" (Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
( quotation omitted)). To determine patentable subject matter, the Supreme
Court has set forth a two part test.
"First, we determine whether the claims at issue are directed to one of
those patent-ineligible concepts" of "laws of nature, natural phenomena, and
abstract ideas" (Alice Corp. v. CLS Bank Int 'l, 134 U.S. 2347, 2355 (2014)).
"The inquiry often is whether the claims are directed to 'a specific means or
method' for improving technology or whether they are simply directed to an
abstract end-result" (RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017)). A court must be cognizant that "all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas" (Mayo, 566 U.S. at 71), and "describing the
claims at ... a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule"
(Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016)).
Instead, "the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter" (Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
4
Appeal2017-006033
Application 13/051,878
The Supreme Court has identified abstract ideas that are related to
employing mathematical relationships or formulas, which are similar to the
instant claimed invention. Specifically, the Supreme Court stated that the
concept of applying a mathematical formula to hedging risk and the
application of that concept to energy markets was not patentable because of
similarities to Benson, Flook, and Diehr (Bilski v. Kappas, 561 U.S. 593,
595 (2010) (citations omitted)). Further, the Supreme Court noted that the
claims, like those in Flook, were unpatentable because "Flook established
that limiting an abstract idea to one field of use or adding token postulation
components did not make the concept patentable" (Bilski, 593 U.S. at 612).
Additionally, the Federal Circuit has identified abstract ideas that do
not describe an inventive concept that is more than an abstract idea, even
when embodied in specific system or structure. Specifically, the Federal
Circuit stated "not every claim that recites concrete, tangible components
escapes the reach of the abstract-idea inquiry," including a finding that
"claims reciting an 'interface,' 'network,' and a 'database' are nevertheless
directed to an abstract idea" (In re TL! Commc 'n LLC Patent Litigation, 823
F.3d 607, 611 (Fed. Cir. 2016) (citing Mortg. Grader, Inc. v. First Choice
Loan Serv. Inc., 811 F.3d 1314, 1324--25 (Fed. Cir. 2016)). The Federal
Circuit found the "eleven steps for displaying an advertisement in exchange
for access to copyrighted media" was directed to an abstract idea, despite the
claim at issue reciting "certain additional limitations ... [that] add a degree
of particularity" (Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714--15
(Fed. Cir. 2014)). Further, the Federal Circuit noted "the concept embodied
by the majority of the limitations describes only the abstract idea of showing
an advertisement before delivering free content," and the addition of novel
5
Appeal2017-006033
Application 13/051,878
or non-routine components did not "necessarily tum[] an abstraction into
something concrete" (id. at 716).
In contrast, the Federal Circuit has found claims that "are not simply
directed to any form of storing tabular data, but instead are specifically
directed to a self-referential table for a computer database" are "directed to
an improvement of an existing technology ... achiev[ing] other benefits
over conventional databases, such as increased flexibility, faster search
times, and smaller memory requirements" (Enfish, 822 F.3d at 1337
( citations omitted)). However, the heart of the claimed invention must be
focused on the underlying technology itself, and how the underlying
technology is altered "in a way that leads to an improvement in the
technology" (Intellectual Ventures Iv. Erie Indem. Co., 850 F.3d 1315, 1328
( citing Enfzsh ); see also TL! Commc 'n, 823 F .3 d at 612 ).
If the claims are not directed to a patent-ineligible concept, the inquiry
ends. Otherwise, the inquiry proceeds to the second step, where 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 U.S. at
2355 (quoting Mayo, 566 U.S. at 79, 78)). The Supreme Court has
"described step two of this analysis as a 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. (quotation omitted)). For computer-related
technology, the Federal Circuit has held that a claim may pass the second
step if "the claimed solution is necessarily rooted in computer technology in
order to overcome a problem specifically arising in the realm of computer
6
Appeal2017-006033
Application 13/051,878
[technology]" (DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014) (e.g., "a challenge particular to the Internet")).
In Bilski, the Supreme Court rejected the machine or translation test as
the exclusive test for determining patentability, but nonetheless held the
claims were ineligible because the claims were preemptory of risk hedging
in all fields (593 U.S. at 594, 596, 612-13 (citing Parker v. Flook, 437 U.S.
584 (1978); Gottschalkv. Benson, 409 U.S. 63 (1972))). The Federal Circuit
has also identified when abstract ideas do not amount to significantly more
than the judicial exception. The Federal Circuit held the abstract idea of
classifying and storing digital images in an organized manner was not
significantly more than an abstract idea because "the recited physical
components behave exactly as expected according to their ordinary use" and
the claimed invention "fails to provide the requisite details necessary to
carry out th[ e] idea" ( TL! Commc 'n, 823 F .3d at 615). Moreover, the
Federal Circuit held the idea of "receiving copyrighted media, selecting an
ad, offering the media in exchange for watching the selected ad, displaying
the ad, allowing the consumer access to the media, and receiving payment
from the sponsor of the ad" was not significantly more than the abstract idea
because "the claims simply instruct the practitioner to implement the
abstract idea with routine, conventional activity" ( Ultramercial, Inc., 772
F.3d at 715). Additionally, the Federal Circuit noted "[n]one of these eleven
individual steps, viewed 'both individually and "as an ordered
combination,"' transform the nature of the claim into patent-eligible subject
matter" (id. ( citations omitted)).
In contrast, the Federal Circuit held claims directed to methods of
organizing human activity may be significantly more "when the claim
7
Appeal2017-006033
Application 13/051,878
limitations were considered individually and as an ordered combination,
they recited an invention that is not merely the 'routine and conventional
use' of technology" (Amdocs (Israel) Ltd. v. Openet Telecom, Inc., 841 F.3d
1288, 1301---02 (Fed. Cir. 2016) (citing DDR Holdings; BASCOM Global
Internet Serv., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016)).
Additionally, the Federal Circuit held the ordered combination of the
claimed invention recited an inventive concept because "the distributed,
remote enhancement that produced an unconventional result," which
represented "a technical improvement over prior art technologies and served
to improve the performance of the system itself' (Amdocs, 841 F.3d at 1302
(emphasis added); see also BASCOM, 827 F.3d at 1352 ("an inventive
concept can be found in the ordered combination of claim limitations that
transform the abstract idea of filtering content into a particular, practical
application")).
Here, for the first step, Appellants do not proffer any specific
argument that the claims are not directed to an abstract idea (see generally
App. Br.). The Examiner finds, and we agree, that the claims are directed to
an abstract idea "that executes an algorithm for calculating a mathematical
relationship or formula: (determining a claimant's workers compensation
claim amount based on weekly wage information)" (Final Act. 5).
Appellants argue:
[ w ]ithout acquiescing in any way to the conclusion ... that the
claims are directed to the 'abstract idea of processing a
claimant's worker's compensation claim' ... each appealed
claim of the present application includes additional features that
ensure the claims are more than a drafting effort designed to
monopolize an abstract idea
8
Appeal2017-006033
Application 13/051,878
(App. Br. 4--5 (quoting Final Act. 4) (citing DDR Holdings, 773 F.3d at
1259)).
Appellants further argue "[ e Jach appealed claim includes significantly
more than a judicial exception itself and is directed to a new and useful
application" (id. at 5). Appellants contend that "[t ]he claimed system
provides a specially-programmed machine that includes an average weekly
wage calculating program ... using a predetermined formula" (id. at 7). The
calculation is designed to accurately define payment periods to calculate
weekly wages based on claim information and state regulatory requirements,
reducing inaccurate payments to beneficiaries (id. at 5 ( citing Spec. ,r,r 6, 8) ).
The Examiner determines that "providing a programmed computer
with no further details is insufficient to impart eligibility" (Ans. 2). The
Examiner further determines "[ m ]erely adding a generic computer, generic
computer components, or a programmed computer to perform generic
computer functions does not automatically overcome an eligibility rejection"
(id.). Specifically, the Examiner finds the claims are directed to a "method
of organizing human activity," where the claimed algorithm, calculating an
average, is routine and not an improvement to the underlying technology
(Final Act. 4--5; Ans. 2-3).
We are not persuaded by Appellants' contentions. As set forth by the
Examiner, the claimed physical computer-readable medium, processor, and
graphical user interface embodied within a display device are all generic
computer components, and the generic components perform routine,
conventional, and well-understood computer functions (Ans. 2). Unlike the
claims at issue in DDR Holdings, the instant claims are directed to the
routine and convention use of computer technology (see 773 F.3d at 1258-
9
Appeal2017-006033
Application 13/051,878
59 ("Instead of the computer network operating in its normal, expected
manner .... When the limitations of the '399 patent's asserted claims are
taken together as an ordered combination, the claims recite an invention that
is not merely the routine or conventional use of the Internet")). Indeed, the
claimed physical computer-readable medium, processor, and graphical user
interface embodied within a display device all perform as expected. The
claimed invention is directed to the use of technology, as described by
Appellants' Specification (see e.g., Spec. ,r 22 ("By using the A WW
Calculator, the adjuster can readily discover whether any pay period
information is missing" ( emphasis added)); (" Using the A WW Caclulator
can reduce leakage ... improve consistency ... and improve compliance"
(emphasis added)); Spec. ,r 25 ("using a physical computer-readable
medium"); Spec. ,r 31 ("using conventional database querying tools"); Spec.
,r 35 ("application 155 can be any suitable computer-implemented
application" (emphasis added)). Thus, Appellants are merely using the
underlying technology to perform conventional tasks, rather than improving
the underlying technology to better perform those tasks.
Accordingly, we sustain the Examiner's rejection under§ 101 of
claim 1 and dependent claims 2-11, which Appellants do not argue
separately (see App. Br. 4--9; 37 C.F.R. § 4I.37(c)(l)(iv)).
10
Appeal2017-006033
Application 13/051,878
ISSUE 2
35 US.C. § 103(a): Claims 1-5
Appellants contend their invention as recited in claims 1-5, is
patentable over Hampton, Hoffman, and Gamble (App. Br. 7-12). 3 The
issue presented by the arguments is if the Examiner has shown the
combination of Hampton, Hoffman, and Gamble teaches or suggests:
a graphical user interface ... ;
wherein the average weekly wage calculating program
includes a calculating module . . . adapted to determine the
claimant's average weekly wage based upon a predetermined
formula using the claimant's wage information for the set of
required payment periods . . . , wherein the predetermined
formula is configured to determine an average daily wage for the
claimant and to determine the claimant's average weekly wage
by multiplying the average daily wage for the claimant by seven,
as recited in claim 1. Specifically, Appellants contend "Hampton fails to
teach or suggest the graphical user interface described in claim 1," instead
"Hampton merely provides a single field for entering a claimant's average
weekly income before injury, and does not teach or suggest any means for
calculating the average weekly income" (App. Br. 10). Further, Appellants
contend "Gamble's suggestion to multiply the daily benefit amount it
calculates for a patient ... by seven to calculate a weekly benefit amount is
3 Rather than repeat the arguments here, we refer to the Appeal Brief and
Reply Brief for the positions of Appellant and the Final Office Action and
Answer for the positions of the Examiner. Only those arguments actually
made by Appellant have been considered in this decision. Arguments that
Appellant did not make in the Briefs have not been considered and are
deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv) (2012).
11
Appeal2017-006033
Application 13/051,878
not the same as the claimed average weekly wage formula" (id. at 11 ( citing
Gamble at 7:29--43, 21 :34--38)).
The Examiner determines "calcualting an average and determining
weekly value by taking a daily value and multiplying by seven, are common
sense basic mathematical functions" (Final Act. 14--15 (citing Texas Lab.
Code, Title 5, Subtitle A, Chpt. 408" and "Wage and Salary Conversion
Calculator," Iowa Workforce Development; see Ans. 3). The Examiner
notes "Appellant has not specifically defined a special week or a special
number of days forming a specially defined week in the specification,"
which makes the broadest reasonable interpretation of the claims "a well-
known mathematical function" (Ans. 3).
We are not persuaded by Appellants' contentions. Claim 1 requires
"determin[ing] the claimant's average weekly wage based upon a
predetermined formula using the claimant's wage information for the set of
required payment periods." We agree with Examiner's finding that
Hampton discloses a physical computer-readable medium (Final Act. 10
( citing Hampton ,r,r 31, 34) ). Appellants have not proffered sufficient
evidence or argument to persuade us of Examiner error.
We further determine Hampton teaches or suggests a graphical user
interface for inputting average weekly wage information, as recited in claim
1 (id. at 11; Hamptom ,r,r 31, 34). Additionally, we agree with the Examiner
that Hoffman discloses the calculation of a 13 week period AWW (Average
Weekly Wage), which teaches, or at least suggests, the determination is
based on at least two payment periods within the 13 week period, as required
by claim 1 (Final Act. 11 ( citing Hoffman ("Since you will be doing a 13
week average, the pay periods need to be broken down weekly") ( emphasis
12
Appeal2017-006033
Application 13/051,878
added)). The Examiner further finds Gamble describes, in pertinent part,
"multiplying the daily benefits by 7 would produce weekly benefits"; thus,
we determine Gamble teaches the multiplication technique of determining a
weekly amount based on a daily amount, and particularly an A WW
calculation taught by the combination of Hampton and Hoffman (Final Act.
14--15 (citing Gamble 21:34--38)).
Appellants' argument that Hoffman fails to teach or suggest the
formula recited in amended claim 1 and "the Office Action fails to explain
how Gamble would otherwise overcome these deficiencies" is unpersuasive.
A skilled artisan is "a person of ordinary creativity, not an automaton" (see
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420-21 (2007)). Here,
Appellants have not presented sufficient evidence or argument to persuade
us that "determin[ing] an average daily wage" or "determ[ing] an average
weekly wage by multiplying the average daily wage ... by seven" would
have been "uniquely challenging or difficult for one of ordinary skill in the
art" or "represented an unobvious step over the prior art" (see Leapfrog
Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007)).
Appellants further argue an ordinarily skilled artisan, "having no prior
knowledge of applicants' invention, would not have a credible reason for
modifying Hampton's person injury valuation system with any of the
features of the other applied references" to teach claim 1 (App. Br. 8). The
Examiner has articulated reasoning with some rational underpinning (Final
Act. 13-14). Appellants have not proffered sufficient evidence or argument
to persuade us of Examiner error.
Accordingly, we are not persuaded the Examiner fails to show the
combination of Hampton, Hoffman, and Gamble teaches or suggests the
13
Appeal2017-006033
Application 13/051,878
limitations as recited in claim 1 and claims 2-5, not separately argued.
Therefore, we sustain the rejection of claims 1-5 under 35 U.S.C. § 103(a)
as being unpatentable over Hampton, Hoffman, and Gamble.
35 USC§ 103(a): Claims 6-11
Appellants do not separately argue claims 6-11, instead relying on the
reasons argued with respect to claims 1-5 (App. Br. 12). For the reasons set
forth above, we sustain the rejection of claim 20 under 35 U.S.C. § 103(a) as
being unpatentable over Hampton, Hoffman, Gamble, and Reynolds.
DECISION
For the reasons above, we affirm the Examiner's decision rejecting
claims 1-11 under 35 U.S.C. § 101.
We affirm the Examiner's decision rejecting claims 1-11 under
35 U.S.C. § 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (see 37 C.F.R.
§ 41.50(±)).
AFFIRMED
14