Ex Parte Fini

Patent Trial and Appeal Board

Dec 20, 2018

13495635 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/495,635 06/13/2012
20350 7590 12/25/2018
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
James Fini
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.
95851-883765-000410US 2561
EXAMINER
TINKLER, MURIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAMES FINI
Appeal2017-009460
Application 13/495,635
Technology Center 3600
Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and
JOHN R. KENNY, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant is appealing the final rejection of claims 1-3 and 23-31
under 35 U.S.C. § 134(a). Appeal Brief 1. We have jurisdiction under 35
U.S.C. § 6(b ).
We affirm.
Introduction
The invention is directed to "systems and methods for property
insurance underwriting and claims." Specification, paragraph 2.
Illustrative Claim
1. A workflow system for assembling a spending amount of a
predicted inventory of property present in a consumer's home, the system
compnsmg:
Appeal Number 2017-009460
Application Number 13/495,635
a database for storing data for a plurality of consumers, the data
comprising, for each consumer, (i) categories of personal property typically
found in homes, (ii) a geographic location of the consumer's home, and (iii)
demographic characteristics of the consumer;
a segregation module operable to:
access a bulk source of consumer spending data for personal
property; and segregate the spending data based on the
categories of personal property, the demographic characteristics
and the geographic location;
an aggregate lifetime spending determination module using data from
the segregation module, wherein the aggregate lifetime spending
determination module is operable to:
determine an inception date corresponding to when the
consumer became an adult;
compute an amount of time since the inception date; and
compile an aggregate lifetime spending amount for at least one
category of property based on the segregated spending data and the amount
of time since the inception date, wherein a depletion module applies to the
aggregate lifetime spending amount at least one depletion factor indicative
of an average property retention duration for the at least one category of
property.
Rejection on Appeal
Claims 1-3 and 23-31 stand rejected under 35 U.S.C. § 101 because
the claimed invention is directed to non-statutory subject matter. Answer 2-
6.
ANALYSIS
Rather than reiterate the arguments of Appellant and the Examiner,
we refer to the Appeal Brief (filed August 22, 2016), the Reply Brief (filed
June 27, 2017), the Answer (mailed October 25, 2016) and the Final Action
(mailed December 23, 2015) for the respective details.
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35 U.S.C. § 101 Rejection
The Supreme Court has set forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347, 2355
(2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 71-73 (2012)). In the first step of the analysis, we determine
whether the claims at issue are "directed to" a judicial exception, such as an
abstract idea. Alice, 134 S. Ct. at 2355. If not, the inquiry ends. Thales
Visionix Inc. v. U.S., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
determined to be directed to an abstract idea, then we consider under step
two whether the claims contain an "inventive concept" sufficient to
"transform the nature of the claim into a patent-eligible application." Alice,
134 S. Ct. at 2355 (quotations and citation omitted).
Noting that the two stages involve "overlapping scrutiny of the
content of the claims," the Federal Circuit has described "the first-stage
inquiry" as "looking at the 'focus' of the claims, their 'character as a
whole,"' and "the second-stage inquiry (where reached)" as "looking more
precisely at what the claim elements add--specifically, whether, in the
Supreme Court's terms, they identify an 'inventive concept' in the
application of the ineligible matter to which (by assumption at stage two) the
claim is directed." Electric Power Grp, LLC v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). In considering whether a claim is directed to an
abstract idea, we acknowledge, as did the Court in Mayo, that "all inventions
at some level embody, use, reflect, rest upon, or apply laws of nature, natural
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phenomena, or abstract ideas." Mayo, 566 U.S. at 71. We, therefore, look
to: (1) whether the claims focus on a specific means or method that improves
the relevant technology, or (2) are directed to a result or effect that itself is
the abstract idea, in which the claims merely invoke generic processes and
machinery. See Enfzsh, 822 F.3d at 1336.
Step One: Whether the Claims Are Directed to a Patent-Ineligible
Concept (Abstract Idea)
Appellant contends, "the alleged abstract idea identified by the
Examiner is simply incorrect" and "Although the preamble of independent
claim 1, for example, recites, ' [a] workflow system for assembling a
spending amount of a predicted inventory of property present in a
consumer's home,' the claims feature a plurality of interrelated technical
operations conducted in a specific manner." Appeal Brief 11. Appellant
argues, "[T]he Examiner provides no evidence to establish that 'predicting
the value of personal property' is a fundamental economic practice as
asserted" and "submits that the Examiner has failed to establish a prima
facie case ofunpatentability under 35 U.S.C. § 101." Appeal Brief 11.
The Federal Circuit has repeatedly noted that "the prima facie case is
merely a procedural device that enables an appropriate shift of the burden of
production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus,
held that the Office carries its procedural burden of establishing a prima
facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by
notifying the applicant of the reasons for rejection, "together with such
information and references as may be useful in judging of the propriety of
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continuing the prosecution of [the] application." See In re Jung, 637 F.3d
1356, 1362 (Fed. Cir. 2011).
All that is required of the Office is that it set forth the statutory basis
of the rejection in a sufficiently articulate and informative manner as to meet
the notice requirement of§ 132. Id.; see also Chester v. Miller, 906 F.2d
1574, 1578 (Fed. Cir. 1990) (noting that section 132 "is violated when a
rejection is so uninformative that it prevents the applicant from recognizing
and seeking to counter the grounds for rejection").
Appellant argues, "[T]he pending claims provide methods and
systems that are markedly different than current business practices" and
"The lack of prior art rejections of the claims evidences that the claimed
subject matter is not even present in the prior art, let alone in longstanding or
fundamental business practices." Reply Brief 2.
As the Federal Circuit has explained, a "'claim for a new abstract idea
is still an abstract idea."' SAP Am., Inc. v. Investpic, LLC, No. 2017-2081,
2018 WL 2207254, at *1 (Fed. Cir. May 15, 2018) (quoting Synopsis, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016)). Even
assuming the technique claimed was "'innovative, or even brilliant,"' that
would not be enough for the claimed abstract idea to be patent eligible. See
SAP America, 2018 WL 2207254 at * 1.
"Appellant submits that independent claims 1, 23, 26 and 29 are not
directed to any long prevalent or fundamental economic practice such as that
at issue in Alice" and "[t]o the contrary, and in accordance with the Federal
Circuit's holding in DDR Holdings, the claimed invention cannot be directed
to such an economic practice since it is 'necessarily rooted in computer
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technology in order to overcome a problem specifically arising in the realm
of computer networks."' Appeal Brief 13 (footnotes omitted). Appellant
contends, "as explained in the Specification, embodiments of the present
invention provide systems and methods for facilitating accurate valuation of
the contents/inventory of a residence or business based on characteristics of
the household or business using computer components" and "In the home-
related embodiments recited in independent claim 1, data is assembled for
the consumer and a bulk source of spending data is segregated based on
categories of personal property, demographic characteristics of the
consumer, and the geographic location of the consumer." Appeal Brief 14.
Appellant surmises that "to accomplish all of these [ claimed] functions, a
specialized computer system is needed" and "Consequently, embodiments of
the invention address a problem rooted in computer technology, i.e.,
inability of existing computer systems to accurately and quickly assemble a
spending amount of predicted inventory, and the solution to that problem is
rooted in computer technology." Appeal Brief 14.
Despite characterizing the claimed invention as using computer
technology to overcome a problem specific to the operation of a computer or
a computer network per se, Appellant does not present sufficient persuasive
evidence or argument that the claims are directed to an improvement specific
to a computer network or the Internet itself. See Elec. Power, 830 F.3d at
1354 ("[T]he focus of the claims is not on such an improvement in
computers as tools, but on certain independently abstract ideas that use
computers as tools.") We find Appellant's claims are distinguished from
those claims that our reviewing court has found to be patent eligible by
virtue of reciting technological improvements to a computer system. See,
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e.g., DDR Holdings, 773 F.3d at 1249, 1257 (holding that claims reciting
computer processor for serving "composite web page" were patent eligible
because "the claimed solution is necessarily rooted in computer technology
in order to overcome a problem specifically arising in the realm of computer
networks"); Enfish, 822 F.3d at 1338 (holding that claims directed to a self-
referential table for a computer database were patent eligible because the
claims were directed to an improvement in the functioning of a computer);
Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253, 1259 (Fed. Cir. 2017)
(holding that claims directed to "an improved computer memory system"
having many benefits were patent eligible).
Appellant contends, "[T]hat claims 1, 23, 26 and 29 are not directed to
a method of organizing human activities, let alone one that can be
characterized as an abstract idea." Appeal Brief 15. Appellant further
contends, "independent claims 1, 23, 26 and 29 are analogous to the claims
at issue in PNC Bank as they also recite a fundamental transformation of
data" and "In particular, as recited in independent claim 1, for example, a
bulk source of consumer spending data is segregated and an aggregate
lifetime spending amount is compiled based on the segregated spending
data, an inception date and at least one depletion factor." Appeal Brief 15.
Appellant contends, "Similar limitations are recited in claims 23, 26 and
29." Appeal Brief 15.
It follows from prior Supreme Court cases, and Bilski (Bilski v
Kappas, 561 U.S. 593 (2010)) in particular, that the claims at issue here are
directed to an abstract idea. Like the risk hedging in Bilski, the concept of
insurance is a fundamental economic practice long prevalent in our system
of commerce. The use of insurance is also a building block of ingenuity in
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risk management. Thus, insurance, like hedging, is an "abstract idea"
beyond the scope of§ 101. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2356.
As in Alice Corp. Pty. Ltd., we need not labor to delimit the precise
contours of the "abstract ideas" category in this case. It is enough to
recognize that there is no meaningful distinction in the level of abstraction
between the concept of risk hedging in Bilski and the concept of insurance at
issue here. Both are squarely within the realm of "abstract ideas" as the
Court has used that term. See Alice Corp. Pty. Ltd., 134 S. Ct. at 2357.
Further, claims reciting nothing more than data collection, analysis,
and display are directed to an abstract idea. Elec. Power Grp. v. Alstom S.A.,
830 F.3d 1350, 1353 (Fed. Cir. 2016) (holding that "collecting information,
analyzing it, and displaying certain results of the collection and analysis" are
"a familiar class of claims 'directed to' a patent ineligible concept"); see
also In re TL! Commc 'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir.
2016); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093-94
(Fed. Cir. 2016). Claim 1, unlike the claims found non-abstract in prior
cases, uses generic computer technology to perform data retrieval, analysis,
and generation and does not recite an improvement to a particular computer
technology. See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314-15 (Fed. Cir. 2016) (finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 1, as well as, claims 23, 26 and 29 are directed to the abstract
idea of receiving, analyzing, and generating data.
We agree with the Examiner's finding that at step one of the Alice
analysis, the claims are directed to one or more abstract ideas, we tum to the
second step of the Alice analysis, in which we must determine whether the
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additional elements of the claims transform them into patent-eligible subject
matter.
Step Two: Whether Additional Elements Transform the Idea into
Patent-Eligible Subject Matter
Appellant contends, "As evidenced by this application's prosecution
history, numerous limitations beyond the alleged abstract idea are not
present in the cited prior art, so those limitations clearly constitute
'significantly more' than the alleged abstract idea." Appeal Brief 18.
Appellant further contends, "Further, the claims can be considered to effect a
transformation of a particular article to a different state, i.e., 'segregating the
spending data based on the categories of personal property, the demographic
characteristics and the geographic location' as recited in claim 23, for
example." Appeal Brief 18. Appellant argues, "[T]hat the claims perform
functions that involve a specialized computer system and address a
problem rooted in computer technology" and "embodiments of the invention
address the inability of existing computer systems to accurately and quickly
assemble a spending amount of predicted inventory that is specific to a
particular policyholder." Reply Brief 4.
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer." Alice Corp. Pty. Ltd., 134 S. Ct. at 2359. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer to receive, analyze, modify, and generate data amounts to
electronic data query and retrieval--one of the most basic functions of a
computer. All of these computer functions are well-understood, routine,
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conventional activities previously known to the industry. See Elec. Power
Grp. v. Alstom S.A., supra. See also In re Katz Interactive Call Processing
Patent Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) ("Absent a possible
narrower construction of the terms 'processing,' 'receiving,' and 'storing,' ..
. those functions can be achieved by any general purpose computer without
special programming"). In short, each step does no more than require a
generic computer to perform generic computer functions. As to the data
operated upon, "even if a process of collecting and analyzing information is
'limited to particular content' or a particular 'source,' that limitation does
not make the collection and analysis other than abstract." SAP Am. Inc. v.
InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted).
Accordingly, we are not persuaded the Examiner erred and sustain the
Examiner's 35 U.S.C. § 101 rejection of claims 1-3 and 23-31.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 1-3 and 23-31 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). See 37 C.F.R.
§ 1.136(a)(l )(v).
AFFIRMED
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