Ex Parte Karlinski et al

Patent Trial and Appeal Board

Nov 30, 2018

13911551 (P.T.A.B. Nov. 30, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/911,551 06/06/2013
23460 7590 12/04/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
Frank J. Karlin ski III
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.
713536 1036
EXAMINER
APPLE, KIRSTEN SACHWITZ
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
12/04/2018 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 FRANK J. KARLINSKI III and VINCENT L. NAPOLI
Appeal2017-008374
Application 13/911,551
Technology Center 3600
Before ROBERT E. NAPPI, JENNIFER L. McKEOWN, and
JAMES W. DEJMEK, Administrative Patent Judges.
McKEOWN, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision to reject claims 1--4, 11, and 12. Claims 5-10 have been cancelled.
We have jurisdiction over the remaining pending claims under 35 U.S.C.
§ 6(b ).
We affirm.
1 According to Appellant, the real party in interest is American
International Group, Inc. App. Br. 1.
Appeal2017-008374
Application 13/911,551
STATEMENT OF THE CASE
Appellants' disclosed and claimed invention is directed to
"determining a profit score for an individual policy, which score may be
used to evaluate the desirability of offering or renewing individual insurance
policies." Abstract.
Claim 1 is illustrative of the claimed invention and reads as follows:
1. A method for offering an insurance policy
compnsmg:
electronically receiving from an electronic data system via
a computer network information provided by a potential insured,
which information is associated with a risk of loss for an
automobile insurance policy;
underwriting the insurance policy based on the received
information in order to determine a premium;
receiving selections of a plurality of variables via a
graphical user interface configured for use in calculating an
expected profitability score;
calculating with a computer the expected profitability
score representative of an expected profit margin associated with
the premium, the computer programmed to use the selections for
the variables received via the graphical user interface to calculate
the expected profitability score; and
offering the insurance policy in exchange for payment of
the premium if the expected profitability score exceeds a
predetermined threshold.
THE REJECTIONS
The Examiner rejected claims 1--4, 11, and 12 under 35 U.S.C. § 101
as directed to patent-ineligible subject matter. Final Act. 2-3.
The Examiner rejected claims 1--4, 11, and 12 under pre-AIA
35 U.S.C. § I03(a) as unpatentable over Chen (US 2003/0097292 Al; pub.
May 22, 2003) and Benson (US 7,277,861 B 1; iss. Oct. 2, 2007). Final
Act. 3-5.
2
Appeal2017-008374
Application 13/911,551
ANALYSIS
THE REJECTION UNDER 35 U.S.C. § 101
Claims 1--4, 11, and 12
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1--4, 11, and 12 as directed to patent-ineligible
subject matter.
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), "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
Banklnt'l, 134 S. Ct. 2347, 2355 (2014). The first step in that analysis is to
"determine whether the claims at issue are directed to one of those patent-
ineligible concepts" (id.), for example, to an abstract idea. If the claims are
directed to one of the patent-ineligible concepts, the inquiry proceeds to the
second step where the elements of the claims are considered "individually
and 'as an ordered combination'" to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Alice, 134 S. Ct. at 2355 (quoting Mayo, 566 U.S. at 78-79).
With respect to step one of the eligibility analysis, the Examiner
concludes that the claims are "directed to the abstract idea of risk loss for an
automobile insurance policy and calculating expected profit and offering an
automobile insurance policy." Final Act. 2; Ans. 4. The Examiner explains
that the claimed abstract idea is a fundamental economic practice and a
method of organizing human behavior. Ans. 4; see also Ans. 6 (identifying
3
Appeal2017-008374
Application 13/911,551
that the claimed concept is similar to the claims at issue in buySAFE, Inc. v.
Google, 765 F.3d 1350 (Fed. Cir. 2014)(creating a contractual relationship)
and Bilski v. Kappas, 561 U.S. 593 (2010)(implementing the financial
principle of hedging on a computer)); Ans. 7 (identifying additional
supporting Federal Circuit cases).
With respect to step two of the eligibility analysis, the Examiner
determines that the additional claim limitations do not provide meaningful
limitations to transform the abstract idea into eligible subject matter. Final
Act. 2-3. The Examiner explains that claims "do not make improvements to
another technology, to the functioning of the computer itself or impose
meaningful limitations beyond generally linking the use of an abstract idea
to a particular computer/processor. Any computer can be programmed to
carry out the limitations of the claims." Ans. 4--5. Further, the Examiner
finds that the claimed abstract idea require only a generic computer
performing functions that are well-understood, routine, and conventions.
Ans. 5. Specifically, "receiving data, underwriting, determine a premium,
receiving variable and calculating an expected profitability score and
offering" are well known routine and conventional activities and just
generally link the use of these processes to a generic computer. Ans. 5.
Appellants argue that the claims include additional elements that
amount to significantly more than the abstract idea. 2 App. Br. 4--5. In
2 We note that Appellants only present arguments with respect to step two of
the eligibility analysis. See, e.g., App. Br. 4 ("Without acquiescing in any
way to the conclusion in the pending Office Action that the claims are
directed to 'the abstract idea of risk loss for an automobile insurance policy
and calculating expected profit and offering an automobile insurance
policy,' August 4, 2015 Office Action, p. 2, it is respectfully submitted that
4
Appeal2017-008374
Application 13/911,551
particular, Appellants identify, for example, to the limitations of (1) an
electronic data system, (2) a computer network, (3) a graphical user interface
(GUI) configured for use in calculating an expected profitability score, and
(4) a computer programmed to use the selections for the variables received
via the graphical user interface to calculate the expected profitability score.
App. Br. 5. According to Appellant, "[t]hese steps identify particular
devices and require a particularly-programmed machine" and these more
than insignificant features transform the abstract idea into eligible subject
matter. App. Br. 5.
We disagree. Appellants merely recite claim limitations without
persuasively explaining how these features transform the abstract idea into
eligible subject matter. As the Examiner explains, "none of the limitations
carried out via the use of a computer or processor, has any meaningful
limitations beyond generally linking the use of an abstract idea to a
particular technological environment." Ans. 5. The recited computer
components ( e.g., "electronic data system," "computer network," "graphical
user interface," and "computer") are recited at a high level of generality such
that the claims recite generic computer components performing generic
computer functions that are well-understood, routine and conventional
activities. Ans. 5. Moreover, merely collecting data, i.e. receiving variables,
and analyzing data, i.e. calculating a profit score, are generic functions that
are well understood, routine, and conventional activities. See, e.g., OIP
Technologies, Inc. v. Amazon.com, Inc., 788 F.3d 1359 (2015) (holding
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."); see also App. Br. 3-6.
5
Appeal2017-008374
Application 13/911,551
ineligible claims directed to collecting information that is analyzed to
determine an offer price for a product). As such, the claims here recite "the
performance of an abstract business practice" using a "conventional
computer" and "[s]uch claims are not patent eligible." DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014).
Appellants also assert that
The claimed method employs a specially programmed machine
that can determine "a profit score for an individual policy, which
score may be used to evaluate the desirability of offering or
renewing individual insurance policies." Id. at p. 2, ,r [0006].
This is a significant improvement over any existing
technological process known at the time of the invention.
App. Br. 5; see also App. Br. 6 (citing guidance regarding eligibility for
improvements to another technology or technical field). Therefore,
Appellants maintain that the claims are directed to patent-eligible subject
matter.
We find Appellants' argument unpersuasive. Notably, the argued
improvement is really an improvement of the underlying economic practice
itself, rather than a technological improvement of the computer system that
implements the underlying economic practice. See, e.g., App. Br. 5 (noting
that prior art processes do not use a calculated profitability score to
determine whether to offer or renew an insurance policy). Such an
improvement does not constitute an improvement to the functionality of the
underlying computer system or technological process. Therefore, we are not
persuaded of error in the Examiner's determination.
Accordingly, we affirm the Examiner's rejection of claims 1--4, 11,
and 12 as directed to patent-ineligible subject matter.
6
Appeal2017-008374
Application 13/911,551
THE REJECTION UNDER 35 U.S.C. § 103 BASED ON CHEN AND BENSON
Claims 1--4, 11, and 12
Based on the record before us, we are not persuaded that the Examiner
erred in rejecting claims 1--4, 11, and 12 as unpatentable over Chen and
Benson.
Appellants argue that a skilled artisan would not have combined Chen
and Benson. App. Br. 6-8. Specifically, Appellants assert that
It is respectfully submitted that the ordinary artisan, having no
prior knowledge of Appellants' invention, would not have a
credible reason for modifying Chen's method for stability
analysis of profitability of target markets for goods or services
with any of the features of Benson's insurance policy renewal
method in such a way as to arrive at the method for offering an
insurance policy recited in claim 1.
App. Br. 7. Appellants explain that Chen is "particularly interested in
estimating 'the stability, or accuracy, of profitability scores of target markets
for different goods or services,'" whereas Benson is directed to an insurance
renewal method and system where a remote agent can bind the insurance
carrier. App. Br. 9. According to Appellants, "Benson and Chen are aimed
at addressing the different problems and arrive at different, non-compatible
solutions." Id.
We find Appellants' argument unpersuasive. Both Chen and
Benson are directed to providing insurance policies and the Examiner
relies on Benson for the limited purpose of offering an insurance
policy. See Ans. 8-9 (noting that Chen may not have been "specific
enough regarding insurance policies"). As the Examiner explains,
It is clear that one would be motivated to combine prior art
elements according to know methods to yield predictable results.
7
Appeal2017-008374
Application 13/911,551
Specifically both Chen and Benson both relate to same subject
area of evaluating insurance claims and although Chen does not
explicitly have offering the policy it is inherent that when legally
allowed policies offered may change based on the evaluation
done in Chen as this is standard business practices explicitly
taught in Benson.
Final Act. 4--5. Moreover, Chen expressly teaches a profitability calculation
for goods or services, such as an insurance product. Chen ,r 3, 40. Although
offering an insurance product may not be explicitly disclosed, it would have
been obvious to a skilled artisan at the time of the invention to offer the good
or service when the profitability calculation resulted in showing a profit, i.e.,
the profitability calculation is above a certain threshold. See KSR Int 'l. Co.
v. Teleflex, Inc., 550 U.S. 398,418 (2007) (citations omitted)("the
[obviousness] analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ."). Therefore, we are not persuaded of error in the
Examiner's determination.
Appellants next assert that the combination of Chen and Benson fails
to teach or suggest offering an insurance policy if the profitability score
exceeds a predetermined threshold, as recited in claim 1. App. Br. 10.
Specifically, Appellants assert that:
Neither Chen nor Benson teach or suggest a method including
the steps of: (1) "receiving selections of a plurality of variables
via a graphical user interface configured for use in calculating an
expected profitability score" and (2) "calculating with a
computer the expected profitability score representative of an
expected profit margin associated with the premium, the
computer programmed to use the selections for the variables
8
Appeal2017-008374
Application 13/911,551
received via the graphical user interface to calculate the expected
profitability score," as recited in claim 1.
App. Br. 10.
We disagree. First, Appellants merely repeat the claim language
without persuasively identifying any deficiency of the combination of Chen
and Benson. See 37 C.F.R. § 4I.37(c)(l)(vii)(stating that "[a] statement
which merely points out what a claim recites will not be considered an
argument for separate patentability of the claim."). We also agree with the
Examiner that Chen expressly teaches the claimed limitation of a
profitability calculation of a good or service. See, e.g., Final Act. 4; Chen
,r 40 (noting that "[i]llustrated in FIG. 6 is an example of one
implementation of the formula for calculating the profitability of a portfolio
of goods or services."). The Examiner explains, and takes Official Notice,
that it would have been well known at the time of the invention that a
profitability score has a threshold. For example, "[i]f you are calculating a
score to make decisions about insurance policies ( or any service such as in
Chen) you would use that to make a decision you would have a scale and
threshold." Ans. 9. As such, we are not persuaded of error in the
Examiner's findings.
Accordingly, we affirm the Examiner's rejection of claims 1--4, 11,
and 12 as unpatentable over the combination of Chen and Benson.
DECISION
We affirm the Examiner's decision to reject claims 1--4, 11, and 12.
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).
9
Appeal2017-008374
Application 13/911,551
AFFIRMED
10