Ex Parte McHugh et al

Patent Trial and Appeal Board

Mar 16, 2018

13919102 (P.T.A.B. Mar. 16, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/919,102 06/17/2013
12394 7590
Travelers Companies
c/o Fincham Downs LLC
90 Grove Street Suite 205
Ridgefield, CT 06877
03/20/2018
FIRST NAMED INVENTOR
Robert McHugh
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.
TRO 1-004-02 5748
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
03/20/2018 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):
bripple@travelers.com
docketing@finchamdowns.com
docketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT MCHUGH, KEEFE KIRSHEN, and CAROL SWIRSKY
Appeal 2016-004381 1
Application 13/919, 102 2
Technology Center 3600
Before MURRIEL E. CRAWFORD, ANTON W. PETTING, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-17. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed Oct.
10, 2015) and Reply Brief ("Reply Br.," filed Mar. 21, 2016), and the
Examiner's Answer ("Ans.," mailed Jan. 22, 2016) and Final Office Action
("Final Act.," mailed Mar. 11, 2015).
2 Appellants identify The Travelers Indemnity Company as the real party in
interest. App. Br. 3.
Appeal2016-004381
Application 13/919, 102
CLAIMED INVENTION
Appellants' claimed invention relates to a method that reduces the
time from a work-related injury to a report of a workers compensation claim
into the insurance carriers system. See Spec. i-f 100.
Claims 1--4 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An apparatus for processing a workers
compensation insurance claim comprising:
a claim reporting computing system operable to receive,
electronically over a network and from a remotely located
insurance medical liaison, a report of a workers compensation
claim for a work-related injury; and
a claim management computing system, the claim
management computing system operable to communicate with
the claim reporting computing system for processing a workers
compensation claim and comprising:
a processing device; and
a memory device in communication with the
processing device, the memory device storing instructions
that when executed by the processing device result in:
receiving, electronically over a network, an
electronic version of a medical report from a
treating physician, the medical report indicating an
evaluation of an injury of an injured worker;
extracting from the electronic version
identifying information that allows a search of
records in a database accessible to the processing
device;
determining, based on the identifying
information and by searching the database, that a
report of a claim for the injury has previously been
received by the claim reporting computing system
from a medical liaison; and
authorizing, prior to a report of the claim by either an
employer of the injured worker or the injured worker when the
report of the claim has previously been received from the medical
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liaison, a progression of an investigation of the claim by a claim
professional based on the medical report,
wherein authorizing the progress10n of the
investigation comprises:
(a) generating an electronic message to the claim
professional, the electronic message including an indication
of the medical report and the identifying information; and
(b) activating at least one field of a user interface used
by the claim professional in processing the claim, such that
data can be input to the at least one field by the claim
professional after the activating.
REJECTION
Claims 1-17 are rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter.
ANALYSIS
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
"new and useful process, machine, manufacture, or composition of matter."
35 U.S.C. § 101. The Supreme Court, however, has long interpreted§ 101
to include an implicit exception: "[l]aws of nature, natural phenomena, and
abstract ideas" are not patentable. See, e.g., Alice Corp. Pty. Ltd. v. CLS
Bank Int'!, 134 S. Ct. 2347, 2354 (2014) (citing Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2116 (2013).
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., 134 S. Ct.
at 2355. The first step in that analysis is to "determine whether the claims at
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issue are directed to one of those patent-ineligible concepts." Id. (citation
omitted). If the claims are not directed to a patent-ineligible concept, e.g.,
an abstract idea, the inquiry ends. Otherwise, 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." Id. (quoting Mayo, 566 U.S. at 79, 78).
The Court acknowledged in Mayo, 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. Therefore, the Federal Circuit has
instructed that claims are to be considered in their entirety to determine
"whether their character as a whole is directed to excluded subject matter."
McRO, Inc. v. Bandai Namco Games Am., Inc., 837 F.3d 1299, 1312
(Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc.,
790 F.3d 1343, 1346 (Fed. Cir. 2015)).
Here, the Examiner determines that the claims are directed to
processing a workers compensation insurance claim, which is a fundamental
economic practice and a method of organizing human activity by
authorizing. Specifically, with respect to the latter category, the Examiner
finds that prior to a report of the claim by either an employer or an injured
worker, the claimed invention authorizes a progression of an investigation of
the claim based on the medical report by a claim professional. Final Act. 3.
The Examiner further finds that the elements considered individually (e.g.,
receiving, extracting, determining, and authorizing, wherein authorizing
includes generating an electronic message and activating at least one field of
a user interface) execute in a manner routinely and conventionally expected
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of these elements. Id. at 3--4. The elements together "undertake their roles
in performance of their activities according to their generic functionalities[,]
which are well-understood, routine and conventional." Id. at 4.
Appellants argue that the§ 101 rejection cannot be sustained because
the Examiner has provided no evidence that the subject matter of the claims
is sufficiently similar to at least one concept the courts have identified as an
abstract idea. App. Br. 14, 19--23. Notably, Appellants acknowledge that
"claims 1 - 17 recite an apparatus for processing a workers compensation
insurance claim." Id. at 20. But Appellants charge that
[ t ]he claims do not recite a mathematical algorithm, a method for
mitigating settlement risk, establishing a contractual
relationship, nor a fundamental economic or longstanding
commercial practice. The claims do not recite any of the
concepts courts have found to be abstract ideas, much less a
fundamental economic practice or method of organizing human
activity, as was alleged in the Final Office Action.
Id. at 21. And Appellants contend that the claims are "directed to a very
specific event which occurs in response to another specific event within the
context of a claim management computing system: generating an electronic
message using information extracted from an electronic report and activating
a field in a user interface based on the received electronic report." Id.; see
also id. at 22 (asserting that the claims "address a challenge (increasing the
speed and efficiency of processing ... a workers compensation claim from
time of injury to finalization of the claim investigation) that is particular to
the field of workers compensation insurance claims).
Yet, the first step in the Alice/Mayo inquiry asks whether the focus on
the claims is on a specific improvement in computer capabilities or
technology or, instead, on a process that qualifies as an abstract idea for
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which computers are invoked merely as a tool. See Enfzsh, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). Here, the problem
identified by Appellants falls into the latter category, i.e., an improvement in
the abstract idea of processing workers compensation claims that uses
technology as a tool. The Specification supports this conclusion. For
example, the Specification describes how employers often are remiss in
timely reporting a workers compensation ("WC") claim to the insurance
company in a timely manner, resulting in inefficient resources, anxiety,
excess costs, and lengthy return-to-work times. Spec. i-f 100. Appellants
recognized that the processing of a WC claim could be improved by entering
the WC claim into the insurance provider's system "earlier rather than later"
to initiate more timely investigation of the WC claim. Id. i-f 102.
With this desired improvement to business methodology in mind, the
inventors created an alternate reporting mechanism for WC claims by
embedding an insurance medical liaison into the process. Id. i-f 107. The
insurance medical liaison could be a live or virtual person affiliated with the
insurance company to interface with and evaluate injured workers. Id. The
Specification identifies benefits achieved by providing an insurance medical
liaison as an alternate source for claim reporting, including minimizing delay
in the process, obtaining information directly from the worker soon after the
injury, and observing physical and mental state of the worker. Id. i-f 109.
Thus, the Specification frames the problem and solution of the invention as
one related to an improvement to the methodology for processing workers
compensation claims, not technology.
Consistent with this framing, claim 1, for example, recites an
apparatus for processing a workers compensation claim comprising a claim
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reporting computing system, and a claim management computing system
operable to communicate with the claim reporting computing system. The
apparatus for processing a workers compensation claim results in
authorizing a progression of an investigation of the claim prior to a report of
the claim by an employer of the injured worker or the injured worker.
Specifically, the claim management computing system includes a processing
device operable to receive a report over a network, and a memory device
with instructions that when executed by the processing device result in:
( 1) receiving a report, (2) extracting information from the report,
(3) determining that a report has been received, and ( 4) authorizing a
progression of an investigation by a claim professional based on the medical
report prior to a report of the claim by an employer or injured worker when
the report of the claim has been previously received from the medical
liaison. Independent claims 2--4 similarly each recite an apparatus for
processing the workers compensation claim that focuses on improving the
process via alternative reporting mechanisms, where claim 2 results in
authorizing a finalization of the investigation and claims 3 and 4 result in
authorizing an initiation of the investigation. Together, the claims and
Specification support the Examiner's determination that the claims focus on
an improved process for processing workers compensation claims.
Appellants charge that fundamental economic practices, per USPTO
guidelines, constitute "concepts relating to the economy and commerce, such
as agreements between people in the form of contracts, legal obligations, and
business relations." App. Br. 21 (citation omitted). Appellants next assert
that "claims 1 - 17, on their face, do not fit into any of these examples or
broader category [sic] as defined by the Office." Id. Notwithstanding that
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the Board reviews Appellants' arguments against case law and not US PTO
guidance, Appellants cannot reasonably deny that processing workers
compensation claims squarely falls within the description cited by
Appellants for a fundamental economic practice. Appellants' Specification,
for example, describes that WC insurance companies receive reports of
claims related to injuries sustained by workers while on a job for an
employer, and then investigate the claim to determine whether to accept and
pay benefits under the policy. Spec. i-f 100. In other words, claims
processing sets forth contractual and legal obligations of the parties and
relates to the economy and commerce. Moreover, we observe that the
Applicant and real party in interest (i.e., The Travelers Indemnity Company)
admits that such claims processing is a long-standing and ubiquitous
economic practice. See, e.g., Workers compensation insurance for today's
unique risks, TRAVELERS, https://www.travelers.com/business-
insurance/workers-compensation (touting that Applicant "has been
providing workers compensation coverage for more than 100 years" and that
most states require employers to carry workers compensation insurance -
even for temporary or seasonal workers (emphasis added)).
We also are not persuaded of Examiner error by Appellants'
arguments regarding preemption. App. Br. 22-23. "Where a patent's claims
are deemed only to disclose patent ineligible subject matter under the Mayo
framework, as they are in this case, preemption concerns are fully addressed
and made moot." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015). In addition, "the absence of complete
preemption does not demonstrate patent eligibility." Id. (citing Alice Corp.,
134 S. Ct. at 2354).
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In the Reply Brief, Appellants assert that "the Office ... has made the
streamlined eligibility analysis a part of the two-part test under Alice."
Reply Br. 5. As an initial matter, the Board evaluates Appellants' arguments
against case law, even if guidance goes beyond the case law and is more
restrictive on the Examiner than the case law. Nonetheless, here, guidance
does not go beyond the case law to impose a streamlined eligibility analysis,
as argued by Appellants. Instead, the guidance provides the streamlined
analysis as an optional tool for Examiners to use at their discretion. See
2014 Interim Guidance on Patent Subject Matter Eligibility, 79 Fed. Reg.
74618, 74625 (Dec. 16, 2014) ("[A] streamlined eligibility analysis can be
used." (emphasis added)). Further, "if there is doubt as to whether the
applicant is effectively seeking coverage for a judicial exception itself, the
full analysis should be conducted." Id. (emphasis added). Here, the
Examiner's decision to perform a full § 101 analysis does not constitute
error.
To the extent Appellants argue that the claims are patent-eligible
because the claimed invention is novel and non-obvious in view of the prior
art (see App. Br. 22), that argument is unpersuasive. A finding of novelty or
non-obviousness does not automatically lead to the conclusion that the
claimed subject matter is patent-eligible. "Groundbreaking, innovative, or
even brilliant discovery does not by itself satisfy the § 101 inquiry." Ass 'n
for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013).
A novel and non-obvious claim directed to a purely abstract idea is,
nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90; see also Diamond
v. Diehr, 450 U.S. 175, 188-89 (1981) ("The 'novelty' of any element or
steps in a process, or even of the process itself, is of no relevance in
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determining whether the subject matter of a claim falls within the § 101
categories of possibly patentable subject matter.").
Turning to step two of the analysis, Appellants argue that the claims
"improve the field of data processing by providing a mechanism which
allows a workers compensation claim investigation to be initiated and
progressed even before a report of the claim is reported by an injured worker
or an employer of the injured worker." App. Br. 24 (citing benefits of
invention as improved return-to-work time frames, improved productivity
for employer, improved medical care for worker, and decreased costs to
employer). This argument is not persuasive for reasons similar to those we
articulated under step one.
Appellants assert that the invention provides an improvement by
"electronically receiv[ing] a report of a workers compensation claim from a
remotely located insurance medical liaison who is neither the injured worker
nor an employer of the injured worker." Id. at 25. Yet, the claimed step of
receiving is devoid of any implementation details or technical description
that would permit us to conclude that the claim as a whole is directed to
something more than the abstract idea identified by the Examiner. See
Secured Mail Sols. LLC v. Universal Wilde, Inc., 873 F.3d 905, 912 (Fed.
Cir. 2017) (concluding that claims do not satisfy step two where "[t]he claim
language does not provide any specific showing of what is inventive about
the [limitation in question] or about the technology used to generate and
process it").
Appellants further assert that the claimed process is "not already well
known in the art, as evidenced by the lack of any rejection under either of 35
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U.S.C. §§ 102 or 103." App. Br. 25. But, Appellants seemingly
misapprehend the controlling precedent.
Although the second step in the Mayo/Alice framework is termed a
search for an "inventive concept," the analysis is not an evaluation of
novelty or non-obviousness, but rather, a search for "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."' Alice Corp., 134 S. Ct. at 2355 (alteration in original)
(citation omitted). As described above, a novel and nonobvious claim
directed to a purely abstract idea is, nonetheless, patent-ineligible. See
Mayo, 566 U.S. at 90.
Appellants argue that "the claims are applied to a particular machine
that is not a general purpose computer." App. Br. 25. Specifically,
Appellants contend that the claimed apparatus requires "two specialized
modules which interface together to more efficiently process a workers
compensation claim in a manner different from what was known in the art."
Id. Yet, we find no indication in the record, nor do Appellants point to
anything in the record to indicate, that the claim reporting computing system
and claim management computing system require any specialized computer
hardware or other inventive computer components, invoke any inventive
programming, or that the claimed invention is implemented using other than
generic computer components to carry out the claimed operations. Instead,
claim 1 recites only generic computer components and features: a "claim
reporting computing system" and a "claim management computing system"
comprising a "processing device" and a "memory device," and the
Specification describes the use of generic components. See, e.g., Spec.
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i-fi-f 139--148. The Supreme Court made clear in Alice that "[s]tating an
abstract idea while adding the words 'apply it with a computer"' does not
transform a patent-ineligible abstract idea into a patent-eligible invention.
Alice Corp., 134 S. Ct. at 2358.
Appellants argue that the claims each include a limitation other than
what is well-understood, routine, or conventional in the field, or adding
unconventional steps that confine the claim to a particular useful application.
App. Br. 26. Specifically, Appellants assert that the steps of receiving a
report, communicating the report, and authorizing "an initiation (claim 1),"3
"progression (claim 2),"4 or "finalization (claims 3 and 4)"5 based on the
report are novel steps that provide a more efficient system for processing
WC claims. Id. However, Appellants conflate the search for an "inventive
concept" at the second step of the Alice/Mayo analysis with an evaluation of
novelty or non-obviousness. The second step is a search for "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."' Alice Corp., 134 S. Ct. at 2355 (alteration in original)
(citation omitted). Here, the steps of receiving, communicating and
authorizing relate to an improvement to the abstract idea of processing the
workers compensation claim. Appellants do not identify, and we do not
find, anything in the claims or Specification to indicate an element or
combination of elements that amounts to significantly more than the abstract
idea.
3 Claim 1 recites authorizing the progression, not an initiation.
4 Claim 2 recites authorizing a finalization, not progression.
5 Claims 3 and 4 each recites authorizing an initiation, not a finalization.
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We are not persuaded for the foregoing reasons that the Examiner
erred in rejecting claims 1-17 under 35 U.S.C. § 101. Therefore, we sustain
the Examiner's rejection.
DECISION
The Examiner's rejection of claims 1-17 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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