Ex Parte Perry et al

Patent Trial and Appeal Board

Feb 25, 2019

10777634 (P.T.A.B. Feb. 25, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
10/777,634 02/13/2004
21967 7590 02/25/2019
Hunton Andrews Kurth LLP
Intellectual Property Department
2200 Pennsylvania Avenue, N.W.
Washington, DC 20037
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Timothy Patrick Jon Perry
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.
52493.000368 5377
EXAMINER
BARR, MARY EV ANGELINE
ART UNIT PAPER NUMBER
3626
MAIL DATE DELIVERY MODE
02/25/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte TIMOTHY PATRICK JON PERRY,
MICHAEL DAVID METZGER, DIANE M. RUSSELL,
and RAJESH RAJARAM KADAM
Appeal2017-010876
Application 10/777 ,634 1
Technology Center 3600
Before JASON V. MORGAN, ADAM J. PYONIN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
MORGAN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Introduction
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's Final
Rejection of claims 1, 3-8, 10, 12, 14--16, and 18. Claims 2, 9, 11, 13, 17,
19, and 20 are canceled. Appeal Br. 22-23, 25, 27-28, and 30. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellants identify Genworth Holdings, Inc., and its parents and subsidiary
companies (not specifically identified), as the real parties in interest. Appeal
Br. 1.
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Application 10/777 ,634
Summary of disclosure
Appellants disclose a method "for routing and processing insurance
related data" in which data entries in insurance application-related
documents that are not validated as clean trigger generation of an exception
task that, when resolved, enables validation of the data. Abstract.
Representative claim (key limitations emphasized)
1. A system that routes and processes insurance related data, the
system comprising:
a raw data database configured to electronically store an insurance
application related document, the document comprising a plurality of
fields;
a rules engine configured to convert each field of the document into a
plurality of respective data elements having a common format,
wherein the common format is eXtensible Markup Language (XML);
the rules engine configured to:
determine whether each of the plurality of fields is blank,
and
determine whether each of the data elements is validated
as clean data;
storing2, by the system, each data element determined to be clean data
element in an operational database for application processing;
the rules engine further configured to perform operations upon
determining that at least one data element is not a clean data element,
the operations including:
2 This claimed storing step represents a limitation directed to a method in a
claim that is directed to a system. Claims that recite both a system and a
method of using the system are indefinite under 35 U.S.C. § 112, second
paragraph. See, e.g., Rembrandt Data Techs., LP v. AOL, LLC, 641 F.3d
1331, 1339 (Fed. Cir. 2011). In the event of further prosecution, Appellants
and the Examiner should ensure that this issue is resolved.
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(a) performing a first determination of whether the data element
is not clean due to required information not being present, the
first determination being performed based on determining
whether the data element satisfies a first set of conditions
related to whether required information is present in the data
element, and the system deeming the first determination not
satisfied if the data element does not satisfy the first set of
conditions AND
(b) performing a second determination, separate from the first
determination, of whether the one data element is not clean due
to a required format of information not being present, the
second determination being performed based on determining
whether the data element satisfies a second set of conditions
related to whether the required format of information is present
in the data element, and the system deeming the second
determination not satisfied if the data element does not satisfy
the second set of conditions, and
determining that at least one selected from the group consisting
of (a) the first determination was not satisfied and (b) the
second determination was not satisfied, and
based on such determination the system deeming the data
element as not clean; and
the rules engine further configured to generate an exception task upon
determining that at least one data element is not clean, the rules
engine generates an exception task constituted by the rules engine
determining a process that is to be performed on one data element of
the at least one data element that is not clean, the exception task
associated exclusively to the one data element so as to process the one
data element as an individual data element, and
the rules engine configured to receive a resolution for the one data
element to the exception task for the one data element, upon the
performance of the determined process, thereby enabling validation of
the at least one data element,
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the rules engine configured to review data elements of the document
as the document progresses through each stage of pending,
approval, issuance and in-force.
App. Br. 21-22 (emphasis added).
Rejections
The Examiner rejects claims 1, 3-8, 10, 12, 14--16, and 18 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter. Final
Act. 2-3.
The Examiner rejects claims 1, 3-8, 10, 12, 14--16, and 18 under
35 U.S.C. § I03(a) as being obvious over Anderson et al. (US 5,235,654;
issued Aug. 10, 1993) ("Anderson"), Huff (US 2002/0194033 Al; published
Dec. 19, 2002), and Pepoon et al. (US 2004/0128182 Al; published July 1,
2004) ("Pepoon"). Final Act. 4--21.
35 U.S.C. § 101
Principles of law
To be statutorily patentable, the subject matter of an invention must be
a "new and useful process, machine, manufacture, or composition of matter,
or [a] new and useful improvement thereof." 35 U.S.C. § 101. There are
implicit exceptions to the categories of patentable subject matter identified
in§ 101, including: (1) laws of nature; (2) natural phenomena; and (3)
abstract ideas. Alice Corp. v. CLS Bankint'l, 573 U.S. 208,217 (2014).
The Supreme Court has set forth a framework for distinguishing patents with
claims directed to these implicit exceptions "from those that claim patent-
eligible applications of those concepts." Id. ( citing Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)). The evaluation
follows a two-part analysis: (1) determine whether the claim is directed to a
patent-ineligible concept, e.g., an abstract idea; and (2) if so, then determine
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whether any element, or combination of elements, in the claim is sufficient
to ensure that the claim amounts to significantly more than the patent-
ineligible concept itself. See Alice, 573 U.S. at 217-18.
Although the second step in the Alice/Mayo 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, 573 U.S. at 217-18 ( citation omitted). A novel and
nonobvious claim directed to a purely abstract idea is, nonetheless, patent-
ineligible. See Mayo, 566 U.S. at 90; see also Ass 'nfor Molecular
Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)
("Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry").
If a claim proves to be unpatentable as a result of the two-part
analysis, no additional determination regarding preemption is necessary.
"While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility," as
"questions on preemption are inherent in and resolved by the § 101
analysis." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379
(Fed. Cir. 2015) (internal quotation marks and citation omitted).
The U.S. Patent and Trademark Office (USPTO) recently published
revised guidance on the application of the two-part analysis. US PTO' s
January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) ("Memorandum").
Under that guidance, we first look to whether the claim recites:
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( 1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human interactions such as a fundamental economic practice, or
mental processes) (see Memorandum, 84 Fed. Reg. at 54 (Step 2A-
Prong One)); and
(2) additional elements that integrate the judicial exception into a
practical application (see Memorandum, 84 Fed. Reg. at 54--55 (Step
2A-Prong Two); MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that are not
"well-understood, routine, conventional" in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Memorandum, 84 Fed. Reg. at 56 (Step 2B).
Memorandum Step 2A - Prong One
Claim 1 is directed to a "system that routes and processes insurance
related data" where, through use of a raw data database and rules engine, the
system generates an exception task upon determination that required
information in a document is missing or formatted incorrectly, receives a
resolution, and thus enables review of "data elements of the document as the
document processes through each stage of: pending, approval, issuance and
in-force." The Examiner determines claim 1 is directed to an abstract
fundamental economic practice, comparing the claimed invention to abstract
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claims directed to "processing loan information," "managing an insurance
policy," and "generating rule based tasks." Final Act. 2 (citing Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012); Bancorp Servs., L.L.C.
v. Sun Life Assur. Co. of Canada (US.), 687 F.3d 1266, 1276 (Fed. Cir.
2012); and Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336 (Fed. Cir. 2013)); see also Ans. 3.
Appellants contend the Examiner erroneously fails to "tie the
particularly-recited claim language to the purported abstract idea, and hence
does not present a prima facie case that the claims only recite an abstract
idea." Appeal Br. 13; see also id. at 12 (citing Secure Axcess, LLC v. PNC
BankNat'lAss'n, 848 F.3d 1370 (Fed. Cir. 2017), cert. granted,judgment
vacated as moot sub nom. PNC Bank Nat. Ass 'n v. Secure Axcess, LLC, 138
S. Ct. 1982, 201 L. Ed. 2d 243 (2018)). Appellant argues the Examiner
"merely concludes, without any support or analysis, that the claims are
similar to managing an insurance policy and generating rule-based tasks but
fails to establish how the any prior cases support this overgeneralized
allegation." Reply Br. 4.
Appellants' arguments are unpersuasive because even in
"conventional systems for processing insurance applications .... agents
must ... review [application] information for completeness." Spec. ,r 2.
That is, the type of insurance-related routing and processing claimed
represents a fundamental economic practice (i.e., ensuring that all required
information is obtained when processing an insurance application). Final
Act. 2-3. Therefore, we agree with the Examiner that claim 1 recites
abstract subject matter, as fundamental economic practices are "certain
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methods of organizing human activity" pursuant to the guidelines.
Memorandum, 84 Fed. Reg. at 52.
Memorandum Step 2A - Prong Two
Appellants contend claim 1 does "not merely recite an abstract idea
because there are particular limitations that confine the scope of [ claim 1] to
less than an abstract idea and there is no evidence on the record to establish
that [ the system of claim 1 is] merely an abstract idea." Appeal Br. 13.
Claim 1, however, does not include any recitations that limit the
process implemented by the claimed system in a manner that-aside from
implementation using generic computer technologies discussed below-
differs from what a human insurance application reviewer would do in
routing and processing insurance related data. Cf McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016) (citing
Myriad, 569 U.S. at 595-96) (a method with limited rules reflecting a
specific implementation that was "a patentable, technological improvement
over ... existing ... techniques"). That is, a human would have looked at
each insurance application entry during processing of the application and, in
response to entries being incomplete or improperly formatted (i.e., not
"clean"), request clarification and additional documentation as appropriate
(i.e., create an exception task). Spec. ,r 2.
Appellants argue that the additional limitations of claim 1 make the
claim substantially more than any underlying abstract idea because "the
claimed computer processor is integral to the claimed invention." Appeal
Br. 15. Specifically, Appellants contend "it is not possible for the steps of
the claims to be performed without a computer." Id.
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Appellants' contention is unpersuasive because simply introducing a
computer into a claim does not "supply the necessary inventive concept."
Alice, 573 U.S. 208, 222. It is a tautology that a claim that includes a
computer or steps executed on a computer cannot be performed without a
computer. Nonetheless, "mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
Id. at 223. That is, "[a]n inventive concept that transforms the abstract idea
into a patent-eligible invention must be significantly more than the abstract
idea itself, and cannot simply be an instruction to implement or apply the
abstract idea on a computer." BASCOM Global Internet Services, Inc. v.
AT&T MobilityLLC, 827 F. 3d 1341, 1349 (Fed. Cir. 2016) (citing Alice,
573 U.S. at 223-24).
Appellants argue that,
[l]ike the claims in Bascom, the claims here recite improvements
to conventional systems and methods that require specific
computer components including "a raw data database" that a
specific "rules engine" configured to convert each field of the
document into a plurality of respective data elements having a
common format, wherein the common format is eXtensible
Markup Language (XML).
Reply Br. 5. Thus, Appellants contend claim 1 sets forth an "ordered
combination of the claim elements [that] results in significantly more than
an abstract idea. Id. at 3.
Appellants' arguments are unpersuasive because the computer
technology recitations such as "a raw data database" and a "common format
... eXtensible Markup Language" merely limit the abstract idea to a
narrower field without introducing a patent-eligible inventive concept. See
Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29
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(Fed. Cir. 2017) (limiting a claimed index to XML tags narrowed the scope
of a claims still directed to patent-ineligible subject matter).
The Specification shows that the "raw data" database preserves each
received document in "the native format in which the document was
received" (Spec. ,r 19) while the claimed conversion of received data into
data having a generic format in the form of XML obviates the need "to
convert the data into a variety of different formats each time it moves
through the different steps in the overall process" (id. ,r 20). These elements
merely serve to provide insignificant data-gathering features that "add
nothing of practical significance to the underlying abstract idea."
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (citing
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011)).
For these reasons, Appellants' arguments and the record before us fail
to demonstrate that the invention of claim 1 integrates the underlying
abstract idea into a patent-eligible practical application.
Memorandum Step 2B
Furthermore, neither claim 1 nor the Specification ascribes any
specific computer technology to the claimed rules engine. Rather, "the rules
engine converts ... raw data ... into data having a generic formation"
(Spec. ,r 20) and includes "procedures to check for certain conditions and,
based on the results make decisions regarding information flow and
exception handling" (id. ,r 24). See also id. ,r,r 21, 26-27, Figs. 1-3. Thus,
the rules engine does not represent an additional limitation that makes the
claimed invention significantly more than the underlying abstract idea, but
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instead represents generic computer technology for implementing the
abstract idea.
Because claim 1 does not include additional recitations that make
claim 1 significantly more than the underlying abstract idea, we sustain the
Examiner's 35 U.S.C. § 101 rejection of claim 1, and claims 3-8, 10, 12,
14--16, and 18, which Appellants do not argue separately.
35 U.S.C. § 103(A)
In rejecting claim 1 as obvious, the Examiner finds that Anderson's
advanced data capture system teaches or suggests a rules engine configured
to convert each field of the document into a plurality of respective data
elements having a common format. Final Act. 5 ( citing Anderson col. 2, 1.
7---col. 3, 1. 12, col. 12, 1. 25---col. 2, 1. 13, col. 26, 11. 34--39, Figs. 4A, 7 A-E).
The Examiner relies on Huff's disclosures related to extraction and analysis
of data information to teach or suggest the claimed rules engine
determinations. Final Act. 6-7 (citing Huff,r,r 14, 50). The Examiner relies
on information review and decision-making disclosures in Pepoon to teach
or suggest configuring the rules engine to review data elements of the
document as the document progresses through each stage of pending,
approval, issuance and in-force. Final Act. 7-8 (citing Pepoon ,r,r 6, 17, 25,
28, 30, 33).
Appellants contend the Examiner erred because "Anderson's
'advanced data capture system' is merely a scanner that performs character
recognition." Appeal Br. 7; see also Reply Br. 6. Appellants argue the
claimed rules engine is substantially more than Anderson's advanced data
capture system because, for example, the Specification discloses a rules
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engine that continually reviews data. Appeal Br. 17 ( citing Spec. ,r,r 24, 28-
29).
Appellants' arguments are unpersuasive because they rely, in-part, on
features described in the Specification that are not claimed (e.g., continual
review of data). See Ans. 6. Furthermore, Appellants' argument attacks
Anderson individually even though the Examiner relies on Anderson, in
combination with Huff and Pepoon, to teach or suggest the disputed
recitations. See Final Act. 6-8; Ans. 6. In particular, Appellants'
contentions do not show error in the Examiner's reliance on Huffs data
extraction and analysis disclosures to teach or suggest modifying Anderson
to further address recitations related to case processing. Compare Appeal
Br. 17 with Final Act. 6-7.
Similarly, Appellants contend "Pepoon fails to describe a rules engine
or even mention the term 'rules' in the specification." Appeal Br. 17. But
Appellants do not explain how the claimed rules engine, itself, is patentably
distinct over the prior art computing devices ( all of which, necessarily,
implement rules). More importantly, the Examiner relies on Anderson and
Huff to teach or suggest a rules engine. Final Act. 5-7. The Examiner
merely relies on Pepoon to teach or suggest modifying a rules engine to
review data elements of the document as the document progresses through
each stage of pending, approval, issuance and in-force. Final Act. 7-8
( citing Pepoon ,r,r 6, 17, 25, 28, 30, 33).
Appellants further contend the Examiner "makes only conclusory
statements that fail to provide any reason for making the proposed
modifications." Appeal Br. 18; see also Reply Br. 7. Appellants fail,
however, to show error in the Examiner's conclusion that it would have been
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obvious to modify Anderson using Huffs teachings for purposes of
"determining whether offers of insurance should be made to clients seeking
insurance coverage." Final Act. 7 (citing Huff,I 14). Nor do Appellants
show error in the Examiner's conclusion that it would have been obvious to
further modify Anderson in light of Pepoon's disclosed processing stages
"because missing information or information with errors frequently stalls or
delays the processing of insurance documents." Final Act. 8 ( citing Pepoon
,r 6). Appellants do not address the merits of the Examiner's proffered
reasons, which we find reasonable. Instead, Appellants assert, without
persuasive analysis, that the Examiner merely restates "the features and
advantages of the cited references." Reply Br. 7; see also Appeal Br. 18-19.
For these reasons, we sustain the Examiner's 35 U.S.C. § 103(a)
rejection of claim 1, and claims 3-8, 10, 12, 14--16, and 18, which
Appellants do not argue separately. Appeal Br. 19.
DECISION
We affirm the Examiner's decision rejecting claims 1, 3-8, 10, 12,
14--16, and 18.
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
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