Ex Parte Perry et al

Patent Trial and Appeal Board

Dec 27, 2018

14057381 (P.T.A.B. Dec. 27, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/057,381 10/18/2013
21967 7590 12/27/2018
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 P.J. 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.
52493.000669 9334
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
MAIL DATE DELIVERY MODE
12/27/2018 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 P.J. PERRY, MICHAEL DAVID METZGER,
DIANE MARIE RUSSELL, MARY KATHRYN BRYANT and
DAVID JOHN HELT
Appeal2017-009459
Application 14/057 ,3 81
Technology Center 3600
Before CARL W. WHITEHEAD JR., JEFFREY S. SMITH and
JEREMY J. CURCURI, Administrative Patent Judges.
WHITEHEAD JR., Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants are appealing the final rejection of claims 39 and 44-57
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 provide a workflow system for processing a financial
application in an automated manner. See Abstract.
Appeal2017-009459
Application 14/057,381
Illustrative Claim
39. A workflow system that processes an insurance application in an
automated manner, the workflow system in the form of a non-transitory
tangibly embodied processing machine, the workflow system comprising:
an interface portion tangibly disposed in the processing machine, the
interface portion inputting application information into the workflow system
for processing by the workflow system;
a workflow looping portion tangibly disposed in the processing
machine, the workflow looping portion performing processing, the
processing including, in sequence:
performing underwriting processing to effect underwriting of
the insurance application based on the application information, the
performing underwriting processing including:
monitoring the underwriting processing to determine whether
the underwriting processing is completed, and
forwarding the insurance application to perform issue
processing subsequent to the determining that the underwriting processing is
completed;
performing issue processing to effect issue of the insurance
application, the performing issue processing including:
monitoring the issue processing to determine whether the issue
processing is completed; and
forwarding the insurance application to perform settlement
processing subsequent to the determining that the issue processing is
completed; and
2
Appeal2017-009459
Application 14/057,381
performing settlement processing to effect settlement of the insurance
application, the performing settlement processing including:
monitoring the settlement processing to determine whether the
issue processing is completed; and
a rules logic portion tangibly disposed in the processing machine, the
rules logic portion controlling the implementation of rules applied to the
processing of the insurance application as the insurance application passes
through the automated processing; and
the performing underwriting processing, performing issue processing
and performing settlement processing are each performed in an automated
manner to constitute automated processing of the insurance application, such
that the automated processing includes the performing underwriting
processing, performing issue processing and performing settlement
processing; and
further including a wait state portion, the wait state portion imposing
wait states on the automated processing such that the automated processing
is suspended until the wait state imposed by the wait state portion is ended;
wherein the wait state portion imposes the wait state because the wait
state portion identifies that there is insufficient information available to
underwrite the insurance application, the wait state being imposed in the
underwriting processing;
wherein the wait state portion ends the wait state once information is
received to cure the insufficient information, and subsequently, the
workflow looping portion re-starts the underwriting processing; and
wherein the received information is a document, and such that the re-
starting of the underwriting processing includes multiple documents being
3
Appeal2017-009459
Application 14/057,381
received such that each document results in a restart of the underwriting
processing at a beginning of the underwriting processing.
Rejection on Appeal
Claims 39 and 44-57 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception without significantly
more. Final Action 2-6.
ANALYSIS
Rather than reiterate the arguments of Appellants and the Examiner,
we refer to the Appeal Brief (filed March 30, 2017), the Reply Brief (filed
June 28, 2017), the Answer (mailed April 28, 2017) and the Final Action
(mailed October 28, 2016) for the respective details.
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. US., 850 F.3d 1343, 1346 (Fed. Cir. 2017); Enfzsh, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). If the claims are
4
Appeal2017-009459
Application 14/057,381
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
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)
Appellants contend:
The claimed inventions differ from other claims found by the
courts to recite abstract ideas in that they do not "merely recite
the performance of some business practice known from the pre-
5
Appeal2017-009459
Application 14/057,381
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks." DDR Holdings, LLC
v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014).
Appeal Brief 5.
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, Appellants do 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 Appellants' 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,
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"); Enfzsh, 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).
Appellants further contend:
6
Appeal2017-009459
Application 14/057,381
The claims here, however, are admittedly novel and nonobvious
-- the Office Action has not applied a prior art rejection and
therefore it is understood that the claims would be allowable
upon overcoming the rejection under 35 U.S.C. § 101 rejection.
The Office has not applied any prior art that supports the position
that the concepts are long-standing or well-known.
Appeal Brief 8.
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.
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
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.
7
Appeal2017-009459
Application 14/057,381
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 39, 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 .3 d 1299, 1314-15 (Fed. Cir. 2016) ( finding claims not abstract because
they "focused on a specific asserted improvement in computer animation").
As such, claim 39 is directed to the abstract idea of receiving, analyzing, and
generating data, and in general, automates processing an insurance
application by using the computer as a tool rather than improving a process
rooted in computer technology.
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
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
8
Appeal2017-009459
Application 14/057,381
The Examiner determines that "All of the [ claimed] steps consist of
human and mental steps aided by a computer. This is nonstatutory." Final
Action 5 (footnote omitted). The Examiner concludes, "All of the claimed
computer components and functions - an interface, looping, underwriting
processing, monitoring, forwarding information and employment of
rules in an algorithm are 'well understood, routine, conventional activities'
previously known to the industry." Final Action 5. In the Answer, the
Examiner maintains the determination that the claims do not amount to
significantly more than a judicial exception, "Although a computer acts as
the intermediary in the claimed method, the claims do no more than
implement the abstract ideas recited supra. All of these computer functions
are 'well understood, routine, conventional activities' previously known to
the industry." Answer 6.
Appellants contend, "Contrary to the Examiner's assertion, the claims
do include additional elements that are sufficient to amount to significantly
more than the judicial exception. Specifically, in maintaining the 101
rejection, the Examiner focuses on computer functions that are 'well
understood, routine, conventional activities' previously known to the
industry." Reply Brief 2. Appellants, "respectfully submit that the ordered
combination of the claim elements results in significantly more than an
abstract idea." Reply Brief 3. Appellants argue, "The Office Action is
devoid of any evidence that the combination of claim elements are well-
known, routine or conventional in the field." Reply Brief 3 ( emphasis
added).
9
Appeal2017-009459
Application 14/057,381
"[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,
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).
Considered as an ordered combination, the computer components of
Appellants' system add nothing that is not already present when the steps are
considered separately. The sequence of data reception-analysis-display is
equally generic and conventional or otherwise held to be abstract. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
10
Appeal2017-009459
Application 14/057,381
LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Commc 'ns, LLC, 874
F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
Accordingly, we are not persuaded the Examiner erred and sustain the
Examiner's 35 U.S.C. §101 rejection of claims 39 and 44-57.
DECISION
The Examiner's 35 U.S.C. § 101 rejection of claims 39 and 44-57 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R.
§ 1.136(a)(l)(v).
AFFIRMED
11