Ex Parte Prinn

Patent Trial and Appeal Board

Nov 29, 2018

14355471 (P.T.A.B. Nov. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/355,471
21874 7590
Locke Lord LLP
P.O. BOX 55874
BOSTON, MA 02205
04/30/2014
12/03/2018
FIRST NAMED INVENTOR
Jonathan Prinn
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.
1476019.100US9 4754
EXAMINER
MERCHANT, SHAHID R
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
12/03/2018 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):
patent@lockelord.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JONATHAN PRINN
Appeal2017-008983
Application 14/355,471 1
Technology Center 3600
Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
SCOTT E. BAIN, Administrative Patent Judges.
CHUNG, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) of the Final
Rejection of claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
INVENTION
The invention is directed to selecting an insurance carrier based on
collated data. Spec. 1:25. Claim 1 is illustrative of the invention and is
reproduced below:
1. A processor-implemented method to match client
insurance needs with an insurance carrier, comprising:
1 According to Appellant, Willis HRH is the real party in interest. App. Br.
2.
Appeal2017-008983
Application 14/355,471
create profiles for each of a plurality of insurance carriers
by collating data from database sources relevant to each of said
plurality of insurance carriers;
provide a structured format for a client to indicate
insurance needs; and
remove a market skew for a said insurance carrier by
designating an insurance carrier having a share of premium
greater than a predetermined value with a first predetermined
appetite score and designating an insurance carrier having a share
of premium less than a predetermined value with a second
predetermined appetite score; and
matching a client needs with collated data to identify at
least one of said plurality of insurance carriers by determining at
least a static score for each match wherein the static score is
indicative of an insurance carrier appetite.
REJECTION ON APPEAL2
Claims 1-12 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 5-10.
ANALYSIS
35 us.c. § 101
The Examiner concludes the present claims are directed to the abstract
idea of a process that can be performed mentally with paper and pen, similar
to the claims in Electric Power Grp, LLC v. Alstom S.A., 830 F. 3d 1350
(Fed. Cir, 2016). Ans. 5. In addition, the Examiner concludes the present
claims are not directed to significantly more than an abstract idea merely
because they use computers as generic components that are well-understood,
routine, and conventional to implement an abstract idea. Id. at 5, 12.
2 The rejections under 35 U.S.C. §§ 103(a) and 112 second paragraph have
been withdrawn. Final Act. 5.
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Application 14/355,471
Appellant argues the present claims are not directed to an abstract idea
because the present claims recite a processor implemented system. App. Br.
7; Reply Br. 3. Appellant argues the present claims amount to significantly
more than an abstract idea because they are directed to an improvement to
the technology field of analytic systems; that is, the improvement recited in
the present claims is the limitation automatically determining
remov[ing] a market skew for a said insurance carrier by
designating an insurance carrier having a share of premium
greater than a predetermined value with a first predetermined
appetite score and designating an insurance carrier having a share
premium less than a predetermined value with a second
predetermined appetite score,
as recited in claim 1. App. Br. 8; Reply Br. 4. We disagree with Appellant.
Legal Standards
Pursuant to Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 234 7
(2014), (citing Mayo Collaborative Services v. Prometheus Laboratories,
Inc., 566 U.S. 66, 82-84 (2012)), we analyze subject matter eligibility using
the following two-part analysis: 1) Determine whether the claim is directed
to an abstract idea; and 2) if an abstract idea is present in the claim,
determine whether any element, or combination of elements, in the claim is
sufficient to ensure that the claim amounts to significantly more than the
abstract idea itself. See Alice, 134 S. Ct. at 2350.
As to the first part of the analysis, examples of abstract ideas
referenced in Alice include: fundamental economic practices3; certain
3 Alice Corp., 134 S. Ct. at 2350: e.g., intermediated settlement, i.e., the use
of a third party intermediary to mitigate settlement risk.
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Application 14/355,471
methods of organizing human activities4; "[a]n idea ofitself'5; and,
mathematical relationships or formulas. 6 Claims that include abstract ideas
like these are examined under the second part of the analysis to determine
whether the abstract idea has been applied in an eligible manner.
As to the second part of the analysis, we consider the claim as a whole
by considering all claim elements, both individually and in combination. Id.
at 2355. Limitations referenced in Alice that may be enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: Improvements to another
technology or technical field7; improvements to the functioning of the
computer itself8; and meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment. 9
Limitations referenced in Alice that are not enough to qualify as
"significantly more" when recited in a claim with an abstract idea include, as
4 Id. at 2356: e.g., a series of steps instructing how to hedge risk ( citing
Bilski, 561 U.S. at 599).
5 Id. at 2355: e.g., a principle, an original cause, a motive (citing Gottschalk
v. Benson, 409 U.S. 63, 67 (1972) and Le Roy v. Tatham, 14 How. 156, 175
(1852)).
6 Id. at 2350: e.g., a mathematical formula for computing alarm limits in a
catalytic conversion process (Parker v. Flook, 437 U.S. 584, 594--95
(1978)), or a formula for converting binary-coded decimal numerals into
pure binary form (Benson, 409 U.S. at 71-72).
7 Id. at 2358: e.g., a mathematical formula applied in a specific rubber
molding process (citing Diamond v. Diehr, 450 U.S. 175, 177-78 (1981)).
8 Id. at 2359.
9 Id. at 2360: noting that none of the hardware recited "offers a meaningful
limitation beyond generally linking 'the use of the [method] to a particular
technological environment,' that is, implementation via computers" ( citing
Bilski, 561 U.S. at 610-11).
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Application 14/355,471
non-limiting or non-exclusive examples: adding the words "apply it" (or an
equivalent) with an abstract idea 10; mere instructions to implement an
abstract idea on a computer11 ; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry. 12
If there are no meaningful limitations in the claim that transform the
abstract idea into a patent-eligible application such that the claim amounts to
significantly more than the abstract idea itself, the claim is directed to
patent-ineligible subject matter under 35 U.S.C. § 101.
As the Federal Circuit has held, "merely selecting information, by
content or source, for collection, analysis, and display does nothing
significant to differentiate a process from ordinary mental processes, whose
implicit exclusion from § 101 undergirds the information-based category of
abstract ideas." Elec. Power, 830 F.3d at 1355. In addition, "merely
presenting the results of abstract processes of collecting and analyzing
information, without more ( such as identifying a particular tool for
presentation), is abstract as an ancillary part of such collection and analysis."
Id. at 1354. The Federal Circuit further stated:
[ t ]he claims in this case do not even require a new source or type
of information, or new techniques for analyzing it. . . . As a
result, they do not require an arguably inventive set of
components or methods, such as measurement devices or
techniques, that would generate new data. They do not invoke
any assertedly inventive programming. Merely requiring the
10 Id. at 2357-58.
11 Id.: e.g., simply implementing a mathematical principle on a physical
machine, namely a computer ( citing Mayo, 566 U.S. at 84--85).
12 Id. at 2359: e.g., using a computer to obtain data, adjust account balances,
and issue automated instructions.
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selection and manipulation of information-to provide a
"humanly comprehensible" amount of information useful for
users . . . by itself does not transform the otherwise-abstract
processes of information collection and analysis.
Id. at 1355 (internal citations omitted).
Alice Step 1
As the Examiner determined, the present claims are directed to
collecting information, analyzing the information, and identifying certain
results of the collection and analysis. Ans. 5 (citing Electric Power Grp.,
830 F. 3d at 1350). It is well established that such claims encompassing data
collection and analysis are abstract ideas. See, e.g., Elec. Power Grp., 830
F.3d at 1351-54. Accordingly, we agree with the Examiner's analysis and
conclusion that the present claims are directed to a data collection, similar to
the abstract idea in Electric Power. Final Act. 6; Ans. 5.
Contrary to Appellants' argument, automating a mental process with a
processor does not make the claims patent eligible. Bancorp Servs., LLC v.
Sun Life Assurance Co., 687 F.3d 1266, 1279 (Fed. Cir. 2012) ("Using a
computer to accelerate an ineligible mental process does not make that
process patent-eligible.").
Because the present claims are directed to an abstract idea, we
proceed to step (2) of the Alice, two-part test.
Alice Step 2
On this record, we see no error in the Examiner's analysis and
conclusion that the present claims are not directed to significantly more than
the abstract idea merely because they use computers as generic components
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that are well-understood, routine, and conventional to implement an abstract
idea. 13 Ans. 5, 12.
We also disagree with Appellant's argument that the present claims
improve upon the technology field of analytic systems (App. Br. 8; Reply
Br. 4) because the present claims are directed to an improved abstraction that
happen to use computer tools in a nominal manner. 14 Contrary to
Appellants' argument, automating a mental process and making trades does
not make the claims patent eligible. Bancorp Servs., LLC v. Sun Life
Assurance Co., 687 F.3d at 1279.
Accordingly, we sustain the Examiner's rejection of: (1) independent
claim 1; and (2) dependent claims 2-12 under 35 U.S.C. § 101.
35 US.C. § 132(a)
Appellant argues the Examiner fails to establish a prima facie case of
unpatentability under 35 U.S.C. § 101 because the Examiner provides
conclusory statements absent sufficient detail and claim construction. App.
Br. 8-10; Reply Br. 4--7. We disagree with Appellant.
The Examiner concludes the present claims are directed to a mental
process abstract idea similar to the claims in Electric Power Grp, LLC v.
Alstom S.A., 830 F. 3d 1350 (Fed. Cir, 2016). 15 Final Act. 6; Ans. 5. In
13 The Specification states, "[i]t should be appreciated that the processing
system 100 may be any form of terminal, server, specialized hardware,
or the like" ( emphasis added). Spec. 8: 10-11. We, therefore, conclude the
Specification recites generic elements that are well-understood, routine, and
conventional.
14 Seen.13.
15 "Patent eligibility under§ 101 presents an issue of law." Accenture Glob.
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1340-41 (Fed.
Cir. 2013).
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particular, the Examiner maps claim elements to abstract concepts and
concludes the claims recite abstract ideas using a generic computer to
implement the abstract idea. Final Act. 6; Ans. 5. Furthermore, the
Examiner finds these computer functions are well-understood, routine, and
conventional activities that do not purport to improve the functioning of the
computer itself or improve any other technology or technical field. 16 Ans.
5-12. The Examiner thus concludes the recited generic computer does not
transform the abstract idea into a patent-eligible invention. Id.
We conclude that the rejection satisfies the notice requirement of
35 U.S.C. § 132(a), because it sufficiently notifies the applicant of the
reasons for rejection, together with such information "as may be useful in
judging of the propriety of continuing the prosecution of [the] application."
See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). Accordingly, the
Examiner has carried the procedural burden of establishing a prima facie
case.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant could have made, but chose not to
16 The patent-eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, "[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact." Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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make, in the Briefs have not been considered and are deemed to be waived.
See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the Examiner's decision rejecting claims 1-12 under
35 U.S.C. § 101.
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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