Ex Parte Robertson et al

Board of Patent Appeals and Interferences

Sep 27, 2010

10601118 (B.P.A.I. Sep. 27, 2010)

The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PETER T. ROBERTSON, DONALD BASHLINE and JASON
DEPASQUALE
____________

Appeal 2010-007495
Application 10/601,118
Technology Center 3600
____________

Before, MURRIEL E. CRAWFORD, ANTON W. FETTING and
JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 37-39 and 44-46. We have jurisdiction under 35
U.S.C. § 6(b) (2002). An oral hearing was held on September 16, 2010.

SUMMARY OF DECISION
We AFFIRM (37 C.F.R. § 41.50(b)).

THE INVENTION
Appellants claim a method for risk classification in automobile and
other lines of insurance. (Specification 1:10).
Claim 37, reproduced below, is representative of the subject matter on
appeal.

37 A method for risk classification of a prospective
insured, said prospective insured applying for
automobile insurance, said prospective insured
belonging to a demographic group, said method
comprising:
a. providing to said prospective insured a set of
four or more target questions;
b. obtaining a set of responses to said set of four or
more target questions from said prospective
insured;
c. automatically classifying said prospective
insured into a risk class based at least in part on
said set of responses;
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wherein said set of four or more target questions
have been devised by a survey method comprising
the steps of:

d. composing a survey of 50 or more candidate
questions that are indicative of personality traits
that may affect accident involvement and
reporting;

e. providing said survey to a sample population of
200 or more people;

f. collecting information from said sample
population, said information comprising:

i.responses to said survey;
ii.the number of automobile insurance
claims reported by each of said persons in said
sample population; and

iii.conventional classification information
for automobile insurance underwriting, said
conventional classification information
comprising;

1. age;
2. marital status;
3. years of driving experience;
4. number of miles driven per year;

g. analyzing said information to select said set of
four or more target questions from among said
candidate questions such that the survey responses
by said sample population to said set of four or
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more target questions significantly increase the
multiple correlation between said survey responses
and said number of automobile insurance claims
reported by said sample population when said
conventional classification information is
controlled for, said increase in the multiple
correlation being statistically significant to at least
the 5% level of confidence; wherein said step of
analyzing said information to select said set of four
or more target questions is carried out on a
particular computer modified to calculate multiple
correlations and the levels of confidence thereof.

THE REJECTION
The Examiner relies upon the following as evidence of
unpatentability:
DeTore US 4,975, 840 Dec. 4, 1990

Haner, Charles F., A Prediction of Automobile Claims by
Psychological Methods, The Journal of Risk and Insurance, Vol. 35,
No. 1 (Mar. 1968), pp. 49-59.
Lajumen, Timo and Summala, Heiki, Drive Experience, Personality,
and Skill and Safety-Motive Dimensions in Drivers’ Self-
Assessments, Person Individ. Diff. Vol. 19, ANo. 3 (1995), pp. 307-
318.
The following rejections are before us for review.
The Examiner rejected claims 37 - 39 and 44 - 46 under 35 U.S.C.
112, first paragraph as failing to meet the written description requirement.
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The Examiner rejected claims 37 - 39 and 44 - 46 under 35 U.S.C.
112, second paragraph because the claims are indefinite.
The Examiner rejected claims 37 - 39 and 44 - 46 under 35 U.S.C.
§ 103 as being unpatentable over Haner in view of Lajunen and DeTore.
ISSUES
Have Appellants shown that the Examiner erred in rejecting claims
37 - 39 and 44 - 46 under 35 U.S.C. 112, first paragraph as failing to meet
the written description requirement?
Have Appellants shown that the Examiner erred in rejecting claims
37 - 39 and 44 - 46 under 35 U.S.C. 112, second paragraph because the
claims are indefinite?
Have Appellants shown that the Examiner erred in rejecting claims
37- 39 and 44 – 46 on appeal as being unpatentable under 35 U.S.C.
§ 103(a) over Haner in view of Lajunen and DeTore on the grounds that a
person with ordinary skill in the art would understand that the content of a
survey is non functional written material, and cannot render nonobvious an
invention that would have otherwise been obvious?

FINDINGS OF FACT
We find the following facts by a preponderance of the evidence:
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1. We adopt the Examiner’s findings with respect to the rejection
made under 35 U.S.C. § 103(a) as our own as set forth in the Answer on
pages 8-14.
2. The Specification describes a methodology for devising a
questionnaire wherein a person is to indicate a disagreement, agreement, or
neither, and which questionnaire can include items such as:
1. "I often do and say things without stopping to
think."
2. "All in all, I am inclined to feel a failure."
3. "I am able to do things as well as most other
people."
4. "I am not really in control of the outcomes in my
life."
5. "I am the victim of circumstances beyond my
control."
6. "I can think of no good reason for hitting
anyone."
7. "I don't find it particularly difficult to get along
with loud mouthed, obnoxious People.''
8. "I find it hard to understand people who risk
necks just to experience a 'rush'."
9. "I find that luck plays a bigger role in my life
than my ability."
10. "I get so 'carried away' by new ideas that I
never think of possible snags."
(Specification 8:23-9:8).
3. The Specification further describes producing a 5% confidence level by
Controlling for the conventional variables, the
individual scores on the set of personality
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measures were then analyzed to find a group of
items that significantly increase the multiple
correlation. In this survey, data relating to four of
the individual survey questions, however, were
found to be useful in increasing the multiple
correlation with the criterion variable to 0.49,
which accounts for 24% of the variance. This five-
fold increase in the predictive power is found
significant at the 5% level.
(Specification 10:19-24).
4. The Declaration of Nathan A. Thompson states:
I am a vice president of Assessment Systems
Corporation in St. Paul MN. My responsibilities
include the design and development of
computerized psychometric tests. In addition, I
have a Ph.D. in Psychometrics from the University
of Minnesota with a supporting area of
industrial/organizational psychology. I am
therefore qualified to render opinions on the
subject matter of patent application "Risk
Classification Methodology", US patent
application serial number 10/601118 (Robertson et
al.) and the cited prior art Lajunen et al.
(Declaration, p. 1 ¶1).
5. Lajunen discloses that from a larger question field taken from an
original questionnaire by Levenson, only 12 items were subjected to a factor
analysis. (Lajunen, p.309)
ANALYSIS
We affirm the rejections of claims 37-39 and 44-47 under 35 U.S.C.
§ 103(a), and reverse as to the rejections made under 35 U.S.C. 112, first and
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second paragraphs.
Rejection under 35 U.S.C. 112, first paragraph.
The Examiner found “that there is insufficient evidence that, at the
time the invention was made, Applicant was in possession of a method in
which greater than four questions met the 5% level of confidence criteria.”
(Answer 4).
We disagree with the Examiner. We find that the Specification lists
an example in which ten questions are used to devise a questionnaire
wherein a person indicates a disagreement, agreement, or neither to the
questions presented. (FF 2). In addition, the Specification describes a
methodology by which conventional variables are subjected to regression
analysis to arrive at a predictive power at the 5% level (FF 3). We thus find
that the Specification provides sufficient written description for the method
of arriving at a 5% level of confidence regardless of the number of questions
used in the survey. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64
(Fed. Cir. 1991).
The 35 U.S.C. 112, Second Paragraph
The Examiner maintains that the phrase in claim "...step g. analyzing
said information to select a set of four or more target questions from among
said candidate questions such that the survey responses by said sample
population .....significantly increase the multiple correlation..." because “[i]t
is unclear how the questions are selected to ensure the claimed ‘significant
increase’". (Answer 5-6). The Examiner goes on to explain that the
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‘“significant ....correlation’ statement appears to convey an intended result.
There is no indication of how this correlation is determined or why it would
automatically occur based on the preceding steps.” (Answer 6). While we
agree with the Examiner that the terms “significant correlation” is directed to
an intended result, the use of the term as a claim limitation goes to
patentable weight, and not to definiteness.
The rejection under 35 U.S.C. § 103(a)
Appellants’ arguments against the rejection of each of claims 37, 38,
39, 44 and 46 are based on perceived deficiencies of Haner and Lajunen.
Inasmuch as Appellant raises the same issues with respect to each of these
references, we discuss them together, addressing each of Appellants’
arguments in turn.
Appellants argue that in "Lajunen selected the target questions for
their survey from a set of candidate questions found in a number of known
personality tests based on theoretical considerations, not empirical results."
(emphasis original) (Appeal Br. 16).
We find this argument unpersuasive because the claims are drawn to a
method of classification in which process steps, and not content, are
determinative of patentability. Appellants do not challenge the Examiner’s
finding that Haner discloses assembling survey information using responses
to survey questions (Answer 8). We thus do not find error with the
Examiner’s analysis because Appellants’ challenge is not to the
methodology recited in the claims, but rather to the content of what is being
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surveyed. In other words, since Appellants seek to distinguish the claims by
the content of the survey questions used, this argument fails because we find
that the content of the survey questions as recited in claims 37-39 and 44 -
47 is nonfunctional written material, and cannot render nonobvious an
invention that would have otherwise been obvious. In re Ngai, 367 F.3d
1336, 1339 (Fed. Cir. 2004). Cf. In re Gulack, 703 F.2d 1381, 1385 (Fed.
Cir. 1983) (when descriptive material is not functionally related to the
substrate, the descriptive material will not distinguish the invention from the
prior art in terms of patentability).
Appellants argue that the sample size in Lajunen is disclosed as 113,
whereas the sample disclosed by Appellants is 200, and thus “a person of
ordinary skill in the art would not have had a reasonable expectation of
significantly improved results relative to the increased cost of the study if
he/she had provided it to more people.” (Appeal Br. 19). We are not
persuaded by this argument because Appellants have not alleged criticality
in their 200 or more number, and therefore we see such a value as being no
more than a matter of obvious design choice for a person with ordinary skill
in the art designing a survey. See, In re Hopkins, 342 F2d 1010, 1015
(CCPA 1965).
Appellants argue that “…the Examiner has failed to provide any
motivation for a person of ordinary skill in the art to modify Lajunen to
select questions based on empirical results.” (Appeal Br. 16). Appellants’
argument fails because the Examiner’s rejection under 35 U.S.C. § 103(a)
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proposes modifying Haner, and not Lajunen as argued. (Appeal Br. 11).
Notwithstanding, Examiner found that the Lajunen survey is based upon
empirical results, such as the number of automobile insurance claims
reported by each person in a sample population (Answer 8).
Appellants argue that the claim limitation of “controlling for the
conventional classification information” is not met by Lajunen because
“Lajunen's subjects ranged in age from about 19 to about 28 years old. The
age of the Applicants’ sample population, however, ranged from 16 to 77
years old (Specification page 10, line 8). Thus the Applicants had enough
range in age to control for age. Lajunen did not.” (Appeal Br. 21). We are
not persuaded by this argument because Appellants’ arguments are not based
on limitations appearing in the claims which merely recite “age” as a
conventional classification information without distinction to age ranges. In
re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Appellants argue that “[i]t would not have been possible for Lajunen to
have selected a set of four or more target questions from his candidate
questions based on his method of data analysis… [because] Lajunen needed
all of his survey questions in order to calculate the multiplicity of personality
factors and driver behavior factors that he analyzed.” (Appeal Br. 22-23).
We are not persuaded by Appellants’ argument here because nothing
in Lajunen explicitly precludes the further selection of target survey
questions. In fact, Lajunen discloses using a larger question field taken from
an original questionnaire by Levenson, and then subjecting it to a 12 item
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factor analysis. (FF 5). Moreover, we find claim 37 only generally requires
target questions carried out on a particular computer modified to calculate
multiple correlations and the levels of confidence thereof. It is not apparent,
and Appellants have not cogently explained, what these correlations are and
in what respect they distinguish from known practices of correlating data to
arrive at a statistical desired confidence level. “The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results.” KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398. 415 (2007).
Since our rationale differs from that used by the Examiner, we use our
authority under 37 CFR § 41.50(b) to denominate the rejection as a new
ground to afford the Appellants an opportunity to rebut.
The remaining arguments presented by Appellants in their Brief are
content based and/or are directed to the issue of correlating data to arrive at a
statistical desired confidence level, which have been discussed above.
Appellants rely on a Declaration of Nathan A. Thompson to help
overcome the Examiner’s rejection. The declarant is said to be a vice
president of Assessment Systems Corporation in St. Paul MN and his
responsibilities are said to include the design and development of
computerized psychometric tests. (FF 4) The declarant further states he has
a Ph.D. in Psychometrics from the University of Minnesota with a
supporting area of industrial/organizational psychology (FF 4). The
statement however does not tell us what one learns in such positions in and
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what specific knowledge one skilled in the art has of insurance risk
classification based on the earned degrees and work experience. Cf.
Argyropoulos v. Swarup, 56 USPQ2d 1795, 1807 (BPAI 2000) (explaining
why defining the level of skill in the art in terms of degrees obtained is less
helpful than defining it in terms of what such a person would have known
and what the person would have been able to do).

CONCLUSIONS OF LAW
We conclude the Appellants have shown that the Examiner
erred in rejecting claims 37 - 39 and 44 - 46 under 35 U.S.C. 112, first
paragraph.
We conclude the Appellants have shown that the Examiner
erred in rejecting claims 37 - 39 and 44 - 46 under 35 U.S.C. 112,
second paragraph, that the claims are indefinite.
We conclude the Appellants have not shown that the Examiner
erred in rejecting claims 37 - 39 and 44 - 46 under 35 U.S.C. 35
U.S.C. § 103(a) as being unpatentable over Haner in view of Lajunen
and DeTore.
DECISION
The decision of the Examiner to reject claims 37-39 and 44-46 is
affirmed.
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960
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(August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 37
C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this
paragraph shall not be considered final for judicial review.”
37 CFR § 41.50(b) also provides that the appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
• (1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new evidence relating to the claims so rejected, or both,
and have the matter reconsidered by the examiner, in which event the
proceeding will be remanded to the examiner . . . .
• (2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record . . . .
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.
§ 1.136(a)(1)(iv) (2006).

AFFIRMED; 37 C.F.R. § 41.50(b)

MP

MARK S. NOWOTARSKI
30 GLEN TERRACE
STAMFORD CT 06906