Ex Parte Sagalow et alDownload PDFPatent Trial and Appeal BoardAug 7, 201812390895 (P.T.A.B. Aug. 7, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/390,895 02/23/2009 23460 7590 08/09/2018 LEYDIG VOIT & MA YER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON A VENUE CHICAGO, IL 60601-6731 FIRST NAMED INVENTOR Ty R. Sagalow 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. 704500 6001 EXAMINER NIQUETTE, ROBERT R ART UNIT PAPER NUMBER 3696 NOTIFICATION DATE DELIVERY MODE 08/09/2018 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte TY R. SAGALOW, CHARLES P. ORLOWICZ, SUSAN E. BURELL, PHYLLIS ANN MOONEY, ROBERT E. JOHNSON, AKIKO SHIMOMURA, MICHAEL FEIGHAN, and LEAH C. PEDERSEN Appeal2017-000484 Application 12/390,895 1 Technology Center 3600 Before ANTON W. PETTING, BIBHU R. MOHANTY, and ROBERT J. SILVERMAN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-12. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 The Appellants identify American International Group, Inc. as the real party in interest. Appeal Br. 1. Appeal2017-000484 Application 12/390,895 ILLUSTRATIVE CLAIM 1. A method for an insurance product development process in an insurance corporate environment, the method compnsmg: receiving a new insurance product idea from one or more users submitted electronically using an idea submission software application running on at least one computer server; storing the insurance product idea in an electronic repository using the idea submission software application, the electronic repository operably connected to the at least one computer server via a communication network; organizing and storing work product for the insurance product development process in the electronic repository, according to each stage in the insurance product development process, using a process management software application running on the at least one computer server; presenting tasks according to each stage of a series of predetermined insurance product development process stages on at least one graphical user interface displayed by a display device, using a task management software application running on the at least one computer server, the tasks being organized in one of a number of task categories corresponding to the series of insurance product development process stages, the display device operably connected to the at least one computer server via the communication network; for each task category, presenting a list of tasks for the respective task category on the at least one graphical user interface upon receiving a corresponding task selection signal from the at least one graphical user interface; presenting access to work product according to each stage of the series of predetermined insurance 2 Appeal2017-000484 Application 12/390,895 product development process stages on at least one graphical user interface displayed by the display device, using a document management software application running on the at least one computer server, the work product being organized in one of a number of work product categories corresponding to the task categories; for each work product category, presenting a list of work product for the respective work product category on the at least one graphical user interface upon receiving a corresponding work product selection signal from the at least one graphical user interface; constructing a rater for the new insurance product using a rater software application running on the at least one computer server, the rater being adapted to generate quotes for the new insurance product under different conditions; and creating an insurance application for the new insurance product wherein the rater is mapped to the insurance application. REJECTION Claims 1-12 are rejected under 35 U.S.C. § 101 as ineligible subject matter. FINDINGS OF FACT The findings of fact relied upon, which are supported by a preponderance of the evidence, appear in the following Analysis. ANALYSIS Laws of nature, natural phenomena, and abstract ideas are deemed ineligible for patenting, because they are regarded as the basic tools of scientific and technological work, such that their inclusion within the domain of patent protection would risk inhibiting future innovation premised upon them. Ass 'n for Molecular Pathology v. Myriad Genetics, Inc., 569 3 Appeal2017-000484 Application 12/390,895 U.S. 576, 589 (2013) ("Myriad"). Of course, "[a]t some level, 'all inventions ... embody, use, reflect, rest upon, or apply"' these basic tools of scientific and technological work. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014). Accordingly, ascertaining ineligible subject matter involves a two-step framework for "distinguish[ing] between patents that claim the buildin[g] block[ s] of human ingenuity and those that integrate the building blocks into something more, thereby transform[ing] them into a patent-eligible invention." Id. (internal quotation marks and citation omitted). The first step determines whether the claim is directed to judicially excluded subject matter (such as a so-called "abstract idea"); the second step determines whether there are any "additional elements" recited in the claim that ( either individually or as an "ordered combination") amount to "significantly more" than the identified judicially excepted subject matter itself. Id. at 2355. As to the first Alice step, the Final Office Action states that claims 1- 12 are directed to "submitting ideas over a computer system and then rating them" and to "presenting the information," which the Examiner considers to be an abstract idea "inasmuch as such activity could be performed by human actors." Final Action 3. Further, the Examiner's Answer states that the claims are directed to "a method for developing an insurance product through the solicitation of ideas," which is characterized as "a fundamental economic practice long prevalent in our system of commerce." Answer 5. As to the second Alice step, the rejection states that the recited elements, considered individually and in combination, perform "according to their generic functionalities which are well-understood, routine and conventional," such that they do not amount to significantly more than the 4 Appeal2017-000484 Application 12/390,895 abstract idea, but merely provide "a general link of the use of an abstract idea to a particular technological environment." Final Action 4. The Appellants purport not to "acquiesc[ e] in any way" to the Examiner's determination that the claims are directed to the identified abstract idea, under the first Alice step; however, the Appellants do not challenge such determination. Appeal Br. 4. With regard to the second Alice step, the Appellants contend that claim 1 (the sole independent claim) recites additional features that amount to significantly more than an abstract idea. Id. at 5. The Appellants state that "[t]he claimed approach includes unconventional steps and limitations that confine the claims to a particular useful application." Id. at 8. Yet, the Appellants identify none. To the contrary, the Examiner's Answer addresses specific elements of the claimed subject matter, pointing out that such elements are either well-understood, routine, and conventional implementations of generic technology, or constitute data-gathering features, such that they cannot give rise to patent eligibility. See Answer 5-8. Additionally, the Appellants do not explain the position that the claims are patent-eligible, on account of being allegedly "rooted in computer technology." Appeal Br. 7. Rather than showing that the claimed features somehow relate to the niceties of the computer-implementation, the Appeal Brief states that the claimed subject matter "addresses the problems associated with insurance product development" and "can be performed to create a more marketable insurance product - a particularly useful application." Id. at 7-8 (citing Juicy Whip, Inc. v. Orange Bang, Inc., 185 F.3d 1364, 1368 (Fed. Cir. 1999)). However, this argument and the 5 Appeal2017-000484 Application 12/390,895 attendant citation, to Juicy Whip, concern the so-called "utility" requirement of 35 U.S.C. § 101, rather than the issue of subject-matter eligibility. Similarly, the asserted benefits of the claimed technology (see Appeal Br. 6-7) and its improvements over the prior art (see id. at 8) are not sufficient to establish patent eligibility. A determination of novelty or nonobviousness does not necessarily lead to the conclusion that subject matter is patent-eligible. "Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the§ 101 inquiry." Myriad, 569 U.S. at 591. The Appellants' assertion that claim 1 "satisfies the machine-or- transformation test" (Appeal Br. 5) also does not establish patent-eligibility. The Supreme Court has explained that the machine-or-transformation test may be an important and useful clue, but "it is not a definitive test of patent eligibility." Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 76 (2012). In particular, the machine-or-transformation test does not subvert the Alice framework. Accordingly, we sustain the rejection of independent claim 1 and dependent claims 2-12 under 35 U.S.C. § 101. 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). AFFIRMED 6 Copy with citationCopy as parenthetical citation