Ex Parte Savage et al

Patent Trial and Appeal Board

Dec 20, 2018

12130497 (P.T.A.B. Dec. 20, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/130,497 05/30/2008
23460 7590 12/25/2018
LEYDIG VOIT & MA YER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON A VENUE
CHICAGO, IL 60601-6731
FIRST NAMED INVENTOR
John Savage
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.
703097 4079
EXAMINER
HAMILTON, LALITA M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
12/25/2018 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 JOHN SAVAGE, DAVID LEE, LUCY L YULKIN, and
CHARLES R. SCHADER
Appeal2017-010696
Application 12/130,497 1
Technology Center 3600
Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's
Final Rejection of claims 1-14, which are all of the claims pending in this
application. We have jurisdiction under 35 U.S.C. § 6(b ).
We affirm.
1 According to Appellants, the real party in interest is American
International Group, Inc. App. Br. 1.
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Application 12/130,497
INVENTION
Appellants' application relates "generally to a method and system for
projecting the financial exposure for an insurance company and reporting the
same." Spec. ,r 2. Claim 1 is illustrative of the appealed subject matter and
reads as follows:
1. A method for projecting resources for processing claims of a
plurality of policyholders of an insurance company caused by an
event, the method comprising:
selecting a loss event to be assessed;
using a computer to execute computer executable
instructions of a catastrophe modeling system stored on a non-
transitory tangible computer-readable medium, the catastrophe
modeling system modeling the loss event to create a projected
damage area;
identifying locations of policyholders of the insurance
company in the projected damage area and the number of policies
issued by the insurance company to the policyholders located in
the projected damage area by using the computer to query an
insurance policy database; and
using the computer to generate an estimate, based upon the
number and locations of policyholders identified in the projected
damage area, of the number of independent adjusters to use to
process future claims from the policyholders of the insurance
company located in the projected damage area resulting from the
loss event.
App. Br. 19 (Claims Appendix).
REJECTIONS
Claims 1-14 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to patent-ineligible subject matter.
Claims 1-5 and 10-13 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over the combination ofRavela et al. (US 7,734,245 B2; June
8, 2010) ("Ravela"), Weinzapfel et al. (US 2007/0225915 Al; Sept. 27,
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2007) ("Weinzapfel"), and Kenneth R. Gosselin and Matthew Lubanko
(Insurers' Coffers, Armies of Adjusters Fortified Against Storms, ProQuest
HARTFORD COURANT (Sept. 4, 2004)).
Claims 6-9 and 14 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Ra vela, Chris Anderson, Planning For
The Worst, Knight Ridder TRIBUNE BUSINESS NEWS, Washington, pg. 1
(Feb. 5, 2006) ("Anderson"), and Hartford.
ANALYSIS
Rejection of Claims 1-14 under 35 USC§ 101
Appellants contend the Examiner erred in concluding the claims are
directed to an abstract idea without significantly more and argue the claims
provide a method for projecting resources for processing insurance claims.
Br. 5.
In determining whether a claim falls within the excluded category of
abstract ideas, we are guided in our analysis by the Supreme Court's two-
step framework, described in Mayo and Alice. Alice Corp. v. CLS Bank
Int'!, 134 S. Ct. 2347, 2355 (2014) (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 76-77 (2012)). In accordance with
that framework, we first determine whether the claim is "directed to" a
patent-ineligible abstract idea. See Alice, 134 S. Ct. at 2356.
If the claim is "directed to" a patent-ineligible abstract idea, we then
consider the elements of the claim-both individually and as an ordered
combination-to assess whether the additional elements transform the nature
of the claim into a patent-eligible application of the abstract idea. Alice, 134
S. Ct. at 2355. This is a search for an "inventive concept"-an element or
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combination of elements sufficient to ensure that the claim amounts to
"significantly more" than the abstract idea itself. Id. (internal quotations and
citation omitted).
In step one of the Alice analysis, the Examiner concluded claims 1-14
are directed to a fundamental economic practice (i.e., projecting and
reporting the financial exposure for an insurance company) and thus an
abstract idea. Final Act. 4. Appellants do not present a persuasive,
substantive step-one argument. See Br. 5.
We agree with the Examiner's conclusion that the claims are directed
to the abstract idea of projecting the financial exposure of an insurance
company, which is an economic practice. See, e.g., Bancorp Serv., L.L.C. v.
Sun Life Assurance Co. of Can. (US.), 687 F.3d 1266 (Fed. Cir. 2012)
(managing an insurance policy); Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336 (Fed. Cir. 2013) (generating rule-
based tasks for processing an insurance claims); Electric Power Group, LLC
v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (collecting information,
analyzing it, and displaying certain results) and Classen Immunotherapies,
Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) (collecting and
comparing known information). Ans. 2.
For these reasons, we are not persuaded the Examiner erred in
concluding claim 1 is directed to an abstract idea.
Turning to step two of the Alice analysis, the Examiner found the
recited computer is a general purpose computer that performs routine and
conventional activities that do not transform the claim limitations to
something significantly more. Ans. 3. We are not persuaded by Appellants'
arguments that claim 1 recites additional elements that satisfy the machine-
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or-transformation test, or that the computer recited in claim 1 is a
particularly-programmed machine. Br. 5---6.
The machine-or-transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed inventions are
processes under§ 101. See Bilski v. Kappas, 561 U.S. 593, 594 (2010). The
machine-or-transformation test is a two-branched inquiry; an applicant may
show that a process claim satisfies § 101 either by showing that his claim is
tied to a particular machine, or by showing that his claim transforms an
article. Id. at 593. The machine-or-transformation test is not, however, the
sole test for deciding whether an invention is a patent-eligible process. Id. at
594.
We are not persuaded by Appellants' argument that the claims recite
patentable subject matter because they are tied to a particular machine, in the
form of the computer. See Br. 6. Appellants have not persuaded us that the
recited computer is anything more than a general-purpose computer.
Moreover, Appellants' focus on the "machine-or-transformation" test does
not consider that "after Alice, there can remain no doubt: recitation of
generic computer limitations does not make an otherwise ineligible claim
patent-eligible .... The bare fact that a computer exists in the physical rather
than purely conceptual realm is beside the point." DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (internal citations
and quotation marks omitted). That is the case here. Claim 1, therefore,
does not satisfy the machine prong of the machine-or-transformation test.
Appellants do not describe how the transformation prong of the test is
met. See App. Br. 5---6. We note, however, that the transformation of one
type of electronic data into another type of electronic data is not a
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"transformation or reduction of an article into a different state or thing
constituting patent-eligible subject matter[.]" See Bilski, at 962. "The mere
manipulation or reorganization of data ... does not satisfy the
transformation prong." CyberSource Corp v. Retail Decisions, Inc., 654
F.3d 1366, 1375 (Fed. Cir. 2011). Therefore, claim 1 also fails to satisfy the
transformation prong of the machine-or-transformation test.
We agree with the Examiner that the claimed invention does not
improve a technological process but instead recites conventional functions
performed on a generic computer. See Ans. 3--4. Like the claims at issue in
Alice, the claims here use a computer and its existing capabilities as a tool to
perform an existing conventional process. Id. We are not persuaded that the
specific elements and steps recited in the claims improve the functioning of
a computer or some other technology.
Accordingly, we sustain the Examiner's § l O 1 rejection of claims 1-
14.
Rejection of Claims 1-5 and 10-13 under 35 US.C. § 103(a)
We have reviewed the rejections of claims 1-5 and 10-13 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in their Brief. Any
other arguments Appellants could have made, but chose not to make in their
Brief, are deemed waived. See 37 C.F.R. § 4I.37(c)(l)(iv).
We agree with and adopt as our own the Examiner's findings of facts
and conclusions as set forth in the Answer (Ans. 4--8) and in the Action
(Final Act. 11-13) from which this appeal was taken. We provide the
following explanation for emphasis.
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With regard to claim 1, Appellants contend one skilled in the art
would not have been motivated to combine Ravela, Hartford, and
W einzapfel. Br. 11.
We are not persuaded. A rejection based on obviousness need only be
supported by "some articulated reasoning with some rational underpinning"
to combine known elements in the manner required by the claim. See KSR
Int'! Co., v. Teleflex Co., 550 U.S. 398,418 (2007). Here, the Examiner
found the cited references are all analogous art and articulated that the
motivation to combine the references is for additional disaster preparedness.
Ans. 4. We find the Examiner provided "articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness." In re
Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
Appellants next argue Ravela teaches away from a method for
projecting resources for processing insurance claims that includes a step of
"using a computer to execute computer executable instructions of a
catastrophe modeling system stored on a tangible computer-readable
medium, the catastrophe modeling system modeling the loss event to create
a projected damage area," as claim 1 requires. Br. 11-12 (citing Ravela col.
8:34--43).
Appellants' "teaching away" argument is not persuasive because
Appellants have not identified where Ravela actually criticizes, discredits, or
otherwise discourages the identified limitation in claim 1. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004); DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference
does not teach away, however, if it merely expresses a general preference for
an alternative invention but does not 'criticize, discredit, or otherwise
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discourage' investigation into the invention claimed") ( citing Fulton). The
portion of Ra vela cited by Appellants does not actually criticize, discredit, or
otherwise discourage the identified limitation in claim 1.
Appellants further argue Hartford does not teach or suggest the
"identifying" and estimate generating steps recited in claim 1. Br. 13. In
particular, Appellants argue Hartford fails to teach using a projected damage
area to identify policy holders of a given insurance company, or generating
an estimate of independent adjusters to use to process future claims based
upon the number and location of policyholders identified in the projected
damage area generated by the catastrophe modeling system. Id.
We are not persuaded by Appellants' arguments. Nonobviousness
cannot be established by attacking the references individually when the
rejection is predicated upon a combination of prior art disclosures. See In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Appellants attack
Hartford individually (Br. 13), even though the Examiner relied on the
combination of Ravela, Hartford, and Weinzapfel in rejecting claim 1 (Final
Act. 11-12; Ans. 4--6). Appellants' arguments, therefore, do not address the
rejection actually made by the Examiner.
The Examiner found Hartford's data processing tool compares the
locations of the identified policy holders in the damage area and the
locations of a set of independent adjusters, which teaches or suggests
"identifying locations of policyholders of the insurance company in the
projected damage area and the number of policies issued by the insurance
company to the policyholders located in the projected damage area by using
the computer to query an insurance policy database," as recited in claim 1.
Final Act. 7; Ans. 5 (citing Hartford 1-3).
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Appellants also attack Weinzapfel individually, arguing Weinzapfel
does not teach or suggest
using the computer to generate an estimate, based upon the
number and locations of policyholders identified in the
projected damage area, of the number of independent adjusters
to use to process future claims from the policy holders of the
insurance company located in the projected damage area
resulting from the loss event,
as recited in claim 1. Br. 14.
The Examiner found W einzapfel' s formulation of an index for future
damage based on historical damage created by storms and estimate of the
damage created, and the insurer locating adjusters at a location teaches or at
least suggests the disputed "using a computer to generate an estimate"
limitation. Ans. 6 ( citing Weinzapfel, ,r,r 182-83 ).
Appellants have not presented sufficient persuasive argument or
objective evidence to rebut the Examiner's findings. Moreover, Appellants
did not file a Reply Brief and thus have not persuasively rebutted the
Examiner's findings in the Answer regarding representative independent
claim 1.
For these reasons, we are not persuaded the Examiner erred in finding
the combination of the cited references teaches or suggests the disputed
limitations of independent claim 1 and dependent claims 2-5 and 10-13.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection of
independent claim 1 and the Examiner's 35 U.S.C. § 103(a) rejection of
grouped dependent claims 2-5 and 10-13, not substantively argued
separately. Br. 14. See 37 C.F.R. § 4I.37(c)(l)(iv).
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Rejection of Claims 6-9 and 14 under 35 US.C. § 103(a)
We sustain the Examiner's 35 U.S.C. § 103(a) rejection of
independent claim 6 for essentially the same reasons discussed above for
claim 1, although the Examiner relied on the combination of Ra vela,
Hartford, and Anderson in rejecting claim 6. The Examiner found Anderson
teaches producing a sub-listing of independent ad justors based on at least
one of the location of the independent adjustor relative to the locations of the
identified policyholders, the previous work experience of the independent
adjustors, and the preferences of the identified policyholders. Final Act. 15;
Ans. 8.
Appellants contend it would not have been obvious at the time of the
invention to combine Ravela, Anderson, and Hartford as proposed by the
Examiner because Ravela teaches away from the proposed combination. Br.
15. Appellants made a similar argument for claim 1, which as discussed
above, we do not find persuasive.
Appellants further argue the cited portions of Anderson do not teach
or suggest the recited
data-processing tool for identifying policyholders of the
insurance company located in the projected damage area, the
data-processing tool configured to compare the locations of the
identified policyholders in the damage area and the locations of
a set of independent adjusters and produce a sub-listing of
independent adjustors based on at least one of the location of
the independent adjustor relative to the locations of the
identified policyholders, the previous work experience of the
independent adjustors, and the preferences of the identified
policyholders,
as recited in claim 6. Id. at 17.
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We are not persuaded the Examiner erred. Appellants attack
Anderson individually (Br. 16-17), even though the Examiner relied on the
combination of Ra vela, Hartford, and Anderson in rejecting claim 6 (Final
Act. 14--15; Ans. 7-8). The test for obviousness is not whether the claimed
invention is expressly suggested in any one or all of the references, but
whether the claimed subject matter would have been obvious to those of
ordinary skill in the art in light of the combined teachings of those
references. See In re Keller, 642 F.2d 413,425 (CCPA 1981). Appellants'
arguments, therefore, do not address the rejection actually made by the
Examiner.
The Examiner found Ravela teaches natural disaster prediction and
modeling tools. Ans. 7-8 (citing Ravela col. 3:3---60, col. 8:20-43; and col.
25:60-col. 26:5). The Examiner also found Ravela teaches projecting
damage. Id. The Examiner found Hartford teaches the recited data-
processing tool configured to compare the locations of the identified
policyholders in the damage area and the locations of a set of independent
adjusters, as well as using event modeling to predict the number of claims in
the disaster area. Ans. 8 (citing Hartford 1-3). The Examiner found
Anderson teaches producing a sub-listing of independent adjustors based on
at least one of the location of the independent adjustor relative to the
locations of the identified policyholders, the previous work experience of the
independent adjustors, and the preferences of the identified policyholders.
Id. Appellants have not presented sufficient persuasive argument or
objective evidence to rebut the Examiner's findings.
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For these reasons, we are not persuaded the Examiner erred in finding
the combination of the cited references teaches or suggests the disputed
limitations of claim 6.
Accordingly, we sustain the Examiner's 35 U.S.C. § 103(a) rejection
of representative independent claim 6 and the Examiner's 35 U.S.C.
§ 103(a) rejection of grouped dependent claims 7-9 and 14, not
substantively argued separately. Br. 17. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
We affirm the decision of the Examiner rejecting claims 1-14.
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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