Ex Parte Yoder

Patent Trials and Appeals Board

Feb 22, 2019

13713725 - (D) (P.T.A.B. Feb. 22, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/713,725 12/13/2012 Claude Yoder
30636 7590 02/22/2019
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
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.
40191/00801 4708
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
MAIL DATE DELIVERY MODE
02/22/2019 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 CLAUDE YODER
Appeal2017-005919
Application 13/713,725
Technology Center 3600
Before ANTON W. PETTING, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
PETTING, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE 1
Claude Yoder (Appellant2) seeks review under 35 U.S.C. § 134 of a
final rejection of claims 1, 3-8, 11-17, 19-21, 23, 24, 26, and 27, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
1 Our Decision will make reference to the Appellant's Appeal Brief ("App.
Br.," filed October 31, 2016) and Reply Brief ("Reply Br.," filed
February 21, 2017), and the Examiner's Answer ("Ans.," mailed
December 21, 2016), and Final Office Action ("Final Act.," mailed May 18,
2016).
2 According to Appellant, the real party in interest is Marsh USA Inc. App.
Br. 2.
Appeal2017-005919
Application 13/713,725
The Appellant invented a way of performing analysis of insurance
related information to generate insurance related analytical information for
entities. Spec. para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A system, comprising:
a system server that
and
stores a database of insurance related information for an
insurance program for each of a plurality of entities
and further includes
tool algorithms that perform analysis of the insurance
related information to generate insurance related
analytical information for the insurance program for each
of the entities,
wherein each of the insurance programs includes a
plurality of insurance policies purchased by the
entity;
a user device executing a tool application that includes a plurality
of display screens,
[ 1] wherein to display each display screen the user device
sends a selection of a subset of the insurance related
information and insurance related analytical information
corresponding to each display screen to the system server
and receives the corresponding subset of the insurance
related information and insurance related analytical
information from the system server and displays the
corresponding display screen via the tool application,
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[2] wherein one of the display screens of the tool
application receives an entity input from a user selecting
one of the entities, the user device sends the entity input to
the system server and the system server sends the
insurance related information and insurance related
analytical information for the selected entity to the user
device which displays the insurance related information
and the insurance related analytical information based on
the entity input,
[3] wherein the one of the display screens of the tool
application further includes a peer input selection from a
user selecting peer entities for the selected entity,
[ 4] wherein the selected peer entities comprise entities
chosen for their insurance metrics comparable to the
metrics of the selected entity,
the user device sends the peer input selection to the
system server
and
the system server sends the insurance related
information and insurance related analytical
information for the selected peer entities to the user
device which displays the insurance related
information and the insurance related analytical
information based on the peer input selection
[ 5] wherein the tool application, via the corresponding
display screen, receives a parameter input from a user,
the parameter being a change to a portion of the
insurance related information for current insurance
policies in the insurance program of one of the
entities being displayed on the corresponding
display screen,
[ 6] wherein the user device sends the parameter input to
the system server which generates updated insurance
related analytical information for the current insurance
policies in the insurance program displayed on the
corresponding display screen,
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[7] wherein the system server sends the updated insurance
related analytical information to the user device which
updates the corresponding display screen with the updated
insurance related analytical information.
The Examiner relies upon the following prior art:
Deede US 2010/0070309 Al
Ziade US 2011/0022419 Al
Guida US 2011/0301983 Al
Mar. 18,2010
Jan. 27, 2011
Dec. 8, 2011
Claims 1, 3-8, 11-17, 19-21, 23, 24, 26, and 27 stand rejected under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more.
Claims 1, 3-8, 11-14, 19-21, 23, 24, 26, and 27 stand rejected under
35 U.S.C. § I03(a) as unpatentable over Ziade and Guida.
Claims 15-17 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Ziade, Guida, and Deede.
ISSUES
The issues of eligible subject matter tum primarily on whether the
claims recite more than abstract conceptual advice of what a computer is to
provide without implementation details.
The issues of obviousness tum primarily on whether the prior art
describes selection of peer entities.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Ziade
01.Ziade is directed to generating insurance products and more
particularly to providing a reconfigurable insurance quote
generator user interface. Ziade para. 6.
02. Ziade does not mention selection of peer entities.
Guida
03. Guida is directed to selling a variety of insurance products to a
single individual user. More specifically, it relates to determining
which types of property the user has an interest in, determining
available insurance products for those property types, and re-using
personal information collected a single time from the user to
generate quotes for a plurality of insurance products. Guida
para. 1.
04. Guida does not mention selection of peer entities.
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ANALYSIS
Claims 1, 3---8, 11-17, 19-21, 23, 24, 26, and 27 rejected under 35 USC
§ 101 as directed to a judicial exception without significantly more
STEP 12
Claim 1, a system claim, recites one of the enumerated categories of
eligible subject matter in 35 U.S.C. § 101. The issue before us is whether it
is directed to a judicial exception without significantly more.
None of the claims are drafted as processes per se. The claims are
drafted instead as systems or devices reciting generic computers and their
components that perform recited method steps. The analysis below is the
same as for corresponding method claims because the claims as drafted
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long "warn[ ed] ... against" interpreting § 101 "in ways that
make patent eligibility 'depend simply on the draftsman's art."'
Alice, 573 U.S. at 226-27 (internal citations omitted). As a corollary, the
claims are not directed to any particular machine.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts .... First,
... determine whether the claims at issue are directed to one of
those patent-ineligible concepts .... If so, we then ask, "[ w ]hat
3 For continuity of analysis, we adopt the steps nomenclature from 2019
REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCe, 84 Fed. Reg. 50
(Jan. 7, 2019) (hereinafter "2019 Guidance").
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else is there in the claims before us?" ... To answer that question,
... consider the elements of each claim both individually and "as
an ordered combination" to determine whether the additional
elements "transform the nature of the claim" into a patent-
eligible application .... [The Court] described step two of this
analysis as a search for an "'inventive concept"'-i.e., an
element or combination of elements that is "sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself."
Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208, 217-18 (2014) (citing
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012)).
To perform this test, we must first determine what the claims are directed to.
This begins by determining whether the claims recite one of the judicial
exceptions (a law of nature, a natural phenomenon, or an abstract idea).
Then, if claims recite a judicial exception, determining whether the claims at
issue are directed to the recited judicial exception, or whether the recited
judicial exception is integrated into a practical application of that exception,
i.e., that the claims "apply, rely on, or use the judicial exception in a manner
that imposes a meaningful limit on the judicial exception, such that the claim
is more than a drafting effort designed to monopolize the judicial
exception." 2019 Guidance at 54. If the claims are directed to a judicial
exception, then finally determining whether the claims provide an inventive
concept because the additional elements recited in the claims provide
significantly more than the recited judicial exception.
STEP 2A Prong 1
Claim 1 recites storing, analyzing, and displaying data, selecting
entity and peer entities data, receiving parameter data, and generating,
sending, and displaying analysis data. Thus, claim 1 recites storing,
receiving, analyzing, modifying, displaying, and transmitting data. None of
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the limitations recite technological implementation details for any of these
steps, but instead recite only functional results to be achieved by any and all
possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature. The next issue is whether it
recites the judicial exception of an abstract idea. To answer this, we next
determine whether it recites one of the concepts the Courts have held to be
lacking practical application, viz., mathematical concepts4, certain methods
of organizing human interactions 5, including fundamental economic
practices and business activities, or mental processes6•
The Examiner determines the claims to be directed to providing
insurance related information to an application as part of a rating or quoting
process. Ans. 23.
The preamble to claim 1 does not recite what it is directed to, but the
steps in claim 1 result in sending and displaying updated insurance related
4 See, e.g., Gottschalkv. Benson, 409 U.S. 63, 71-72 (1972); Bilski v.
Kappas, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B. V., 911 F.3d 1157, 1160-61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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analytical information to a user device absent any technological mechanism
other than a conventional computer for doing so.
As to the specific limitations, the system claims recite a generic server
and user device, and a generic database and display screen. These are
generic general purpose computers or parts of them. Limitations 1-7 recite
insignificant storing, receiving, analyzing, modifying, displaying, and
transmitting of insurance related data, which advise one to apply generic
functions to get to these results.
The Specification at paragraph 2 recites that the invention relates to
performing analysis of insurance related information to generate insurance
related analytical information for entities. Thus, all this intrinsic evidence
shows that claim 1 is directed to analyzing and generating insurance
information, i.e., insurance. This is consistent with the Examiner's
determination.
The concept of insurance is a fundamental economic and business
practice long prevalent in our system of commerce. The use of insurance is
also a building block of ingenuity in risk reduction. Thus, insurance is an
example of a conceptual idea subject to the Supreme Court's "concern that
patent law not inhibit further discovery by improperly tying up the future use
of these building blocks of human ingenuity." See Alice, 573 U.S. at 216
(internal citations omitted). Claim 1 recites the idea of performing various
conceptual steps generically resulting in the insurance. As we determined
earlier, none of these steps recite specific technological implementation
details, but instead get to this result by advising one to select insurance
information about peers to evaluate and make insurance changes. Therefore,
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claim 1 is directed to insurance, which is a fundamental economic and
business practice.
This in tum is an example of mitigating risk as a certain method of
organizing human interactions because insurance is a fundamental economic
practice.
The concept of insurance as advised to be done by selecting insurance
information about peers to evaluate and make insurance changes is the idea
of getting information to make an informed decision. The steps recited in
claim 1 are part of the idea of selecting which information to view for
making such an informed decision.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1338 (Fed. Cir. 2013) (generating
rule-based tasks for processing an insurance claim); Bancorp Servs., L.L. C.
v. Sun Life Assur. Co. of Canada (US.), 687 F.3d 1266, 1278 (Fed. Cir.
2012) (claims directed to the abstract idea of managing a stable value
protected life insurance policy).
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of storing, receiving, analyzing,
modifying, displaying, and transmitting data mimic human thought
processes of observation, evaluation, judgment, and opinion, perhaps with
paper and pencil, where the data interpretation is perceptible only in the
human mind. See 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 1, unlike the claims found non-abstract in
prior cases, uses generic computer technology to perform data storage,
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reception, analysis, modification, display, and transmission and does not
recite an improvement to a particular computer technology. See, e.g.,
McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314--15
(Fed. Cir. 2016) (finding claims not abstract because they "focused on a
specific asserted improvement in computer animation"). As such, claim 1 is
directed to the abstract idea of storing, receiving, analyzing, modifying,
displaying, and transmitting data, and not a technological implementation or
application of that idea.
From this we conclude that at least to this degree, the claims are
directed to the abstract idea of insurance by advising one to select insurance
information about peers to evaluate and make insurance changes.
STEP 2A Prong 2
The next issue is whether the claims not only recite, but are more
precisely directed to this concept itself or whether they are instead directed
to some technological implementation or application of, or improvement to,
this concept, i.e., integrated into a practical application. 7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law .... At
some level, "all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas." ...
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. . . . "[ A Jpplication[ s ]"
of such concepts " 'to a new and useful end,' " we have said,
remain eligible for patent protection . . . . Accordingly, in
applying the § 101 exception, we must distinguish between
patents that claim the " 'buildin[g] block[ s]' " of human
7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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ingenuity and those that integrate the building blocks into
something more.
Alice, 573 U.S. at 217 (internal citations omitted).
The introduction of a computer into the claims does not alter the
analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea "while adding the words 'apply it"' is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea "'to a particular technological environment."'
Stating an abstract idea while adding the words "apply it with a
computer" simply combines those two steps, with the same
deficient result. Thus, if a patent's recitation of a computer
amounts to a mere instruction to "implemen[t]" an abstract idea
"on . . . a computer," that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
computers, wholly generic computer implementation is not
generally the sort of "additional featur[ e ]" that provides any
"practical assurance that the process is more than a drafting effort
designed to monopolize the [ abstract idea] itself."
Alice, 573 U.S. at 223-24 (internal citations omitted).
"[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, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely functional, devoid of
implementation details. Limitations describing the nature of the data do not
alter this. Limitations 1-7 are either data gathering or other insignificant
activity, such as storing, transmitting, or displaying the results. All
purported inventive aspects reside in how the data is interpreted and the
results desired, and not in how the process physically enforces such a data
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interpretation or in how the processing technologically achieves those
results.
Viewed as a whole, Appellant's claims simply recite the concept of
insurance as performed by a generic computer. To be sure, the claims recite
doing so by advising one to select insurance information about peers to
evaluate and make insurance changes. But this is no more than abstract
conceptual advice on the parameters for such insurance and the generic
computer processes necessary to process those parameters, and do not recite
any particular implementation.
The claims do not, for example, purport to improve the functioning of
the computer itself. Nor do they effect an improvement in any other
technology or technical field. The 31 pages of written description in the
Specification spell out different generic equipment8 and parameters that
might be applied using this concept and the particular steps such
conventional processing would entail based on the concept of insurance
under different scenarios. They do not describe any particular improvement
in the manner a computer functions. Instead, the claims at issue amount to
nothing significantly more than an instruction to apply the abstract idea of
insurance by advising one to select insurance information about peers to
evaluate and make insurance changes using some unspecified, generic
computer. Under our precedents, that is not enough to transform an abstract
idea into a patent-eligible invention. See Alice, 573 U.S. at 225-26.
8 The Specification describes an iPad®, a tablet computer, or a laptop
computer. Spec. para. 22.
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None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to advising one to select
insurance information about peers to evaluate and make insurance changes
to achieve the functional result of insurance as distinguished from a
technological improvement for achieving or applying that result. The claim
does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether the claims provide an inventive concept
because the additional elements recited in the claims provide significantly
more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for storing, receiving,
analyzing, modifying, displaying, and transmitting data amounts to
electronic data query and retrieval----one of the most basic functions of a
computer. All of these computer functions are generic, routine, conventional
computer activities that are performed only for their conventional uses. See
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Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016).
Also see 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"). None of
these activities are used in some unconventional manner nor do any produce
some unexpected result. Appellant does not contend they invented any of
these activities. 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., 898 F.3d at 1168.
Considered as an ordered combination, the computer components of
Appellant's claims add nothing that is not already present when the steps are
considered separately. The sequence of data storage-reception-analysis-
modification-display-transmission is equally generic and conventional or,
otherwise, held to be abstract. See Ultramercial, 772 F.3d at 715 (sequence
of receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, 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.
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We conclude that the claims do not provide an inventive concept
because the additional elements recited in the claims do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
The other independent claims are substantially similar at least as
regards this analysis. The remaining claims merely describe process
parameters. We conclude that the claims at issue are directed to a patent-
ineligible concept itself, and not to the practical application of that concept.
LEGAL CONCLUSION
From these determinations, we further determine that the claims do
not recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of insurance,
without significantly more.
APPELLANT'S ARGUMENTS
As to Appellant's Appeal Brief arguments, we adopt the Examiner's
determinations and analysis from the Final Office Action at pages 2-5, and
the Answer at pages 23--44, and reach similar legal conclusions. We now
tum to the Reply Brief.
We are not persuaded by Appellant's argument that
merely purporting to be within the field of practicing an
economic practice related to insurance does not satisfy the
Examiner's burden of explaining how a concept identified by the
courts corresponds to the subject matter recited in the claims.
The concepts of the cited court cases relied upon by the Examiner
are not similar to the subject matter of the claims. For example,
the cited court cases relate to creating a transaction, processing
an insurance claim, managing an insurance policy, managing a
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game of bingo, processing information, collecting/comparing
known information, obtaining and comparing intangible data,
data recognition and storage, risk hedging, and intermediate
settlement. 12/21/16 Examiner's Answer, pp. 29, 32. In
contrast, the claims of the present application relate to moving
beyond static paper presentations for a single overall insurance
program using a single set of data and dynamically evaluating
insurance programs for an entity through incorporation of any
number of user inputs to adjust the evaluation result for the
overall insurance program and dynamically display the
evaluation results to a customer or client.
Reply Br. 4 ( emphasis omitted). Appellant does not articulate why "merely
purporting to be within the field of practicing an economic practice related
to insurance does not satisfy the Examiner's burden of explaining how a
concept identified by the courts corresponds to the subject matter recited in
the claims." Id. "The concern underlying these judicial exclusions is that
'patent law not inhibit further discovery by improperly tying up the future
use of these building blocks of human ingenuity."' Rapid Litig. Mgmt. Ltd.
v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (internal citation
omitted). As we determined supra, insurance, and the steps of analyzing
insurance needs, are building blocks of human ingenuity in risk reduction.
Risk reduction itself is among the most abstract of concepts. To the extent
Appellant depends on the specific tasks performed to distinguish from other
insurance cases, all of the tasks are conventional data processing primitive
operations, as we determine supra. None of the tasks recite technological
implementation details, so they cannot distinguish from other insurance
related information gathering cases. The same goes for the argument that
"the pending claims are directed to dynamic display of evaluation results."
Reply Br. 5.
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We are not persuaded by Appellant's argument that "the Examiner has
failed to 'explain the reasons that the additional elements taken individually,
and also taken as a combination, do not result in the claim as a whole
amounting to significantly more than the judicial exception."' Reply Br. 6
(internal citation omitted). Such reasons are laid out supra.
We are not persuaded by Appellant's argument that the claims are
analogous to those in Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 6-7. The claims differ from those found patent
eligible in Enfzsh, where the claims were "specifically directed to a self-
referential table for a computer database." Enfish, 822 F.3d at 1337. The
claims, thus, were "directed to a specific improvement to the way
computers operate" rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate the process of insurance review by using dynamic data
rather than static paper (Reply Br. 7), our reviewing court has held that
speed and accuracy increases stemming from the ordinary capabilities of a
general purpose computer "do[] not materially alter the patent eligibility
of the claimed subject matter." Bancorp Servs, 687 F.3d at 1278. Instead,
the claims are more analogous to those in FairWarning, 839 F.3d 1089
(Fed. Cir. 2016), wherein claims reciting "a few possible rules to analyze
audit log data" were found to be directed to an abstract idea
because they asked "the same questions ( though perhaps phrased with
different words) that humans in analogous situations detecting fraud have
asked for decades." FairWarning, 839 F.3d at 1094, 1095. The claimed
use of client-server protocols is entirely conventional. The use of peer data
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does not elevate the claims above the realm of the abstract, as found in SAP
Am., supra.
We are not persuaded by Appellant's argument that the "Examiner's
asserted abstract idea is an overgeneralization of the claimed subject matter."
Reply Br. 7-9. Appellant describes the claims in terms of client-server
architecture and the specific steps performed. Again, client-server
architecture is conventional and generic. Appellant does not argue he
invented such an architecture. As we determine supra, the steps are equally
generic.
We are not persuaded by Appellant's argument that
Even if it were considered that methods for determining an
insurance program are known in the industry (which is not
conceded), utilizing the features noted above provides a different
aspect and viewpoint in which the user requesting the insurance
program may analyze different insurance structures. Therefore,
it is respectfully submitted that the claims recite limitations that
are directed to being "significantly more" than a "fundamental
economic practice."
The features recited in the claims provide improvements
in the field of issuing insurance programs. These features add
key, meaningful limitations far beyond merely linking these
organizational fields to a specified technology.
Reply Br. 10. An aspect and viewpoint are both abstract concepts. Thus
providing a different aspect and viewpoint is equally abstract. "Adding one
abstract idea ... to another abstract idea ... does not render the claim non-
abstract." RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327
(Fed. Cir. 2017). Improvements in the field of insurance are improvements
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Application 13/713,725
in an abstract field, as insurance by definition is the assumption of risk, itself
an abstract concept. 9
We are not persuaded by Appellant's argument that "a grant of the
claims would not preempt the making, using and selling of basic tools of
scientific and technological work." Reply Br. 10-11. "Where a patent's
claims are deemed only to disclose patent ineligible subject matter under the
Mayo[/Alice] framework, as they are in this case, preemption concerns are
fully addressed and made moot." Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
Claims 1, 3---8, 11-14, 19-21, 23, 24, 26, and 27 rejected under 35 USC
§ 103 (a) as unpatentable over Ziade and Guida
We are persuaded by Appellant's argument that the "cited prior art
references do not disclose or suggest a peer input selection from a user
selecting peer entities for the selected entity that are chosen for their
insurance metrics comparable to the metrics of the selected entity." App.
Br. 17. Neither reference mentions selection of peer entities. The Examiner
transcribes several paragraphs from Ziade, none of which mention peers, and
concludes that "the various disclosed risk data, third party vendor models
and ELTs [(event loss tables)] provide the peer input used in the risk
assessment." Ans. 53. The Examiner appears to conclude that selection of
aggregate data resulting from data about individuals is equivalent to
selection of one of the individuals and its data. This is a logical fallacy.
9 Business Dictionary
(http://www. businessdictionary .com/ definition/insurance.html) (last visited
Jan. 23, 2019).
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Appeal2017-005919
Application 13/713,725
Selection from an aggregate, that cannot be disaggregated, cannot be
selection of a non-aggregated individual. All independent claims have
similar limitations.
Claims 15-17 rejected under 35 US.C. § 103(a) as unpatentable over
Ziade, Guida, and Deede
These are dependent claims and the above arguments are equally
persuasive here.
CONCLUSIONS OF LAW
The rejection of claims 1, 3-8, 11-17, 19-21, 23, 24, 26, and 27 under
35 U.S.C. § 101 as directed to a judicial exception without significantly
more 1s proper.
The rejection of claims 1, 3-8, 11-14, 19-21, 23, 24, 26, and 27 under
35 U.S.C. § 103(a) as unpatentable over Ziade and Guida is improper.
The rejection of claims 15-17 under 35 U.S.C. § 103(a) as
unpatentable over Ziade, Guida, and Deede is improper.
DECISION
The rejection of claims 1, 3-8, 11-17, 19-21, 23, 24, 26, and 27 is
affirmed.
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)(l )(iv).
AFFIRMED
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