Richard Lasota et al.

Patent Trials and Appeals Board

Sep 1, 2020

2019006446 (P.T.A.B. Sep. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/264,754 11/04/2008 Richard Lasota 702410 1777
23460 7590 09/01/2020
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/01/2020 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 RICHARD LASOTA, PAUL CAHILL, and
PAUL DIPAOLA

Appeal 2019-006446
Application 12/264,754
Technology Center 3600
____________

Before CAROLYN D. THOMAS, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7 and 9–22, constituting all pending
claims in the application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as American
International Group, Inc. Appeal Br. 1.
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STATEMENT OF THE CASE

Appellant’s invention generally relates to “generating an estimate of
the loss caused by a major loss event.” Spec. ¶ 2. Claim 1, reproduced
below, is representative of the claimed subject matter:
1. A method for making a loss estimate of an insurance
company resulting from a loss event, the method comprising:

operating an initial net loss projection server to execute a
loss estimate collaboration program stored on a physical
computer-readable medium to provide a common information
repository on a computer network accessible by computers
connected to the computer network, the initial net loss
projection server in operable arrangement with electronic
database of information concerning in-force insurance policies
issued by the insurance company, the information including the
name of the insured;

independent of receiving a notification of an insurance
claim under one or more of said in-force policies, operating the
initial net loss projection server to execute the loss estimate
collaboration program to send an electronic initial alert message
over the computer network to respective email addresses of
members of a loss projection team, the initial alert message
indicating that an initial loss estimate for the loss event is to be
generated, the email addresses of the members of the loss
projection team being identified by the initial net loss projection
server from a pool of users in an electronic database containing
user information;

storing, through one of the computers connected to the
computer network, electronic information files in the common
information repository, each information file comprising data
concerning the loss event;

in response to the storing of each of the electronic
information files in the common information repository,
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automatically issuing by the initial net loss projection server a
notification message over the computer network to the email
address of each member of the loss projection team according
to a notification level attributed to the respective member;

accessing, through at least one of the computers operably
connected to the network, the information files in the common
information repository to identify entities involved in, or
affected by, the loss event;

for each entity identified as being involved in, or affected
by, the loss event, determining whether said entity has an
insurance policy from the insurance company that is in force as
of the loss event by using the initial net loss projection server to
search the electronic database of information concerning in-
force insurance policies issued by the insurance company to
identify a set of in-force policies that the insurance company
has issued to any of the entities identified as being involved in,
or affected by, the loss event;

storing, through one of the computers connected to the
computer network, electronic policy information in the
common information repository, the electronic policy
information comprising information regarding the in-force
policies of the identified entities;

in response to storing the electronic policy information in
the common information repository, automatically issuing by
the initial net loss projection server an electronic policy alert
message over the computer network to at least one email
address of one member of the loss projection team, the policy
alert message indicating that the common information
repository includes the electronic policy information;

selecting, through one of the computers connected to the
computer network, in-force policies to be included in the initial
loss estimate for the loss event from the set of identified in-
force policies by setting a respective edit field in a graphical
user interface associated with each of the selected in-force
policies to an include status;
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generating, using the initial net loss projection server to
execute the loss estimate collaboration program, the initial loss
estimate for the loss event based on the selected in-force
policies by summing a respective net policy dollar limit of each
of said selected in-force policies.

REJECTIONS

Claims 1–7 and 9–22 stand rejected under 35 U.S.C. § 101 as directed
to a judicial exception without reciting significantly more.
Claims 1–7, 9, and 11–22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Aquila et al., US 2002/0035488
Al (published Mar. 21, 2002) (“Aquila”), Generous et al. US 2002/0120697
A1 (published Aug. 29, 2002) (“Generous”), Brumfield, US 2007/0043821
Al (published Feb. 22, 2007) (“Brumfield”), and Zizzamia et al., US
2006/0136273 Al (published June 22, 2006) (“Zizzamia”).
Claim 10 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Aquila, Generous, Brumfield,
Zizzamia, and Vinyard, US 2007/0005401 Al (published Jan. 4, 2007)
(“Vinyard”).
ANALYSIS

35 U.S.C. § 101 Rejections

An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to
include implicit exceptions: “[l]aws of nature, natural phenomena, and
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abstract ideas” are not patentable. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
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eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
The USPTO has published guidance on the application of § 101. See
USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”); October 2019 Update: Subject Matter Eligibility, 84 Fed. Reg.
55,942 (available at the USPTO’s website) (“October 2019 PEG Update”).
Under the 2019 Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).2
2019 Guidance, 84 Fed. Reg. at 52–55.

2 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2), 84
Fed. Reg. 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Guidance, 84 Fed. Reg. at 52–56.

2019 Guidance, Step 2A, Prong One
The Examiner determines the claims describe “steps facilitating
making an insurance company a loss estimate associated with a loss event,”
which recite a fundamental economic practice, certain methods of
organizing human activity, and mental processes. Final Act. 16–17.
Appellant does not expressly dispute the Examiner’s findings and
conclusions under Step 2A, Prong One. See Appeal Br. 5–10.
We agree with the Examiner that the claims recite an abstract idea,
specifically, a mental process. See Final Act. 16–17; Ans. 5. For example,
the claims recite several steps that can be practically performed by a human
being, and, therefore, recite a mental process. For example, the claims recite
“accessing . . . the information files in the common information repository to
identify entities involved in, or affected by, the loss event,” “for each entity
identified as being involved in, or affected by, the loss event, determining
whether said entity has an insurance policy from the insurance company that
is in force as of the loss event by using the initial net loss projection server
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to search the electronic database of information concerning in-force
insurance policies issued by the insurance company to identify a set of in-
force policies that the insurance company has issued to any of the entities
identified as being involved in, or affected by, the loss event,” “selecting . . .
in-force policies to be included in the initial loss estimate for the loss event
from the set of in-force policies by setting a respective edit field in a
graphical user interface associated with each of the selected in-force policies
to an include status,” and “generating . . . the initial loss estimate for the loss
event based on the selected in-force policies by summing a respective net
policy dollar limit of each of said selected in-force policies.” Appeal Br.,
Claims App’x 20.
Appellant’s Specification supports that the foregoing limitations may
be performed by a human being. See, e.g., Spec. ¶¶ 47–56. For example,
Appellant describes that the news reports can be reviewed to identify the
entities involved in, or impacted by the major loss event. Spec. ¶ 47. “The
task of reviewing media coverage to collect facts surrounding the MLE and
to identify the entities involved in the MLE is preferably performed by
specially trained and experienced searchers.” Id. (emphasis added). After
the entity is identified, Appellant describes that “a member of the initial net
loss projection team can determine whether the identified entity is insured
by the insurance company” by searching through a database. Spec. ¶ 49
(emphasis added). The search results concerning the in-force policies may
then be stored and accessed by team members. Spec. ¶¶ 49–51. For
example, “[s]elected members of the team can review the policy information
to determine whether the particular policy is relevant to the incident.” Spec.
¶ 51 (emphasis added). The Specification also describes an embodiment
where “the list of policies in the . . . database includes an edit field for a
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reviewer to indicate whether a policy is to be included in the initial net loss
projection . . . .” Spec. ¶ 52 (emphasis added). Further, “the contact person
for each division can aggregate the dollar limits of the relevant policies
issued by that division to calculate the initial projected net loss exposure of
that division.” Spec. ¶ 56 (emphasis added).
Therefore, we conclude the claims recite at least a mental process
pursuant to Step 2A, Prong One of the guidance. See 2019 Guidance,
Section III(A)(1) (Prong One: Evaluate Whether the Claim Recites a Judicial
Exception).
2019 Guidance, Step 2A, Prong Two
In determining whether the claims are “directed to” the identified
abstract idea, we next consider whether the claims recite additional elements
that integrate the judicial exception into a practical application.3 We discern
no additional element (or combination of elements) recited in the claims that
integrates the judicial exception into a practical application. See 2019
Guidance, 84 Fed. Reg. at 54–55.
The Examiner finds the additional limitations are generic computer
components that perform generic computer functions such as storing,
receiving, and transmitting data, processing/executing computer instructions,
and providing a connection among computer devices on a network. Final
Act. 3–4, 18–19; Ans. 5–6.

3 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the 2019
Revised Guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under Step 1 of Alice (Step 2A of the 2019
Revised Guidance). See 2019 Revised Guidance, 84 Fed. Reg. at 55 n.25,
27–32.
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Appellant presents various arguments corresponding to Step 2A,
Prong 2 of the 2019 Guidance. E.g., Appeal Br. 7–10. For example,
Appellant argues certain steps of claim 1 “identify particular devices and
require a particularly-programmed machine.” Appeal Br. 7. Appellant
further argues the claims “are inextricably tied with a computer system to
provide a particular network of interconnected computers and a particular
communication and notification scheme configured to facilitate the
generation of a loss estimate.” Id. In particular, Appellant argues “the steps
of claim 1 delineate a particular notification scheme tailored to help the
members of the loss team collaborate together in a rapid manner to generate
a loss estimate.” Id. at 8.
Appellant also argues the claims provide “a significant improvement
over any existing technological process known at the time of the invention.”
Id. Specifically, Appellant argues the claimed approach “enables the
collaborative, prompt generation of an initial net loss projection within a
short time frame,” “enables and encourages efficient collection and sharing
of information required for initially projecting the net loss exposure faced by
the company in a timely, efficient and accurate manner.” Id.
Appellant also argues “the claimed solution is rooted in computer
technology in order to overcome a problem specifically arising in the field of
major loss events.” Id. Appellant argues
[t]he present claims specify how interactions with the net loss
projection server and the common information repository occur
to produce automatically occurring actions from the net loss
projection server to yield a particular useful application to solve
a persisting problem in the industry – namely, how to quickly
develop a projection of the magnitude of damage caused by a
loss event to a particular company. The present claims recite a
specific way to automate the solution and enable users of the
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method to be located geographically apart from each other yet
still be promptly informed of events occurring within the
‘common information repository’ through the use of alerts sent
automatically via the loss collaboration program.

Id. at 9–10.
Appellant’s arguments are not persuasive. We agree with the
Examiner that the additional recited elements are generic computer system
components. Final Act. 19; Ans. 5–6. For example, method claim 1 recites
“operating an initial net loss projection server to execute a loss estimate
collaboration program stored on a physical computer-readable medium to
provide a common information repository on a computer network accessible
by computers connected to the computer network, the initial net loss
projection server in operable arrangement with an electronic database of
information concerning in-force insurance policies issued by the insurance
company . . .,” “operating the initial net loss projection server to execute the
loss estimate collaboration program to send an electronic initial alert
message over the computer network . . .,” “storing, through one of the
computers connected to the computer network, electronic information files
in the common information repository . . .,” “in response to the storing of
each of the electronic information files in the common information
repository, automatically issuing by the initial net loss projection server a
notification message over the computer network . . .,” “through at least one
of the computers operably connected to the network,” “storing, through one
of the computers connected to the computer network, electronic policy
information in the common information repository . . .,” “in response to
storing the electronic policy information in the common information
repository, automatically issuing by the initial net loss projection server an
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electronic policy alert message over the computer network . . .,” “through
one of the computers connected to the computer network, “a respective edit
field in a graphical user interface,” and “using the initial net loss projection
server to execute the loss estimate collaboration program.” Appeal Br.,
Claims App’x 19–20.
We agree with the Examiner that these additional limitations recite
generic computer components performing generic computer functions. See
Final Act. 19; Ans. 5–6. Appellant’s Specification does not indicate that
these limitations are anything other than generic, nor does Appellant direct
our attention to any evidence that they are not generic. See, e.g. Spec. ¶ 35
(“server 22 . . . can include a program running thereon that provides the
functionality of an information repository 24 that can be accessed by users
over the network 20 for storing, editing, and analyzing information and
storing decision results”); Spec. ¶ 36 (“where the network 20 comprises the
Internet”); Spec. ¶ 37 (“information repository can include a database”);
Spec. ¶ 39 (“[a] database 38 of insurance policy and reinsurance information
. . .”); Spec. ¶ 43 (“information repository 24 is implemented as an
electronic collaboration site (‘ECS’)”); Spec. ¶ 58 (“ECS . . . includes web
pages designed to make it easy for a user to add, review, and edit
information”).
We find no indication in the Specification, nor does Appellant direct
us to any indication, that the operations recited by the claims invoke any
inventive programming, require any specialized computer hardware or other
inventive computer components (i.e., a particular machine), or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions (e.g., storing, receiving,
and transmitting data). See DDR Holdings, LLC v. Hotels.com, L.P., 773
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F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent- eligible.”). The claims merely add generic computer
components to support the abstract idea, which is insufficient to integrate the
judicial exception into a practical application.
Moreover, we are unpersuaded the claims constitute an improvement
to the functioning of the computer or to any other technology or technical
field; they merely adapt the abstract idea to an execution of steps performed
on a computer. See Credit Acceptance Corp. v. Westlake Services, 859 F.3d
1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made clear that mere
automation of manual processes using generic computers does not constitute
a patentable improvement in computer technology.”). The problem
described in Appellant’s Specification pertains to providing an accurate
initial net loss projection after the occurrence of a major loss event, given
the complexities within the conventional corporate structure of an insurance
company. E.g., Spec. ¶¶ 3–8. Appellant explains:
The unique collaborative process in accordance with the
invention enables and encourages efficient collection and
sharing of information required for initially projecting the
maximum net loss exposure faced by the company in a timely,
efficient and accurate manner. This can be achieved by
defining roles and responsibilities for the MLE process
coordinators and other participants in various parts of the
insurance company (e.g., Claims, Underwriting, and
Reinsurance divisions) so that they can work together in an
organized way to determine the initial net loss projection.

Spec. ¶ 70. Appellant’s invention is not directed to a solution to a technical
problem, but rather is directed to an improved collaboration process related
to a business problem. The claims do not recite an advance in hardware or
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software that improves this process, but rather, any improvement is to the
process itself, e.g., the abstract idea.
Accordingly, we determine the claims do not integrate the judicial
exception into a practical application. See 2019 Guidance, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether
the Judicial Exception Is Integrated Into a Practical Application). We,
therefore, agree with the Examiner that the claims are directed to a judicial
exception. See Final Act. 15–17; Ans. 3–6.
2019 Guidance, Step 2B
Turning to step 2 of the Alice/Mayo framework, we look to whether
the claims: (a) add a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field, or (b)
simply append well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception. 2019 Guidance, 84 Fed. Reg. at 56.
As discussed above, the Examiner determines the claims recite
generic computer components that perform generic computer functions that
are well-understood, routine, and conventional activities, such as storing,
receiving, transmitting, and calculating data. Final Act. 19; Ans. 5–7.
Appellant argues “[t]he steps of claim 1 include meaningful
limitations that go far beyond what is well understood, routine, and
conventional in the field.” Appeal Br. 10.
We are not persuaded by Appellant’s arguments and agree with the
Examiner’s findings and conclusions. Final Act. 19–20; Ans. 6–7. When
viewed as a whole, nothing in the claim adds significantly more (i.e., an
inventive concept) to the abstract idea. Similarly, the additional elements in
the claim, identified above, amount to no more than mere instructions to
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apply the exception using generic computer components, which is
insufficient to provide an inventive concept. See, e.g., Spec. ¶¶ 35–37, 39,
43, 58. As discussed above, Appellant does not direct our attention to
anything in the Specification that indicates the claimed computer
components perform anything other than well-understood, routine, and
conventional processing functions. See Elec. Power Grp., LLC v. Alstom
SA, 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims,
understood in light of the specification, requires anything other than off-the-
shelf, conventional computer, network, and display technology for
gathering, sending, and presenting the desired information”); buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer
receives and sends the information over a network—with no further
specification—is not even arguably inventive”); Alice, 573 U.S. at 224–26
(receiving, storing, sending information over networks insufficient to add an
inventive concept). In short, each step does no more than require a generic
computer to perform generic computer functions.
Furthermore, we are unable discern anything in the claims, even when
the recitations are considered in combination, that represents something
more than the performance of routine, conventional functions of a generic
computer. That is, the claims at issue do not require any nonconventional
computer components, or even a “non-conventional and non-generic
arrangement of known, conventional pieces,” but merely call for
performance of the storing, receiving, and transmitting data “on a set of
generic computer components.” Bascom Glob. Internet Servs., Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
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the cited references, Appellant misapprehends the controlling precedent.
Although the second step in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but rather, a search for “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,
573 U.S. at 217–218. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
Appellants’ preemption argument (Appeal Br. 10) is likewise
unpersuasive of Examiner error. Although preemption “might tend to
impede innovation more than it would tend to promote it, ‘thereby thwarting
the primary object of the patent laws”’ (Alice, 134 S. Ct. at 2354 (citing
Mayo, 132 S. Ct. at 1293)), “the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc.,
788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
Appellant does not separately argue the dependent claims. See
generally Appeal Br. Accordingly, for the foregoing reasons we sustain the
Examiner’s 35 U.S.C. § 101 rejection of claims 1–7 and 9–18.

35 U.S.C. § 103(a) Rejections
Appellant argues the combination of references fails to teach or
suggest “independent of receiving a notification of an insurance claim under
one or more of said in-force policies,” as recited in claim 1. Appeal Br. 14–
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15. Specifically, Appellant argues that “Aquila is concerned with managing
claims that have been reported to a company through its commercial
participants,” and, therefore, fails to teach or suggest “making a loss
estimate of an insurance company resulting from a loss event separate from
completing steps for arriving at the settlement of the actual claim.” Id. at 14.
Appellant argues that Aquila’s estimates all pertain to a filed claim, and,
therefore, do not teach or suggest the claimed “independent of receiving a
notification of an insurance claim under one or more of said in-force
policies,” as well as other steps that are predicated upon this limitation, such
as, for example, “identify[ing] entities involved in, or affected by, the loss
event,” “determining whether said entity has an insurance policy from the
insurance company that is in-force as of the loss event . . .,” and “selecting
. . . in-force policies to be included in the initial loss estimate [for the loss
event] from the set of identified in-force policies . . . .” Id. at 15. Appellant
further argues Generous, Brumfield, and Zizzamia fail to cure the
deficiencies of Aquila. Id. at 16–17
We are persuaded by Appellant’s arguments. The Examiner primarily
relies on Aquila to teach or suggest the limitations in claim 1, including the
limitation
independent of receiving a notification of an insurance claim
under one or more of said in-force policies, operating the initial
net loss projection server to execute the loss estimate
collaboration program to send an electronic initial alert message
over the computer network to respective email addresses of
members of a loss projection team, the initial alert message
indicating that an initial loss estimate for the loss event is to be
generated, the email addresses of the members of the loss
projection team being identified by the initial net loss projection
server from a pool of users in an electronic database containing
user information,
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Final Act. 22–23 (emphasis added). However, the Examiner’s findings do
not explicitly address the portion of the limitation “independent of receiving
a notification of an insurance claim under one or more of said in-force
policies.” Final Act. 22–23; Ans. 16––17. Rather, the Examiner’s findings
are directed to disclosure in Aquila relating to assigning tasks (e.g., damage
or loss estimation) to an entity in association with an insurance event, and
notifying the entity of the assignment. Id. Aquila is directed to managing,
administering, and tracking insurance claims. Aquila Abstract; ¶ 3.
Aquila’s process begins with the receipt of an insurance claim. E.g., Aquila
¶ 67 (“the system and method processes, tracks, and releases funds for
claims made upon insurance policies . . .”); ¶ 102 (“[t]he assignment sub-
system 230 receives the claim . . . identifies the assignee most qualified for
the assignment . . . makes the assignment . . . and notifies the assignee”);
Figs. 3, 4, 5A, 5B, 11, Fig. 11. The Examiner is correct that a loss estimate
task may be assigned to a user, however, the estimate is associated with a
claim. Aquila ¶¶ 114, 166. We do not see, and the Examiner has not
identified, where Aquila teaches or suggests that such processing occurs
“independent of receiving a notification of an insurance claim under one or
more of said in-force policies.” Ans. 3.
We are, therefore, constrained by the record before us to find that the
Examiner erred in rejecting independent claim 1, and for the same reasons,
dependent claims 2–7 and 9–22.

Appeal 2019-006446
Application 12/264,754
19

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference
(s)/Basis
Affirmed Reversed
1–7, 9–
22
101 Eligibility 1–7, 9–
22

1–7, 9,
11–22
103(a) Aquila,
Generous,
Brumfield,
Zizzamia
1–7, 9, 11–
22
10 103(a) Aquila,
Generous,
Brumfield,
Zizzamia,
Vinyard
10
Overall
Outcome
1–7, 9–
22

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).

AFFIRMED