Allstate Insurance Company

Patent Trials and Appeals Board

Apr 1, 2022

2021001598 (P.T.A.B. Apr. 1, 2022)

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. 15/441,503 02/24/2017 Larry Shigeo Kobori 111147-691673 9796 180284 7590 04/01/2022 Polsinelli - Allstate PO Box 140310 Kansas City, MO 64114-0310 EXAMINER ROSTAMI, MOHAMMAD S ART UNIT PAPER NUMBER 2154 NOTIFICATION DATE DELIVERY MODE 04/01/2022 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): allstateip@polsinelli.com patentdocketing@polsinelli.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte LARRY SHIGEO KOBORI, CARL KATSUMI MAYEDA, and PRIYA SAHAI Appeal 2021-001598 Application 15/441,503 Technology Center 2100 Before RICHARD M. LEBOVITZ, ERIC B. CHEN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1-20, all the pending claims under appeal. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42(a) (2022). Appellant identifies Allstate Insurance Company as the real party in interest. Appeal Brief filed September 3, 2019 (“Appeal Br.”) at 2. Appeal 2021-001598 Application 15/441,503 2 CLAIMED SUBJECT MATTER Summary Appellant’s claimed subject matter “relates to insurance agency location modeling to establish new insurance agency locations in various geographic locations based on an evaluation of user selected criteria.” Spec. ¶ 2.2 According to Appellant, when selecting a location for a new insurance agency, “it is desirable to take into account a host of perils that affect a geographic area during comparison of potential insurance agency site locations” including “natural events such as a volcanic eruption, earthquake, landslide, avalanche, flood, tsunami, hurricane, tornado, and/or wildfire and perils related to human activity such as toxic waste and/or industrial accidents.” Id. ¶ 6. Illustrative Claim Claims 1, 11, and 17 are the independent claims. Claim 1, with dispositive limitation at issue in italics, illustrates the claimed subject matter and is reproduced below: 1. A method for determining an insurance agency location, the method comprising: receiving at least one geographic region comprising land from at least two zip codes to be evaluated for placement of the insurance agency location; displaying an interactive map having first boundaries; 2 In addition to the above-noted Appeal Brief, throughout this Decision we refer to: (1) Appellant’s Specification filed February 24, 2017 (“Spec.”); (2) the Final Office Action (“Final Act.”) mailed February 26, 2019; (3) the Examiner’s Answer (“Ans.”) mailed November 10, 2020; and (4) the Reply Brief filed January 4, 2021 (“Reply Br.”). Appeal 2021-001598 Application 15/441,503 3 overlaying, on the interactive map, second boundaries to generate a high resolution definition of a displayed shoreline; generating a risk border comprising a plurality of geographical points abutting a source of peril and a plurality of line segments connecting the plurality of geographical points; receiving at least one distance band to the risk border; receiving modeling factors to be utilized in the determination of the insurance agency location; displaying the at least two zip codes and surrounding areas on the interactive map, the at least two zip codes and surrounding areas being interactively defined with model outputs for determining the insurance agency location and information associated with the at least two zip codes; determining the insurance agency location based on the received at least one distance band and a number of homeowners within the at least one distance band; calculating a final score for each of the at least two zip codes; ranking the final score for each of the at least two zip codes; and displaying the ranking for each of the at least two zip codes on the map. Appeal Br. 13 (Claims App.). Appeal 2021-001598 Application 15/441,503 4 REFERENCES The Examiner relies on the following prior art references:3 Name Reference Date Karsten US 2003/0208401 A1 Nov. 6, 2003 Dasari US 2004/0267743 A1 Dec. 30, 2004 Baechtiger US 2005/0096972 A1 May 5, 2005 Hammack US 2006/0005147 A1 Jan. 5, 2006 Glassman US 2008/0086356 A1 Apr. 10, 2008 Green US 8,655,595 B1 Feb.18, 2014 REJECTIONS The Examiner rejects the claims as shown below: Claim(s) Rejected 35 U.S.C. § References Final Act. 1-20 Non-Statutory Double Patenting U.S. Patent Nos. 8,219,535 B1, 8,805,805 B1 8,938,432 B2 4 1, 2, 6-11, 13, 15, 17-19 103(a) Baechtiger, Green, Karsten, Hammack 6 3-5, 12, 16, 20 103(a) Baechtiger, Green, Karsten, Hammack, Glassman 15 14 103(a) Baechtiger, Green, Karsten, Hammack, Dasari 16 3 All citations to the references use the first-named inventor or author only. Appeal 2021-001598 Application 15/441,503 5 OPINION Obviousness Rejection We review the appealed rejections for error based upon the issues identified by Appellant and in light of Appellant’s arguments and evidence. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential). The Examiner relies on Baechtiger to teach or suggest “receiving at least one geographic region comprising land from at least two zip codes to be evaluated for placement of the insurance agency location,” as recited in claim 1. Final Act. 6 (citing Baechtiger ¶ 13). Appellant argues that “Baechtiger describes that a ‘service provider may be . . . all point of sales in ZIP code 94901.’” Appeal Br. 8. According to Appellant, “[a] service provider including points of sales within a ZIP code clearly does not constitute, ‘receiving at least one geographic region comprising land from at least two zip codes to be evaluated for placement of the insurance agency location,’ as recited in claim 1.” Id. Appellant’s argument is persuasive. The only paragraph cited by the Examiner from Baechtiger to teach the limitation at issue discloses in full: In the context of the present invention, a “service provider” is an entity that provides goods and/or services to service receivers. A “service provider” may also be called a “branch”, “branch location” or a “network branch location” where the “network” is a collection of one or more branches. By way of illustrative examples, a service provider may be: a company location; all point of sales in ZIP Code 94901; a store; a stadium; a swimming pool; a police office; a delivery warehouse; a hospital, etc.; or a combination of one or more individual service providers, as in the case of a shopping mall. Baechtiger ¶ 13. Appeal 2021-001598 Application 15/441,503 6 As Appellant notes, the cited paragraph of Baechtiger merely discloses that a service provider may be described as all point of sales in a particular ZIP Code. The Examiner, in turn does not sufficiently explain how all points of sales in a particular zip code teaches or suggests at least one geographic region comprising land from at least two zip codes to be evaluated for placement of the insurance agency location, as recited in claim 1. Moreover, as Appellant further points out, the “Examiner’s Answer fails to address Appellant’s” arguments, as set forth in the Appeal Brief. Reply Br. 4. Because we agree with at least one of the dispositive arguments advanced by Appellant for claim 1, we need not reach the merits of Appellant’s other arguments. Accordingly, we reverse the Examiner’s obviousness rejection of independent claim 1. We also reverse the rejection of independent claims 11 and 17, which recite commensurate limitations, and of dependent claims 2, 6-10, 13, 15, 18, and 19, for similar reasons. Because the Examiner does not rely on Glassman or Dasari to cure the deficiency of the obviousness rejection discussed above, we also reverse the rejections of dependent claims 3-5, 12, 14, 16, and 20. Non-statutory Double Patenting Rejection The Examiner rejects claims 1-20, on the ground of obviousness-type double patenting based on claims 1-14 of U.S. Patent No. 8,219,535 B1, claims 1-17 of U.S. Patent No. 8,805,805 B1, and claims 1-8 of U.S. Patent No. 8,938,432 B2. Final Act. 4-5. Appellant does not address the merits of this rejection. See generally Appeal Br. 6-11. Therefore, we summarily sustain the rejection. See Manual of Patent Examining Procedure § 1205.02, 9th ed., Rev. 10.2019 revised Appeal 2021-001598 Application 15/441,503 7 June 2020 (“If a ground of rejection stated by the examiner is not addressed in the appellant’s brief, that ground of rejection will be summarily sustained by the Board.”). Subject Matter Eligibility of Claims 1-20 The Examiner previously rejected the claims under 35 U.S.C. § 101, but withdrew the rejection. Final Action 9-13, mailed May 1, 2018. In the event of further prosecution, the Examiner should consider whether to reinstate the withdrawn rejection of claims 1-20 under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter without reciting significantly more. The Examiner’s conclusion regarding the lack of patent eligibility was correct at that time, and none of Appellant’s subsequent amendments warrant the withdrawal of the rejection. Our decision not to reinstate this rejection should not be interpreted as our agreeing that the claims are directed to patent-eligible subject matter. Rather, we merely choose to limit our review to the questions raised on appeal. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (setting forth that the Board’s primary function is to review the appealed rejections for error based upon the issues identified by Appellant and in light of Appellant’s arguments and evidence). CONCLUSION We do not sustain the Examiner’s various rejections of claims 1-20 under 35 U.S.C. § 103(a). We sustain the Examiner’s obviousness-type double patenting rejection of claims 1-20. Appeal 2021-001598 Application 15/441,503 8 Because we affirm at least one ground of rejection with respect to each claim on appeal, we affirm the Examiner’s decision to reject all of the pending claims. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1-20 Nonstatutory Double Patenting 1-20 1, 2, 6-11, 13, 15, 17-19 103(a) Baechtiger, Green, Karsten, Hammack 1, 2, 6- 11, 13, 15, 17- 19 3-5, 12, 16, 20 103(a) Baechtiger, Green, Karsten, Hammack, Glassman 3-5, 12, 16, 20 14 103(a) Baechtiger, Green, Karsten, Hammack, Dasari 14 Overall Outcome 1-20 TIME PERIOD FOR RESPONSE 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