Alon Ketzef

Patent Trials and Appeals BoardAug 12, 2019

13900919 - (D) (P.T.A.B. Aug. 12, 2019)

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. 13/900,919 05/23/2013 Alon KETZEF DVS-PU-002-US1 9459 60956 7590 08/12/2019 Professional Patent Solutions P.O. BOX 654 HERZELIYA PITUACH, 46105 ISRAEL EXAMINER BAIRD, EDWARD J ART UNIT PAPER NUMBER 3692 NOTIFICATION DATE DELIVERY MODE 08/12/2019 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): office@propats.com utalmi@propats.com vsherman@propats.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ALON KETZEF ____________ Appeal 2018-004404 Application 13/900,9191 Technology Center 3600 ____________ Before ELENI MANTIS MERCADER, BETH Z. SHAW, and SCOTT E. BAIN, Administrative Patent Judges. BAIN, Administrative Patent Judge. DECISION ON APPEAL Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 11–20, which constitute all claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies Davidshield, L.I.A. as the real party in interest. Br. 2. Appeal 2018-004404 Application 13/900,919 2 BACKGROUND The Claimed Invention The invention relates to insurance claims settlement, and specifically, to “real time” verification and “automated” reimbursement of insurance claims. Abstract; Spec. ¶¶ 1, 9. Claim 11, the sole independent claim, is illustrative of the invention and the subject matter in dispute: 11. A system comprising a non-transitory, tangible computer-readable medium in which computer program instructions are stored, which instructions, when read by a computer, cause computerized reimbursement, said system comprising: at least one reimbursement-enabled mobile communicator having computerized memory functionality, computerized communications functionality and wireless payment functionality, said at least one reimbursement-enabled mobile communicator being provided to an authorized user by a reimbursing party using the system; and at least one reimbursement-enabled computer server having computerized memory functionality and computerized communications functionality, at least one of said at least one reimbursement-enabled mobile communicator and said at least one reimbursement-enabled computer server storing reimbursement policy parameters which are selectable by said reimbursing party using the system, said reimbursement policy parameters including at least payee location and transaction amount; at least one of said at least one mobile communicator and said at least one computer server being operative to automatically complete payment transactions between said authorized user of said at least one mobile communicator and said payee, which said payment transactions are compliant with said reimbursement policy parameters and to automatically reject payment transactions which are not compliant with said reimbursement policy parameters. Br. 17 (Claims Appendix). Appeal 2018-004404 Application 13/900,919 3 The Rejections on Appeal Claims 11–20 are rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Final Act. 4–10. Claims 11 and 18 are rejected under 35 U.S.C. § 103 as being unpatentable over Kennedy et al. (US 2007/0005402 A1; pub. Jan. 4, 2007) (“Kennedy”), Maus (US 2008/0099566 A1; pub. May 1, 2008), and Reed et al. (US 2006/0113376 A1; pub. Jun. 1, 2006) (“Reed”). Final Act. 11–17. Claims 12 and 15 are rejected under 35 U.S.C. § 103 as being unpatentable over Kennedy, Maus, Reed, and Hawkins (US 7,464,859 B1; iss. Dec. 16, 2008). Final Act. 17–18. Claim 13 is rejected under 35 U.S.C. § 103 as being unpatentable over Kennedy, Maus, Reed, Hawkins, and Vasic (US 2001/0034676 A1; Oct. 25, 2001) (“Vasic”). Final Act. 18–19. Claim 14 is rejected under 35 U.S.C. § 103 as being unpatentable over Kennedy, Maus, Reed, Hawkins, and Hoffman et al. (US 2006/0212313 A1; pub. Sep. 21, 2006) (“Hoffman”). Final Act. 19–20. Claims 16 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Kennedy, Maus, Reed, and Shristava et al. (US 2011/0015950 A1; pub. Jan. 20, 2011) (“Shristava”). Final Act. 20–21. Claim 19 is rejected under 35 U.S.C. § 103 as being unpatentable over Kennedy, Maus, Reed, and Hoffman. Final Act. 21–22. Claim 20 is rejected under 35 U.S.C. § 103 as being unpatentable over Kennedy, Maus, Reed, Hoffman, and Mundinger et al. (US 2010/0280748 A1; pub. Nov. 4, 2010) (“Mundinger”). Final Act. 22–23. Appeal 2018-004404 Application 13/900,919 4 DISCUSSION We have reviewed the Examiner’s rejection in light of Appellant’s arguments presented in this appeal. Arguments which Appellant could have made but did not make in the Brief are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv). For the reasons discussed below, we are not persuaded the Examiner has erred. Rejection Under 35 U.S.C. § 101 The Examiner determined that the claims constitute ineligible subject matter because they are “directed to a judicial exception (i.e., . . . abstract idea), without significantly more.” Final Act. 5. Specifically, the Examiner determined that the claims merely recite “rule-based tasks for processing an insurance claim,” which is a “method of organizing human activity.” Id. at 5–6 (citing Alice Corp. v. CLS Bank lnt’l, 573 U.S. 208, 217 (2014) (describing two-step framework “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts”)). The Examiner also found that the “additional computer elements” recited in the claim merely provide “conventional computer functions that do not add meaningful limits to practicing the abstract idea.” Final Act. 6. Appellant argues that the Examiner erred because the claims recite a “useful process for computerized reimbursement,” which “goes beyond the abstract idea of being a generic computerized payment system.” Br. 11. Appellant’s argument is brief, contending (without further explanation) that claim 11’s “reimbursement-enabled mobile communicator” being “provided Appeal 2018-004404 Application 13/900,919 5 by the payee to the authorized user” is what makes the claim patent-eligible. Id. at 12. After the Brief2 was filed and Answer mailed in this case, the USPTO published “Revised Subject Matter Eligibility Guidance” synthesizing case law and providing agency instruction on the application of § 101. See USPTO’s January 7, 2019, 2019 Revised Patent Subject Matter Eligibility Guidance 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the Guidance, we must look to whether a 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”)3; and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h)) (“Step 2A, Prong Two”). See 84 Fed. Reg. at 54–55. Only if a claim recites a judicial exception and does not integrate that exception into a practical application, do we then look to whether the claim: 2 No Reply Brief was filed to rebut the Examiner’s factual findings and legal conclusions in the Answer. 3 The Guidance refers to “Step One” as determining whether the claimed subject matter falls within the four statutory categories identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. This step is not at issue here. Appeal 2018-004404 Application 13/900,919 6 (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. See id. at 56 (collectively “Step 2B”). We begin our de novo review with Appellant’s claim 11. We agree with the Examiner’s determination that claim 11 recites an abstract idea. See Guidance at Section III (describing Step 2A, Prong One). Claim 11 recites a system performing the following steps: (1) a “reimbursement-enabled” mobile communicator being provided to an authorized user, (2) the communicator or “reimbursement-enabled” server storing reimbursement parameters (i.e., rules), the parameters selectable by the reimbursing party and including location and amount, and (3) verifying and completing payment transactions compliant with the reimbursement parameters. Br. 17. Each of the foregoing steps are fundamental to automated financial payment, such as payment (settlement) on an insurance claim. The first step in settling an insurance claim is to provide the user with a way to make the claim (here, a “reimbursement-enabled mobile communicator”). The next step is to establish rules for reimbursing the claim (step 2, above). Finally, the last step is to verify a user’s claim pursuant to the rules, and to issue payment (step 3, above). Accordingly, we determine that, like the claims to hedging in Bilski and the claims to mitigating settlement risk in Alice, claim 11 recites a fundamental economic practice, which is one of the certain methods of Appeal 2018-004404 Application 13/900,919 7 organizing human activity deemed to be an abstract idea under the Guidance. See Bilski v. Kappos, 561 U.S. 593 (2010); Alice, 573 U.S. 208. We next proceed to Step 2A, Prong 2 of the Guidelines. Under this step, if the claim “as a whole” integrates the abstract idea into a “practical application,” it is patent eligible. Appellant argues that claim 11 is “useful,” implying that its computing elements reflect an improvement in technology. Br. 11–12. Improving the functioning of a computer can reflect integration of an idea into a “practical application.” Guidelines Sect. III. We, however, disagree. Appellant does not explain, and we do not discern, how the claimed invention constitutes an improvement in technology. Compare Bascom, 827 F.3d at 1350 (“harness[ing a] technical feature of network technology in a filtering system” to customize content filtering); Enfish, 822 F.3d at 1330– 33, 1336 (“self-referential database” which permitted faster searching for data). The claims in Bascom and Enfish, for example, recited a “specific . . . improvement to the way computers operated,” see, e.g., Enfish, 822 F.3d at 1330–33, but Appellant’s claim 11 recites a financial transaction that merely uses generic computing elements. See e.g., Spec. ¶ 31 (“The embodiments described hereinbelow include various computer implemented functions, some of which may be executed by a server or other computer system and some of which may he executed by a mobile communicator. The present invention preferably includes software implemented modules stored on a tangible medium, such as a readable disk or other storage device, for performing the various functions described hereinbelow. Additionally or alternatively, the functions described hereinbelow may include computer instructions implemented in hardware”). Appeal 2018-004404 Application 13/900,919 8 Appellant also does not direct us to any evidence that claim 11 recites any unconventional rules, transform or reduce an element to a different state or thing, or otherwise integrate the idea into a practical application. Rather, claim 11 recites a reimbursement request being made, verified, and paid. Br. 17 (Claims App’x.). Reciting a result-oriented solution that lacks any details as to how the computer performed the modifications is the equivalent of the words “apply it.” Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341–42 (Fed. Cir. 2015) (citing Elec. Power Grp., LLC, v. Alstrom S.A., 830 F.3d 1350, 1356 (Fed. Cir. 2016) (cautioning against claims “so result focused, so functional, as to effectively cover any solution to an identified problem”)); see also CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (mere data gathering does not make a claim patent-eligible). The data gathering and processing steps in claim 11 do not add meaningfully to the recited fundamental economic practice. Finally, under Step 2B of the Guidance we must look to whether the claims include any “additional limitation that is not well-understood, routine [or] conventional.” The “question of whether a claim element or combination of elements is well-understood, routine and conventional to a skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018); see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d. 1314, 1325 (Fed. Cir. 2016) (holding that patent eligibility inquiry may contain underlying issues of fact). Claim 11 recites a “reimbursement-enabled mobile communicator” and “reimbursement-enabled computer server,” along with operations Appeal 2018-004404 Application 13/900,919 9 parameters (rules) and instructions. Br. 17. We agree with the Examiner’s finding that simply using mobile and/or computer elements to implement rules for processing a financial payment (such as insurance reimbursement) is well understood, routine, and conventional. Ans. 11. As the Examiner finds: A reimbursement-enabled mobile communicator [can be] merely a mobile phone having the ability to transfer data between itself and a computer server. Such generic computer components recited as performing generic computer functions that are well- understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. As such, these components do not impose any meaningful limit on the computer implementation of the abstract idea. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Ans. 7; Spec. ¶ 31 (describing generic computing elements). Accordingly, we conclude that the Examiner did not err in concluding that claim 11 constitutes ineligible subject matter. Appellant does not argue claims 12–20 separately from claim 11. See 37 C.F.R. § 41.37(c)(1)(iv)). We, therefore, sustain the rejection of claims 11–20 under 35 U.S.C. § 101. Rejection Under 35 U.S.C. § 103 Appellant argues that the Examiner erred in finding the prior art teaches or suggests “at least one reimbursement-enabled mobile communicator . . . being provided to an authorized user by a reimbursing party using the system,” as recited in claim 11. Br. 13 (emphasis in original). Appellant argues that Maus does not show “any” payment Appeal 2018-004404 Application 13/900,919 10 functionality, much less “wireless” (mobile) functionality, and that Kennedy also does not disclose wireless payment functionality. Id. at 14–15. We, however, are unpersuaded by Appellant’s argument because it does not address the Examiner’s combination of references. In re Keller, 642 F.2d 413, 426 (CCPA 1981) (“one cannot show non-obviousness by attacking references individually where . . . the rejections are based on combinations of references”). The Examiner relies on Kennedy’s teaching of a real-time heathcare insurance claims settlement system, combined with Maus’ teaching of wireless functionality in a heathcare payment system. Ans. 11–12. Specifically, Maus teaches a personal heathcare card which “can be accessed wirelessly” through, for example, RFID interrogation. Maus ¶ 18. Further, Maus teaches that the healthcare card can be located by a “homing ping.” Id. at ¶ 7. Appellant’s arguments do not address these teachings of Maus, and the Examiner’s reliance on the combination of these teachings with those of Kennedy. Further, Appellant’s argument omits the Examiner’s reliance on the teachings of Reed, which describes “real time” healthcare expense reimbursement which can be used at a “point of sale.” Reed Abstract, ¶ 3; Ans. 13–14. Appellant does not argue the Examiner’s rationale in combining the references, and we discern no error. The Examiner has “articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Ans. 12, 17. We find no evidence of record that the resulting arrangements of the cited references were “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Appeal 2018-004404 Application 13/900,919 11 Cir. 2007) (citing KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418–19 (2007)). The Examiner’s findings are reasonable because the skilled artisan would “be able to fit the teachings of multiple patents together like pieces of a puzzle” since the skilled artisan is “a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 420–21. We are persuaded the claimed subject matter exemplifies the principle, “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. Accordingly, we sustain the Examiner’s obviousness rejection of claim 11, as well as claims 12–20 that were argued as a group with claim 11. DECISION We affirm the Examiner’s decision rejecting claims 11–20. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED