Ex Parte HERTENSTEIN

Patent Trial and Appeal Board

Jan 23, 2019

12961699 (P.T.A.B. Jan. 23, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/961,699 12/07/2010
73479 7590
Shutts & Bowen LLP
Steven M. Greenberg, Esq.
525 Okeechobee Blvd
# 1100
West Palm Beach, FL 33401
01/25/2019
FIRST NAMED INVENTOR
DAVID HERTENSTEIN
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.
CHA920100024US1 (053) 9638
EXAMINER
SHARVIN, DAVID P
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
01/25/2019 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):
docketing@crgolaw.com
sgreenberg@shutts.com
aschneider@shutts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID HERTENSTEIN
Appeal2017-010781
Application 12/961, 699 1
Technology Center 3600
Before ALLEN R. MacDONALD, JOSEPH P. LENTIVECH, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) of the
Examiner's decision rejecting claims 1-20, which are all the claims pending
in the application. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies International Business Machines Corporation as the
real party in interest. See Appeal Br. 2.
Appeal2017-010781
Application 12/961,699
STATEMENT OF THE CASE
Invention
Appellant's invention relates to "third party verification of
insurable incident claim submission." Spec. ,r 9. Namely, incident data
associated with an incident (e.g., traffic collision) can be collected
utilizing one or more mobile devices [and] ... [t]he mobile devices can
marshal incident data into a standardized format which can be
communicated to a third party organization." Id.
Exemplary Claim
Claims 1, 8, and 15 are independent. Claim 1 is exemplary and is
reproduced below.
1. A method for verifying msurance claim
submissions comprising:
receiving, by a server computer coupled to a network and
including a processor executing software instructions within a
memory, an insurance claim incident data from a software
application executing within a mobile computing device, the
insurance claim incident data including a vehicle registration
data, a driver identification data or an address data;
executing, by the server computer, a query selecting a
verified data stored within a database coupled to the network;
comparing, by the server computer:
a historical insurance data, within the verified data and
associated with an operator of the mobile computing device, with
the insurance claim incident data to identify a discrepancy
including a missing data or an incorrect data within the insurance
claim incident data; or
a second insurance claim incident data, within the verified
data and received from a second mobile computing device
operated by a second user, with the insurance claim data to
identify the discrepancy;
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flagging, by the server computer, the discrepancy, when
identified, as inconsistent data between the insurance claim
incident data and the historical insurance data or the second
insurance claim incident data;
generating, by the server computer, a verification report,
including an electronic document including:
an insurance claim identifier; and
a calculated score indicating a degree of confidence in the
insurance claim incident data according to the missing data or the
incorrect data; and
transmitting, by the server computer, the verification
report to a second server computer operated by an insurance
carrier.
Appeal Br. 24--25.
REJECTIONS
Claims 1-20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement. Final Act. 6-7.
Claims 1-20 stand rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter. Final Act. 7-9.
Our review in this appeal is limited only to the above rejections and
the issues raised by Appellant. Arguments not made are waived. See 37
C.F.R. § 4I.37(c)(1)(iv)(2016).
ANALYSIS
Rejection Under§ 112, first paragraph
Claim 1 recites, among other limitations,
comparing, by the server computer:
a historical insurance data, within the verified data and associated
with an operator of the mobile computing device, with the
insurance claim incident data to identify a discrepancy including
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a missing data or an incorrect data within the insurance claim
incident data; or
a second insurance claim incident data, within the verified data
and received from a second mobile computing device operated
by a second user, with the insurance claim data to identify the
discrepancy.
Appeal Br. 24. The Examiner determines that Appellant's Specification
does not support this claim limitation because paragraph [0024] "only states
the intended result but not how it is being performed." Final Act. 7. In
particular, the Examiner determines that "[a]lthough the result is stated [in
the Specification as], 'incident data can be analyzed to determine missing
information, incorrect data, false information, and the like,' ... steps to
come to the intended result are not described." Final Act. 7 (citing
Spec. ,r 24.)
Appellant argues that "the identification of the discrepancy occurs by
way of a comparison of the historical insurance data within the verified data
that is associated with an operator with the insurance claim incident data"
and "[ n Jo further explanation is required." Appeal Br. 9 ( citing Spec. ,r 24 );
see also Reply Br. 2--4.
To satisfy the written description requirement, the specification must
describe the claimed invention in sufficient detail that one skilled in the art
can reasonably conclude that the inventor had possession of the claimed
invention. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562---63 (Fed. Cir.
1991 ). Specifically, the specification must describe the claimed invention in
a manner understandable to a person of ordinary skill in the art and show
that the inventor actually invented the claimed invention. Id.; Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
bane).
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To have "possession," "the specification must describe an invention
understandable to that skilled artisan and show that the inventor actually
invented the invention claimed." Ariad, 598 F.3d at 1351. In order to
satisfy the written description requirement, the Specification must describe a
sufficient number of species to claim the genus. Id. at 1349 ("the
specification must demonstrate that the applicant has made a generic
invention that achieves the claimed result and do so by showing that the
applicant has invented species sufficient to support a claim to the
functionally-defined genus"). In addition, original claims may fail to satisfy
the written description requirement when the invention is claimed and
described in functional language but the specification does not sufficiently
identify how the invention achieves the claimed function. Id. ("[A]n
adequate written description of a claimed genus requires more than a generic
statement of an invention's boundaries.") (citing Regents of the University of
California v. Eli Lilly & Co., 119 F.3d 1559, 1568 (Fed. Cir. 1997)).
Further, MPEP 2161.01(1) states:
[O]riginal claims may lack written description when the claims
define the invention in functional language specifying a desired
result but the specification does not sufficiently describe how the
function is performed or the result is achieved. For software, this
can occur when the algorithm or steps/procedure for performing
the computer function are not explained at all or are not
explained in su(jicient detail ( simply restating the function
recited in the claim is not necessarily sufficient). In other words,
the algorithm or steps/procedure taken to perform the function
must be described with sufficient detail so that one of ordinary
skill in the art would understand how the inventor intended the
function to be performed.
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When examining computer-implemented functional claims,
examiners should determine whether the specification discloses
the computer and the algorithm ( e.g., the necessary steps and/or
flowcharts) that perform the claimed function in sufficient detail
such that one of ordinary skill in the art can reasonably conclude
that the inventor possessed the claimed subject matter at the time
of filing. It is not enough that one skilled in the art could write
a program to achieve the claimed function because the
specification must explain how the inventor intends to achieve
the claimed function to satis[y the written description
requirement. See, e.g., Vasudevan Software, Inc. v.
MicroStrategy, Inc., 782 F.3d 671, 681---683 (Fed. Cir. 2015)
(reversing and remanding the district court's grant of summary
judgment of invalidity for lack of adequate written description
where there were genuine issues of material fact regarding
"whether the specification show[ ed] possession by the inventor
of how accessing disparate databases is achieved").
M.P.E.P. 2161.01(1) (italics with underlining added).
In this case, the Examiner correctly points out that "the mere
statement 'incident data can be analyzed to determine missing information,
incorrect data, false data, and the like' only describes an intended result or a
possibility ( the data can be analyzed) and does not describe how that can be
accomplished, which would show possession of the claimed invention."
Ans. 3 (italics added); see also Final Act. 7.
Although we acknowledge that one of ordinary skill in the art could,
most likely, program a computer to perform "a comparison of the historical
insurance data within the verified data that is associated with an operator
with the insurance claim incident data" (Appeal Br. 9), it is not enough that a
skilled artisan could write a program to achieve the claimed function
because the Specification must explain how the inventor intends to achieve
the claimed function to satisfy the written description requirement. See, e.g.,
Vasudevan, 782 F.3d at 681-83; see also MPEP 2161.01(1) ("For computer-
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implemented inventions, the determination of the sufficiency of disclosure
will require an inquiry into the sufficiency of both the disclosed hardware
and the disclosed software due to the interrelationship and interdependence
of computer hardware and software.").
Appellant argues that paragraph 24 of the Specification supports the
claim limitation and that the "Examiner's argument of 'intended use' is not
pertinent to that of an analysis under 35 U.S.C. § l 12(a) [sic] as what only
matters is what one of skill in the art would understand in reference to
paragraph [0024]." See Appeal Br. 9; Reply Br. 4.
We find Appellant's argument unpersuasive. We agree with the
Examiner that there is no support for describing the claimed genus other
than providing a title in the form of broad functional language, and no
support for showing that any of the species in the genus were in the
inventor's possession. See LizardTech, Inc. v. Earth Resource Mapping,
Inc., 424 F.3d 1336, 1345 (Fed. Cir. 2005). We further agree with the
Examiner that paragraph 24 the Specification "merely describes a desired
result" of identifying a discrepancy. Vasudevan, 782 F .3d at 682 (internal
quotes omitted). The Examiner correctly finds the Specification fails to
show how to achieve the claimed functionality of identifying a discrepancy
by comparing data. Absent from the Specification is any discussion as to the
particular steps, i.e., algorithm, necessary to perform the claimed functions.
As such, we agree with the Examiner that the Specification does not disclose
an algorithm in sufficient detail to demonstrate to one of ordinary skill in the
art that the inventor possessed the invention including how to program the
disclosed server computer to perform the claimed function. See Final
Act. 6-7; see also Ans. 4---6. Stated differently, the steps, procedure or
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algorithm used to perform the claimed function is not described in sufficient
detail in the Specification to demonstrate that the inventor was in possession
of that knowledge. For these reasons, Appellant's disclosure does not
reasonably convey possession of the claimed subject matter.
Claim 1 further recites, among other limitations,
generating, by a server computer, . . . a calculated score
indicating a degree of confidence in the insurance claim incident
data according to the missing data or the incorrect data.
Appeal Br. 25.
The Examiner determines the Specification does not support this
claim limitation because "no method, equation, or steps are described as to
how the score is calculated" (Final Act. 7 ( citing Spec. 3 8)) and "no
calculated score indicating a degree of confidence is disclosed" (Ans. 4).
Appellant argues "paragraphs [0027] and [0047] of the originally
presented specification teach the computation of a verification value which
is calculated and which also may be a score and which indicates a degree of
confidence in the insurance claim incident data according to the missing data
or the incorrect data." Appeal Br. 11.
We find Appellant's arguments unpersuasive. Appellant relies on the
Specification's discussion of a "verification value" to provide support for the
limitation at issue. See Appeal Br. 11; see also Reply Br. 4. The
Specification discloses that "the verification value can indicate the degree of
validation of the insurance claim." Spec. 27. The Specification provides
examples in which the "verification report can be associated with a
verification value of eighty percent, indicating the insurance claim is likely
valid," the "verification report can be an itemized validation of incident
data" and the verification report is "associated with a binary value." Spec.
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,r 27. The Specification also discloses that the verification value can be
computed using different algorithms such as "threshold evaluations, fuzzy
logic, and the like." Spec. ,r 27. The Specification, however, does not
discuss how the missing data or incorrect data is assessed to calculate a score
indicating a degree of confidence.
We, therefore, agree with the Examiner that "no method, equation, or
other manner of calculating or determining the degree of confidence is
disclosed." Ans. 4. Thus, the Examiner correctly finds the Specification
fails to show how to achieve the claimed functionality of generating a
calculated score indicating a degree of confidence. Absent from the
Specification is any discussion as to the particular steps, i.e., algorithm,
necessary to perform the claimed functions and so the Specification "merely
describes a desired result" of generating a calculated score indicating a
degree of confidence. Vasudevan, 782 F.3d at 682 (internal quotes omitted).
As such, we agree with the Examiner that the Specification does not disclose
an algorithm in sufficient detail to demonstrate to one of ordinary skill in the
art that the inventor possessed the invention including how to program the
disclosed server computer to perform the claimed function. See Final
Act. 6-7; see also Ans. 4--6. For these reasons, Appellant's disclosure does
not reasonably convey possession of the claimed subject matter.
Accordingly, we sustain the Examiner's rejection of claim 1, under 3 5
U.S.C. § 112, first paragraph. For similar reasons, we also sustain the
Examiner's rejection of claims 2-20 under 35 U.S.C. § 112, first paragraph.
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Rejection Under§ 101
Appellant argues the claims as a group. See Appeal Br. 17. We select
independent claim 1 as exemplary of Appellant's arguments for claims 2-20.
See 37 C.F.R. § 4I.37(c)(1)(iv)(2016).
The Examiner determines claim 1 is directed to a method of
organizing human activity, and, thus, recites an abstract idea, which is a
judicial exception. See Final Act. 7-8; Ans. 4---6. The Examiner also
determines the claim does "not include additional elements that are
sufficient to amount to significantly more than the judicial exception .... "
Final Act. 8.
Appellant presents several arguments against the § 101 rejection. We
do not find Appellant's arguments persuasive, as discussed in more detail
below. The Examiner has provided a comprehensive response to
Appellant's arguments supported by a preponderance of evidence. See
Ans. 4---6. Thus, we adopt the Examiner's findings and conclusions. See
Final Act. 7-9; Ans. 4---6. We also analyze the claim under the 2019 Revised
Patent Subject Matter Eligibility Guidance published January 7, 2019
("2019 Revised§ 101 Guidance"). 84 FR 50 (Jan. 7, 2019). We adopt the
nomenclature for the steps used in the 2019 Revised § 101 Guidance.
STEP 1
Section 101 provides that "[ w ]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title." 35 U.S.C. § 101. Initially, the
Examiner determines and we agree that independent claim 1 recites steps for
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a process. See Ans. 4. As such, claim 1 is directed to a statutory class of
invention within 35 U.S.C. § 101. Next, we must determine whether claim
1, being directed to a statutory class of invention, nonetheless falls within a
judicial exception.
STEP 2
Section 101 "' contains an important implicit exception: "Laws of
nature, natural phenomena, and abstract ideas are not patentable." Alice
Corp. Pty. Ltd. v. CLS Bank Int 'l, 134 S. Ct. 2347, 2354 (2014) (quoting
Assoc.for Molecular Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107,
2116 (2013) ). The "abstract ideas" category embodies the longstanding rule
that an idea, by itself, is not patentable. Alice, 134 S. Ct. at 2355 (quoting
Gottschalkv. Benson, 409 U.S. 63, 67 (1972)).
In Alice, the Supreme Court sets forth an analytical "framework for
distinguishing patents that claim laws of nature, natural phenomena, and
abstract ideas from those that claim patent-eligible applications of those
concepts." 134 S. Ct. at 2355 (citing Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)). The first stage in
the analysis is to "determine whether the claims at issue are directed to one
of those patent-ineligible concepts," such as an abstract idea. Alice, 134 S.
Ct. at 2355.
If the claims are directed to a patent-ineligible concept, the second
stage in the analysis is to consider the elements of the claims "individually
and 'as an ordered combination"' to determine whether there are additional
elements that "'transform the nature of the claim' into a patent-eligible
application." Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words,
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the second step is to "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, 134 S. Ct. at 2355 (brackets in original) (quoting
Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea
"'cannot be circumvented by attempting to limit the use of the [ abstract idea]
to a particular technological environment' or adding 'insignificant
postsolution activity."' Bilski v. Kappas, 561 U.S. 593, 610-11 (2010)
(quoting Diamond v. Diehr, 450 U.S. 175, 191-92 (1981)).
STEP 2A Prong 1
Under Step 2A, Prong 1 of the 2019 Revised § 101 Guidance, we
determine whether claim 1 is directed to a judicial exception such as a law of
nature, a natural phenomenon, or an abstract idea. See Alice, 134 S. Ct. at
2355. Method claim 1 recites receiving an insurance claim, comparing the
claim to historical insurance data, flagging a discrepancy in the insurance
claim based on the comparison and reporting the result with a score
indicating a degree of confidence in the insurance claim data. Thus, claim 1
recites receiving, analyzing, and outputting data. None of the limitations
recite technological implementation details for any of these steps, but instead
recite only broad functional language.
The Examiner determines claim 1 to be directed to "[ t ]he abstract idea of
verifying insurance claim submissions through the steps of receiving claim
data, [and] comparing the submitted data to historical data to find missing or
incorrect data .... " Final Act. 8. To confirm whether the claim recites an
abstract idea, we determine whether it recites one of the concepts the Courts
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have held to be lacking practical application such as mathematical concepts,
certain methods of organizing human interactions, including fundamental
economic practices and business activities, or mental processes. See
generally 2019 Revised§ 101 Guidance,§ I, 84 FR 50 (Jan. 7, 2019).
The preamble to claim 1 recites that it is a method for verifying
insurance claim submissions. The steps in claim 1 result in generating a
report including a calculated score indicating a degree of confidence in the
insurance claim data based on data flagged as missing or incorrect. These
steps do not recite any technological device other than a conventional server
computer for generating the report. Each of the specific limitations are steps
associated with generating and transmitting the report and recite receiving
the insurance claim, comparing the claim to historical insurance data,
flagging a discrepancy in the insurance claim based on the comparison,
generating the result of the comparison in a report, and transmitting the
report from a first server computer to a second server computer. The report
includes a calculated score indicating a degree of confidence in the insurance
claim data. Because the claim fails to recite a specific algorithm for
calculating the score, the degree of confidence is merely based on a
subjective judgement of the quantity of errors that can be tolerated. To
calculate a degree of confidence based on subjective judgement is not a
technological operation.
The Specification likewise discloses that the invention relates to
comparing an insurance claim to historical insurance data, identifying and
flagging a discrepancy in the insurance claim based on the comparison and
reporting the result with a score indicating a degree of confidence in the
claim. See Spec. ,r 5, 9. Thus, all this intrinsic evidence shows that claim 1
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is directed to reporting insurance claim data, i.e., providing insurance
information. This is consistent with the Examiner's determination. See
Ans. 3.
The concept of providing insurance is a fundamental business practice
long prevalent in our system of commerce. Thus, providing insurance
information 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 (citations omitted). Claim 1 recites the idea of
performing various conceptual steps generically resulting in a report that
includes a calculated score indicating a degree of confidence in an insurance
claim. As we determined earlier, none of these steps recite specific
technological implementation details, but instead get to this result by
calculating a degree of confidence based on subjective judgement. Thus
claim 1 recites providing insurance data, which is a fundamental business
practice and a method of organizing human activity. Our reviewing court
has found claims to be directed to abstract ideas when they recited similar
subject matter. See Bancorp Services, L.L. C. v. Sun Life Assur. Co. of
Canada (US.), 687 F.3d 1266, 1280 (Fed. Cir. 2012), cert. denied, 134 S.Ct.
2870 (2014) ("managing a stable value protected life insurance policy by
performing calculations and manipulating the results").
Additionally, we agree with the Examiner (see Final Act. 4) that the
claimed method is an example of concepts performed in the human mind as
mental processes because the steps of receiving, analyzing, and modifying
data mimic human thought processes, perhaps with paper and pencil, where
the data interpretation is perceptible only in the human mind and the process
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recites flagging missing or incorrect data and calculating a score indicating a
degree of confidence in the data, which is an exemplar of human judgment.
See Bancorp Servs., 687 F.3d at 1278 ("[T]he fact that the required
calculations could be performed more efficiently via a computer does not
materially alter the patent eligibility of the claimed subject matter.").
From this we conclude that claim 1 recites a method of organizing
human activity as provided for in the 2019 Revised § 101 Guidance.
STEP 2A Prong 2
Next, we determine whether the claim is directed to the abstract
concept itself or whether it is instead directed to some technological
implementation or application of, or improvement to, this concept, i.e.,
integrated into a practical application. See, e.g., Alice, 573 U.S. at 223,
discussing Diamond v. Diehr, 450 U.S. 175 (1981). The mere introduction
of a computer or generic computer technology into the claims need not alter
the analysis. See Alice, 573 U.S. at 223-24. "[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. We determine claim 1 does not.
Appellant argues claim 1 is "restricted as to how the innovative
concept of 'verifying insurance claim submissions' is achieved without
foreclosing other ways of solving the problem at hand while reciting a
specific series of steps that result in a departure from the routine and
conventional sequence of events." Appeal Br. 22.
We disagree. Taking the claim limitations separately, the computer
server, at each step of the process, performs actions that are purely
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functional and devoid of implementation details. The claimed steps of
receiving insurance claim data, flagging a discrepancy, and generating and
transmitting a report, recite generic computer processing expressed in
functional terms to be performed by any and all possible means and so
present no more than abstract conceptual limitations. All purported
inventive aspects reside in how the data is flagged as inconsistent and the
results desired (the generated verification report), and not in how the
processing technologically achieves those results.
Viewed as a whole, Appellant's method claim simply recites the
concept of providing verified insurance claim data, as performed by a
generic computer. To be sure, the claims recite doing so by comparing
current claim information to historical insurance data, flagging
discrepancies, and generating a report indicating a degree of confidence in
the insurance claim information based on the flagged discrepancies. But this
is no more than abstract conceptual advice on the parameters for such
insurance data verification and the generic computer processes necessary to
process those parameters, and does not recite any particular implementation.
Appellant argues claim 1, like the claims in Enfish, is "directed to a
process driven improvement to the functionality of a computer." Appeal
Br. 18 (citingEnfzsh, LLCv. Microsoft Corp., 822 F.3d 1327 (Fed. Cir.
2016)). This argument is unpersuasive because Appellant's claim 1 is unlike
the claims in Enfish. In Enfish, our reviewing court relied on the distinction
made in Alice between computer-functionality improvements and uses of
existing computers as tools in aid of processes focused on "abstract ideas"
(in Alice, as in so many other § 101 cases, the abstract ideas being the
creation and manipulation of legal obligations such as contracts involved in
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fundamental economic practices). Enfzsh, 822 F.3d at 1335-36; see also
Alice, 134 S. Ct. at 2358-59. In Enfzsh, the§ 101 challenge was found
persuasive because the claims at issue focused, not on asserted advances in
uses to which existing computer capabilities could be put, but on a specific
improvement-a particular database technique-in how computers could
carry out one of their basic functions of storage and retrieval of data. Enfish,
822 F.3d at 1335-36.
Here, Appellant's method claim does not purport to improve the
functioning of the computer itself. Nor does claim 1 effect an improvement
in any other technology or technical field. The Specification discusses
generic equipment and parameters that might be applied using this concept
and the particular steps such conventional processing would entail. For
example, the Specification states "[t]hese computer program instructions
may be provided to a processor of a general purpose computer, special
purpose computer, or other programmable data processing apparatus to
produce a machine, such that the instructions ... create means for
implementing the functions/acts specified in the flowchart and/or block
diagram." Spec. 13. The Specification does not describe any particular
improvement in the manner a computer functions.
That is, the claim at issue amounts to nothing more than an instruction
to apply the "abstract idea of verifying insurance claim submissions through
the steps of receiving claim data, comparing the submitted data to historical
data to find missing or incorrect data ... " using a generic server computer.
Final Act. 8. The additional step of calculating a score indicating a degree
of confidence in the insurance claim incident data is also broadly claimed in
a functional way and thus does not amount to a practical application.
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Similarly, the last step merely transmits the report to a second generic server
computer. Claim 1 therefore does not integrate the claimed abstract idea
into a practical application.
STEP 2B
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 134 S. Ct. at 2355 (quoting Mayo,
566 U.S. at 72-73). Taking the claim elements separately, the function
performed by the computer at each step of the process is purely
conventional. Using a computer for receiving data, analyzing it, and
displaying/outputting the results 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 Elec. Power Grp. v.
Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). Also see In re Katz
Interactive Call Processing Patent Litigation, 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 to have invented any of
these activities. In short, each step does no more than require a generic
computer server 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
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not make the collection and analysis other than abstract." SAP America, Inc.
v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant's method claim adds nothing that is not already present when the
steps are considered separately. The sequence of data reception-analysis-
modification, and transmission is equally generic and conventional or
otherwise held to be abstract. See Ultramercial, Inc. v. Hulu, LLC, 772 F .3d
709, 715 (Fed. Cir. 2014) (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 Communications, 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. We, thus,
conclude that the claim does not provide an inventive concept because the
additional elements recited in the claim do not provide significantly more
than the recited judicial exception.
Because Appellant's representative claim 1 is directed to a patent-
ineligible abstract concept and does not recite something "significantly
more" under the Alice analysis, we sustain the Examiner's rejection of this
claim under 35 U.S.C. § 101 as being directed to non-patentable subject
matter in light of Alice and its progeny. The rejection of claims 2-20, which
are not argued separately, is sustained for the same reasons.
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Appeal2017-010781
Application 12/961,699
DECISION
We affirm the Examiner's rejection of claims 1-20 under
35 U.S.C. § 112, first paragraph.
We affirm the Examiner's rejection of claims 1-20 under
35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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