Ex Parte Majikes et al

Patent Trial and Appeal Board

Dec 19, 2018

09986354 (P.T.A.B. Dec. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
09/986,354 11/08/2001
21967 7590 12/19/2018
Hunton Andrews Kurth LLP
Intellectual Property Department
2200 Pennsylvania Avenue, N.W.
Washington, DC 20037
UNITED ST A TES OF AMERICA
FIRST NAMED INVENTOR
Matthew George Majikes
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.
52493.000187 5302
EXAMINER
RINES, ROBERT D
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
12/19/2018 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MATTHEW GEORGE MAJIKES
and LAURA LOUISE STENGER
Appeal2017-007600
Application 09/986,354 1
Technology Center 3600
Before HUBERT C. LORIN, NINA L. MEDLOCK, and
BRADLEY B. BAY AT, Administrative Patent Judges.
LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Matthew George Majikes et al. (Appellants) seek our review under
35 U.S.C. § 134(a) of the Final Rejection of claims 1-21 and 23-30. We
have jurisdiction under 35 U.S.C. § 6(b ).
SUMMARY OF DECISION
We AFFIRM.
1 The Appellants identify Genworth Holdings, Inc. as the real party in
interest. App. Br. 1.
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Application 09/986,354
THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer implemented system that personalizes and
delivers insurance content, via a communication network, to a
user based on at least prior user historical electronic access
pattern data and an IP address associated with the user, the
computer implemented system in the form of a computer
processor and interfacing with the user via a client station, the
computer implemented system comprising:
a database containing (a) user historical data comprising
user interaction data, user searches and user requests; (b) user
identification data; ( c) user authorization data identifying
products and services a user is authorized to offer; and ( d)
insurance product data;
an interface that interfaces with a user via the client
station, over a communication network, to select at least one
item the user is interested in based at least in part on input
received from the user, the at least one item comprising an
insurance product;
a computer server comprising a filtering engine coupled
to the database and the interface, the filtering engine
programmed to:
( 1) access the database to retrieve user profile
information about the user that determines the user's
historical access pattern to particular insurance products
or policies, and which products and services the user is
authorized to sell, wherein the user's historical access
pattern to particular insurance products or polices
comprises one or more insurance products or polices that
the user expressed interest in during a previous access to
the system;
(2) identify an IP address associated with the user
and the client station;
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(3) generate a list of available items that are
available to the user, responsive to the user profile
information;
( 4) present the list of available items to the user
via the client station;
( 5) receive a selection from the user, via the client
station, that identifies a selected at least one item from
the list of available items;
( 6) personalize the at least one item based on the
user profile information about the user;
(7) modify the at least one item the user is
authorized to sell;
(8) electronically transmit the at least one item to
the user via the client station; and
an administration processor of the computer implemented
system that inputs, updates and accesses user profile
information about the user and the insurance content available
to the user, the administration processor being accessible to an
administrator of the computer implemented system via an
administration interface; and
wherein authorizations for selling products are based on
the user's IP address and identified products are determined and
retrieved based on the user's IP address.
THE REJECTIONS
The following rejections are before us for review:
Claims 1-21 and 23-30 are rejected under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
Claims 1, 2, 4--7, 9-21, 23-28, and 30 are rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Cullen et al. (US 6,272,528 Bl, iss.
Aug. 7, 2001) (hereinafter "Cullen"), Herz et al. (US 5,835,087, iss. Nov.
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10, 1998) (hereinafter "Herz"), and Steuart et al. (US 2002/0116229 Al,
pub. Aug. 22, 2002) (hereinafter "Steuart"). 2
Claim 3 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Cullen, Herz, Steuart, and Quido et al. (US 2003/0093302 Al, pub.
May 15, 2003) (hereinafter "Quido").
Claims 8 and 29 are rejected under 35 U.S.C. § I03(a) as being
unpatentable over Cullen, Herz, Steuart, and Parker (US 2003/0182290 Al,
pub. Sept. 25, 2003).
ISSUES
Did the Examiner err in rejecting claims 1-21 and 23-30 under
35 U.S.C. § 101 as being directed to judicially-excepted subject matter;
claims 1, 2, 4--7, 9-21, 23-28, and 30 under 35 U.S.C. § 103 as being
unpatentable over Cullen, Herz, and Steuart; claim 3 under 35 U.S.C. § 103
as being unpatentable over Cullen, Herz, Steuart, and Quido; and claims 8
and 29 under 35 U.S.C. § 103 as being unpatentable over Cullen, Herz,
Steuart, and Parker?
ANALYSIS
The rejection of claims 1-21 and 23-30 under 35 U.S. C. § 1 OJ as being
directed to judicially-excepted subject matter.
The Appellants argued these claims as a group. See App. Br. 12-21.
We select claim 1 as the representative claim for this group, and the
2 Although the statement of the rejection does not include claim 30, claim 30
is rejected as being unpatentable over Cullen, Herz, and Steuart. Final
Act. 27. We note that in rejecting claim 15 (as well as claims 3 and 8), the
Examiner additionally cites "Jinnett". Final Act. 23, 28, 29.
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remaining claims 2-21 and 23-30 stand or fall with claim 1. 37 C.F.R.
§ 4I.37(c)(l)(iv).
Alice Corp. v. CLS Bank International, 134 S. Ct. 2347 (2014),
identifies a two-step framework for determining whether claimed subject
matter is judicially-excepted from patent-eligibility under 35 U.S.C. § 101.
According to Alice step one, "[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept," such as an
abstract idea. Alice, 134 S. Ct. at 2355.
In that regard, the Examiner determined that the claims "are directed
to the abstract idea of personalizing and delivering insurance information
where the personalization relates to the selling authorizations associated with
the user." Final Act. 9. According to the Examiner:
modifying insurance and financial products on the basis of
authorizations for a sales person to sell the products and also
coordinating the delivery of the authorized products based on
user profile, e.g., jurisdiction, selling agreements etc., are
reasonably considered to be both a method of organizing and
directing actions and behaviors and long standing
economic/ commercial practice. Specifically, brokerage
arrangements and the associated selling of insurance products as
limited by brokerage authorizations have been present in our
economic system as long as commercial entities have employed
third party sellers. Further, and in specific reference to insurance
products, jurisdictionally imposed requirements for selling
specific insurance and financial products have been prevalent in
our economic system for as long as nations and states have
maintained unique laws and regulations concerning the sale of
products within their defined territories. Accordingly, Examiner
maintains that the claimed invention is directed to fundamental
economic practice.
Id. at 9-10.
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The Appellants reproduce the language of claim 1 and argue that
"[t ]he claims do not recite a mathematical algorithm, nor do they recite a
fundamental economic or longstanding commercial practice." App. Br. 12-
13. According to the Appellants, "[n]o idea similar to those previously
found by the courts to be abstract has been identified in the claim." Id. at 13.
The Appellants also argue that "the Office Action has not conducted a
proper 35 U.S.C. § 101 analysis." Id. According to the Appellants, "[t]here
is no explanation as to how or why the claims, or the claim elements, include
an abstract idea." Id. at 14.
As set forth above, the Examiner fully analyzed the claims and
applied the two-step Alice framework (see Final Act. 9-12). It is plainly
evident that the Examiner considered all the limitations in the claim. See,
e.g., id.; Ans. 6-16. The Appellants' argument does not apprise us of error
in the Examiner's analysis at least because the Appellants have not
explained how "personalizing and delivering insurance information where
the personalization relates to the selling authorizations associated with the
user" (Final Act. 9) is not an abstract idea.
We find the Examiner properly and reasonably found that claim 1 is
directed to "personalizing and delivering insurance information where the
personalization relates to the selling authorizations associated with the user"
(id. at 9) and that this is an abstract idea.
The Appellants go to a much lower level of abstraction - wording
what the claim is directed to so that it includes many of the terms recited in
the claim. See App. Br. 12-13 where most of claim 1 is reproduced. But
that does not make the claim any less directed to an abstract idea. That the
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claim includes more words than the Examiner relied upon to articulate the
abstract idea is an insufficient reason to persuasively argue that claim 1 is
not directed to an abstract idea.
The "directed to" inquiry applies a stage-one filter to the claims,
considered in light of the Specification, based on whether "their character as
a whole is directed to excluded subject matter." Internet Patents Corp. v.
Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015); see also Genetic
Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016); Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (Inquiring
into "the focus of the claimed advance over the prior art.").
Claim 1 recites "[a] computer implemented system that personalizes
and delivers insurance content, via a communication network, to a user
based on at least prior user historical electronic access pattern data and an IP
address associated with the user" the computer implemented system
comprising (a) "a database" that contains various types of data, (b) "an
interface that interfaces with a user," ( c) "a computer server comprising a
filtering engine," and (d) "an administration processor." Claim 1 further
recites that the filtering engine is programmed to perform eight steps
including "(1) access the database to retrieve user profile information,"
"(2) identify an IP address," "(3) generate" a list of items, "( 4) present the
list," "(5) receive a selection from the user" of an item from the list,
"( 6) personalize" the selected item, "(7) modify" the selected item, and
"(8) electronically transmit" the item. Claim 1 also includes a "wherein"
clause that further describes the information retrieval, namely "wherein
authorizations for selling products are based on the user's IP address and
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identified products are determined and retrieved based on the user's IP
address."
The Appellants make various statements on the theme that the claimed
subject matter is rooted in computer technology rather than an abstract idea.
For example, the Appellants argue that "[t]he claims address a business
challenge ( e.g., facilitating interaction and delivering personalized insurance
content to a user based on prior user historical electronic access pattern data
and an IP address associated with the user) that is particular to
personalization of content processing technology." App. Br. 13. According
to the Appellants, "the claims are directed to a device with computer
hardware, including a database, an interface, a communication network, a
computer server and a filtering engine, which means that the claims are not
directed to an abstract idea." Id. at 14 (citing DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)).
The Examiner acknowledged that claim 1 is ostensibly directed to a
system (Final Act. 9) and includes various computer components (id. at 10).
But it is clear that the Examiner determined that these computer-
implemented limitations were properly analyzed under step two of Alice.
See, e.g., id. at 11 ("The non-technical functions of tailoring or personalizing
insurance information based on selling authorizations and jurisdictional
requirements benefit from the use of computer technology, but fail to
improve the underlying technology.") The Appellants have not adequately
explained how the Examiner's determination is erroneous. For example, the
Appellants have not persuasively argued that the claimed invention is
directed to an improvement to a database, an interface, a communication
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network, a computer server, or a filtering engine. See, e.g., Credit
Acceptance Corp. v. Westlake Services, LLC, 859 F.3d 1044, 1057 (Fed. Cir.
2017):
Significantly, the claims do not provide details as to any non-
conventional software for enhancing the financing process. See
Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1342 (Fed. Cir. 2017) (explaining that "[o]ur law
demands more" than claim language that "provides only a
result-oriented solution, with insufficient detail for how a
computer accomplishes it"); Elec. Power Grp., 830 F.3d at
1354 [Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016)] (explaining that claims are directed to an
abstract idea where they do not recite "any particular assertedly
inventive technology for performing [conventional] functions").
The court in Enfish put the question as being "whether the focus of the
claims is on [a] specific asserted improvement in computer capabilities ...
or, instead, on a process that qualifies as an 'abstract idea' for which
computers are invoked merely as a tool." Enfish, 822 F.3d at 1335-36. The
court found that the "plain focus of the claims" there was on "an
improvement to computer functionality itself, not on economic or other tasks
for which a computer is used in its ordinary capacity." Id. at 1336.
"In determining the eligibility of respondents' claimed process for
patent protection under§ 101, their claims must be considered as a whole."
Diamond v. Diehr, 450 U.S. 175, 188 (1981). The question is whether the
claims as a whole "focus on a specific means or method that improves the
relevant technology" or are "directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery." McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir.
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2016). In this case, we find that claim 1, as a whole, is focused on
personalizing information based on information about the user. We do not
see that claim 1 is focused on an improvement to any technology such as a
computer server or an improved process for filtering data in a computer.
Here, as in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1372 (Fed. Cir. 2011), all of the steps performed by the filtering engine of
claim 1 "can be performed in the human mind, or by a human using a pen
and paper." As in CyberSource, the method of claim 1 "can be performed
by a human who simply reads records [] from a preexisting database." Id.
As in CyberSource, the claims use a computer's IP address to determine
additional information. Id. at 1367---68 ("The' 154 patent purports to solve
this problem by using 'Internet address' information (IP addresses, MAC
addresses, e-mail addresses, etc.) to determine whether an Internet address
relating to a particular transaction 'is consistent with other Internet addresses
[ that have been] used in transactions utilizing [ the same] credit card.'").
"The 'abstract idea' step of the inquiry calls upon us to look at the
'focus of the claimed advance over the prior art' to determine if the claim's
'character as a whole' is directed to excluded subject matter." Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016)
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016)); see also Enfish, 822 F.3d at 1335, quoted in Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016).
In that regard, the Background section of the Specification discusses
the problem, which is that "an insurance company representative taking
requests from producers may not have immediate access to the sales
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agreements, and, thus, may not be able to efficiently and reliably fulfill a
producer or agency's request for information" and "sales agreements
accessed by insurance company representatives may not be up to date
resulting in the provision of erroneous information to a producer or agency
or firm." Spec. 2, 11. 5-10. According to the Specification, the inventors
solved the problem by providing "a system and method for personalizing
and delivering insurance or financial services-related content to a user." (id.
at 11. 12-13). In light of the Specification's description of the problem and
solution, the advance over the prior art by the claimed invention is in
personalizing and delivering insurance or financial services-related content
to a user based on information about the user.
Given the focus of claim 1 as a whole, in light of the Specification, is
on data gathering activities3 in support of personalizing and delivering
insurance or financial services-related content to a user, the claims are
properly characterized as being "directed to" personalizing and delivering
information to a user based on information about the user. Personalizing and
delivering information to a user based on information about the user is an
abstract idea. Cf Intellectual Ventures I LLC v. Capital One Bank (USA),
792 F.3d 1363, 1369 (Fed. Cir. 2015) ("the claim relates to customizing
information based on (1) information known about the user and (2)
navigation data. [ ... ] There is no dispute that newspaper inserts had often
been tailored based on information known about the customer - for example,
3 Cf Elec. Power Grp., LLC, 830 F.3d at 1353 (When "[t]he focus of the
asserted claims" is "on collecting information, analyzing it, and displaying
certain results of the collection and analysis," the claims are directed to an
abstract idea.)
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a newspaper might advertise based on the customer's location. Providing
this minimal tailoring- e.g., providing different newspaper inserts based
upon the location of the individual- is an abstract idea."); Affinity Labs of
Tex., LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016)
("tailoring of content based on information about the user - such as where
the user lives or what time of day the user views the content - is an abstract
idea that is as old as providing different newspaper inserts for different
neighborhoods") ( citing Intellectual Ventures I). See also Personalized
Media Communications, LLC v. Amazon. Com, Inc., 161 F. Supp. 3d 325
(D. Del. 2015), aff'd, 671 F. App'x 777 (Mem) (Fed. Cir. 2016) ("providing
personalized recommendations" held to be an abstract idea).
The Appellants further argue that the claimed "processing and
complex analysis is not possible without use of a computer - thus the claims
(as was the case in DDR Holdings) are not abstract as they were not subject
to a prior art process that was doing the same thing but outside a computing
environment." App. Br. 15; see also id. at 20 ("it is not possible for the
steps of the claims to be performed without a computer.").
That argument is unpersuasive. Whether it would be practical for a
human to perform the method (e.g., using pen and paper) is immaterial
because "relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible." OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (citing Alice,
134 S. Ct. at 2359). "[T]he inability for the human mind to perform each
claim step does not alone confer patentability. As we have explained, 'the
fact that the required calculations could be performed more efficiently via a
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computer does not materially alter the patent eligibility of the claimed
subject matter."' Fair Warning IP, LLC v. Iatric Systems, Inc., 839 F.3d
1089, 1098 (Fed. Cir. 2016).
The Appellants argue that "[t]here is no risk of preempting the
abstract idea - as defined by the Examiner, because the claimed inventions
are particularly defined and limited to a relatively specific scope." App.
Br. 16-17.
It is true that the Supreme Court has characterized pre-emption as a
driving concern for patent eligibility. See Alice, 134 S. Ct. at 2354. But
characterizing pre-emption as a driving concern for patent eligibility is not
the same as characterizing pre-emption as the sole test for patent eligibility.
"The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability" and "[fJor this reason,
questions on preemption are inherent in and resolved by the§ 101 analysis."
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice Corp., 134 S. Ct. at 2354). However, "[w]hile
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility." Id. at 1379.
Cf 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."). "What matters is whether a claim threatens to subsume
the full scope of a fundamental concept, and when those concerns arise, we
must look for meaningful limitations that prevent the claim as a whole from
covering the concept's every practical application." CLS Bank Int 'l. v. Alice
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Corp., 717 F.3d 1269, 1281 (Fed. Cir. 2013) (Lourie, J., concurring). Here,
we find the claimed subject matter covers patent-ineligible subject matter.
Accordingly, the pre-emption concern is necessarily addressed. "Where a
patent's claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, [] preemption concerns are fully addressed and
made moot." Ariosa Diagnostics, 788 F.3d at 1379.
In view of the above, we see no error in the Examiner's determination
that claim 1 is directed to an abstract idea.
Step two of the Alice/Mayo framework is "a search for an 'inventive
concept'-i.e., an element or combination of elements that is 'sufficient to
ensure that the patent in practice amounts to significantly more than a patent
upon the [ineligible concept] itself."' Alice, 134 S. Ct. at 2355 ( quoting
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73
(2012)).
In that regard, the Examiner determined that:
The claimed invention includes computer-implemented
functions [and] steps. However, the claimed method directed to
tailoring or personalizing insurance information based on
selling authorizations and jurisdictional requirements, while
utilizing a computer and the internet, is not rooted in computer
technology nor does it improve the performance of the
underlying computer technology. The computer-implemented
features of the claimed invention are reasonably limited to
receiving input data from a user ( e.g., IP address and past
interests), comparing the input data to stored data (e.g., user
profile information) employing stored rules ( e.g., filtering
engine) outputting an option based on the analysis ( e.g., an
insurance product that the user is authorized to sell based on the
stored profile information). In other words, the computer of the
instant invention is accomplishing non-technical aims, i.e.,
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tailoring or personalizing insurance information based on
selling authorizations and jurisdictional requirements, because
it has been programmed to store and retrieve data and
information and to perform calculations using the
information/ data, which is the express purpose of a calculating
machine in a generic sense. The non-technical functions of
tailoring or personalizing insurance information based on
selling authorizations and jurisdictional requirements benefit
from the use of computer technology, but fail to improve the
underlying technology.
Final Act. 11.
The Appellants argue that the claims require "significantly more" than
an abstract idea. App. Br. 17-21. According to the Appellants, "[t]he
claimed invention addresses an Internet-centric challenge of facilitating
interaction via a communication link and personalizing and electronically
delivering insurance content to a user based on prior user historical
electronic access pattern data and an IP address associated with the user"
that "is addressed by the filtering engine, as claimed by Appellants." Id.
at 18.
However, computer-based "filtering" operations per se have not been
found sufficient to add significantly more. See, e.g., Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1317, 1324 (Fed. Cir. 2016)
(holding ineligible claims that required an interface that "provides
functionality for the borrower to search the database to identify a set of loan
packages for which the borrower qualifies" because "the claims 'add' only
generic computer components such as an 'interface,' 'network,' and
"database."'); LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 993
(Fed. Cir. 2016) (non-precedential) (holding ineligible claims that required
"a filter comprising the plurality of selection criteria of the database to select
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without manual intervention each one of said plurality of lending institutions
associated with a match"); Intellectual Ventures I LLC v. J. Crew Grp., Inc.,
No. 6:16-CV-196-JRG, 2016 WL 4591794, at *6 (E.D. Tex. Aug. 24, 2016),
aff'd sub nom Intellectual Ventures I LLC v. FTD Companies, Inc.,
703 F. App'x 991 (Fed. Cir. 2017) (Mem) ("The computer components that
adorn the preamble, such as a distributed network, an information processing
system, and database storage, are inarguably generic."). See also !IP
Engine, Inc. v. AOL Inc., 576 F. App'x 982, 994--95 (Fed. Cir. 2014) (non-
precedential) (Mayer, H., concurring):
I/P Engine's claimed invention, which describes a system
which filters information for relevance to a user's query using
combined content and collaborative data [ citations omitted],
does not pass muster under section 101. The asserted claims do
not meet subject matter eligibility requirements because they do
not "improve the functioning of the computer itself' or "effect
an improvement in any other technology or technical field."
Alice, 134 S.Ct. at 2359. To the contrary, the use of search
engines was well-established and the clear advantages of
combining content-based and collaborative filtering were
widely recognized at the time of the claimed invention.
Appellants' contention that the claims before us are similar to the
claims held eligible in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245 (Fed. Cir. 2014) is unpersuasive. App. Br. 13-15, 18. According to
the Appellants, the claims are similar because "the claims are specific to
personalizing and delivering insurance content to a user based on prior user
historical electronic access pattern data and an IP address associated with the
user - a result that overrides the routine and conventional use of a general
computer" (id. at 17) and "solve an Internet-centric problem with a claimed
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solution that is necessarily rooted in computer technology, similar to the
additional elements of DDR Holdings" (id. at 18).
In DDR Holdings, the Federal Circuit determined that although the
patent claims at issue involved conventional computers and the Internet, the
claims nevertheless addressed the problem of retaining website visitors who,
if adhering to the routine, conventional functioning of the Internet hyperlink
protocol, would be transported instantly away from a host's website after
"clicking" on an advertisement and activating a hyperlink. DDR Holdings,
773 F.3d at 1257. The court determined that those claims were directed to
statutory subject matter because they claim a solution "necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks." Id.
No such technological advance is evident in the claimed invention.
Unlike the situation in DDR Holdings, Appellants do not identify any
problem particular to computer networks and/or the Internet that claim 1
allegedly overcomes. Here, the claimed computer components operate
precisely in the expected manner of storing data in association with other
data, and sending and receiving data via a conventional network. (See Spec.
p. 6, 1. 29 - p. 7, 1. 20 ("The communications link 20 may be, include or
interface to any one or more of, for instance, the Internet, an intranet, a
Personal Area Network (PAN), a Local Area Network (LAN), a Wide Area
Network (WAN) ... ")) Cf 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"). Nothing in the claim, understood in light of the Specification,
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requires anything more than conventional computer implementation. "The
[S]pecification fails to provide any technical details for the tangible
components, but instead predominately describes the system and methods in
purely functional terms." In re TL! Comm. LLC Patent Litig., 823 F.3d 607,
612 (Fed. Cir. 2016). For example, with respect to the claimed "computer
server," the Specification discloses that "server station 30 may host one or
more applications that function to personalize and customize interaction
between the insurance company and producers." Spec. p. 7, 11. 22-24. With
respect to the claimed "database," the Specification discloses that "[t]he
database 40 may include or interface to, for example, an Oracleâ„¢ relational
database sold commercially by Oracle Corporation. Other databases, such as
an Informix TM database, Database 2 (DB2) database, a Sybaseâ„¢ database
or another data storage or query format, platform or resource ... " Id. at 8,
11. 19-23. The "filtering engine" is described in purely functional terms.
See, e.g., id. at 10, 11. 22-29 ("filter module 70 for determining information
about a producer or agency or firm, and for personalizing and delivering
insurance or financial services-related content to a user"; "filter module 70
automatically identifies the user based on the user's IP address, and
thereafter accesses information stored in the database 40 based on the user's
identification"). There is no detail as to how the filtering engine is
programmed. See Figure 2 (depicting filter module 70 as an empty
rectangle). There is no indication that the filtering engine improves over
prior art filtering techniques. The claimed "computer server" that comprises
the filtering engine may be a general purpose computer. See Spec. p. 7, 1. 30
- p. 8, 1. 6; Figures 1 and 2. "[ A ]fter Alice, there can remain no doubt:
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recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible." DDR Holdings, 773 F.3d at 1256 (citation
omitted). Here, "the method claims, which merely require generic computer
implementation, fail to transform that abstract idea into a patent-eligible
invention." Alice, 134 S. Ct. at 2357. And, as in Alice, "the system claims
are no different from the method claims in substance. The method claims
recite the abstract idea implemented on a generic computer; the system
claims recite a handful of generic computer components configured to
implement the same idea." Id. at 2360.
Appellants further seek to analogize the claims to the claims in
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016). Reply Br. 5. According to the Appellants:
Like the claims in Bascom, the claims here recite improvements
to conventional systems and methods that require a very
particular system that comprises a particular filtering engine
programmed to perform a unique combination of tasks and
routines. Thus, like the claims in Bascom, the novel and non-
generic arrangements recited in the claim are patent-eligible.
Id. Appellants do not point to any portion of the claims or the Specification
to support the assertion that claims require "novel and non-generic
arrangements." For example, the Appellants have not argued that the claims
require the installation of a filtering engine "at a specific location, remote
from the end-users, with customizable filtering features specific to each end
user," as was the case in Bascom. 827 F.3d at 1350. As discussed above,
the Specification discloses that the invention can be performed on a generic
arrangement of client stations and server station. Therefore, we do not find
this argument persuasive.
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We have considered all of the Appellants' remaining arguments
(including those made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the determinations
that representative claim 1, and claims 2-21 and 23-30 that fall with
claim 1, are directed to an abstract idea and do not present an "inventive
concept," we sustain the Examiner's conclusion that they are directed to
patent-ineligible subject matter for being judicially-excepted from 35 U.S.C.
§ 101. Cf LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 997
(Fed. Cir. 2016) ("We have considered all of LendingTree's remaining
arguments and have found them unpersuasive. Accordingly, because the
asserted claims of the patents in suit are directed to an abstract idea and do
not present an "inventive concept," we hold that they are directed to
ineligible subject matter under 35 U.S.C. § 101.").
The rejection of claims 1, 2, 4-7, 9-21, 23-28, and 30 under 35 U.S.C.
§ 103 as being unpatentable over Cullen, Herz, and Steuart.
Claim 1 requires a filtering engine programmed to "access the
database to retrieve user profile information about the user" including
"which products and services the user is authorized to sell" and further
recites "wherein authorizations for selling products are based on the user's
IP address and identified products are determined and retrieved based on the
user's IP address."
The Examiner found said limitations disclosed in Steuart in
paragraphs 4, 37, and 63. Final Act. 17-18.
We agree with the Appellants that said limitations are not disclosed in
Steuart in paragraphs 4, 37, and 63. App Br. 24--25.
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It is the broker in Steuart- not the user- who is licensed ( or not) to
sell insurance in a particular state, which may or may not correspond to the
user's state of residence. See Steuart para. 63 ("supplier system 210 may
transmit the e-mail message to a first e-mail address of the broker if the
user's state of residence corresponds to a state in which the broker is
licensed to do business.") The user's state of residence is entered manually
via "an information form," and does not necessarily have any relationship to
the broker's network address discussed in paragraph 37. See Steuart
para. 39 ("the information form may request that the user provide a state of
residence of the user ... ").
Accordingly, a prima facie case of obviousness has not been made out
in the first instance and, accordingly, the rejection of independent claim 1
and claims 2, 4--7, 9-14, and 30 which depend from it, is not sustained. 4
Independent claims 15 and 25 contain similar limitations to that of
claim 1 discussed above. The rejections rely on the same passages of
Steuart (Final Act. 29-30) that we find do not disclose said limitations.
Accordingly, we do not sustain the rejections of claims 15 and 25 and their
dependent claims 16-21, 23, 24, and 26-28 for the same reason we do not
sustain the rejection of claim 1.
The rejection of claim 3 under 35 U.S. C. § 103 as being unpatentable over
Cullen, Herz, Steuart, and Quido.
4 We further note that the Examiner has not explained how the references
disclose the claim 1 limitations related to the "administration processor." In
the Non-Final Rejection mailed Oct. 6, 2014, the Examiner relied on Jinnett
as disclosing these limitations, but we do not understand the rejection on
appeal to rely on Jinnett. Final Act. 13.
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Claim 3 depends from independent claim 1 whose rejection we do not
sustain for the reasons above, and whose rejection relies on the position
taken with respect to independent claim 1 (Final Act. 28), is not sustained
for the same reasons.
The rejection of claims 8 and 29 under 35 U.S.C. § 103 as being
unpatentable over Cullen, Herz, Steuart, and Parker.
Independent claim 29 contains a similar limitations to that of claim 1
discussed above. The rejection relies on the same passages of Steuart (Final
Act. 29-30) that we find do not disclose said limitations. Accordingly, we
do not sustain the rejection of claim 29 for the same reason we do not sustain
the rejection of claim 1.
Dependent claim 8 depends from independent claim 1 whose rejection
we do not sustain for the reasons above, and whose rejection relies on the
position taken with respect to independent claim 1 (Final Act. 29) is not
sustained for the same reasons.
DECISION
The decision of the Examiner to reject claims 1-21 and 23-30 under
35 U.S.C. § 101 is affirmed.
The decision of the Examiner to reject claims 1-21 and 23-30 under
35 U.S.C. § 103(a) is reversed.
No time period for taking any subsequent action in connection with
this appeal maybe extended under 37 C.F.R. § 1.136(a)(l)(iv).
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AFFIRMED
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