Ex Parte MaltbyDownload PDFPatent Trial and Appeal BoardMay 30, 201714176447 (P.T.A.B. May. 30, 2017) Copy Citation 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. 14/176,447 02/10/2014 David R. MALTBY II 429151US8X CONT 1714 113694 7590 06/01/2017 Ohlnn/Pnrelncno Tnr EXAMINER 1940 Duke Street Alexandria, VA 22314 THOMAS, MIA M ART UNIT PAPER NUMBER 2669 NOTIFICATION DATE DELIVERY MODE 06/01/2017 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): oblonpat @ oblon. com patentdocket @ oblon. com tfarrell@oblon.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte DAVID R. MALTBYII Appeal 2016-005192 Application 14/176,44V1 Technology Center 2600 Before ERIC S. FRAHM, KRISTEN L. DROESCH, and MELISSA A. HAAPALA, Administrative Patent Judges. DROESCH, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant seeks review under 35 U.S.C. § 134(a) from the Examiner’ Final Rejection of claims 1—20, all of the pending claims in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellant indicates the real party-in-interest is CORELOGIC SOLUTIONS, LLC. Br. 2. Appeal 2016-005192 Application 14/176,447 BACKGROUND The disclosed invention relates to comparing a first flood map to an updated flood map to determine which areas of the flood map have changed, and determining properties that are affected by the changes to the flood map, and notifying a loan provider or loan recipient that a property is affected by changes to the flood map. Spec. 2—6, Abstract. CLAIMED SUBJECT MATTER Representative claims 1 and 11, reproduced from the Claims Appendix of the Appeal Brief, read as follows: 1. A non-transitory computer readable storage medium comprising instructions which, when executed by a computer system that includes a data processor and is connected to at least one data repository, perform a method comprising: (a) electronically accessing, by the data processor of the computer system, a first digitized flood map and a second updated digitized flood map; (b) analyzing, by the data processor of the computer system, data associated with the first digitized flood map and data associated with the second digitized updated flood map to identify any changes in a risk level status and any changes in a zone designation; (c) searching, by the data processor of the computer system, a database to identify one or more real estate properties affected by any identified changes in a risk level status and any identified changes in a zone designation; (d) storing, by the data processor in the at least one data repository, the identified one or more real estate properties in association with any respective identified changes in a risk level status and any respective identified changes in a zone designation that affect the one or more real estate properties; (e) identifying, by the data processor of the computer system, a plurality of subject properties; (f) determining, by the data processor of the computer system, whether any of the plurality of subject properties 2 Appeal 2016-005192 Application 14/176,447 correspond to the identified one or more real estate properties affected by any identified changes in a risk level status and any identified changes in a zone designation; and (g) generating, by the data processor of the computer system, an alert for any of the plurality of subject properties that correspond to the identified one or more real estate properties affected by any identified changes in a risk level status and any identified changes in a zone designation. 11. A system comprising: physical data storage configured to store flood data; and a computer system in communication with the physical data storage, the computer system comprising computer hardware, the computer system programed to: electronically access a first digitized flood map and a second updated digitized flood map; analyze data associated with the first digitized flood map and data associated with the second digitized updated flood map to identify any changes in a risk level status and any changes in a zone designation; search a database to identify one or more real estate properties affected by any identified changes in a risk level status and any identified changes in a zone designation; store, in the physical data storage, the identified one or more real estate properties in association with any respective identified changes in a risk level status and any respective identified changes in a zone designation that affect the one or more real estate properties; identify a subject property; determine whether the subject property corresponds to the identified one or more real estate properties affected by any identified changes in a risk level status and any identified changes in a zone designation; and generate an alert for the subject property if the subject property corresponds to the identified one or more real estate properties affected by any identified changes in a risk level status and any identified changes in a zone designation. 3 Appeal 2016-005192 Application 14/176,447 REJECTION ON APPEAL Claims 1—20 stand rejected under 35 U.S.C. § 101 as directed to patent ineligible subject matter. ANALYSIS We have reviewed the Examiner’s rejections in light of Appellant’s arguments in the Appeal Brief and the Examiner’s Answer. Appellant’s arguments are not persuasive of Examiner error. We agree with the Examiner’s conclusions of law. We highlight and address specific findings and arguments below for emphasis. A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CIS Bank Inti, 134 S. Ct. 2347, 2354 (2014); Gottschalkv. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, through just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the practical application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293—94 (2012). In Alice, the Supreme Court reaffirmed the framework set forth in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The first step of 4 Appeal 2016-005192 Application 14/176,447 the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, the second step of the analysis is to “consider the elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.” Alice, 134 S. Ct. at 2355 (quoting Mayo, 132 S. Ct. at 1298). In other words, 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 on the [ineligible concept] itself.’” Id. (alteration 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 formula to a particular technological environment or adding insignificant post[-]solution activity.” Bilski v. Kappos, 561 U.S. 593, 610-11 (2010) (citation and internal quotation marks omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].”’ Alice, 134 S. Ct. at 2357 (alterations in original) (quoting Mayo, 132 S. Ct. at 1294). Transformation of an abstract idea into a patent-eligible application “requires more than stating the abstract idea while adding the words ‘apply it.’” Id. (quotingMayo, 132 S. Ct. at 1294). “The introduction of a computer into the claims does not alter the analysis.” Id. We now turn to address the Examiner’s findings and Appellant’s arguments in view of the first step of the analysis set forth in Mayo!Alice. The Examiner finds the claims are directed to the abstract idea of flood risk analysis based on comparing two digitized flood maps. See Final Act. 5—7; 5 Appeal 2016-005192 Application 14/176,447 Ans. 5—6. The Examiner finds that the claims amount to “simply the organization and comparison of data which can be performed mentally and is an abstract idea itself.” Ans. 5. Appellant contends the claims are not directed to an abstract idea because the claims are not directed to fundamental economic practices, certain methods of organizing human activities, ideas, and mathematical relationships or formulas. See Br. 8. Appellant contends that like the claims in DDR Holdings, LLCv. Hotels.com L.P, 773 F.3d. 1245 (Fed. Cir. 2014), “the present claims do not recite a mathematical algorithm or fundamental economic or longstanding commercial practice.” Id. at 9. Appellant asserts that “the claims are rooted in computer technology, and address issues associated with the use of electronic datasets to spot changes to flood maps that may affect the insurability of a particular property.” Id. Appellant contends that the claims provide a solution to a practical problem of identifying changes made to risk level status and zone designation on flood maps where a person’s property might be located. Prior to the claimed invention there was no way of automatically accomplishing this search, identification, and notification and as a consequence properties could have been at increased risk of flood damage without having adequate notification to the owner or the insurer. Thus, the claimed invention helped solve the problem of mitigating financial hardship due to lack of awareness of flood risks. Furthermore, this tool advantageously allows insurance providers and underwriters to assess risk and provide appropriate insurance for people seeking to protect their real property from hazards. Br. 10. The Examiner’s characterization that the claims are directed to the abstract idea of “flood risk analysis based on comparing two digitized flood maps” 6 Appeal 2016-005192 Application 14/176,447 (see Final Act. 5—6) does not differ substantially from Appellant’s characterizations of the issues and solutions addressed by the claims: “the use of electronic datasets to spot changes to flood maps that may affect the insurability of a particular property,” and “identifying changes made to risk level status and zone designation on flood maps where a person’s property might be located” (see Br. 10). We agree with the Examiner that the claims are directed to an abstract idea, namely the fundamental practice of organizing and comparing data. This is similar to the following abstract ideas recognized by our reviewing court: (1) tracking financial transactions to determine whether they exceed a pre-set spending limit (i.e., budgeting) in Intellectual Ventures ILLC v. Capital One Bank (USA), 792 F.3d 1363, 1368 (Fed. Cir. 2016); (2) collection of credit information to generate a credit grading to facilitate anonymous loan shopping in Mortgage Grader, Inc. v. First Choice Loan Services Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) ; and (3) collecting, displaying, and manipulating data in Intellectual Ventures ILLC v. Capital One Fin. Corp., 850 F.3d 1332, 1340 (Fed. Cir. 2017) . Accordingly, we are not persuaded by Appellant’s arguments that independent claims 1 and 11 are not directed to an abstract idea. Next we turn to the Examiner’s findings and Appellant’s arguments in view of the second step of the analysis set forth in Mayo/Alice. The Examiner finds that the claims recite a generic computer implementation of an abstract idea and a program on a non-transitory computer readable storage medium that is used for the generic functions of accessing, analyzing, searching, storing, identifying, and determining. See Final Act. 5. The Examiner finds that there is no inventive concept sufficient to transform the claimed subject matter to patent eligible subject matter. See id.', Ans. 5. 7 Appeal 2016-005192 Application 14/176,447 The Examiner also finds that the computer processor expressly recited in the claimed steps does no more than generic computer functions. See Final Act. 6; Ans. 5, 8—9. The Examiner further finds that the claim does not define how the computer is used or the significance of the computer to the performance of the method, but is at most a mechanism for permitting the solution to be achieved more quickly. See Final Act. 6. Appellant contends that the claims recite significantly more than merely an abstract idea. See Br. 11—13. Appellant asserts that the “claims ‘do not merely involve the use of a computer or the Internet to perform a pre-Internet world business practice.’” See id. at 9 (citing DDR). Appellant argues that Claim 1 defines a useful tool for insurance industry professionals to determine whether risk levels and flood zone designations have changed for a real property. Without such a tool, such analysis would require painstaking analysis of flood maps for each and every real property over countless hours in order to determine changes. Br. 12. Appellant asserts that “Claim 11 explicitly recites that the computer system is programmed to electronically access . . . analyze . . . search . . . , store . . . determine . . . , and generate. Thus the computer system of Claim 11 necesar[il]y performs the claimed functions, as the claim recites that the computer system is programmed to do so.” Id. at 13. We are not persuaded by Appellant’s arguments. Claim 1 recites a computer system, a data processor, and data repository along with the steps of accessing, analyzing, searching, storing, identifying, determining, and generating, all performed by the data processor. Similar to claim 1, independent claim 11 recites a computer system, computer hardware, and physical data storage, along with accessing, analyzing, searching, storing, 8 Appeal 2016-005192 Application 14/176,447 identifying, determining, and generating, all performed by the computer system programmed to perform these functions. Appellant presents insufficient persuasive argument to show that the functions of accessing, analyzing, searching, storing, identifying, determining, and generating are performed by anything more than conventional generic computer components. In order for the use of computer functionality to render a claim patent eligible, the “computer must be integral to the claimed invention, facilitating the process in a way that a person making calculations or computations could not.” Bancorp, 687 F.3d at 1278. The fact that the recited computer and its components obviates the need for “painstaking analysis of flood maps for each and every real property over countless hours in order to determine changes” is insufficient because “merely adding computer functionality to increase the speed or efficiency of the process does not confer patent eligibility on an otherwise abstract idea.” Intellectual Ventures ILLCv. Capital One Bank (USA), 792 F.3d at 1370. Appellant further asserts that claim 1 explicitly recites storing the identified one or more real estate properties in association with the identified changes in risk level status and zone designation as well as generating an alert for a subject property, and contend these features are transformative in nature. SeeBr. 13. We are not persuaded by Appellant’s argument because the storage of property data correlated to the results of the flood map analysis, and the generation of an alert for any affected property amount to insignificant post-solution activity or ancillary steps to Appellant’s abstract idea of identifying changes made to risk level status and zone designation on flood maps where a property might be located. See Bilski; see also Electric Power Group, LLC v. Alstom S.A., 830 F. 3d 1350 (Fed. Cir. 2016) (“merely 9 Appeal 2016-005192 Application 14/176,447 presenti ng the results of abstract processes of collecting and analyzing information, without more . . . , is abstract as an ancillary part of such collection and analvsis.”') Lastly, Appellant contends that the fact that there are no prior art rejections against the claims is evidence that the claims recite features that amount to significantly more than merely an abstract idea. See Br. 12—13. Appellant’s argument is misplaced and not persuasive because Appellant confuses novelty and non-obviousness with “inventive concept.” For the foregoing reasons, Appellant does not persuade us that the independent claims 1 and 11 directed to an abstract idea include an inventive concept, and, therefore, that the claims are patent eligible under 35 U.S.C. §101. Appellant does not provide separate substantive arguments addressing dependent claims 2—10, and 12—20. See Br. 6—13. Accordingly, for the same reasons, we are not persuaded that claims 2—10 and 12—20 are patent eligible under 35 U.S.C. § 101. DECISION We AFFIRM the rejections of claims 1—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)(l)(iv). AFFIRMED 10 Copy with citationCopy as parenthetical citation