Ex Parte Maltby

Patent Trial and Appeal Board

May 30, 2017

14176447 (P.T.A.B. May. 30, 2017)

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