Ex Parte Mathai et al

Patent Trial and Appeal Board

Dec 31, 2018

11710874 (P.T.A.B. Dec. 31, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/710,874 02/26/2007 Shajy Mathai
30636 7590 12/31/2018
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
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.
40191/00202 5393
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
MAIL DATE DELIVERY MODE
12/31/2018 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 SHAJY MATHAI, MAYA E. BELUBEKIAN, and
ELIZABETH SOH
Appeal2017-006750
Application 11/710,874
Technology Center 3600
Before ERIC B. CHEN, JOSEPH P. LENTIVECH, and
NABEEL U. KHAN, Administrative Patent Judges.
CHEN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2017-006750
Application 11/710,874
This is an appeal under 35 U.S.C. § I34(a) from the final rejection of
claims 31--46. Claims 1-30 have been cancelled. We have jurisdiction
under 35 U.S.C. § 6(b). We affirm.
STATEMENT OF THE CASE
Appellants' invention relates to depicting a relative impact to losses of
an insurer's portfolio, at a specific risk level by geographic area using a grid
level database and a spatial database to generate maps. (Abstract.)
Claim 31 is exemplary:
31. A method of modeling incremental changes in exposure
and potential loss for a portfolio of insurance, the method comprising
the steps of:
selecting a risk managed layer;
selecting a geographical area corresponding to the portfolio of
msurance;
calculating, by a processor, the incremental changes as an
expected portfolio value for the change in loss for the portfolio of
insurance by approximating the incremental changes as the expected
portfolio value for the loss for a change in the portfolio of insurance,
given a set of risk managed layer events;
providing, by the processor, a uniform grid having grid points
for the geographic area;
generating, by the processor, a geographic map of the
geographic area including geographical features therefor; and
distributing, by the processor, the incremental changes over the
geographic map to provide the distributed incremental change in
gradient form.
Claims 31--46 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
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ANALYSIS
We are unpersuaded by Appellants' arguments (App. Br. 5-91; see
also Reply Br. 2---6) that independent claims 31 and 39 are directed to patent-
eligible subject matter under 35 U.S.C. § 101.
The Examiner found that the claims are "are analogous to the basic
concepts [ of] . . . using categories to organize, store, and transmit
information (Electric Power Group LLC, Cyberfone Systems LLC v CNN
Interactive Group Inc) . .. [or] determining a potential loss for a portfolio of
insurance which is a fundamental economic practice (Alice Corp. Pty. Ltd v
CLS Bank lnter'l)." (Ans. 5.) The Examiner further found that "[t]hese
generic computer components are claimed to perform their basic functions
of storing, retrieving, processing, and displaying that are well-understood,
routine, and conventional activities which amount to no more than
implementing the abstract idea with a computerized programmed system."
(Id. at 6.) We agree with the Examiner's findings and ultimate conclusion
that independent claims 31 and 39 are patent ineligible.
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: [l]aws of nature, natural
phenomena, and abstract ideas are not patentable." Alice Corp. Pty. Ltd. v.
CLS Bankint'l, 134 S. Ct. 2347, 2354 (2014) (internal citation and quotation
marks omitted); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) ("Phenomena
of nature, though just discovered, mental processes, and abstract intellectual
1 Appellants' Appel Brief, filed July 27, 2016.
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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 application of these concepts may be
deserving of patent protection. Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 71-72 (2012). In Mayo, the Court stated that "to
transform an unpatentable law of nature into a patent-eligible application of
such a law, one must do more than simply state the law of nature while
adding the words 'apply it."' Mayo, 566 U.S. at 72 (internal citation
omitted).
In Alice, the Supreme Court reaffirmed the framework set forth
previously in Mayo "for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts." Alice, 134 S. Ct. at 2355. The first step in
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, then the
second step 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, 566 U.S. at 79, 78). 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 upon the
[ineligible concept] itself."' Id. (brackets in original) (quoting Mayo, 566
U.S. at 72-73). "A claim that recites an abstract idea must include
'additional features' to ensure 'that the [claim] is more than a drafting effort
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designed to monopolize the [abstract idea]."' Id. at 2357 (brackets in
original) (quoting Mayo, 566 U.S. at 77-78). 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. Kappas, 561 U.S. 593, 610-
11 (2010) (internal citation and quotation marks omitted). The Court in
Alice noted that "' [ s ]imply appending conventional steps, specified at a high
level of generality,' was not 'enough' [in Mayo] to supply an 'inventive
concept."' Alice, 134 S. Ct. at 2357 (quoting Mayo, 566 U.S. at 82-83,
77-78, and 72-73).
Alice Step One: Are the claims at issue
directed to a patent-ineligible concept?
Independent claim 3 1 is a method claim, which recites, in part, the
following: (i) "selecting a risk managed layer" and (ii) "selecting a
geographical area corresponding to the portfolio of insurance." Such
method steps of claim 31 are directed to a patent-ineligible abstract idea of
collecting data. See, e.g., Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016) ("collecting information, including when limited to
particular content (which does not change its character as information), as
within the realm of abstract ideas"); see also Cyberfone Sys. v. CNN
Interactive Grp., 558 Fed. Appx. 988, 993 (Fed. Cir. 2014) ("[n]or does the
particular configuration of steps----obtaining, separating, and then sending
information----confer patentability"). Claim 31 further recites: (iii)
"calculating ... the incremental changes as an expected portfolio value for
the change in loss for the portfolio of insurance ... "; (iv) "providing ... a
uniform grid ... "; (v) "generating ... a geographic map ... "; and (vi)
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"distributing ... the incremental changes over the geographic map to
provide the distributed incremental change in gradient form." Such method
steps of claim 31 are directed to a patent-ineligible abstract idea of analyzing
and displaying information. See, e.g., Elec. Power Grp., 830 F.3d at 1354
("[t]he advance they purport to make is a process of gathering and analyzing
information of a specified content, then displaying the results, and not any
particular assertedly inventive technology for performing those functions.").
Alternatively, such steps of claim 31 are directed to a patent-ineligible
abstract idea of "a fundamental economic practice long prevalent in our
system of commerce," Alice, 134 S. Ct. at 2356, for example, the
fundamental business practice in the insurance industry of factoring a Risk
Managed Layer (RML) based on geography into the overall portfolio
performance of insurance policies. In particular, in the "Background"
section, Appellants' Specification admits the following:
Currently, more and more insurance companies are
taking a pro-active approach to portfolio management and,
instead of just assessing potential losses of the current portfolio
of insurance policies, they are trying to evaluate the geographic
impact of writing new policies based on their portfolio's
performance. Typically, there is a certain layer of risk that is
the most critical for managing called a Risk Managed Layer
(RML ). The selection of a RML can be affected by a variety of
factors and parameters, such as a reinsurance layer's attachment
and limit, A.M. Best's rating requirements, etc.
(Spec. ,r 2.)
Still other systems are known that determine
concentrations of potential liability and exposure relating to
catastrophic events regarding insurance portfolios and include
operations for storing and linking policy information, portfolio
information, account information, financial perspectives or
other information that is identified using longitude and latitude
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coordinates or zip codes .... The exposure data may be output
in a graphical form, such as a map showing locations having the
highest exposure concentration or using specific graphic indicia
or colors to determine various concentration levels.
(Id. ,I 8.)
Claim 39, a corresponding computer-readable storage medium claim,
recites limitations similar to those discussed with respect to claim 31. Thus,
claim 39 is also directed to a patent-ineligible abstract idea.
Step Two: Is there something else in the claims
that ensures that they are directed to significantly
more than a patent ineligible concept?
Because claims 31 and 39 are directed to an abstract idea, we next
determine, according to Alice, whether these claims recite an element, or
combination of elements that is enough to ensure that the claim is directed to
significantly more than an abstract idea.
Claim 31, a method claim, and claim 39, a corresponding computer-
readable storage medium claim, both recite a "processor." With respect to
the claimed "processor," Appellants' Specification discloses the following:
The present invention provides maps and zip code lists of
RML losses that are available for catastrophic events, such as
for earthquakes and hurricanes. Technology/tools used may
include a processor having a computer readable signal-bearing
medium, such medium having circuits, such as hardware
including a spatial database (e.g., an Oracle Spatial Database),
and geo-spatial software ....
(Spec. ,r 28.)
The generalized functional terms by which the computer components
are described reasonably indicate that Appellants' Specification discloses a
conventional "processor" having a computer readable medium with a spatial
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database. In view of Appellants' Specification, the claimed hardware
components, including the "processor," reasonably may be determined to be
generic, purely conventional computer elements. Thus, the claims do no
more than require generic computer elements to perform an abstract idea,
rather than improve computer capabilities.
Accordingly, appending a conventional "processor" to an abstract idea
is not enough to transform the abstract idea into a patent-eligible invention.
See Alice, 134 S. Ct. at 2358 ("[T]he mere recitation of a generic computer
cannot transform a patent-ineligible abstract idea into a patent-eligible
invention").
First, Appellants argue that "the Examiner only states that the claims
are also a fundamental economic practice without providing any evidence to
support this assertion, thereby only constituting an opinion of the
Examiner." (App. Br. 5.) Similarly, Appellants argue that "[i]t is
respectfully submitted that the Examiner is describing the claims at issue
here in an overly high level of abstraction and overgeneralizing them" and
"claim 1 is not simply data recognition and storage, a mathematical
procedure, organizing information, using categories, organizing human
activity, and a fundamental economic principle." (Reply Br. 6.) Contrary to
Appellants' arguments, the Examiner has identified the appropriate judicial
exception as concepts relating to certain methods of organizing human
activity ( e.g., "gathering and analyzing information of a specified content,
then displaying the results") or concepts relating to "a fundamental
economic practice." Moreover, the Examiner has compared the claimed
concepts of independent claim 31 to an appropriate Federal Circuit decision
(i.e., Electric Power Group) or Supreme Court decision (i.e., Alice).
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Accordingly, the Examiner has met the burden of a general prima facie
notice requirement. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011)
("[A]ll that is required of the [Patent] [O]ffice to meet its prima facie burden
of production is to set forth the statutory basis of the rejection and the
reference or references relied upon in a sufficiently articulate and
informative manner as to meet the notice requirement of§ 132." ).
Second, Appellants argue that:
It is respectfully submitted that the claims solve a technological
problem in conventional industry practice and recite
improvements to the functioning of a computer, because the
claims recite improved processor performance for calculating
incremental changes as an expected portfolio value for the
change in loss for the portfolio of insurance, by approximating
the incremental changes as the expected portfolio value for the
loss for a change in the portfolio of insurance, given a set of
risk managed layer events and distributing the incremental
changes over the geographic map to provide the distributed
incremental changes in gradient form.
(App. Br. 8.) Similarly, Appellants argue that "[t]his specific
implementation provides a solution to a problem in the software arts ( e.g.,
determining loss information and incremental changes and providing a
visual representation for consideration by insurance companies)" and "it is
respectfully submitted that the claims are not directed to an abstract idea in
the same manner as the Federal Circuit held in Enfzsh." (Reply Br. 4.)
However, Appellants have not adequately explained why the claim
"purport[ s] to improve the functioning of the computer itself' or "any other
technology or technical field." Alice, 134 S. Ct. at 2359. In particular,
Appellants have not explained why "determining loss information and
incremental changes and providing a visual representation for consideration
by insurance companies," which is the abstract idea of analyzing and
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displaying information, improves the function of a computer or other
technology.
Third, Appellants argue that "it is respectfully submitted that a grant
of the claims of the present application would not preempt the making,
using, and selling of basic tools of scientific and technological work." (App.
Br. 9.) However, although "preemption may signal patent ineligible subject
matter, the absence of complete preemption does not demonstrate patent
eligibility." Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
13 79 (Fed. Cir. 2015). Where claims are deemed to recite only patent
ineligible subject matter under the two-step Alice analysis, as they are here,
"preemption concerns are fully addressed and made moot." Id.
Thus, we sustain the rejection of claims 31 and 39 under 35 U.S.C.
§ 101. Appellants do not argue for separate patentability of claims 32-38
and 40-46, which depend from independent claims 31 and 39. Thus, we
also sustain the rejection of claims 32-38 and 40-46 under 35 U.S.C. § 101.
DECISION
The Examiner's decision rejecting claims 31--46 is affirmed.
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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