Ex Parte McKay et alDownload PDFPatent Trial and Appeal BoardMay 31, 201811968923 (P.T.A.B. May. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/968,923 01/03/2008 23460 7590 06/04/2018 LEYDIG VOIT & MA YER, LTD TWO PRUDENTIAL PLAZA, SUITE 4900 180 NORTH STETSON A VENUE CHICAGO, IL 60601-6731 FIRST NAMED INVENTOR Stephen McKay 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. 702407 9794 EXAMINER AKINTOLA, OLABODE ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 06/04/2018 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): Chgpatent@leydig.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEPHEN McKAY and DUNCAN SPENCER Appeal2017-001245 1 Application 11/968,923 Technology Center 3600 Before MURRIEL E. CRAWFORD, MICHAEL W. KIM, and PHILIP J. HOFFMANN, Administrative Patent Judges. CRAWFORD, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE This is an appeal from the Final Rejection of claims 1-10, 13, 15, 17, 20, 21, and 23. We have jurisdiction to review the case under 35 U.S.C. §§ 134 and 6. The invention relates generally to "assessment of environmental risk associated with a parcel of real property." Spec. ,r 2. Claim 1 is illustrative: 1 The Appellants identify American International Group, Inc. as the real party in interest. Appeal Br. 1. Appeal2017-001245 Application 11/968,923 1. A method of assessing the environmental risk associated with a parcel of real property comprising the following steps: (a) determining a current use or uses of the property; (b) determining an intended use or uses of the property; ( c) determining whether the property will be redeveloped; ( d) determining whether underground storage tanks are present on the property; ( e) determining a water distance from the property to a nearest body of surface water; ( f) determining a residential distance from the property to a nearest residential parcel of real property; (g) determining an agriculture distance from property to a nearest agricultural parcel of real property; (h) using the above determinations of steps (a) - (g) to generate an environmental risk assessment report, wherein said report is not based upon a physical inspection of the property; (i) providing said report to at least one person; (j) determining whether the property qualifies for an automatic quotation for environmental insurance, and, if so: ( 1) generating a quotation for environmental insurance based upon said environmental risk assessment report, and (2) providing, via an electronic communication, the quotation for environmental insurance to at least one recipient of said environmental risk assessment report; wherein steps (a) - (h) and are performed with a computer by at least accessing at least one electronic database via the computer, and wherein said report is based on data gathered by accessing via the computer at least one electronic database selected from the group consisting of historical land use databases, environmental agency recorded pollution incident databases, sites determined as contaminated land databases, landfill site databases, environmental agency waste site databases, current 2 Appeal2017-001245 Application 11/968,923 industrial sites databases, petroleum and fuel site databases, groundwater vulnerability databases, soil leaching potential databases, government designated property databases, and databases representing combinations thereof. Claims 1-10, 13, 15, 17, 20, 21, and 23 are rejected under 35 U.S.C. § 101 as directed to ineligible subject matter in the form of abstract ideas. We AFFIRM. ANALYSIS Claims 1-10. 13. and 15 We are not persuaded by the Appellants' argument that the two wherein clauses transform the abstract idea, to which claim 1 is directed, into eligible subject matter, because the limitations "identify particular devices and require a particularly-programmed machine and particularly- populated database structures." Br. 8. According to the Appellants, the computer and electronic databases involve "more than insignificant 'extra- solution' activity," are "rooted in computer technology," "apply ... to a new and useful end" (id.), and include "unconventional steps and limitations that confine the claims to a particular useful application" (id. 9). In claim 1, the first seven recited limitations involve "determining" information. The Specification does not explicitly describe how the determinations are made, except that they are based on information obtained from the databases and from data input by the user ordering the report. The Specification states that the report is "based on using one or more databases to prepare the report" (Spec. ,r 19), and that the "system also utilizes specific 3 Appeal2017-001245 Application 11/968,923 knowledge of the site (built up through database and map interrogation), such as groundwater vulnerability and information obtained during the ordering of the report" (id. ,r 22; see also ,r 23). In one embodiment, "the report uses determinations from various commercially- and publicly- available databases." Id. ,r 28. The determining steps, construed broadly, thus, involve obtaining basic input information through user input and database queries, and are mere data gathering steps. See Bilski v. Kappas, 545 F.3d 943, 963 (Fed. Cir. 2008) (en bane), aff'd sub nom Bilski v. Kappas, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity). The remaining two steps performed by a computer recite generating a report and determining whether the property, to which the report is directed, qualifies for an insurance quotation. The Specification describes various techniques for generating the report, such as "known mapping techniques and technology to locate a property and its surrounding area by postcode and address" (Spec. ,r 18), that "a report is issued as a copy of an already existing report" (id. ,r 19), that "[i]f no information is found under a particular search category, then a negative response is logged" (id. ,r 20), and that "the databases are used to make determinations that are then combined to render at least one report (id. ,r 22)." "In addition, factors such as the presence of residential properties, surface water features, and sensitive habitats can be used to build up a picture of a site's sensitivity to contamination. Contaminative liability can be assessed using a source-pathway-target approach." Id. Thus, the report essentially copies information from other sources, about the particular property at issue. 4 Appeal2017-001245 Application 11/968,923 As to the determining whether the property qualifies for an insurance quotation, because the claim language recites that steps (1) and (2), to generate and provide the report, are done only when the quotation determination is positive, steps ( 1) and (2) are not necessarily performed, and the method need not invoke the steps. See Ex parte Schulhauser, No. 2013-007847, 2016 WL 6277792, at *3-6 (PTAB April 28, 2016) ( concluding the broadest reasonable interpretation of a claim encompassed situations in which conditional method steps "need not be reached") (precedential). Without citing anything directly for the insurance quotation determining in step (j), but in support of claim 1 generally, the Appellants direct us to paragraphs 7, 8, 19-22, 27, 33, and 35 of the Specification. Br. 2. However, at the cited locations, and elsewhere in the Specification, we are unable to discern any description of how this determination is made. 2 The most applicable statement is that the "report can also provide an insurance quotation automatically under certain conditions," but no such conditions are articulated. Spec. ,r 46. The remainder of the Specification repeatedly describes that insurance quotations can be generated automatically, but without further detail. We, thus, discern only that standard, well-known techniques are used for determining if a property qualifies for an automatic insurance quotation, and for generating the quotation. The Examiner finds, and the Appellants fail to dispute with evidence or argument, that the claimed method "can be performed mentally." Final 2 The quotation eligibility determination limitation also does not appear in the claims as originally filed. 5 Appeal2017-001245 Application 11/968,923 Act. 2. We agree, because we find that nothing in the claim nor the Specification excludes a person from performing the generation of the report or the determination about an insurance quotation using purely mental steps, except the recited language that the method is "performed with a computer." The Federal Circuit has held that if a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent-eligible under § 101. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) ("[A] method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under§ 101."). Additionally, mental processes, e.g., generating a report or making determinations, as recited in claim 1, remain ineligible even when automated to reduce the burden on the user of what once could have been done with pen and paper. Id. at 1375 ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson, [409 U.S. 63 (1972)]."). The Specification does not describe the computer used in performing the claimed methods. The Specification describes by example that "computational analyses" may be utilized, but does not describe them. See Spec. ,r 35. Therefore, we are unpersuaded that any "particular devices" or "a particularly-programmed machine" is required or claimed, or that the claims are "rooted in computer technology," as argued, because instead they are based on the use of a generic computer. Br. 8. We are also unpersuaded that the claims are patent-eligible because of "particularly-populated database structures." Br. 8. This argument attempts to distinguish the claims using 6 Appeal2017-001245 Application 11/968,923 the specific content of data in the queried databases. But, the Appellants describe that "[ d]ata may typically be commercially obtained; however, public databases are also easily used for the process of the invention." Spec. ,r 20. The data, therefore, is commonly available, and its particular organization is not significant to the performance of the method as long as the data is "accessible via a computer network and/or via the internet, for example." Id. ,r 19. Because we discern no specific, novel or unobvious method for making determinations or generating a report, we are unpersuaded also that the claim recites any "unconventional steps and limitations," as argued. For these reasons, we are unpersuaded of error on the part of the Examiner in rejecting claim 1 under 35 U.S.C. § 101. Therefore, we sustain the rejection of claim 1 as directed to ineligible subject matter, as well as dependent claims 2-10, 13, and 15, which were not argued separately. Br. 9. Claims 17 and 20 In addition to advancing the same arguments we found unpersuasive for claim 1, the Appellants also assert that claim 1 7 "satisfies the machine- or-transformation test." Br. 9. We are unpersuaded by this argument, because the Supreme Court has made clear that a patent claim's failure to satisfy the machine-or-transformation test is not dispositive of the§ 101 inquiry. CyberSource, 654 F.3d at 1371. Here, as we set forth above, the claims do not require any specific machine, and therefore, the recitation of a generic "computer" fails to transform the claim into eligible subject matter. For these reasons, we sustain the rejection of independent claim 17, as well as dependent claim 20 that was not argued separately. Br. 11. 7 Appeal2017-001245 Application 11/968,923 Claims 21 and 23 Independent claim 21 differs from independent claim 1 primarily by automatically supplying an insurance quotation with the generated report, without determination of whether the property qualifies for the quotation. In addition to repeating the arguments found unpersuasive for claim 1, that the claim identifies particular devices and requires a particularly- programmed machine and particularly-populated database structures, and is deeply rooted in computer technology (Br. 12-13), the Appellants argue "the claimed solution could not be performed without the use of the computer, inasmuch as the method explicitly recites that there is no physical inspection of the property" (id. 13). We are unpersuaded by this argument, because the method can be performed manually by consulting written documents without a physical inspection of a property, which does not require the use of a computer. For these reasons, we sustain the rejection of independent claim 21, as well as dependent claim 23 that was not argued separately. Br. 14. DECISION We affirm the rejection of claims 1-10, 13, 15, 17, 20, 21, and 23 as reciting ineligible subject matter under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED 8 Copy with citationCopy as parenthetical citation