Ex Parte Singleton et al

Patent Trials and Appeals BoardMar 26, 2019

13153298 - (D) (P.T.A.B. Mar. 26, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/153,298 17169 7590 Stephen M. De Klerk MatterLight IP 2033 Gateway Place 5th Floor San Jose, CA 95110 06/03/2011 03/28/2019 FIRST NAMED INVENTOR Joseph P. Singleton 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. QUIN-POOl 8675 EXAMINER MERCHANT, SHAHID R ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 03/28/2019 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): ariana@matterlightip.com s tephen @matterlightip.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JOSEPH P. SINGLETON, MICHAEL A. ZUKERMAN, RANDI J. ANDERSON, SAMUEL L. BELDEN, JASON A. PASCIAK, DANIEL D. RUNION, BRIAN J. HUMMER, CHARLES R. MIDDLETON and VIJAYK. PARUCHURI Appeal2017-011508 Application 13/153,290 Technology Center 3600 Before CARL W. WHITEHEAD JR., JASON V. MORGAN and ERIC B. CHEN, Administrative Patent Judges. WHITEHEAD JR., Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 are appealing the final rejection of claims 1-3 and 5-8 under 35 U.S.C. Â§ 134(a). Appeal Brief 12. Claim 4 has been cancelled. We have jurisdiction under 35 U.S.C. Â§ 6(b ). We affirm. Introduction 1 Appellants identify Insurance.com Group, Inc., as the real party in interest. Appeal Brief 3. Appeal2017-011508 Application 13/153,298 The invention is directed to "online sales and more particularly to increasing online sale conversions and increase profitability." Specification Representative Claim 1. A computer-implemented method of providing an insurance quotation to a prospect by associating the prospect with a profitability segment prior to providing the insurance quotation, the method comprising: receiving, with a processor of a computer, identity information associated with the prospect; accessing, with the processor, at least one first database using the identity information to generate a profitability score for the prospect; executing, with the processor, a customer segmentation decision to generate a customer segmentation based on the profitability score by comparing the profitability score with a profitability threshold, wherein a prospect associated with the identification information is categorized into a customer segmentation as either profitable for using a data model or not profitable for using the data model; navigating, with the processor, a customer device to one or more quote interview pages, wherein the quote interview pages are designed for all prospects that fall into the customer segment with which the prospect is associated; if the customer segmentation is such that the prospect associated with the identification information is categorized as profitable using the data model because the profitability score for the prospect meets a profitability threshold: accessing, with the processor, at least one second database to retrieve incident data, including prior accidents or losses relevant to vehicles or drivers to be insured, and prior insurance data for the prospect; receiving, with the processor, information from the customer device through the one or more interview pages from a first set of interview pages, wherein the first set of interview pages are designed for all prospects that fall into the customer 2 Appeal2017-011508 Application 13/153,298 segment indicating that the prospect is profitable without customizing the interview pages for each prospect individually; and generating, with the processor, an insurance quotation based on the incident data and the prior insurance data retrieved from the one or more second databases and the information received through the one or more interview pages that are designed for the customer segment indicating that the prospect is profitable; and if the customer segmentation is such that the prospect associated with the identification information is categorized as not profitable using the data model because the probability score for the prospect fails to meet the profitability threshold: providing, with the processor, a prompt for incident data and prior insurance data for the prospect to the prospect; and receiving, with the processor, information from the customer device through the one or more interview pages from a second set of interview pages, wherein the second set of interview pages are designed for all prospects that fall into the customer segment indicating that the prospect is not profitable, including incident data and prior insurance data from the prospect without customizing the interview pages for each prospect individually; and generating, with the processor, an insurance quotation based on the received incident data and the prior insurance data and the information received through the one or more interview pages that are designed for the customer segment indicating that the prospect is not profitable. Appeal Brief 26 (Claims Appendix). Rejection on Appeal Claims 1-3 and 5-8 stand rejected under 35 U.S.C. Â§ 101 because the claimed invention is directed to patent-ineligible subject matter. Final Action 4--8. 3 Appeal2017-011508 Application 13/153,298 ANALYSIS Rather than reiterate the arguments of Appellants and the Examiner, we refer to the Appeal Brief (filed January 30, 2017), the Final Action (mailed August 26, 2016) and the Answer (mailed June 6, 2017), for the respective details. 35 U.S.C. Â§ 101 rejection The Examiner determines the claims are patent ineligible under 35 U.S.C. Â§ 101 because the claims are directed to an abstract idea comprising a fundamental economic practice, a certain method of organizing human activity, and do not include additional elements that are sufficient to amount to significantly more than the abstract idea. Final Action 6; see Alice Corp. Pty. Ltd. v. CLS Banklnt'l, 573 U.S. 208,217 (2014) ( describing the two-step framework "for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts"). After the mailing of the Answer and the filing of the Brief in this case, the USPTO published revised guidance on the application ofÂ§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter "Memorandum"). Under the Memorandum, the Office first looks to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP Â§ 2106.05(a}-(c), (e}-(h) (9th ed. 2018). 4 Appeal2017-011508 Application 13/153,298 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, does the Office then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that are not "well-understood, routine, conventional" in the field (see MPEP Â§ 2106.0S(d)); or ( 4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Memorandum. We are not persuaded the Examiner's rejection is in error. We adopt the Examiner's findings and conclusions as our own. We add the following primarily for emphasis and clarification with respect to the Memorandum. Appellants argue "that the claims at issue are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the profitability segmentation model." Appeal Brief 18. We agree with the Examiner's determination that the claims are directed to an abstract idea. See Final Action 4--8. The Abstract discloses that the invention is "a computer-implemented method of providing an insurance quotation to a prospect by associating the prospect with a profitability segment prior to providing the insurance quotation." The Specification discloses: The invention provides a computer-implemented method of providing an insurance quotation to a prospect by associating the prospect with a profitability segment prior to providing the insurance quotation. The method further includes receiving identity information associated with the prospect and accessing at least one database using the identity information to generate a profitability score for the prospect. If the profitability score for 5 Appeal2017-011508 Application 13/153,298 the prospect meets a profitability threshold, then one or more second databases may be accessed to retrieve incident data and prior insurance data for the prospect and generating an insurance quotation based on the incident data and the prior insurance data retrieved from the one or more second databases. If the probability score for the prospect fails to meet the profitability threshold, then a process other than if the profitability score for the prospect meets the profitability threshold is automatically executed. Specification ,r 5. Claim 1 recites "A computer-implemented method of providing an insurance quotation to a prospect by associating the prospect with a profitability segment prior to providing the insurance quotation"; "executing, with the processor, a customer segmentation decision to generate a customer segmentation based on the profitability score by comparing the profitability score with a profitability threshold"; "if the customer segmentation is such that the prospect associated with the identification information is categorized as profitable using the data model because the profitability score for the prospect meets a profitability threshold"; "generating, with the processor, an insurance quotation based on the incident data and the prior insurance data retrieved from the one or more second databases and the information received through the one or more interview pages that are designed for the customer segment indicating that the prospect is profitable"; "receiving, with the processor, information from the customer device through the one or more interview pages from a second set of interview pages, wherein the second set of interview pages are designed for all prospects that fall into the customer segment indicating that the prospect is not profitable, including incident data and prior insurance data from the prospect without customizing the interview pages for each prospect individually"; and "generating, with 6 Appeal2017-011508 Application 13/153,298 the processor, an insurance quotation based on the received incident data and the prior insurance data and the information received through the one or more interview pages that are designed for the customer segment indicating that the prospect is not profitable." These steps comprise fundamental economic principles or practices and/or commercial or legal interactions; thus, the claim recites the abstract idea of "certain methods of organizing human activity." Memorandum, Section I (Groupings of Abstract Ideas); see Specification ,r,r 11-12, 23, and 24. Our reviewing court has found claims to be directed to abstract ideas when they recited similar subject matter. See Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk .... "); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (claims directed to abstract idea of processing loan information through a clearinghouse); Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (claims reciting "generalized software components arranged to implement an abstract concept [of generating insurance-policy-related tasks based on rules to be completed upon the occurrence of an event] on a computer" not patent eligible). Appellants argue, "[T]he Appellant submits that the claims are not simply directed to any form of providing an insurance quotation, but instead are specifically directed to the profitability segmentation model." Appeal Brief 20. Appellants further argue, "The specification also teaches that the profitability segmentation model functions differently than conventional database structures." Appeal Brief 21. Appellants contend: 7 Appeal2017-011508 Application 13/153,298 Moreover, Appellant's submission that the claims are directed to an improvement of an existing technology is bolstered by the specification's teachings that the claimed invention achieves other benefits over conventional systems, such as greater customer retention. See pages 1 and 2. See also Openwave Sys., Inc. v. Apple Inc., 808 F.3d 509, 513-14 (Fed. Cir. 2015) (finding that a specification's disparagement of the prior art is relevant to determine the scope of the invention). Appeal Brief 22. We do not find Appellants' arguments persuasive because the claims utilize a computer system merely as a tool to evaluate the financial risk and/or possible profitably of insuring potential prospects by employing a processor to evaluating data store within databases. See Specification ,r,r 21- 22; see also Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016) ("[W]e find it relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea ... the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an 'abstract idea' for which computers are invoked merely as a tool."). The claims do not recite an additional element or elements that reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field. See Final Action 6 ("The claims do not include limitations that are 'significantly more' than the abstract idea because the claims do not include an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment."); see also Alice, 573 U.S. at 222 ("In holding that the process was patent ineligible, we rejected the argument that 8 Appeal2017-011508 Application 13/153,298 'implement[ing] a principle in some specific fashion' will 'automatically fal[l] within the patentable subject matter ofÂ§ 101."' (alterations in original) (quoting Parker v. Flook, 437 U.S. 584, 593 (1978))). Accordingly, we determine the claim does not integrate the judicial exception into a practical application. See Memorandum, Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception Is Integrated Into a Practical Application). Nor do we find the claim includes a specific limitation or a combination of elements that amounts to significantly more than the judicial exception itself. See Memorandum, Section III(B) (Step 2B: If the Claim Is Directed to a Judicial Exception, Evaluate Whether the Claim Provides an Inventive Concept); see also Aatrix Software, Inc. v. Green Shades Software, Inc., 890 F.3d 1354, 1359 (Fed. Cir. 2018) (Moore, J., concurring) ("the 'inventive concept' cannot be the abstract idea itself'); see Final Action 6; see also Specification ,r,r 5 8 and 60-63. Other than the abstract idea itself, the remaining claim elements only recite generic computer components that are well-understood, routine, and conventional. See Final Action 7-8; Specification ,r,r 58, 60-63; Alice, 573 U.S. at 226. Accordingly, we conclude that claims 1-3 and 5-8 recite a fundamental economic practice, which is one of certain methods of organizing human activity identified in the Memorandum and thus an abstract idea. See Final Action 4--8. 9 Appeal2017-011508 Application 13/153,298 DECISION The Examiner's non-statutory subject matter rejection of claims 1-3 and 5-8 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a)(l ). See 37 C.F.R. Â§ 1.136(a)(l)(v). AFFIRMED 10