Ex parte Collopy
| Decision Date | 30 January 2018 |
| Docket Number | 999,Application 12/536,Appeal 2018-002071 |
| Parties | Ex parte FRED COLLOPY, CRAIG ALLEN NARD, HIMANSHU S. AMIN, GREGORY TUROCY, RONALD CHARLES KROSKY, DAVID NOONAN, GUSTAVO ARNALDO NARVAEZ, and BRIAN ASQUITH Technology Center 3600 |
| Court | Patent Trial and Appeal Board |
Before ERIC S. FRAHM, STEVEN M. AMUNDSON, and JASON M. REPKO Administrative Patent Judges.
AMUNDSON, ADMINISTRATIVE PATENT JUDGE.
Appellants[1] seek our review under 35 U.S.C. § 134(a) from a final rejection of claims 1-20 i.e., all pending claims. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
According to the Specification, the "subject innovation customizes insurance rates in real time to correspond to unique behavior/character traits of a user/driver by exploiting contextual data (e.g., from third party data banks, driving behavior, and the like), which are related to such user/driver." Spec. ¶ 8.[2] The Specification explains that: (1) a "rate adjustment component can interact with insurance companies that provide bids based on the contextual data" to permit "switch[ing] in real-time between such insurance companies (e.g., based on bids)"; and (2) a "switching component can switch [a] user/driver) to an insurance company that bids the best rate." Abstract; see Spec. ¶¶ 8-10.
Independent claims 1 and 10 exemplify the claims at issue and read as follows (with formatting added for clarity):
Br. 62-63 (Claims App.).
As evidence of unpatentability, the Examiner relies on the following prior art:
French et al. ("French")
US 2001/0037281 A1
Nov. 1, 2001
Duri et al. ("Duri")
US 2004/0267410 A1
Dec. 30, 2004
Monroe et al. ("Monroe")
US 2005/0027635 A1
Feb. 3, 2005
Harrington et al. ("Harrington")
US 2008/0174451 A1
July 24, 2008
Brown et al. ("Brown")
US 2008/0189142 A1
Aug. 7, 2008
Duddle et al. ("Duddle")
WO 2007/104982 A2
Sept. 20, 2007
Claims 1-20 stand rejected under 35 U.S.C. § 101 as directed to non-statutory subject matter. Final Act. 6-10.
Claims 1-9 and 19 stand rejected under 35 U.S.C. § 112 ¶ 1 as failing to comply with the written-description requirement. Final Act. 11-13.
Claims 1-3, 5, 7, and 9 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Duddle and Brown. Final Act. 13-18.
Claims 10-12, 15, 17, 18, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Duddle. Final Act. 18-23.
Claim 16 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Duddle and Duri. Final Act. 23-24.
Claims 4 and 14 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Duddle and French. Final Act. 24-25.
Claim 6 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Duddle and Harrington. Final Act. 25-26.
Claims 8 and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Duddle and Brown. Final Act. 26-27.
Claim 13 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Duddle and Monroe. Final Act. 28.
We have reviewed the rejections in light of Appellants' arguments that the Examiner erred. For the reasons explained below, we concur with the Examiner's conclusions concerning unpatentability under § 101 and § 103(a). But we disagree with the Examiner's determination under § 112 ¶ 1. We adopt the Examiner's findings and reasoning in the Final Office Action, Advisory Action, and Answer that relate to the § 101 and § 103(a) rejections. See Final Act. 3-5 (¶¶ 3-4 6-7), 7-10, 13-28; Adv. Act. 2 (¶¶ 1, 3); Ans. 4-10, 13-15. We add the following to address and emphasize specific findings and arguments.
The Patent Act defines patent-eligible subject matter broadly "Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title." 35 U.S.C. § 101. In Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 70 (2012), and Alice Corp. v. CLS Bank International, 134 S.Ct. 2347, 2354 (2014), the Supreme Court explained that § 101 "contains an important implicit exception" for laws of nature, natural phenomena, and abstract ideas. See Diamond v. Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a two-step analytical framework for evaluating patent-eligible subject matter: First, "determine whether the claims at issue are directed to" a patent-ineligible concept, such as an abstract idea. Alice, 134 S.Ct. at 2355. If so, "consider the elements of each claim both individually and 'as an ordered combination' to determine whether the additional elements" add enough to transform the "nature of the claim" into "significantly more" than a patent-ineligible concept. Id. at 2355, 2357 (quoting Mayo, 566 U.S. at 79); see Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016).
Step one in the Mayo/'Alice framework involves looking at the "focus" of the claims at issue and their "character as a whole." Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016). Step two involves the search for an "inventive concept." Alice, 134 S.Ct. at 2355; Elec. Power Grp., 830 F.3d at 1353. An "inventive concept" requires more than "well-understood, routine, conventional activity already engaged in" by the relevant community. Rapid Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo, 566 U.S. at 79-80). But "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). Under step two, "an inventive concept must be evident in the claims." RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Appellants argue that the Examiner erred in rejecting independent claims 1, 10, and 20 under § 101 because the Examiner "fails to address each element of the independent claim separately as required under the law in a 35 U.S.C. § 101 analysis of patent-eligible subject matter, " and therefore "has not made a prima facie case that the independent claim is abstract and not patentable ." Br. 25, 36-37, 48. Appellants similarly argue that the Examiner "fails to address each element of each dependent claim, and therefore "has not made a prima facie case that the dependent claim is abstract and not patentable . . . ." Id. at 48-54.
Appellants' arguments do not persuade us of Examiner error because they rest on an incorrect view of a patent-eligibility analysis according to Mayo and Alice. Under Mayo/'Alice step one, "the claims are considered in their entirety to ascertain whether their character as a whole is directed to excluded subject matter." Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
Further the Federal Circuit has repeatedly explained that "the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production." Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The "PTO carries its procedural burden of establishing a prima facie case when its rejection satisfies 35 U.S.C. § 132, in notifying] the applicant. . . [by] stating the reasons for [its] rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.'" In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (quoting 35 U.S.C. § 132) (alterations in original). The PTO violates § 132 "when a rejection is so uninformative that it prevents the applicant from recognizing and seeking to counter the grounds for rejection." Chester v. Miller, 906 F.2d 1574, 1578 (Fed. Cir. 1990). But if the PTO "adequately explain[s] the shortcomings it perceives ... the burden shifts to the applicant to rebut the prima facie case with evidence and/or argument." Hyatt, 492...
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