CODY CONSULTING GROUP, INC.

Patent Trials and Appeals Board

Jun 2, 2021

2021000602 (P.T.A.B. Jun. 2, 2021)

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.
15/171,186 06/02/2016 DEBBIE R. MABARI 031005.1006 4691
163843 7590 06/02/2021
Davis Graham & Stubbs LLP
1550 17th St.
Suite 500
Denver, CO 80202
EXAMINER
RINES, ROBERT D
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
06/02/2021 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):
lori.lane@dgslaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DEBBIE R. MABARI

Appeal 2021-000602
Application 15/171,186
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, JOHN G. NEW, and
GEORGIANNA W. BRADEN, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected claims 19–28 under 35 U.S.C. § 101 as lacking
patent-eligibility. Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from
the Examiner’s decision to reject the claims. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Cody
Consulting Group, Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
The Examiner rejected claims 19–28 in the Final Office Action under
35 U.S.C. § 101 because the claimed invention is directed to non-statutory
subject matter. Final Act. 12.
Independent claim 19, the only independent on appeal, is
representative. The claim is reproduced below, bracketed numbers have been
added for reference to the limitations in the claim:
19. A method for developing marketing communications for a
healthcare entity, comprising the steps of:
[1] digitally rendering a set of marketing communications
as a set of templates corresponding to a set of media types, [1a]
wherein each of said templates defines a structured repository
of insertion opportunities for inserting media assets such that
the inserted media assets collectively define a marketing
communication;
[2] building an asset library of media assets for insertion
into said templates to generate said marketing communications,
said library implementing a subject matter segregated storage
structure [2a] wherein separately identified storage spaces are
defined for each of said media types and, [2b] within each said
separately identified storage space, different assets are
provided;
[3] building a rules repository for linking insertion
opportunities to assets depending on user inputs, [3a] wherein
said asset insertion opportunities can be statically linked to a
predefined asset or [3b] dynamically linked to any of a plurality
of asset options depending on application of a user input to one
or more rules associated with a respective asset insertion
opportunity;
[4] building a member information storage structure of
member information for insertion into said templates to
personalize said marketing communications for individual
members;
[5] receiving a first set of one or more user inputs at a
user input device, [5a] said first set of one or more user inputs
defining a first media type for a first marketing communication;
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[6] in response to receiving said first set of user inputs,
[6a] identifying a first template and [6b] executing branching
logic to render a set of a plurality of first template versions each
linked with a first storage space associated with said first media
type, [6c] at least one of said plurality of template versions (“a
first template version”) being associated with each of:
1) a first insertion opportunity defined by metadata
mapping said first insertion opportunity to fixed content that is
common to all of said first template versions of said first
template [6d] by pointing to a first asset of said first storage
space;
2) a second insertion opportunity defined by
metadata adaptively mapping said second insertion opportunity
to dynamic content defined by a set of asset options [6e] by
pointing to a rule of said rules repository that, in turn, points to
a selected one of said asset options of said asset library
depending on user inputs; and
3) a third insertion opportunity defined by
metadata mapping said third insertion opportunity to member
data [6f] by pointing to first member data of said member
information storage structure;
[7] receiving a second set of one or more user inputs at
said user input device, [7a] said second set of one or more user
inputs defining a plan type for said first marketing
communication;
[8] in response to said second set of one or more user
inputs, [8a] rendering at least some of said first template
versions including said subject template version having said
second metadata, and [8b] processing said second set of one or
more user inputs together with said second metadata to
adaptively link a selected one of said assets to said second
insertion opportunity based on said second set of one or more
user inputs;
[9] receiving a third set of one or more user inputs at said
user input device, said third set of one or more user inputs
defining multiple sets of members to receive versions of said
first marketing communication; and
[10] in response to said third set of user inputs, [10a]
generating multiple versions of said first marketing
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communication by inserting assets at said insertion
opportunities including, [10b] in the case of said subject
template version, inserting said fixed content into said first
insertion opportunity, [10c] inserting said dynamic content into
said second insertion opportunity, and [10d] inserting said
member data into said third insertion opportunity.

PATENT ELIGIBILITY
Principles of Law
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. v. CLS Bank Int’l, 573
U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If
it is determined that the claims are directed to an ineligible concept, then the
second step of the two-part analysis is applied in which it is asked “[w]hat
else is there in the claims before us?” Id. (alteration in original) (citation and
quotation marks omitted). The Court explained that this step involves
a 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.”
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Alice, 573 U.S. at 217–18 (alteration in original) (citing from Mayo, 566
U.S. at 75–77).
Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217
(citation omitted).
The PTO published revised guidance on the application of 35 U.S.C.
§ 101, USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Eligibility Guidance”) (throughout the decision, we cite to the Federal
Register where the Eligibility Guidance was published). This guidance
provides additional direction on how to implement the two-part analysis of
Mayo and Alice.
Step 2A, Prong One, of the Eligibility Guidance looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” Eligibility
Guidance, 84 Fed. Reg. at 53 (Step 2A, Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
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“inventive concept” to ensure that the claims define an invention that is
significantly more than the ineligible concept itself. Eligibility Guidance, 84
Fed. Reg. at 56.
With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

Discussion
Claim 19 is directed to a “method for developing marketing
communications for a healthcare entity.” A method is also a “process,”
which is one of the broad statutory categories of patent-eligible subject
matter listed in 35 U.S.C. § 101. Therefore, following the first step of the
Mayo/Alice analysis, we find that the claim is directed to a statutory class of
invention. We, thus, proceed to Step 2A, Prong One, of the 2019 Eligibility
Guidance.

Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely, whether the claim recites an
abstract idea, law of nature, or natural phenomenon. Each limitation in the
claim must be examined to determine whether it recites an abstract idea.
Eligibility Guidance, 84 Fed. Reg. at 54.
The Examiner found that the claims are directed to the abstract idea of
producing a marketing communication which involves “human implemented
steps and activities executed to construct a marketing communication.” Final
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Act. 6. The Examiner found this concept to be a method of organizing
human activity, defined in the Eligibility Guidance as “marketing or sales
activities or behaviors . . . in the form of generated a targeted marketing
document” and also “managing personal behavior or relationships or
interactions between people (e.g., following rules or instructions in the form
of generating and executing rules to insert variable text into a template
document).” Final Act. 6 (emphasis omitted) (quoting from Eligibility
Guidance, 84 Fed. Reg. at 52). The Examiner also found steps [3] and [8] of
the claim, “of identifying locations or opportunities for inserting text of data
into a document based on rules which direct the insertion of the text or data,”
to be “determination/analysis steps which are practicable/performable by the
human mental processing or by a human using pen and paper.” Final Act. 8.
Appellant contends the claim does not recite a judicial exception, but
did not address specifically the Examiner’s findings that the claims recited a
method organizing human activity and comprises steps that could be
performed in the mind of a human. Appeal Br. 12.
Appellant also cites Ex Parte Fanaru (PTAB Jan. 22, 2019)
(Appeal 2017-002898; Application 13/287,831) as supporting patent
eligibility of the claimed subject matter. Appellant explaines that in Fanaru:
“collecting usage information” from devices connected to a
computing system is not an abstract idea. In particular, collecting
usage information was not a mathematical concept, identified
method of organizing human activity, or a mental process.
Appeal Br. 12.
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First, Ex parte Fanura is not a precedential or informative PTAB
decision.2 Therefore, PTAB has not been directed to follow its guidance.
Second, the Examiner in this present appeal is not describing the steps
involving gathering information (“collecting . . . information”) as reciting a
judicial exception. The Examiner specifically identified the rules in step [3]
and the template rendering in step [8] to produce a marketing
communication as being part of the abstract idea of organizing human
activity. Furthermore, it has been held repeatedly that “mere ‘[data-
gathering] step[s] cannot make an otherwise nonstatutory claim statutory.’”
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (2011)
(citing In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re
Meyer, 688 F.2d 789, 794 (C.C.P.A. 1982))).
As explained below, we agree with the Examiner’s determination that
claim 19 recites an abstract idea. In general terms, the claim is directed to a
method in which various types of information are gathered (“building”
steps [2]–[4]) and then a marketing communication template is selected (step
[5]), which is rendered into different versions using static and dynamic rules
(from step [3]) and data (step [6]) which link the information to specific
locations in the template (“insertion opportunities”). A market
communication targeted at members of the healthcare plan is generated
(step [10]) using the templates. The steps are explained below.
The claimed method is for generating marking communications for a
healthcare entity. The method starts with digital templates for a set of
marketing communications. Each of the templates is recited in the claim to

2 https://www.uspto.gov/patents/ptab/precedential-informative-decisions
(last accessed May 4, 2021).
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define [1a] “structured repository of insertion opportunities for inserting
media assets such that the inserted media assets collectively define a
marketing communication.” The term “insertion opportunity” is not defined
in the Specification, but it is illustrated in the Figures of the Specification as
a region of a template where a media asset is to be inserted. A portion of
Figure 27 of the Specification is copied below showing insertion
opportunities:

In Figure 27 copied above, each of 302–310 point to an “insertion
opportunity” which is a region or box in the “Template – New Demo
ANOC” where “media assets” are inserted. A “media asset,” as described in
the Specification, can be “e.g., content blocks, disclaimer language, copy
blocks, images or graphics, data files” that represent information inserted
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into the template at 302–310. Spec. 8:3–4; 31:2–11.3 Figure 27 is an
example of a template for a marketing communication.
In step [2] of the claim, an asset library of the media assets is built.
The library has a “segregated storage structure” with separate storage spaces
for different media types. To illustrate this structure, Appellant provides a
Figure in the Appeal Brief showing the media types segregated into different
compartments. Appeal Br. 6. However, this structure is not described or
illustrated in the Specification. Appellant points to page 31, lines 1–12, of
the Specification for support for this feature (Appeal Br. 2), but this
description in the Specification does not disclose a specific storage structure.
In step [3] of the claim, a “rules repository” is built. The rules are “for
linking insertion opportunities to assets.” Figure 27, reproduced above,
shows examples of rules inserted at 302–310. For clarity, a portion of
Figure 27 is copied below:

The portion of Figure 27 copied above illustrates an insertion
opportunity below the column labeled 2010. A rule, obtained from the rule

3 “Exemplary assets include graphics, images, logos, creative content, copy
content, disclaimer blocks, header blocks, footer blocks, data or crosswalk
files containing, for example, payer, plan, and/or member information (e.g.,
CSV data files, XML schemas), and so on.” Spec. 31:2–5.

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repository, is located in the box (“[[RuleId=(DemoTestRule)(F110)]]”) for
inserting information about the “Monthly Premium” into the template. The
Specification explains:
For example, each of the rule insertion opportunities 302–
314 of the template 300 identify the rule “DemoTestRule,” which
points to a data file asset [in the claimed “asset library of media
assets”] containing plan information related to the Medicare
Advantage 2010 plan. Further, each of the rule insertion
opportunities 302–314 are mapped to different variables stored
within the applicable data file. For example, throughout the
template 300, the rule insertion opportunities 302–314 map to
variables FNAME, F110, F211, F210, F211, F310, F311,
respectively. Each of these variables corresponds to a variable
set forth within the Medicare Advantage 2010 data file to which
the rule “DemoTestRule” points.
Spec. 33:16–23.
In other words, the insertion opportunity shown above in Figure 27 is
the box where the information for the “Monthly Premium” is inserted. The
bracketed rule in the box points to a media asset in the [2] “asset library of
media assets for insertion into said templates” of step [2] of the claim.
Step [3] further recites that the insertion opportunities can be [3a]
“statically linked” to a predefined assert or [3b] “dynamically linked” to
assets. The static link, as we interpret it, can be a rule linking to, for
example, a logo which does not change. A dynamic link can be information
that changes depending on the health care plan, such as monthly premiums,
copays, or other information which differs between plans. This information
also may change depending on the year, the month, etc., and thus may
require finalizing when the marketing brochure is actually to be mailed.
The claim does not recite how the rules accomplish the static and
dynamic linking. The Specification discloses an “XML tag structure” as one
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way of implementing custom content, but this structure is not recited in the
claim and the Specification does not explain how it would work in the
context of the claimed method for linking static and dynamic content. See
Spec. 13:23–28. In fact, the terms “static” and “dynamic” do not even appear
in the Specification. The Appeal Brief points to disclosure in the
Specification for support for such rules, but none of the description that
Appellant guides us to explain dynamic or static rules, or how they would be
technically implemented. See Appeal Br. 3.
A member information storage structure is built in step [4] containing
information about members. The information can be used to personalize the
marketing communication, such as member name, mailing address, and plan
numbers (Spec. 19:29–31). The claim does not recite any specific structural
requirement of the “member information storage structure.”
Steps [1]–[4] of “digitally rendering” and “building” are essentially
“data-gathering” steps which gather templates, media assets, rules, and
member information that are used in the subsequent steps of the claim.
In the next steps of the claim, a user specifies a first media type for the
first marketing communication (step [5]), and in response, a first template is
identified (step [6a]) and “branching logic” is executed “to render a set of a
plurality of first template versions each linked with a first storage space
associated with said first media type” (step [6b]). None of the citations to the
Specification identified by Appellant as support for these steps use the
phrase “branching logic” or explain its meaning. See Appeal Br. 3. We
interpret the “branching logic” to be the computer processor logic
(Spec. 4:7–11) that renders a template which contains each of 1), 2), and 3)
recited in step [6]. 1) is fixed content common to all templates obtained from
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the library of step [2]; 2) is dynamic content specified by a rule in the rule
repository of step [3]; and 3) is member information from the member
information of step [4]. 1), 2), and 3) are the insertion opportunities, i.e., the
specific box or region of the template where the information needs to be
inserted. See Fig. 27 copied above showing insertion opportunities 304–310.
The specific assets (information, data, media) are not inserted in
step [6], but rather the rules which specify what content will be used in a box
(“insertion opportunities”) is added. Links, therefore, are created in the
marketing communication templates of step [1] between the information
gathered in steps [2]–[4] to the insertion opportunity in the template where
the information is to be inserted. This step is said by the claim to “render”
the templates.
We consider steps of [5] and [6] to be part of the method of
organizing human activity because they are integral to creating the
marketing communication which is to be sent to members of the healthcare
entity.
Steps [5] and [6] could be accomplished by a human making the
choices of what information to put in a specific block on template and then
finding that information from a data source, such a text file, media file, etc.
These steps, therefore, read on a mental process, which is another category
of abstract ideas. Eligibility Guidance, 84 Fed. Reg. at 52. Although step [6]
uses terms such as “metadata” mapping, we consider this type of action to be
merely automating by a computer a step that a human could perform by
mentally determining which assets need to be inserted in the appropriate
block in the template. With respect to Figure 27 copied above, a human
would determine a rule for what monthly premium needs to be inserted into
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the appropriate block of the template for the 2010 Health Care Plan,
depending on the various variables that the human would know to take into
consideration when building a template.
In step [7], the user inputs a choice of “plan type,” and in response,
the first templates which are rendered in step [6] are further rendered with
“second metadata” which “adaptively link[s] a selected one of said assets to
said second insertion opportunity based on said second set of one or more
user inputs” (step [8]). The second insertion opportunity is the 2) dynamic
content of step [6]. In other words, the template is being further modified by
adding data relating to the plan type and linking this to the dynamic content
also ready present in the template. The template now contains metadata
associated with the plan type. This step could also be performed by a human
where a human links the data associated with the “plan type” with the
dynamic content by deciding what plan data needs to be inserted into the
template, depending on the various types of plan types available to a
consumer. Step [7] therefore also covers a mental process.
User inputs are received in the step [9] of the claim defining members
who will receive the different versions of the template. In response, multiple
version of the “marketing communication” are [10a] generated by inserting
the assets at the insertion opportunities, including the fixed content, dynamic
content, and member data. Step [10] of the claim is the last step in which the
marketing communication is actually made. This step is part of the method
of organizing human activity because it is actually producing the marking
communication which is used in the marketing activity, e.g., for sales or
advertising. Humans ordinarily prepare marketing communications using
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data. Therefore, this step could be performed by a human using pen and
paper.
Because we find that steps [5]–[10] of the claim recite an abstract
idea, we proceed to the next step in the analysis of determining whether the
abstract idea is integrated into a practical application.

Step 2A, Prong Two
Prong Two of Step 2A under the Eligibility Guidance asks whether
there are additional elements that integrate the exception into a practical
application. We must look at the claim elements individually and “as an
ordered combination” to determine whether the additional elements integrate
the recited abstract idea into a practical application. As explained in the
Eligibility Guidance, integration may be found when an additional element
“reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field” or “applies or uses the
judicial exception in some other meaningful way beyond generally linking
the use of the judicial exception to a particular technological environment,
such that the claim as a whole is more than a drafting effort designed to
monopolize the exception.” Eligibility Guidance, 84 Fed. Reg. at 55.
Appellant describes the steps of building an asset library, building a
rules repository, building information, and rendering templates, and
generating communication versions as integrating the abstract idea into a
practical application. Appeal Br. 5–10 (we understand these steps to refer to
steps [2], [3], [6], and [10] of claim 19). The question is whether any of the
steps provide an additional element which “reflects an improvement in the
functioning of a computer, or an improvement to other technology or
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technical field.” Eligibility Guidance, 84 Fed. Reg. at 55. Appellant
discussed the various steps in separate sections. We address each below.

Asset library (Appeal Br. 5)
Appellant argues that the “asset library” “defines a specific data
structure that improves the efficiency of the versioning tool.” Appeal Br. 6.
The data structure recited in the claim is segregating the different assets by
media type (step [2] of claim 19). The claim does not describe the nature of
the different “storage spaces” recited in the claim, e.g., the type of file or the
way the media is stored in the spaces. Appellant points to disclosure in the
Specification as support for the claim limitation, but none of the referenced
disclosures describes the structure of the asset library and the storage places.
Appeal Br. 2. Appellant does not explain how segregating media by media
type, such as placing text in one file and graphics in another file, provides an
improvement to the claimed method nor how it is different from how media
types are ordinarily stored when a human is making a media communication.
The claims are distinguishable from patent-eligible claims reciting
specific computer storage structures. For example, in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016), the claims were
found to recite patent eligible subject matter because “the self-referential
table recited in the claims on appeal is a specific type of data structure
designed to improve the way a computer stores and retrieves data in
memory.” See also Visual Memory LLC v. NVIDIA Corp., 867 F.3d 1253,
1259 (Fed. Cir. 2017) (“Our review of the ’740 patent claims demonstrates
that they are directed to an improved computer memory system, not to the
abstract idea of categorical data storage.”). Here, Appellant has not
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explained how the “segregated storage structure” of step [2] of claim 19
provides a technical improvement in the same way provided in Enfish and
Visual Memory. Thus, we are unpersuaded by Appellant’s evidence that the
structure of the asset library provides a technological improvement to the
abstract idea.

Rule repository (Appeal Br. 6)
Appellant also identifies the rule repository of step [3] as integrating
the abstract idea into a practical application. Appellant explains that rules
repository built in step [3] of the claim includes rigid and dynamic mapping.
Appeal Br. 7. The term “rigid” does not appeal in the claim, but we
understand it to be a reference to the rules that “statically link” (step [3a])
and provide fixed content (step [6], 1) (the claim does not actually recite that
the static link corresponds to the fixed content, but we understand the claim
to encompass such equivalence). We understand Appellant’s reference in the
Appeal Brief to dynamic mapping to mean the “dynamically linked”
rules/links in step [3b] and the dynamic content of step [6], 2). Appellant
states that the use of such rules facilitates “a very large number of versions”
to be “efficiently and accurately generated and may include content that is
being revised and approved up to the last minute.” Id.
We are not persuaded by this argument that the rule repository and the
use of the rules provides a technical improvement. As explained above, and
not rebutted by Appellant, a human, using pen and paper, could create the
template manually by determining what content needs to be inserted into the
template. For example, the human would know that a logo for the health
entity is fixed content and that copays, monthly premiums, etc., may vary
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between different plan types and members, and therefore would require a
dynamic rule at the time the marketing communication was actually
generated to insert the appropriate media. For example, the dynamic rule
might point to a copay file that may be updated periodically to reflect the
current copay schedule.
The claim does not specify how the rules in the repository are
formulated, how they are inserted into the template (step [6]), or how the
computer uses the rules to insert the content in the template to generate the
marketing communication (step [10]). The claim states the result, but not
how the result is achieved. There is no mechanism recited that dictates how
to achieve the result recited in these steps to convert the recited abstract idea
into a practical application. As explained Dropbox, Inc. v. Synchronoss
Technologies, Inc., 815 F.App’x. 529, 533 (Fed. Cir. 2020)
(nonprecedential):
The patent has to describe how to solve the problem in a manner
that encompasses something more than the “principle in the
abstract.” See [ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d
759, 769 (Fed. Cir. 2019)] (explaining that an invention may not
be patent eligible if the “claims ‘were drafted in such a result-
oriented way that they amounted to encompassing the ‘principle
in the abstract’ no matter how implemented’” (quoting Interval
Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1343 (Fed. Cir.
2018))).
Although it may be more efficient and accurate to use a computer to
insert information, automating a task on a computer that a human can
perform does not confer eligibility on a claim. See Credit Acceptance Corp.
v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“mere automation
of manual processes using generic computers does not constitute a
patentable improvement in computer technology”).
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Member information (Appeal Br. 7)
Step [4] of clam 19 is “building a member information storage
structure of member information for insertion into said templates to
personalize said marketing communications for individual members.”
Appellant cites to this step of the claim as providing a solution to the
problem document management (Appeal Br. 5), but does not identify a
technical improvement as to how the member information is stored or
applied in the later steps of the claim. Compare Enfish and Visual Memory.
Consequently, we find this unpersuasive.

Rendering templates (Appeal Br. 8)
As explained above, in rendering the templates, “branching logic” is
executed “to render a set of a plurality of first template versions each linked
with a first storage space associated with said first media type” (step [6b]).
In the absence of disclosure in the Specification, we interpreted “branching
logic” (supra at 12) to be the computer processor logic that renders a
template with 1) the fixed content common to all templates obtained from
the library of step [2]; 2) the dynamic content specified by a rule in the rule
repository of step [3]; and 3) the member information from the member
information of step [4].
There is no explanation provided by Appellant, nor that we have been
guided to in the Specification, that explains how the branching logic is
implemented to accomplish step [6] of the claim. The claim recites where
the information comes from which is inserted into the templates. Appellant
does not explain, however, how inserting information/data/assets from
different sources provides a technical improvement (Appeal Br. 9), when a
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human can manually, and using “evaluation” and “judgement” (Eligibility
Guidance, 84 Fed Reg. at 52), identify and determine rules and content to be
inserted into the template. As explain above with respect to Figure 27, a
human could determine a rule for what monthly premium needs to be
inserted into the appropriate block of the template for the 2010 Health Care
Plan, depending on the various variables that the human would know to take
into consideration when building a template. This step is, therefore, a mental
process and part of the abstract idea. Although the step has been automated
using the rule-based approach, “[c]ourts have examined claims that required
the use of a computer and still found that the underlying, patent-ineligible
invention could be performed via pen and paper or in a person’s mind.”
Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015); Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1318 (Fed Cir. 2016) (“Furthermore, with the exception of
generic computer-implemented steps, there is nothing in the claims
themselves that foreclose them from being performed by a human, mentally
or with pen and paper.”). Accordingly, we find that automating the process
is insufficient to confer patent-eligibility on the claim.
In addition, step [6] is recited in a “results-oriented” way by
describing the desired result of producing templates using branching logic,
but not reciting how the step is technically implemented. Accordingly, we
find that this step does not provide an improvement to a technology or
technical field.

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Generating communicating versions (Appeal Br. 9)
With respect to the last step recited in claim 19 in which the
marketing communication is generated, Appellant states that “the cumulative
effect of providing multiple templates, multiple template versions, and
multiple insertion opportunities that include fixed content, dynamic content
and member information is that a large number of highly customized
communication versions can be generated.” Appeal Br. 10. Appellant
attributes this to the “static and dynamic links,” which “together with the
rules repository — allows these versions to be generated efficiently and
accurately.” Id. We have addressed already how the usage of the rules, rule
repository, and templates is simply automating what a human ordinary does
in creating marketing templates and communications. The claim does not
provide a specific technical solution to how the automation is accomplished.

Does the claim improve the function of a computer? (Appeal Br. 12)
Appellant argues that the steps recited in the claim improve the
functioning a computer. Appellant states the “static and dynamic links
embedded in insertion opportunities of a template version, the invention
allows users to efficiently and accurately generate large numbers.” Appeal
Br. 13–14.
We do not agree that the recited rules provide an improvement to a
technology or technical field. The rules, in essence, provide a way of
populating a template with specific content by using a rule that links an asset
library and member information to a location on a template. See Spec. 13
(“developing a mapping structure for use in populating the items of custom
content based on the variables”). Some of the content is fixed. Some of the
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content is variable and requires dynamic adjustment when the marketing
communication is generated. The Specification discloses that XML tag
structure may be used in the mapping. Spec. 13:25–26. The concept of using
XML to extract information and populate a loan application (“wherein the
loan application data is in an Extensible Markup Language (XML) format,
configured to automatically extract the loan application data”) was
considered in Mortgage Application Technologies, LLC v. MeridianLink,
Inc., 839 F.Appx. 520, 526 (non-precedential) and found to not “rise to the
level of improving technological infrastructure or providing solutions to
challenges particular to loan application processing” because all it did was
increase the speed and efficiency of the process. As explained in Mortgage
Application Technologies:
Claim 1, for example, describes a process in which data is
received in one format, automatically extracted, compared to a
set criteria, populated into a second document, and then stored
for and retrieved by a user. The specification further supports this
conclusion by stating that an objective of the claimed technology
is to “automatically take loan application data,” “populate” a
database, inclusive of a PDF with that data, and then
“automatically migrate[ ] the data” to a source “all by automatic
message queuing which keeps all interested parties advised.”
J.A. 36, 3:52-61. The entire focus of the claims are to
“facilitate[ ] the flow of information throughout the mortgage
lending process.” J.A. 36, 3:30-31.
Id. at 525 (brackets in original).
Likewise, in rejected claim 19, the static and dynamic rules used to
insert fixed and dynamic content are simply automating, using generic tools,
what a human would ordinary do. The claims do not recite a specific
technical solution to how the assets (and other information) are mapped from
the asset library to the location in the template (“insertion opportunity”)
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where it is to be inserted. Appellant did not provide evidence that the
mapping, itself, and how it is used to populate the template, provides a
technical improvement to how the marketing communication is generated.
Appellant contends that the claims should be found patent-eligible for
the same reasons as Data Engine Technologies LLC v. Google LLC, 906
F.3d 999 (Fed. Cir. 2018). In Data Engine, the claim was “directed to a
specific method for navigating through three-dimensional electronic
spreadsheets.” Data Engine, 906 F.3d at 1007–1008. The court found that
the claim solved the “technological problem” of navigating through three-
dimensional spreadsheets on a computer “by providing a highly intuitive,
user-friendly interface with familiar notebook tabs for navigating the three-
dimensional worksheet environment.” Id. at 1008. The graphical interface in
Data Engine comprised a “spreadsheet page identifier being displayed as an
image of a notebook tab on said screen display” which continued to be
displayed to a user when a second spreadsheet was displayed. This
configuration was an improvement because it allowed the user to navigate
through multiple “through the various spreadsheet pages through selection of
the notebook tabs.” Id. The graphical interface therefore was not merely the
presentation of spreadsheets on a display screen, but also provided a
functionality that enabled a user to navigate through multiple spreadsheet
pages.
Although we agree that the rules in the rule repository provide a
function as do the page identifiers in Data Engine, the difference is that the
identifiers in Data Engine solved a technology problem in electronic
spreadsheets, while the rules in claim 19 merely replace what a human
would ordinarily do using generic technology.
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Appellant also states that the claim are patentable for the same reason
as in the non-precedential, non-informative PTAB case Ex Parte Haiyan
(PTAB Oct. 18, 2016) (Appeal 2013-002268, Application 12/733,914) in
which patent eligibility under § 101 because the claim was found to be
directed to “‘an improvement designed to address a shortcoming in
conventional practice and achieve an improved technological result.’”
Appeal Br. 14.
Here, Appellant argues that the shortcoming is in document
management:
This results in an incredibly difficult document
management problem under tremendous pressure. The
healthcare company typically has many plans with many
variables (e.g., coverage limits, co-pays, deductibles, etc.) and
many members. Different changes apply to different subsets of
documents and some are variable. Moreover, various disclaimers
and other language are dictated by regulations and the language,
as well as its application to plans, may change from time to time.
Thus, the healthcare company is confronted with a bewildering
array of document versions, sometimes little time between
obtaining regulatory approvals and the document deadlines, and
unforgiving requirements for accuracy and timeliness.
Appeal Br. 5.
The asserted solution is to substitute rules that map assets and other
information to a specific location in a template document. We have already
explained why these rules do not rise to the level of technical solution.
Appellant states that “the conventional process for generating these
communications was largely a manual process” involving “conventional
word processing tools to find and replace specific content.” Appeal Br. 10.
Appellant asserts that the “conventional process did not involve structured
content, let alone rules-based and hierarchical processes for generating
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versions” that “solves a complex document management problem.” Id.
at 10–11. However, the only solution reflected in the claim is replacing the
manual method of finding and replacing content by using rules that map
content to locations in the document. Appellant does not even point to a
specific limitation in the claim which corresponds to the so-called
hierarchical process.
Because we find that the abstract idea is not integrated into a practical
application under Step 2, Prong Two, we proceed to Step 2B of the analysis.

Step 2B
Step 2B of the Eligibility Guidance asks whether there is an inventive
concept. In making this Step 2B determination, we must consider whether
there are specific limitations or elements recited in the claim “that are not
well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present” or whether the claim
“simply appends well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality, to the judicial
exception, which is indicative that an inventive concept may not be present.”
Eligibility Guidance, 84 Fed. Reg. at 56 (footnote omitted). It also must be
considered when the combination of steps operated in an unconventional,
even when the step when considered alone does not. Id.
Under the 2B analysis, Appellant argues that “the use of static links,
dynamic links, and member data to populate insertion opportunities of a
template version is not well-understood, routine, or conventional in the
field” and provide an inventive concept. Appeal Br. 15. In the Reply Brief,
Appellant further cites to the “segregated storage structures, a rules
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repository, and document versions that include insertion opportunities with
metadata linked to static and dynamic content” as not being conventional or
routine. Reply Br. 5–6.
The Specification does not indicate that the elements in the claim
cited by Appellant provide an inventive concept as required under Step 2B.
For example, in describing how the claimed system works to produce a
marketing communication, the Specification explains:
When prompted, the system 50 maps the appropriate
variables from the Medicare Advantage 2010 data file to the rule
insertion opportunities 302-314 within the template 300 to form
a first ANOC version 316 that is customized for the Medicare
Advantage plan, as shown in Figure 28. In this regard, the system
50 may be used to create multiple versions of a template
document with a few clicks of a button. For instance, the
template 300 could also be versioned for the Medicare Part D and
HMO plans as well. This level of customization has typically
been implemented manually, costing thousands of dollars in
man-hours to create multiple versions of a document.
Spec. 33:24–31.
There is no evidence that the storage of assets and member
information recited in steps [2] and [4] are unconventional. As already
explained, the claim does not recite a specific structure for how the asset is
stored other than by media type, which appears to be conventional, namely,
by segregating graphics and text into different files. Consistently, the
Specification discloses that the system “may assemble one or more assets
stored in a memory structure of the system to form or customize the
template,” indicating that the conventional memory of a computer can be
used as the storage structure. Spec. 9:25–26; see also Spec. 31:1–5.
With respect to the rule repository, and the mapping rules, themselves,
as already explained, the only technique disclosed in the Specification for
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using these rules to populate the template is using XML tag structure (Spec.
13:25), which the evidence indicates was known prior to the application’s
filing date. See Mortgage Application Technologies. The claim, however,
does not even recite how the rules accomplish the mapping nor how they
link to the asset library, rule repository, and member information. The
concept of extracting information from these sources cannot be considered
inventive because, as explained above, the steps of the claim in which the
rules are used to populate the templates could be accomplished by a human
using pen and paper, and therefore include the abstract idea, itself, and not
an additional element of the claim.
For the foregoing reasons, we affirm the rejection of claim 19 as
lacking patent eligibility. Claims 20–28 were not argued separately and,
therefore, fall with claim 19.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
19–28 101 Eligibility 19–28

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED