Feria, Erlan H.

Patent Trials and Appeals Board

Jan 14, 2020

14243149 - (D) (P.T.A.B. Jan. 14, 2020)

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.
14/243,149 04/02/2014 Erlan H. Feria 01305.0001US03 2566
127289 7590 01/14/2020
Schmeiser, Olsen & Watts, LLP/RO
Schmeiser, Olsen & Watts, LLP
11 Schoen Place, 7th Floor
Pittsford, NY 14534
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/14/2020 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):
RO127289@iplawusa.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_____________

Ex parte ERLAN H. FERIA
_____________

Appeal 2019-002715
Application 14/243,149
Technology Center 3600

Before RICHARD M. LEBOVITZ, JEFFREY N. FREDMAN, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal1,2 under 35 U.S.C. § 134 involving claims to a
computer-implemented method for adjusting a life insurance premium for an
adult. The Examiner rejected the claims as directed to non-statutory subject
matter. 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 the inventor,
Erlan H. Feria (see App. Br. 3).
2 We have considered the Specification of Apr. 2, 2014 (“Spec.”); Non-Final
Office Action of Sept. 21, 2017 (“Non-Final Act.”); Appeal Brief of Oct. 22,
2018 (“Appeal Br.”); and Examiner’s Answer of Nov. 19, 2018 (“Ans.”).

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Statement of the Case
Background
“Life insurance premiums are calculated based on a variety of
parameters including the individual’s demographic data and their medical
history including their weight.” (Spec. ¶ 2). “Unfortunately, the actuarial
tables used by insurance companies only correlate some variables which are
currently believed to impact life expectancy. Additional medical studies
have discovered new variables that the current tables fail to consider” (id.
¶ 3). “The life expectancy calculations described herein consider the ratio
of the individual’s mass to their nutritional consumption rate” (id. ¶ 10).
The Claims
Claims 1–14 and 21–25 are on appeal. Claim 1 is representative and
reads as follows:
1. A computer-implemented method for adjusting a life
insurance premium for an adult, the method comprising the
steps of:
inputting, into a computer, information about an adult’s
mass (MA) and the adult’s mass at the end of childhood
(Mchildhood);
inputting, into the computer, information about the
nutritional consumption rate (ΔMA) for the adult;
inputting, into the computer, an age (A) for the adult;
establishing a value for nutritional consumption rate as a
child (ΔMchildhood) based on the adult’s mass at the end of
childhood (Mchildhood); and
calculating, using the computer, a compression factor
(CFA) that accounts for a ratio of the adult’s mass (MA) to the
nutritional consumption rate (ΔMA) according to:
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where Δτ is a conversion factor for converting the
nutritional consumption rate to years, τchildhood is a childhood
lifespan in years;
adjusting, using the computer, a life insurance premium
using the compression factor (CFA).

The Rejection
The Examiner rejected claims 1–14 and 21–25 under 35 U.S.C. § 101
as directed to non-statutory subject matter (Non-Final Act. 2–6).
The Examiner finds the claims are “directed to the abstract idea of
adjusting a life insurance premium for an adult” (Non-Final Act. 3).
Appellant contends “the claimed method improves the technical field
of life insurance calculations by evaluating the ratio of mass to nutritional
consumption rate, thereby accounting for factors that are traditionally
ignored” (App. Br. 7). Appellant contends “confining the scope of the
claims to a particular application qualifies as ‘significantly more’ because it
is a meaningful limitation. The claims at issue specifically recite the method
is confined to the field of life insurance. The selection of this feature for
inclusion in the claims was not arbitrary and, instead, constitutes a
meaningful limitation” (id. 8).
All of the rejected claims are argued together as a group. As such, we
select claim 1 as representative of the rejected claims, and we decide the
appeal of the rejection of all of the rejected claims on the basis of claim 1.
See 37 C.F.R. § 41.37(c)(1)(iv).
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The Alice Test
The Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine if there is a judicial exception. “If a claim is directed
essentially to a method of calculating, using a mathematical formula, even if
the solution is for a specific purpose, the claimed method is nonstatutory.”
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351
(Fed. Cir. 2014).
If the claim is “directed to” a judicial exception, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted).
Guidance
The United States Patent and Trademark Office published guidance
on the application of 35 U.S.C. § 101. USPTO’s 2019 Revised Patent
Subject Matter Eligibility Guidance (“Guidance”).3 Under the Guidance, in

3 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50–57 (January 7, 2019).
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determining what concept the claim is “directed to,” we first look to whether
the claim recites:
(1) any judicial exceptions, including “[l]aws of nature,
natural phenomena, and abstract ideas,” (quoting Alice, 573
U.S. at 216) and/or 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) (Guidance Step 2A, Prong 1); and
(2) additional elements that integrate the judicial
exception into a practical application (see MPEP § 2106.05(a)–
(c), (e)–(h)) (Guidance Step 2A, Prong 2).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim contains an “‘inventive concept’ sufficient to ‘transform’”
the claimed judicial exception into a patent-eligible application of the
judicial exception. Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 82).
In so doing, we thus consider whether the claim:
(3) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine and
conventional in the field” (see MPEP § 2106.05(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.
(Guidance Step 2B). See Guidance, 84 Fed. Reg. at 54–56.
Guidance Step 1
First, under “Step 1,” we consider whether the claimed subject matter
falls within the four statutory categories set forth in § 101, namely
“[p]rocess, machine, manufacture, or composition of matter.” Guidance 53–
54; see 35 U.S.C. § 101. Claim 1 recites a “method” and, thus, falls within
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the “process” category. Consequently, we proceed to the next step of the
analysis.
Guidance Step 2A Prong 1
Second, under “Step 2A Prong 1,” we evaluate “whether the claim
recites a judicial exception, i.e., an abstract idea, a law of nature, or a natural
phenomenon.” Guidance 54.
In this case, claim 1 recites three judicial exceptions identified in the
Guidance. First, the natural phenomenon of lifespan being associated with
nutritional consumption rates and body mass. Second, the abstract idea of a
mathematical concept where claim 1 expressly includes an equation to
calculate a compression factor that is used to adjust life insurance premiums.
Third, the abstract idea of methods of organizing human activity where
claim 1 recites a fundamental economic practice involving a method for
adjusting life insurance premiums based on the history and physical
attributes of the customer. 2019 Guidance 52.
As to the natural phenomenon, the Specification explains that a study
showed “low-weight rhesus monkeys had the same life expectancy as higher
weight monkeys” and therefore
the ratio of the mass to the nutritional consumption rate
provides a quantitative measure of the stresses experienced by
the individual person’s body. For example, if two individuals
have equal mass (e.g. both 70 kg) the individual who consumes
more energy (while maintaining their weight) is experiencing
more metabolic strain. This results in reduced life expectancy
despite the controlled weight.
(Spec. ¶ 10). This relationship between nutritional consumption rate, stress,
and life expectancy is a natural phenomenon.
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To apply this natural phenomenon, the Specification is replete with
twenty-one different mathematical equations that define the mathematical
relationships between nutritional consumption rates and body mass (see
Spec. ¶¶ 5, 11, 14, 16–18, 21, 23, 25, 27, 30, 31, 33, 34, 37, 38, 40–42).
While the Federal Circuit has “recognize[d] that defining the precise abstract
idea of patent claims in many cases is far from a ‘straightforward’ exercise.”
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1150 (Fed. Cir.
2016), the Federal Circuit explained that “we continue to ‘treat[] analyzing
information by steps people [could] go through in their minds, or by
mathematical algorithms, without more, as essentially mental processes
within the abstract-idea category.’” Id. at 1146–47.
We find the natural phenomenon in claim 1 is similar to that in
SmartGene, where the Federal Circuit held that claims directed to
“comparing new and stored information and using rules to identify medical
options” did not satisfy Alice step one. See SmartGene, Inc. v. Advanced
Biological Labs., SA, 555 F. App’x 950, 951–52, 955–56 (Fed. Cir. 2014)
(nonprecedential). As in Smartgene, the mathematical equation recited in
claim 1 does not rely on an inventive device or technique for displaying
information or new techniques for obtaining biological or customer
information, but rather constitutes a recitation of steps for mathematically
manipulating data associated with a natural relationship between nutritional
consumption rates and body mass. See SmartGene, 555 Fed. Appx. at 954
(holding claims were patent ineligible because they did “no more than call
on a ‘computing device,’ with basic functionality for comparing stored and
input data and rules, to do what doctors do routinely.”).
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We also find that the mathematical relationship in claim 1 shares
features with the mathematical relationship in Bancorp Services, L.L.C. v.
Sun Life Assurance Co., 687 F.3d 1266 (Fed. Cir. 2012) where the claims at
issue were drawn to methods and systems for tracking the value of insurance
policies by computer. Just as the life insurance management method in
Bancorp identified data regarding the financial information to calculate
policy values, the instant claim 1 identifies data associated with natural
phenomenon of life span, nutrition, and body mass to calculate life insurance
premiums.
Moreover, these facts differ from the process of molding rubber
products in Diamond v. Diehr, 450 U.S. 175, 191 (1981). The claims in
Diehr recited a method for operating a rubber-molding press including the
step of “opening the press automatically when said comparison [of
calculated cure time vs. elapsed time] indicates equivalence.” See Diehr,
450 U.S. 179 n.5.
There is no step in claim 1 that is analogous to the Diehr step of
opening the press because claim 1 lacks any specific, practical physical act
in a particular technological environment. At best, claim 1 represents
naturally occurring data that is used in a mathematical analysis to organize
life insurance products. There is no final physical step analogous to opening
the press after curing is present. Instead, the final “adjusting” step in the
instant claims “tell the relevant audience about the laws while trusting them
to use those laws appropriately where they are relevant to their decision-
making.” Mayo, 566 U.S. at 78.
Lastly, the Specification acknowledges that it is a normal practice to
calculate insurance premiums “based on a variety of parameters including
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the individual’s demographic data and their medical history including their
weight” (Spec. ¶ 2). While the use of the natural relationship between
nutrition and life expectancy may have practical implications, it is also a
fundamental economic and conventional business practices to correlate
medical data with life expectancy (see id.). Such concepts are often held to
be abstract. See Alice, 573 U.S. at 2356 (holding the concept of
intermediated settlement is an abstract idea directed to a “fundamental
economic practice long prevalent in our system of commerce”) (citation
omitted); Content Extraction and Transmission LLC v. Wells Fargo Bank,
Nat. Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining claims directed
to “the mere formation and manipulation of economic relations” and “the
performance of certain financial transactions” have been held to involve
abstract ideas).
Appellant contends
the Office generalizes the claim to a degree that the newly-
mischaracterized claim no longer contains the inventive concept
itself. Enfish[, LLC v. Microsoft Corp., 822 F.3d 1327, 1335
(Fed. Cir. 2016)] specifically cautioned against generalizing the
claims to divorce them from the claim language itself because
“... describing the claims at such a high level of abstraction and
untethered from the language of the claims all but ensures that
the exceptions to § 101 swallow the rule.”
(App. Br. 7).
We are unpersuaded by Appellant’s reliance on Enfish. Enfish
explains that “the first step in the Alice inquiry in this case asks whether the
focus of the claims is on the specific asserted improvement in computer
capabilities . . . or, instead, on a process that qualifies as an ‘abstract idea’
for which computers are invoked merely as a tool.” Enfish, 822 F.3d at
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1335–6. Applied to claim 1, the claimed computer implemented method
does not teach a technical improvement in a computer processor or in the
electrical components of a computer for calculating life insurance premiums,
but rather uses the computer as a tool “to carry out the calculation of life
expectancy as described above and display the result on the monitor or the
printer” (Spec. ¶ 28).
That is, the current claims simply use the computer and software as
tools to perform the law of nature/natural phenomenon, mathematical
calculation and process of organizing human activity as performed by a life
insurance actuary. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1355 (Fed. Cir. 2016) (“[M]erely selecting information, by content or
source, for collection, analysis, and display does nothing significant to
differentiate a process from ordinary mental processes.”). Appellant does
not identify any teaching in the Specification that actually improves either
the computer or the physical components of the system.
Therefore, we find that claim 1 recites the judicial exceptions of
natural phenomenon/law of nature, mathematical concepts, and methods of
organizing human activity.
3. Guidance Step 2A Prong 2
Having determined that claim 1 recites a law of nature/natural
phenomenon, a mathematical concept, and a method of organizing human
activity, we proceed to “Step 2A Prong 2” of the Guidance, which requires
that we evaluate whether “the claim as a whole integrates the recited judicial
exception into a practical application of the exception.” Id. at 54. “A claim
that integrates a judicial exception into a practical application will apply,
rely on, or use the judicial exception in a manner that imposes a meaningful
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limit on the judicial exception, such that the claim is more than a drafting
effort designed to monopolize the judicial exception.” Id.; see Mayo, 566
U.S. at 78.
The Guidance specifies that this evaluation is conducted by first
“[i]dentifying whether there are any additional elements recited in the claim
beyond the judicial exception(s), [then] ‘evaluating those additional
elements individually and in combination to determine whether they
integrate the exception into a practical application.’” Guidance 54–55. The
Examiner determined that, aside from the recited judicial exceptions, claim 1
does “not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
elements are simply a generic recitation of a computer processor performing
its generic computer functions” (Ans. 5–6).
We agree with the Examiner even after considering Appellant’s
arguments, as explained further below.
Step 2A Prong 2 of the Guidance is a change from prior guidance
from the Office regarding § 101 that was in effect at the time Appellants
submitted their briefing in this appeal. See Guidance 54 (“Prong Two
represents a change from prior guidance.”). Nonetheless, as the Guidance
applies to applications filed before it was issued (id. at 50), we consider
arguments presented by Appellant addressing issues relevant to Step 2A
Prong 2.
Appellant contends
the claimed method improves the technical field of life
insurance calculations by evaluating the ratio of mass to
nutritional consumption rate, thereby accounting for factors that
are traditionally ignored. This is more than the mere calculation
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of a lifespan using a generic computer. Instead, the claims
utilize a previously unknown inventive concept - the ratio of
mass to nutritional consumption rate - as an additional element
of a lifespan calculation. The mere fact that the claim steps are
performed on a computer should not be dispositive of
patentability.
App. Br. 7.
We are not persuaded that the combination includes elements beyond
the judicial exceptions. Step 2A Prong 2 requires that only “any additional
elements recited in the claim beyond the judicial exception(s)” be
considered. Guidance 54–55 (emphasis added). As discussed above, the
relationship between mass, nutrition, and lifespan is a natural
phenomenon/law of nature and the mathematical method of calculating these
relationships are both subject matter falling under judicial exceptions to
§ 101. Thus, the only remaining elements recited in claim 1 are “inputting,
into a computer, information” and “adjusting, using the computer, a life
insurance premium.”
We note that “add[ing] insignificant extra-solution activity to the
judicial exception” is insufficient to integrate the exception into a practical
application (Guidance 55). Data gathering steps typically constitute such
insignificant extra-solution activity. See Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 79 (2012) (concluding that additional
element of measuring metabolites of a drug administered to a patient was
insignificant extra-solution activity); OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359, 1363 (Fed. Cir. 2015) (holding that mere data gathering is
insufficient to confer patent eligibility). Here, the “data gathering steps are
necessary prerequisites to using the law of nature in the mathematical
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relationship for organizing the human activity of life insurance (i.e., the
judicial exceptions).
Moreover, “generally link[ing] the use of a judicial exception to a
particular technological environment or field of use” is insufficient to
integrate a judicial exception into a practical application. Guidance 55. See
Parker v. Flook, 437 U.S. 584, 595 (1978) (determining that limiting an
ineligible alarm limit calculation to specific process variables in a chemical
process was insufficient for patent eligibility). Thus, limiting the analysis to
life insurance premiums alone does not integrate the law of nature and
mathematical relationships.
Nor did Appellant argue, much less demonstrate, that claim 1 “uses a
judicial exception to effect a particular treatment or prophylaxis for a disease
or medical condition,” implements or uses a judicial exception with “a
particular machine or manufacture that is integral to the claim,” or “effects a
transformation or reduction of a particular article to a different state or
thing.” Guidance 55; see MPEP 2106.05(a)–(c), (e).
For the above reasons, Appellant has not shown that the Examiner
erred in concluding that claim 1 does not integrate the recited judicial
exceptions into a practical application.
4. Guidance Step 2B
Having concluded that claim 1 recites judicial exceptions but does not
integrate them into a practical application—i.e., that the claim is “directed
to” those exceptions (Guidance 54)—we finally turn to whether the claim
provides an “inventive concept,” i.e., whether the additional elements
beyond the exceptions, individually and in combination, amount to
“significantly more” than the exceptions themselves. Id. at 56. According
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to the Guidance, “[a]dd[ing] a specific limitation or combination of
limitations that are not well-understood, routine, conventional activity in the
field” may indicate an inventive concept is present. Id. Conversely, “simply
append[ing] well-understood, routine, conventional activities previously
known to the industry, specified at a high level of generality,” typically
indicates an inventive concept is absent. Id.
We note that the Specification itself demonstrates that the actual
structural components being used in claim 1, the computing device and
processor, are well-understood, routine, conventional in the field (see Spec.
¶¶ 44–48, especially ¶ 47 “[t]hese computer program instructions may be
provided to a processor of a general purpose computer, special purpose
computer, or other programmable data processing.”).
As discussed above, we find that the only “additional” elements
recited in claim 1 are the “inputting” and “adjusting” steps. The Examiner
finds that “[n]othing in the claims, understood in light of the specification,
requires anything other than off-the-shelf, conventional computer, network,
and database technology” (Ans. 8). In addition, the Examiner found that:
the processor limitations do not add significantly more because
they are simply an attempt to limit the abstract idea to a
particular technological environment. A generic recitation of a
processor performing its generic computer functions does not
make the claims less abstract. Also the use of a particular
machine and transformation to a different state or thing are not
relevant to the instant application.
Ans. 8.
Appellant contends that
confining the scope of the claims to a particular application
qualifies as “significantly more” because it is a meaningful
limitation. The claims at issue specifically recite the method is
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confined to the field of life insurance. The selection of this
feature for inclusion in the claims was not arbitrary and,
instead, constitutes a meaningful limitation.
App. Br. 8.
We find these arguments unpersuasive for similar reasons as we did in
Step 2A Prong 2. The application of the abstract mathematical analysis of
natural phenomenon/law of nature relating nutrition, body mass, and lifespan
to the specific method of organizing human activity of life insurance
premium calculation does not add significantly more because “[a]dding one
abstract idea . . . to another abstract idea . . . does not render the claim non-
abstract.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed.
Cir. 2017). “A claim directed to an abstract idea does not automatically
become eligible merely by adding a mathematical formula. . . . The addition
of a mathematical equation that simply changes the data into other forms of
data cannot save it.” Id. at 1328.
Appellant points to no additional steps that could not be performed
mentally or without using a generic computer. The use of a generic
computer to perform generic computer functions that are “well-understood,
routine, conventional activit[ies]” previously known in the industry is not
enough to transform the abstract idea into a patent-eligible invention. See
Alice, 573 U.S. at 225–26.
Moreover, “merely limiting the field of use of the abstract idea to a
particular . . . environment does not render the claims any less abstract.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1259 (Fed.
Cir. 2016). That the natural phenomenon/law of nature and mathematical
concepts are limited to life insurance premiums does not meaningfully limit
these abstract ideas, particularly because life insurance premiums are
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routinely set by using mathematical calculations “based on a variety of
parameters including the individual's demographic data and their medical
history including their weight” (Spec. ¶ 2).
Thus, for the reasons explained above, we agree with the Examiner
that claim 1 “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality,” and, thus, fails to present an “inventive concept” because the
claim does not recite additional elements that provide “significantly more”
than the recited judicial exceptions. See Guidance 56. Therefore, we sustain
the Examiner’s rejection of claim 1 as ineligible subject matter under § 101.
As a result, we also sustain the rejection of claims 2–14 and 21–25 under
§ 101. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claim(s)
Rejected
Basis Affirmed Reversed
1–14, 21–25 § 101 1–14, 21–25

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

AFFIRMED