Jeffrey Killian

Patent Trials and Appeals Board

May 3, 2021

2020003680 (P.T.A.B. May. 3, 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.
14/450,042 08/01/2014 Jeffrey A. Killian KILLIAN.U1 3449
94488 7590 05/03/2021
Miracle IP
1020 Dennison Avenue
Suite 101
Columbus, OH 43201
EXAMINER
KAZIMI, HANI M
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
05/03/2021 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):
USPTO@dockettrak.com
info@miracle-law.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFREY A. KILLIAN
Appeal 2020-003680
Application 14/450,042
Technology Center 3600
Before MURRIEL E. CRAWFORD, HUBERT C. LORIN, and
MICHAEL L. WOODS, Administrative Patent Judges.1
CRAWFORD, Administrative Patent Judge.
DECISION ON REQUEST FOR REHEARING

STATEMENT OF THE CASE
The Appellant filed a Request for Rehearing (“Request”), pursuant to
37 C.F.R. § 41.52, on April 1, 2021, seeking reconsideration of our Decision
on Appeal mailed February 1, 2021 (“Decision”), in which we affirmed the
Examiner’s rejection of claims 1, 5–8, 12–15, 19, 20 and 22 under 35 U.S.C.
§ 101 as directed to an abstract idea without significantly more. We have
jurisdiction over the Request under 35 U.S.C. § 6(b).

1 The panel has changed because of the unavailability of two judges who
participated in the original Decision.
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We note at the outset that a Request for Rehearing “must state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52(a). A Request for Rehearing is not an
opportunity to rehash arguments raised in the Appeal Brief or in the Reply
Brief. Neither is it an opportunity to merely express disagreement with a
decision without setting forth points believed to have been misapprehended
or overlooked. Arguments not raised in the briefs before the Board and
evidence not previously relied on in the briefs also are not permitted except
in the limited circumstances set forth in §§ 41.52(a)(2) through (a)(4). Id.

DISCUSSION
The Decision
To recap, in the Decision we determined, under Step 2A, Prong One
of the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50, 50–57 (2019) (“Guidance”), that the claims recite a method that
specifies a search algorithm for identifying people who may be eligible for
SSDI benefits they are not receiving, which we determined could be
performed mentally by a human. Decision 9. Turning to Prong Two of Step
2A of the Guidance, we found that, in addition to this abstract mental
process, the claim recites additional elements, specifically steps (b) and (c)
(“providing access,” “generating a data collection input screen display,” and
“inputting”), steps (d) and (f) (“retrieving”), step (e) (“creating an electronic
data record”), and step (h) (“indicating in the electronic data record”). Id.
at 11–12. We concluded that steps (e) and (h) merely provide output of the
results of the search algorithm, and are thus “output steps,” and that the
remainder of these “additional elements” are steps that involve “receiving
data,” and are thus “data gathering” steps. Id. at 12.
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In addition, we stated:
Taking the claims as a whole, and setting aside the abstract
idea steps and insignificant extra-solution activity, we are left
with the non-insignificant (for purposes of Prong Two)
“additional elements” of the claim. . . . The “additional elements”
in claim 1 for use in Prong Two, therefore, are as follows:
(a) providing a computer processor and a computer
readable media;
(g) . . . through the computer network;
(a) providing a caseworker display system;
(c) . . . electronic (data record)
(e) . . . electronic (data record).
Decision 12. Considering these “additional elements,” we determined “the
claimed method does not improve another technology,” “does not define or
rely on a ‘particular machine,’” “does not transform matter[,] . . . has no
other meaningful limitations . . ., and thus merely recites instructions to
execute the recited judicial exceptions on a computer as a tool.” Id. at 13.
We concluded that, therefore, “based on the guidelines articulated in the
Guidance and MPEP, we determine that claim 1 does not integrate the
recited judicial exceptions into a ‘practical application.’” Id.
At Step 2B, we considered whether alone or in combination any
“additional elements” (which we stated included “the data gathering and
output elements” and “a ‘computer processor,’ ‘computer readable media,’
‘computer network,’[] ‘caseworker display system,’ electronic form of data
record on a computer, the access to and retrieval from electronic data storage
records, and input of data into electronic data storage records”) are not well-
understood, routine, conventional activity in the field and, thus, indicative of
an inventive concept. Id. at 14. We decided that the “additional elements”
merely involve “storing, analyzing, receiving, and writing data are primitive
computer operations found in any computer system,” and that “claims
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involving data collection, analysis, and display are directed to an abstract
idea.” Id. at 14–15. Based on this, we did “not discern anything in claim 1
that provides an ‘inventive concept,’” because these normal computer
operations in the “additional elements” are well-understood, routine, and
conventional. Id. at 15. Overall, we concluded “the claims are directed to
abstract mental processes, which do not integrate the processes into a
‘practical application,’ and which do not recite an ‘inventive concept.’” Id.
Because the Appellant framed their arguments as directed to the three
independent claims, we selected claim 1 as representative. Decision 6
(citing Appeal Br. 19–33).
Section III(A)2
The Appellant argues “the process as a whole, defined by each of the
claims, cannot be performed by human thought alone and is therefore not an
abstract idea.” Request § III(A).
Although we repeatedly cited to the “Guidance,” the Appellant has
misunderstood how we applied the analysis, established by our reviewing
courts, and articulated in the Guidance and our Decision.
Rather than concluding that the entire claim is an abstract mental
process, we separated the claim into those specific limitations that make up
what we determined was an abstract mental process. Decision 7–11. We
specifically identified the (d) selecting3 and (g) determining limitations as
the abstract mental process. Id. at 7–8.

2 The Appellant did not number the pages of the Request, so we will cite to
the section numbers instead.
3 There are two (d) limitations in the claim. We refer in this instance to the
first.
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Separately, we identified all the “additional elements,” outside of the
abstract mental process, that are recited in the claim. Id. at 11–12. We
considered the “additional elements,” apart from the abstract mental
process, to determine that they did not, alone or in combination, “integrate
the [abstract] processes into a ‘practical application,’” or “recite an
‘inventive concept,’” according to the language of the Guidance. Decision
15.
We thus considered claim 1 as a whole, characterized it as reciting
both one mental “abstract idea” and several “additional elements,” and
considered all of these, concluding the claim as a whole was directed to an
abstract idea. Id. We did not conclude that everything in the claim is an
abstract mental process, and did not “disregard[] other important physical
claim limitations,” or “overlook[] most of the claimed limitations that
require actual physical steps,” as argued. Request § III(A).
Section III(B)
The Appellant contends the claimed method “solves a longstanding
problem,” is “specific,” “defines a significant improvement to the field of
SSDI benefits,” “overcomes all the inherent problems of the prior art,”
“define[s] a practical solution,” “improve[s] the Administering Agency
computer function,” “solved a business problem,” is “new and non-
obvious,” and will save money, “avoid overpayments,” and “rightly award
the overlooked person their monthly SSDI benefits.” Request § III(B). The
Appellant concludes, “[A] process that corrects working professionals and
experts, reconciles State and Federal law, and awards the rightful parties
their overlooked Federal benefits must be more than insignificant post
solution activity, it is Congressional intent. The claimed process is a
practical application to achieve the preceding results.” Id. The Appellant
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contends that because in using the claimed method “results are produced,”
the claimed method is not “simply gathering data for random analysis.” Id.
The Appellant also notes “[t]he Board did not provide any examples of case
law where, even though the novel claimed inventive concept produced
significant beneficial results, the court still found the claim limitations as
insignificant post solution activity.” Id.
We do not dispute that the application of the method of claim 1 may
have numerous benefits, and that this may represent both a “practical
application” and an “inventive concept” when relying on the colloquial
meanings of those terms.
However, as we noted in our Decision, the concepts of “practical
application,” “inventive concept,” and “insignificant extra-solution activity”
are specific legal concepts, articulated in the body of case law emanating
from the Court of Appeals for the Federal Circuit, and the Supreme Court,
and explained in the Manual of Patent Examining Procedure (“MPEP”) and
the Guidance. Decision 3–6. In an analysis under Section 101 for subject
matter eligibility, these terms have more specific meanings than in their
colloquial use. The benefits that may accrue when performing a claimed
abstract method do not alter the outcome, that such a claim nonetheless is
directed to an abstract idea under current § 101 law. See, for example, In re
Mohapatra, No. 2020-1935, 2021 WL 408755, at *3 (Fed. Cir. Feb. 5, 2021)
(non-precedential):
A claim does not cease to be abstract for section 101
purposes simply because the claim confines the abstract idea to
a particular technological environment in order to effectuate a
real-world benefit. See Alice, 573 U.S. at 222, 134 S.Ct. 2347;
BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed.
Cir. 2018); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353
(Fed. Cir. 2014).
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We also note that the ultimate outcome of the main body of the
method is “indicating in the electronic data record whether the person is
receiving SSDI adult child benefits or is not receiving SSDI adult child
benefits,” and under some conditions “indicating in the electronic data
record whether the person is eligible for SSDI adult child benefits or is not
eligible for SSDI adult child benefits,” but the method does not by itself
necessarily lead to many of the benefits the Appellant advances. This is
because those benefits rely on other steps being taken in addition to, and
beyond the scope of, the claimed method. For example, dependent claim 5
recites “notifying a caseworker . . . wherein the caseworker applies for SSDI
benefits on behalf of the at least one person.” Applying for those benefits,
alone, does not necessarily “save State and Federal governments millions of
dollars in erroneously paid Medicaid dollars, avoid overpayments of SSDI
dollars to family members and rightly award the overlooked person their
monthly SSDI benefits,” as contended. Request § III(B). Rather, changes
that take place as a result of that filing are necessary, but are not part of the
method.
Section III(C)
The Appellant argues our “Decision does not specifically address and
review important claim limitations that are found in the dependent claims for
purposes of subject matter eligibility under 35 U.S.C. § 101.” Request
§ III(C).
In the Appeal Brief, the only argument that specifically involves
language of dependent claims is advanced at the section addressing Step 2B,
and states:
Lastly, Claims 7, 14, and 20, recite discrete
limitations/elements that further distance the claims from merely
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reciting the abstract idea of determining eligibility for SSDI. For
example, Claim 7, 14, and 20 provides a periodical lifetime
review and monitoring of electronic records indicated as not
eligible for SSDI. The Appellant’s claimed process provides the
concrete steps of periodically monitoring the parents’ Social
Security status which is a non-conventional and non-generic
arrangement of elements/limitations beyond merely reciting
limitations of the alleged abstract idea of determining eligibility
for SSDI, as these parents may not be eligible themselves for
Social Security benefits for decades.
Appeal Br. 34.
We did not think that the claims recited the “abstract idea of
determining eligibility for SSDI,” so we did not, in the Decision, view this
argument as particularly relevant. Also, merely asserting, indirectly, that
claims 7, 14, and 20 were “concrete,” and “a non-conventional and non-
generic arrangement” did not persuade us to alter our conclusion for these
three claims.
Taking claim 7 as an example, the claim recites “periodic reviews”
that encompass five additional steps involving “(a) . . . identifying,” “(b)
inputting,” “(c) retrieving,” “(d) determining,” and “(e) indicating”
information and potential eligibility. The “identifying” and “determining”
limitations can be performed mentally, like the mental process steps of claim
1. The “inputting” and “retrieving” steps are data gathering steps, and do
not affect the outcome of the § 101 analysis. The “indicating” is an output
step, and is also insignificant extra solution activity, in that it merely
provides the output of the “determining” step. Thus, claim 7 does not
represent steps that create eligible subject matter, and the Appellant has not
pointed to any argument made that would do so under the abstract mental
process determination we made in our Decision.
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The Appellant has not identified, nor do we find, any other dependent
claims which were argued with specificity. See Appeal Br. 18–37, Reply
Br. 3–8. As we said before, arguments which the Appellant could have
made, but chose not to make, in the Briefs have not been considered, and are
deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(vii).
Conclusion
The Appellant has not demonstrated that we misapprehended or
overlooked any points. For this reason we deny the Request.

DECISION SUMMARY
Outcome of Decision on Rehearing:
Claim(s) 35 U.S.C
§
Reference(s)/Basis Denied Granted
1, 5–8, 12–
15, 19, 20,
22
101 Eligibility 1, 5–8, 12–
15, 19, 20,
22

Final Outcome of Appeal after Rehearing:
Claim(s) 35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1, 5–8, 12–
15, 19, 20,
22
101 Eligibility 1, 5–8, 12–
15, 19, 20,
22

DENIED