John Celona et al.

Patent Trials and Appeals Board

Sep 11, 2019

14082694 - (D) (P.T.A.B. Sep. 11, 2019)

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.
14/082,694 11/18/2013 John Celona 2185.005US2 1459
21186 7590 09/11/2019
SCHWEGMAN LUNDBERG & WOESSNER, P.A.
P.O. BOX 2938
MINNEAPOLIS, MN 55402
EXAMINER
VYAS, ABHISHEK
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
09/11/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
SLW@blackhillsip.com
uspto@slwip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte JOHN CELONA, JEFFREY BARR, and
SHELDON X. WANG
____________________

Appeal 2018-005762
Application 14/082,694
Technology Center 3600
____________________

Before JENNIFER S. BISK, LARRY J. HUME, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.

BISK, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a) Appellant,1 eHealthInsurance Services,
Inc., appeals from the Examiner’s decision to reject claims 1–20, which are
all claims pending in the application. Final Act. 2. 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(a). Appellant identifies the real party in interest as
eHealthInsurance Services, Inc. Appeal Br. 3.
Appeal 2018-005762
Application 14/082,694
2
BACKGROUND2
Appellant’s disclosed embodiments and claimed invention relate to
“communicating insurance information to a user via a networked-based
system.” Spec. ¶ 7. Claim 1, reproduced below, is illustrative of the subject
matter on appeal:
1. A method of communicating insurance information to a
user via a network-based system, the method comprising:
[(1)] receiving, via a network from a user device,
demographic details of a user;
[(2)] processing the demographic details to identify a
plurality of available insurance plans for the user, the
processing including accessing a database identifying the
plurality of available insurance plans;
[(3)] identifying, using at least one hardware processor,
a group of insurance plans from the plurality of available
insurance plans based on historical insurance plan data
stored in the database, the historical insurance plan data
comprising data concerning applications submitted by
other users for each of the plurality of available insurance
plans; and
[(4)] communicating, via the network, the group via the
network-based system to the user device for presenting
the group via a graphical user interface of the user
device.
Appeal Br. 30 (Claims App’x) (limitation numbering added).

2 Throughout this Decision we have considered the Specification filed
November 18, 2013 (“Spec.”), the Final Rejection mailed April 21, 2017
(“Final Act.”), the Appeal Brief filed October 19, 2017 (“Appeal Br.”), the
Examiner’s Answer mailed March 14, 2018 (“Ans.”), and the Reply Brief
filed May 14, 2018 (“Reply Br.”).
Appeal 2018-005762
Application 14/082,694
3
REJECTIONS
Claims 1–20 stand rejected for the judicially-created doctrine of
nonstatutory obviousness-type double patenting as being unpatentable over
claims 1–24 of US Patent No. 8,589,189 B2, issued Nov. 19, 2013. Final
Act. 13.
Claims 1–20 stand rejected under 35 U.S.C. § 101 as being directed to
patent-ineligible subject matter. Final Act. 5–8.
ANALYSIS
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).
To the extent Appellant has not advanced separate, substantive arguments
for particular claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv).
We have considered all of Appellant’s arguments and any evidence
presented. We highlight and address specific findings and arguments for
emphasis in our analysis below.
Rejection of Claims 1–20 for Nonstatutory Obviousness-Type Double
Patenting
The Examiner rejects claims 1–20 on the ground of non-statutory
obviousness-type double patenting. Final Act. 13.
Appellant does not address this ground on the merits, but “proposes to
defer resolution of the double patenting rejection until the patentable subject
matter is agreed upon.” Appeal Br. 10. The Examiner does not address this
rejection in the Answer and has not officially withdrawn the rejection in any
other communication of record.
Appeal 2018-005762
Application 14/082,694
4
We, therefore, pro forma affirm the Examiner’s rejection of
claims 1–20 on the ground of non-statutory obviousness-type double
patenting.
Rejection of Claims 1–20 under 35 U.S.C. § 101
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“‘Laws of nature, natural phenomena, and abstract ideas are not
patentable.’” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)). To determine whether a claim falls within one of these
excluded categories, the Court has set out a two-part framework. The
framework requires us first to consider whether the claim is “directed to one
of those patent-ineligible concepts.” Alice, 573 U.S. at 217. If so, we then
examine “the elements of each claim both individually and ‘as an ordered
combination’ to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S.
at 217 (quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566
U.S. 66, 78, 79 (2012)). That is, we examine the claims for an “inventive
concept,” “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.’” Alice, 573 U.S. at 217–18 (alteration
in original) (quoting Mayo, 566 U.S. at 72–73).
The Patent Office recently issued guidance regarding this framework.
See USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Appeal 2018-005762
Application 14/082,694
5
Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under the Revised
Guidance, to decide whether a claim is “directed to” an abstract idea, we
evaluate whether the claim (1) recites subject matter falling within an
abstract idea grouping listed in the Revised Guidance and (2) fails to
integrate the recited abstract idea into a practical application. See Revised
Guidance, 84 Fed. Reg. at 51. If the claim is “directed to” an abstract idea,
as noted above, we then determine whether the claim recites an inventive
concept. The Revised Guidance explains that when making this
determination, we should consider whether the additional claim elements
add “a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field” or “simply append[]
well-understood, routine, conventional activities previously known to the
industry.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the Examiner’s § 101
rejection.
The Judicial Exception—Abstract Idea
The Examiner states “the claims are directed to an abstract idea of
receiving and processing demographic details to identify and present
insurance plan options.” Final Act. 6. The Examiner explains that “the
concept is abstract for organizing a human activity.” Ans. 3. For the reasons
explained below, we agree that the claims recite an abstract idea.
As quoted and enumerated above, claim 1 includes four main
limitations. These limitations recite, in part, the following steps: receiving
user information (limitation (1)), identifying a group of insurance plans from
a plurality of available insurance plans for the user based on historical
insurance plan data (limitations (2) and (3)), and communicating the
Appeal 2018-005762
Application 14/082,694
6
identified group to the user device for presentation to the user. Appeal Br.
30 (Claims App’x).
According to the Specification, the invention overcomes problems
related to presenting a vast amount of detail related to health insurance
simultaneously. Spec. ¶ 3. “[A] user seeking a health insurance plan can
often be subjected to information overload.” Id. ¶ 4. “What is needed then
is a process for presenting health insurance information that, on the one
hand, complies with all of the regulations governing the sale of health
insurance, and on the other is easy to understand.” Id. ¶6. Presenting health
insurance plan to a user seeking such a plan falls within “advertising,
marketing, or sales activities.” Revised Guidance, 84 Fed. Reg. at 52.
Limitations (1)–(4) together recite a business or commercial practice
that is not meaningfully different from business and commercial practices
that courts have determined are abstract ideas. See, e.g., In re Salwan, 681
F. App’x 938, 941 (Fed. Cir. 2017) (billing insurance companies and
organizing patient health information); Audatex N. Am., Inc. v. Mitchell Int’l,
Inc., 703 F. App’x 986, 989 (Fed. Cir. 2017) (providing an automobile
insurance claim valuation through the collection and use of vehicle
information); Accenture, 728 F.3d at 1344 (generating tasks to be performed
in an insurance organization based on rules to be completed upon the
occurrence of an event); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (managing a stable
value protected life insurance policy by performing calculations and
manipulating the results).
Accordingly, we conclude claim 1 recites a certain method of
organizing human activity identified in the Revised Guidance (i.e., a
Appeal 2018-005762
Application 14/082,694
7
commercial interaction), and thus, an abstract idea.3 Revised Guidance, 84
Fed. Reg. at 52, 53 (listing “[c]ertain methods of organizing human activity
. . . commercial or legal interactions” as one of the “enumerated groupings
of abstract ideas”).
Integration of the Judicial Exception into a Practical Application
If a claim recites a judicial exception, we determine whether the
recited judicial exception is integrated into a practical application of that
exception by: (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception(s); and (b) evaluating
those additional elements individually and in combination to determine
whether they integrate the exception into a practical application. If the
recited judicial exception is integrated into a practical application, the claim
is not directed to the judicial exception.
Here, claim 1 recites the additional elements of “a network-based
system,” “a user device,” “a database,” “at least one hardware processor,”
and “a graphical user interface.” Appeal Br. 30 (Claims App’x).
Considering claim 1 as a whole, the additional elements do not apply or use

3 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[a]n abstract
idea can generally be described at different levels of abstraction. . . . The
Board’s slight revision of its abstract idea analysis does not impact the
patentability analysis.” Id. Moreover, merely combining several abstract
ideas does not render the combination any less abstract. RecogniCorp, LLC
v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one
abstract idea (math) to another abstract idea . . . does not render the claim
non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1093–94 (Fed. Cir. 2016) (determining the pending claims were
directed to a combination of abstract ideas).
Appeal 2018-005762
Application 14/082,694
8
the abstract idea in a meaningful way such that the claim as a whole is more
than a drafting effort designed to monopolize the exception. The Supreme
Court guides that the “prohibition against patenting abstract ideas ‘cannot be
circumvented by attempting to limit the use of the formula to a particular
technological environment’ or [by] adding ‘insignificant postsolution
activity.’” Bilski, 561 U.S. at 610–11 (quoting Diamond v. Diehr, 450 U.S.
175, 191–92 (1981)).
The Specification describes each of these elements as generic
components. For example, the Specification states that “server 12
communicates via one or more networks, such as the Internet 16, with a
plurality of client devices 18,” which “may, for example, include a personal
computer (PC), a Personal Digital Assistant (PDA), a cellular telephone, or
any other client device including a display.” Spec. ¶ 36. The recited
“database” is described in the Specification simply as “associated” with a
server and including information about insurance plans. Id. ¶¶ 31, 37, 40.
The Specification also describes “a processor 302 (e.g., a central processing
unit (CPU) a graphics processing unit (GPU) or both).” Id. ¶ 57.
Appellant’s arguments have not persuaded us claim 1 is “directed to”
a patent-eligible concept. For example, Appellant argues the Examiner
failed to establish a prima facie case of patent ineligibility. Appeal
Br. 11–12; Reply Br. 3–5. We disagree. The Federal Circuit has repeatedly
noted 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 Examiner satisfies the burden of establishing a prima facie
case under 35 U.S.C. § 132 by setting forth a rejection in a sufficiently
articulate and informative manner. See In re Jung, 637 F.3d 1356, 1363
Appeal 2018-005762
Application 14/082,694
9
(Fed. Cir. 2011). If the Examiner “adequately explain[s] the shortcomings
. . . the burden shifts to the applicant to rebut the prima facie case with
evidence and/or argument.” Hyatt, 492 F.3d at 1370.
The Final Office Action adequately explains the § 101 rejection. See
Final Act. 5–8. The Examiner’s statements satisfy § 132(a) because they
apply the Alice analytical framework and apprise Appellant of the reasons
for the § 101 rejection under that framework. Appellant has not responded
by alleging a failure to understand the rejection, but argues that the
Examiner’s abstract idea “is not adequately tied to the claim language.”
Appeal Br. 11. To the contrary, Appellant clearly identifies the abstract idea
identified by the Examiner. See Appeal Br. 11; Reply Br. 4. Our reviewing
court recognizes that “[a]n abstract idea can generally be described at
different levels of abstraction.” Apple, 842 F.3d at 1240. That need not and,
in this case does not, “impact the patentability analysis.” Id. at 1241.
Appellant adds that the Examiner did not apply the required two-step
patentability analysis to each of the dependent claims. Appeal Br. 12. There
is no dispute that the Guidance directs examiners to examine each claim
individually. But consideration of each claim individually does not require a
separate written analysis for each individual claim. We decline to find error
here in the Examiner’s decision to not address the patent-eligibility of each
of claims 2–20, individually, where, as the Examiner observes (Ans. 6), the
claims all recite similar steps as part of the same abstract idea, i.e., the steps
include “receiving details, processing the details, identifying [] data based on
the received and processed details and presenting the details on a generic
graphical user interface of the device.” See Content Extraction &
Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1348
(Fed. Cir. 2014) (explaining that when all claims are directed to the same
Appeal 2018-005762
Application 14/082,694
10
abstract idea, “addressing each claim of the asserted patents [is]
unnecessary”).
In the Reply, Appellant argues
the specific features of the user interface recited by claims 13,
16, and 17 are significantly more than any of the purported
abstract ideas and, indeed, improve the operation of the recited
computer system, for example, by arranging it for the unique
challenges of the health insurance market described at the
specification.
Reply Br. 5. We do not agree that the limitations added by claims 13, 16,
and 17 (displaying an icon (claim 13), receiving selections of an icon and
displaying information in response (claim 16), and selections comprising a
pointer hover and a pointer click (claim 17)) improve the operation of the
recited computer system. Instead, we agree with the Examiner that “[h]ere,
the claims do not invoke any assertedly inventive programming,” but simply
“require[e] the selection and manipulation of information” to make that
information easier for a human to understand. Ans. 5. The claims improve a
process of arranging and presenting data, which, aside from conventional
use of generic computer equipment (e.g. selection using a pointer device),
could equally apply to the presentation of data using pen and paper. See
Spec. ¶¶ 4 (“Users desire a simple user interface that clarifies the benefits
offered by various health insurance providers.”), 5 (“What is needed then is
a process for presenting health insurance information that, on the one hand,
complies with all of the regulations governing the sale of health insurance,
and on the other is easy to understand.”).
Appellant also argues that, like McRO, “the specific way in which the
operations are performed prevents broad preemption of the subject matter.”
Appeal Br. 15 (citing McRO, Inc. v. Bandai Namco Games Am., Inc., 837
Appeal 2018-005762
Application 14/082,694
11
F.3d 1299 (Fed. Cir. 2016)). First, we do not agree with Appellant’s
analogy to McRO. The claims in McRO “focused on a specific asserted
improvement in computer animation, i.e., the automatic use of rules of a
particular type.” McRO, 837 F.3d at 1314. The rules were “limited” and
had “specific characteristics,” and the claims incorporated “the specific
features of the rules as claim limitations.” McRO, 837 F.3d at 1313, 1316.
In contrast, claim 1 recites a series of broadly worded results without
meaningfully describing how the results are achieved. And claim 1
generally concerns arranging data for efficient presentation to a user, not
improving a technological process such as computer animation like the
claims in McRO. Claim 1 is thus distinguishable from the patent-eligible
claims in McRO. Second, preventing preemption of subject matter does not
alter our § 101 analysis. Rather than preemption, the Federal Circuit
instructs that the Alice two-step analysis is the test for whether claims are
statutory. “While preemption may signal patent ineligible subject matter,
the absence of complete preemption does not demonstrate patent eligibility.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed.
Cir. 2015). “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Id.
Accordingly, even in combination with all the other recited elements,
the addition of “a network-based system,” “a user device,” “a database,” “at
least one hardware processor,” and “a graphical user interface” does not
integrate the abstract idea into a practical application because it does not
impose any meaningful limits on practicing the abstract idea. For these
reasons, we determine that claim 1 does not integrate the recited abstract
idea into a practical application.
Appeal 2018-005762
Application 14/082,694
12
Inventive Concept
Because we agree with the Examiner that claim 1 is “directed to” an
abstract idea, we consider whether an additional element (or combination of
elements) adds a limitation that is not well-understood, routine, conventional
(“WURC”) activity in the field or whether the additional elements simply
append WURC activities previously known to the industry, specified at a
high level of generality, to the judicial exception. Revised Guidance, 84
Fed. Reg. at 23. The Examiner’s finding that an additional element (or
combination of elements) is WURC activity must be supported with a
factual determination. Id. (citing MPEP § 2106.05(d), as modified by the
Berkheimer Memorandum4).
Whether the additional elements (“a network-based system,” “a user
device,” “a database,” “at least one hardware processor,” and “a graphical
user interface”) are WURC activity is a question of fact. See Berkheimer v.
HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (“Whether something is well-
understood, routine, and conventional to a skilled artisan . . . is a factual
determination.”).
On the record before us, Appellant has not shown that the claims on
appeal add a specific limitation beyond the judicial exception that is not
“well-understood, routine, and conventional” in the field (see MPEP
§ 2106.05(d)). Other than asserting that the entirety of the claimed subject
matter is unconventional, Appellant does not point to any particular claimed
element that does not qualify as WURC. Reply Br. 5.

4 Robert W. Bahr, Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) (2018) (hereinafter “Berkheimer Memorandum”).
Appeal 2018-005762
Application 14/082,694
13
In fact, as explained by the Examiner (Final Act. 7) Appellant’s
Specification demonstrates the WURC nature of “a network-based system,”
“a user device,” “a database,” “at least one hardware processor,” and “a
graphical user interface” because it indicates they may be implemented with
generic devices. Spec. ¶¶ 36, 57.
For these reasons, we conclude that claim 1, considered as a whole,
does not include an inventive concept.
Therefore, we sustain the Examiner’s § 101 rejection of independent
claim 1. For the reasons discussed above, we also sustain the Examiner’s
§ 101 rejection of dependent claims 13, 16, and 17. We also sustain the
Examiner’s § 101 rejection of independent claims 18 and 20 and dependent
claims 2–12, 14, 15, and 19, for which Appellant relies on the same
arguments made with respect to claim 1. Appeal Br. 10–23; Reply Br. 2–7.
DECISION
We affirm the Examiner’s nonstatutory obviousness-type double
patenting rejection of claims 1–20 as being unpatentable over claims 1–24 of
US Patent No. 8,589,189 B2, issued Nov. 19, 2013.
We affirm the Examiner’s rejection of claims 1–20 under 35 U.S.C.
§ 101.
Appeal 2018-005762
Application 14/082,694
14
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1–20 Double Patenting 1–20
1–20 § 101 1–20
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED