Richard Lasota et al.

Patent Trials and Appeals Board

Dec 26, 2019

11966813 - (D) (P.T.A.B. Dec. 26, 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.
11/966,813 12/28/2007 Richard Lasota 702394 5778
23460 7590 12/26/2019
LEYDIG VOIT & MAYER, LTD
TWO PRUDENTIAL PLAZA, SUITE 4900
180 NORTH STETSON AVENUE
CHICAGO, IL 60601-6731
EXAMINER
BAIRD, EDWARD J
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/26/2019 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):
Chgpatent@leydig.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte RICHARD LASOTA, PAUL CAHILL, and PAUL DI PAOLA

Appeal 2018-008896
Application 11/966,813
Technology Center 3600
____________

Before CAROLYN D. THOMAS, KARA L. SZPONDOWSKI, and
MICHAEL M. BARRY, Administrative Patent Judges.

SZPONDOWSKI, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7 and 9–18, constituting all claims
pending in the application. 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 American
International Group, Inc. Br. 1.
Appeal 2018-008896
Application 11/966,813

2
STATEMENT OF THE CASE

Appellant’s invention generally relates to “generating an initial
projection of the net loss of an insurance company from a major loss event.”
Spec. ¶ 2. Claims 1 and 12, reproduced below, are representative of the
claimed subject matter:
1. A method for making an initial loss projection of an
insurance company resulting from a loss event using an initial
net loss projection server connected to a plurality of computers
via a computer network and connected to an electronic database
of information housed in a physical storage device, the
information concerning in-force insurance policies issued by the
insurance company, the method comprising:
operating the initial net loss projection server to execute a loss
estimate collaboration program stored on a physical computer-
readable medium, the loss estimate collaboration program including
computer-executable instructions providing a common information
repository on the computer network;

identifying within a seventy-two hour period entities involved
in, or affected by, the event independent of filing a claim with said
insurance company for the loss event;

for each identified entity:

searching, using the initial net loss projection server, the
electronic database of information concerning in-force
insurance policies issued by the insurance company, wherein
the information includes names of the insured and coverage
limits,

identifying, using the initial net loss projection server,
whether said insurance company issued one or more in-force
policies to said identified entity, and

Appeal 2018-008896
Application 11/966,813

3
adding each identified in-force policy to a listing of
identified in-force policies that the insurance company has
issued to any of the entities identified as being involved in, or
affected by, the loss event;

presenting, using the initial net loss projection server, the listing
of the identified in-force policies in an event file for the loss event in
the common information repository;

displaying, using the initial net loss projection server, the listing
of identified inforce policies in a graphical user interface;

receiving, through the graphical user interface, a selection of at
least one in-force policy from the listing of identified in-force policies
to be included in the initial net loss projection, wherein each selected
in-force policy displays an indication in the graphical user interface
that it is included in the initial loss projection;

calculating using the initial net loss projection server, the initial
loss projection for the event based on aggregating coverage limits of
said selected in-force policies by summing a respective net policy
dollar limit of each of said selected in-force policies.

12. A system for performing an initial loss projection for an event,
comprising:

a plurality of computers;

a computer network connected to the plurality of computers;

a server connected to the computer network and accessible by
the computers operably connected to the computer network;

a common information repository for the event, the common
information repository being accessible by the plurality of computers
through the computer network,

Appeal 2018-008896
Application 11/966,813

4
the common information repository having an event file for
storing information identifying (l) entities involved in, or affected by,
the event, (2) in-force policies of the entities, and (3) a set of selected
in-force policies of the entities that are to be included in the initial net
loss projection;

an in-force policy database operably arranged with the server,
the in-force policy database including information regarding the in-
force policies, the information including names of the insured and
coverage limits;

a physical computer-readable medium having computer-
executable instructions stored thereon, the computer-executable
instructions comprising a loss estimate collaboration program, the
server programmed with the collaboration program to perform steps
of:

presenting, using the computer network, a webpage
including a graphical user interface operably associated with the
in-force policy database, the graphical user interface displaying
in-force policy information,

receiving a selection, through the graphical user
interface, of at least one in-force policy to be placed in the set
of selected in-force policies for inclusion in the initial loss
projection independent of receiving a claim under any of said
in-force policies, and

calculating, within a seventy-two hour period after
creating the event file, the initial loss projection for the event
based on the set of selected in-force policies by summing a
respective net policy dollar limit of each of said selected in-
force policies.

Br. 12–13, 15 (Claims Appendix).

Appeal 2018-008896
Application 11/966,813

5
REJECTIONS

Claims 1–7 and 9–18 stand rejected under 35 U.S.C. § 101 as directed
to ineligible subject matter.

ANALYSIS

An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, 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. 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 what concept the claim is “directed to.” See Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
Appeal 2018-008896
Application 11/966,813

6
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
If the claim is “directed to” an abstract idea, 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). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
The PTO has published revised guidance on the application of § 101.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (January 7, 2019) (“2019 Guidance”); October 2019 Update:
Subject Matter Eligibility, 84 Fed. Reg. 55,942 (available at the USPTO’s
website) (“October 2019 PEG Update”). Under the 2019 Guidance, we first
look to whether the claim recites:
(1) any judicial exceptions, 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
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:
Appeal 2018-008896
Application 11/966,813

7
(1) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(2) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See 2019 Guidance, 84 Fed. Reg. at 52–57.
2019 Guidance, Step 2A, Prong 1
The Examiner determines the claims are directed to a method for
making an initial loss projection of an insurance company, which is an idea
of itself. Final Act. 6. The Examiner identifies that certain limitations in
claim 1 “describe the concept of collecting information, analyzing it, and
displaying certain results of the collection and analysis,” similar to Electric
Power Group, LLC v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016) (emphasis
omitted). Final Act. 6–8. The Examiner determines that, like in Electric
Power, the claims “can be done without a computer.” Final Act. 8; Ans. 8.
Appellant argues independent claims 1 and 12 are “directed to making
an initial loss projection resulting from a loss event through a computer
network that would otherwise not be possible in the allotted timeframe with
the use of the recited technological features.” Br. 5; see also Br. 8.
Appellant has not persuasively rebutted the Examiner’s findings and
conclusions. A claim recites a mental process when the claim encompasses
acts people can perform using their minds or pen and paper. See, e.g.,
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed.
Cir. 2011) (determining that a claim whose “steps can be performed in the
human mind, or by a human using a pen and paper” is directed to an
Appeal 2018-008896
Application 11/966,813

8
unpatentable mental process). This is true even if the claim recites that a
generic computer component performs the acts. See, e.g., Versata Dev.
Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts
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.”); see also Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“Symantec”)
(“[W]ith 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.”); 2019 Guidance, 84 Fed.
Reg. at 52 n.14 (“If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind.”). The 2019 Guidance
recognizes mental observations, evaluations and judgments as constituting
patent-ineligible abstract ideas. See 2019 Guidance, 84 Fed. Reg. 52.
Appellant generally describes the invention as “a method and system
for projecting the initial loss resulting from a major loss event [MLE].”
Spec. ¶ 2. Appellant explains that after a major incident that causes
significant loss of human life and/or property damage, it would be
advantageous for the high-level executives of an insurance company to
know the initial net loss exposure that the incident presents to the company
within twenty-four to seventy-two hours. Spec. ¶¶ 3–4. Appellant states
that within a conventional business structure of an insurance company,
generating a relatively accurate net loss projection in a very short period of
time has been a very difficult task for various reasons, including that the
Appeal 2018-008896
Application 11/966,813

9
insurance company may not know the identities of all of the entities
involved, whether there are in-force insurance policies covering such entities
that might be relevant, when different underwriting divisions of the
insurance company are involved, and the possible existence of reinsurance
treaties or facultative certificates that would reduce the policy limit
exposure. Spec ¶¶ 4–7. Appellant further explains that these complexities
create difficulty, especially when the information regarding the relevant
insurance policies and applicable reinsurance cannot be quickly and
efficiently gathered. Spec. ¶ 8.
Claim 1 recites the following limitations: (1) “identifying within a
seventy-two hour period entities involved in, or affected by, the event
independent of filing a claim with said insurance company for the loss
event”; (2) “for each identified entity: searching . . . concerning in-force
insurance policies issued by the insurance company, wherein the information
includes names of the insured and coverage limits, identifying . . . whether
said insurance company issued one or more in-force policies to said
identified entity, and adding each identified in-force policy to a listing of
identified in-force policies that the insurance company has issued to any of
the entities identified as being involved in, or affected by, the loss event”;
(3) “presenting . . . the listing of identified in-force policies in an event file
for the loss event . . .”; (4) “displaying . . . the listing of identified in-force
policies in a graphical user interface”; (5) “receiving . . . a selection of at
least one in-force policy from the listing of identified in-force policies to be
included in the initial net loss projection, wherein each selected in-force
policy displays an indication in the graphical user interface that it is included
in the initial loss projection”: and (6) “calculating . . . the initial loss
Appeal 2018-008896
Application 11/966,813

10
projection for the event based on aggregating coverage limits of said
selected in-force policies by summing a respective net policy dollar limit of
each of said selected in-force policies.” Independent claim 12 recites a
system claim with similar limitations.
Each of the steps above can be practically performed by a human
being, and, therefore, recite a mental process under the 2019 Guidelines.
Appellant’s Specification supports our findings. For example, Appellant
describes that the news reports can be reviewed to identify the entities
involved in, or impacted by the major loss event. Spec. ¶ 49. “The task of
reviewing media coverage to collect facts surrounding the MLE and to
identify the entities involved in the MLE is preferably performed by
specially trained and experienced searchers.” Spec. ¶ 49 (emphasis added).
After the entity is identified, Appellant describes that “a member of the
initial net loss projection team can determine whether the identified entity is
insured by the insurance company” by searching through a database. Spec.
¶ 51 (emphasis added). The search results concerning the in-force policies
may then be stored and accessed by team members. Spec. ¶¶ 51–52. For
example, “[s]elected members of the team can review the policy information
to determine whether the particular policy is relevant to the incident.” Spec.
¶ 53 (emphasis added). After the relevant in-force policies for the identified
entities have been determined, the initial net loss projection can be made.
Spec. ¶ 57.
Accordingly, Appellant has not sufficiently argued why the claims do
not recite an abstract idea, and we agree with the Examiner’s findings and
conclusions. See Final Act. 6–8; Ans. 10–11. Therefore, we conclude the
claims at least recite a mental process pursuant to Step 2A, Prong One of the
Appeal 2018-008896
Application 11/966,813

11
guidance. See 2019 Guidance, Section III(A)(1) (Prong One: Evaluate
Whether the Claim Recites a Judicial Exception).
2019 Guidance, Step 2A, Prong 2
In determining whether the claims are “directed to” the identified
abstract idea, we next consider whether the claims recite additional elements
that integrate the judicial exception into a practical application.2 We discern
no additional element (or combination of elements) recited in the claims that
integrates the judicial exception into a practical application. See 2019
Guidance, 84 Fed. Reg. at 54–55.
The Examiner determines the claims “are recited at a high level of
generality” and “use[] a computer to receive, process, and send data,” which
are merely generic computers performing generic computer functions. Final
Act. 8. Specifically, the Examiner identifies the following additional
limitations: “initial net loss projection server,” “loss estimate collaboration
program,” “electronic database,” and “graphical user interface to receive and
display data.” Final Act. 9.
Appellant contends the claims “include specific functionality for
calculating an initial loss projection by summing a respective net policy
dollar limit of each of a series of in-force policies, which is a new way of

2 We acknowledge that some of the considerations at Step 2A, Prong Two,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See 2019 Guidance, 84 Fed. Reg. at 55 n.25, 27–32.

Appeal 2018-008896
Application 11/966,813

12
solving the persistent problem of calculating an initial net loss projection.”
Br. 6. Appellant argues
The claimed approach gives an insurance provider a
framework for making an initial projection for the net loss
associated with a major loss event that enables collaboration
between different distributed branches of the corporation and
that is capable of providing a comprehensive and reliable
assessment of the initial net loss projection quickly after the
occurrence of a major incident without the need to wait for
claims to be filed. This is a significant improvement over any
existing technological system/process known at the time of the
invention. The claimed solution is rooted in computer
technology in order to satisfy persistent needs specifically
arising in the field of loss projections after a loss event.

Br. 7; see also Br. 9. Appellant also contends certain steps in claim 1
“identify particular devices and require a particularly-programmed
machine.” Br. 6. Appellant argues “the steps and features of claim 1
confine the claim to a particular useful application that would not be
possible to perform without the new computer-implemented steps and
features recited therein.” Br. 8. With respect to claim 12, Appellant argues
the claim “specif[ies] how interactions with the server and common
information repository occur to yield a particular useful application to solve
a persisting problem in the industry – namely, how to quickly develop a
projection for the magnitude of damage caused by a loss event to a particular
company.” Br. 8.
Appellant’s arguments are not persuasive. As additional elements, the
independent claims recite computer system components. Br. 12–16.
Specifically, method claim 1 recites “operating the initial net loss projection
server to execute a loss estimate collaboration program stored on a physical
Appeal 2018-008896
Application 11/966,813

13
computer-readable medium, the loss estimate collaboration program
including computer-executable instructions providing a common
information repository on the computer network,” an “initial net loss
projection server,” an “electronic database of information,” a “common
information repository,” and a “graphical user interface.” Br. 12–13.
Similarly, system claim 12 recites “a plurality of computers,” “a server
connected to a computer network and accessible by the computers operably
connected to the computer network,” “a common information repository,”
“an in-force policy database operably arranged with the server,” “a physical
computer-readable medium having computer-executable instructions stored
thereon, the computer-executable instructions comprising a loss estimate
collaboration program,” and “a webpage including a graphical user interface
operably associated with the in-force policy database, the graphical user
interface displaying in-force policy information.” Br. 15.
We agree with the Examiner that these additional limitations recite
generic computer components performing generic computer functions. See
Final Act. 8–9; Ans. 10–12. Appellant’s Specification does not indicate that
these limitations are anything other than generic, nor does Appellant direct
our attention to any evidence that they are not generic. See, e.g. Spec. ¶ 37
(“server 22 . . . can include a program running thereon that provides the
functionality for an information repository 24 that can be accessed by users
over the network 20 for storing, editing, and analyzing information and
storing decision results”); Spec. ¶ 38 (“where the network 20 comprises the
Internet”); Spec. ¶ 39 (“information repository can include a database”);
Spec. ¶ 41 (“[a] database 38 of insurance policy and reinsurance information
. . .”); Spec. ¶ 45 (“information repository 24 is implemented as an
Appeal 2018-008896
Application 11/966,813

14
electronic collaboration site (‘ECS’)”); Spec. ¶ 60 (“ECS . . . includes web
pages designed to make it easy for a user to add, review, and edit
information”).
We find no indication in the Specification, nor does Appellant direct
us to any indication, that the operations recited by the claims invoke any
inventive programming, require any specialized computer hardware or other
inventive computer components (i.e., a particular machine), or that the
claimed invention is implemented using other than generic computer
components to perform generic computer functions (e.g., identifying,
storing, analyzing, and displaying data). See DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there
can remain no doubt: recitation of generic computer limitations does not
make an otherwise ineligible claim patent- eligible.”). The claims merely
add generic computer components to support the abstract idea, which is
insufficient to integrate the judicial exception into a practical application.
Moreover, we are unpersuaded the claims constitute an improvement
to the functioning of the computer or to any other technology or technical
field; they merely adapt the abstract idea to an execution of steps performed
on a computer. See Credit Acceptance Corp. v. Westlake Services, 859 F.3d
1044, 1055 (Fed. Cir. 2017) (“Our prior cases have made clear that mere
automation of manual processes using generic computers does not constitute
a patentable improvement in computer technology.”). The problem
described in Appellant’s Specification pertains to providing an accurate
initial net loss projection after the occurrence of an MLE, given the
complexities within the conventional corporate structure of an insurance
company. E.g., Spec. ¶¶ 3–8. Appellant explains:
Appeal 2018-008896
Application 11/966,813

15
The unique collaborative process in accordance with the
invention enables and encourages efficient collection and
sharing of information required for initially projecting the
maximum net loss exposure faced by the company in a timely,
efficient and accurate manner. This is achieved by defining
roles and responsibilities for the MLE process coordinators and
other participants in various parts of the insurance company
(e.g., Claims, Underwriting, and Reinsurance divisions) so that
they can work together in an organized way to determine the
initial net loss projection.

Spec. ¶ 72. Appellant’s invention is not directed to a solution to a technical
problem, but rather is directed to an improved collaboration process related
to a business problem. The claims do not recite an advance in hardware or
software that improves this process, but rather, any improvement is to the
process itself, e.g., the abstract idea.
Accordingly, we determine the claims do not integrate the judicial
exception into a practical application. See 2019 Guidance, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether
the Judicial Exception Is Integrated Into a Practical Application). We,
therefore, agree with the Examiner that the claims are directed to a judicial
exception. See Final Act. 2–12; Ans. 10–16.
2019 Guidance, Step 2B
Turning to step 2 of the Alice/Mayo framework, we look to whether
the claims: (a) add a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field, or (b)
simply append well-understood, routine, conventional activities previously
Appeal 2018-008896
Application 11/966,813

16
known to the industry, specified at a high level of generality, to the judicial
exception. 2019 Guidance, 84 Fed. Reg. at 56.
As discussed above, the Examiner determines the claims recite
generic computer components that perform generic computer functions that
are well-understood, routine, and conventional activities, such as collecting
information, analyzing it, and displaying the results of the collection and
analysis. Final Act. 7; Ans. 10–13.
Appellant argues “the prior art fails to teach or suggest a method for
making an initial loss projection of an insurance company resulting from a
loss event” as recited in claim 1. Br. 8. Appellant makes a similar argument
for claim 12. Br. 10. Appellant further argues “[t]he claimed approach
includes unconventional steps and limitations that improve the operation of
the claimed method by initiating the process before filing of a claim.” Br. 8;
see also Br. 10. With respect to claim 12, Appellant also argues the claims
“recite a specific way to automate the solution and to enable users of the
system to be located geographically apart from each other using meaningful
limitations that go far beyond what is well understood, routine, and
conventional in the field.” Br. 10.
We are not persuaded by Appellant’s arguments and agree with the
Examiner’s findings and conclusions. Final Act. 3–12; Ans. 10–16. When
viewed as a whole, nothing in the claim adds significantly more (i.e., an
inventive concept) to the abstract idea. Similarly, the additional elements in
the claim, identified above, amount to no more than mere instructions to
apply the exception using generic computer components, which is
insufficient to provide an inventive concept. See, e.g., Spec. ¶¶ 37–39, 41,
45, 60. As discussed above, Appellant does not direct our attention to
Appeal 2018-008896
Application 11/966,813

17
anything in the Specification that indicates the claimed computer
components perform anything other than well-understood, routine, and
conventional processing functions, such as identifying, storing, analyzing,
and displaying data. See Elec. Power Grp., LLC v. Alstom SA, 830 F.3d
1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of
the specification, requires anything other than off-the-shelf, conventional
computer, network, and display technology for gathering, sending, and
presenting the desired information”); buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the
information over a network—with no further specification—is not even
arguably inventive”); Alice, 573 U.S. at 224–26 (receiving, storing, sending
information over networks insufficient to add an inventive concept). In
short, each step does no more than require a generic computer to perform
generic computer functions.
Furthermore, we are unable discern anything in the claims, even when
the recitations are considered in combination, that represents something
more than the performance of routine, conventional functions of a generic
computer. That is, the claims at issue do not require any nonconventional
computer components, or even a “non-conventional and non-generic
arrangement of known, conventional pieces,” but merely call for
performance of the claimed information identifying, storing, analyzing, and
displaying data “on a set of generic computer components.” Bascom Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir.
2016).
To the extent Appellant argues the claims necessarily contain an
“inventive concept” based on their alleged novelty or non-obviousness over
Appeal 2018-008896
Application 11/966,813

18
the cited references, Appellant misapprehends the controlling precedent.
Although the second step in the Alice/Mayo framework is termed a search
for an “inventive concept,” the analysis is not an evaluation of novelty or
non-obviousness, but rather, a search for “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 217–218. A novel and nonobvious claim directed to a purely
abstract idea is, nonetheless, patent-ineligible. See Mayo, 566 U.S. at 90.
Appellant does not separately argue the dependent claims. See Br. 8,
11. Accordingly, for the foregoing reasons we sustain the Examiner’s 35
U.S.C. § 101 rejection of claims 1–7 and 9–18.

CONCLUSION
We affirm the Examiner’s decision to reject claims 1–7 and 9–18. In
summary:
Claims
Rejected
Basis  Affirmed Reversed
1–7, 9–18 § 101   1–7, 9–18

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