STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY

Patent Trials and Appeals Board

Jun 1, 2020

2019001282 (P.T.A.B. Jun. 1, 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.
13/672,904 11/09/2012 Leif A. Roll SF-16091-105020 1480
164349 7590 06/01/2020
Faegre Drinker Biddle & Reath LLP - State Farm
300 N. Meridian Street
Suite 2500
Indianapolis, IN 46204
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/01/2020 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):
inteas@faegredrinker.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LEIF A. ROLL, DAVID VINCENT PRUS, JUN WU,
GREGORY LEE HAYWARD, and DAVID LEE MENNING
____________

Appeal 2019-001282
Application 13/672,904
Technology Center 3600
____________

Before HUBERT C. LORIN, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–4, 7–11, and 21. We have jurisdiction under
35 U.S.C. § 6(b).

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,”
filed August 9, 2018) and Reply Brief (“Reply Br.,” filed November 28,
2018), and the Examiner’s Answer (“Ans.,” mailed September 28, 2018) and
Final Office Action (“Final Act.,” mailed March 13, 2018). Appellant
identifies the real party in interest as “State Farm Mutual Automobile
Insurance Company” (Appeal Br. 2).
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We AFFIRM.
CLAIMED INVENTION
Appellant’s claims relate “generally to systems and methods for
automatically providing a multi-line discount on an insurance product in
connection with purchasing a financial services product, such as a deposit
account.” Spec. ¶ 2.
Claims 1, 8, 15 and 21 are the independent claims on appeal. Claim 1,
reproduced below with bracketed matter is illustrative of the claimed subject
matter:
1. A computer-based method for automatically performing
interactions through security infrastructure between computer
modules resident on computers in different sub-networks to
provide a discount on insurance comprising the steps of:
[a] providing a private network between a financial
institution sub-network 160 and an insurance provider sub-
network 165, wherein the financial institution sub-network 160
comprises a financial services computer 105, a financial services
workstation 110, a financial institution database server 155 and
a financial sub-network firewall, wherein the insurance provider
sub-network 165 comprises an insurance processing computer
125, an insurance workstation 120, an insurance database server
130, and an insurance sub-network firewall, determining, by the
insurance processing computer, that a customer has purchased a
financial services product;
[b] determining, by the insurance processing computer,
that a customer has purchased a financial services product;
[c] determining, by the insurance processing computer,
that the customer has an insurance policy;
[d] automatically determining and applying, by the
insurance processing computer, a discount on a premium for the
insurance policy based on the purchase of the financial services
product, wherein determining the discount comprises:
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[e] identifying a group of insurance policy customers that
have purchased the financial services product;
[f] determining an actuarial risk profile associated with
the identified group of insurance policy customers that have
purchased the financial services product;
[g] determining an amount of the discount based on the
determined actuarial risk profile associated with the identified
group insurance policy customers; and
[h] automatically discontinuing, by the insurance
processing computer, the discount on the premium for the
insurance policy upon the insurance processing computer
receiving an indication that the financial services product has
been discontinued.

REJECTION
Claims 1–4, 7–11, and 21 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.

ANALYSIS
Patent-Ineligible Subject Matter
Appellant argues claims 1–4, 7–11, and 21 as a group. Appeal Br. 6–
14; Reply Br. 2–6. We select independent claim 1 as representative. The
remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
A. Section 101
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 U.S. 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).
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In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part 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);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making waterproof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
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attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
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. (alterations in original) (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.
B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“2019 Revised Guidance”).2 “All USPTO personnel are, as a matter of

2 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
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internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).3
2019 Revised Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or

2019 Update”) (available at https://www.uspto.gov/sites/default/files/
documents/peg_oct_2019_update.pdf).
3 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance - Section III(A)(2),
84 Fed. Reg. 54–55.
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(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56.
Step One of the Mayo/Alice Framework
With regard to the first step of the Mayo/Alice framework and
Step 2A, Prong One of the 2019 Revised Guidelines, 84 Fed. Reg. at 54, the
Examiner determines that exemplary independent claim 1 “describes a
process for obtaining discount based on purchasing additional product,” and
thus, broadly recites “the abstract idea of managing a discount system.”
Final Act. 3. In making this determination, the Examiner states first that
[t]he claim recites a process for applying a discount on a
premium for an insurance policy based on a purchase of a
financial services product from a financial institution until the
financial services product is discontinued. The claim further
determines if the customer has an insurance policy with an
insurance company associated with the financial institution. The
invention uses the actuarial risk profile associated with a group
of policyholders that have purchased the financial services
product to determine the amount of such insurance premium
discount. Then the invention automatically discontinues the
insurance premium discount upon receiving an indication that
the financial services product has been discontinued.
Id. at 2–3. The Examiner considers exemplary independent claim 1 to be an
abstract idea, inasmuch as the
concept as recited in the claim is similar to the kind of
‘organizing human activity' at issue in Alice Corp. Although the
claims are not drawn to the same subject matter, the abstract idea
of managing a discount system is similar to the abstract idea of
managing risk (hedging) during consumer transactions in Bilski,
or mitigating settlement risk in financial transactions (Alice
Corps.). or managing an insurance policy in Bancorp. All of
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these concepts relate to interpersonal and intrapersonal activities,
such as managing relationships or transactions between people.
The concept in claim 1 is similar to the concepts of management
of relationships to transactions between people that the courts
have found to be abstract.
Id. at 3.
In response, Appellant argues that “the claims recite eligible subject
matter in Step 2A because they are not directed to an abstract idea.” Appeal
Br. 10.
We are not persuaded that the Examiner erred in determining that
independent claim 1 is directed to an abstract idea. The Federal Circuit has
explained that “the ‘directed to’ inquiry applies a stage-one filter to claims,
considered in light of the specification, based on whether ‘their character as
a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp.
v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)).
In making this determination, we note that the Specification is entitled
“PROVIDING A MULTI-LINE DISCOUNT ON INSURANCE IN
CONNECTION WITH THE PURCHASE OF A FINANCIAL SERVICES
PRODUCT,” and states that the disclosure “relates generally to systems and
methods for automatically providing a multi-line discount on an insurance
product in connection with purchasing a financial services product, such as a
deposit account.” Spec. ¶ 2. According to the Specification, “[i]nsurance
policies allow consumers to protect against the loss of life or property.” Id.
¶ 3. The Specification discloses that “[o]ften, an insurance company may
offer a rate discount to a customer who insures more than one type of
property with the same insurance company.” Id. The Specification
describes, however, that “[c]hanges in the regulatory environment for
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financial institutions and insurance companies have made it possible for a
company to own both a financial institution and an insurance company,”
such that
[t]hrough this relationship, the financial institution and
insurance company can leverage relationships with their
customers to cross-sell products from the other institution. Such
crossselling activities may include offering product discounts as
an incentive to the customer to maintain its relationships with
the financial institution or the insurance company.
Id. ¶ 5. The Specification discloses, however, that “[w]hat is needed is an
automated system and method for providing a discount for insurance
companies in connection with purchasing a financial services product.” Id.
¶ 7. To address these drawbacks, the “present invention includes systems
and methods for automatically providing a discount on insurance in
connection with purchasing a financial services product.” Id. ¶ 8.
Consistent with this disclosure, independent claim 1 recites a method
comprising steps for (1) providing a private network between a financial
institution sub-network and an insurance provider sub-network, i.e.,
“providing a private network between a financial institution sub-network
160 and an insurance provider sub-network 165” (step [a]); (2) determining
that a customer has purchased a financial services product and has an
insurance policy and applying a discount for the insurance policy based on
the purchase of the financial services product, i.e., “determining … that a
customer has purchased a financial services product,” “determining … that
the customer has an insurance policy,” and “automatically determining and
applying … a discount on a premium” (steps [b]–[d]); (3) identifying a
group of insurance policy customers and determining a premium discount
based on an actuarial risk profile associated with the group of customers,
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i.e., “identifying a group of insurance policy customers,” “determining an
actuarial risk profile associated with the identified group of insurance policy
customers,” and “determining an amount of the discount” (steps [e]–[g]);
and (4) discontinuing the premium discount upon receiving an indication
that the financial services product has been discontinued, i.e., “automatically
discontinuing the discount” (step [h]).
Upon reviewing the Specification and independent claim 1, as
summarized above, we agree with the Examiner that independent claim 1
recites broadly “the abstract idea of managing a discount system” (Final
Act. 3), which can be characterized as a certain method of organizing human
activity. Here, independent claim 1 provides a private network (step [a]),
determines that a customer has purchased a financial services product and
has an insurance policy and applies a premium discount for the insurance
policy based on the purchase of the financial services product (steps [b]–
[d]), identifies a group of insurance policy customers and determines a
discount based on an actuarial risk profile associated with the group of
customers (steps [e]–[g]), and discontinues the premium discount upon
receiving an indication that the financial services product is discontinued
(step [h]). In other words, claim 1 broadly recites a method for managing a
discount by sending information (e.g., providing a private network),
analyzing information (e.g., determining that a customer has purchased a
financial services product and has an insurance policy and determining and
applying a discount), analyzing additional information (e.g., identifying a
group, determining an actuarial risk profile, and determining an amount of
the discount), and receiving and analyzing information (e.g., receiving an
indication and discontinuing the discount). Cf. Final Act. 2–3.
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Thus, it is clear that independent claim 1 recites a form of discount
management that, under the 2019 Revised Guidance, falls under the category
of “[c]ertain methods of organizing human activity” and more specifically
“fundamental economic principles or practices . . . commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; . . . sales activities or behaviors; business relations).”
2019 Revised Guidance, 84 Fed. Reg. at 52. Accordingly, independent
claim 1 recites an abstract idea. Cf. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 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.”), 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 . . . .”), and Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Can.(U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (identifying the concept of
“managing a stable value protected life insurance policy by performing
calculations and manipulating the results” as an abstract idea).
Having concluded that independent claim 1 recites a judicial
exception, i.e., an abstract idea, we turn to the Step 2A, Prong Two of the
2019 Revised Guidance and determine whether the claim integrates the
recited judicial exception into a practical application of the judicial
exception. We look to see if, for example, any additional elements of the
claim (i) reflect an improvement in the functioning of a computer or to
another technological field, (ii) implement the judicial exception with, or by
use of, a particular machine, (iii) effect a transformation or reduction of a
particular article to a different state or thing, or (iv) use the judicial
exception in some other meaningful way beyond generally linking the use of
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the judicial exception to a particular technological environment. See 2019
Revised Guidance, 84 Fed. Reg. at 55; see also MPEP § 2106.05(a)–(c), (e)–
(h).
Here, the only additional elements recited in claim 1 beyond the
abstract idea are an “insurance processing computer” that performs the
claimed steps and the “private network,” that is introduced by the step of
“providing a private network” between two sub-networks. However, these
additional elements are described generically in the Specification (see, e.g.,
Spec. ¶¶ 18–24). We find no indication in the Specification, nor does
Appellant direct us to any indication, that the steps recited in claim 1 invoke
any assertedly 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. 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.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record that attributes an
improvement in computer technology and/or functionality to the claimed
invention or that otherwise indicates that the claimed invention integrates the
abstract idea into a “practical application,” as that phrase is used in the
2019 Revised Guidance.
Appellant argues that independent claim 1 is “directed to an
improvement in the functioning of computers, particularly to ensure that
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secure interactions take place between computer modules resident on
computers in different sub-networks.” Appeal Br. 9. Appellant attributes
this purported technical improvement to “users being able to more
efficiently and accurately obtain quantitative product information from two
separate networks.” Id. at 10.
Appellant’s argument is not persuasive. Here, the focus of
independent claim 1 is not on any technological advancement, but rather on
the implementation of the abstract idea, “for which computers are invoked
merely as a tool.” See Enfish, 822 F.3d at 1336. In this regard, the
Specification generically describes the insurance processing computer (see,
e.g., Spec ¶ 21) and discloses that “[t]he private computer network 115 may
be a local area network (LAN) or wide area network (WAN).” Id. ¶ 18.
Independent claim 1, unlike the claims found to be non-abstract in
prior cases, uses generic technology to perform the functions of sending,
analyzing, and receiving information, and does not recite an improvement to
a particular computer technology. Cf. McRO, Inc. v. Bandai Namco Games
Am. Inc., 837 F.3d 1299, 1314–15 (Fed. Cir. 2016) (finding claims not
abstract because they “focused on a specific asserted improvement in
computer animation”).
Appellant further contends that, like the claims of Trading
Technologies Int’l, Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017)
and Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356
(Fed. Cir. 2018), “[t]he present invention is similarly not directed to an
abstract idea.” Appeal Br. 6; see also Reply Br. 2–6. More particularly,
Appellant asserts that
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[j]ust as in the Trading Technologies case, where the static price
index is an inventive concept that allows traders to more
efficiently and accurately place trades using this electronic
trading system, the financial product discount is an inventive
concept that allows insurance providers to more efficiently and
accurately obtain quantitative customer information residing in
two separate networks.
Id. at 9. Appellants similarly asserts that
[j]ust as in the Core Wireless case, where users being able to
more quickly navigate on small screens is an improvement in the
functioning of computers, users being able to more efficiently
and accurately obtain quantitative product information from two
separate networks is also an improvement.
Id. at 10. We disagree with Appellant.
In Trading Technologies, the district court found that the claimed
devices “have no ‘pre-electronic trading analog,’” and “do not simply claim
displaying information on a graphical user interface.” Trading Techs.,
675 F. App’x at 1004. The court concluded “the claimed subject matter is
‘directed to a specific improvement to the way computers operate,’ . . . for
the claimed graphical user interface method imparts a specific functionality
to a trading system ‘directed to a specific implementation of a solution to a
problem in the software arts.’” Id. at 1006.
In Core Wireless, the claims were directed to “an improved user
interface for electronic devices, particularly those with small screens.” Core
Wireless, 880 F.3d at 1363. The specification described that “prior art
interfaces had many deficits relating to the efficient functioning of the
computer, requiring a user ‘to scroll around and switch views many times to
find the right data/functionality’” and disclosed that the claimed invention
improved the “efficiency of using the electronic device by bringing together
‘a limited list of common functions and commonly accessed stored data,’
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which can be accessed directly from the main menu.” Id. The specification
also disclosed that “[t]he speed of a user’s navigation through various views
and windows” was improved because it “saves the user from navigating to
the required application, opening it up, and then navigating within that
application to enable the data of interest to be seen or a function of interest
to be activated” — disclosure that the Federal Circuit concluded “clearly
indicates that the claims are directed to an improvement in the functioning of
computers, particularly those with small screens.” Id.
After considering Appellant’s arguments regarding Trading
Technologies and Core Wireless, we are not persuaded that a comparable
situation is presented by Appellant. Here, we note that independent claim 1
recites neither a graphical user interface nor any step of displaying
information, and as a result, claim 1 does not recite a comparable
improvement in the functioning of the computer.
We also note that more recently, the court in Trading Techs. Int’l, Inc.
v. IBG LLC addressed Appellant’s Core Wireless argument.
Relying principally on Core Wireless, TT argues the claimed
invention provides an improvement in the way a computer
operates. We do not agree. The claims of the ’999 patent do not
improve the functioning of the computer, make it operate more
efficiently, or solve any technological problem. Instead, they
recite a purportedly new arrangement of generic information that
assists traders in processing information more quickly.
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir. 2019)
(citations omitted). Similarly, the instant claims do not improve the
functioning of the computer, make it operate more efficiently, or solve any
technological problem. Instead, they simply recites generic computer
components performing generic computer functions associated with sending
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information (e.g., providing a private network), analyzing information (e.g.,
determining that a customer has purchased a financial services product and
has an insurance policy and determining and applying a discount), analyzing
additional information (e.g., identifying a group, determining an actuarial
risk profile, and determining an amount of the discount), and receiving and
analyzing information (e.g., receiving an indication and discontinuing the
discount) without any technological improvement to the computer
components themselves.
Step Two of the Mayo/Alice Framework
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 1 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether the additional elements
amount to “significantly more” than the judicial exception itself.
2019 Revised Guidance, 84 Fed. Reg. at 56.
Appellant argues that “under Mayo/Alice 2(B), the claims of the
present application recite an inventive concept in the non-conventional and
non-generic arrangement of known, conventional pieces.” Appeal Br. 10.
More particularly, Appellant argues that “[c]laim 1 adds the significant
requirements that secure interactions take place between computer modules
resident on computers in different sub-networks.” Id. We cannot agree.
Here, as the Examiner points out,
[t]he only additional limitation in the claim is the processor
configured to execute the abstract idea. Thus, the recited generic
processor component performs no more than its basic processor
functions. This additional element is well understood, routine
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and conventional limitation that amounts to mere instructions to
implement the abstract idea on a computer. Finally, the network
limitations are simply a field of use that is an attempt to limit the
abstract idea to a particular technological environment and, so do
not add significantly more.
Final Act. 3 (emphases omitted). We agree with the Examiner that the steps
performed by these components are well-understood, routine, or
conventional. As discussed above, there is nothing in the Specification to
indicate that the steps recited in claim 1 require any specialized hardware or
inventive computer components or that the claimed invention is
implemented using anything other than generic computer components to
perform generic computer functions, e.g., sending, analyzing, and receiving
information. See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1355 (Fed. Cir. 2016) (gathering, sending, monitoring, analyzing, selecting,
and presenting information does not transform the abstract process into a
patent-eligible invention); Trading Techs. Int’l, 921 F.3d at 1093 (data
gathering and displaying are well-understood, routine, and conventional
activities); Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d
1332, 1341 (Fed. Cir. 2017) (determining that there was “no ‘inventive
concept’ that transform[ed] the abstract idea of collecting, displaying, and
manipulating XML data into a patent-eligible application of that abstract
idea.”).
Viewed as a whole, independent claim 1 simply recites a series of
steps instructing how to manage a discount. See Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716 (Fed. Cir. 2014) (“[T]he claimed sequence of steps
comprises only ‘conventional steps, specified at a high level of generality,’
which is insufficient to supply an ‘inventive concept.’”) (citing Alice, 134 S.
Ct. at 2357). Here, independent claim 1 does not, for example, purport to
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improve the functioning of the computer itself. Nor does it effect an
improvement in any other technology or technical field, as discussed above
with respect to prong two of step 2A. Instead, independent claim 1 amounts
to nothing significantly more than an instruction to apply the abstract idea
using generic computing elements, which under our precedents, is not
enough to transform an abstract idea into a patent-eligible invention. See
Alice, 134 S. Ct. at 2360.
We also are not persuaded by Appellant’s argument that “the rejection
fails to provide any statements or citations” as required by Berkheimer v. HP
Inc., 881 F.3d 1360 (Fed. Cir. 2018). Appeal Br. 12–13. At the outset, we
note that the Examiner provides a citation to one or more of the court
decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood,
routine, and conventional nature of the additional elements. See, e.g.,
Ans. 5–6. We further note that the Federal Circuit, in accordance with Alice,
has “repeatedly recognized the absence of a genuine dispute as to eligibility”
where claims have been defended as involving an inventive concept based
“merely on the idea of using existing computers or the Internet to carry out
conventional processes, with no alteration of computer functionality.”
Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J.,
concurring); see also See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1291 (Fed. Cir. 2018) (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”). Moreover, as discussed in greater detail
above, there is no indication in the record that either the “insurance
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19
processing computer” or the step of “providing a private network” requires
any specialized computer hardware or that it requires any programming
atypical from conventional programming. Instead, the Specification
discloses utilizing a conventional computer arrangement (see, e.g., Spec.
¶¶ 18–22). See Bancorp Services, 687 F.3d at 1278 (“The computer
required by some of Bancorp’s claims is employed only for its most basic
function, the performance of repetitive calculations, and as such does not
impose meaningful limits on the scope of those claims.”).
Appellant’s other arguments, including those directed to now-
superseded USPTO guidance, have been considered but are not persuasive
of error. (See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-
related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”))).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and claims 2–4, 7–
11, and 21, which fall with independent claim 1.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–4, 7–11,
21
101 Eligibility 1–4, 7–11,
21

Appeal 2019-001282
Application 13/672,904

20
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