Stephanie Muxfeld et al.

Patent Trials and Appeals Board

Sep 6, 2019

14266235 - (D) (P.T.A.B. Sep. 6, 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.
14/266,235 04/30/2014 Stephanie Muxfeld 32060/47621 8327
116886 7590 09/06/2019
Marshall, Gerstein & Borun LLP (State Farm)
233 South Wacker Drive
6300 Willis Tower
Chicago, IL 60606-6357
EXAMINER
CHANG, EDWARD
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/06/2019 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):
mgbdocket@marshallip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHANIE MUXFELD, ALEXIS DANIELLE CATES, JOHN
M. DILLARD, ROBERT JOHN FATIMA, RICHARD DOUGLAS
KITCHEN, SHANA K. JEVNE, SWATI PANI, TIMOTHY PATRICK
ROMER, SURENDRA KARNATAPU, and AMANDA SURPRENANT
Appeal 2018-006672
Application 14/266,2351
Technology Center 3600
Before CAROLYN D. THOMAS, MICHAEL J. STRAUSS, and
NABEEL U. KHAN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE2
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
9–15. App. Br. 5. Claims 1–8 and 16–22 are withdrawn. Id. We have
jurisdiction under 35 U.S.C. § 6(b).

1 According to the Appellants the real party in interest is State Farm
Automobile Insurance Company. App. Br. 3.
2 We refer to the Specification, filed April 30, 2014(“Spec.”); Final Office
Action, mailed May 12, 2017 (“Final Act.”); Appeal Brief, filed December
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2
We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to an online claim system for automated
insurance claim monitoring. Spec., Title. Claim 9, reproduced below with
altered formatting, is illustrative of the claimed subject matter:
9. An online claim system for automatically providing timely
status updates, the online claim system comprising:
(a) one or more memory devices storing a first claim event
relating to a first insurance claim filed by a first user, the first
claim event being a dataset including a first plurality of
attribute values, the first plurality of attribute values including
(i) a first claim identifier identifying the first insurance
claim,
(ii) a first event identifier identifying the first claim event,
(iii) a first timestamp identifying a first time, and
(iv) a first event message regarding a status update for the
first insurance claim;
(b) a computer server communicatively coupled to the one or
more memory devices, the computer server configured to:
(i) receive from a publisher device claim data that includes
a second plurality of attribute values, the second plurality
of attribute values including:
a second claim identifier,
a second event identifier,
a second timestamp, and
a second event message;
(ii) automatically determine that the second claim
identifier identifies the first insurance claim identified by
the first claim identifier stored to the one or more memory
devices;

21, 2017 (“App. Br.”); Examiner’s Answer, mailed March 13, 2018
(“Ans.”); and Reply Brief, filed June 13, 2018 (“Reply Br.”).
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(iii) automatically determine whether the second event
identifier identifies (1) the first claim event identified by
the first event identifier or (2) a second claim event; and
(iv) when the second event identifier identifies the second
claim event: transmit to a client device the first event
message stored to the one or more memory devices and the
second event message received from the publisher device,
wherein the first event message and the second event
message are transmitted to the client device; and
(c) a client device communicatively coupled to the computer
server, the client device configured to:
(i) receive the first event message and the second event
message transmitted by the computer server; and
(ii) display the first event message and the second event
message according to a chronological order determined
from the first timestamp associated with the first claim
event and the second timestamp associated with the
second claim event.
REJECTION
The Examiner rejected claims 9–15 under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. Final Act. 4–7.
ANALYSIS
Appellants’ contentions are unpersuasive of reversible Examiner error.
We adopt as our own (1) the findings and reasons set forth by the Examiner
in the action from which this appeal is taken (Final Act. 2–7) and (2) the
reasons set forth by the Examiner in the Examiner’s Answer in response to
Appellants’ Appeal Brief (Ans. 3–4) and concur with the conclusions
reached by the Examiner. We highlight the following for emphasis.
Section 101 defines patentable subject matter: “Whoever invents or
discovers any new and useful process, machine, manufacture, or
composition of matter, or any new and useful improvement thereof, may
obtain a patent therefor, subject to the conditions and requirements of this
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title.” 35 U.S.C. § 101. The U.S. Supreme Court, however, has “long held
that this provision contains an important implicit exception” that “[l]aws of
nature, natural phenomena, and abstract ideas are not patentable.” Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012)
(quotation omitted). “Eligibility under 35 U.S.C. § 101 is a question of law,
based on underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161,
1166 (Fed. Cir. 2018).
To determine patentable subject matter, we undertake a two part test.
“First, we determine whether the claims at issue are directed to one of those
patent-ineligible concepts” of “laws of nature, natural phenomena, and
abstract ideas.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014).
“The inquiry often is whether the claims are directed to ‘a specific means or
method’ for improving technology or whether they are simply directed to an
abstract end-result.” RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322,
1326 (Fed. Cir. 2017). A court must be cognizant that “all inventions at
some level embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas” (Mayo, 566 U.S. at 71), and “describing the
claims at . . . a high level of abstraction and untethered from the language of
the claims all but ensures that the exceptions to § 101 swallow the rule.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016).
Instead, “the claims are considered in their entirety to ascertain whether their
character as a whole is directed to excluded subject matter.” Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
If the claims are directed to an abstract idea or other ineligible
concept, then we continue to the second step and “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
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whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). The Court describes the second step as a search for “an
‘inventive concept’– i.e., 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.’” Id. (quoting Mayo, 566
U.S. at 72–73).
The Office recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“Guidance”). Under that guidance, we look to
whether the claim recites
(1) a judicial exception, such as a law of nature or any of the
following groupings of abstract ideas:
(a) mathematical concepts, such as mathematical formulas;
(b) certain methods of organizing human activity, such as a
fundamental economic practice; or
(c) mental processes, such as an observation or evaluation
performed in the human mind;
(2) any additional limitations that integrate the judicial exception
into a practical application (see MPEP § 2106.05(a)–(c), (e)–(h));
and
(3) any additional limitations beyond the judicial exception that,
alone or in combination, were not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)).
See Guidance 52, 55, 56. Under the Guidance, if the claim does not recite a
judicial exception, then it is eligible under § 101, and no further analysis is
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necessary. Id. at 54. Similarly, under the Guidance, “if the claim as a whole
integrates the recited judicial exception into a practical application of that
exception,” then no further analysis is necessary. Id. at 53, 54.
USPTO Step 2A, Prong 1
In comparing claim 9 to those found ineligible in Ultramerical3, the
Examiner finds the claims recite steps of insurance claim processing that are
certain methods of organizing human activity:
All the steps in the claims are directed to a series of behavioral
activities including e.g. receiving. . . claim data . . . , determining
that the second claim identifier identifies the first insurance claim
. . . , determining . . . that the second event identifier identifies
first claim event or a second claim event, transmitting ... the first
and the second event messages ... , receiving the first and second
event messages . . . , and display/show the first and the second
event messages . . . , which, when viewed individually and in
combination, constitute an abstract idea of certain methods of
organizing human activity. These particular behaviors are
“intrapersonal or interpersonal activities” of “managing
relationships or transactions between people, social activities, or
behaviors,” “satisfying or avoiding a legal obligation,” and
“advertising, marketing, and sales activities or behaviors,” which
are subcategories of activities that the precedential courts have
found to be abstract idea under “certain methods of organizing
human activity.”
Final Act. 4–5. The Examiner further determines the “data processing

3 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014)
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involved in the claims . . . is an ‘idea of itself,’” e.g., a mental process.4,5 Id.
at 5.
Initially, Appellants do not contend specific error in the Examiner’s
determination that claim 9 recites certain methods of organizing human
activity determined to be abstract ideas: “even assuming for the sake of
argument that ‘a series of behavioral activities’ is an abstract idea identified
by the courts and that claim 9 is directed to ‘a series of behavioral activities,’
claim 9 is eligible under Step 2B of the Mayo framework.” App. Br. 12. In
the Answer, the Examiner provides additional reasoning for the
determination that the claims recite an abstract idea, finding “the current
claims are directed to method for automatically providing timely status
updates about an insurance claim. It is clear that these concepts relate to

4 Although the previously recognized category of “an idea of itself is not one
of the currently recognized categories, it is sufficient for the purposes of the
present appeal that the claimed concepts reasonably can be characterized as
falling within the still-recognized category of mental processes. See, e.g.,
MPEP § 2106.04(a)(2)(III):
The courts have used the phrase ‘an idea ‘of itself’” to describe
an idea standing alone such as an uninstantiated concept, plan or
scheme, as well as a mental process (thinking) that “can be
performed in the human mind, or by a human using a pen and
paper.” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372 (Fed. Cir. 2011).
5 Characterizing the abstract idea as a mental process instead of an idea of
itself does not constitute a change to the thrust in the Examiner’s rejection.
Appellants demonstrate they understood the characterizations to be
interrelated and had a reasonable opportunity to respond to this position.
See, e.g., Response to Non-Final Office Action and of November 30, 2016
filed March 7, 2017, pp. 15–16 (“Claim 9 cannot be performed in the human
mind, or by a human using a pen and paper.”)
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economic practices in which monetary transactions between people are
managed.” Ans. 3. The Examiner further characterizes the claims as
providing an improvement to “the abstract idea of monitoring insurance
claims.” Id.
For the first time in the Reply Brief, Appellants contend the rejection
is deficient because “the Examiner failed to identify which claim elements
constitute the proffered concept under step 2A and which claim elements are
considered ‘additional elements’ under step 2B.” Reply Br. 2–3. Appellants
further contest the Examiner’s characterization of the claims as “recit[ing]
‘automatically providing timely status updates about an insurance claim’
[because] the Examiner has not identified any specific claim limitations that
allegedly describe this concept.” Id. at 4. Appellants further argue, even if
otherwise, “no court Applicant is aware of has found this concept to be an
ineligible ‘abstract idea.’” Id.
Appellants’ arguments are not persuasive of reversible Examiner
error. Appellants’ argument presented for the first time in the Reply Brief
are untimely. Absent a showing of good cause explaining why the
arguments could not have been presented in the Appeal Brief, this newly
presented argument is waived. 37 C.F.R. § 41.41(b)(2) (2016).
Furthermore, even if timely presented, Appellants’ newly presented
arguments are unpersuasive. Contrary to Appellants’ contention, the
Examiner has identified specific limitations found to recite concepts
considered to be abstract ideas. See Final Act. 4–5, discussed above.
We are also unpersuaded of error because the Examiner determines
the claim limitations belong to two or more categories of concepts
considered to be abstract ideas. In particular, the various actions detailed by
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the claim may be characterized under several categories of concepts
included among those considered to constitute certain methods of organizing
human activity. For example, determining that the second claim identifier
identifies a first insurance claim is an aspect of providing insurance coverage
considered to be a fundamental economic principle or practice that is a
certain method of organizing human activity. See MPEP
§ 2106.04(a)(2)(II)(A). The same activity is also part of satisfying or
avoiding a legal obligation, i.e., associating an event with a particular
insurance claim according to an insurance policy contract. Id. Still further,
the activity can be performed in the human mind, or by a human using a pen
and paper and, therefore, is a mental process. See MPEP §
2106.04(a)(2)(III). Likewise, determining whether a second event identifier
identifies a first claim event or a second claim event is also a fundamental
economic practice involved in providing insurance and, at the same time, a
mental process that can be performed in the human mind, or by a human
using a pen and paper.
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,
“An 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, 855 F.3d at 1327 (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
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also Fair Warning IP, 839 F.3d at 1093-94 (determining the pending claims
were directed to a combination of abstract ideas). Thus, the patentability
analysis in this Appeal does not turn on exactly how various limitations are
characterized as being abstract, i.e., as either an abstract “mental processes”
or “certain methods of organizing human activity.” Accordingly, for the
reasons discussed above, because claim 9 recites certain methods of
organizing human activity (e.g., providing insurance being a fundamental
economic principle or practice) and a mental activities, both of which are
considered to be abstract ideas, claim 9 recites an abstract idea.
We are also unpersuaded by Appellants argument the Examiner erred
by describing the claims as “recit[ing] ‘automatically providing timely status
updates about an insurance claim’ [because] the Examiner has not identified
any specific claim limitations that allegedly describe this concept.” Reply
Br. 4. We note the characterization is consistent claim language appearing
in the preamble of claim 9 (“[a]n online claim system for automatically
providing timely status updates”) and in the body of the claim (e.g., “a first
claim event relating to a first insurance claim”).
We are further unpersuaded by Appellants contention that “no court
. . . has found this concept to be an ineligible ‘abstract idea.’” Id. There is
no requirement an examiner provide evidentiary support in every case before
a conclusion can be made that a claim recites an abstract idea. Although
evidence may be helpful, e.g., where facts are in dispute, it is not always
needed. See Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1325–26 (Fed. Cir. 2016) (“[I]t is also possible, as numerous
cases have recognized, that a § 101 analysis may sometimes be undertaken
without resolving fact issues”).
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Furthermore, and contrary to Appellants’ contention, there are
numerous decisions in support of a conclusion the claims recite one or more
concepts determined to be abstract. For example, the Federal Circuit has
held that managing an insurance policy is a fundamental economic practice,
i.e., an abstract idea. See, e.g., Bancorp Servs., L.L.C. v. Sun Life Assur. Co.
of Canada (U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (concluding that
“managing a stable value protected life insurance policy by performing
calculations and manipulating the results” is an abstract idea); Accenture
Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344−45
(Fed. Cir. 2013) (finding ineligible claims directed to generating rule-based
tasks for processing an insurance claim). We note that an integral part of
managing an insurance policy is processing data related to the policy
including claims made against the policy, organizing the data, and providing
information about the status of an insurance claim.
We also agree with the Examiner that the decision in CyberSource
Corp. v. Retail Decisions, Inc. 654 F.3d 1366, 1372 (Fed. Cir. 2001)
supports a determination that the mental steps of claim 9 recite an abstract
idea. Final Act. 3. In Cybersource the Federal Circuit held that a method
for verifying the validity of a credit card transaction over the Internet was
patent ineligible subject matter as an abstract idea capable of being
performed in the human mind or by a human using pen and paper.
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Likewise, the Examiner’s reliance on the Classen6 and Content Extraction7
decisions also support such a determination. See Final Act. 5.
For the reasons discussed above, we conclude claim 9 includes
activities that are certain methods of organizing human activity and mental
processes, both of which are abstract ideas. We therefore proceed to Prong 2
to determine whether the claims are “directed to” the judicial exception, or
whether the judicial exception is integrated into a practical application.
USPTO Step 2A, Prong 2
The Examiner finds “the claims do not include additional elements
that are sufficient to amount to significantly more than the judicial
exception.” Final Act. 5. Inter alia, the Examiner finds the claims do not
recite an improvement or other limitation described in MPEP §§ 2106.05(a)–
(c), (e)–(h), i.e., a feature that would integrate the judicial exception into a
practical application. Id. at 5–6. Instead, the Examiner finds the additional
elements only add insignificant extra-solution activities to the judicial
exception (e.g., data collection and display of results). Id. at 6.
Appellants contend “the described methods and systems provide a
technical solution that improves these existing routine and conventional
techniques for updating customers.” App. Br. 13. In support of their
contention Appellants direct attention paragraph 14 of the Specification
describing the operation of the online [insurance] claim system (“OCS”) of

6 Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed.
Cir. 2011) (collecting and comparing known information is an abstract idea).
7 Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n,
776 F.3d 1343, 1358–59 (Fed. Cir. 2014) (data recognition and storage is an
abstract idea).
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claim 9. Id. As therein described, the OCS provides “a comprehensive
review of all recent events relating to the processing of a claim, enabling a
customer to use the device for obtaining the overall status of the claim as the
claim is processed.” Spec. ¶ 13. Advantages described include the
provision of personalized service to customers and providing for an increase
in the number of clients that can be served with a relatively minimal increase
in cost. Id. Appellants further contend claim 9 is directed to solving a
problem of processing insurance claims requiring the exchange of
information with third parties (e.g., repair shops, car rental shops) having
computer systems that are not integrated with insurance company systems.
App. Br. 14.
The Examiner responds:
[L]ike the claims, paragraph 0014 [A]ppellant[s] cited describes
“ . . . [a] technique for providing a customer with a
comprehensive review of all recent activities related to the
processing of a claim as the claim is being processed . . . ”
[w]hich is not a computer related “technological solution” to [a]
“technological problem”. At best it is merely improving the
abstract idea of monitoring insurance claims.
Ans. 3.
Appellants reply, asserting the Examiner’s analysis is deficient for
failure to specifically designate which elements of claim 9 are considered to
be abstract and which elements are additional to the abstract idea and are to
be considered in determining if the claim includes significantly more than
the judicial exception. Reply Br. 5. Appellants further contend the
Examiner improperly relies on paragraph 14 of the Specification for
supporting a conclusion that the claim elements, although possibly an
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improvement to monitoring insurance claims, do not amount to significantly
more than the abstract idea. Id. at 6.
Appellants’ contentions are unpersuasive of reversible Examiner
error. Appellants fail to identify and explain why any particular claim
element consistutes significantly more than the abstract concepts identified
by the Examiner (see Final Act. 4–5) and recited by the claim. Appellants’
generalized allegations are insufficient standing alone. Based on our review
of claim 9 and in the absence of sufficient particularized argument, we do
not find any limitations constituting significantly more. That is, although
possibly improving the monitoring of insurance claims as argued by
Appellants, claim 9 does not recite:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See MPEP §§ 2106.05(a)–(c), (e)–(h). Instead of providing a technical
solution to a technical problem, the argued advantage of providing
personalized service to customers is part of the underlying concept of
providing timely status updates about an insurance claim.
We are also unpersuaded by Appellants’ argument claim 9 is a
technological improvement because it can handle greater numbers of clients
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than can be provided by manual processing. App. Br. 13. Rather than a
technological improvement, the claim merely employ a computer to collect,
coordinate, and make available insurance claim, i.e., the processor simply
performs more efficiently what could otherwise be accomplished manually.
See Bancorp, 771 F.Supp.2d at 1065.
Thus, for the reasons discussed above, claim 9 does not integrate the
judicial exception into a practical application. See Guidance 54–56; MPEP
§ 2106.05(a)–(c), (e)–(h).
USPTO Step 2B
Finally, we agree with the Examiner that:
The additional element(s) or combination of elements in the
claim(s) other than the abstract idea per se amount(s) to no more
than: mere instructions to implement the idea on a computer and
recitation of generic computer structure that serves to perform
generic computer functions that are well-understood, routine,
and conventional activities previously known to the pertinent
industry.
Final Act. 4. We further agree:
None of these [claimed] functions are distinguishable from what
the courts have recognized as well-understood, routine, and
conventional generic computer functions; rather, each of these
particular functions fall under at least one of the following
computer functions that the courts already recognized as “merely
generic”: performing repetitive calculations, receiving,
processing, and storing data, electronic recordkeeping,
automating mental tasks, and receiving or transmitting data over
a network, e.g., using the Internet to gather data.
Final Act. 6.
We are not persuaded by Appellants’ contention “the non-routine and
unconventional nature of claim 9 is made evident by the lack of a § 102 or a
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§ 103 rejection in the outstanding Action.” App. Br. 13. As explained by
the Examiner, “because there is no art rejection, this does not mean
combination of claim elements is unconventional and non-routine in the
industry. The 101 statue is a separate test.” Ans. 3. In particular, whether
the subject matter of claim 9 is novel is not dispositive with respect to the
patent eligibility inquiry. Mayo, 566 U.S. at 78, 88 (even a truly
groundbreaking abstract idea, like Einstein’s theory of relativity, cannot
make a claim patent-eligible); Affinity Labs of Texas, LLC v. DirecTV, LLC,
838 F.3d 1253, 1263 (Fed. Cir. 2016) (novelty “does not avoid the problem
of abstractness”); Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376
(Fed. Cir. 2016) (“a claim directed to a newly discovered law of nature (or
natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility”);
buySAFE, 765 F.3d 1350, 1352 (Fed. Cir. 2014) (abstract ideas are
unpatentable “no matter how ‘[g]roundbreaking, innovative, or even
brilliant’” they may be); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716
(Fed. Cir. 2014) (the fact that a method was “not previously employed in this
art is not enough—standing alone—to confer patent eligibility upon the
claims”).
The only additional elements in claim 9 are the recited server
processors and memory. The written description indicates that the servers
consist of generic computer components. See, e.g., Spec. ¶¶ 38–47, Fig. 6.
The claimed invention uses this system to perform generic computer
functions such as storing, receiving, associating, comparing, transmitting,
and displaying data. See claim 9; cf. Alice, 573 U.S. at 226 (“Nearly every
computer will include a ‘communications controller’ and ‘data storage unit’
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capable of performing the basic calculation, storage, and transmission
functions required by the method claims.”). The written description
provides few details about the system or the functions it performs, which
indicates that both are well known. More so, we note Appellant’s
Specification discloses “OCS 620 includes a server 630 (which may be a
computer such as the computer 800 shown in Figure 8)” yet we are unable to
identify any drawing labeled as Figure 8 or any written description of that
figure or of computer 800. Cf. Hybritech Inc. v. Monoclonal Antibodies,
Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (explaining that “a patent need
not teach, and preferably omits, what is well known in the art”). As a result,
the written description supports the Examiner’s determination that the
additional elements recited in claim 9 are conventional and perform well-
understood, routine, and conventional activities. See Robert W. Bahr,
Memorandum on Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP, Inc.) 3 (Apr. 19, 2018), available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (explaining that a specification that describes additional
elements “in a manner that indicates that the additional elements are
sufficiently well-known that the specification does not need to describe the
particulars of such additional elements to satisfy 35 U.S.C. § 112(a)” can
show that the elements are well understood, routine, and conventional).
Appellants provide insufficient evidence or argument to persuade us
any of the elements of claim 9 other than the underlying abstract idea itself
are other than “well-understood, routine, conventional” in the field. As the
Federal Circuit has held, “the use of conventional computer components,
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such as a database and processors, operating in a conventional manner”
“do[es] not confer patent eligibility.” Intellectual Ventures I LLC v. Capital
One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir. 2015). This is because
“mere automation of manual processes using generic computers does not
constitute a patentable improvement in computer technology.” Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017).
In conclusion, we determine that the limitations of claim 9 do not add
significantly more to the patent-ineligible abstract idea. Accordingly, the
claims are directed to (i) mental processes and (ii) certain methods
organizing human activity, i.e., fundamental economic principles or
practices. Both mental processes and certain methods of organizing human
behavior are identified in the Memorandum as abstract ideas. Furthermore,
the claims do not recite limitations that amount to significantly more than
the abstract idea itself. Accordingly, we sustain the rejection of independent
claim 9 under 35 U.S.C. § 101 and, for the same reasons, the rejection of
dependent claims 10–15 which are not argued separately with particularity.
DECISION
We affirm the Examiner’s decision to reject claims 9–15 under 35
U.S.C. § 101.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED