Stride Health, Inc.

Patent Trials and Appeals Board

Aug 14, 2020

2020000813 (P.T.A.B. Aug. 14, 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.
14/642,725 03/09/2015 Noah B. Lang STRI1002UA 7367
137888 7590 08/14/2020
HACKLER DAGHIGHIAN MARTINO & NOVAK
10900 WILSHIRE BLVD.
SUITE 300
LOS ANGELES, CA 90024
EXAMINER
ROBINSON, KITO R
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
08/14/2020 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):
USPTO@dockettrak.com
paul@hdmnlaw.com
pia@hdmnlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NOAH B. LANG and MATTHEW C. BUTNER
Appeal 2020-000813
Application 14/642,725
Technology Center 3600
Before BRYAN F. MOORE, LARRY J. HUME, and JASON J. CHUNG,
Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1–23, which are all rejections pending
in the application. See Final Act. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Stride Health, Inc.
Appeal Br. 4.
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STATEMENT OF THE CASE2
The claims are directed to methods and apparatus for consumer
evaluation of insurance options. See Spec. (Title). In particular, Appellant’s
disclosed embodiments and claimed invention “relate[] to systems, methods
and apparatuses for consumer evaluation of insurance options. More
particularly, the present patent document relates to systems, methods and
apparatuses to allow consumers to evaluate, compare and choose between
various health insurance plans.” Spec. ¶ 2.
Exemplary Claims
Claims 1 and 3, reproduced below, are representative of the subject
matter on Appeal (emphases added to contested prior-art limitations):
1. A method for transforming user data inputs into a
health insurance plan recommendation comprising:
receiving user data inputs from a graphical user interface
including location data, gender data, age data and smoking
habits data;
determining a subset of available health insurance plans
from a set of plans in a database based on the location data;
querying a second database for historical data records of
other people with personal information that matches a subset of
the user data inputs;
receiving health event data about a plurality of health
events for each historical data record returned by the query;

2 Our decision relies upon Appellant’s Appeal Brief (“Appeal Br.,” filed
July 3 2019); Reply Brief (“Reply Br.,” filed Nov. 11, 2019); Examiner’s
Answer (“Ans.,” mailed Sept. 9, 2019); Final Office Action (“Final Act.,”
mailed June 1, 2018); and the original Specification (“Spec.,” filed
Mar. 9, 2015) (claiming benefit of US 61/949,963, filed Mar. 7, 2014).
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calculating care cost for each health insurance plan in the
subset of available health insurance plans by calculating costs
associated with the health events under each health insurance
plan in the subset of available health insurance plans;
calculating a total cost of ownership for each health
insurance plan in the subset of available health insurance plans
by adding monthly premiums for each health insurance plan in
the subset of available health insurance plans to the care costs
for that plan; and,
transmitting a health insurance plan recommendation
based on the total cost of ownership to the graphical user
interface.
3. The method of claim 1 further comprising:
creating a plurality of weighted multipliers based on the
user data inputs;
producing a plurality of category scores for categories
including benefit levels, cost sharing, provider network volume,
care and drug availability for each health insurance plan in the
subset of available health insurance plans;
multiplying each category score by a weight multiplier
from the plurality of weighted multipliers to produce weighted
category scores;
multiplying the total cost of ownership by a weighted
multiplier to produce a weighted total cost of ownership;
summing the weighted category scores and weighted total
cost of ownership for each health insurance plan in the subset of
available health insurance plans to produce a total weighted
score; and,
transmitting the health insurance plan recommendation of
the health insurance plan with the highest total weighted score.
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REFERENCES
The prior art relied upon by the Examiner as evidence is:
Name Reference Date
Gelber U.S. 2003/0069760 A1 Apr. 10, 2003
Shrivastava et al. (“Shrivastava) U.S. 2011/0015950 A1 Jan. 20, 2011
Celona et al. (“Celona”) U.S. 8,589,189 B2 Nov. 19, 2013
REJECTIONS
R1. Claims 1–23 stand rejected under 35 U.S.C. § 101 because the
claimed invention is directed to a judicial exception (i.e., a law of nature, a
natural phenomenon, or abstract idea) without significantly more. Final
Act. 8.
R2. Claims 1, 2,3 4–6, 8–12, 14–16, and 18–23 stand rejected under
35 U.S.C. § 103 as being unpatentable over the combination of Celona and
Shrivastava. Final Act. 11.
R3. Claims 3, 7, 13, and 17 stand rejected under 35 U.S.C. § 103 as
being unpatentable over the combination of Celona, Shrivastava, and Gelber.
Final Act. 19.
CLAIM GROUPING
Based on Appellant’s arguments (Appeal Br. 14–27) and our
discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of patent-

3 We note an apparent typographical error in the explicit statement of
Rejection R2, which does not include claim 2, but which is included in the
Examiner’s analysis in the detailed rejection. Compare Final Act. 11
with 13. Therefore, we include claim 2 in Rejection R2.
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ineligible subject matter Rejection R1 of claims 1–23 on the basis of
representative claim 1; we decide the appeal of obviousness Rejection R2 of
claims 1, 2, 4, 5, 8–12, 14–16, and 18–23 on the basis of representative
claim 1. We decide the appeal of obviousness Rejection R2 of claim 6,
infra. We also decide the appeal of obviousness Rejection R3 of claims 3, 7,
13, and 17, infra.
ISSUES AND ANALYSIS
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
We agree with particular arguments presented by Appellant with
respect to Rejection 3 of claims 3, 7, 13, and 17.
However, we disagree with Appellant’s arguments with respect to
Rejection R2 of claims 1, 2, 4, 5, 8–12, 14–16, and 18–23 and, unless
otherwise noted, we incorporate by reference herein and adopt as our own:
(1) the findings and reasons set forth by the Examiner in the action from
which this appeal is taken, and (2) the reasons and rebuttals set forth in the
Examiner’s Answer in response to Appellant’s arguments. We highlight and
address specific findings and arguments regarding claim 1 for emphasis as
follows.
1. § 101 Rejection R1 of Claims 1–23
Issue 1
Appellant argues (Appeal Br. 14–22; Reply Br. 2–3) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
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ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
Principles of Law
A. 35 U.S.C. § 101
An invention is patent-eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.4
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). 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

4 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof 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
Supreme Court held “[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 attempt to patent a mathematical formula.”). Having
said that, the Supreme 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
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formula to a known structure or process may well be deserving of patent
protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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 (citation 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 Revised Guidance
The PTO published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
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Under the Revised 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);5 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).6
See Revised Guidance 52–53.
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:
(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
(4) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.7
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain

5 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
6 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Revised Guidance 52 (footnotes omitted).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.8
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim

8 In the rare circumstance in which an Examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,9
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment

9 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though one or more claim
elements may recite a judicial exception.10 The Federal Circuit has held
claims eligible at the second step of the Alice/Mayo test (USPTO Step 2B)
because the additional elements recited in the claims provided “significantly
more” than the recited judicial exception (e.g., because the additional
elements were unconventional in combination).11 Therefore, if a claim has
been determined to be directed to a judicial exception under Revised Step
2A, we must also evaluate the additional elements individually and in
combination under Step 2B to determine whether they provide an inventive

10 See, e.g., Diehr, 450 U.S. at 187.
11 See, e.g., Amdocs, Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300,
1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
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concept (i.e., whether the additional elements amount to significantly more
than the exception itself).12
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” 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, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
Section III.B.13
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the

12 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
13 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo 3–4.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements do not amount to significantly more than the exception itself, the
claim is ineligible under Step 2B, and the claim should be rejected for lack of
subject matter eligibility.
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Analysis
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined “the claims as a whole recite Certain
Methods of Organizing Human Activity because providing health insurance
plan recommendations based on user information is a fundamental economic
practice. Therefore the claims recite an abstract idea.” Ans. 5; see also
Final Act. 8–10.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention “relates to systems, methods and apparatuses for consumer
evaluation of insurance options. More particularly, the present patent
document relates to systems, methods and apparatuses to allow consumers to
evaluate, compare and choose between various health insurance plans.”
Spec. ¶ 2.
Appellant’s Abstract describes the invention as:
Methods, systems and apparatus are provided for
recommending health insurance plans. Data inputs are received
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from a graphical user interface. These inputs may include data
about location, gender, age, health conditions, prescription
drugs and smoking habits. A subset of available health
insurance plans is determined. A second database is queried for
information about health care events and/or costs of people that
match a subset of the user data inputs. Care costs are calculated
for each health insurance plan by simulating the health events
of the similar people returned from the second database under
each health care plan. A total cost of ownership for each health
insurance plan is calculated by adding monthly premiums for
each health insurance plan to the care costs for that plan. A
health insurance plan recommendation is made based at least in
part and sometimes exclusively on the total cost of ownership.
Spec. 47 (Abstract).
With respect to this phase of the analysis, Appellant argues:
Applicant has appreciated that consumers in general do not like
typing significant amounts of information into a web browser
and dislike providing potentially private information even
more. Accordingly, Applicant has come up with a process for
providing a better way to select, present and compare insurance
policies with very limited user input. This unquestionably
solves a problem in the art and is an improvement in the
technology of how insurance plans are presented to consumers
and particularly, how they are presented via a computer and
computer network. Applicant’s claims are directed to a method
of calculating a total cost of ownership of a plurality of
insurance plans with limited input of a user's personal data.
Applicant's claims are a significant improvement over the prior
art because they allow the user to enter less data, which
decreases the time the user needs to enter data, helps protect
sensitive user information, and creates a better overall user
experience when shopping for health insurance. In addition,
despite the limited data input by the user, Applicant's claimed
methods still provide incredibly accurate predictions of total
cost of ownership.
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Appeal Br. 15–16 (emphasis added). We are not persuaded by Appellant’s
arguments, which are not commensurate with the scope of the claims, which
do not recite or allude to a reduction in the amount of typing of information
into a web browser and an associated decrease in the time necessary to enter
data, and which provide no reference to the accuracy of predictive outcomes,
i.e., “incredibly accurate predictions.”
Appellant further argues, similar to McRO, “Applicant's claims are
directed to an improvement in technology. Applicant's claims define a new
method of calculating a total cost of ownership of various different health
insurance plans with limited user input.” Appeal Br. 17 (citing McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
We are not persuaded by Appellant’s argument that the claims are
similar to those held patent-eligible in McRO. The claims in McRO recited a
“specific . . . improvement in computer animation” using “unconventional
rules that relate[d] sub-sequences of phonemes, timings, and morph weight
sets.” McRO, 837 F.3d at 1302–03, 1307–08, 1314–15. In McRO, “the
incorporation of the claimed rules, not the use of the computer,” improved
an existing technological process. Id. at 1314. Appellant does not, however,
identify how claim 1 improves an existing technological process, other than
to allege the “claims define a new method of calculating a total cost of
ownership of various different health insurance plans with limited user
input.” Appeal Br. 17. See Alice, 573 U.S. at 223 (explaining that “the
claims in Diehr were patent eligible because they improved an existing
technological process”). Rather, claim 1 concerns improvement to a
business process, i.e., a “method for transforming user data inputs into a
health insurance plan recommendation.” Appeal Br. 28 (Claims App.). In
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addition, Appellant does not direct us to any evidence that the claimed
“receiving,” “determining,” “querying,” “receiving . . . data,” “calculating,”
and “transmitting” steps correspond to unconventional rules. See SAP Am.,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing
McRO):
The claims in McRO were directed to the creation of something
physical—namely, the display of “lip synchronization and
facial expressions” of animated characters on screens for
viewing by human eyes. Id. at 1313. The claimed improvement
was to how the physical display operated (to produce better
quality images), unlike (what is present here) a claimed
improvement in a mathematical technique with no improved
display mechanism. The claims in McRO thus were not
abstract in the sense that is dispositive here. And those claims
also avoided being “abstract” in another sense reflected
repeatedly in our cases (based on a contrast not with “physical”
but with “concrete”): they had the specificity required to
transform a claim from one claiming only a result to one
claiming a way of achieving it.
SAP, 898 F.3d at 1167 (emphasis added).
Appellant further argues, “[m]uch like the claims in DDR, Applicant’s
claims are directed to providing an improved user experience over the
internet. Applicant’s claims use a number of rules just like the claims of
[McRO] and the novelty and non-obviousness of the claims is based on the
steps of the process not the use of a computer.
Appellant’s reliance on DDR (Appeal Br. 17) is misplaced as the
recited claims do not improve the computer. In DDR, the claims at issue
involved, inter alia, “web pages displays [with] at least one active link
associated with a commerce object associated with a buying opportunity of a
selected one of a plurality of merchants” (claim 1 of US 7,818,399). The
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Federal Circuit found the claims in DDR to be patent-eligible under step one
of the Alice test because “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks.” DDR Holdings v. Hotels.com, 773 F.3d
1245, 1257 (Fed. Cir. 2014). Specifically, the Federal Circuit found the
claims addressed the “challenge of retaining control over the attention of the
customer in the context of the Internet.” Id. at 1258. We find the rejected
claims on Appeal are dissimilar to DDR’s web page with an active link, and
the Specification does not support the view that the computer related claim
elements are unconventional. See Spec. ¶¶ 37–39.
Appellant also argues “the claims are unquestionably novel and non-
obvious,” and “[t]he novelty in Applicant’s methods is not only in how the
total health care costs are estimated, but also in how the users are queried for
information, i.e. the exact information requested, the method and order
which it is requested, and how the limited user information is transformed
into a health care recommendation.” Appeal Br. 14. Appellant further
argues:
Applicant’s claims are not computer specific and although
performed over the internet to alleviate specific problems
related to the reluctance of users of the internet to enter
extensive and/or personal information, Applicant’s methods are
novel and nonobvious due to their specific steps, not simply the
use of the computer or a complex plurality of general computer
components. To this end, Applicant’s claims are distinguishable
over the claims of the cases cited by the Examiner in the FOA.
Appeal Br. 18.
In response, we note the Supreme Court emphasizes, “[t]he ‘novelty’
of any element or steps in a process, or even of the process itself, is of no
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relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S.
at 188–89 (emphasis added). Our reviewing court further guides that
“[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that “[e]ven assuming” that a particular claimed
feature was novel does not “avoid the problem of abstractness”).
In TABLE I below, we identify in italics the specific claim limitations
in claim 1 that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques, and underline limitations representing
extra or post-solution activity:
TABLE I
Independent Claim 1 Revised Guidance
A method for transforming user
data inputs into a health
insurance plan recommendation
comprising:
A process (method) is a statutory
subject matter class. See 35 U.S.C.
§ 101. See 35 U.S.C. § 101 (“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
title.”).
[L1] receiving user data inputs
from a graphical user interface
[GUI] including location data,
gender data, age data and
smoking habits data;
Data gathering and display elements.
i.e., receiving user data inputs from a
GUI, are merely insignificant extra-
solution activity using generic
components that do not add
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Independent Claim 1 Revised Guidance
significantly more to the abstract idea
to render the claimed invention
patent-eligible. See In re Bilski, 545
F.3d 943, 962 (Fed. Cir. 2008) (en
banc), aff’d on other grounds, 561
U.S. 593 (2010) (“[T]he involvement
of the machine or transformation in
the claimed process must not merely
be insignificant extra-solution
activity”); see also MPEP
§ 2106.05(g); and see buySAFE, Inc.
v. Google, Inc., 765 F.3d 1350, 1355
(Fed. Cir. 2014) (computer receives
and sends information over a
network).
A GUI is a generic computer
component.
[L2] determining a subset of
available health insurance plans
from a set of plans in a database
based on the location data;
“Determin[ing] . . . available health
insurance plans . . . based on the
location data” is an abstract idea, i.e.,
an observation, evaluation, judgment,
opinion” which could be performed as
a mental process. See Revised
Guidance 52.
Storing information in a database, i.e.,
a generic computer component, is
insignificant extra-solution activity.
2019 Revised Guidance; see also
MPEP § 2106.05(g).
[L3] querying a second
database for historical data
records of other people with
personal information that
matches a subset of the user data
inputs;
“[Q]uerying . . . historical data
records” to determine a match with “a
subset of the user data inputs” is an
abstract idea, i.e., an observation,
evaluation, judgment, opinion” which
could be performed as a mental
process. See Revised Guidance 52.
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Independent Claim 1 Revised Guidance
A database is a generic computer
component.
[L3] receiving health event data
about a plurality of health events
for each historical data record
returned by the query;
Receiving or gathering information,
i.e., health event data returned by a
query, is merely insignificant extra-
solution activity that does not add
significantly more to the abstract idea
to render the claimed invention
patent-eligible. Revised Guidance 55,
n.31.
[L4] calculating care cost for
each health insurance plan in
the subset of available health
insurance plans by calculating
costs associated with the health
events under each health
insurance plan in the subset of
available health insurance plans;
A mathematical calculation is an
abstract idea. Revised Guidance 52
and n.12 citing SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163
(Fed. Cir. 2018) (holding that claims
to a ‘‘series of mathematical
calculations based on selected
information’’ are directed to abstract
ideas).
[L5] calculating a total cost of
ownership for each health
insurance plan in the subset of
available health insurance plans
by adding monthly premiums for
each health insurance plan in
the subset of available health
insurance plans to the care costs
for that plan; and,
A mathematical calculation is an
abstract idea. Revised Guidance 52
and n.12 citing SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163
(Fed. Cir. 2018) (holding that claims
to a ‘‘series of mathematical
calculations based on selected
information’’ are directed to abstract
ideas).
[L6] transmitting a health
insurance plan recommendation
based on the total cost of
ownership to the graphical
user interface.
Transmitting information for display
is insignificant extra-solution activity.
Revised Guidance 55, n.31; see also
MPEP § 2106.05(g).
Appeal Br. 28 (Claims App.).
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Under the broadest reasonable interpretation standard,14 we conclude
limitations L1 through L6 recite steps that would ordinarily occur when
making an insurance plan recommendation based upon a total cost of
ownership. See Final Act. 8–10. For example, calculating a care cost for
each health insurance plan, and calculating a total cost of ownership for each
health insurance plan by adding monthly premiums for each health insurance
plan to the care costs for that plan are operations that generally occurs when
making an insurance recommendation based upon a total cost of ownership.
Further, steps L2 through L5 are abstract ideas, whether initiated person-to-
person, on paper, or using a computer.
We determine that claim 1, overall, recites a certain method of
organizing human activity in the form of a commercial interaction that may
also be performed by pen and paper. This type of activity, i.e., making an
insurance plan recommendation based upon a total cost of ownership, as
recited overall in these limitations, for example, and aside from any
computer-related aspects, includes longstanding conduct that existed well
before the advent of computers and the Internet, and could be carried out by
a human with pen and paper. See CyberSource Corp. v. Retail Decisions,

14 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That purely mental processes
can be unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.”).15
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
method for transforming user data inputs into a health insurance plan
recommendation recites an abstract idea. We conclude claim 1, under our
Revised Guidance, recites a judicial exception of making an insurance plan
recommendation based upon a total cost of ownership, i.e., a certain method
of organizing human activity in the form of marketing and sales activities,
and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a judicial exception, as we conclude
above, we proceed to the “practical application” Step 2A(ii) in which we
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception(s); and

15 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, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
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(b) evaluating those additional elements individually and in combination to
determine whether they integrate the exception into a practical application.
As to the specific limitations, we find limitation [L1] (“receiving user
data inputs”) recites insignificant data gathering. See MPEP § 2106.05(g).
Data gathering, as performed by the steps or function in Appellant’s claims,
is a classic example of insignificant extra-solution activity. See, e.g., In re
Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom, Bilski v.
Kappos, 561 U.S. 593 (2010).
We also find limitation [L6] (“transmitting a health insurance plan
recommendation”) recites insignificant post solution activity. The Supreme
Court guides that the “prohibition against patenting abstract ideas ‘cannot be
circumvented by’ . . . adding ‘insignificant postsolution activity.’” Bilski,
561 U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92).
We further find limitations [L2] (“determining”),16 [L3] (“querying . .
. [and] match[ing] a subset of the user data inputs”), [L4] (“calculating care
cost for each health insurance plan”), and [L5] (“calculating a total cost of
ownership”) recite abstract ideas, as identified in TABLE 1, above.
On this record, we are of the view that Appellant’s claims do not
operate the recited generic computer components (“graphical user interface,”
“a database,” and “a second database”) in an unconventional manner to
achieve an improvement in computer functionality. See MPEP § 2106.05(a).

16 We also note the “determining” steps can be carried out by a human in the
mind or by use of pen and paper. See CyberSource, 654 F.3d at 1375.
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We find each of the limitations of claim 1 either recites an abstract
idea, extra or post-solution activity, or generic computer components as
identified in Step 2A(i), supra, and none of the limitations integrate the
judicial exception of making an insurance plan recommendation based upon
a total cost of ownership, i.e., a certain method of organizing human activity
in the form of marketing and sales activities, into a practical application as
determined under one or more of the MPEP sections cited above. The claim
as a whole merely uses instructions to implement the abstract idea on a
computer or, alternatively, merely uses a computer as a tool to perform the
abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of MPEP
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section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e)(“Other
Meaningful Limitations”). Nor does Appellant advance any arguments in
the Brief(s) that are directed to the Bilski machine-or-transformation test,
which would only be applicable to the method (process) claims on appeal.
See MPEP §§ 2106.05(b) (Particular Machine) and 2106.05(c) (Particular
Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a judicial exception, and not integrated
into a practical application, as we conclude above, we proceed to the
“inventive concept” step. For Step 2B we must “look with more specificity
at what the claim elements add, in order to determine ‘whether they identify
an “inventive concept” in the application of the ineligible subject matter’ to
which the claim is directed.” Affinity Labs, 838 F.3d at 1258 (citation
omitted).
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
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more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea17; mere instructions to implement an
abstract idea on a computer18; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.19
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
making an insurance plan recommendation based upon a total cost of
ownership, i.e., a certain method of organizing human activity in the form of
marketing and sales activities, into a patent-eligible application of that
abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and
conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.

17 Alice, 573 U.S. at 221–23.
18 Alice, 573 U.S. at 222–23, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer.
19 Alice, 573 U.S. at 225 (explaining using a computer to obtain data, adjust
account balances, and issue automated instructions involves computer
functions that are well-understood, routine, conventional activities).
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As evidence of the conventional nature of the recited “graphical user
interface,” “database,” and “second database” in method claim 1; and in
system claim 21 that also recites a “first server running software executed by
a processor,” the Specification discloses:
[I]t is appreciated that throughout the description, discussions
utilizing terms such as “processing,” “computing,”
“calculating,” “determining,” “displaying” or the like, refer to
the action and processes of a computer system, or similar
electronic device, that manipulates and transforms data
represented as physical (electronic) quantities within the
computer system’s registers and memories into other data
similarly represented as physical quantities within the electronic
device’s memory or registers or other such information storage,
transmission or display devices.
The embodiments disclosed also relate to an apparatus
for performing the operations herein. This apparatus may be
specially constructed for the required purposes, or it may
comprise a general purpose processor selectively activated or
reconfigured by a computer program stored in the electronic
device. Such a computer program may be stored in a computer
readable storage medium, such as, but is not limited to, any
type of disk, including floppy disks, optical disks, CD-ROMs,
and magnetic-optical disks, read-only memories (ROMs),
random access memories (RAMs), EPROMs, EEPROMs, Flash
memory, magnetic or optical cards, or any type of media
suitable for storing electronic instructions, and each coupled to
a computer system bus.
The algorithms presented herein are not inherently
related to any particular electronic device or other apparatus.
Various general purpose systems may be used with programs in
accordance with the teachings herein, or it may prove
convenient to construct a more specialized apparatus to perform
the required method steps. The required structure for a variety
of these systems will appear from the description below. It will
be appreciated that a variety of programming languages may be
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used to implement the teachings of the embodiments as
described herein.
Spec. ¶¶ 37–39.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellants’
Specification, as quoted above.20
With respect to this step of the analysis, Appellant argues, “[e]ven if
Applicant’s claims are somehow not considered an improvement in
technology, they include ‘significantly more’ and are thus, patent eligible.”
Appeal Br. 20. “Applicant is not looking to the recitation of the computer in
these claims to create patentability but rather the ‘inventive concept’
embodiment in the actual steps of the claims that calculate a total insurance
cost based on the limited information required from the user.” Id.
Applicant believes these steps embody “significantly
more” under the Alice test because they claim a very specific
and particular method/process that is an inventive concept.
There are an infinite number of ways one could recommend a
health insurance plan. From throwing darts at a board to doing
extensive analysis based on hundreds of inputs from users. The
Applicant has appreciated that internet users are averse to
entering lots of information and that the less data needed from a
potential customer, the better chance that customer will follow
through. To this end, Applicant has invented a unique method
for taking very limited user inputs, (Claim 22 is limited to just 4

20 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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user inputs) and calculating very accurately the best insurance
plans available based on these limited inputs. Applicant’s
claims do this by querying for other people with matching
personal information and then returning health events that
occurred to these individuals. The claims then use these health
events to determine a total cost of ownership of various plans
and thus, make recommendations. Dependent claims use these
events in conjunction with probabilities and weights to further
refine the process.
Moreover, as previously stated, Applicant’s claims do not
monopolize the field of recommending insurance plans.
Applicant’s claims do not limit others from selecting,
comparing or presenting health care options in any of the ways
previously done for hundreds of years.
Appeal Br. 21 (emphasis added).
Regarding Appellant’s argument concerning the lack of preemption,
“[w]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility. . . . Where a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“that the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract”).
Appellant additionally argues, “Applicant’s claims have nothing to do
with automation but rather are directed to a specific method of calculating a
total cost of insurance for a plurality of insurance plans and recommending
the best plans based on limited user inputs.” Appeal Br. 22.
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We disagree with Appellant because, the MPEP, based upon our
precedential guidance, provides additional considerations with respect to
analysis of the well-understood, routine, and conventional nature of the
recited computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
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abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”)
(alterations in original).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a “method for transforming user data inputs into a health
insurance plan recommendation” that includes a “graphical user interface,”
“a database,” and “a second database” (claim 1), and similarly for claims 11
and 21, is simply not enough to transform the patent-ineligible abstract idea
here into a patent-eligible invention under Step 2B. See Alice, 573 U.S. at
221 (“[C]laims, which merely require generic computer implementation, fail
to transform [an] abstract idea into a patent-eligible invention.”).
We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that each of Appellant’s claims 1–23, considered as a whole, is
directed to a patent-ineligible abstract idea that is not integrated into a
practical application and does not include an inventive concept.
Accordingly, we sustain the Examiner’s § 101 rejection of independent
claim 1, and grouped claims 2–23 which fall therewith. See Claim
Grouping, supra.
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2. § 103 Rejection R2 of Claims 1, 2, 4, 5, 8–12, 14–16, and 18–23
Issue 2
Appellant argues (Appeal Br. 23–25; Reply Br. 3–5) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 103 as being obvious over the
combination of Celona and Shrivastava is in error. These contentions
present us with the following issues:
(a) Did the Examiner err in finding the cited prior art combination
teaches or suggests “[a] method for transforming user data inputs into a
health insurance plan recommendation” that includes, inter alia, the step of
“receiving health event data about a plurality of health events for each
historical data record returned by the query,” as recited in claim 1?
(b) Did the Examiner err in rejecting claim 1 because of improper
motivation to combine the references in the manner suggested?
Principles of Law
“[O]ne cannot show non-obviousness by attacking references
individually where . . . the rejections are based on combinations of
references.” In re Keller, 642 F.2d 413, 426 (CCPA 1981). “The test for
obviousness is not whether the features of a secondary reference may be
bodily incorporated into the structure of the primary reference. . . . Rather,
the test is what the combined teachings of those references would have
suggested to those of ordinary skill in the art.” Id. at 425.
In KSR, the Court stated “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398,
416 (2007).
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When a work is available in one field of endeavor, design
incentives and other market forces can prompt variations of it,
either in the same field or a different one. If a person of
ordinary skill can implement a predictable variation, § 103
likely bars its patentability. For the same reason, if a technique
has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless
its actual application is beyond his or her skill. . . . [A] court
must ask whether the improvement is more than the predictable
use of prior art elements according to their established
functions.
Id. at 417.
Further, the relevant inquiry is whether the Examiner has set forth
“some articulated reasoning with some rational underpinning to support the
legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed.
Cir. 2006) (cited with approval in KSR, 550 U.S. at 418).
During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Analysis
(a) – All Limitations are Taught or Suggested
The Examiner finds Celona teaches or suggests the contested
“receiving health event data” limitation. Final Act. 12, citing Celona col. 3,
ll. 46–49 (“The recommendation server 12 then displays a plurality of
recommended insurance plans based on set criteria (e.g., historical insurance
data (including geographical data)). In an example embodiment, a plurality
of icons is provided.”).
Appellant argues “[t]his is not the same as ‘receiving health event data
about a plurality of health events for each historical data record returned by
the query’, as required by Applicant’s claim 1. Applicant’s claims require
querying a database to compare personal information (age, sex etc.) of
consumers and returning health event data for those consumers who’s [sic]
records match.” Appeal Br. 24 (emphasis omitted). Appellant further
contends:
As explained by the specification, health care events may be
events such as “pregnancy, concussion, sprained ankle, broken
leg, cancer, heart attack or any other type of particularized
health event.” Applicant’s Application ¶ 68. Applicant’s claims
then use that health event data to calculate care costs and
eventually a total cost.
In contrast, Celona teaches using “historical insurance
plan data” and returns a plurality of insurance plans that have
approved consumer’s with similar medical histories. The step
taught by Celona is completely different from the step required
in Applicant’s claim. The inputs to the query in Celona are
different and the results returned by the query are different.
Nothing in Celona teaches or even suggests that health event
data is returned as a result of querying for matching personal
information as required by Applicant’s claim 1. Instead, Celona
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returns a group of insurance plans that have historically
approved users with medical histories similar to the consumer.
Id.
In response, the Examiner finds, “Celona discloses calculating the
cost of an office visit as seen in Fig. 4 and column 5, lines 20–29 which the
Examiner is interpreting an office visit as a ‘health event’” (Ans. 11); “[i]n
other words, an amount the consumer is willing to pay for a doctor
consultation, lab test and prescription drugs are all health events which may
take place in a doctor’s visit” as taught by Shrivastava in paragraph 28
(Ans. 12); and “health event data can be broadly interpreted (i.e. broadest
reasonable interpretation) as pre-existing medical conditions and calculating
cost for associated with the health even equates to out-of-pocket costs.
Appellant’s claims does not state the health event data is the data of other
people[,] just that a cost is associated with each. In other words, the health
event data is user data (i.e. preexisting conditions) such as pregnancy.”
Ans. 13.
In the Reply, Appellant argues “Appellant’s claims do require the
‘health events’ to be those of ‘other people’ and thus, the Examiner's entire
obviousness argument lacks merit. As may be seen, claim 1 requires
‘querying a second database for historical data records of other people with
personal information that matches a subset of the user data inputs’. To this
end, the ‘historical data records’ are required to be those of ‘other people.’”
Reply Br. 4.
We agree with the Examiner that the claims do not explicitly recite
that the health event data is the data of other people, but arguably, an
implication may be drawn that the “historical data record returned by the
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query” potentially represents “historical data records of other people.”
However, we disagree with Appellant’s overall argument concerning the
alleged deficiencies of the reference combination.
We disagree with Appellant because Celona teaches the data returned
by the query is associated with users with medical histories similar to the
user, which we agree teaches or at least suggests health event data of other
people, i.e.,
the recommendation tool 20 may identify a recommended
group of insurance plans from the available insurance plans
based on historical insurance plan data. For example, the
historical insurance plan data may cluster together health
insurance plans that historically (based on data previously
collected on the platform and stored in the identification server
database 14) have approved users with medical histories
similar to the user.
Celona col. 4, l. 63–col. 5, l. 3 (emphasis added).
Thus, under the broadest reasonable interpretation standard (see
Morris, 127 F.3d at 1054), we agree with the Examiner’s finding (Ans. 13)
that the combination of Celona and Shrivastava teach or suggest the disputed
“receiving health event data” limitation, as recited in claim 1.
(b) – Motivation to Combine
Appellant alleges, even assuming the cited prior art teaches or
suggests all the limitations, “it would not be obvious to combine/modify the
two in a way that results in Applicant’s claim. Neither of the references
teaches receiving a plurality of health events and using them to calculate a
care cost and then calculate a total cost. To this end, it is not obvious why
one skilled in the art would be expected to do so based on the teaching of
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either reference. The Examiner's reasoning in the Final Office Action
provides no help.” Appeal Br. 26.
The Examiner finds:
It would have been obvious to one of ordinary skill in the
art at the time the invention was filed to [combine/modify] the
method of Celona with the technique of Shrivastava because all
the claimed elements were known in the prior art and one
skilled in the art could have combined the elements as claimed
by known methods with no change in their respective functions,
and the combination would have yielded predictable results to
one of ordinary skill in the art at the time of the invention.
Final Act. 13 (alteration in original).
We are not persuaded by Appellant’s argument against the
Examiner’s stated motivation to combine the references because the core of
the argument is that the references do not teach or suggest all the limitations,
and then merely argues a skilled artisan would not find it obvious to
combine the prior art teachings. See Appeal Br. 26. We also are
unpersuaded because, as held in KSR, the claimed invention merely
represents the predictable use of prior art elements according to their
established functions, and thus is unpatentable under § 103. See KSR, 550
U.S. at 417.
Moreover, mere attorney arguments and conclusory statements that
are unsupported by factual evidence are entitled to little probative value. In
re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1984); and Ex parte Belinne, No. 2009-004693,
slip op. at 7-8 (BPAI Aug. 10, 2009) (informative), available at
https://www.uspto.gov/sites/default/files/ip/boards/bpai/decisions/inform/
fd09004693.pdf. See In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011)
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(“[W]e hold that the Board reasonably interpreted Rule 41.37 to require
more substantive arguments in an appeal brief than a mere recitation of the
claim elements and a naked assertion that the corresponding elements were
not found in the prior art.”); cf. In re Baxter Travenol Labs., 952 F.2d 388,
391 (Fed. Cir. 1991) (“It is not the function of this court to examine the
claims in greater detail than argued by an appellant, looking for [patentable]
distinctions over the prior art.”). Arguments not made are therefore waived.
See 37 C.F.R. § 41.37(c)(1)(iv).
Based upon the findings above, on this record, we are not persuaded
of error in the Examiner’s reliance on the cited prior art combination to teach
or suggest the disputed limitation of claim 1, nor do we find error in the
Examiner’s resulting legal conclusion of obviousness. Therefore, we sustain
the Examiner’s obviousness rejection of independent claim 1, and grouped
claims 2, 4, 5, 8–12, 14–16, and 18–23, which fall therewith. See Claim
Grouping, supra.
3. § 103 Rejection R3 of Claims 3, 7, 13, and 17
Issue 3
Appellant argues (Appeal Br. 25–26) the Examiner’s rejection of
claims 3, 7, 13, and 17 under 35 U.S.C. § 103 as being obvious over the
combination of Celona, Shrivastava, and Gelber is in error. These
contentions present us with the following issue:
Did the Examiner err in finding the cited prior art combination teaches
or suggests the method of claim 1 that includes, inter alia, the steps of
“multiplying the total cost of ownership by a weighted multiplier to produce
a weighted total cost of ownership;” and “summing the weighted category
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scores and weighted total cost of ownership for each health insurance plan in
the subset of available health insurance plans to produce a total weighted
score,” as recited in claim 3, and as similarly recited in claims 7, 13, and 17?
Analysis
The Examiner offers Gelber as teaching or suggesting the contested
limitations of claim 3, and the commensurate limitations in claims 7, 13,
and 17. See Final Act. 19–22 (citing Gelber ¶ 150).
The above system and methods can also be utilized to score or
measure existing or proposed benefit plans. In such instances,
the specific coverage of the plan under consideration is entered
to create a preliminary EOB. The resulting payment/
nonpayment items and allowed/disallowed or covered
procedures under the plan are identified and reported. Multiple
different plans may be compared in this manner and the most
appropriate one for a given set of circumstances can be
selected. Alternately, a “weighting” system can be applied to
each of the aspects of the plan; for example, a numeric value is
assigned for covered treatments, co-payments, disallowed
treatments and like identified items to generate a relative
numeric value for use in comparing systems.
Gelber ¶ 150.
Appellant contends “Applicant’s claims recite specific categories that
must be weighted. Applicant's claims further require the calculation of a
‘weighted total cost of ownership’ and then ‘summing the weighted category
scores and weighted total cost of ownership for each health insurance plan in
the subset of available health insurance plans to produce a total weighted
score.’ None of this is taught by Gelber.” Appeal Br. 25 (emphasis
omitted).
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We agree with Appellant’s arguments because, while Gelber arguably
suggests the use of a weighting system, we find the disclosed weighting
approach in Gelber is quite different from the weighting and summing
operations required by the claims.
Accordingly, based upon the findings above, on this record, we are
persuaded of at least one error in the Examiner’s reliance on the cited prior
art combination to teach or suggest the disputed limitations of claim 3, and
commensurate limitations in claims 7, 13, and 17, such that we find error in
the Examiner’s resulting legal conclusion of obviousness. Therefore, we do
not sustain the Examiner’s obviousness rejection of dependent claim 3, and
dependent claims 7, 13, and 17.
4. § 103 Rejection R2 of Claim 6
In view of our reversal of claim 3 in Rejection R3, we also reverse
Rejection R2 of claim 6, which depends from claim 3.
REPLY BRIEF
To the extent Appellant may advance new arguments in the Reply
Brief (Reply Br. 2–5) not in response to a shift in the Examiner’s position in
the Answer, arguments raised in a Reply Brief that were not raised in the
Appeal Brief or are not responsive to arguments raised in the Examiner’s
Answer will not be considered except for good cause (see 37 C.F.R.
§ 41.41(b)(2)), which Appellant has not shown.
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CONCLUSIONS
(1) Under our Revised Guidance, governed by relevant case law,
claims 1–23 are patent-ineligible under 35 U.S.C. § 101, and we sustain the
rejection.
(2) The Examiner did not err with respect to obviousness Rejection
R2 of claims 1, 2, 4, 5, 8–12, 14–16, and 18–23 under 35 U.S.C. § 103 over
the cited prior art combination of record, and we sustain the rejections.
(3) The Examiner erred with respect to obviousness Rejection R2
of claim 6 and Rejection R3 of claims 3, 7, 13, and 17 under 35 U.S.C. § 103
over the cited prior art combinations of record, and we do not sustain the
rejections.
Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, we affirm the Examiner’s decision. See 37
C.F.R. § 41.50(a)(1).
DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Basis /
References Affirmed Reversed
1–23 101
Subject
Matter
Eligibility
1–23
1, 2, 4–6, 8–
12, 14–16,
18–23
103
Celona,
Shrivastava/
1, 2, 4, 5, 8–
12, 14–16,
18–23
6
3, 7, 13, 17 103
Celona,
Shrivastava,
Gelber
3, 7, 13, 17
Overall
Outcome 1–23
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FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED