William Fitzgerald et al.

Patent Trials and Appeals Board

May 11, 2020

2018008375 (P.T.A.B. May. 11, 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.
14/216,123 03/17/2014 William Fitzgerald 101908.00083 4850
23619 7590 05/11/2020
INACTIVE - SQUIRE PB (PHX)
PHX-IP&T-SPB
ATTN: IP Department
2550 M Street, NW
Washington, DC 20037
EXAMINER
JACOB, WILLIAM J
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
05/11/2020 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):
IP-Squire@SquirePB.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM FITZGERALD, PETER BERMINGHAM, and
PAUL PRENDERGAST

____________

Appeal 2018-008375
Application 14/216,123
Technology Center 3600
____________

Before ANTON W. FETTING, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE1
William Fitzgerald, Peter Bermingham, and Paul Prendergast,
(Appellant2) seeks review under 35 U.S.C. § 134 of a final rejection of
claims 1–3, 5, 7, 8, 10–12, and 40, the only claims pending in the application
on appeal. We have jurisdiction over the appeal pursuant to
35 U.S.C. § 6(b).
The Appellant invented a way of assessing and mitigating risk.
Specification para. 3.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method comprising:
[1] installing a security application on a provided mobile
device;
[2] executing a device audit function whereby device
configuration parameters are obtained regarding the mobile
device;
[3] determining a unique device ID for the mobile device from
the device configuration parameters;
[4] storing the device configuration parameters in an insurance
tracking database in a record associated with the device ID;
and

1 Our decision will make reference to the Appellant’s Appeal Brief (“App.
Br.,” filed February 5, 2018) and Reply Brief (“Reply Br.,” filed August 27,
2018), and the Examiner’s Answer (“Ans.,” mailed June 27, 2018), and
Final Action (“Final Act.,” mailed January 5, 2017).
2 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
YOUGETITBACK LIMITED (Appeal Br. 2).

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[5] associating the device ID in the insurance tracking database
with an authorized user of the mobile device.

The Examiner relies upon the following prior art:
Name Reference Date
Papili US 2008/0162584 A1 July 3, 2008
Wooldridge US 2012/0029947 A1 Feb. 2, 2012
Claims 1–3, 5, 7, 8, 10–12, and 40 stand rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.
Claims 1, 2, 5, 7, 8, 10–12, and 40 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by Wooldridge.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Wooldridge and Papili.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of novelty and obviousness turn primarily on whether the
art describes all the limitations.
FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to the Prior Art
Wooldridge
01. Wooldridge is directed to offering an insurance policy for a
mobile device in the insurance field. Wooldridge para. 2.
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02. Wooldridge describes an application for testing the mobile
device S105; testing a mobile device S110; calculating device risk
with results from the test S120; and offering a protection policy
S130. The method functions to evaluate the operational state of
the mobile device and facilitate enrollment in an appropriate
program. The method is preferably for smart phones but may
alternatively be for mobile phones, personal data assistants (PDA),
netbooks, tablet computers, electronic book readers, home
entertainment devices, gaming devices, or any other suitable
computing device. The method of the first preferred embodiment
is preferably designed for offering an insurance policy for a
mobile device, but may alternatively be for a warranty, product
registration, used-product pricing, and/or any suitable mobile
device evaluation. Wooldridge para. 8.
03. Wooldridge describes checking mobile device model numbers
or version numbers. The model number or version number of the
mobile device can preferably be used to detect if the mobile
device incorporates any replacement parts and/or modifications.
Wooldridge describes detecting the applications installed on the
mobile device, the identification number of the mobile device, the
version of the operating system operating on the mobile device,
most recent use data of the mobile device, the date of first use of
the mobile device, the cellular provider, the cellular plan usage, or
any other information. This information is used when calculating
the risk of insuring the mobile device and to create a user profile.
The user profile is preferably used to classify the type of user of
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the mobile device, such as if the user employs the mobile device
for business, games, media, family. Wooldridge para. 20.
04. Wooldridge describes comparing the claim to the results of the
test, which functions to verify the claim. The application collects
data regarding the state of the mobile device, specifically the
functionality of the mobile device, in order to identify faulty or
fraudulent claims. Preferably, the application performs the
comparison while operating on the mobile device. In this
example, the application may store data regarding the results of
the tests locally on the mobile device and then determine the merit
of the claim based upon this data. Alternatively, the application
may transmit data pertaining to the functionality of the mobile
device to a server arranged substantially remote from the mobile
device, wherein the comparison of the claim and the state of the
mobile device is performed on the server. Data may be
transmitted to the server piecemeal, such as after each test or
series of tests, or as one lump data packet containing results of
several or all tests performed. Wooldridge para. 29.
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ANALYSIS
Claims 1–3, 5, 7, 8, 10–12, and 40 rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more
STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat
else is there in the claims before us? To answer that question,
. . . consider the elements of each claim both individually and
“as an ordered combination” to determine whether the
additional elements “transform the nature of the claim” into a
patent-eligible application. [The Court] described step two of
this analysis 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.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
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one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining
whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “apply, rely on, or use the
judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception.” Revised Guidance, 84 Fed. Reg. at
54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites installing a security application, executing a device audit
function to obtain configuration parameters, determining unique device ID
data, storing the parameters in a database, and associating the device ID data
with user data. Installing an application is storing the application as data.
Obtaining parameters is receiving data; saying that it is executed by a device
audit function merely labels the operation. Determining an ID and
associating data are rudimentary data analysis. Thus, claim 1 recites storing,
receiving, and analyzing data. None of the limitations recite technological
implementation details for any of these steps, but instead recite only results
desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
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Under Supreme Court precedent, claims directed purely to an abstract
idea are patent-ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts4, (2) certain methods of organizing
human activity5, and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are commercial
or legal interactions. Like those concepts, claim 1 recites the concept of
managing insurance transactions. Specifically, claim 1 recites operations
that would ordinarily take place in advising one to identify an insured and its
mobile device based on device parameters. The advice to identify an insured
and its mobile device based on device parameters in this context involves
associating a device ID in an insurance tracking database with an authorized
user of the mobile device, which is an insurance management act, and
storing the device configuration parameters in an insurance tracking
database in a record associated with the device ID, which is an act ordinarily
performed in the stream of insurance commerce. For example, claim 1
recites “associating the device ID in the insurance tracking database with an

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of Am., 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic, LLC,
898 F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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authorized user of the mobile device,” which is an activity that would take
place whenever one is setting up a way to identify an insurance party.
Similarly, claim 1 recites “storing the device configuration parameters in an
insurance tracking database in a record associated with the device ID,”
which is also characteristic of insurance management.
The Examiner determines the claims to be directed to “compiling an[7]
association of at least one parameter of a mobile device and user in an
insurance database.” Final Act. 3.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in identifying an insured and its mobile device based
on device parameters absent any technological mechanism other than a
conventional computer for doing so.
As to the specific limitations, limitation 2 recites receiving data.
Limitations 1 and 3–5 recite generic and conventional storing, receiving, and
analyzing of insurance and device data, which advise one to apply generic
functions to get to these results. The limitations thus recite advice for
identifying an insured and its mobile device based on device parameters. To
advocate identifying an insured and its mobile device based on device
parameters is conceptual advice for results desired and not technological
operations.
The Specification at paragraph 3 describes the invention as relating to
assessing and mitigating risk. Thus, all this intrinsic evidence shows that
claim 1 recites managing insurance transactions. This is consistent with the
Examiner’s determination.

7 The Final Action uses the word “and.” This is clearly a typographic
syntactic error.
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This in turn is an example of commercial or legal interactions as a
certain method of organizing human activity because insurance management
is part of managing risk in commercial and legal contexts. The concept of
managing insurance transactions by identifying an insured and its mobile
device based on device parameters is one idea for managing the
identification of insurance parties. The steps recited in claim 1 are part of
how this might conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (creating a transaction performance
guaranty for a commercial transaction on computer networks such as the
Internet); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1338 (Fed. Cir. 2013) (generating rule–based tasks for processing
an insurance claim); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (managing a stable
value protected life insurance policy); Dealertrack, Inc. v. Huber, 674 F.3d
1315, 1333 (Fed. Cir. 2012) (processing loan information through a
clearinghouse); Smart Sys. Innovations, LLC v. Chicago Transit Authority,
873 F.3d 1364, 1372 (Fed. Cir. 2017) (collection, storage, and recognition of
data).
From this we conclude that at least to this degree, claim 1 recites
managing insurance transactions by identifying an insured and its mobile
device based on device parameters, which is a commercial and legal
interaction, one of certain methods of organizing human activity identified in
the Revised Guidance, and, thus, an abstract idea.
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STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At
some level, “all inventions ... embody, use, reflect, rest upon, or
apply laws of nature, natural phenomena, or abstract ideas.”
Thus, an invention is not rendered ineligible for patent simply
because it involves an abstract concept. “[A]pplication[s]” of
such concepts “ ‘to a new and useful end,’ ” we have said,
remain eligible for patent protection. Accordingly, in applying
the § 101 exception, we must distinguish between patents that
claim the “ ‘buildin[g] block[s]’ ” of human ingenuity and those
that integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Step 2 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Steps 1 and 4
recite basic conventional data operations such as generating, updating, and
storing data. Steps 3 and 5 recite generic computer processing expressed in
terms of results desired by any and all possible means and so present no
more than conceptual advice. All purported inventive aspects reside in how
the data is interpreted and the results desired, and not in how the process

8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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physically enforces such a data interpretation or in how the processing
technologically achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
managing insurance transactions by identifying an insured and its mobile
device based on device parameters as performed by a generic computer.
This is no more than conceptual advice on the parameters for this concept
and the generic computer processes necessary to process those parameters,
and do not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The Specification only spells out different
generic equipment9 and parameters that might be applied using this concept
and the particular steps such conventional processing would entail based on
the concept of managing insurance transactions by identifying an insured
and its mobile device based on device parameters under different scenarios.
It does not describe any particular improvement in the manner a computer
functions. Instead, claim 1 at issue amounts to nothing significantly more
than an instruction to apply managing insurance transactions by identifying
an insured and its mobile device based on device parameters using some
unspecified, generic computer. Under our precedents, that is not enough to
transform an abstract idea into a patent-eligible invention. See Alice, 573
U.S. at 225–26.

9 The Specification describes a laptop computer, a desktop computer, a
mobile subscriber communication device, a mobile phone, a personal digital
assistant (PDA), and a data tablet. Spec. para. 44.
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None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of
managing insurance transactions by advising one to identify an insured and
its mobile device based on device parameters, as distinguished from a
technological improvement for achieving or applying that result. This
amounts to commercial or legal interactions, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
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not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implemen[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
featur[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for storing, receiving, and analyzing data amounts to electronic
data query and retrieval—one of the most basic functions of a computer. All
of these computer functions are generic, routine, conventional computer
activities that are performed only for their conventional uses. See Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
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some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP America, Inc. v. InvestPic LLC, 898
F.3d 1161, 1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data storage-reception-analysis
is equally generic and conventional. See Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting,
offering for exchange, display, allowing access, and receiving payment
recited an abstraction), Inventor Holdings, LLC v. Bed Bath & Beyond, Inc.,
876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of data retrieval, analysis,
modification, generation, display, and transmission), Two-Way Media Ltd. v.
Comcast Cable Communications, LLC, 874 F.3d 1329, 1339 (Fed. Cir.
2017) (sequence of processing, routing, controlling, and monitoring). The
ordering of the steps is therefore ordinary and conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
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application of that concept. There are no structural claims. As a corollary,
the claims are not directed to any particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the commercial and
legal interaction of managing insurance transactions by advising one to
identify an insured and its mobile device based on device parameters,
without significantly more.
APPELLANT’S ARGUMENTS
We are not persuaded by Appellant's argument that the claims recite
elements that require a security application on a provided
mobile device; determining a unique device ID for the mobile
device; storing the device configuration parameters in an
insurance tracking database in a record associated with the
device ID; and associating the device ID in the insurance
tracking database with an authorized user of the mobile device,
a SIM card having an IMSI [International Mobile Equipment
Identifier] in a mobile device that is associated with a device
ID, etc. Yet, the Office Action dismissed at least these features
of the claims
App. Br. 9–10. A security application is a generic label for a process absent
technological implementation details. We determined that the steps are all
conventional computer processes that do no more than their intended effect.
None of them recite technological implementation details for its respective
operation. The SIM card with IMSI is not recited in claim 1. As to its
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presence in dependent claims, any international traveler is all too aware of
how conventional this generic data on a data card is. One of ordinary skill
would have even more knowledge of how conventional and generic this is.
No technological implementation details for their use are recited. Appellant
does not argue they invented such cards.
We are not persuaded by Appellant's argument that the claims were
considered at too high a level and not as an ordered combination. Reply
Br. 10. Such consideration at both high and low levels and as an ordered
combination is provided supra under Step 2 A-Prong 2 and Step 2B.
We are not persuaded by Appellant’s argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Appeal Br. 10–11. The claims differ from those found patent
eligible in Enfish, where the claims were “specifically directed to a self-
referential table for a computer database.” 822 F.3d 1327, 1337 (Fed. Cir.
2016). The claims thus were “directed to a specific improvement to the way
computers operate” rather than an abstract idea implemented on a computer.
Id. at 1336. Here, by contrast, the claims are not directed to an improvement
in the way computers operate. Though the claims purport to accelerate the
process of selling an insurance policy, our reviewing court has held that
speed and accuracy increases stemming from the ordinary capabilities of a
general purpose computer “do[] not materially alter the patent eligibility of
the claimed subject matter.” Bancorp, 687 F.3d at 1278. Instead, the claims
are more analogous to those in FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089 (Fed. Cir. 2016), wherein claims reciting “a few possible
rules to analyze audit log data” were found directed to an abstract idea
because they asked “the same questions (though perhaps phrased with
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different words) that humans in analogous situations detecting fraud have
asked for decades.” 839 F.3d at 1094, 1095.
Appellant also attempts to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir.
2016). Appeal Br. 11–12. In McRO, the court held that, although the
processes were previously performed by humans, “the traditional process
and newly claimed method . . . produced . . . results in fundamentally
different ways.” FairWarning, 839 F.3d at 1094 (differentiating the claims
at issue from those in McRO). In McRO, “it was the incorporation of the
claimed rules not the use of the computer, that improved the existing
technology process,” because the prior process performed by humans “was
driven by subjective determinations rather than specific, limited
mathematical rules.” 837 F.3d at 1314 (internal quotation marks, citation,
and alterations omitted). In contrast, the claims of the instant application
merely implement an old practice of using decision criteria in making
insurance decisions in a new environment. Appellant has not argued that the
claimed processes of identifying data apply rules of identification in a
manner technologically different from those which humans used, albeit with
less efficiency, before the invention was claimed. Merely pigeon holing the
objects of decision making to aid decision making is both old and itself
abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
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subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094.
Claims 1, 2, 5, 7, 8, 10–12, and 40 rejected under 35 U.S.C. § 102(e) as
anticipated by Wooldridge
We are persuaded by Appellant's argument that “the Examiner’s
Answer failed to show Wooldridge teaches the Claim 1 element, ‘storing the
device configuration parameters in an insurance tracking database in a
record associated with the device ID.’” The Examiner determines that
Wooldridge could have such data so stored, not that Wooldridge does so.
Ans. 13–14. This is a rejection under anticipation, not obviousness. Even
under obviousness, the Examiner did not determine Wooldridge would do
so. Determining Wooldridge could have done so is insufficient. The
Examiner cites law for the proposition that facts may be impliedly described
under anticipation. Id. But the Examiner does not provide evidence that
Wooldridge impliedly described this. Implication, being a logical operation,
is more than obviousness.
Claim 3 rejected under 35 U.S.C. § 103(a) as unpatentable over Wooldridge
and Papili
This claim depends from a claim in the prior rejection.
CONCLUSIONS OF LAW
The rejection of claims 1–3, 5, 7, 8, 10–12, and 40 under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more is proper.
The rejection of claims 1, 2, 5, 7, 8, 10–12, and 40 under 35 U.S.C.
§ 102(e) as anticipated by Wooldridge is improper.
Appeal 2018-008375
Application 14/216,123

20

The rejection of claim 3 under 35 U.S.C. § 103(a) as unpatentable
over Wooldridge and Papili is improper.

CONCLUSION
The rejection of claims 1–3, 5, 7, 8, 10–12, and 40 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–3, 5, 7, 8,
10–12, 40
101 Eligibility 1–3, 5, 7, 8,
10–12, 40

1, 2, 5, 7, 8,
10–12, 40
102(e) Wooldridge 1, 2, 5, 7, 8,
10–12, 40
3 103(a) Wooldridge,
Papili
3
Overall Outcome 1–3, 5, 7, 8,
10–12, 40

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED