The Prudential Insurance Company of America

Patent Trials and Appeals Board

Dec 2, 2021

2021002629 (P.T.A.B. Dec. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/623,629 09/20/2012 Michael J. Roscoe 002328.0860 7698
5073 7590 12/02/2021
BAKER BOTTS L.L.P.
2001 Ross Avenue, Suite 900
Dallas, TX 75201
EXAMINER
POE, KEVIN T
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/02/2021 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):
PTOmail1@bakerbotts.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte ROBERTO A. SIRICA, SUSAN V. RYLANDER, and
GLEN-ROBERTS PITRUZZELLO
________________

Appeal 2021-002629
Application 13/623,629
Technology Center 3600
________________

Before ST. JOHN COURTENAY III, JASON J. CHUNG, and
MATTHEW J. McNEILL, Administrative Patent Judges.

CHUNG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals the Final Rejection
of claims 1–6, 8–14, and 16–22.2 We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.3

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. According to Appellant, The Prudential Insurance
Company of America is the real party in interest. Appeal Br. 2.
2 Claims 7 and 15 are cancelled. Appeal Br. 16, 19.
3 In this case, we mailed a prior decision on April 2, 2019.
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INVENTION
The invention relates to computer systems for administering financial
products such as life insurance policies. Spec. ¶ 2. Claim 1 is illustrative of
the invention and is reproduced below:
1. A computer system for processing data related to
term life insurance policies, comprising:
one or more computer processors configured to
communicate with at least one client device; and
one or more memory storage devices having stored data
indicative of criteria for eligibility for issue of a life insurance
policy prior to underwriting, in communication with the one or
more computer processors;
a firewall configured to secure communications between
the one or more computer processors and the at least one client
device, the firewall providing virus protection and user
authentication services for the computer system;
wherein the one or more processors are configured to:
receive data indicative of an application by a proposed
insured for life insurance, the data being encrypted using at least
one cryptographic scheme and including data indicative of
responses furnished by the proposed insured relating to health
conditions of the proposed insured known to the proposed
insured, and requested policy data, including data indicative of
proposed insured information, requested face amount, requested
guaranteed level premium period, identification of beneficiary,
and initial premium paid;
subsequent to decrypting the received data, store, in the
one or more memory storage devices, the received health
condition data and requested policy data;
access from the one or more memory storage devices the
stored data indicative of criteria for eligibility for issue of a life
insurance policy prior to underwriting;
determine based on the received data relating to the health
conditions of the proposed insured and the accessed data
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indicative of criteria for eligibility, whether the proposed insured
is eligible for life insurance;
responsive to a determination that the proposed insured is
eligible, generate output data indicative of instructions to a
policy owner reporting computer system to issue, prior to
performing underwriting, a life insurance policy on the life of the
proposed insured, the life insurance policy providing for a first
premium rate for a first period after issue, and a second premium
rate for a second period commencing on expiration of the first
period, the second premium rate being determined based on data
indicative of a result of the underwriting and corresponding to a
premium payment for the second period no greater than 30%
more than a premium payment for the first period, and output
data indicative of instructions to commence underwriting of the
proposed insured;
determine, based on the result of underwriting, a third
premium rate for a third period commencing at the end of the
second period, the third premium rate and the commencement
date of the third period being determined based on data
indicative of a result of underwriting, the third premium rate is
higher than the second premium rate;
generate one or more policy documents corresponding to
the issued life insurance policy; and
in response to determining that the proposed insured has
been authenticated by the firewall, furnish the one or more policy
documents to the proposed insured.
Appeal Br. 14–15 (Claims Appendix) (emphases added).

REJECTION
The Examiner rejects claims 1–6, 8–14, and 16–22 under 35 U.S.C.
§ 101 as being directed to patent ineligible subject matter. Final Act. 5–9.
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ANALYSIS
A. Principles of Law
Inventions for a “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank
Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (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 risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “a claim drawn to subject matter otherwise statutory does not
become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated that a claim “seeking patent protection for that formula in the
abstract . . . is not accorded the protection of our patent laws, and this
principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment.” Id. at 191 (citing
Benson and Flook); see also, e.g., id. at 187 (“It is now commonplace that an
application of a law of nature or mathematical formula to a known structure
or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
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B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October 2019
Update: Subject Matter Eligibility (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df) (“Update”); see also October 2019 Patent Eligibility Guidance Update,
84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the availability
of the Update). “All USPTO personnel are, as a matter of internal agency
management, expected to follow the guidance.” 2019 Guidance, 84 Fed.
Reg. at 51; see also October 2019 Guidance Update at 1. The Manual of
Patent Examining Procedure (“MPEP”) now incorporates this revised
guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev.
June 2020).4
Under MPEP § 2106, we first look to whether the claim recites the
following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application.5

4 All references to the MPEP are to the Ninth Edition, Revision 10.2019
(Last Revised June 2020), unless otherwise indicated.
5 “Examiners evaluate integration into a practical application by
(a) identifying whether there are any additional elements recited in the claim
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MPEP §§ 2106.04(a), (d).
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, [and] conventional activity” in the field; 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.
MPEP § 2106.05(d).
C. The Examiner’s Rejection and Appellant’s Arguments
The Examiner concludes the present claims recite certain methods of
organizing human activity. Final Act. 8. The Examiner concludes the
present claims are not integrated into a practical application and there are no
limitations recited in the present claims that add significantly more to the
abstract idea. Ans. 7–10; Final Act. 3–4, 8–9. The Examiner finds that the
present claims do not amount to significantly more than an abstract idea
itself because the abstract idea is implemented using additional elements that
are well-understood, routine, and conventional. Final Act. 4–5 (citing
MPEP § 2106.05(d)).
Appellant argues the present claims do not preempt any abstract idea.
Appeal Br. 10. Appellant argues that the present claims do not recite certain
methods of organizing human activity because the present claims recite
improvements to security, improvement by automation, and improvements

beyond the judicial exception, and (b) evaluating those additional elements
individually and in combination to determine whether the claim as a whole
integrates the exception into a practical application.” MPEP § 2106.04(d)II.
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by conserving computational resources. Appeal Br. 10–12 (citing Spec.
¶¶ 72, 119, 140). We disagree with Appellant.
D. Step 2A, Prong 1
Patent eligibility under 35 U.S.C. § 101 is a question that we resolve
pursuant to the MPEP §§ 2106.04(a), (d). The emphasized portions of
claim 1, reproduced above (see supra at 2–3), recite fundamental economic
principles or practices (including insurance). See MPEP §§ 2106.04(a), (d).
Fundamental economic principles or practices (including insurance) fall into
the category of certain methods of organizing human activity. Id. Certain
methods of organizing human activity are a type of abstract idea. Id.
We must still determine whether the abstract idea is integrated into a
practical application, namely whether the claim applies, relies on, or uses the
abstract idea in a manner that imposes a meaningful limit on the abstract
idea, such that the claim is more than a drafting effort designed to
monopolize the abstract idea. See MPEP §§ 2106.04(a), (d). We, therefore,
(1) identify whether there are any additional recited elements beyond the
abstract idea, and (2) evaluate those elements both individually and
collectively to determine whether they integrate the exception into a
practical application. See id.
Accordingly, we proceed to Prong 2.
E. Step 2A, Prong 2
Here, the additional elements in the present claims used to implement
the abstract idea are the “computer processors,” “client device,”6 “user
device,”7 “memory storage devices,” “firewall,” and “policy owner reporting

6 This feature is recited in claims 1 and 17, but not recited in claim 9.
7 This feature is recited in claim 9, but not recited in claims 1 and 17.
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computer system,”8 and “policy generation system.”9 See MPEP
§§ 2106.04(a), (d). The additional elements of the present claims do not
integrate the abstract idea into a practical application because they do not
impose any meaningful limits on practicing the abstract idea for the
following reasons.
Appellant does not identify persuasively how the Specification sets
forth an improvement in technology. Appeal Br. 10–12 (citing Spec. ¶¶ 72,
119, 140). The MPEP, which incorporates the Update, addresses how we
consider evidence of improvement that is presented to us. The Update
states:
[T]he evaluation of Prong Two requires the use of the
considerations (e.g. improving technology, effecting a particular
treatment or prophylaxis, implementing with a particular
machine, etc.) identified by the Supreme Court and the Federal
Circuit, to ensure that the claim as a whole integrates [the]
judicial exception into a practical application [that] will 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.
Update 11 (emphases added).
The Update further states:
During examination, the examiner should analyze the
“improvements” consideration by evaluating the specification
and the claims to ensure that a technical explanation of the
asserted improvement is present in the specification, and that the
claim reflects the asserted improvement. Generally, examiners
are not expected to make a qualitative judgment on the merits of
the asserted improvement. If the examiner concludes the
disclosed invention does not improve technology, the burden

8 This feature is recited in claims 1 and 17, but not recited in claim 9.
9 This feature is recited in claim 9, but not recited in claims 1 and 17.
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shifts to applicant to provide persuasive arguments supported by
any necessary evidence to demonstrate that one of ordinary skill
in the art would understand that the disclosed invention improves
technology. Any such evidence submitted under 37 C.F.R.
§ 1.132 must establish what the specification would convey to
one of ordinary skill in the art and cannot be used to supplement
the specification. For example, in response to a rejection under
35 U.S.C. § 101, an applicant could submit a declaration under
§ 1.132 providing testimony on how one of ordinary skill in the
art would interpret the disclosed invention as improving
technology and the underlying factual basis for that conclusion.
Update 13 (emphasis added).
We, therefore, focus on any evidence Appellant cites in its briefs, as
discussed in the Update. Appeal Br. 10–12 (citing Spec. ¶¶ 72, 119, 140).
At best, the present claims and paragraphs 72, 119, and 140 of the
Specification recite an improvement to certain methods of organizing human
activity (i.e., an abstract idea as discussed supra in § D). See, e.g., Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A]
claim for a new abstract idea is still an abstract idea.”). “[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered law of nature
(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility . . . .”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)
(citations omitted).
We, therefore, disagree with Appellant’s argument that the present
claims do not recite certain methods of organizing human activity because
the present claims recite improvements to security, improvement by
automation, and improvements by conserving computational resources.
Appeal Br. 10–12 (citing Spec. ¶¶ 72, 119, 140).

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Furthermore, merely automating the abstract idea discussed supra or
any increase in processing speed in the claimed method (as compared to
without using computers) comes from the capabilities of the generic
computer components, and not the recited process itself. See FairWarning
IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (citing
Bancorp Servs., LLC v. Sun Life Assurance Co., 687 F.3d 1266, 1278 (Fed.
Cir. 2012) (“[T]he fact that the required calculations could be performed
more efficiently via a computer does not materially alter the patent eligibility
of the claimed subject matter.”)); see also Intellectual Ventures I LLC v. Erie
Indemnity Co., 711 F. App’x 1012, 1017 (Fed. Cir. 2017) (unpublished)
(“Though the claims purport to accelerate the process of finding errant files
and to reduce error, we have 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.’”).
We determine the limitation “receive” is the type of basic data
transmission functionality that has been determined to be insignificant post-
solution activity. See buySafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir.
2014) (stating “That a computer receives and sends information over a
network — with no further specification — is not even arguably inventive”).
Moreover, the remaining additional elements in the present claims,
namely “computer processors,” “client device,” “user device,” “memory
storage devices,” “firewall,” and “policy owner reporting computer system,”
and “policy generation system” do not, either individually or in combination,
integrate the abstract idea into a practical application. In particular,
Appellant’s Specification discloses that these elements encompass generic
computer components. See Spec. ¶¶ 72, 73, 86, 128, 155, 200 (describing
these elements each at a high level of generality and using open ended terms
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such as “may,” “for example,” etc.). Merely adding generic computer
components to perform abstract ideas does not integrate those ideas into a
practical application. See MPEP §§ 2106.04(a), (d) (citing 2019 Revised
Guidance, 84 Fed. Reg. at 55 (identifying “merely includ[ing] instructions to
implement an abstract idea on a computer” as an example of when an
abstract idea has not been integrated into a practical application)).
We disagree with Appellant’s argument that the present claims recite
an improvement in the functioning of the computer or an improvement in the
relevant technology by providing rules analogous to the rules in McRO.
Appeal Br. 9 (citing McRO, at 1299).
Appellant’s arguments that the present claims do not preempt any
abstract idea (Appeal Br. 10) do not persuade us that the claims are patent
eligible. Although preemption may denote patent ineligibility, its absence
does not demonstrate patent eligibility. See FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a
patent-ineligible concept, preemption concerns “are fully addressed and
made moot” by an analysis under the Mayo/Alice framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
We, therefore, conclude that the additional elements, whether
considered individually or as an ordered combination, do not integrate the
abstract idea into a practical application because the additional elements are
generic computer components that do not impose meaningful limits on
practicing the abstract idea.
Appellant does not advance any other arguments pertaining to Step
2A, Prong 2. Because we determine that the present claims recite an abstract
idea that is not integrated into a practical application, we proceed to Step 2B.
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F. Step 2B
We agree with the Examiner’s determination that the present claims
do not amount to significantly more than an abstract idea itself because the
abstract idea is implemented using additional elements that are well-
understood, routine, and conventional. Final Act. 4–5 (citing MPEP
§ 2106.05(d)). Furthermore, the Specification indicates that the additional
elements (i.e., “computer processors,” “client device,” “user device,”
“memory storage devices,” “firewall,” and “policy owner reporting
computer system,” and “policy generation system”) are nothing more than
generic computer components. Spec. ¶¶ 72, 73, 86, 128, 155, 200.
Appellant’s Specification indicates these additional elements were well-
understood, routine, and conventional components because it describes them
at a high level of generality and in a manner that indicates that they are
sufficiently well-known. Id.
The additional elements, either individually or in combination, do not
amount to an inventive concept. Final Act. 4, 8. An inventive concept
“cannot be furnished by the unpatentable law of nature (or natural
phenomenon or abstract idea) itself.” Genetic, 818 F.3d at 1376; see also
2019 Revised Guidance; Alice, 573 U.S. at 217 (explaining that, after
determining a claim is directed to a judicial exception, “we then ask, ‘[w]hat
else is there in the claims before us?’” (alteration in original) (quoting Mayo,
566 U.S. at 78)). Instead, an “inventive concept” is furnished by an element
or combination of elements that is recited in the claim in addition to the
judicial exception and sufficient to ensure the claim, as a whole, amounts to
significantly more than the judicial exception itself. Alice, 573 U.S. at 218–
19 (citing Mayo, 566 U.S. at 72–73); see BSG Tech LLC v. BuySeasons, Inc.,
899 F.3d 1281, 1290 (Fed. Cir. 2018) (explaining that the Supreme Court in
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Alice “only assessed whether the claim limitations other than the invention’s
use of the ineligible concept to which it was directed were well-understood,
routine and conventional” (emphasis added)).
For at least the above reasons, we conclude that each of the present
claims, 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. We, therefore, sustain the Examiner’s rejection of:
(1) independent claims 1, 9, and 17; and (2) dependent claims 2–6, 8, 10–14,
16, and 18–22 under § 101.
We have only considered those arguments that Appellant actually
raised in the Briefs. Arguments Appellant did not make have not been
considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv)
(2013).

CONCLUSION

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. § 1.136(a)(1)(iv) (2013).

AFFIRMED

Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–6,
8–14,
16–22
101 Eligibility 1–6, 8–14,
16–22