C. Kumar et al.

Patent Trials and Appeals Board

Jul 13, 2020

10537636 - (D) (P.T.A.B. Jul. 13, 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.
10/537,636 06/03/2005 C. Suresh Kumar 51812 4937
23589 7590 07/13/2020
Hovey Williams LLP
10801 Mastin Blvd., Suite 1000
Overland Park, KS 66210
EXAMINER
SUBRAMANIAN, NARAYANSWAMY
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
07/13/2020 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):
uspatents@hoveywilliams.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte C. SURESH KUMAR, DAVID NEIL DYRNAES,
TIM A. VON KAENEL, JONATHAN D. GOODWIN,
JARED P. WAYMAN, CRAIG EVAN TRIVELPIECE,
JOSEPH MIHALICH, and ANTHONY PAGE JENKINS
__________________

Appeal 2020-000987
Application 10/537,636
Technology Center 3600
____________________

Before DANIEL S. SONG, JAMES P. CALVE, and
BENJAMIN D. M. WOOD, Administrative Patent Judges.

CALVE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision
of the Examiner to reject claims 108–110, which are all the pending claims.
Appeal Br. 2; Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies The Paradigm Alliance, Inc. as the real party in interest. Appeal
Br. 4.
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CLAIMED SUBJECT MATTER
Claim 108, the sole independent claim, is reproduced below.
108. A computer-implemented method for evaluating
risk associated with underwriting an insurance policy, the
method comprising the following steps, wherein each step is
performed by a processor of a computer:
receiving a request for an insurance policy, the request
including an address of a property to be covered
and a coverage type, the type indicating a peril;
verifying that the address is valid by comparing the
address with a plurality of valid addresses from an
external source;
determining a geolocation that is associated with the
address;
determining one or more high-risk zones associated with
the peril, wherein each high-risk zone includes one
or more geographically discrete areas;
determining a probable maximum loss (PML) for each of
the one or more high-risk zones, wherein the PML
is determined as an amount of loss expected based
on a total liability underwritten for all insurance
policies for the coverage type for a specific area
multiplied by a damage rate expected;
comparing the address with the one or more high-risk
zones to determine whether the address is located
within one or more of the high-risk zones;
indicating that underwriting the insurance policy is
acceptable if the address is not within the one or
more high-risk zones;
performing the following steps if the address is within the
one or more high-risk zones:
determining a revised probable maximum loss
(PML) to include the requested insurance
policy;
determining whether the revised PML is greater
than a PML limit;
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indicating that underwriting the insurance policy is
acceptable if the revised PML is less than or
equal to the PML limit; and
indicating that underwriting the insurance policy is
not acceptable or that further consideration
is merited if the revised PML is less than or
equal to the PML limit.

REJECTION
Claims 108–110 are rejected as directed to a judicial exception to
35 U.S.C. § 101.
ANALYSIS
Patent Eligibility under 35 U.S.C. § 101
Appellant argues the claims as a group. See Appeal Br. 10–13. We
select claim 108 as representative. See 37 C.F.R. § 41.37(c)(1)(iv).
Examiner’s Determination
The Examiner determines that claim 108 recites the abstract idea of
certain methods of organizing human activity such as mitigating risk and
insurance. Final Act. 2–4; Ans. 3–4. The Examiner determines that the only
additional element recited in the claim is a generic computer processor that
is programmed to perform the claimed steps. Final Act. 4. The Examiner
determines the processor is recited at a high level of generality as a generic
processor that performs generic computer functions and does not improve
computer functioning, apply the judicial exception on a particular machine,
effect a transformation of a particular machine to a different state or thing, or
use the judicial exception in some other meaningful way beyond merely
linking it to a particular technological environment without amounting to
significantly more than the judicial exception. Ans. 4–5; Final Act. 4–5.
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Appellant’s Contentions
Appellant acknowledges the Examiner’s determination that claim 108
recites limitations that cover methods of organizing human activity such as
risk mitigation and insurance. Appeal Br. 10–11. Appellant argues that
even assuming the claims recite a judicial exception, claim 108 as a whole
integrates the judicial exception into a practical application and does not
seek to monopolize the judicial exception. Id. at 11. Appellant argues that
claim 108 does not cover “mitigating risk and insurance” as broad subject
matter because it recites very specific steps that deal with the following:
verifying whether an address is valid, determining a geolocation
that is associated with the address, determining one or more
high-risk zones associated with a specific peril, comparing the
address with the one or more high-risk zones to determine
whether the address is located within one or more of the high-
risk zones, and if the address is within the one or more high-risk
zones, then performing the steps of determining a revised
probable maximum loss (PML) to include the requested
insurance policy, determining whether the revised PML is
greater than a PML limit, indicating that underwriting the
insurance policy is acceptable if the revised PML is less than or
equal to the PML limit, and indicating that underwriting the
insurance policy is not acceptable or that further consideration
is merited if the revised PML is less than or equal to the PML
limit.
Id. Appellant further argues that claim 108 improves a technical field of
determining whether locations from a prospective policy are geographically
located within a high-risk zone. Id. Appellant also asserts that claim 108
“makes a determination of whether locations from a prospective policy are
geographically located within a high-risk zone in a consistent and accurate
manner –– thus reflecting an improvement to a technical field that has
integrated the exception into a practical application.” Id. at 12.
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Principles of Law
Section 101 of the Patent Act states:
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.
35 U.S.C. § 101. This provision contains an implicit exception: “Laws of
nature, natural phenomena, and abstract ideas are not patentable.” Alice
Corp. Pty. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014).
To distinguish patents that claim laws of nature, natural phenomena,
and abstract ideas from those that claim patent-eligible applications, we first
determine whether the claims are directed to a patent-ineligible concept. Id.
at 217. If they are, we consider the elements of each claim, individually and
“as an ordered combination,” to determine if additional elements “‘transform
the nature of the claim’ into a patent-eligible application” as an “inventive
concept” sufficient to ensure the claims in practice amount to significantly
more than a patent on the ineligible concept itself. See id. at 217–18.
The USPTO has issued guidance about this framework. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Revised Guidance”). Under the Revised Guidance, to determine whether a
claim is “directed to” an abstract idea, we evaluate whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract ideas
listed in the Revised Guidance (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 (see MPEP §§ 2106.05(a)–(c), (e)–(h)
(9th ed. rev. 08.2017 Jan. 2018) (“MPEP”)). Id. at 52–55.
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Only if a claim (1) recites a judicial exception and also (2) does not
integrate that exception into a practical application, do we then consider
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. Id. at 56.
Step 1: Is Claim 108 Within a Statutory Category?
Claim 108 recites a “method” which is within a statutory category of
35 U.S.C. § 101, namely, a process. Final Act. 2. Thus, we next consider
whether claim 108 as a whole recites a judicial exception.
Step 2A, Prong 1: Does Claim 108 Recite a Judicial Exception?
We agree with the Examiner that claim 108 recites certain methods of
organizing human activity for mitigating risk and insurance. See Final Act.
2–4. The Revised Guidance enumerates this concept as certain methods of
organizing human activity as a fundamental economic practice (including
insurance and mitigating risk). See Revised Guidance, 84 Fed. Reg. at 52.
Some steps also are mental processes––concepts performed in the mind. Id.
The invention relates to real time insurance underwriting and risk
management. Spec. ¶ 1. When an insurance company determines whether
to underwrite a policy, it evaluates whether the proposed insured is located
in a high-risk zone for the peril and, if so, determines the effect of adding the
policy on the company’s probable maximum loss (PML) for the zone and
peril. Id. ¶¶ 2–4. A PML factor is known in the art to estimate a likelihood
of a specific peril (e.g., tornado) occurring in a specified zone (e.g., Dallas,
Texas) to cause a specified degree of damage (e.g., $10 million). Id. ¶ 5.
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If adding a prospective policy for a specified peril in a specified high-
risk zone will cause the insurance company’s PML for that zone to exceed a
predetermined PML limit set by the company and known as a CAP limit, the
policy may be denied. Id. ¶ 6. Otherwise, the policy may be accepted. Id.
The preamble recites this purpose of “evaluating risk associated with
underwriting an insurance policy.” Appeal Br. 15 (Claims App.). The first
steps collect and analyze data used in the underwriting process by
receiving a request for an insurance policy, the request
including an address of a property to be covered and a
coverage type, the type indicating a peril;
verifying that the address is valid by comparing the address
with a plurality of valid addresses from an external source;
determining a geolocation that is associated with the address[].
Appeal Br. 15 (Claims App.).
These steps collect information needed for the underwriting process.
Addresses are compared to a reliable master address data store 170 such as
the U.S. Postal Service USPS Address Matching address data store to verify
their accuracy and validity. Spec. ¶ 52. Addresses are geocoded to associate
the address with a unique geographic identifier such as latitude or longitude
value. Id. ¶ 54. Geocoding of addresses facilitates comparison of addresses
to high-risk zones, which are “geographically discrete areas.” Id. ¶¶ 57, 60.
Then, the method determines a high-risk zone(s) for the peril and the
probable maximum loss (PML) for each high-risk zone based on the total
liability that the company has underwritten for all insurance policies for the
coverage type in that specific area multiplied by an expected damage rate.
See Appeal Br. 15 (Claims App.). Determining high-risk zones and PMLs
allows an insurance company to calculate the risk that it currently insures for
a peril (e.g., a natural disaster) in a particular zone. Spec. ¶¶ 2–7, 57–60.
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The claimed method compares the address of a prospective insured to
the high-risk zone(s) to determine whether the address is located within the
high-risk zone(s). Underwriting the insurance policy is deemed acceptable if
the address is not within any high-risk zone(s). If the address is within a
high-risk zone(s), the method revises the PML to include the requested
insurance policy and compares the revised PML to a PML limit. The policy
may be underwritten if the revised PML is less than or equal to the PML
limit. Underwriting is not acceptable, or further consideration is merited, if
the revised PML is not less than or equal to the PML limit. See Appeal Br.
15–16 (Claims App.).
These steps allow an insurance company to evaluate the risk it will
assume if it underwrites a particular policy for a particular address and peril
and the impact of the added risk on the company’s overall risk for that peril
in a particular area. See Spec. ¶¶ 57–64. The Specification indicates that
“[b]eing location aware is an integral component of underwriting.” Id. ¶ 73.
The claimed method “identifies locations that are in high risk areas or areas
of overexposure.” Id. ¶ 81. It provides immediate feedback on what action
to take for a given policy, and it calculates how prospective business will
impact current bound business in terms of overall risk. Id.
We agree with the Examiner that claim 108 recites certain methods of
organizing human activity as a fundamental economic practice (including
insurance and mitigating risk) and mental processes. See Final Act. 3–4;
Ans. 3–4. Risk mitigation and risk hedging are fundamental economic
practices. Alice, 573 U.S. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611
(2010) (“Hedging is a fundamental economic practice long prevalent in our
system of commerce and taught in any introductory finance class.”).
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Essentially, the method scores a prospective property based on its
location relative to high-risk zones associated with the peril that is being
insured against. The prospective property scores acceptably for insurance
purposes “if the address is not within the one or more high-risk zones.”
Appeal Br. 15 (Claims App.); Spec. ¶¶ 61, 63. If the property is in a high-
risk zone, the prospective property is scored as part of a revised PML for the
insurance company’s portfolio of insured properties in the same region for
the same peril and compared to a predetermined PML limit. Spec. ¶¶ 62, 64.
A similar claim to processing an application to finance a purchase by
calculating a credit score recited an abstract idea in Credit Acceptance. See
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054 (Fed. Cir.
2017) (“We see no meaningful distinction between this type of financial
industry practice and ‘the concept of intermediated settlement’ held to be
abstract in Alice, 134 S.Ct. at 2356, or the ‘basic concept of hedging’ held to
be abstract in Bilski v. Kappos.”). The patent’s specification demonstrated
that the process was a fundamental economic practice long prevalent in our
system of commerce. Id.; see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,
1352, 1355 (Fed. Cir. 2014) (holding claims to a transaction performance
guaranty by underwriting recited a fundamental economic practice).
Here, using geospatial analysis to determine whether a prospective
property is in a high-risk zone is known but is manually-intensive and slow.
Spec. ¶¶ 4–10. This fundamental economic practice of risk mitigation and
underwriting uses a geographic information system (GIS) operator with a
GIS application to compare a property and high-risk zone using geospatial
coordinates. Id. ¶¶ 8–18. The claimed method uses such geospatial query
techniques, albeit performed in real-time by a processor. Id. ¶ 22.
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The claimed method thus automates geospatial query techniques by
Provid[ing] an automated technique to more efficiently and
consistently evaluate existing or prospective customer data
provided by the user and report back to the user an appropriate
answer (e.g., the policy may be accepted, denied, or further
consideration is merited) in real time, such as a matter of
seconds as opposed to days or weeks.
Id. Furthermore, “comparing the address with the one or more high-risk
zones to determine whether the address is located within one of more of the
high-risk zones” recites a mental process that people perform in their minds.
Indeed, GIS operators use a GIS application to display the geolocation of an
address of a prospective policy and then determine whether the location’s
address and the high-risk zone intersect. See id. ¶¶ 10, 13, 59–61.
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir.
2011) held that an analogous method of verifying the validity of credit card
transactions recited abstract mental processes. A person could read records
of Internet credit card transactions from a preexisting database. Id. at 1372.
The person could construct a map of credit card numbers by writing down a
list and use that map of credit card numbers to determine valid transactions
by observing credit card numbers, user names, and billing addresses used on
credit card transactions. Id. at 1372–73; see Coffelt v. NVIDIA Corp., 680 F.
App’x 1010, 1011 (Fed. Cir. 2017) (calculating steridian regions of space is
an abstract purely arithmetic exercise performable using a pen and paper).
So too, “determining whether the revised PML is greater than a PML
limit” can be performed as a mental process. See Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015)
(holding claims to tracking financial transactions to determine whether they
exceed a pre-set spending limit (i.e., budgeting) recited an abstract idea).
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As our reviewing court held in a similar context:
The focus of the asserted claims . . . is on collecting
information, analyzing it, and displaying certain results of the
collection and analysis. . . . [W]e have treated analyzing
information by steps people through in their minds, or by
mathematical algorithms, without more, as essentially mental
processes within the abstract-idea category.
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353–54 (Fed. Cir.
2016); see also Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811
F.3d 1314, 1324 (Fed. Cir. 2016) (holding the claimed steps of applying for
a loan, providing loan pricing, and calculating a borrower’s credit grading all
could be performed by humans without a computer).
The Revised Guidance provides the following guidance in this regard:
If a claim, under its broadest reasonable interpretation,
covers performance in the mind but for the recitation of generic
computer components, then it is still in the mental processes
category unless the claim cannot practically be performed in the
mind.
Revised Guidance, 84 Fed. Reg. at 52 n.14; see also Intellectual Ventures I
LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”).
Accordingly, and for the foregoing reasons, we determine that claim
108 recites the abstract idea of certain methods of organizing human activity
as fundamental economic practices (including insurance and mitigating risk)
and mental processes––concepts performed in the human mind.
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Step 2A, Prong Two: Integration into a Practical Application
We next consider whether claim 108 as a whole integrates the recited
judicial exception into a practical application. See Revised Guidance, 84
Fed. Reg. at 54 (Revised Step 2A, Prong Two). We determine that the claim
lacks additional elements that improve a computer or other technology. Any
additional elements do not implement the abstract idea in conjunction with a
particular machine or manufacture that is integral to the claim. They do not
transform or reduce a particular article to a different state or thing. They do
not apply the abstract idea in a meaningful way beyond linking it to a
particular environment. See Revised Guidance, 84 Fed. Reg. at 55 and
MPEP sections cited therein); Ans. 4–5.
Appellant argues that claim 108 integrates the judicial exception into a
practical application because it recites specific steps of verifying whether an
address is valid, determining a geolocation of the address, determining a
high-risk zone associated with a specific peril, comparing the address with
the high-risk zone(s) to determine if the address is within a zone(s), if the
address is within one of the high-risk zones, determining a revised PML that
includes the requested insurance policy, determining if the revised PML is
greater than a PML limit and finding underwriting acceptable if the revised
PML is less than or equal to the PML limit. Appeal Br. 11. Appellant also
argues that claim 108 improves a technical field of determining whether
locations from a prospective policy are located geographically in a high-risk
zone compared to prior art techniques that required a specially-trained GIS
operator to operate the software manually to associate specific geographic
locations as geospatial coordinates with an address for display on a map to
determine if the locations are located in a high-risk zone. Appeal Br. 11–12.
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These arguments are not persuasive because these limitations recite an
abstract idea. “It has been clear since Alice that a claimed invention’s use of
the ineligible concept to which it is directed cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed.
Cir. 2018); see id. at 1291 (“As a matter of law, narrowing or reformulating
an abstract idea does not add ‘significantly more’ to it.”); see RecogniCorp,
LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one
abstract idea (math) to another abstract idea (encoding and decoding) does
not render the claim non-abstract.”); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“But, a claim for a new
abstract idea is still an abstract idea.”); Versata Dev. Grp., Inc. v. SAP Am.,
Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (holding claims that improved an
abstract idea but did not recite the supposed computer improvements were
not patent eligible); Revised Guidance, 84 Fed. Reg. at 55 n.24 (“additional
elements” are claim features beyond the identified judicial exception).
Automating GIS geospatial techniques when recited at a high level of
generality is not sufficient. Our reviewing court has held in a similar case:
Our prior cases have made clear that mere automation of
manual processes using generic computers does not constitute a
patentable improvement in computer technology. In those
cases, “the focus of the claims is not on such an improvement in
computers as tools, but on certain independently abstract ideas
that use computers as tools.”
Credit Acceptance, 859 F.3d at 1055 (quoting Elec. Power Grp., 830 F.3d at
1354); see Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316 (Fed. Cir.
2019) (“[T]he need to perform tasks automatically is not a unique technical
problem.”).
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Here, the claimed method automates a process in which GIS operators
determined geospatial coordinates of addresses and compared locations on a
display to determine if an address was in a high-risk zone. Spec. ¶¶ 8–15. It
does so using a generic computer. The Specification indicates that computer
17500 and processor 17502 may be any computing device and any processor
known in the art. Spec. ¶ 713; see Alice, 573 U.S. at 223 (“[M]ere recitation
of a generic computer cannot transform a patent-ineligible abstract idea into
a patent-eligible invention.”); Elec. Power, 830 F.3d at 1354 (holding that
the focus of the claims is on certain abstract ideas that use computers as
tools); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687
F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he use of a computer in an otherwise
patent-ineligible process for no more than its most basic function––making
calculations or computations––fails to circumvent the prohibition against
patenting abstract ideas and mental processes.”); Ultramercial, Inc. v. Hulu,
LLC, 772 F.3d 709, 716–17 (Fed. Cir. 2014) (holding that use of a general
purpose computer to execute an abstract idea is not a particular machine and
transformation by using computers to transfer content is what computers do).
“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.” CyberSource, 654 F.3d at 1375; id. at 1372 (“[E]ven
if some physical steps are required to obtain information from the database,
. . . such data-gathering steps cannot alone confer patentability.”); see also
Versata, 793 F.3d at 1335 (“Courts have examined claims that required the
use of a computer and still found that the underlying, patent-ineligible
invention could be performed via pen and paper or in a person’s mind.”).

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Software can make non-abstract improvements, but the claims must
recite improvements to computers or network functionality. See Customedia
Tech., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020).
Here, claim 108 recites a generic computer processor. Ans. 5; Ericsson Inc.
v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1325 (Fed. Cir. 2020)
(holding that the specification yields to the claim language when identifying
the focus of a claim); Two-Way Media Ltd. v. Comcast Cable Commc’ns,
LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (“As with claim 1 of the ’187
patent, the problem is that no inventive concept resides in the claims.”).
The Specification’s description of the process steps makes clear that
no improvement has been made to computers or other technology beyond
using computers as tools to implement the abstract idea. For the first step,
an agent may receive a request for an insurance policy with customer data
such as name and address of property to be covered. Spec. ¶ 45.
“[V]erifying that the address is valid” is known as cleansing. It can be
performed “by executing any well-known address cleansing process, such as
the common address matching technology of Address Broker software from
Sagent, Inc. of Mountain View, CA.” Id. ¶ 52 (emphasis added). Server
computer 120 may compare addresses to a master address data store such as
the USPS Address Matching data store of the U.S. Postal Service. Id.
To determine the geolocation of an address, server computer 120
geocodes the address by executing any well-known geocoding process such
as that of Address Broker software from Sagent Technology of Mountain
View, CA. Id. ¶ 54. High-risk zones can be determined and retrieved using
“any well-known spatial query techniques” as server computer 120 accesses
data store 170 to retrieve high-risk zones. Id. ¶¶ 57, 58.
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Using any well-known spatial query techniques, server computer 120
may compare one or more selected addresses with the selected high-risk
zone to determine whether any prospective address is within the selected
high-risk zone. Spec. ¶ 60. “Geocoding of the addresses and the high risk
zones may facilitate this comparison.” Id. (emphasis added).
[S]erver computer 120 [may] be conventionally programmed to
query data store 170 using any well-known spatial query
techniques to identify the high risk zones that include the
longitude and latitude values for one or more selected
address(es) of the submitted policy, as well as to identify all the
existing policies and associated covered locations whose
longitude and latitude values are also within the identified high
risk zones.
Id. ¶ 61. Server computer 120 also may be programmed conventionally to
determine a revised PML (that includes the new policy) and to determine
whether the revised PML exceeds a predetermined PML limit. Id. ¶ 62.
Claim 108 thus recites method steps at a high level of generality as an
abstract idea identified in Prong One. The processor is claimed generically
to perform generic functions of receiving a request, verifying an address,
determining a geolocation, high-risk zone(s), and PML for each zone(s),
comparing the address and high-risk zone(s) and indicating if the address is
within the high-risk zone(s) or not. See Ans. 5. The Specification confirms
that this functionality does not improve computers or other technology. At
best, it automates/uses known processes. The computer is used as a tool to
perform the abstract idea, which does not transform the abstract idea into a
patent-eligible application. Alice, 573 U.S. at 225–26; Ans. 8.
Accordingly, we determine that claim 108 does not include additional
elements that integrate the abstract idea into a practical application.
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Step 2B: Does Claim 108 Include an Inventive Concept?
We next consider whether claim 108 recites elements, individually, or
as an ordered combination, that provide an inventive concept. Alice, 573
U.S. at 217–18. The second step of the Alice test is satisfied when the claim
limitations involve more than performance of well-understood, routine, and
conventional activities previously known to the industry. Berkheimer v. HP
Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018); see Revised Guidance, 84 Fed.
Reg. at 56 (explaining that the second step of the Alice analysis considers
whether a claim adds a specific limitation beyond a judicial exception that is
not “well-understood, routine, conventional” activity in the field).
The Examiner determines that the claims recite a generic processor
suitably programmed to execute the steps of the abstract idea without any
unconventional functions or a non-generic or non-conventional arrangement
of the known, conventional pieces. Ans. 10.
Appellant argues that the Examiner provides no factual determination
that the additional element is widely prevalent or in common use in the field.
Appeal Br. 12–13. Appellant argues that no software existed to provide the
claimed automated determination of whether locations from a prospective
policy are geographically located in a high-risk zone. Id. at 13. Appellant
also argues that the claimed steps provide a computer-implemented method
that performs steps that were not possible to perform on a computer. Id.
The Specification describes the computer and processor generically.
Figure 1 illustrates a computing environment to implement the method on a
client computer, which may comprise any computing device known in the
art such as a server, mainframe, workstation, personal computer, hand held
computer, laptop telephone device, network appliance. Spec. ¶¶ 24, 713.
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Any processor and operating system known in the art may be used,
e.g., a microprocessor. Id. ¶¶ 712, 713. The code in the computer readable
medium is accessed and executed by a processor. Id. ¶ 709. Computer
programs in storage may be loaded into the memory and executed by the
processor in a manner known in the art. Id. ¶ 712, Figs. 1, 2, 175. The
network may comprise any type of network. Id. ¶ 25.
We agree with the Examiner that the Specification’s description of the
claimed processor and computer system support a finding that the processor
is a conventional component that performs known functions of executing
computer program code, which, in this case, comprises steps of the abstract
idea recited in claim 108. See Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject matter Eligibility Decision
(Berkheimer v. HP, Inc.), Apr. 19, 2018, Section III.A.1.
Individually, the limitations of claim 108 recite the abstract idea that
is identified above performed on a generic computer processor used as a tool
to implement the abstract idea. As an ordered combination, these limitations
represent no more than the sum of their parts. They perform steps at a high
level of generality to collect and analyze data and perform calculations as
computers routinely do. The method of claim 108 recites the abstract idea
identified above performed on a generic computer processor. See Alice, 573
U.S. at 225.
“If a claim’s only ‘inventive concept’ is the application of an abstract
idea using conventional and well-understood techniques, the claim has not
been transformed into a patent-eligible application of an abstract idea.”
BSG, 899 F.3d at 1290–91. Here, the Specification describes the method as
performing conventional functions on generic computers. Spec. ¶¶ 48–62.
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As discussed under Prong Two, server computer may use any well-
known spatial query techniques to retrieve existing policies and high- risk
zones and conventional programming to determine whether high-risk zones
include longitude and latitude values for an address of a policy. Id. ¶ 61.
Server computer 120 may be conventionally programmed to determine a
revised PML for the new policy and may use any predetermined insurance
company standard to determine if the revised PML exceeds a predetermined
PML limit. Id. ¶ 62. The claimed steps recite mental processes and generic
functions of a generic processor that performs basic calculation, storage, and
transmission functions. See In re TLI Commc’ns LLC Patent Litig., 823
F.3d 607, 614 (Fed. Cir. 2016); Alice, 573 U.S. at 222 (“Simply appending
conventional steps, specified at a high level of generality, [is] not enough to
supply an inventive concept.”) (internal citations and emphasis omitted).
Even if the steps are groundbreaking, innovative, or brilliant, that is
not enough for eligibility. See Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013); accord SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“No matter how much of an
advance in the finance field the claims recite, the advance lies entirely in the
realm of abstract ideas, with no plausibly alleged innovation in the non-
abstract application realm. An advance of that nature is ineligible for
patenting.”); Intellectual Ventures I, 792 F.3d at 1370 (“[O]ur precedent is
clear that merely adding computer functionality to increase the speed or
efficiency of the process does not confer patent eligibility on an otherwise
abstract idea.”); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015) (“[R]elying on a computer to perform routine tasks more
quickly or more accurately is insufficient to render a claim patent eligible.”).
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Accordingly, we determine that claim 108 lacks an inventive concept
sufficient to transform the abstract idea into patent-eligible subject matter.
Thus, we sustain the rejection of claims 108–110 as directed to a judicial
exception under 35 U.S.C. § 101.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
108–110 101 Eligibility 108–110
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