Clark Heydon et al.

Patent Trials and Appeals Board

Jun 19, 2020

12623572 - (D) (P.T.A.B. Jun. 19, 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.
12/623,572 11/23/2009 Clark Allan Heydon GUIDP007C1 6631
21912 7590 06/19/2020
VAN PELT, YI & JAMES LLP
10050 N. FOOTHILL BLVD #200
CUPERTINO, CA 95014
EXAMINER
NIQUETTE, ROBERT R
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
06/19/2020 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):
usptocorrespondence@ip-patent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte CLARK ALLAN HEYDON and
KENNETH WILLIAM BRANSON

Appeal 2020-001561
Application 12/623,572
Technology Center 3600

Before DONALD E. ADAMS, ERIC B. GRIMES, and
RICHARD M. LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as reciting
patent ineligible subject matter. Pursuant to 35 U.S.C. § 134(a), Appellant1
appeals from the Examiner’s decision to reject the claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 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 Guidewire
Software, Inc. Appeal Br. 1.
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STATEMENT OF THE CASE
Claims 1–19, 21, 22, 25–30, and 35–38 stand finally rejected by the
Examiner under 35 U.S.C. § 101 because the claimed invention is directed to
non-statutory subject matter. Final Act. 2–3.
Appellant did not argue the claims separately. Appeal Br. 12–13. We
select claim 35 as representative. The claim, which is reproduced below, is
annotated with bracketed numbers and letters for reference to the specific
limitations in the claim:
35. A method comprising:
[1] storing a policy data revision, including:
[1a] storing a corresponding effective date on
which the policy data revision is legally effective; and
[1b] storing a corresponding change date on which
the policy data revision was made,
[1c] wherein the corresponding change date stored
with the policy data revision is different from the corresponding
effective date stored with the policy data revision;
[2] wherein an insurance policy is stored as a plurality of
discrete temporally-sequential policy data revisions, and
wherein a given policy data revision of the plurality of discrete
temporally-sequential policy data revisions incorporates
information from temporally prior revisions covering an
effective date range of the given revision;
[3] receiving a query for a status of the insurance policy
including:
[3a] a queried-for effective date; and
[3b] a queried-for change date, wherein the
queried-for change date corresponds to a date that a claim was
reported;
[4] determining a version of the insurance policy
effective as of the queried-for effective date based at least in
part on the queried-for change date, including:
[4a] identifying, based on corresponding effective
dates stored with the policy data revisions, policy data revisions
effective on the queried-for effective date;
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[4b] locating a most temporally recent policy data
revision that has a corresponding stored change date that is
temporally prior to the queried-for change date corresponding
to the date that the claim was reported; and
[4c] displaying the located policy data revision,
wherein the located policy data revision is used to detect
whether a damaged item associated with the claim was added
retroactively to the insurance policy after the damage had
occurred.

PRINCIPLES OF LAW
Under 35 U.S.C. § 101, an invention is patent-eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 134 S.Ct. 2347 (2014); Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 134 S.Ct. at 2355.
If it is determined that the claims are directed to an ineligible concept, then
the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. The Court explained that
this step involves
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, 134 S.Ct. at 2355 (citing from Mayo, 566 U.S. at 75–77).
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Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 134 S.Ct. at
2355.
The PTO published revised guidance on the application of 35 U.S.C.
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“Eligibility Guidance”). The Eligibility Guidance provides additional
direction on how to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the Eligibility Guidance, looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception in a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
“inventive concept” to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. 56.
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With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.

DISCUSSION
Claim 35 is directed to a method. Following the first step of the
Mayo/Alice analysis, we find that the claim is directed to a “method” which
is also a “process” and therefore falls into one of the broad statutory
categories of patent-eligible subject matter under 35 U.S.C. § 101. We thus
proceed to Step 2A, Prong One, of the Eligibility Guidance.

Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The Examiner found that the claims are directed to the “practice of
insurance policy management” which “is a mental process, well-known, and
extensively used for many years, with or without the involvement of
technological means.” Ans.2 8. The Examiner also considered the claims to
be directed to be a “commercial interaction,” which the Eligibility Guidance
categorizes as a “method of organizing human activity.” Id.; see also
Eligibility Guidance, 84 Fed. Reg. 52. Both of these categories, mental
processes and methods of organizing human activity, are listed in the
Eligibility Guidance as abstract ideas. Eligibility Guidance, 84 Fed. Reg. 52.

2 Second Examiner’s Answer mailed Nov. 1, 2019 (“Ans.”).
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As recognized by the Examiner, the steps of the claim of storing
policy data revisions by date (steps [1], [2]), querying the stored information
(step [3]), and then determining a version of the insurance policy effective as
of the queried-for effective date (step [4]) are all steps that could be done, in
part, by the human mind. For example, the data about the effective and
change dates of the policy data (steps [1a], [1b]) could be stored in a file
cabinet system and queried by a person searching the files manually (step
[3]) and making an evaluation or judgment as to which files meet the criteria
(step [4]). Thus, the Examiner properly found these steps to be mental
processes.
In addition to this, the Eligibility Guidance lists “insurance” and
“commercial . . . interactions” as falling in the category of abstract ideas of
“certain method of organizing human action.” Eligibility Guidance, 84 Fed.
Reg. 52. The steps of the claimed method of storing the “effective” and
“change” dates of an insurance policy, querying the stored information, and
then determining a version of the insurance policy effective as of the
queried-for effective date are steps which carry out the commercial
interaction of identifying the most current terms of an insurance policy
agreement. These recited steps manage the policy, and as explained in the
Specification, allow “insurance providers” to “accurately process claims and
also monitor fraud activities and preserve information for auditing purposes
or other legal reasons.” Spec. ¶ 73.
Appellant contends that it would be “impossible” to perform the steps
of the claim mentally. Appeal Br. 7. We do not agree. As explained above,
the changes in an insurance policy on a revision basis (e.g., separate copies,
each with the change) could be sorted manually and filed, which a person
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could then review and determine mentally which version meets the query as
recited in step [4] of claim 35. For this reason, we do not think it is
impossible that the steps could be performed mentally.
Appellant also argues that the claims include “non-mental process
limitations.” Reply Br. 2. While this may be true, as explained above, the
claim also recites steps that could be carried out mentally.
Appellant argues that “the claims are not merely directed to the
practice of insurance policy management, but rather are directed to a specific
implementation of a process for policy revisioning and a specific way of
storing policies.” Reply Br. 3. Furthermore, Appellant argues that the steps
in the claims “are not human activities but computerized revisioning and
storage of insurance policies to facilitate fraud detection and data retention.”
Id.
This argument is not persuasive. The Eligibility Guidance identifies
commercial interactions as the abstract idea of “[c]ertain methods of
organizing human activity. Eligibility Guidance, 84 Fed. Reg. 52. The
Eligibility Guidance also lists “agreements in the form of contracts” as
organizing human activity. Id. Insurance policies are described in the
Specification as “complex agreements that specify items to be afforded
coverage with respect to particular perils.” Spec. ¶ 2. See also Bancorp
Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266
(Fed. Cir. 2012) finding certain insurance policy methods to be patent-
ineligible. As explained in Bancorp, it is immaterial that a computer is used
to carry out the process because “[i]t is the management of the life insurance
policy that is ‘integral to each of [Bancorp’s] claims at issue,’ not the
computer machinery that may be used to accomplish it.” Id. at 1279.
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In sum, for the foregoing reasons, we find that claim 35 recites an
abstract idea. Accordingly, we proceed to Step 2A, Prong Two, of the
Eligibility Guidance.
Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. We must look at the claim elements individually and
“as an ordered combination” to determine whether the additional elements
integrate the recited abstract idea into a practical application. “A claim that
integrates a judicial exception in a practical application will apply, rely on,
or use the judicial exception in a manner that places a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception. Eligibility Guidance, 84 Fed.
Reg. 54. Integration into a practical application is evaluated by identifying
whether there are additional elements individually, and in combination,
which go beyond the judicial exception. Id. at 54–55. As explained in the
October 2019 Update to Subject Matter Eligibility,3 “first the specification
should be evaluated to determine if the disclosure provides sufficient details
such that one of ordinary skill in the art would recognize the claimed
invention as providing an improvement.” PEG Update 12.
The Specification describes changes that are made to an insurance
policy during its existing policy period. Spec. ¶ 2. “The effective date of a
policy change is the date on which the change becomes legally effective and

3 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (last accessed Nov. 15, 2019) (“PEG Update”).
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can comprise a present, retroactive, or future date. The change date of a
policy change is the date on which the change was actually made.” Spec.
¶ 3. Keeping track of the changes is important, the Specification explains,
because the changes to a policy “trigger a series of follow-on computations,
the most important of which is often a recalculation of the total cost of the
policy to reflect the changes and the amount of time remaining in the policy
period.” Spec. ¶ 3.
The Specification states a “significant problem lies in dealing with
out-of-sequence endorsements (OOSE), wherein an endorsement (which
comprises a change to an existing policy) has a change date that is
temporally subsequent to an existing revision but has an effective date that
legally precedes that existing revision.” Spec. ¶ 4. The Specification
explains that an insurer “needs to be able to ask not only what was effective
as of the date of loss, but also what changes had been made as of that date.
Such information may be particularly helpful when detecting fraud or in
creating a trail for audit purposes.” Spec. ¶ 5. The Specification states that
existing systems “do not adequately address the concerns presented by
OOSE’s.” Spec. ¶ 6. The Specification further states that in many cases only
the effective date of the change is preserved. Id.
The Specification explains that the problem of existing insurance
systems is addressed by storing an insurance policy “as a plurality of
discrete temporally-sequential policy data revisions, wherein each revision
incorporates information from temporally prior revisions covering an
effective date range of the revision.” Spec. ¶ 22. The Specification further
discloses the benefit:
So configured, an insurance policy period may be divided up into
time intervals with multiple policy revisions corresponding to
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each time interval. As a result, insurance providers may readily
track insurance policy revisions and accurately process claims
based on the effective dates and change dates of the revisions.
Further, revisions occurring out of sequence will not result in the
loss of information about the actual time of the change, and will
instead preserve both the effective date and change date.
Spec. ¶ 25.
Consistent with the Specification, Appellant argues that the claim
integrates the judicial exception into a practical application because
the claimed invention is directed to an improved way of
revisioning and storing policies that allows for the achievement
of various technical benefits and improvements over existing
systems for handling out of sequence endorsements, such as
improvements to data preservation/reservation, as well as
enabling new functionality that existing systems are unable to
perform, such as the ability to detect fraud and track audits.
Reply Br. 4. Specifically, Appellant identifies the “revisioning and storage
of an insurance policy as a plurality of discrete temporally-sequential policy
data revisions in the manner recited in the claims” as conferring an
advantage and technical benefits. Id. at 5. Appellant further refers to the
Specification which discloses:
The teachings, as set forth above, provide an advantageous
approach to handling of an out of sequence revision by dividing
an insurance policy period into time intervals and corresponding
revision segments. In addition, information regarding the
effective date and the actual change date will be retained despite
the introduction of an out of sequence revision. As a result,
insurance providers may accurately process claims and also
monitor fraud activities and preserve information for auditing
purposes or other legal reasons. Thus, the described
embodiments provide for an effective and efficient approach for
handling insurance policy revisions.
Spec. ¶ 73.
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The stated improvement of storing the insurance policy “as a plurality
of discrete temporally-sequential policy data revisions” (Spec. ¶ 22) and
“dividing an insurance policy period into time intervals and corresponding
revision segments” (Spec. ¶73) is reflected in steps [1], [1a], [1b], and [2] of
claim 35. Step [1] of the claim comprises storing the policy effective date
and change date. In [2], the claim requires them to be “stored as a plurality
of discrete temporally-sequential policy data revisions.” Step [4c] displays
the policy revisions “to detect whether a damaged item associated with the
claim was added retroactively to the insurance policy after the damage had
occurred.” Thus, the improvement cited by Appellant is described in the
claim.
Integration into a practical application is evaluated by identifying
whether there are additional elements individually, and in combination,
which go beyond the judicial exception. Eligibility Guidance, 84 Fed. Reg.
54–55. Specifically, the Eligibility Guidance describe several considerations
in determining whether the abstract idea is integrated into a practical
application:
An additional element reflects an improvement in the
functioning of a computer, or an improvement to other
technology or technical field
. . .
an additional element implements a judicial exception with, or
uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim
. . .
an additional element 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,

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such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
Eligibility Guidance, 84 Fed. Reg. 55.
In this case, the elements in the claim cited by Appellant and the
Specification as the improvement are storing the effective and change dates
of an insurance policy “as a plurality of discrete temporally-sequential
policy data revisions.” Claim 35, limitations [1], [2]. The claim does not
recite how the “storing” is accomplished. Only the result is described. Unlike
in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016),
where a self-referential table was recited in the claims which the court found
to be “a specific type of data structure designed to improve the way a
computer stores and retrieves data in memory,” limitations [1] and [2] do not
describe a specific data structure. The revisions are stored in a “temporally-
sequential” order, but we fail to see how arranging changes to a policy in the
order that they occurred is an improvement to a technical field or
technology.
We recognize that the asserted improvement is storing the “revisions”
in a temporal order, rather than the entire policy. However, no specific
implementation is described which tells how to organize the policy data
temporally as discrete units based on when they were changed.
First, we determine whether the claims at issue are directed to
one of those patent-ineligible concepts. Id., at ––––, 132 S.Ct.,
at 1296–1297. If so, we then ask, “[w]hat else is there in the
claims before us?” Id., at ––––, 132 S.Ct., at 1297. To answer
that question, we 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.
Alice, 134 S.Ct. at 2355.
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In this case, the claims are directed to a method of storing policy data
revisions of an insurance policy in a temporal order, querying the status of
the insurance policy, and displaying the located policy data revision. As
explained above, several of these steps can be performed mentally, with the
aid of pen and paper, and also constitute a method of organizing human
activity. We therefore must ask “what else” is there in this claim besides the
abstract idea. The elements that Appellant identifies as this “what else” is
storing the policy data revisions in a sequential order. This improvement,
however, could be accomplished using an old-fashioned filing system in
which the policy revisions from each insurance policy are stored in discrete
files in a temporal order. This is not the type of improvement that the courts
have seen as conferring subject matter eligibility on a claim reciting abstract
ideas. In Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315,
1327 (Fed. Cir. 2017), the court found the claims to be directed to an
abstract idea because the claimed “activity, i.e., organizing and accessing
records through the creation of an index-searchable database, includes
longstanding conduct that existed well before the advent of computers and
the Internet.”
In contrast to the claims at issue in this appeal, the claims in McRO,
Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) were
determined by the court to be recited with sufficient specificity to avoid the
judicial restrictions on patent eligibility under § 101. Appellant cites McRO
to support the eligibility of the claims, however, as explained below, claim
35 does not have the hallmarks of eligibility that McRO did.
In McRO, the claim was directed to a “method for automatically
animating lip synchronization and facial expression of three-dimensional
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characters.” McRO, 837 F.3d, 1307–08. The claim recited a series of steps
that “produce[d] lip synchronization and facial expression control of said
animated characters.” Id. The court found that the claimed “automation goes
beyond merely ‘organizing [existing] information into a new form’ or
carrying out a fundamental economic practice.” McRO, 837 F.3d at 1315
(citation omitted). Instead, the court found that the “claimed process uses a
combined order of specific rules that renders information into a specific
format that is then used and applied to create desired results: a sequence of
synchronized, animated characters.” Id. McRO found that the recited rules
“are limiting in that they define morph weight sets as a function of the
timing of phoneme sub-sequences.” McRO, 837 F.3d at 1313. The claims
were found to be directed to a “technological improvement over the existing,
manual 3-D animation techniques.” McRO, 837 F.3d at 1316.
In finding the claim patent-eligible, McRO noted that the “abstract
idea exception has been applied to prevent patenting of claims that abstractly
cover results where ‘it matters not by what process or machinery the result is
accomplished.’ [O’Reilly v. Morse, 56 U.S. (15 How.) 62, 113,]; see also
Mayo, 132 S.Ct. at 1301.” McRO, 837 F.3d at 1314. McRO stated that
therefore, a court must “look to whether the claims in these patents focus on
a specific means or method that improves the relevant technology or are
instead directed to a result or effect that itself is the abstract idea and merely
invoke generic processes and machinery.” McRO, 837 F.3d at 1314.
Here, the claimed steps recite the desired result of [1] “storing a
policy data revision”, [3] “receiving a query for a status of the insurance
policy”, and [4] “determining a version of the insurance policy effective as
of the queried-for effective date based at least in part on the queried-for
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change date.” Step [1] recites what dates are stored, and the order in which
the data revisions are stored, but not how the “storing” step is implemented.
Step [3] recites that dates are queried, but not how the query is received or
carried out. In step [4], the version of the effective insurance policy is
determined by [4a] identifying policy revisions and [4b] locating a most
temporally recent policy data revision, but each of the steps only state the
desired result without claiming how that result is accomplished.
While the claims may state an asserted improvement over existing
systems, the steps in the claims are not stated with enough specificity that
would deter preemption of the abstract idea recited in claim 35. In McRO,
the court held that the “limitations in claim 1 prevent preemption of all
processes for achieving automated lip-synchronization of 3-D characters.”
McRO, 837 F.3d at 1315. The court explained that “[t]he specific structure
of the claimed rules would prevent broad preemption of all rules-based
means of automating lip synchronization.” Id. In contrast, the steps in
rejected claim 35 are recited in general terms, namely, “storing,”
“receiving,” and “providing.” Unlike McRO, none of these steps recite how
the desired result is accomplished or implemented.
Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016), cited by Appellant (Appeal Br. 10), does not
lead to a different result. The court in Bascom found the claim eligible
because the claims were found to “carve out a specific location for the
filtering system (a remote ISP server) and require the filtering system to give
users the ability to customize filtering for their individual network
accounts.” Bascom, 827 F.3d at 1351. While filtering content was “already a
known concept,” the court found claims “recite a specific, discrete
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implementation of the abstract idea of filtering content.” Id. at 1350. In
contrast, the claims here do not “carve out” a specific way of storing the
policy data revisions, etc., but rather would preempt all ways of doing so. Id.
at 1352 (“As explained above, construed in favor of BASCOM as they must
be in this procedural posture, the claims of the ’606 patent do not preempt
the use of the abstract idea of filtering content on the Internet or on generic
computer components performing conventional activities.”)
In sum, we have not been guided to an additional element in the
claim, beyond the abstract idea, that integrates the judicial exception in
practical application.
Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the Eligibility
Guidelines, which asks whether there is an inventive concept. In making this
Step 2B determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
indicative that an inventive concept may not be present.” Eligibility
Guidance, 84 Fed. Reg. 56 (footnote omitted). We must also consider
whether the combination of steps perform “in an unconventional way and
therefore include an ‘inventive step,’ rendering the claim eligible at Step
2B.” Id. In this part of the analysis, we consider “the elements of each claim
both individually and ‘as an ordered combination’” to determine “whether
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the additional elements ‘transform the nature of the claim’ into a patent-
eligible application.” Alice, 134 S.Ct. at 2354.
Appellant argues that “the claims include limitations that are
significantly more because they do not include limitations that are well-
understood, routine, and conventional in the field, and add unconventional
steps that confine the claims to a particular useful application.” Reply Br. 8.
We do not agree with Appellant that the recited limitations are not
well-understood, routine, and conventional in the field. Specifically, the
steps in the claim comprise storing policy dates (step [1], querying the dates
[step [3], and then determining “a version of the insurance policy effective
as of the queried-for effective date based at least in part on the queried-for
change date” and displaying it [step [4]). Storing information on a computer,
receiving a query regarding that information, and determining what
information is sought by the query is conventional computer activity as
found by the Examiner. Ans. 11. See Intellectual Ventures, 850 F.3d at 1327
(Fed. Cir. 2017). In response, Appellant did not identify the specific
limitation in the claim asserted to be non-routine and non-conventional.
Appellant also argues that the claimed method is “enabling new
functionality that existing systems are unable to perform, such as the ability
to detect fraud and track audits (e.g., ‘displaying the located policy data
revision, wherein the located policy data revision is used to detect whether a
damaged item associated with the claim was added retroactively to the
insurance policy after the damage had occurred.’)”. Reply Br. 9.
The asserted “new functionality” is enabled in the claim by storing the
effective date and change date of the policy data revision (step [1]). We are
not persuaded that this step in combination with the other steps in the claim
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is inventive. As discussed above, the claim does not specify how the
“storing” is accomplished. Therefore, this step, alone, cannot be considered
to operate in a non-routine way because the “way” in which the result is
achieved is not recited in the claim. The “query” and the “determining” steps
are also not recited with sufficient detail to establish that the manner in
which they accomplish the result is not routine. The display step [4c] is also
claimed generically and we consider it to be insignificant extra-solution
activity. Eligibility Guidance, 84 Fed. Reg. 55. Appellant has not explained
how these steps in combination are inventive.
Consequently, under Step 2B, we are not persuaded that the Examiner
erred in determining that the additional limitations of claim 1 do not
transform the claim into significantly more than the abstract idea.

Summary
For the foregoing reasons, the rejection of claim 35 under 35 U.S.C.
§ 101 is affirmed. Separate arguments were not made for claims 1–19, 21,
22, 25–30, and 36–38. These claims therefore fall with claim 35. 37 C.F.R
§ 41.37(c)(1)(iv).

CONCLUSION
In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–19, 21,
22, 25–30,
35–38
101 Eligibility 1–19, 21,
22, 25–30,
35–38

Appeal 2020-001561
Application 12/623,572

19

TIME PERIOD
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).

AFFIRMED