Esurance Insurance Services, Inc.

Patent Trials and Appeals Board

Jan 3, 2020

14161586 - (D) (P.T.A.B. Jan. 3, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/161,586 01/22/2014 Tolithia Gay KORNWEIBEL 49867-513001US 4808
64046 7590 01/03/2020
Mintz Levin/San Diego Office
One Financial Center
Boston, MA 02111
EXAMINER
ALLADIN, AMBREEN A
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
01/03/2020 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TOLITHIA GAY KORNWEIBEL,
DARREN ALBERT HOWARD, RYAN DANIEL HARTMAN,
and JOHN CHRISTIAN SWIGART
____________

Appeal 2019-001853
Application 14/161,586
Technology Center 3600

Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP A. BENNETT, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from a Final rejection of
claims 1, 2, 6–9, 13, 14, 18–21, 25, 28, 30–34, 36,2 and 37. Claims 3–5,
10–12, 15–17, 22–24, 26, 27, 29, and 35 are canceled. We have jurisdiction
over the pending claims 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(a). According to Appellant, the real party in interest is
Esurance Insurance Services, Inc. See Appeal Br. 2.
2 Although claim 36 is omitted from the list of rejected claims on the Final
Office Action Summary page, a detailed statement of rejection for claim 36
is set forth on page 31 of the Final Action. The Examiner’s statement (Final
Act. 2) that claim 36 is cancelled appears to be incorrect, as Appellant
indicates that “Claims 1-2, 6-9, 13-14, 18-21, 25, 28, 30-34, and 36-37 are
pending.” Appeal Br. 4 (emphasis added).
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STATEMENT OF THE CASE
Introduction
Embodiments of Appellant’s invention relates to “computer networks
configured to supply insurance services. More particularly, the present
disclosure relates to techniques for supplying optimized insurance quotes.”
Spec. ¶ 2.
Rejections
A. Claims 1, 2, 6–9, 13, 14, 18–21, 25, 28, 30–34, and 37 are
provisionally rejected on the ground of non-statutory obviousness-type
double patenting (OTDP) as being unpatentable over Claims 1, 3–11, 13,
15–23, 25–30, and 32–37 of copending Application No. 14/276,955. Final
Act. 4.
B. Claims 1, 2, 6–9, 13, 14, 18–21, 25, 28, 30–34, 36, and 37 are
rejected under 35 U.S.C. § 112(b) as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the
inventor or a joint inventor regards as the invention. Final Act. 5.3
C. Claim 37 is rejected under 35 U.S.C. § 112(d) as being of
improper dependent form for failing to further limit the subject matter of the
claim upon which it depends, or for failing to include all the limitations of
the claim upon which it depends. Final Act. 10.

3 The Examiner omits claim 36 from the Rejection B heading (Final Act. 4),
but specifically includes claim 36 in the detailed statement under the heading
of Rejection B. See Final Act. 9. We have made appropriate correction
above.
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D. Claims 1, 2, 6–9, 13, 14, 18–21, 25, 28, 30–34, 36, and 37 are
rejected under 35 U.S.C. § 101, as being directed to a judicial exception,
without significantly more. Final Act. 10.
Rejections A, B, and C
Appellant indicates: “Review is not requested at this time for the non-
obviousness-type double patenting rejection or the rejections under 35
U.S.C. §112(b) and 35 U.S.C. §112(d).” Appeal Br. 4, n.1.
Under our procedural rule, arguments not made are waived. See 37
C.F.R. § 41.37(c)(1)(iv). Therefore, we summarily affirm the rejection of
the claims rejected under Rejections B and C, respectively.
We note that provisional non-statutory OTDP Rejection A relies on
claims in copending Application No. 14/276,955 as evidence. Because
copending Application No. 14/276,955 was abandoned on April 21, 2017
(for failure to respond to an office action), we dismiss provisional OTDP
Rejection A as moot.
Appellant only advances arguments on appeal with respect to
Rejection D under 35 U.S.C. § 101, which we address infra.
Rejection D under 35 U.S.C. § 101
Issue on Appeal
Did the Examiner err in rejecting claims 1, 2, 6–9, 13, 14, 18–21, 25,
28, 30–34, 36, and 37 under 35 U.S.C. § 101, as being directed to a judicial
exception, without significantly more?
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ANALYSIS
We reproduce infra independent claim 1 in Table One, which we
consider representative of the claims on appeal. We have considered all of
Appellant’s arguments and any evidence presented. To the extent Appellant
has not advanced separate, substantive arguments for particular claims, or
other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(1)(iv).
Principles of Law — 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “‘[L]aws of nature, natural phenomena, and abstract
ideas’ are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185
(1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.” (emphasis omitted)); 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.”).
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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 of rubber products” (Diehr, 450 U.S. at 191 “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held 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 Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citing Benson and Flook); see, 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
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elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
Subject Matter Eligibility — 2019 Revised Guidance
The 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 Revised Guidance”). This new
guidance is applied in this Opinion. Under the 2019 Revised Guidance, we
first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, mental processes,
or certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people);4 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).5, 6

4 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter
“Step 2A, Prong One”).
5 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter
“Step 2A, Prong Two”).
6 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. See 2019
Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so
integrated, then the claim is not directed to a judicial exception and is patent
eligible under 35 U.S.C. § 101. Id.
Only if a claim: (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. See 2019 Revised
Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, conventional”
in the field (see MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, and
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception.7
See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Because there is no single definition of an “abstract idea” under Alice
step 1, the PTO has recently synthesized, for purposes of clarity,
predictability, and consistency, key concepts identified by the courts as
abstract ideas to explain that the “abstract idea” exception includes the
following three groupings:

7 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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1. Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical
calculations;
2. Mental processes— concepts performed in the human mind
(including an observation, evaluation, judgment, opinion);
and
3. Certain methods of organizing human activity—fundamental
economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions
(including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior
or relationships or interactions between people (including
social activities, teaching, and following rules or
instructions).
See 2019 Revised Guidance, 84 Fed. Reg. at 52.
According to the 2019 Revised Guidance, “[c]laims that do not recite
[subject] matter that falls within these enumerated groupings of abstract
ideas should not be treated as reciting abstract ideas,” except in rare
circumstances. Even if the claims recite any one of these three groupings of
abstract ideas, these claims are still not “directed to” a judicial exception
(abstract idea), and thus are patent eligible, if “the claim as a whole
integrates the recited judicial exception into a practical application of that
exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53.
For example, limitations that are indicative of integration into a
practical application include:
1. Improvements to the functioning of a computer, or to any
other technology or technical field — see MPEP
§ 2106.05(a);
2. Applying the judicial exception with, or by use of, a
particular machine — see MPEP § 2106.05(b);
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3. Effecting a transformation or reduction of a particular
article to a different state or thing — see MPEP
§ 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the
judicial exception to a particular technological
environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception
— see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of integration into a
practical application include:
1. Adding the words “apply it” (or an equivalent) with the
judicial exception, or merely include instructions to
implement an abstract idea on a computer, or merely uses a
computer as a tool to perform an abstract idea — see MPEP
§ 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
2019 Revised Guidance, Step 2A, Prong One8
The Judicial Exception
Under the 2019 Revised Guidance, we begin our analysis by first
considering whether the claims recite any judicial exceptions, including
certain groupings of abstract ideas, in particular: (a) mathematical concepts,
(b) mental steps, and (c) certain methods of organizing human activities.

8 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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The Examiner concludes that all claims 1, 2, 6–9, 13, 14, 18–21, 25,
28, 30–34, 36, and 37 recite an abstract idea:
[The claims a]re directed to the abstract idea of a system,
method and computer readable medium for providing insurance
product offerings to user(s) seeking insurance product offerings
via a series of steps as explained in detail below. The claim
invention is directed to non-statutory subject matter because the
claim(s) as a whole, considering all claim elements both
individually and in combination, do not amount to significantly
more than an abstract idea.
See Final Act. 10.
In Table One below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We also identify in bold
the additional (non-abstract) claim limitations that are generic computer
components:
TABLE ONE
Independent Claim 1 2019 Revised Guidance
[a] A system, comprising:
at least one processor; and
at least one memory storing
instructions which, when
executed by the at least one
processor,
cause operations
comprising:
A system falls under the statutory
subject matter class of a machine. See
35 U.S.C. § 101 (“Whoever invents or
discovers any new and useful process,
machine, manufacture, or composition
of matter, or any new and useful
improvement thereof, may obtain a
patent therefor, subject to the
conditions and requirements of this
title.”).
The system, processor, and memory,
are additional non-abstract limitations.
Storing executable instructions in a
memory is insignificant extra-solution
activity. See 2019 Revised Guidance,
55 n.31; see also MPEP § 2106.05(g).
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Independent Claim 1 2019 Revised Guidance
[b] receiving, over a network and
by a marketplace server, user
information from a
referring insurer for a first
user seeking an insurance
product offering;

Receiving user information is
insignificant extra-solution activity
(i.e., data gathering). 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).
The marketplace server is an additional
non-abstract limitation.
[c] determining, by at least
applying a customer value
prediction model to the user
information of the first user, a
first customer value prediction
indicative of the first user's
likelihood to purchase an
insurance product offering from
the referring insurer;
Abstract idea: determining a first
customer value prediction by applying
a prediction model is a certain method
of organizing human activity, i.e., a
fundamental economic practice, e.g.,
insurance, and commercial interactions,
which is a mathematical relationship
that could be performed alternatively as
a mental process. See 2019 Revised
Guidance 52.
[d] in response to the first
customer value prediction being
less than a threshold value,
requesting, from a plurality of
other servers associated with a
plurality of other insurers, a bid
for an opportunity to display an
insurance product offering to the
first user;
Abstract idea: requesting a bid is a
certain method of organizing human
activity, i.e., a fundamental economic
practice, e.g., insurance, and
commercial interactions, which could
be performed alternatively as a mental
process. See 2019 Revised Guidance
52.
The plurality of other servers are
additional non-abstract limitations.
[e] receiving, by the
marketplace server, bidding
information for one or more
insurance product offerings from
the plurality of other insurers;
Receiving, via a server, bidding
information is insignificant extra-
solution activity (i.e., data gathering).
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
The marketplace server is an additional
non-abstract limitation.
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Independent Claim 1 2019 Revised Guidance
[f] identifying, based at least on
the user information and the
bidding information, qualifying
bids for a first insurance product
offering from a first insurer and a
second
insurance product offering
from a second insurer;
Abstract idea: identifying qualifying
bids is a certain method of organizing
human activity, i.e., a fundamental
economic practice, e.g., insurance, and
commercial interactions, which could
be performed alternatively as a mental
process. See 2019 Revised Guidance
52.
[g] establishing, by the
marketplace server, a first
communication session with the
first user;
Establishing a communication session
with a user is insignificant extra-
solution activity (i.e., data gathering).
2019 Revised Guidance, 55 n.31; see
also MPEP § 2106.05(g).
The marketplace server is an additional
non-abstract limitation.
[h] generating, by the
marketplace server, a first
graphic user interface for
displaying, to the first user, a first
individual prioritized insurance
policy presentation, the first
individual prioritized insurance
policy presentation prioritizing,
based at least on the first
customer value prediction
associated with the first user, the
first insurance product offering
and the second insurance product
offering over a third insurance
product offering from the
referring insurer, the first
individual prioritized insurance
policy presentation further
prioritizing the first insurance
product offering over the second
insurance product offering based
Generating a graphic user interface for
displaying an individual prioritized
insurance policy presentation is
insignificant extra-solution activity
(i.e., data gathering). 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).
The marketplace server and first
graphical user interface are additional
non-abstract limitations.
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Independent Claim 1 2019 Revised Guidance
at least on an economic
arrangement between the
referring insurer and the first
insurer and/or the second insurer;
[i] collecting, during the first
communication session with the
first user, interaction data
indicative of whether the first
user purchased the first insurance
product offering, the second
insurance product offering, and/or
the third insurance product
offering during the first
communication session;
Collecting interaction data is
insignificant extra-solution activity
(i.e., data gathering). 2019 Revised
Guidance, 55 n.31; see also MPEP
§ 2106.05(g).
[j] updating, based at least on the
interaction data, the customer
value prediction model;
Abstract idea: Updating the customer
value prediction model is a certain
method of organizing human activity,
i.e., a fundamental economic practice,
e.g., insurance, and commercial
interactions, which could be performed
alternatively as a mental process. See
2019 Revised Guidance 52.
[k] determining, by at least
applying the updated customer
value prediction model to user
information for a second user, a
second customer value prediction
indicative of the second user's
likelihood to purchase an
insurance product offering from
the referring insurer; and
Abstract idea: determining a second
customer value prediction indicative of
the second user’s likelihood to
purchase an insurance product offering
from the referring insurer is a certain
method of organizing human activity,
i.e., a fundamental economic practice,
e.g., insurance, and commercial
interactions, which could be performed
alternatively as a mental process. See
2019 Revised Guidance 52.
[l] generating, during a second
communication session with the
second user and based at least on
Generating a second graphic user
interface for displaying a second
individual prioritized insurance policy
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Independent Claim 1 2019 Revised Guidance
the second customer value
prediction, a second graphic
user interface for displaying, to
the second user, a second
individual prioritized insurance
policy presentation.
presentation is insignificant post-
solution activity. 2019 Revised
Guidance, 55 n.31; see also
MPEP § 2106.05(g).
The graphic user interface is an
additional non-abstract limitation.
Spec. 27 (Claims App.).
Abstract Idea — Mental Processes
After considering representative claim 1 as a whole, we conclude the
recited italicized functions shown in Table One fall under the general
category of certain methods of organizing human activity, which includes
fundamental economic practices, i.e., insurance and commercial interactions
that we conclude could be performed alternatively as mental processes.9 See
2019 Revised Guidance, 84 Fed. Reg. at 52; see also Bancorp, 687 F.3d at
1280 (concluding that “managing a stable value protected life insurance
policy by performing calculations and manipulating the results” is an

9 If a method can be performed by human thought alone, or by a human
using pen and paper, it is merely an abstract idea and is not patent eligible
under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011); “That purely mental processes can be
unpatentable, even when performed by a computer, was precisely the
holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654
F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to
accelerate an ineligible mental process does not make that process patent-
eligible.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.),
687 F.3d 1266, 1279 (Fed. Cir. 2012); see also 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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abstract idea); 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.’).” 2019 Revised Guidance, 84 Fed. Reg. at 52 n.14.
“An abstract idea can generally be described at different levels of
abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir.
2016). Merely combining several abstract ideas does not render the
combination any less abstract. See RecogniCorp, LLC v. Nintendo Co., 855
F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to
another abstract idea . . . does not render the claim non-abstract.”);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016) (determining the pending claims were directed to a combination of
abstract ideas).
For at least these reasons, we conclude claim 1 recites the specific
types of abstract ideas identified above in Table One.
Additional Limitations
As emphasized in bold in Table One, supra, we note the additional
non-abstract limitations, inter alia, for example (claim 1):

[a] A system, comprising: at least one processor; and at least one
memory, [b] a network
[b], [e], [g], [h] the marketplace server; [d] a plurality of other
servers

We further note the supporting exemplary descriptions of generic
computer components in the Specification, for example see Spec. ¶¶ 17–19.
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See also Final Act. 21–25 (regarding the additional paragraphs of the
Specification cited by the Examiner).
Appellant argues: “the Federal Circuit, in its McRO decision,
reiterated its caution against oversimplifying the claims ‘by looking at the
claims generally and failing to account for the specific requirements of the
claims.’” Appeal Br. 16.
McRO
We emphasize that McRO, Inc. v. Bandai Namco Games Am. Inc.,
(837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception
prevents patenting a result where ‘it matters not by what process or
machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly
v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). The patent at issue in
McRO describes that prior character animation and lip synchronization were
accomplished by human animators, with the assistance of a computer, which
involved the use of a so-called “keyframe” approach in which animators set
appropriate parameters, i.e., morph weights, at certain important times, i.e.,
in order to produce accurate and realistic lip synchronization and facial
expressions. McRO, 837 F.3d at 1305.
See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed.
Cir. 2018) (distinguishing McRO):
The claims in McRO were directed to the creation of something
physical—namely, the display of “lip synchronization and
facial expressions” of animated characters on screens for
viewing by human eyes. Id. at 1313. The claimed improvement
was to how the physical display operated (to produce better
quality images), unlike (what is present here) a claimed
improvement in a mathematical technique with no improved
display mechanism. The claims in McRO thus were not abstract
in the sense that is dispositive here. And those claims also
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avoided being “abstract” in another sense reflected repeatedly
in our cases (based on a contrast not with “physical” but with
“concrete”): they had the specificity required to transform a
claim from one claiming only a result to one claiming a way of
achieving it.
SAP, 898 F.3d at 1167 (emphasis added).
Thus, Appellant’s claim on appeal do not improve the operation of a
physical display, as was the case in McRO, nor the operation of any other
computer component, such as the “system . . . [or the] at least one processor;
and at least one memory,” recited in independent claim 1. See SAP, 898
F.3d at 1167. Instead, Appellant’s claim 1 merely provides as a result an
“individual prioritized insurance policy presentation,” to be viewed by a
person. Moreover, we conclude Appellant’s generic “system”
implementation in claim 1 performs functions that can be performed
alternatively as mental processes, as discussed above.
Because we conclude all claims on appeal recite an abstract idea, as
identified above (see supra Table One), under Step 2A, Prong One, we
proceed to Step 2A, Prong Two.
2019 Revised Guidance, Step 2A, Prong Two
Integration of the Judicial Exception into a Practical Application
Pursuant to the 2019 Revised Guidance, we consider whether there
are additional elements set forth in the claims that integrate the judicial
exception into a practical application. See 2019 Revised Guidance, 84 Fed.
Reg. at 54–55.
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MPEP § 2106.05(a)
Improvements to the Functioning of a Computer or
to Any Other Technology or Technical Field
Appellant argues the claimed invention provides an improvement to
computer functionality:
[T]he Examiner’s significantly more inquiry overlooks express
claim limitations directed to generating user interfaces that
evolve based on a prediction model capturing user interactions
across multiple communication sessions with a marketplace
server. These limitations constitute “specific steps ... that
accomplish [a] desired result” which, in accordance with the
Federal Circuit’s Finjian[] decision, render the claimed subject
matter patent eligible.
Appeal Br. 13.
Finjan
We are not persuaded by Appellant’s comparison of the claims to the
claims in Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303 (Fed. Cir.
2018). In Finjan, the court found that claims directed to a behavior-based
virus scan constituted an improvement in computer functionality over the
“traditional, ‘code-matching’ virus scans.” Id. at 1304. The court
determined that the claimed method employs a new kind of file, allows
access to be tailored for different users, and allows the system to accumulate
and use newly available, behavior-based information about potential threats.
Id. at 1305. The court ultimately held that the claims are “directed to a non-
abstract improvement in computer functionality, rather than the abstract idea
of computer security,” and “recite specific steps—generating a security
profile that identifies suspicious code and linking it to a downloadable—that
accomplish the desired result.” Id.
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Unlike the claims of Finjan, claim 1 fails to employ a newly generated
file containing security profile in a downloadable, and does not use a new
file to enable a computer security system to improve on or add a computer
functionality by reciting specific steps accomplishing the desired security
results. Thus, we are not persuaded Appellant’s claim 1 is sufficiently
analogous to the claims in Finjan.
Core Wireless
Appellant also argues:
As the Core Wireless decision indicates, user interface claims
setting forth precise limitations on the type of data being
displayed in the user interface and the manner in which the data
is displayed are patent eligible because such claims are directed
to an improved user interface instead of any underlying abstract
idea.
Appeal Br. 19.

We are not persuaded by Appellant’s arguments that the claims before
us on appeal are similar to the subject claim considered by the court in Core
Wireless. In Core Wireless, the claimed invention specified particular
technological functionality in the form of “an application summary that can
be reached directly from [a] menu” such that the summary window “is
displayed while the one or more applications are in an un-launched state.”
Core Wireless, 880 F.3d 1356, 1362–63 (Fed. Cir. 2018).
Here, Appellant has not provided sufficient details regarding how the
claimed “system,” “at least one processor,” and “graphic user interface for
displaying” include more than mere instructions to perform the recited
functions so as to qualify as an improvement to an existing technology. As
discussed above, we conclude Appellant’s generic computer implementation
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performs functions that can be performed alternatively as mental processes
and are also certain methods of organizing human activity, e.g., insurance
and commercial interactions. See independent claim 1. See also Trading
Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (The
“‘mere automation of manual processes using generic computers’ . . . ‘does
not constitute a patentable improvement in computer technology.’” quoting
Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir.
2017)).
Accordingly, on this record, we conclude independent claim 1 does
not recite an improvement to the functionality of a computer or other
technology or technical field. See MPEP § 2106.05(a).
MPEP §§ 2106.05(b) and (c)
The Bilski Machine-or-Transformation test (“MoT”)
We note the Supreme Court cautions that the MoT test is not the sole
test, but may provide a useful clue:
This Court’s precedents establish that the machine-or-
transformation test is a useful and important clue, an
investigative tool, for determining whether some claimed
inventions are processes under § 101. The machine-or-
transformation test is not the sole test for deciding whether an
invention is a patent-eligible “process.”
Bilski, 561 U.S. at 604 (emphasis added).
Here, Appellant advances no arguments that method claims 13, 14 or
18–21 are tied to a particular machine, or transform an article to a different
state or thing. See MPEP § 2106.05(c).
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MPEP § 2106.05(e) — Meaningful Claim Limitations10
The Examiner finds:
The claims do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the claims do not provide improvements to
another technology or technical field, improvements to the
functioning of the computer itself, are not applying the judicial
exception with, or by use of a particular machine, are not
effecting a transformation or reduction of a particular article to
a different state or thing, are not adding a specific limitation
other than what is well understood, routine and conventional in
the field or adding unconventional steps that confine the claim
to a particular useful application and do not provide
meaningful limitations to the abstract idea to a particular
technological environment.
The claim recites “servers”, “at least one memory”, “at
least one processor” and a “marketplace server” which are
recited at a high level of generality and recited as performing
generic computer functions routinely used.
Final Act. 20 (emphasis added).
Appellant does not advance substantive, persuasive arguments as to
any particular “meaningful” claim limitations, such as those of the types
addressed under MPEP § 2106.05(e), that impose meaningful limits on the
judicial exception.
As discussed above, we conclude the recited italicized functions
shown in Table One could also be performed alternatively as a mental

10 See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 55, citing MPEP § 2106.05(e): “[A]pply[ing] or us[ing] the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.” (emphasis added).
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process. See 2019 Revised Guidance, 84 Fed. Reg. at 52. As discussed
above, we see nothing in Appellant’s claims that specifically improves the
efficiency of the system, the processor(s), the graphic user interface for
displaying, or another technology or technical field, as addressed above
under MPEP § 2106.05(a).
Accordingly, on this record, we conclude representative independent
claim 1 has no other argued meaningful limitations, as considered under
section 2106.05(e) of the MPEP, pursuant to the 2019 Revised Guidance.
MPEP § 2106.05(f)
Merely including instructions to implement
an abstract idea on a computer, or
Merely using a computer as a tool
to perform an abstract idea
We conclude Appellant’s claimed invention merely implements the
abstract idea using instructions executed on generic computer components,
as depicted in bold type in Table One, and as supported in our references to
the Specification, supra. Thus, we conclude Appellant’s claims merely use
a computer/processor as a tool to perform an abstract idea.
MPEP § 2106.05(g)
Adding insignificant extra-solution activity
to the judicial exception
As mapped in the right column of Table One, supra, we conclude that
representative independent claim 1 recites extra or post-solution activities
that courts have determined to be insufficient to transform judicially
excepted subject matter into a patent-eligible application. See MPEP
§ 2106.05(g); 84 Fed. Reg. at 55 n.31.

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MPEP § 2106.05(h)
Generally linking the use of the judicial exception to a particular
technological environment or field of use
The Supreme Court guides: “the prohibition against patenting
abstract ideas ‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or [by] adding
‘insignificant postsolution activity.’” Bilski, 561 U.S. at 611–12, (quoting
Diehr, 450 U.S. at 191–92).
Appellant advances no lack of preemption argument in the Appeal
Brief. Nor do claims 1, 2, 6–9, 13, 14, 18–21, 25, 28, 30–34, 36, and 37 on
appeal present any other issues as set forth in the 2019 Revised Guidance
regarding a determination of whether the additional generic elements
integrate the judicial exception into a practical application. See 2019
Revised Guidance, 84 Fed. Reg. at 55.
Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)–
(h)), we conclude claims 1, 2, 6–9, 13, 14, 18–21, 25, 28, 30–34, 36, and 37
do not integrate the judicial exception into a practical application.
Therefore, we proceed to Step 2B, The Inventive Concept.
The Inventive Concept – Step 2B
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
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Appellant argues:
The Examiner’s significantly more inquiry is further
riddled with misplaced emphasize on the presence of generic
computer components and/or functionalities, even though that
factor has no bearing on whether the additional elements of a
claim qualify as “significantly more.” As such, the Examiner’s
significantly more inquiry contradicts the Federal Circuit’s
position in this regard. For instance, the Federal Circuit’s
BASCOM[] decision and Enfish[] decision both held that claim
elements implemented using generic computer components are
not by default well-understood, routine, or conventional. Both
BASCOM and Enfish expressly maintain that claim elements
implemented using generic computer components performing
generic computer functions can nevertheless amount to
significantly more because generic computer components and
generic computer functions are not by default well-understood,
routine, or conventional.
Appeal Br. 23.
Under Step 2B, Appellant further argues: “Specifically, the Examiner
did not provide any of the four types of evidence the Berkheimer court
required for establishing the well-understood, routine, or conventional nature
of the additional elements of a claim.” See Appeal Br. 22. Appellant also
analogizes the claims on appeal to BASCOM and Enfish. Appeal Br. 23.
BASCOM
We find Appellant’s analogy to BASCOM unavailing. The Federal
Circuit held in BASCOM that the claimed Internet content filtering, which
featured an implementation “versatile enough that it could be adapted to
many different users’ preferences while also installed remotely in a single
location,” expressed an inventive concept in “the non-conventional and non-
generic arrangement of known, conventional pieces.” BASCOM Glob.
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Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed.
Cir. 2016).
Here, Appellant has not persuasively shown an unconventional, non-
generic arrangement regarding the non-abstract limitations of generic
computer components. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Specifically, Appellant does not explain how the conventional, generic,
computer components recited in the claim are arranged in such a way that, as
a whole, they amount to a non-conventional arrangement. Unlike Bascom,
claim 1 recites the use of various servers transmitting and receiving data
over a network without any specific information about how or where those
servers are placed in the network.
Therefore, it is our view that Appellant’s claims do not involve any
improvements to another technology, technical field, or improvements to the
functioning of the computer or network, as was seen by the court in
BASCOM. Instead, we conclude Appellant’s claims 1, 2, 6–9, 13, 14,
18–21, 25, 28, 30–34, 36, and 37 merely invoke generic computer
components as a tool in which the instructions executing on the computer
apply the judicial exception.
We do not find Enfish is applicable to a Step 2B analysis. We
emphasize the self-referential database table considered by the court in
Enfish was found to be a specific type of data structure that was designed to
improve the way a computer stores and retrieves data in memory. Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016). Thus,
because the self-referential database table improved the way the computer
stored and retrieved data, the Enfish court stopped the analysis after Alice
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step one, and concluded the Enfish claims were not directed to an abstract
idea. Id., 822 F.3d at 1336.
Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)
We note that Berkheimer was decided by the Federal Circuit on
February 8, 2018. On April 19, 2018, the PTO issued the Memorandum
titled: “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.)” (hereinafter “Berkheimer Memorandum”).11 The Berkheimer
Memorandum provided specific requirements for an Examiner to support
with evidence any finding that claim elements (or a combination of elements)
are well-understood, routine, or conventional.
Under Step 2B, the Examiner finds, inter alia:
For the role of a computer in a computer implemented
invention to be deemed meaningful in the context of this
analysis, it must involve more than performance of “well-
understood, routine, [and] conventional activities previously
known to the industry.” Id. at 2359 (quoting Mayo, 132 S. Ct. at
1294 (internal quotation marks and brackets omitted). Further,
“the mere recitation of a generic computer cannot transform a
patent ineligible abstract idea into a patent-eligible invention.”
Id. at 2358.
Final Act. 20–21.
The Examiner, after citing to case law (Mayo), also cites to
Appellant’s Specification (Final Act. 21–25), and finds the cited portions of
the Specification confirm that the recited computer components are generic
elements. Thus, the Examiner provided evidence of the type the Berkheimer

11 Available at https://www.uspto.gov/sites/default/files/documents/memo-
berkheimer-20180419.PDF.
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court required for establishing the well-understood, routine, or conventional
nature of the additional elements of a claim. Appellant has not substantively
and persuasively traversed the Examiner’s specific findings. See Appeal Br.
22.
We note the Supreme Court has held “the mere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention.” Alice, 573 U.S. at 223. Our reviewing court provides
additional guidance: See FairWarning, 839 F.3d at 1096 (“[T]he use of
generic computer elements like a microprocessor or user interface do not
alone transform an otherwise abstract idea into patent-eligible subject
matter.”); OIP Techs, 788 F.3d at 1363 (claims reciting, inter alia, sending
messages over a network, gathering statistics, using a computerized system
to automatically determine an estimated outcome, and presenting offers to
potential customers found to merely recite “‘well-understood, routine
conventional activit[ies],’ either by requiring conventional computer
activities or routine data-gathering steps” (alteration in original)).
This reasoning is applicable here. Therefore, on the record before us,
Appellant has not shown that the claims on appeal add a specific limitation
beyond the judicial exception that is not well-understood, routine, and
conventional, when the claim limitations are considered both individually
and as an ordered combination. See MPEP § 2106.05(d).
In light of the foregoing, we conclude, under the 2019 Revised
Guidance, that each of Appellant’s claims 1, 2, 6–9, 13, 14, 18–21, 25, 28,
30–34, 36, and 37, 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.
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Accordingly, for the reasons discussed above, we sustain the
Examiner’s Rejection D under 35 U.S.C. § 101 of claims 1, 2, 6–9, 13, 14,
18–21, 25, 28, 30–34, 36, and 37.
CONCLUSION
Under our 2019 Revised Guidance, as governed by relevant case law,
we conclude all claims 1, 2, 6–9, 13, 14, 18–21, 25, 28, 30–34, 36, and 37,
rejected under 35 U.S.C. § 101, are directed to patent-ineligible subject
matter.
DECISION SUMMARY

12 The Provisional OTDP Rejection is dismissed as moot, supra.
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirmed Reversed
1, 2, 6–9, 13, 14,
18–21, 25, 28,
30–34, 37
Provisional
Non-statutory
OTDP12

1, 2, 6–9, 13, 14,
18–21, 25, 28,
30–34, 36, 37
112(b) Indefiniteness 1, 2, 6–9, 13, 14,
18–21, 25, 28,
30–34, 36, 37

37 112(d) Improper
Dependency
37
1, 2, 6–9, 13, 14,
18–21, 25, 28,
30–34, 36, 37
101 Eligibility 1, 2, 6–9, 13, 14,
18–21, 25, 28,
30–34, 36, 37

Overall
Outcome
1, 2, 6–9, 13, 14,
18–21, 25, 28,
30–34, 36, 37

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED