Fields, Mike et al.

Patent Trials and Appeals Board

Jan 29, 2020

14863504 - (D) (P.T.A.B. Jan. 29, 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.
14/863,504 09/24/2015 Mike Fields 16091.105057 6046
164349 7590 01/29/2020
Faegre Baker Daniels/State Farm
300 N. Meridian Street
Suite 2500
Indianapolis, IN 46204
EXAMINER
NGUYEN, TIEN C
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
01/29/2020 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):
inteas@faegrebd.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte MIKE FIELDS, ROBERT T. TREFZGER,
TIM G. SANIDAS, and RAMAKRISHNA DUVVURI
__________________

Appeal 2019-003222
Application 14/863,504
Technology Center 3600
____________________

Before MICHAEL L. HOELTER, JAMES P. CALVE, and LISA M. GUIJT,
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 5, 12, and 19. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM and enter a NEW GROUND OF REJECTION.

1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies State Farm Mutual Automobile Insurance Company as the real
party in interest. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
Claim 5, the sole independent claim, is reproduced below.
5. A data structure in a tangible computer-readable
medium comprising:
two or more comparable insurance policy segment
records of existing insurance policy information, wherein each
comparable insurance policy segment record represents a
segment of customers that have purchased insurance policies in
a particular window of time;
two or more prospective insurance customer policy
records, wherein each prospective insurance customer policy
record comprises a set of criteria for mapping prospective
insurance customer criteria to a key value that identifies a
specific comparable insurance policy segment record; and
a scoring and premium estimation model, wherein the
scoring and premium estimation model uses the key value that
identifies a specific comparable insurance policy segment
record to determine peer group policy information.

REJECTION
Claims 5, 9, and 12 are rejected as directed to patent-ineligible subject
matter under a judicial exception to 35 U.S.C. § 101.
ANALYSIS
Section 101 of the Patent Act defines patent-eligible-subject matter as:
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 (2012). However, “[l]aws of nature, natural phenomena,
and abstract ideas are not patentable.” Alice Corp. Pty. v. CLS Bank Int’l,
573 U.S. 208, 216 (2014) (citation omitted).
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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
claim into a patent-eligible application, e.g., by providing an “inventive
concept” that ensures the patent amounts to significantly more than a patent
on the ineligible concept. Id. at 217–218.
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)).
See Revised Guidance, 84 Fed. Reg. at 51.
Only if a claim (1) recites a judicial exception and (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.

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Step 1: Are the Claims Within a Statutory Category?
We disagree with the Examiner’s determination that “[a] data
structure in a tangible computer-readable medium” recites statutory subject
matter under 35 U.S.C. § 101. See Final Act. 2. A broadest reasonable
interpretation of “computer-readable medium” encompasses transitory
signals, which are non-statutory subject matter, absent a disclaimer or an
express definition in the Specification excluding such signals and transitory
matter. See Ex parte Mewherter, 107 USPQ2d 1857, 1859–60 (PTAB May
8, 2013) (precedential); In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007).
Reciting a “tangible computer-readable medium” without expressly
disclaiming transitory signals and other transitory media, e.g., by reciting a
“non-transitory computer-readable medium,” does not make claim 5 patent
eligible. See U.S. Patent & Trademark Office, Subject Matter Eligibility of
Computer Readable Media, 1351 Off. Gaz. Pat. Office 212 (Feb. 23, 2010)
(“A claim drawn to such a computer readable medium that covers both
transitory and non-transitory embodiments may be amended to narrow the
claim to cover only statutory embodiments to avoid a rejection under
35 U.S.C. § 101 by adding the limitation ‘non-transitory’ to the claim.”); see
also U.S. Patent & Trademark Office, Evaluating Subject Matter Eligibility
Under 35 USC § 101(August 2012 Update) (pp. 11–14), available at http://
www.uspto.gov/patents/law/exam/101_training_aug2012.pdf (noting that
while “non-transitory” is a viable option for overcoming the presumption the
media encompass signals or carrier waves, merely indicating such media are
“physical” or “tangible” will not overcome such presumption); Nuijten, 500
F.3d at 1353, 1357 (physical properties of signal with tangible causes and
effects are not directed to statutory subject matter).
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The Specification does not define “computer-readable medium” or
“tangible computer-readable medium” to exclude or disclaim transitory
signals. Instead, the Specification discloses that memory 103 “may be any
form or combination of volatile and/or non-volatile tangible computer-
readable medium including semiconductor memory . . ., magnetic memory .
. ., optical memory . . ., as well as other storage technologies.” Spec. 21. As
discussed above, merely describing a computer-readable medium as tangible
does not exclude transitory signals because signals have physical properties
with “tangible causes and effects.” Nuijten, 500 F.3d at 1356. The inclusion
of “other storage technologies” also leaves open a possibility that memory
103 encompasses transitory signals per se given the understanding in the art
that a computer readable medium (even a tangible one) is understood in the
art to include transitory signals. Mewherter, 107 USPQ2d at 1860. Indeed,
the Specification indicates that “[m]emory 103 provides transient and/or
persistent storage of internal data 106 and application software modules
107.” Spec. 21 (emphasis added). Because “a tangible computer-readable
medium,” may be “volatile,” may provide “transient storage,” may include
other storage technologies, and does not exclude transitory signals per se, a
“data structure” in such a transient, volatile medium also is directed to non-
statutory subject matter and encompasses memory in the form of transient
signals. See Mewherter, 107 USPQ2d at 1860; Ex Parte Menendez, Appeal
2015-002835, 2017 WL 475994, *3 (PTAB, Jan. 31, 2017).
Accordingly, we determine claim 5, and its dependent claims 12 and
13, are directed to non-statutory subject matter under 35 U.S.C. § 101. We
designate our determination as a New Ground of Rejection to give Appellant
an opportunity to respond.
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Revised Step 2A, Prong One: Are Judicial Exceptions Recited?
Although the claims are directed to non–statutory subject matter, we
consider whether they fall under a judicial exception. See MPEP §§ 2106
(flowchart), 2106.04 Section II (policy). We select claim 5 as representative
of Appellant’s argument of the claims as a group. Appeal Br. 3–8. The
Examiner finds claim 5 recites concepts of managing a peer group insurance
policy, which are similar to concepts considered to be abstract by the courts.
Final Act. 3. The Examiner finds segment records, prospective insurance
customer policy records, and a scoring and premium estimation model do
not improve technology or computers. Ans. 4.
Appellant argues that the “scoring and premium estimation model” “is
an inventive concept that allows efficient and accurate identification of ‘a
specific comparable insurance policy segment record to determine peer
group policy information’” much like the “static price index” that improved
existing graphical user interfaces in Trading Technologies. Appeal Br. 3–5.
Appellant also argues that claim 5 is patent eligible based on the holding in
Classen Immunotherapies v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011)
because “the claims of the present application are directed to a specific data
structure in a tangible computer-readable medium that comprises groups of
information for comparison.” Id. 5–7.
Under the 2019 Revised Guidance, claim 5 recites certain methods of
organizing human activity, including commercial or legal interactions such
as agreements in the form of contracts, legal obligations, advertising,
marketing, or sales activities or behaviors and business relations. See 2019
Revised Guidance, 84 Fed. Reg. at 52. Claim 5 also recites mental processes
as concepts performed in the human mind, e.g., by evaluation. Id.
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The first two limitations of claim 5 organize data of the data structure
as “two or more comparable insurance policy segment records of existing
insurance policy information, wherein each comparable insurance policy
segment record represents a segment of customers that have purchased
insurance policies in a particular window of time” and “two or more
prospective insurance customer policy records, wherein each prospective
insurance customer policy record comprises a set of criteria for mapping
prospective insurance customer criteria to a key value that identifies a
specific comparable insurance policy segment record.” Appeal Br. 13
(Claims App.). They organize information of insurance policies of current
segmented customers contained in records and information of prospective
insurance policy customers contained in records.
The Specification describes this organization as leveraging a business
entity’s existing peer customer base to reduce the amount of self-reported
information that a prospective customer has to provide to get an insurance
estimate for a policy. Spec. 14. Because the existing practice of providing
an estimate is intrusive and time-consuming for prospective customers who
provide a lot of information, claim 5 uses existing customer data to match a
prospective customer and estimate a likely premium based on the existing
peer customer policy database. Id. at 3, 14; see Mortgage Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (claims
to anonymous loan shopping and credit grading recited an abstract idea);
Clarilogic Inc. v. FormFree Holdings Corp., 681 F. App’x 950, 954 (Fed.
Cir. 2017) (non-precedential) (claims to providing certified financial data
indicating financial risk about an individual recited an abstract idea of
gathering financial information of potential borrowers).
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The “scoring and premium estimation model . . . uses the key value
that identifies a specific comparable insurance policy segment record to
determine peer group policy information” also recites the same abstract idea
and a mental process of using a key value to identify comparable insurance
policy segment records. Appeal Br. 13 (Claims App.). The Specification
provides very little information about this feature. The “mapping criteria”
includes a range of geographic rating group values, a range of vehicle rating
factor values, and a range of age values that are compared to a “key value”
to identify specific comparable segment records of existing (peer) customers
to compare to the prospective customer records. Spec. 32. A “segment” of
customer records is illustrated in Appellant’s Figure 10, reproduced below.

Figure 10 above illustrates an exemplary segmentation model with
eight segments derived from a data set of auto insurance customers. Spec.
32. Axis 1002 represents all existing insured customers or entries in a
database of households by size. Id.
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In sum, claim 5 recites the abstract idea of using a “set of criteria” to
map prospective insurance customer criteria to a “key value” that identifies a
specific comparable insurance policy segment record so an insurance policy
premium estimate can be provided to the prospective customer. It organizes
information of prospective customers to identify comparable insurance
records of current customers to use to estimate a policy premium based on
premiums of the existing customers. Id. at 27–30; see Bridge and Post, Inc.
v. Verizon Commc’ns, Inc., 778 F. App’x 882, 887 (Fed. Cir. 2019) (non-
precedential) (“Targeted marketing is a form of ‘tailoring information based
on [provided] data,’ which we have previously held is an abstract idea. . . .
The concept is a ‘fundamental practice’ that dates back to newspaper
advertisements.’”) (citation omitted). Thus, we determine claim 5 recites a
judicial exception.
Alice Step 1, Revised Step 2A, Prong Two: Is There an Integration?
We next consider whether claim 5 recites any additional elements that
integrate the abstract ideas into a practical application. Revised Guidance,
84 Fed. Reg. at 54 (Revised Step 2A, Prong Two). Appellant’s reliance on
the holding in Classen is not persuasive. Indeed, Classen demonstrates that
claim 5 does not integrate the abstract ideas recited therein into a practical
application. Appellant is correct that some claims were held to be patent
eligible because those claims were directed to a specific, tangible application
of lowering the risk of chronic immune-mediated disorder that included the
physical step of immunization on a determined schedule. Classen, 659 F.3d
at 1066. Unlike the claims found to be patent eligible in Classen, claim 5
lacks a tangible, physical step comparable to the physical immunizing step
as the Appeal Brief points out. See Appeal Br. 6–7.
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More pertinent to claim 5 in this appeal is Classen’s holding that one
of the patents in suit (US 5,723,283) did not traverse the § 101 filter because
it recited “methods that simply collect and compare data, without applying
the data in a step of the overall method.” Classen, 659 F.3d at 1067 (“The
distinction between a concrete, physical step of a process claim, as compared
with data gathering or insignificant extra-solution activity, warrants specific
consideration in the context of evolving technologies.”).
Claim 5 does not recite additional elements that improve computer
functions or any technology. Nor does it implement the abstract ideas in a
particular machine or manufacture integral to the claim or that transforms an
article to a different state or thing beyond merely linking the recited abstract
ideas to a particular technological environment. 2019 Revised Guidance, 84
Fed. Reg. at 55. Claim 5 analyzes data without claiming any tangible result.
Data Engine, which is cited by Appellant (Reply Br. 2–5), illustrates
the distinction.
The Tab Patents solved this known technological problem in
computers in a particular way—by providing a highly intuitive,
user-friendly interface with familiar notebook tabs for
navigating the three-dimensional worksheet environment. . . .
The improvement allowed computers, for the first time, to
provide rapid access to and processing of information in
different spreadsheets, as well as easy navigation in three-
dimensional spreadsheets.

Data Engine Techs. LLC v. Google LLC, 906 F.3d 999, 1008 (Fed. Cir.
2018). Claim 5 recites no comparable improvement. The “scoring and
premium estimation model” uses a “key value” to identify comparable
segmented peer policies in an undefined manner without any technological
improvement as Appellant’s Figure 11 reproduced below shows. Spec. 32.
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Appellant’s Figure 11 illustrates a data structure 1100 comprising
prospective customer profile record 1101 that includes criteria for mapping
information gathered from a prospective customer to key value 1105, which
identifies a specific comparable segment record 1102. Spec. 32.
The portions of Appellant’s Specification cited in the Summary of
Claimed Subject Matter provide no other details about the key value and the
scoring and premium estimation model. Appeal Br. 3 (citing Spec. 28:25–
29:8, 31:7–9, 31:15–19, 32:26–33:25). Even if we were permitted to read
features from the Specification into the claims, we find no such features or
technical improvements in the Specification for the model or key value. The
features are recited at a high level of generality and perform generic
functions to organize human activity as discussed above. See Audatex N.
Am., Inc. v. Mitchell Int’l, Inc., 703 F. App’x 986, 989 (Fed. Cir. 2017) (non-
precedential) (holding that the claims recite an abstract idea of providing a
vehicle valuation through the collection and use of vehicle information and
merely use a computer and generic components as tools to collect vehicle
information and generate valuation reports for a damaged vehicle with the
use of well-known technology).
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Merely customizing information for a user is not an integration. See
Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363,
1369–70 (Fed. Cir. 2015) (tailoring content for a user based on information
known about the user is an abstract idea); Affinity Labs of Texas, LLC v.
Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016) (providing targeted
advertising based on user demographic information is an abstract idea).
In Core Wireless, the claims were directed to an improved interface
for a mobile device that displayed an application summary of applications in
an unlaunched state so users could quickly navigate to desired applications
to find the data of interest in three steps from startup as compared to known
devices that required a user to scroll around and switch views many times to
find the right data/functionality. Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356, 1362–63 (Fed. Cir. 2018). The improved
user interface for electronic devices with small screens improved efficiency
by providing “a limited list of common functions and commonly accessed
stored data” that is accessible directly from the main menu rather than
requiring users to “drill down through many layers to get to the desired data
or functionality.” Id. at 1363.
Here, the limitation of mapping prospective insurance customer
criteria to a key value is recited at such a high level of generality as a generic
data organizing and processing function not tied to any particular machine or
technical improvement that it fails to integrate the abstract ideas of claim 5
into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55.
Accordingly, we determine that claim 5 does not recite any additional
elements that integrate the abstract ideas recited therein into a practical
application that is patent-eligible.
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Alice Step 2, Revised Step 2B –– Inventive Concept
We next consider whether claim 5 recites any 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) (internal quotations and
citation omitted); see also 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 a “well-understood,
routine, conventional” activity in the field).
We agree with the Examiner that claim 5 recites a business/financial
solution to how to determine peer group policy information and provide
customized pricing more efficiently to inform prospective customers about a
product. Ans. 5. However, using computers to automate manual activities
or perform activities more quickly is not an inventive step. 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.”); Bancorp Servs., L.L.C. v.
Sun Life Assur. Co. of Can. (US.), 687 F.3d 1266, 1278 (Fed. Cir. 2012)
(“[T]he fact that the required calculations could be performed more
efficiently via a computer does not materially alter the patent eligibility of
the claimed subject matter.”); In re Salwan, 681 F. App’x 938, 941 (Fed.
Cir. 2017) (non-precedential) (holding claims to organizing patient health
information recited little more than automation of a method of organizing
human activity with respect to medical information).
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Considered individually, the limitations of claim 5 recite the abstract
ideas discussed above without integrating them into a practical application.
Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016) (“a claim for a new abstract idea is still an abstract idea.”); Versata
Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)
(claims that improved an abstract idea, but not a computer’s performance,
were held unpatentable). As an ordered combination, claim 5 recites a data
structure containing records (data or information as such) that is organized
and analyzed at a high level of generality and using “a scoring and premium
estimation model . . . [that] uses the “key value” that identifies a specific
comparable insurance policy segment record to determine peer group policy
information.” If some technical improvement in databases, data mining, or
data manipulation is employed in this process, those details are not recited in
claim 5. Instead, claim 5 uses a “key value” to identify a specific segment of
insurance policies of existing customers in an unspecified way “to determine
peer group policy information.” Claiming data manipulation as such at such
a high level of generality without any technical improvement to computers
or other technology is not an inventive step. See SAP Am., Inc. v. InvestPic,
LLC, 898 F.3d 1611, 1170 (Fed. Cir. 2018) (“this court has ruled may times
that ‘such invocations of computers and networks that are not even arguably
inventive are insufficient to pass the test of an inventive concept in the
application of an abstract idea’ . . . . Indeed, we think it fair to say that an
invocation of already-available computers that are not themselves plausibly
asserted to be an advance, for use in carrying out improved mathematical
calculations, amounts to a recitation of what is ‘well-understood, routine,
[and] conventional.’”) (citations omitted).
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Accordingly, we sustain the rejection of claim 5 and claims 12 and 13,
which are not argued separately. See Appeal Br. 3–8; see also 37 C.F.R.
§ 41.37(c)(1)(iv).
CONCLUSION
Claims
Rejected
35
U.S.C. §  
Reference/Basis Affirmed Reversed New
Ground
5,12, 13 101 Non-statutory
subject matter
5, 12, 13
5, 12, 13 101 Judicial exception 5, 12, 13
Overall
Outcome
5, 12, 13 5, 12, 13
This decision contains a new ground of rejection entered pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides that “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” Section 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
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request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the MANUAL OF PATENT EXAMINING PROCEDURE § 1214.01 (9th
Ed., Rev. 08.2017, Jan. 2018).
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; 37 C.F.R. § 41.50(b)