Florian Pestoni et al.

Patent Trials and Appeals Board

Sep 8, 2020

12119742 - (D) (P.T.A.B. Sep. 8, 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.
12/119,742 05/13/2008 Florian Pestoni ARC920000106US3 3615
67232 7590 09/08/2020
CANTOR COLBURN LLP - IBM ARC DIVISION
20 Church Street
22nd Floor
Hartford, CT 06103
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
09/08/2020 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):
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte FLORIAN PESTONI
and DALIT NAOR

Appeal 2019-006892
Application 12/119,742
Technology Center 3600

Before HUBERT C. LORIN, ANTON W. FETTING, and
AMEE A. SHAH, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s Final decision to reject claims 1, 2, 4, 5, and 8–10.1 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(a). Appellant identifies International Business Machines Corporation
as the real party in interest. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to the field of digital
content distribution. More specifically, the present invention is related to
protecting and upgrading digital content in a digital content distribution
system through the use of content insurance.” Spec., 2:7–9.
Claim 1, reproduced below with emphasis added, is illustrative of the
claimed subject matter:
1. A method of providing content insurance for distributed
digital content to a consumer of said digital content where said
consumer has purchased said content insurance via a merchant
among a plurality of merchants and a clearing house maintains
information uniquely identifying said consumer and digital
content for which said consumer has purchased said content
insurance via said merchant, said method implemented by a
processor by executing instructions stored in a storage, said
method implemented by said processor comprising:
said processor executing instructions to receive a first
electronic receipt generated by said merchant, said first
electronic receipt identifying digital content for which said
consumer has requested retrieval;
said processor executing instructions to compare said
digital content identified by said first electronic receipt to said
information uniquely identifying said consumer and digital
content for which said consumer has purchased said content
insurance, and
wherein when said comparison indicates said digital
content identified by said first electronic receipt is the same as
digital content for which said consumer has purchased said
content insurance,
said processor executing instructions to determine the
digital content is associated with a digital format that is different
than what was provided during original purchase of the digital
content and retrieving said digital content identified by said
electronic receipt in the digital format, and
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wherein the clearing house is a third-party broker
decoupled from the plurality of merchants wherein, for the
consumer, the at least one third party broker clearing house
aggregating, in one policy, insurance related to diverse content
purchased at the plurality of merchants.
Appeal Br. 16–17, Claims App.
REFERENCES
The prior art relied upon by the Examiner is:

Name Reference Date
Ginter US 5,982,891 Nov. 9, 1999
McCabe US 2002/0095317 A1 July 18, 2002
Stefik US 6,708,157 B2 Mar. 16, 2004

REJECTIONS
Claims 1, 2, 4, 5, and 8–10 are rejected under 35 U.S.C. § 101 as
being directed to judicially-excepted subject matter.
Claims 1, 2, 4, 5, and 8–10 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Stefik, McCabe, and Ginter.
OPINION
The rejection of claims 1, 2, 4, 5, and 8–10 under 35 U.S.C. § 101 as being
directed to judicially-excepted subject matter.
The Appellant argues these claims as a group. See Appeal Br. 6–11.
We select claim 1 as the representative claim for this group, and the
remaining claims 2, 4, 5, and 8–10 stand or fall with claim 1. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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Preliminary comment
Previous Office guidance on patent subject matter eligibility has been
superseded by the 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance.”
See 2019 Revised 101 Guidance, 84 Fed. Reg. 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly, we will not
address arguments on the sufficiency of the Examiner’s position relative
prior guidance but rather our analysis that follows will comport with the
2019 Revised 101 Guidance. We will pay particular attention to the
Examiner’s position taken in the Answer and Appellant’s arguments made in
the Reply Brief which are expressed in the context of the 2019 Revised 101
Guidance.

Introduction
35 U.S.C. § 101 provides that “[w]hoever 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.”
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance, which
requires determining whether “the claim is to a statutory category.” 84 Fed.
Reg. at 53. See also id. at 53–54 (“[C]onsider[] whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. 101.”).
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However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208,
216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one — the “directed to” inquiry:
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Examiner determined that claim 1 is “directed toward digital
content insurance.” Final Act. 4. Specifically,
claim[ ] 1 comprise[s] inter alia the functions or steps of [sic]
“receive a first electronic receipt generated by said merchant,
said first electronic receipt identifying digital content for which
said consumer has requested retrieval; compare said digital
content identified by said first electronic receipt to said
information uniquely identifying said consumer and digital
content for which said consumer has purchased said content
insurance, and wherein when said comparison indicates said
digital content identified by said first electronic receipt is the
same as digital content for which said consumer has purchased
said content insurance, determine the digital content is associated
with a digital format that is different than what was provided
during original purchase of the digital content and retrieving said
digital content identified by said electronic receipt in the digital
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format; wherein the clearing house is a third-party broker
decoupled from the plurality of merchants wherein, for the
consumer, the at least one third party broker clearing house
aggregating, in one policy, insurance related to diverse content
purchased at the plurality of merchants” describe idea(s) which
are analogous to the basic concepts of data recognition and
storage (Content Extraction and Transmission LLC v Wells
Fargo Bank), comparing new and stored information and using
rules to identify options (Electric Power Group LLC), organizing
human activity (i.e., human analog that can be performed by
hand or by merely thinking) (Alice Corp. Pty. Ltd v CLS Bank
lnter'I), processing information through a clearinghouse
(Dealertrack Inc. v Huber), and insurance which a fundamental
economic practice (Alice Corp. Pty. Ltd v CLS Bank lnter'l) all
of which have been found by the courts to be an abstract idea. As
an ordered combination, the claims are directed toward digital
content insurance which is analogous to organizing human
activity (activities which can be performed mentally by a human
using a pencil and paper) and to the fundamental economic
practices (insurance) found to be abstract ideas by the courts
(Alice Corp. Pty. Ltd v CLS Bank lnter'l, Bilski v Kappos,
buySAFE, Inc. v Google, Inc, Ultramercial, LLC v Hulu). Thus
the concept(s) described in the claimed invention is not
meaningfully different than those concepts found by the courts
to be abstract ideas.
Id. at 3–5.
We have carefully reviewed the briefs but do not see that Appellant
has expressly disputed the Examiner’s characterization of what claim 1 is
directed to (i.e., “digital content insurance”). Final Act. 4.
Instead the briefs direct our attention to various passages in the
Specification in an attempt to show that the claims “are clearly directed
towards a practical application.” Appeal Br. 8. For example, “page 15, lines
9-12 of the Application-As-Filed states the following which identifies a
shortcoming with Applicant[’]s own embodiment where the problem relates
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to an ‘unwieldy claim process.’” Id. at 8. According to Appellant, as
reflected by these passages, “Applicants foresaw . . . an issue in the digital
content insurance realm and put in place a significant improvement in the
technology to combat this potential issue with regards to different standards
by allowing for the retrieval of the same digital content in more than one
digital format.” Id. at 11; see also Reply Br. 5 (“[A] significant
improvement within electronic insurance for digital content with a
specific practical application within the field of electronic insurance for
digital content.”). Thus, Appellant believes the claimed subject matter is
directed to a technical improvement rather than an abstract idea.
Accordingly, there is a dispute over whether claim 1 is directed to an
abstract idea. Specifically, is claim 1 directed to “digital content insurance”
(Final Act. 4) or a significant improvement in technology (Appeal Br. 11;
and Reply Br. 5)?
Claim Construction3

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under [section] 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
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We consider the claim as a whole giving it the broadest reasonable
construction as one of ordinary skill in the art would have interpreted it in
light of the Specification at the time of filing.4,5,6
Claim 1 sets forth a method “of providing content insurance for
distributed digital content to a consumer.” The method involves “a first
electronic receipt generated by [a] merchant [from whom a consumer has
purchased said content insurance], said first electronic receipt identifying
digital content for which said consumer has requested retrieval” [A]; “digital
content for which said consumer has purchased said content insurance” [B];
and “a clearing house [that] maintains information uniquely identifying said
consumer and digital content for which said consumer has purchased said
content insurance via said merchant” [C]. The method also calls for a
clearing house [D].
The method claimed is “implemented” on a generic “processor”
which “execut[es] instructions stored in a storage” to perform four steps.
1. “receiv[ing]” A;

4 “In determining the eligibility of respondents’ claimed process for patent
protection under [section] 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 “First, it is always important to look at the actual language of the
claims. . . . Second, in considering the roles played by individual limitations,
it is important to read the claims ‘in light of the [S]pecification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
6 See 2019 Revised 101 Guidance, 84 Fed. Reg. 52, footnote 14 (“If a claim,
under its broadest reasonable interpretation.”).
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2. “compar[ing]” digital content identified in A and B, where
the comparison indicates that digital content identified in A
is the same as B;
3. “determin[ing]” that the digital content identified in A “is
associated with a digital format that is different than” B and
4. “retriev[ing]” the digital content identified in A.
Also, according to claim 1, clearing house [D] (a) “maintains
information uniquely identifying said consumer and digital content for
which said consumer has purchased said content insurance via said
merchant” and (b) “is a third-party broker decoupled from the plurality of
merchants wherein, for the consumer, the at least one third party broker
clearing house aggregating, in one policy, insurance related to diverse
content purchased at the plurality of merchants.” [D], the third party broker
clearing house, is generic and does not appear to be used for any other
purpose than to maintain certain information. In that regard, cf. LendingTree,
LLC v. Zillow, Inc., 656 Fed.Appx. 991, 996 (Fed. Cir. 2016) (“[U]se [of] a
broker (i.e., a computer program on a loan-processing computer, see ’594
patent at 3:26–30) to organize the process is of no consequence, for ‘[t]he
use of a third-party intermediary (or ‘clearing house’) is also a building
block of the modern economy.’ See Alice, 134 S.Ct. at 2357.”).
Putting it together, the claimed method is reasonably broadly
construed as a scheme to provide a consumer of digital content — who
purchased digital content insurance for said content — digital content
associated with a digital format that is different than what was provided
during the original purchase of the digital content.
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According to the Specification, “[t]he present invention is beneficial
to all parties involved in the distribution of content for commercial
purposes.” Spec. 9:12–13.
As some consumers may hesitate to purchase material for fear
that their investment will not last as long as they would expect in
order to pay the price to acquire it, the present invention
encourages them to purchase the material as it provides
protection against this instance. Moreover, due to the fast pace
of technological change, consumers may be concerned that the
specific format that is offered today will be superseded by a new
one in a short lapse of time, and that old content will either be
incompatible with new players or will lack the quality of newer
formats. The present invention reduces this risk for consumers.
Spec. 9:17–23. “[B]y purchasing insurance on content, at a later time
consumers are able to return to the content distribution channels and obtain
the previously purchased content in a new format.” Id. at 7:6–8.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the objective of the
invention for reducing the risk for consumers in purchasing digital content
whose initial format may change over time, we reasonably broadly construe
claim 1 as being directed to a scheme to provide a consumer of digital
content — who purchased digital content insurance for said content —
digital content associated with a digital format that is different than what
was provided during the original purchase of the digital content.
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The Abstract Idea7
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a scheme to provide a consumer of digital content — who
purchased digital content insurance for said content — digital content
associated with a digital format that is different than what was provided
during the original purchase of the digital content. Providing a consumer
with digital content covered by insurance is a commercial interaction. It falls
within the enumerated “[c]ertain methods of organizing human activity”
grouping of abstract ideas set forth in the 2019 Revised 101 Guidance.9 See
2019 Revised 101 Guidance, 84 Fed. Reg. 52.

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.
8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
claim under examination (individually or in combination) that the examiner
believes recites an abstract idea.” 84 Fed. Reg. at 54.
9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates
subject matter grouping “(b):” “(b) 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
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We have carefully reviewed the briefs but do not see that Appellant
has expressly disputed that what the Examiner has characterized claim 1 as
being directed to (“digital content insurance”) is an abstract idea for being a
method of organizing human activity and a fundamental economic practice.
We do see in the briefs that Appellant finds
the [section] 101 analysis by the Examiner is improper as it was
not done in accordance with the revised subject matter eligibility
guidance put forth by the USPTO in 2019. Specifically, the
revised guidelines note that Examiners can only reject under
[section] 101 if the claim limitation(s) are directed towards the
following three areas: (a) Mathematical concepts - mathematical
relationships, mathematical formulas or equations, mathematical
calculations; (b) 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); and ( c)
Mental processes - concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Applicants note that their pending claims do not fall into any of
the three areas outlined in the new guidelines. Additionally, the
new guidelines note that “Claims that do not recite matter that
falls within these enumerated groupings of abstract ideas should
not be treated as reciting abstract ideas, except as follows: In the
rare circumstance in which a USPTO employee believes a claim
limitation that does not fall within the enumerated groupings of
abstract ideas should nonetheless be treated as reciting an
abstract idea, the procedure described in [s]ection 111.C for
analyzing the claim should be followed.

personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions).” Id. at 52.
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Reply Br. 2–3; see also Appeal Br. 6–7.
The Final Rejection was mailed before the 2019 Revised 101
Guidance issued. Thus, the Examiner could not have known to follow the
requirements set forth by the subsequent Guidance.
Be that as it may, the Examiner nevertheless followed the subsequent
Guidance by clearly stating that what Examiner characterized claim 1 as
being directed to (“digital content insurance”) is an abstract idea for being a
method of organizing human activity and a fundamental economic practice.
See Final Act. 4.
Accordingly, the Examiner did “determine whether a claim recites an
abstract idea in Prong One, [by] determin[ing] whether the identified
limitation(s) falls within the subject matter groupings of abstract ideas
enumerated in [s]ection 1 of the [2019 Revised 101 Guidance];” that is, the
Examiner determined they fell within
(b) 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 101 Guidance 52, 54.
Appellant argues that “their pending claims do not fall into ANY of
the three areas outlined in the new guidelines.” Appeal Br. 6. But Appellant
does not further elaborate. Appellant says nothing more on the matter. Given
that “digital content insurance” is a type of insurance and the 2019 Revised
101 Guidance specifically mentions “insurance” as exemplifying “(b)
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“[c]ertain methods of organizing human activity—fundamental economic
principles or practices”, we are unpersuaded by Appellant’s bare argument
that the Examiner did not follow the 2019 Revised 101 Guidance See 2019
Revised 101 Guidance 52.
Technical Improvement10 (Appellant’s Argument)
Our characterization of what claim 1 is directed to is similar to that of
the Examiner’s (“digital content insurance”). Final Act. 4. The Examiner’s
characterization is described at a somewhat higher level of abstraction.
Nevertheless, “[a]n abstract idea can generally be described at different
levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240,
1240–41 (Fed. Cir. 2016) (“The Board’s slight revision of its abstract idea
analysis does not impact the patentability analysis.”).
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.

10 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg.
at 54. One consideration, implicated here, that is “indicative that an
additional element (or combination of elements) may have integrated the
exception into a practical application” is if “[a]n additional element reflects
an improvement in the functioning of a computer, or an improvement to
other technology or technical field.” Id. at 55.

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The Appeal Brief reproduces 15:4–18 and 5:8–23 of the Specification
and Appellant relies on said cited disclosures as evidence that the claims
“are clearly directed towards a practical application.” See Appeal Br. 8–10.
However, we do not find that the claim, read in light of the
Specification, adequately reflects an improved technical solution to the
“problem within the field of electronic insurance for digital content where
potential new formats may be adopted as an industry standard in lieu of the
old format under which the content insurance was purchased.” Reply Br. 5.
The method as claimed describes, in very general terms, “receiv[ing],”
“compar[ing],” “determin[ing],” and “retriev[ing]” steps for providing a
consumer digital content associated with a digital format that is different
than what was provided during the original purchase of the digital content.
The steps are not focused on improving any technology. Cf. Trading Techs.
Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019) (“The claims
are focused on providing information to traders in a way that helps them
process information more quickly, ’556 patent at 2:26–39, not on improving
computers or technology.”).
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 1 is reasonably broadly construed as covering a
scheme to provide a consumer of digital content — who purchased digital
content insurance for said content — digital content associated with a digital
format that is different than what was provided during the original purchase
of the digital content. We see no specific asserted improvement in computer
capabilities recited in the claim. Rather than being directed to any specific
asserted improvement in computer capabilities, the claim supports the
opposite view — that the claimed subject matter is directed to a scheme for a
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scheme to provide a consumer of digital content — who purchased digital
content insurance for said content — digital content associated with a digital
format that is different than what was provided during the original purchase
of the digital content employing generic devices. See e.g., Spec. 25:10–11.
The claim provides no additional structural details that would
distinguish any device required to be employed to practice the method as
claimed, i.e., the recited “processor” and “storage,” from its generic
counterparts.11
With respect to the “receiv[ing],” “compar[ing],” “determin[ing],” and
“retriev[ing]” steps, the Specification attributes no special meaning to any of
these operations, individually or in the combination, as claimed. In our view,
albeit the claim does not specifically require a processor, these are common
computer processing functions that one of ordinary skill in the art at the time
of the invention would have known generic computers were capable of
performing and would have associated with generic processors. Cf. OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities
or routine data-gathering steps. Alice, 134 S.Ct. at 2359 (quoting
Mayo, 132 S.Ct. at 1294). . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”
storing test results in a “machine-readable medium,” and “using
a computerized system . . . to automatically determine” an

11 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F.Appx. 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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estimated outcome and setting a price. Just as in Alice, “all of
these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.],
765 F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer
receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
We find Appellant’s suggestion that the claim presents a technical-
improvement solution unpersuasive as to error in the Examiner’s or our
characterization of what the claim is directed to because the method as
claimed fails to adequately support it. We are unable to point to any claim
language suggestive of an improvement in technology. An attorney
argument that such an improvement exists is alone insufficient. See
generally In re Glass, 474 F.2d 1015, 1019 (CCPA 1973);see also In re
Pearson, 494 F.2d 1399, 1405 (CCPA 1974); In re De Blauwe, 736 F.2d
699, 705 (Fed. Cir. 1984); and In re Schulze, 346 F.2d 600, 602 (CCPA
1965).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
As to the specific disclosures relied–upon by Appellant, a principal
difficulty is that they describe problems and corresponding solutions with
which the claimed method is not commensurate in scope. See i.e., Spec.
15:4–18 and 5:8–23. For example, 15:4–18 of the Specification discusses the
limitations “as consumers shop at different merchants/insurers [whereby]
they would need to create new policies with each merchant as each merchant
independently acts as an insurer.” Id. at 15:4–6. Claim 1 is not limited to
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consumers shopping at different merchants/insurers, notwithstanding the
claim provides for a clearinghouse “aggregating, in one policy, insurance
related to diverse content purchased at the plurality of merchants.”
Another difficulty is that the relied–upon disclosures point to the very
recited steps (“receiv[ing],” “compar[ing],” “determin[ing],” and
“retriev[ing]”) themselves, the very subject matter that we, and the
Examiner, have characterized as being an abstract idea. For example, 5:8–23
of the Specification explains, inter alia, that “[i]f an individual copy of a
classic is lost, becomes damaged, or there is not a player compatible with a
particular format available, a new copy would be a perfect substitute for the
old one.” Spec. 5:20–22. But it is the recited steps (“receiv[ing],”
“compar[ing],” “determin[ing],” and “retriev[ing]”) which provide said
substitute. In effect, Appellant is pointing to the recited steps as necessarily
yielding the substitute copy.
Rather than showing that the recited steps describe a technical
improvement, Appellant points to result-based functional language that is
without any means for achieving any purported technological improvement.
The claimed invention provides a substitute copy via a scheme
(“receiv[ing],” “compar[ing],” “determin[ing],” and “retriev[ing]”) that is
unmoored in technical details. By so broadly defining the inventive method,
that is, by setting out what it is aspiring to accomplish without any means for
achieving it, let alone any purported technological improvement, the claim is
in effect presenting the invention in purely result-based functional language,
strengthening our determination under Alice step one that the claim is
directed to an abstract idea. Cf. Two-Way Media Ltd. v. Comcast Cable
Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“Claim 1 recites a
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method for routing information using result-based functional language. The
claim requires the functional results of ‘converting,’ ‘routing,’ ‘controlling,’
‘monitoring,’ and ‘accumulating records,’ but does not sufficiently describe
how to achieve these results in a non-abstract way.”); see also Uniloc USA,
Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303, 1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly failed
to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method of
transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims solved
data transmission problems, including load management and
bottlenecking, but the claimed method was not directed to those
improvements. Id. at 1336–37. We therefore held the claims
ineligible because they merely recited a series of abstract steps
(“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
language” without the means for achieving any purported
technological improvement.

Uniloc, 957 F.3d at 1308.
We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

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Alice step two — Does the Claim Provide an Inventive Concept?12
Step two is “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, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that
[t]he claim(s) does/do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional elements when considered both
individually and as an ordered combination do not amount to
significantly more that the abstract idea(s). The claims require
the additional limitations of a computer with a processor and a
tangible, non-transitory memory. These generic computer
components are claimed to perform their basic functions which
amount to no more than implementing the abstract idea with a
computerized programmed system. The use of a generic
computer to perform the extra solution activities does not impose
any meaningful limitation on the computer implementation of
the abstract idea(s). Thus, when taken alone, the additional
elements do not amount to significantly more than the above-
identified judicial exception (the abstract idea). Looking at the
limitations as an ordered combination adds nothing that is not
already present when looking at the elements taken individually.
There is no indication that the combination of elements improve
the functioning of a computer or improves any other technology.

12 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. 56 “if a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then evaluate the additional
elements individually and in combination under Step 2B to determine
whether they provide an inventive concept (i.e., whether the additional
elements amount to significantly more than the exception itself).”
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Their collective functions merely provide conventional computer
implementation.
Final Act. 5–6. We agree.
We addressed the matter of whether the claim presented any purported
specific asserted technical improvements in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”).
A similar argument can also challenge a determination under step two
of the Alice framework. See buySAFE, 765 F.3d at 1354–55. “[R]ecent
Federal Circuit jurisprudence has indicated that eligible subject matter can
often be identified either at the first or the second step of the Alice/Mayo
[framework].” See 2019 Revised 101 Guidance, 84 Fed. Reg. 53, n.17.
However, Appellant does not appear to have put forward such an argument.
We are unpersuaded that claim 1 presents an element or combination
of elements indicative of a specific asserted technical improvement, thereby
rendering the claimed subject matter sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon a scheme to
provide a consumer of digital content — who purchased digital content
insurance for said content — digital content associated with a digital format
that is different than what was provided during the original purchase of the
digital content.
We have reviewed the claim in light of the Specification and, as
explained above, we find the claimed subject matter insufficiently expresses
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a technical improvement as a result of performing the functions as broadly
as they are recited.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed “processor” and “storage” as claimed are
conventional. See e.g., Spec., 25:10 (“conventional IBM PC”). In doing so,
we have followed “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO Memorandum, Robert
W. Bahr, Deputy Commissioner For Patent Examination Policy, April 19,
2018 (the “Berkheimer Memo”)). Since the Specification indisputably
shows the recited “processor” and “storage” individually and in the context
of the process as claimed were conventional at the time of filing, there is
sufficient factual support for the well-understood, routine, or conventional
nature of the claimed “processor” and “storage” individually or in the
combination as claimed.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into a patent–eligible application.
We have considered all of Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 2, 4, 5, and 8–10
which stand or fall with claim 1, are directed to an abstract idea and do not
present an “inventive concept,” we sustain the Examiner’s conclusion that
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they are directed to patent-ineligible subject matter for being judicially-
excepted from 35 U.S.C. § 101. Cf. LendingTree, LLC., 656 F. Appx. at 997
(“We have considered all of LendingTree’s remaining arguments and have
found them unpersuasive. Accordingly, because the asserted claims of the
patents in suit are directed to an abstract idea and do not present an
‘inventive concept,’ we hold that they are directed to ineligible subject
matter under 35 U.S.C. § 101.”); see also OIP Techs., 788 F.3d at 1364;
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016).

The rejection of claims 1, 2, 4, 5, and 8–10 under 35 U.S.C. § 103(a) as
being unpatentable over Stefik, McCabe, and Ginter.
Both independent claims (claims 1 and 8) call for a “clearing house
aggregating, in one policy, insurance related to diverse content purchased at
the plurality of merchants.”
The Examiner finds that said clearing house is disclosed in Stefik at
“[column 8, lines -15] [column 16, line 66 - column 17, line 39).” Final
Act. 7.
We have reviewed said Stefik disclosures. As the Examiner
acknowledges, Stefik discloses a “billing clearing house.” Ans. 12. But as
Appellant correctly observes, “by Stefik’s own admission, such a ‘billing
clearinghouse’ merely ‘manages the financial transactions as they occur’
such that bills may be generated and accounts reconciled.” Appeal Br. 12.
“[T]there is NO disclosure in Stefik for their ‘billing clearinghouse’ to
‘aggregate’ under ‘one policy’ insurance related to ‘diverse content’
purchased at the plurality of different merchants.” Id. at 12–13.
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The rejection is not sustained on the ground that a prima facie case of
obviousness has not been made out in the first instance.
CONCLUSION
In summary:

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–10, 21–
30
101 Eligibility 1, 2, 4, 5,
8–10

1, 3, 4, 9,
10, 21, 23,
24, 29, 30
103(a) Stefik, McCabe,
Ginter
1, 2, 4, 5,
8–10
Overall
Outcome
1, 2, 4, 5,
8–10

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