Jeffrey P. Brask et al.

Patent Trials and Appeals Board

Aug 28, 2019

11361346 - (D) (P.T.A.B. Aug. 28, 2019)

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.
11/361,346 02/24/2006 Jeffrey P. Brask 006591.00017 3982
71823 7590 08/28/2019
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 006591
71 SOUTH WACKER DR.
SUITE 3600
CHICAGO, IL 60606
EXAMINER
REYES, REGINALD R
ART UNIT PAPER NUMBER
3626
NOTIFICATION DATE DELIVERY MODE
08/28/2019 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):
PTO-71823@bannerwitcoff.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JEFFREY P. BRASK, MICHAEL H. CONDON,
JOHN W. EDELEN, DONALD B. JONES, and
ROBERT G. ROBERTSON JR.
____________

Appeal 2018-006366
Application 11/361,346
Technology Center 3600
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.

JEFFERY, Administrative Patent Judge.

DECISION ON APPEAL
Under 35 U.S.C. § 134(a), Appellants1 appeal from the Examiner’s
decision to reject claims 3, 5–7, 10, 12–27, 39–46, and 48, which constitute
all the claims pending in this application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify the real party in interest as Allstate Insurance
Company. App. Br. 1.
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STATEMENT OF THE CASE
Appellants’ invention manages and resolves an insurance claim by
identifying a suitable inspection resource class (IRC) for a vehicle involved
in a loss. See generally Abstract; Spec. ¶¶ 2, 5–6. To this end, the
invention’s historical data analysis module uses statistical analysis to
identify predictors that indicate the degree to which a particular IRC is likely
to optimize a business driver for an insurance claim. Spec. ¶¶ 18–20; Fig. 1.
The historical data analysis module outputs information to a decision-
support rules module that creates new rules or enhances existing rules.
Spec. ¶ 25. An IRC identification module uses the rules to identify a
suitable IRC. Id.
Claim 48 is illustrative:
48. A computer-implemented method comprising:
storing, at a data store of a computing device, insurance
claim data characterizing a plurality of insurance claims that
have previously been filed, business driver data characterizing a
plurality of business drivers associated with processing
insurance claims, predictor data generated from a statistical
analysis of the insurance claims data and characterizing a
plurality of predictors, each predictor indicating a degree to
which one or more inspection resource classes of a plurality of
inspection resource classes optimize one or more business
drivers of the plurality of business drivers when processing
insurance claims, inspection resource data characterizing a
plurality of inspection resources, each inspection resource being
classified as one of the plurality of inspection resource classes
comprising a repair shop class, a drive-in center class, and an
field adjuster class, and a plurality of decision support rules,
each decision support rule indicating one of the plurality of
inspection resource classes suitable to perform vehicle
inspections when one or more predetermined indicators are
determined to be included in insurance claim information
received by the computing device;
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receiving, by the computing device, new insurance claim
information regarding a loss associated with a vehicle, the new
insurance claim information comprising loss information
characterizing the loss, vehicle information characterizing the
vehicle, and liability information characterizing potential
liability of a party associated with the loss;
receiving, by the computing device, an indication of a
business driver to utilize when selecting an inspection resource
class to inspect the vehicle;
selecting, automatically by the computing device, one or
more predictors of the plurality of predictors that optimize the
business driver indicated;
selecting, automatically by the computing device and
based at least in part on the new insurance claim information
received, a decision support rule from the plurality of decision
support rules;
selecting, automatically and without human intervention
by the computing device and based at least in part on the
business driver indicated, the one or more predictors selected,
and the decision support rule selected, an inspection resource
class from the plurality of inspection resource classes to
perform an inspection of the vehicle associated with the loss;
and
scheduling, by the computing device, the inspection of
the vehicle by an inspection resource of the plurality of
inspection resources, the inspection resource being classified as
the inspection resource class selected, wherein the scheduling
comprising transmitting an alert notification to an owner of the
vehicle of the inspection resource class selected;
wherein the plurality of decision support rules comprises
a first decision support rule that indicates the repair shop class
is suitable to inspect the vehicle when the new insurance claim
information received comprises less than a threshold number of
fraud indicators that indicate a need for investigation of
potential fraud associated with the loss, a second decision
support rule that indicates the drive-in center class is suitable to
inspect the vehicle when the new insurance claim information
received (i) comprises less than the threshold number of fraud
indicators and (ii) comprises no indication of potential liability
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against another party, and a third decision support rule that
indicates the field adjuster class is suitable to inspect the
vehicle when the new insurance claim information received (i)
comprises the threshold number of fraud indicators, (ii)
indicates the vehicle is not drivable, (iii) indicates there is no
opportunity for potential subrogation.

THE REJECTION
The Examiner rejected claims 3, 5–7, 10, 12–27, 39–46, and 48 under
35 U.S.C. § 101 as directed to ineligible subject matter. Final Act. 4–6.2

FINDINGS, CONCLUSIONS, AND CONTENTIONS
The Examiner determines that the claimed invention is directed to an
abstract idea, namely “using categories to organize, store and transmit
information” and “comparing new and stored information and using rules to
identify options.” Final Act. 4 (citing Cyberfone Sys., LLC v. CNN
Interactive Grp., 558 F. App’x 988 (Fed. Cir. 2014) (unpublished) and
SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App’x 950, 955
(Fed. Cir. 2014) (unpublished)). The Examiner adds that the claims do not
include elements that add significantly more than the abstract idea, but
merely recite generic computer components performing generic computer
functions that are well-understood, routine, and conventional. Id. at 5.
Based on these determinations, the Examiner concludes that the claims are
ineligible under § 101. Id. at 4–5.

2 Throughout this opinion, we refer to (1) the Final Rejection mailed January
5, 2017 (“Final Act.”); (2) the Appeal Brief filed December 4, 2017
(supplemented February 20, 2018) (“App. Br.”); (3) the Examiner’s Answer
mailed April 5, 2018 (“Ans.”); and (4) the Reply Brief filed June 5, 2018.
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Appellants argue that the claimed invention is not directed to an
abstract idea. App. Br. 4–16; Reply Br. 1–3. According to Appellants, not
only did the Examiner fail to (1) establish a prima facie case of ineligibility;
(2) consider Congress’s intent when passing the Patent Act of 1952; and (3)
establish a rejection that does not violate the Administrative Procedures Act
(APA), but the claimed invention is said to improve selecting an IRC to
perform an inspection of a vehicle associated with a loss. App. Br. 4–16.
Appellants add that the claimed invention adds significantly more than the
purported abstract idea by (1) not preempting the alleged abstract idea and
(2) reciting limitations that are said to be other than what is well-understood,
routine, and conventional in the field. App. Br. 10–12; Reply Br. 2–3.

ISSUE
Under § 101, has the Examiner erred in rejecting claims 3, 5–7, 10,
12–27, 39–46, and 48 as directed to ineligible subject matter? This issue
turns on whether the claims are directed to an abstract idea and, if so,
whether recited elements—considered individually and as an ordered
combination—transform the nature of the claims into a patent-eligible
application of that abstract idea.

PRINCIPLES OF LAW
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
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ideas” are not patentable. See, e.g., Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
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. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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.”); 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.”).
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, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “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 (1854))); 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
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mathematical formula.” Diehr, 450 U.S. at 176; 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.”). That
said, 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
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 (quotation marks and 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. (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.
In January 2019, the USPTO published revised guidance on the
application of § 101. See 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).
Under the Guidance, we first look to whether the claim recites:
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(1) any judicial exceptions, including certain groupings of abstract
ideas (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 MANUAL OF PATENT EXAMINING PROCEDURE
(MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)).
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:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and 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.
See Guidance, 84 Fed. Reg. at 56.

ANALYSIS
Supplemental Brief Request
Appellants request, for the first time in the Reply Brief, that we enter
an order under 37 C.F.R. § 41.50(d) to permit additional briefing closer to
the time when we consider the substance of the appeal, but before our
decision. Reply Br. 1. According to Appellants, “there is a high likelihood
that the state of the law with respect to [35 U.S.C. § 101] patent eligibility
rejections, such as the one pending in this Appeal, and the two-part Alice-
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Mayo test will be different from that argued in the submitted Appeal Brief
and Examiner’s Answer.” Id. at 1–2. We deny the request.
We reach this decision notwithstanding the fact that new arguments
not raised in the Briefs that are based upon a recent relevant decision of
either the Board or a Federal Court are permitted in either a rehearing
request or upon a showing of good cause in an oral hearing. See 37 C.F.R.
§§ 41.52(a)(2)–(4), 41.47(e)(2). We further acknowledge that, under 37
C.F.R. § 41.50(d), “[t]he Board may order appellant to additionally brief any
matter that the Board considers to be of assistance in reaching a reasoned
decision on the pending appeal.”
Our emphasis underscores that such an order is discretionary. MPEP
§ 1212. To be sure, a discretionary order may include asking Appellants to
address the applicability of particular case law that was not identified
previously as relevant to an issue in the appeal. MPEP § 1212. Notably,
other panels of this Board have permitted supplemental briefing in
connection with patent eligibility issues under § 101, but under different
circumstances than those here. See, e.g., Ex parte Scheuring, No. 2016-
003546 (PTAB May 2, 2018) (non-precedential) (“In advance of the oral
hearing, Appellant submitted a supplemental brief addressing intervening
case law since the filing of the Reply Brief.”); see also Bally Gaming, Inc. v.
New Vision Gaming & Dev., CBM2018-00005, 2019 WL 2527364, at *9 n.4
(PTAB 2019) (non-precedential) (giving the parties an opportunity for
supplemental briefing in light of the USPTO’s § 101 Guidelines, but no
briefing was filed); Appl’n 14/207,507, Order Vacating Decision on Appeal
filed Feb. 1, 2019, at 2–4 (authorizing supplemental briefing to discuss the
impact of the Federal Circuit’s decision in In re Marco Guldenaar Holding,
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B.V., 911 F.3d 1157 (Fed. Cir. 2018) in connection with a patent eligibility
issue).
But here, apart from merely speculating that there is ostensibly a
“high likelihood” that the state of patent eligibility law will differ from that
addressed in the Briefs and the Answer (see Reply Br. 1–2), nothing has
changed the U.S. Supreme Court’s two-part Alice/Mayo framework which
was—and still is—the state of the law relevant to resolving the eligibility
issue before us.3 Nor have subsequent Federal Circuit decisions changed the
law in this regard, for they continue to apply the Alice/Mayo framework to
resolve eligibility issues involving judicial exceptions, such as abstract ideas.
See, e.g., ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 765 (Fed.
Cir. 2019).
To the extent that Appellants contend that the proffered “CAFC
Timeline” on page 2 of the Reply Brief somehow provides good cause for
supplemental briefing here, we disagree. Therefore, on this record, we deny
Appellants’ request for supplemental briefing.

3 Although this opinion applies the Guidance that revises the USPTO
examination procedure with respect to the Alice/Mayo test (see Guidance, 84
Fed. Reg. at 50), the Guidance “sets out agency policy with respect to the
USPTO’s interpretation of the subject matter eligibility requirements of 35
U.S.C. 101 in view of decisions by the Supreme Court and the Federal
Circuit” (id. at 51). In other words, “[r]ejections will continue to be based
upon the substantive law” including the Alice/Mayo test when applying the
Guidance. Id.
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Prima Facie Case of Ineligibility
Despite Appellants’ arguments to the contrary (App. Br. 15–16), we
conclude that the Examiner established a prima facie case of ineligibility
under § 101.
The Examiner has a duty to give notice of a rejection with sufficient
particularity to give Appellants a fair opportunity to respond to the rejection.
See 35 U.S.C. § 132(a). Here, we find the Examiner’s rejection satisfies the
initial burden of production by identifying that the claims include limitations
similar to the identified abstract idea of “using categories to organize, store
and transmit information” and “comparing new and stored information and
using rules to identify options,” and that the remainder of the claims do not
add significantly more to the abstract idea because the generically-recited
computer elements are well-understood, routine, and conventional. Final
Act. 4–5.
Accordingly, the Examiner (1) set forth the statutory basis for the
rejection, namely 35 U.S.C. § 101; (2) concluded that the claims are directed
to a judicial exception to § 101, namely an abstract idea; and (3) explained
the rejection in sufficient detail to permit Appellants to respond
meaningfully. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). On
this record, then, the Examiner established a prima facie case of ineligibility.

Alice/Mayo Step One
Independent claim 48 recites:
A computer-implemented method comprising:
storing, at a data store of a computing device, insurance
claim data characterizing a plurality of insurance claims that
have previously been filed, business driver data characterizing
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a plurality of business drivers associated with processing
insurance claims, predictor data generated from a statistical
analysis of the insurance claims data and characterizing a
plurality of predictors, each predictor indicating a degree to
which one or more inspection resource classes of a plurality of
inspection resource classes optimize one or more business
drivers of the plurality of business drivers when processing
insurance claims, inspection resource data characterizing a
plurality of inspection resources, each inspection resource
being classified as one of the plurality of inspection resource
classes comprising a repair shop class, a drive-in center class,
and an field adjuster class, and a plurality of decision support
rules, each decision support rule indicating one of the plurality
of inspection resource classes suitable to perform vehicle
inspections when one or more predetermined indicators are
determined to be included in insurance claim information
received by the computing device;
receiving, by the computing device, new insurance claim
information regarding a loss associated with a vehicle, the new
insurance claim information comprising loss information
characterizing the loss, vehicle information characterizing the
vehicle, and liability information characterizing potential
liability of a party associated with the loss;
receiving, by the computing device, an indication of a
business driver to utilize when selecting an inspection resource
class to inspect the vehicle;
selecting, automatically by the computing device, one or
more predictors of the plurality of predictors that optimize the
business driver indicated;
selecting, automatically by the computing device and
based at least in part on the new insurance claim information
received, a decision support rule from the plurality of decision
support rules;
selecting, automatically and without human intervention
by the computing device and based at least in part on the
business driver indicated, the one or more predictors selected,
and the decision support rule selected, an inspection resource
class from the plurality of inspection resource classes to
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perform an inspection of the vehicle associated with the loss;
and
scheduling, by the computing device, the inspection of the
vehicle by an inspection resource of the plurality of inspection
resources, the inspection resource being classified as the
inspection resource class selected, wherein the scheduling
comprising transmitting an alert notification to an owner of the
vehicle of the inspection resource class selected;
wherein the plurality of decision support rules comprises
a first decision support rule that indicates the repair shop class
is suitable to inspect the vehicle when the new insurance claim
information received comprises less than a threshold number of
fraud indicators that indicate a need for investigation of
potential fraud associated with the loss, a second decision
support rule that indicates the drive-in center class is suitable
to inspect the vehicle when the new insurance claim
information received (i) comprises less than the threshold
number of fraud indicators and (ii) comprises no indication of
potential liability against another party, and a third decision
support rule that indicates the field adjuster class is suitable to
inspect the vehicle when the new insurance claim information
received (i) comprises the threshold number of fraud indicators,
(ii) indicates the vehicle is not drivable, (iii) indicates there is
no opportunity for potential subrogation.4

As the Specification explains, the present invention manages and
resolves an insurance claim by identifying a suitable IRC for a vehicle
involved in a loss. Spec. ¶¶ 2, 5–6. To this end, the invention’s historical
data analysis module uses statistical analysis to identify predictors that
indicate the degree to which a particular IRC is likely to optimize a business
driver for an insurance claim. Spec. ¶¶ 18–20; Fig. 1. The historical data
analysis module outputs information to a decision-support rules module that

4 Unless otherwise indicated, we italicize and/or quote text that reproduces
recited limitations for emphasis and clarity.
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creates new rules or enhances existing rules. Spec. ¶ 25. An IRC
identification module uses the rules to identify a suitable IRC. Id.
Turning to claim 48, we first note that the claim recites a method and,
therefore, falls within the process category of § 101. See Guidance, 84 Fed.
Reg. at 53–54 (citing MPEP §§ 2106.03, 2106.06). But despite falling
within this statutory category, we must still determine whether the claim is
directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S.
at 217. To this end, we must determine whether the claim (1) recites a
judicial exception, and (2) fails to integrate the exception into a practical
application. See Guidance, 84 Fed. Reg. at 52–55. If both elements are
satisfied, the claim is directed to a judicial exception under the first step of
the Alice/Mayo test. See id.
In the rejection, the Examiner determines that claim 48 is directed to
an abstract idea, namely “using categories to organize, store and transmit
information” and “comparing new and stored information and using rules to
identify options.” Final Act. 4. To determine whether a claim recites an
abstract idea, we (1) identify the claim’s specific limitations that recite an
abstract idea, and (2) determine whether the identified limitations fall within
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certain subject matter groupings, namely, (a) mathematical concepts5; (b)
certain methods of organizing human activity6; or (c) mental processes.7
Here, apart from the recited (1) “computer-implemented” method; (2)
“data store of a computing device”; and (3) “computing device,” all of claim
48’s recited steps, which collectively are directed to identifying a suitable
IRC for inspecting a vehicle, fit squarely within at least one of the above
categories of the agency’s guidelines.
First, the step reciting
storing . . . insurance claim data characterizing a plurality of
insurance claims that have previously been filed, business driver
data characterizing a plurality of business drivers associated
with processing insurance claims,
predictor data generated from a statistical analysis of the
insurance claims data and characterizing a plurality of
predictors, each predictor indicating a degree to which one or
more inspection resource classes of a plurality of inspection
resource classes optimize one or more business drivers of the
plurality of business drivers when processing insurance claims,
inspection resource data characterizing a plurality of
inspection resources, each inspection resource being classified
as one of the plurality of inspection resource classes comprising

5 Mathematical concepts include mathematical relationships, mathematical
formulas or equations, and mathematical calculations. See Guidance, 84
Fed. Reg. at 52.
6 Certain methods of organizing human activity include 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 Guidance, 84 Fed. Reg. at 52.
7 Mental processes are concepts performed in the human mind including an
observation, evaluation, judgment, or opinion. See Guidance, 84 Fed. Reg.
at 52.
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a repair shop class, a drive-in center class, and an field adjuster
class, and
a plurality of decision support rules, each decision support
rule indicating one of the plurality of inspection resource classes
suitable to perform vehicle inspections when one or more
predetermined indicators are determined to be included in
insurance claim information received

. . .

wherein the plurality of decision support rules comprises
a first decision support rule that indicates the repair shop
class is suitable to inspect the vehicle when the new insurance
claim information received comprises less than a threshold
number of fraud indicators that indicate a need for investigation
of potential fraud associated with the loss,
a second decision support rule that indicates the drive-in
center class is suitable to inspect the vehicle when the new
insurance claim information received (i) comprises less than the
threshold number of fraud indicators and (ii) comprises no
indication of potential liability against another party, and
a third decision support rule that indicates the field
adjuster class is suitable to inspect the vehicle when the new
insurance claim information received (i) comprises the threshold
number of fraud indicators, (ii) indicates the vehicle is not
drivable, (iii) indicates there is no opportunity for potential
subrogation

involves at least mental processes and personal and commercial interactions,
including following rules or instructions, at least to the extent that a person
could store the data either entirely mentally or in a repository. Cf. Content
Extraction & Transmission LLC v. Wells Fargo, 776 F.3d 1343, 1345–49
(Fed. Cir. 2014) (holding ineligible claims reciting (1) receiving output
representing diverse types of hard copy documents from an automated
digitizing unit, and (2) storing information from those documents into
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memory); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d
1366, 1372–73 (Fed. Cir. 2011) (noting that a recited step that used a map of
credit card numbers to determine the validity of a credit card transaction
could be performed entirely mentally by merely using logical reasoning to
identify a likely instance of fraud by merely observing that numerous
transactions using different credit cards all originated from the same IP
address); In re Salwan, 681 F. App’x 938, 939–41 (Fed. Cir. 2017)
(unpublished) (holding ineligible claims reciting, among other things,
receiving medical records information and transmitting reports where the
claimed invention’s objective was to enable electronic communication of
tasks that were otherwise done manually using paper, phone, and facsimile
machine); LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 993–94, 996
(Fed. Cir. 2016) (unpublished) (holding ineligible claims reciting, among
other things, (1) receiving selection criteria from lending institutions and
credit data from a computer user, and (2) forwarding the credit data to
selected lending institutions as directed to an abstract idea). Therefore, the
storing step falls squarely within the mental processes and certain methods
of organizing human activity categories of the agency’s guidelines and,
therefore, recites an abstract idea. See Guidance, 84 Fed. Reg. at 52 (listing
exemplary (1) methods of organizing human activity, including (a) personal
and commercial interactions and (b) following rules or instructions; and (2)
mental processes, including observation and evaluation).
Second, the steps reciting (1) “receiving . . . new insurance claim
information regarding a loss associated with a vehicle, the new insurance
claim information comprising loss information characterizing the loss,
vehicle information characterizing the vehicle, and liability information
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characterizing potential liability of a party associated with the loss” and (2)
“receiving . . . an indication of a business driver to utilize when selecting an
inspection resource class to inspect the vehicle” merely recites functions that
could be done by a person who receives such information, such as a claims
representative or other insurance provider professional. Notably, the
receiving steps involve at least personal and commercial interactions,
including following rules or instructions, at least to the extent that the claims
representative could receive such new insurance claim information and a
business driver’s indication by merely reading pertinent records or other
associated information, or alternatively receive that information via face-to-
face or written communication with another person with such knowledge,
such as the vehicle’s owner. Cf. CyberSource, 654 F.3d at 1372. Therefore,
the recited receiving steps fall squarely within the mental processes and
certain methods of organizing human activity categories of the agency’s
guidelines and, therefore, recite an abstract idea. See Guidance, 84 Fed.
Reg. at 52.
Third, the steps reciting (1) “selecting . . . one or more predictors of
the plurality of predictors that optimize the business driver indicated;” (2)
“selecting, . . . based at least in part on the new insurance claim information
received, a decision support rule from the plurality of decision support
rules;” and (3) “selecting, . . . based at least in part on the business driver
indicated, the one or more predictors selected, and the decision support rule
selected, an inspection resource class from the plurality of inspection
resource classes to perform an inspection of the vehicle associated with the
loss” merely recites functions that could be done by a person who selects
such information, such as a claims representative or other insurance provider
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professional. Notably, the selecting steps can be done mentally by merely
thinking about, or writing down, such selected predictor(s), decision support
rule, and IRC by the claims representative —steps that can involve mere
observation and logical reasoning. Cf. CyberSource, 654 F.3d at 1372–73
(noting that a recited step that used a map of credit card numbers to
determine the validity of a credit card transaction could be performed
entirely mentally by merely using logical reasoning to identify a likely
instance of fraud by merely observing that numerous transactions using
different credit cards all originated from the same IP address). Moreover,
the steps involve personal and commercial interactions, including following
rules or instructions, at least to the extent that the claims representative could
convey that information via face-to-face, oral, or written communication
with another person associated with the vehicle, such as the vehicle’s owner.
Cf. id. at 1372. Therefore, the recited selecting steps fall squarely within the
mental processes and certain methods of organizing human activity
categories of the agency’s guidelines and, therefore, recite an abstract idea.
See Guidance, 84 Fed. Reg. at 52.
Fourth, the step reciting “scheduling . . . the inspection of the vehicle
by an inspection resource of the plurality of inspection resources, the
inspection resource being classified as the inspection resource class
selected, wherein the scheduling comprising transmitting an alert
notification to an owner of the vehicle of the inspection resource class
selected” merely recites functions that could be done by a person who
schedules such information, such as a claims representative or other
insurance professional. Notably, the scheduling step involves at least
personal and commercial interactions, including following rules or
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instructions, at least to the extent that the claims representative could
schedule such inspection of a vehicle by merely conveying such information
via face-to-face or written communication with another person requesting
such knowledge, such as the vehicle’s owner. Cf. CyberSource, 654 F.3d at
1372. Therefore, the recited scheduling step falls squarely within the mental
processes and certain methods of organizing human activity categories of the
agency’s guidelines and, therefore, recites an abstract idea. See Guidance,
84 Fed. Reg. at 52.
Although the claim recites an abstract idea based on these certain
methods of organizing human activity and mental processes, we nevertheless
must still determine whether the abstract idea is integrated into a practical
application, namely whether the claim applies, relies on, or uses the abstract
idea in a manner that imposes a meaningful limit on the abstract idea, such
that the claim is more than a drafting effort designed to monopolize the
abstract idea. See Guidance, 84 Fed. Reg. at 54–55. To this end, we (1)
identify whether there are any additional recited elements beyond the
abstract idea, and (2) evaluate those elements individually and collectively to
determine whether they integrate the exception into a practical application.
See id.
Here, the recited (1) “computer-implemented” method; (2) “data store
of a computing device”; and (3) “computing device” are the only recited
elements beyond the abstract idea, but those additional elements do not
integrate the abstract idea into a practical application when reading claim 48
as a whole.
Appellants argue claim 48 provides a specific technological solution
to a technological problem—a specific way to select an IRC to inspect a
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vehicle that addresses the issue of which IRC is appropriate to inspect the
vehicle. App. Br. 12–13. To the extent that Appellants argue that claim 48
is eligible because it is necessarily rooted in computer technology to
overcome a problem as in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d
1245, 1257 (Fed. Cir. 2014), we disagree. There, instead of a computer
network operating in its normal, expected manner by sending a website
visitor to a third-party website apparently connected with a clicked
advertisement, the claimed invention in DDR generated and directed the
visitor to a hybrid page that presented (1) product information from the third
party, and (2) visual “look and feel” elements from the host website. DDR,
773 F.3d at 1258–59. Given this particular Internet-based solution, the court
held that the claimed invention did not merely use the Internet to perform a
business practice known from the pre-Internet world, but rather was
necessarily rooted in computer technology to overcome a problem
specifically arising in computer networks. Id. at 1257.
That is not the case here. As noted previously, Appellants’ claimed
invention, in essence, is certain methods of organizing human activity and
concepts performed in the human mind. Despite Appellants’ arguments to
the contrary (App. Br. 12–13), the claimed invention here is not necessarily
rooted in computer technology in the sense contemplated by DDR where the
claimed invention solved a challenge particular to the Internet. Although the
Appellants’ invention uses computer-based components, including a
computing device to identify a suitable IRC for inspecting a vehicle, the
claimed invention does not solve a challenge particular to the computer or
the network used to implement this functionality.Appellants’ reliance on
McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed.
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Cir. 2016) (App. Br. 8–10) is unavailing. There, the claimed process used a
combined order of specific rules that rendered information in a specific
format that was applied to create a sequence of synchronized, animated
characters. McRO, 837 F.3d at 1315. Notably, the recited process
automatically animated characters using particular information and
techniques—an improvement over manual three-dimensional animation
techniques that was not directed to an abstract idea. Id. at 1316.
But unlike the claimed invention in McRO that improved how the
physical display operated to produce better quality images, the claimed
invention here merely uses generic computing components to identify a
suitable IRC for inspecting a vehicle—a generic computer implementation
that is only directed to fundamental human activity organization and mental
processes and does not improve a display mechanism as was the case in
McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir.
2018) (distinguishing McRO). Although the claimed invention requires
computer components, it is the incorporation of those components—not a
claimed rule—that purportedly improves the existing process. Cf.
FairWarning IP, LLC v. Iatric Systems, Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016). In short, the claimed invention does not focus on improving
computers as tools, but rather certain independently abstract ideas that use
computers as tools. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016).
Therefore, we do not find that the claim recites additional elements
improving (1) the computer itself, or (2) another technology or technical
field. See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)).
Rather, the above-noted additional elements merely (1) apply the abstract
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idea on a computer; (2) include instructions to implement the abstract idea
on a computer; or (3) use the computer as a tool to perform the abstract idea.
See Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(f)).
That the claimed invention collects vehicle information to provide a
vehicle valuation does not integrate the abstract idea into a practical
application. Using well-known technology to collect information and
generate a vehicle valuation report is not directed to an improvement in
computer functionality, and does not provide a specific improvement in the
way computers operate. See Audatex North America, Inc. v. Mitchell Int’l,
Inc., 703 F. App’x 986, 989–90 (Fed. Cir. 2017) (unpublished). Nor does
the claimed invention’s assigning an IRC based on decision support rules to
be completed upon the occurrence of a received new insurance claim
integrate the abstract idea into a practical application. See Accenture Global
Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344 (Fed. Cir.
2013) (holding generating tasks based on rules to be completed upon the
occurrence of an event is an abstract idea).
We add that the storing and receiving steps not only recite mental
processes, organize human activity, and use generic computing components
to perform the abstract idea as noted above, but the storing and the receiving
steps are also insignificant pre-solution activity that merely gathers and
stores data and, therefore, does not integrate the exception into a practical
application for that additional reason. See In re Bilski, 545 F.3d 943, 963
(Fed. Cir. 2008) (en banc) (characterizing data gathering steps as
insignificant extra-solution activity), aff’d sub nom. Bilski v. Kappos, 561
U.S. 593 (2010); see also CyberSource, 654 F.3d at 1371–72 (noting that
even if some physical steps are required to obtain information from a
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database (e.g., entering a query via a keyboard, clicking a mouse), such data-
gathering steps cannot alone confer patentability). Accord Guidance, 84
Fed. Reg. at 55 (citing MPEP § 2106.05(g)).
In addition, the recited “transmitting an alert notification to an owner
of the vehicle of the inspection resource class selected” is insignificant post-
solution activity, at least in the sense that it is merely ancillary to the IRC
selection focus of the claimed invention, given its high level of generality
and context in the claimed invention. Where, as here, the recited alert
transmitting step is merely ancillary to the IRC selection focus of the
claimed invention, given its high level of generality and context in the
claimed invention, the recited alert transmitting step is insignificant post-
solution activity and, therefore, does not integrate the exception into a
practical application for this additional reason. See Guidance, 84 Fed. Reg.
at 55 (citing MPEP § 2106.05(g))
In conclusion, although the recited functions may be beneficial by
selecting an IRC based on a business driver, predictor(s), and decision
support rule, a claim for a useful or beneficial abstract idea is still an abstract
idea. See Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379–
80 (Fed. Cir. 2015).
We, therefore, agree with the Examiner that claim 48 is directed to an
abstract idea.

Alice/Mayo Step Two
Turning to Alice/Mayo step two, claim 48’s additional recited
elements, namely the recited (1) “computer-implemented” method; (2) “data
store of a computing device”; and (3) “computing device”— considered
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individually and as an ordered combination—do not provide an inventive
concept such that these additional elements amount to significantly more
than the abstract idea. See Alice, 573 U.S. at 221; see also Guidance, 84
Fed. Reg. at 56. As noted above, the claimed invention merely uses generic
computing components to implement the recited abstract idea.
We find unavailing Appellants’ contention that the Examiner fails to
present any evidence or arguments that satisfy the Office’s burden to prove
that “the claimed features” are well-understood, routine, and conventional
with clear and convincing evidence. Reply Br. 3. To be sure, the Examiner
must show—with supporting facts—that certain claim elements are well-
understood, routine, and conventional where such a finding is made. See
Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir. 2018) (noting that
“[whether] something is well-understood, routine, and conventional to a
skilled artisan at the time of the patent is a factual determination.”). After
our reviewing court issued its decision in Berkheimer, the USPTO issued an
April 19, 2018, Memorandum from Robert W. Bahr, Deputy Commissioner
for Patent Examination Policy to the Patent Examining Corps, entitled
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)”
(“Berkheimer Memo.”).8 The USPTO revised “the procedures set forth in
[Manual of Patent Examiner Procedure] (MPEP) § 2106.07(a) (Formulating
a Rejection For Lack of Subject Matter Eligibility) and MPEP § 2106.07(b)
(Evaluating Applicant’s Response).” Berkheimer Memo. 3.

8 The Berkheimer Memorandum is available at
https://www.uspto.gov/sites/default/files/documents/memo-berkheimer-
20180419.PDF (last visited July 18, 2019).
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According to the Berkheimer Memorandum, Examiners must provide
specific types of evidence to support a finding that an additional element of a
claim is well-understood, routine, and conventional. Id. 3–4. To this end,
Examiners must provide one or more of the following: (1) a citation to the
Specification or statement made by applicant during prosecution that
demonstrates the well-understood, routine, conventional nature of the
additional element; (2) a citation to court decisions discussed in MPEP
§ 2106.05(d)(II) as noting the well-understood, routine, conventional nature
of the additional element; (3) a citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional element; and
(4) a statement that an examiner is taking official notice of the well-
understood, routine, conventional nature of the additional element. Id.
Thus, contrary to Appellants’ contention (see Reply Br. 3), the Examiner
satisfied the requirement of the Berkheimer Memorandum by providing a
citation to paragraph 13 of the Specification (see Final Act. 5).
The generic computing functionality of the additional recited
elements, namely the recited (1) “computer-implemented” method; (2) “data
store of a computing device”; and (3) “computing device”, is well-
understood, routine, and conventional. See, e.g., Alice, 573 U.S. at 225–26
(holding that “implement[ing] the abstract idea . . . on a generic computer”
was not sufficient “to transform an abstract idea into a patent-eligible
invention”); Intellectual Ventures I LLC v. Capital One Bank (USA), 792
F.3d 1363, 1368 (Fed. Cir. 2015) (noting that a recited user profile (i.e., a
profile keyed to a user identity), database, and communication medium are
generic computer elements); Mortg. Grader, Inc. v. First Choice Loan
Servs., Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (noting that
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components such an “interface,” “network,” and “database” are generic
computer components that do not satisfy the inventive concept requirement);
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.”). Accord Final Act. 5
(quoting paragraph 13 of the Specification and concluding that the claims do
not include elements that add significantly more than the abstract idea, but
merely recite generic computer components performing generic computer
functions that are well-understood, routine, and conventional activities). See
also, e.g., Spec. ¶¶ 13–21; Fig. 2 (describing generic computer components
associated with the disclosed invention).
We reach a similar conclusion regarding the recited insignificant
extra-solution activity noted previously regarding the recited storing and
alert notification transmission limitations.
That (1) particular data is stored, and (2) an alert is transmitted does
not mean that these steps are performed in an unconventional way to add
significantly more than the abstract idea and provide an inventive concept
under Alice/Mayo step two. See Guidance, 84 Fed. Reg. at 56. Given these
limitations’ (1) high level of generality, and (2) use of generic computing
components whose functionality is well-understood, routine, and
conventional for the reasons noted previously, the recited extra-solution
activity does not add significantly more than the abstract idea to provide an
inventive concept under Alice/Mayo step two.
Lastly, we find unavailing Appellants’ contention that the claims do
not wholly preempt any particular technological field. App. Br. 10–12. To
be sure, the Supreme Court has characterized pre-emption as a driving
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concern for patent eligibility. See Alice, 573 U.S. at 216. But where, as
here, the claims cover a patent-ineligible concept, preemption concerns “are
fully addressed and made moot” by an analysis under the Alice/Mayo
framework. See Ariosa, 788 F.3d at 1379. Moreover, “[w]hile pre-emption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Id. Accord OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat
the claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”)
In conclusion, the additional recited elements—considered
individually and as an ordered combination—do not add significantly more
than the abstract idea to provide an inventive concept under Alice/Mayo step
two. See Alice, 573 U.S. at 221; see also Guidance, 84 Fed. Reg. at 56.
Therefore, we are not persuaded that the Examiner erred in rejecting
claim 48, and claims 3, 5–7, 10, 12–27, and 39–46 not argued separately
with particularity.
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CONCLUSION
The Examiner did not err in rejecting claims 3, 5–7, 10, 12–27, 39–46,
and 48.
DECISION
The Examiner’s decision to reject claims 3, 5–7, 10, 12–27, 39–46,
and 48 is affirmed.
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED