Keefer, Alan Harrison.

Patent Trials and Appeals Board

Feb 13, 2020

12566452 - (D) (P.T.A.B. Feb. 13, 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.
12/566,452 09/24/2009 Alan Harrison Keefer GUIDP011 2434
21912 7590 02/13/2020
VAN PELT, YI & JAMES LLP
10050 N. FOOTHILL BLVD #200
CUPERTINO, CA 95014
EXAMINER
ANDERSON, JOHN A
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
02/13/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
usptocorrespondence@ip-patent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALAN HARRISON KEEFER
____________

Appeal 2019-001478
Application 12/566,452
Technology Center 3600
____________

Before MAHSHID D. SAADAT, LINZY T. McCARTNEY, and MICHAEL
T. CYGAN, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21, 23, and 24, which are all the
claims pending in this application. 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 the real party in interest as
Guidewire Software, Inc. Appeal Br. 1.
Appeal 2019-001478
Application 12/566,452

2
STATEMENT OF THE CASE
Introduction
Appellant’s disclosure is directed to a system that saves insurance
policy revisions and addresses and stores large amounts of data associated
with multiple revisions. See Spec. ¶ 5. Claim 1 is illustrative of the
invention and reads as follows:
1. An apparatus comprising:
an end-user interface;
a memory;
a processor operably coupled to the end-user interface
and the memory and being configured to:
provide an end user with an opportunity to revise a
current version of an insurance policy, wherein the
current version has a corresponding creation date stored
therewith in the memory and wherein the current version
comprises a plurality of policy elements each having
corresponding effective dates and fixed identifiers;
prior to revising the current version of the
insurance policy:
recall from the memory, intact, and without
requiring reconstruction, the current version of the
insurance policy, wherein the current version of the
insurance policy is not editable, and wherein the current
version of the insurance policy comprises a plurality of
policy elements that are not editable; and
generate a duplicate version of the current version
of the insurance policy, wherein generating the duplicate
version of the current version of the insurance policy
comprises duplicating at least some of the non-editable
policy elements of the current version, wherein the
duplicate copies of the policy elements are editable, and
wherein corresponding policy elements of the insurance
policy in the current version and in the duplicate version
have identical corresponding fixed identifiers;
Appeal 2019-001478
Application 12/566,452

3
use input as entered by the end user via the end-user
interface to revise a first portion of the duplicate editable policy
elements of the duplicate version, wherein a second portion of
the duplicate editable policy elements are unrevised;
use the memory to store the revised duplicate version as
an intact, now-current version of the insurance policy along
with a corresponding creation date and at least one new
corresponding effective date, wherein storing the revised
duplicate version intact as the now-current version of the
insurance policy includes:
storing the first portion of duplicate editable policy
elements that were revised; and
storing the second portion of duplicate editable
policy elements that were unrevised;
use the memory to store the current version as a now-
previous version of the insurance policy that is no longer
presently legally effective, wherein storing the current version
as the now-previous version includes compressing the now-
previous version of the insurance policy at least in part by
recording differences between the now-previous version of the
insurance policy and the now-current version of the insurance
policy; and
in response to a request to retrieve the now-previous
version of the insurance policy, reconstruct the now-previous
version of the insurance policy at least in part by successively
applying the recorded differences from the now-current version
of the insurance policy.
Appeal Br. 19–20 (Claims App.).
The Examiner’s Rejections
Claims 1–21, 23, and 24 stand rejected under 35 U.S.C. § 101 as
directed to non-statutory subject matter. Final Act. 2–5.
Claims 1–21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heydon (US 2007/0255601 Al; pub. Nov. 1, 2007) and
Tinnirello (2006/0036527 Al; pub. Feb. 16, 2006). Final Act. 6–12.
Appeal 2019-001478
Application 12/566,452

4
Claims 23 and 24 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Heydon, Tinnirello, and Burton (US 2007/0156463 Al;
pub. July 5, 2007). Final Act. 12–14.

ANALYSIS
SECTION 101 REJECTION
We have reviewed the Examiner’s rejection in light of Appellant’s
contentions and the evidence of record. We concur with Appellant’s
contention that the Examiner erred.
Rejection and Arguments
The Examiner finds “[t]he claimed invention is directed to a judicial
exception (i.e., a law of nature, a natural phenomenon, or an abstract idea)
without significantly more.” Final Act. 2. The Examiner specifically finds
the claimed invention “is based on a ‘the series of steps of providing via an
interface, recalling from memory, generating copies, inputting via interface,
storing elements and retaining first versions and reconstructing previous
versions of insurance policies’ are fundamental economic practices and thus
directed to an abstract idea.” Final Act. 2–3. The Examiner explains that
the recited steps related to “comparing and organizing information for
transmission . . . can be performed mentally” and are similar to the concepts
that the courts identified as abstract. Final Act. 3. The Examiner further
explains:
The claim elements in addition to the abstract idea are
processor with memory and interface that performs the steps of
comparing and organizing information for transmission to a
remote computer.
The additional elements are not sufficient to amount to
significantly more than the judicial exception because the
Appeal 2019-001478
Application 12/566,452

5
claims do not provide improvements to another technology or
technical field, improvements to the functioning of the
computer itself and do not provide meaningful limitations
beyond general linking the use of an abstract idea to a particular
technological environment.
Final Act. 4.
Appellant contends “the Examiner has not looked to the claims as an
ordered combination and has ignored the requirements of the individual
steps,” such as compressing and storing a now-previous version of the policy
and the differences between two versions which are used to reconstruct that
version. Appeal Br. 12. Appellant argues “the claims are directed to a
specific implementation of a process for managing revisions and tracking
insurance policy elements.” Appeal Br. 13. According to Appellant, the
claims “recite specific limitations other than what is well-understood,
routine, and conventional in the field, and add unconventional steps that
confine the claims to a particular useful application,” wherein “‘[e]xisting
systems do not adequately address the concerns presented by multiple policy
revisions and revisions with different changes and effective dates,’ where
‘[s]ystems often have difficulty saving both the information concerning what
policy elements were effective on a certain date and when those elements
were changed.’” Appeal Br. 14 (citing Spec. ¶ 5). Appellant adds that
the compression and reconstruction of previous versions of
insurance policies in the manner recited in independent Claims
1, 11-13, 14, and 18 bring improvements to the functioning of
existing insurance policy management systems by improving
the storage requirements needed to store large amounts of data,
as well as improving the efficiency by which previous versions
of insurance policies are reconstructed.
Appeal Br. 15–16 (citing Spec. ¶ 49).
Appeal 2019-001478
Application 12/566,452

6
Legal Principles
Section 101 of the Patent Act provides “[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, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
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, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
Appeal 2019-001478
Application 12/566,452

7
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.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
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 (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.
The PTO recently published revised guidance on the application of
§ 101. USPTO, 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:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1); 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, 2018) (Step 2A, Prong 2).
Appeal 2019-001478
Application 12/566,452

8
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, conventional” in the field (see
MPEP § 2106.05(d)); or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Discussion
Claim 1 recites functions performed by a processor, relating to
revising a current version of an insurance policy, that includes “recall from
the memory” and “generate a duplicate version” of the current version of the
insurance policy, “use input as entered by the end user via the end-user
interface to revise a first portion of the duplicate editable policy elements of
the duplicate version,” and “use the memory to store the revised duplicate
version as an intact, now-current version of the insurance policy.” After
storing the revised and unrevised portions of the policy, the claim recites
storing the current version as a now-previous version of the policy which
includes “compressing the now-previous version of the insurance policy at
least in part by recording differences between the now-previous version of
the insurance policy and the now-current version of the insurance policy”
and retrieving the now-previous version of the policy to reconstruct ; and in
response to a request to retrieve and reconstruct the now-previous version of
the insurance policy “by successively applying the recorded differences from
the now-current version of the insurance policy.” See Appeal Br. 19–20
(Claims App.).
Appeal 2019-001478
Application 12/566,452

9
Even if the recited functionalities shown above are directed to an
abstract idea (such as mental processes recited in the limitations related to
comparing and organizing information for transmission), the Federal Circuit
explains the “directed to” inquiry is not simply asking whether the claims
involve a patent-ineligible concept:
The “directed to” inquiry . . . cannot simply ask whether the
claims involve a patent-ineligible concept, because essentially
every routinely patent-eligible claim involving physical products
and actions involves a law of nature and/or natural
phenomenon—after all, they take place in the physical world.
See Mayo, 132 S. Ct. at 1293 (“For all inventions at some level
embody, use, reflect, rest upon, or apply laws of nature, natural
phenomena, or abstract ideas.”). Rather, the “directed to”
inquiry applies a stage-one filter to claims, considered in light of
the specification, based on whether “their character as a whole is
directed to the excluded subject matter.”
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016); see
also Diehr, 450 U.S. at 188 (“In determining the eligibility of respondents’
claimed process for patent protection under § 101, their claims must be
considered as a whole.”); McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1314 (Fed. Cir. 2016) (the question is whether the claims as a
whole “focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery”).
Therefore, we proceed to Step 2A, Prong 2 of the Guidance to
determine whether additional elements of claim 1 integrate an abstract idea,
such as mental processes, into a practical application. Such additional
elements may reflect an improvement to a technology or technical field. See
Guidance, 84 Fed. Reg. at 55. Here we look to see if, for example, (i) any
additional elements of the claims reflects an improvement in the functioning
Appeal 2019-001478
Application 12/566,452

10
of a computer or to another technological field, (ii) an application of the
judicial exception with, or by use of, a particular machine, (iii) a
transformation or reduction of a particular article to a different state or thing,
or (iv) a use of the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See MPEP § 2106.05(a)–(c), (e)–(h).
We determine additional elements of claim 1 integrate the abstract
idea into a practical application, because those elements (“storing the current
version as a now-previous version,” “compressing the now-previous version
of the insurance policy at least in part by recording differences between the
now-previous version of the insurance policy and the now-current version of
the insurance policy,” and “reconstruct the now-previous version of the
insurance policy at least in part by successively applying the recorded
differences from the now-current version of the insurance policy”) reflect
specific technological improvements. See claim 1. In fact, the recited
elements allow storing different versions of insurance policies that are
changed over time and generate a large amount of data, which may require a
large storage capacity. The recited elements provide a solution that exists in
the arrangement of the information to be stored and retrieved for
reconstruction of the complete policy document without storing the complete
policy information, which is rooted in computer technology. See DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)
(holding the claims satisfy Alice step two because “the claimed solution is
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks”).
Appeal 2019-001478
Application 12/566,452

11
Appellant’s Specification supports our determination by describing
the prior art problem of storing multiple versions of an insurance policy
changes which encompass “what policy elements were effective on a certain
date and when those elements were changed.” See Spec. ¶ 5. Appellant’s
Specification explains storing different policy versions as stated below:
As noted previously, since each change to the policy
results in the creation and storage of a new version of the
policy, over time, a large number of policy versions may be
stored. For large policies that change frequently, this may
result in storing a very large amount of data. Instead of storing
the complete record of each policy version, the system may
compress previous versions of the policy to save space. By one
approach, the system is configured to store the currently
legally-binding policy version in its entirety, and then to store
each prior version by recording only the differences between
that prior version and the immediately subsequent version by
model number. In this case, prior versions can be reconstructed
by successively applying changes from the subsequent version.
Since most operations occur relative to the currently bound
version (which is stored intact and does not need to be
reconstructed), this approach is efficient.
Spec. ¶¶ 49, 65. Such combination of storing the compressed version and
the differences between the versions addresses the stated storage concerns.
Because the additional elements of claim 1 integrate an abstract
idea, such as mental processes, into a practical application, we determine
claim 1 is not directed to an abstract idea. See Guidance, Step 2A, Prong
2. For similar reasons, each of independent claims 11–14 and 18, as
well as the remaining dependent claims, integrates the mental processes
into a practical application, and is not directed to an abstract idea.
Therefore, we do not sustain the rejection of claims 1–21, 23, and 24
under 35 U.S.C. § 101.
Appeal 2019-001478
Application 12/566,452

12
SECTION 103 REJECTION
We disagree with Appellant’s arguments, and agree with and adopt
the Examiner’s findings and conclusions in (i) the action from which this
appeal is taken (Non-final Act. 8–24) and (ii) the Answer (Ans. 3–8) to the
extent they are consistent with our analysis below.
With respect to independent claims 1, 11–14, and 18, Appellant
contends that the Examiner erred because the cited portions of Haydon and
Tinnirello do not teach or suggest “storing the current version as the now-
previous version includes compressing the now-previous version of the
insurance policy at least in part by recording differences between the now-
previous version of the insurance policy and the now-current version of the
insurance policy,” as recited in independent claims 1 and 11–13. Appeal Br.
17. Additionally, Appellant contends the proposed combination fails to
teach or suggest the limitation that “a given previous version of the
insurance policy is compressed at least in part by recording differences
between the given previous version of the insurance policy and a subsequent
version of the insurance policy,” as recited in independent claims 14 and 18.
Id. Appellant specifically argues that paragraph 48 of Tinnirello, which the
Examiner relied on for the disputed limitations, does not teach or suggest the
recited “compression” and instead, relates to assembling files into “‘a Zip
file or other single electronically secured file that may include compression
and/or encryption.’” Id. Appellant also argues that “Tinnirello does not
disclose such compressing of a given/now-previous version of an insurance
policy by recording differences between the given/now-previous version of
the insurance policy and a subsequent/now-current version of the insurance
policy.” Appeal Br. 18; Reply Br. 8–9.
Appeal 2019-001478
Application 12/566,452

13
Appellant’s arguments challenging the proposed combination of the
references are unpersuasive, because they are not directed to the Examiner’s
specific findings. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981). Here, Appellant attacks the prior
art references individually, even though the Examiner relied on the
combined teachings of Haydon and Tinnirello and cites specific portions of
each reference for teaching or suggesting the disputed limitation with
sufficient details and states a reasonable rationale for combining those
teachings.
First, the Examiner finds Haydon discloses the recited elements of
storing an insurance policy and its revisions by recording the current version
as the now-previous version and the differences between the now-previous
version and the now-current version of the policy. See Final Act. 6–7 (citing
Haydon ¶¶ 26–32). Additionally, the Examiner finds Tinnirello discloses
compressing or encrypting a file, such as the data or documents used in
insurance industry. Final Act. 8 (citing Tinnirello ¶ 48); see also Ans. 12–
13. Therefore, the Examiner has mapped the claimed limitations to the
specific portions of the applied prior art.
Second, the Examiner has explained how the proposed modifications
to Haydon would have been obvious to one of ordinary skill in the art, based
Appeal 2019-001478
Application 12/566,452

14
on the cited teachings of the references. For example, the Examiner finds
using the methods of data files compression in Tinnirello would have
improved storing the insurance policy versions of Haydon. Final Act. 7.
Additionally, the Examiner explains that the improvement is based on
combining Haydon’s “insurance policy stored as a plurality of discrete
temporally-sequential policy data revisions” with Tinnirello’s “integrating
standardized financial statement for collection of data by an insurance
company using various compression algorithms for efficiency with different
types to include Zip for data, JPEG for images and PDF for documents.”
Ans. 13.
On this record, we are unpersuaded that the Examiner has erred in
concluding that the combination of Haydon and Tinnirello renders
independent claims 1, 11–14, and 18, as well as the remaining claims which
are not argued separately, obvious.
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Affirmed Reversed
1–21, 23, 24 § 101 Eligibility 1–21, 23, 24
1–21 § 103 Haydon, Tinnirello 1–21
23, 24 § 103 Haydon, Tinnirello,
Burton
23, 24
Overall
Outcome
1–21, 23, 24

Appeal 2019-001478
Application 12/566,452

15
FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED