Tina Wilson et al.

Patent Trials and Appeals Board

Aug 13, 2019

14451193 - (D) (P.T.A.B. Aug. 13, 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.
14/451,193 08/04/2014 Tina Wilson MML-WSIT-005-US 1563
11850 7590 08/13/2019
DENTONS US LLP (Sophir-All Others)
ATTN: Eric Sophir
P.O. BOX 061080
CHICAGO, IL 60606-1080
EXAMINER
CHAKRAVARTI, ARUNAVA
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
08/13/2019 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):
SG.Sophir.AllOthers@dentons.com
eric.sophir@dentons.com
patents.us@dentons.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TINA WILSON and ZHIVAGO VELASCO
____________________

Appeal 2018-005085
Application 14/451,1931
Technology Center 3600
____________________

Before MARC S. HOFF, CATHERINE SHIANG, and JASON J. CHUNG,
Administrative Patent Judges.

HOFF, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from a Final Rejection of
claims 1–9 and 20–22.2 We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appellants’ invention is a system and method for guiding customers
on prioritizing insurance expenditures. Spec. ¶ 1. The method includes the
steps of authenticating the customer, retrieving data from a plurality of
databases, automatically calculating a solution, allowing the authenticated

1 Appellants state that the real party in interest is Massachusetts Mutual Life
Insurance Company. App. Br. 1.
2 Claims 10–19 have been cancelled.
Appeal 2018-005085
Application 14/451,193

2
customer to customize the solution, and presenting the solution to the
customer. Spec. ¶ 8. “Calculating a solution” includes the steps of generating
a user data structure comprising a persona of the user, comparing that user
data structure against a plurality of data structures comprising a plurality of
pre-defined personas, identifying a pre-defined persona that best matches the
persona of the user, and generating a prioritized list of suggested insurance
coverage based on the pre-defined persona. Spec. ¶ 59.
Claim 1 is reproduced below:
A method for optimizing an insurance expenditure of a
user, the
method comprising:
receiving, by a server computer, over a first
network, from a client computing device, a transmission
comprising an optimization request input into the client
computing device;
authenticating, by the server computer, the
optimization request;
initiating, by the server computer, over the first
network, an authenticated session with the client
computing device;
during the authenticated session:
querying, by the server computer, over a second
network, a plurality of database management systems for
a plurality of records, wherein the database management
systems are hosted on a plurality of database servers,
wherein the database management systems manage a
plurality of databases hosted on the database servers,
wherein the databases are organized according to a plurality of
schemas that are different from each other such that the records
are different from each other schematically, wherein the records
are associated with the client
computing device, wherein the client computing device is
external to the second network;
retrieving, by the server computer, over the second
network, the records from the databases as queried;
Appeal 2018-005085
Application 14/451,193

3
consolidating, by the server computer, the records as
retrieved into a first data set;
generating, by the server computer, a first page of a
graphical user interface, wherein the first page is programmed
to depict a tabular form and to receive a confirmation input,
wherein the tabular form includes a plurality of data fields
corresponding to the first data set;
presenting, by the server computer, over the first
network, the first page to the client computing device;
populating, by the server computer, over the first
network, the tabular form based on the first data set such that
the data fields contain the first data set that is modifiable via the
client computing device;
receiving, by the server computer, over the first network,
the confirmation input from the client computing device,
wherein the confirmation input contains a second data set
formed from the data fields in the tabular form as populated or
as modified;
generating, by the server computer, a user data structure
comprising a persona of the user based on the second data set;
comparing, by the server computer, the user data
structure against a plurality of data structures comprising a
plurality of pre-defined personas formed based on demographic
and insurance information of other users stored in the
databases;
identifying, by the server computer, a pre-defined
persona of the pre-defined personas that best matches the
persona of the user;
generating, by the server computer, a second page of the
graphical user interface based on the pre-defined persona as
identified, wherein the second page is programmed to depict an
inverted pyramid, a priority list that is static, a suggested
coverage list that is dynamic, and a button, wherein the inverted
pyramid is positioned between the priority list and the
suggested coverage list, wherein the inverted pyramid contains
an insurance expenditure list that is dynamic, wherein the
priority list, the insurance expenditure list, and the suggested
coverage list are linearly co-aligned with each other such that
the priority list ranks the insurance expenditures list in order of
Appeal 2018-005085
Application 14/451,193

4
importance based on the pre-defined persona and the suggested
coverage list advises a source or an allocation to the insurance
expenditure list based on the pre-defined persona, wherein the
button is programmed to lead the client computing device to a
third page of the graphical user interface, wherein the third page
is programmed to depict a plurality of gradual level selectors
and a plurality of output elements, wherein the gradual level
selectors correspond to the output elements such that the output
elements present a plurality of values selected via the gradual
level selectors, wherein the third page includes a salary input
field, a sum field, and a
budget field, wherein the sum field sums the output values,
wherein the budget field corresponds to a difference between
the salary input field and the sum field, wherein the suggested
coverage list is based on the budget field; and
transmitting, by the server computer, over the first
network, to the client computing device, the second page such
that the button can be activated via the client computing device.

Claims 1–9 and 20–22 stand rejected under 35 U.S.C. § 112(a) as
failing to comply with the written description requirement. Final Act. 2.
Claims 1–9 and 20–22 stand rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter. Final Act. 3.
Claims 1–9 and 20–22 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Samson and Garcia. Final Act. 5.
Throughout this decision, we make reference to the Appeal Brief
(“App. Br.,” filed Dec. 13, 2017), the Reply Brief (“Reply Br.,” filed Apr.
17, 2018), and the Examiner’s Answer (“Ans.,” mailed Mar. 22, 2018) for
their respective details.
ISSUES
1. Does the limitation “a plurality of schemas” constitute new matter?
2. Does the claimed invention recite an abstract idea?
Appeal 2018-005085
Application 14/451,193

5
3. Is the recited abstract idea integrated into a practical application?
4. Does the Examiner provide factual support for the finding that the
claims recite limitations that are well-understood, routine, and conventional?
5. Does Samson teach or fairly suggest generating a user data
structure comprising a persona of the user, and comparing that user data
structure against a plurality of data structures comprising a plurality of pre-
defined personas formed based on demographic and insurance information
of other users?
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 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.”).
Appeal 2018-005085
Application 14/451,193

6
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, 192 (1981)); “tanning, dyeing, making waterproof cloth,
vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning
v. Burden, 56 U.S. 252, 267–67 (1854))); and manufacturing flour
(Benson, 409 U.S. at 67 (citing Cochrane v. Deener, 94 U.S. 780, 785
(1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 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.”).
Having said that, the Supreme Court also indicated that a claim “seeking
patent protection for [a] 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. at 191 (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.”).
Appeal 2018-005085
Application 14/451,193

7
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 omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting
Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer
implementation[] fail[s] to transform that abstract idea into a patent-
eligible invention.” Id.
The PTO recently published revised guidance on the application of
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance (“Memorandum”). 84 Fed. Reg. 50–
57. Under that 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); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
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
are not “well-understood, routine, conventional” in the field
Appeal 2018-005085
Application 14/451,193

8
(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.
See Memorandum.
ANALYSIS
SECTION 112(A) REJECTION
Independent claims 1 and 21 recite, in pertinent part, “wherein the
databases are organized according to a plurality of schemas.” The Examiner
rejected the claims under § 112(a) because “plurality of schemas” was
determined to constitute new matter. Final Act. 3.
Appellants argue that the Specification implicitly and inherently
discloses “a plurality of schemas,” citing to paragraphs 8, 9, and 32–36.
App. Br. 6. The Examiner finds that there is no explicit recitation of schemas
in the originally filed disclosure. Ans. 3.
Appellants assert in reply that the Specification discloses various
databases for storing a plurality of different types of information, which
necessarily include different forms of data organization, i.e., schemas. Reply
Br. 3; Spec. ¶ 30.
We are not persuaded by Appellants’ arguments. The Examiner is
correct that there was no original disclosure of “schemas.” Ans. 3. The
Specification discloses that “[d]atabases of census data 102, customer data
104, BLS study data 106, record keeping data 108, and predefined data 110
may be implemented through known database management systems . . . such
as, for example, MySQL, PostgreSQL, SQLite, Microsoft SQL server,
Microsoft Access, Oracle, SAP, dBASE, FoxPro, IBM DB2, LibreOffice
Appeal 2018-005085
Application 14/451,193

9
Base, FileMaker Pro and/or any other type of database that may organize
collections of data.” Spec. ¶ 32. Such a disclosure that any of a plurality of
database management systems may be present on the application server is
not equivalent to disclosure that the databases actually hosted on the
database servers are organized according to a plurality of schemas that are
different from each other such that the records are different from each other
schematically, as claim 1 requires. There is no disclosure that any of the
enumerated possible databases are organized according to a schema that is
different from another of the enumerated databases.
The Specification also discloses software modules implemented in a
system that has a plurality of databases for storing a plurality of different
types of information. Spec. ¶ 30. We do not agree with Appellants that
“storing a plurality of different types of information” necessarily includes
“different forms of data organization, i.e., schemas.” Reply Br. 3. Appellants
offer no evidence in support of this assertion of inherency. Due to this lack
of evidence, we regard the various disclosure in the Specification to, at most,
render obvious a plurality of database organized according to a plurality of
schemas that are different from each other, as the independent claims
require. Mere obviousness is not sufficient written description. The written
description requirement does not require in haec verba recitation, but a
description that merely renders the invention obvious does not satisfy the
requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352.
We conclude that the originally filed Specification does not provide
explicit or inherent support for the claim recitation: “databases are
organized according to a plurality of schemas that are different from each
Appeal 2018-005085
Application 14/451,193

10
other.” We sustain the Examiner’s § 112(a) rejection of claims 1–9 and 20–
22.
SECTION 101 REJECTION
With regard to subject matter eligibility, Appellants make a unitary
argument directed to all pending claims. App. Br. 7–9. Accordingly, we
select independent claim 1 as representative of the rejected claims.
Claim 1 recites the following limitations:
(a) receiving an optimization request input into a client computing
device;
(b) authenticating the optimization request;
(c) initiating an authenticated session;
(d) querying a plurality of database management systems for a
plurality of records, said systems being hosted on a plurality of
database servers, the database management systems managing a
plurality of databases, said databases organized according to a
plurality of schemas that are different from each other;
(e) retrieving records from the databases as queried;
(f) consolidating the retrieved records into a first data set;
(g) generating a first page of a graphical user interface (GUI) that
includes a plurality of fields corresponding to the first data set;
(h) presenting said first page said GUI to the client computing device,
populated with data from the first data set, then receiving a second
data set as confirmation input from the client, the second data set
formed from the data fields in the first page of the GUI as
populated or as modified;
(i) generating a user data structure comprising a persona of the user
based on the second data set;
(j) comparing the user data structure against a plurality of data
structures comprising a plurality of pre-defined personas formed
based on demographic and insurance information of other users;
(k) identifying a pre-defined persona that best matches the user’s
persona;
(l) based on the identified pre-defined persona, generating a second
page of the GUI, displaying a priority list of suggested insurance
coverage and expenditures, in the form of an inverted pyramid,
Appeal 2018-005085
Application 14/451,193

11
including a button to lead the client computing device to a third
page of the GUI;
(m) generating said third page of the GUI depicting level selectors,
corresponding to output elements, wherein the client may input
salary and in response the GUI will display a budget and a
suggested coverage list based on the budget; and
(n) transmitting the second page of the GUI to the client such that said
button may be activated via the client computing device.

These limitations, under the broadest reasonable interpretation,
constitute a plurality of steps to gather data concerning the client and
concerning other insurance company customers, followed by recommending
insurance products to the client based on the client’s best match to a pre-
defined “persona” based on other customers. The claim limitations recite the
operations that would ordinarily take place in counseling a client concerning
insurance products.
Limitations (a)-(c) correspond to initiation by the client of a request
for insurance product recommendations. Limitations (d)-(i) correspond to
the gathering and organizing of pertinent data to be used in making
insurance product recommendations. Limitation (j), “comparing,” and
limitation (k), “identifying,” are characteristic to the activity of
recommending insurance products based upon the preferences of other,
similarly situated customers. Limitation (l), generating and displaying a
prioritized list of recommended insurance products, is a core characteristic
of communicating with a client and recommending insurance products
pertinent to that client. Limitations (m) and (n) allow for client data input so
that the insurance product recommendations may be refined for the
particular client.
Appeal 2018-005085
Application 14/451,193

12
The Memorandum recognizes that certain groupings of subject matter
have been found by the courts to constitute judicially excepted abstract
ideas: (a) mathematical concepts, (b) certain methods of organizing human
activity,3 and (c) mental processes. Memorandum, 84 FR at 52. We

3 Alice, 573 U.S. at 219–20 (concluding that use of a third party to mediate
settlement risk is a “fundamental economic practice,” and thus, an
abstract idea); id. (describing the concept of risk hedging identified as an
abstract idea in Bilski as “a method of organizing human activity”); Bilski,
561 U.S. at 611–612 (concluding that hedging is a “fundamental economic
practice” and therefore an abstract idea); Bancorp Serv. LLC. v. Sun Life
Assur. Co. of Canada (U.S.), 687 F.3d 1266–1280 (Fed. Cir. 2012)
(concluding that “managing a stable value protected life insurance policy by
performing calculations and manipulating the results” is an abstract idea);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378–
79 (Fed. Cir. 2017) (holding that concept of “local processing of payments
for remotely purchased goods” is a “fundamental economic practice, which
Alice made clear is, without more, outside the patent system.”); OIP Techs.,
Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(concluding that claimed concept of “offer-based price optimization” is an
abstract idea “similar to other ‘fundamental economic concepts’ found to be
abstract ideas by the Supreme Court and this court”); buySAFE, Inc. v.
Google, Inc., 765 F.3d. 1350, 1355 (Fed. Cir. 2014) (holding that concept of
“creating a contractual relationship—a ‘transaction performance
guaranty’” is an abstract idea); In re Comiskey, 554 F.3d 967, 981 (Fed. Cir.
2009) (claims directed to “resolving a legal dispute between two parties by
the decision of a human arbitrator” are ineligible); Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014) (holding that claim
“describ[ing] only the abstract idea of showing an advertisement
before delivering free content” is patent ineligible); In re Ferguson, 558 F.3d
1359, 1364 (Fed Cir. 2009) (holding methods “directed to organizing
business or legal relationships in the structuring of a sales force (or
marketing company)” to be ineligible); Credit Acceptance, 859 F.3d 1044,
1054 (Fed. Cir. 2017) (“The Board determined that the claims are directed
to the abstract idea of ‘processing an application for financing a purchase.’ .
. . We agree.”); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1344–45
(Fed. Cir. 2018) (concluding that “[s]tanding alone, the act of providing
Appeal 2018-005085
Application 14/451,193

13
determine, as did the Examiner in the Final Rejection (Final Act. 4), that the
claims describe concepts that are similar to managing a stable value
protected life insurance policy (Bancorp), generating rule based tasks for
processing an insurance claim,4 creating a contractual relationship
(buySAFE), offer-based price optimization (OIP Techs.), and processing an
application for financing a purchase (Credit Acceptance), each of which
recites an invention found by courts to constitute “a fundamental economic
practice long prevalent in our system of commerce.” Alice, 573 U.S. at 216
(citations and internal quotation marks omitted).
Appellants’ argument that claims 20 and 22 recite Monte Carlo
optimization, which cannot be performed mentally, is not persuasive to show
Examiner error. App. Br. 9. Our conclusion that the claimed invention
recites a fundamental economic practice is not affected by the question
whether or not the steps of the claims may be performed mentally.
Accordingly, we conclude that the claims recite a fundamental
economic practice of recommending insurance products to a client,

someone an additional set of information without disrupting the ongoing
provision of an initial set of information is an abstract idea,” observing that
the District Court “pointed to the nontechnical human activity of passing a
note to a person who is in the middle of a meeting or conversation as further
illustrating the basic, longstanding practice that is the focus of the [patent
ineligible] claimed invention.”); Voter Verified, Inc. v. Election Systems &
Software, LLC, 887 F.3d 1376, 1385 (Fed. Cir. 2018) (finding the concept of
“voting, verifying the vote, and submitting the vote for tabulation,” a
“fundamental activity” that humans have performed for hundreds of years, to
be an abstract idea); In re Smith, 815 F.3d 816, 818 (Fed. Cir. 2016)
(concluding that “[a]pplicants’ claims, directed to rules for conducting a
wagering game” are abstract).
4 Accenture Global Servs. v. Guidewire Software, Inc., 728 F.3d 1336 (Fed.
Cir. 2013).
Appeal 2018-005085
Application 14/451,193

14
considered to be one of certain methods of organizing human activity, one of
the categories of abstract ideas recognized in the Memorandum. 84 Fed.
Reg. at 52. We, thus, conclude that the claims recite an abstract idea.

INTEGRATED INTO A PRACTICAL APPLICATION
We next evaluate whether the claims integrate the identified abstract
idea, of determining appropriate insurance products to recommend to a
client, into a practical application. See Memorandum, 84 Fed. Reg. at 51.
We consider whether there are any additional elements beyond the abstract
ideas that, individually or in combination, “integrate the [abstract ideas] into
a practical application, using one or more of the considerations laid out by
the Supreme Court and the Federal Circuit.” Id. at 54–55.
The Revised Guidance Memorandum provides exemplary
considerations that are indicative that an additional element may have
integrated the exception (i.e., the abstract idea recited in the claim) into a
practical application:
(i) an improvement to the functioning of a computer;
(ii) an improvement to another technology or technical field;
(iii) an application of the abstract idea with, or by use of, a
particular machine;
(iv) a transformation or reduction of a particular article to a
different state or thing; or
(v) other meaningful limitations beyond generally linking the
use of the abstract idea to a particular technological
environment.
See Memorandum, 84 FR at 55; MPEP §§ 2106.05(a)–(c), (e)–(h).
Appellants argue that the claims recite a set of sequential rules that
improve computer-related technology by allowing a computer performance
of a function not previously performable by a computer, App. Br. 7; Reply
Appeal 2018-005085
Application 14/451,193

15
Br. 14. Appellants contend that (independent claims) “1 and 21 are similar to
McRo and Trading Technologies due to the use of concrete and non-generic
graphical user interface pages with specific arrangements of graphics and
input elements.” App. Br. 8 (emphasis omitted).
We are not persuaded by Appellants’ argument. Appellants do not
support the allegation that the claimed invention permits computer
performance of a function not previously performable by a computer with
factual evidence. Unlike McRO, there is no disclosure by Appellants that the
disclosed prioritized recommendation of insurance products for a client was
not previously performable by a computer. In the nonprecedential Trading
Technologies decision, the court found patent eligibility as a consequence of
claims that “require a specific, structured graphical user interface paired with
a prescribed functionality directly related to the graphical user interface’s
structure that is addressed to and resolves a specifically identified problem in
the prior state of the art.” Trading Techs. Int’l, Inc. v. CQG, Inc., 670 Fed.
App’x. 1001, 1004 (Fed. Cir. 2017) (nonprecedential). Here, Appellants’
inverted-pyramid user interface merely accompanies a prioritized list of
recommended insurance products. No prescribed functionality directly
related to that interface structure is disclosed. Appellants describe the
problem in the prior art as customers’ “lack of understanding of insurance
policies,” which “may lead to mismanagement of insurance products,”
which “may result in wasting money paid in insurance premiums,” which
may create “a negative perception of the insurance industry.” Spec. ¶ 5.
Appellants’ disclosure concerning the inverted-pyramid user interface
describes the interface simply as a “priority list user interface” and does not
Appeal 2018-005085
Application 14/451,193

16
explain how the claimed inverted pyramid is addressed to and resolves a
specifically identified problem in the prior art.
Appellants’ analogy to the facts of Core Wireless Licensing S.A.R.L.
v. LG Electronics, Inc., 880 F.3d 1356, 1363 (Fed. Cir. 2018) is also
inapposite. Reply Br. 14. The court in Core Wireless Licensing reiterated
that prior cases require a specific improvement in a computer’s functionality.
The court determined that the invention’s “specific manner of displaying a
limited set of information to the user, rather than using conventional user
interface methods to display a generic index on a computer” recited “a
specific improvement over prior systems, resulting in an improved user
interface for electronic devices.” No such specific improvement in a
computer’s functionality is disclosed or claimed in the invention under
appeal. Appellants have not identified the disclosure of any such
improvement. Appellants’ invention is directed to the entrepreneurial
objective of “[a] large loyal customer base,” rather than to any specific
technological objective. Appellants’ specific disclosure of the claimed
inverted-pyramid interface, as discussed supra, does not express any specific
improvement in a computer’s functionality.
As we observed supra, we regard limitations (a)-(c), initiation by the
client of a request for insurance product recommendations, as insignificant
pre-solution activity. We regard limitations (d)-(i) to constitute further
insignificant extra-solution activity, to wit, data gathering steps. Limitations
(m) and (n) also constitute data gathering in that the client is invited to input
income and budget information.
We conclude that the claims do not recite additional elements that
integrate the recited abstract idea of recommending insurance products to a
Appeal 2018-005085
Application 14/451,193

17
client into a practical application under the considerations laid out by the
Supreme Court and the Federal Circuit.

INVENTIVE CONCEPT
Last, we consider whether claims 1–9 and 20–22 express an inventive
concept, i.e., whether any additional claim elements “‘transform the nature
of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217
(quoting Mayo, 566 U.S. at 78, 79). This requires us to evaluate whether the
additional claim elements add “a specific limitation or combination of
limitations that are not well-understood, routine, and conventional activity in
the field” or “simply append[] well-understood, routine, conventional
activities previously known to the industry, specified at a high level of
generality.” Memorandum, 84 Fed. Reg. at 50, 56.
The Examiner finds, in the Answer, that “the limitations of – querying
databases, generating pages, pyramids, retrieving records, consolidating
datasets, generating GUI pages, receiving user input, comparing personas,
generating graphical objects like inverted triangles and level selectors etc., –
recite no more than well-understood, routine, and conventional activities
previously known in the asset management and insurance industries.” Ans.
8–9.
Appellants argue that the Examiner’s position regarding well-
understood, routine, and conventional activities lacks evidentiary support.
Reply Br. 11. “The question of whether a claim element or combination of
elements is well-understood, routine, and conventional to a skilled artisan in
the relevant field is a question of fact.” Berkheimer v. HP Inc., 881 F.3d
1360, 1368 (Fed. Cir. 2018).
Appeal 2018-005085
Application 14/451,193

18
We agree with Appellants that the Examiner neither cited factual
evidence, nor properly took Official Notice of facts, tending to establish that
limitations concerning additional elements beyond the abstract idea of
recommending insurance product purchase recite well-understood, routine,
and conventional activities. The Examiner’s Answer contains further
explanation of the Examiner’s position. For example, the Examiner explains
that the “querying” limitation “describes the standard and routine series of
steps carried out by a user to retrieve data from any of the modern data
relational databases.” Ans. 9. (The Examiner further addresses, without
factual support, “schemas,” “generating a graphical user interface,”
“inverted pyramid,” and “sliders.” Ans. 10–12.) The Examiner does not,
however, cite to factual evidence, or take Official Notice of any facts,
concerning well-understood, routine, and conventional activities.

SUBJECT MATTER ELIGIBILITY - CONCLUSION
We conclude that the claims recite a process of recommending
insurance products to a client, which we conclude to constitute a
fundamental economic practice, one of certain methods of organizing human
activity found by the courts to constitute an abstract idea.
We further conclude that the claims do not integrate the identified
abstract idea into a practical application.
We further determine that the Examiner lacks factual support for the
finding that certain claim limitations represent well-understood, routine, and
conventional activities.
Accordingly, we do not sustain the Examiner’s 35 U.S.C. § 101
rejection of claims 1–9 and 20–22.
Appeal 2018-005085
Application 14/451,193

19
OBVIOUSNESS REJECTION
Claim 1 recites, in pertinent part, (a) generating, by the server
computer, a user data structure comprising a persona of the user, and
(b) comparing, by the server computer, the user data structure against a
plurality of data structures comprising a plurality of pre-defined personas
formed based on demographic and insurance information of other users.
Claim 21 recites highly similar limitations.
The Examiner finds that Samson teaches the claimed “generating” and
“comparing” steps. Final Act. 7; Spec. ¶¶ 28, 47, 64, 65. Appellants argue
that Samson fails to teach comparing the user data structure against a
plurality of data structures comprising a plurality of pre-defined personas.
App. Br. 11.
We agree with Appellants’ argument. We have reviewed the portions
of Samson relied upon by the Examiner. Even assuming arguendo that the
user profile disclosed in Samson (¶ 28) may be fairly construed to be the
“user data structure comprising a persona of the user,” the cited portion of
Samson does not teach comparing that user data structure against a plurality
of data structures comprising a plurality of pre-defined personas. At most,
the cited portion of Samson teaches that a user may “choose to alter one or
more parameters which drive the retirement planning process” and see the
financial planning results as Samson’s “investment guidance system
evaluate[s] the assets at retirement, the assumed rate of return, the risk
assessment, the wealth forecast, and the probability of meeting the goal to
retire.” Samson ¶ 64.
We find that the combination of Samson and Garcia fails to teach or
suggest all of the elements of the invention recited in independent claims 1
Appeal 2018-005085
Application 14/451,193

20
and 21. We do not sustain the Examiner’s § 103(a) rejection of claims 1–9
and 20–22.

CONCLUSIONS
1. The limitation “a plurality of schemas” constitutes new matter.
2. The claimed invention recites an abstract idea.
3. The recited abstract idea is not integrated into a practical
application.
4. The Examiner does not provide factual support for the finding that
the claims recite limitations that are well-understood, routine, and
conventional.
5. Samson does not teach or fairly suggest generating a user data
structure comprising a persona of the user, and comparing that user data
structure against a plurality of data structures comprising a plurality of pre-
defined personas formed based on demographic and insurance information
of other users.

ORDER
The Examiner’s decision to rejection claims 1–9 and 20–22 under
35 U.S.C. § 112(a) is affirmed. The Examiner’s decision to reject claims 1–9
and 20–22 under 35 U.S.C. § 101 is reversed. The Examiner’s decision to
reject claims 1–9 and 20–22 under 35 U.S.C. § 103 as being unpatentable
over Samson and Garcia is reversed.

Appeal 2018-005085
Application 14/451,193

21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).

AFFIRMED