Tina Wilson et al.Download PDFPatent Trials and Appeals BoardAug 13, 201914451193 - (D) (P.T.A.B. Aug. 13, 2019) Copy Citation 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 Copy with citationCopy as parenthetical citation