William Loo et al.

Patent Trials and Appeals Board

Oct 1, 2019

13652010 - (D) (P.T.A.B. Oct. 1, 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.
13/652,010 10/15/2012 William Loo 006591.00402\US 5137
71823 7590 10/01/2019
BANNER & WITCOFF , LTD
ATTORNEYS FOR CLIENT NUMBER 006591
71 SOUTH WACKER DR.
SUITE 3600
CHICAGO, IL 60606
EXAMINER
BRINDLEY, BENJAMIN S
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
10/01/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PTO-71823@bannerwitcoff.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM LOO, STEPHEN HUGHES, JAMES GILLEPSIE,
JENNIFER A. BRANDMAIER, and DANIEL KOZA
Appeal 2018-006818
Application 13/652,010
Technology Center 3600
Before ST. JOHN COURTENAY III, LARRY J. HUME, and
PHILLIP BENNETT, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 appeals from the
Examiner’s decision rejecting claims 1, 2, 4, 5, 7, 12, 22, 23, 27–29, 31–33,
and 36–41, which are all claims pending in the application. Appellant has
canceled claims 3, 6, 8–11, 13–21, 24–26, and 30. Final Act. 2. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicants” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as Allstate
Insurance Company. App. Br. 2.
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STATEMENT OF THE CASE2
The Invention
The claims are directed to vehicle financing. See Title. In particular,
Appellant’s disclosed embodiments and claimed invention relate to vehicle
financing decisions. Spec. ¶ 3.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A vehicle financing system comprising:
a mobile computing device comprising a first processor,
a memory unit, a wireless communications interface, and a
digital camera, configured to:
receive first vehicle operation data collected by
first on-board vehicle sensors of a first vehicle;
capture a digital image of the first vehicle;
analyze the digital image to determine a vehicle
identification number (VIN) based on the digital image;
and
transmit the determined VIN and first vehicle
operation data to a vehicle financing server; and the
vehicle financing server comprising a second processor
and computer-executable instructions in a memory unit,
the vehicle financing server configured to:

2 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed
Dec. 20, 2017); Reply Brief (“Reply Br.,” filed June 18, 2018); Examiner’s
Answer (“Ans.,” mailed April 19, 2018); Final Office Action (“Final Act.,”
mailed July 27, 2017); and the original Specification (“Spec.,” filed
Oct. 15, 2012).
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receive the VIN and the first vehicle operation data
from the mobile computing device;
calculate, based on the first vehicle operation data,
an estimated fuel usage for the first vehicle;
retrieve second vehicle operation data collected by
second on-board vehicle sensors of a second vehicle
associated with a potential purchaser of the first vehicle;
determine, based on the second vehicle operation
data, a value indicative of driving habits of the potential
purchaser of the first vehicle;
modify, based on the value indicative of driving
habits of the potential purchaser, the estimated fuel usage
for the first vehicle;
calculate a plurality of loan parameters based at
least in part on the first vehicle operation data and the
modified estimated fuel usage; and
transmit an indication of the plurality of loan
parameters to the mobile computing device.
Rejection on Appeal
Claims 1, 2, 4, 5, 7, 12, 22, 23, 27–29, 31–33, and 36–41 stand
rejected under 35 U.S.C. § 101 as being directed to patent-ineligible subject
matter. Final Act. 3.
CLAIM GROUPING
Based on Appellant’s arguments (App. Br. 15–21) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent-
ineligible subject matter rejection of claims 1, 2, 4, 5, 7, 12, 22, 23, 27–29,
31–33, and 36–41 on the basis of representative claim 1.
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ISSUE
Appellant argues (App. Br. 15–21; Reply Br. 2–6) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?
PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.3
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. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
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. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we

3 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. MPEP § 2106.
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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,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “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))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; 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 that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
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to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (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.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
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. (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.
B. USPTO Revised Guidance
The PTO recently published revised guidance in the Federal Register
concerning the application of § 101. 2019 Revised Patent Subject Matter
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Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised 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);4 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).5
See Revised Guidance 52–53.
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.6
See Revised Guidance 56.

4 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
5 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
6 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;
(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in situations identified in the Revised Guidance.7
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim

7 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Integration of the Judicial Exception into
A Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial
exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,8
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity

8 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.
Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element.9 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
“significantly more” than the recited judicial exception (e.g., because the
additional elements were unconventional in combination).10 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an

9 See, e.g., Diehr, 450 U.S. at 187.
10 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR
Holdings v. Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
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inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself).11
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific
limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
III.B.12
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the

11 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he 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).
12 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning
evaluation of well-understood, routine, conventional activity, see MPEP
§ 2106.05(d), as modified by the USPTO Berkheimer Memorandum
(USPTO Commissioner for Patents Memorandum dated Apr. 19, 2018,
“Changes in Examination Procedure Pertaining to Subject Matter Eligibility,
Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)”
(hereinafter “Berkheimer Memo”).
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examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).
3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance, and see Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
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exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
ANALYSIS
Step 1 – Statutory Category
Claim 1, as a system claim, recites one of the enumerated categories
of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue before us
is whether it is directed to a judicial exception without significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to “fundamental
economic practice, an idea of itself, and certain methods of organizing
human activities.” Final Act. 3.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
First, we look to the Specification to provide context as to what the
claimed invention is directed to. In this case, the Specification discloses that
the invention relates to “determining vehicle financing decisions.” Spec.
¶ 3.
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Appellant’s Abstract describes the invention as:
Financing determinations for sale and purchase transactions of
vehicles may be performed based on buyer financial data,
vehicle sale price, and additional vehicle-specific data, for
example, vehicle insurance records, maintenance records, and
vehicle operation sensor data. Additional data for performing
financing determinations may include data corresponding to the
prospective buyer and/or seller of the vehicle, for example,
insurance records, maintenance records, or vehicle sensor data
for other vehicles associated with the prospective buyer or
seller.
Spec. 44.
In TABLE ONE below, we identify in italics the specific claim
limitations that we conclude recite an abstract idea. We additionally identify
in bold the additional (non-abstract) claim limitations that are generic
computer components and techniques or persons:
TABLE ONE
Independent Claim 1 Revised Guidance
A vehicle financing system
comprising:
A system is a statutory subject matter
class. See 35 U.S.C. § 101.
a mobile computing device
comprising a first processor, a
memory unit, a wireless
communications interface, and
a digital camera
Generic computer components. See
Spec. pars. 13–16, 20–22.
receive first vehicle operation
data collected by first on-board
vehicle sensors of a
first vehicle;
Receiving information, i.e., data
gathering, is insignificant extra-
solution activity. Revised Guidance
55, n.31; see also MPEP
§ 2106.05(g).
capture a digital image of the
first vehicle
Capturing a digital image, i.e., data
gathering, is insignificant extra-
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Independent Claim 1 Revised Guidance
solution activity. Revised Guidance
55, n.31; see also MPEP
§ 2106.05(g).
analyze the digital image to
determine a vehicle
identification number (VIN)
based on the digital image;
Abstract idea, i.e., “analyze” could be
performed alternatively as a mental
process. See Revised Guidance 52.
transmit the determined VIN and
first vehicle operation data to a
vehicle financing server;
Transmitting data is insignificant
extra-solution activity. Revised
Guidance 55, n.31; see also MPEP
§ 2106.05(g).
the vehicle financing server
comprising a second processor
and computer-executable
instructions in a memory unit,
the vehicle financing server
configured to:
Generic computer components. See
Spec. 13–16, 22.
receive the VIN and the first
vehicle operation data from the
mobile computing device;
Receiving information, i.e., data
gathering, is insignificant extra-
solution activity. Revised Guidance
55, n.31; see also MPEP
§ 2106.05(g).
calculate, based on the first
vehicle operation data, an
estimated fuel usage for the first
vehicle;
Abstract idea, i.e., “Mathematical
Concepts,” e.g., “mathematical
calculations.” See Revised Guidance
52.
retrieve second vehicle operation
data collected by second on-
board vehicle sensors of a
second vehicle associated with
a potential purchaser of the
first vehicle;
Receiving information, i.e., data
gathering, is insignificant extra-
solution activity. Revised Guidance
55, n.31; see also MPEP
§ 2106.05(g).
determine, based on the second
vehicle operation data, a value
indicative of driving habits of
Abstract idea, which could be
performed alternatively as a “Mental
Process”, e.g., “concepts performed in
the human mind (including an
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Independent Claim 1 Revised Guidance
the potential purchaser of the
first vehicle
observation, evaluation, judgment,
opinion).” See Revised Guidance 52.
modify, based on the value
indicative of driving habits of
the potential purchaser, the
estimated fuel usage for the first
vehicle;
Abstract idea, which could be
performed alternatively as a “Mental
Process”, e.g., “concepts performed in
the human mind (including an
observation, evaluation, judgment,
opinion).” See Revised Guidance 52.
calculate a plurality of loan
parameters based at least in part
on the first vehicle operation
data and the modified estimated
fuel usage;
Abstract idea, i.e., “Mathematical
Concepts,” e.g., “mathematical
calculations.” See Revised Guidance
52.
transmit an indication of the
plurality of loan parameters to
the mobile computing device.
Transmitting information for display
is insignificant post-solution activity.
Revised Guidance 55, n.31; see also
MPEP § 2106.05(g); and see
buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014)
(computer receives and sends
information over a network).
Claims App’x.
We conclude the claimed invention, when viewed as a whole, recites
certain method of organizing human activity, i.e., fundamental economic
practices (mitigating risk of a financial transaction). Bancorp Servs., LLC v.
Sun Life Assurance Co. of Can. (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).
This type of activity, i.e., calculating and evaluating vehicle financing
loan parameters, as recited by the combination of limitations, and aside from
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any computer-related aspects, e.g., the recited “mobile computing device,”
includes longstanding conduct that existed well before the advent of
computers and the Internet, and could be carried out by a human with pen
and paper. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1375 (Fed. Cir. 2011).13
Under the broadest reasonable interpretation standard,14 we conclude
each of the limitations recite features that may be utilized when engaged in
the fundamental economic practice of vehicle financing and calculating loan
parameters for vehicle financing.

13 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas).
14 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
vehicle financing system recites a judicial exception. We conclude claim 1,
under our Revised Guidance, recites certain methods of organizing human
activity, i.e., a fundamental economic practice, including mitigating financial
risk, and thus is an abstract idea.
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
As to the specific limitations, we find limitations including “receive
first vehicle operation data,” “capture a digital image,” “receive the VIN and
the first vehicle operation data,” recite insignificant data gathering. See
MPEP § 2106.05(g). Data gathering, as performed by the functions in
Appellant’s claims, is a classic example of insignificant extra-solution
activity. See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc),
aff’d sub nom, Bilski v. Kappos, 561 U.S. 593 (2010).
We also find limitations “transmit the determined VIN and first
vehicle data,” and “transmit an indication of the plurality of loan
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parameters” recite insignificant post solution activity.15 The Supreme Court
guides that the “prohibition against patenting abstract ideas ‘cannot be
circumvented’ [by] adding ‘insignificant postsolution activity.’” Bilski, 561
U.S. at 610–11 (quoting Diehr, 450 U.S. at 191–92). On this record, we are
of the view that Appellant’s claims do not operate the recited generic
computer components in an unconventional manner to achieve an
improvement in computer functionality. See MPEP § 2106.05(a).
We find each of the italicized limitations of claim 1 above recite
abstract ideas as identified in Step 2A(i), supra, and none of the additional
limitations of claim 1 integrate the judicial exception of vehicle financing
into a practical application as determined under one or more of the MPEP
sections cited above. The claim as a whole merely uses instructions to
implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed. Cir.
2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a

15 We also note the “determining” and “calculating” limitations can be
carried out by a human in the mind or by use of pen and paper. See
CyberSource, 654 F.3d at 1375.
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particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of
Manual of Patent Examining Procedure section 2106.05(a) (“Improvements
to the Functioning of a Computer or to Any Other Technology or Technical
Field”) or section 2106.05(e)(“Other Meaningful Limitations”). Nor does
Appellant advance any arguments in the Brief(s) that are directed to the
Bilski machine-or-transformation test, which would only be applicable to the
method (process) claims on appeal. See MPEP §§ 2106.05(b) (Particular
Machine) and 2106.05(c) (Particular Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an ‘inventive concept’ in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)).
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In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patent-eligible subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d
709, 715 (Fed. Cir. 2014). We look to see whether there are any “additional
features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea16; mere instructions to implement an
abstract idea on a computer17; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.18
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
vehicle financing into a patent-eligible application of that abstract idea.

16 Alice, 573 U.S. at 221–23.
17 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84–85).
18 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he 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, 881 F.3d at 1368.
Appellants contend the Examiner erred by not providing a supported
explanation, as required by our reviewing court’s holding in Berkheimer, of
“why the claimed invention is not ‘significantly more’ than any alleged
abstract idea under step 2 of the Mayo/Alice eligibility test. Instead, they
rely on the unsupported assertions that the additional elements ‘are generic
computer functions routinely used in computer applications’ (emphasis
added) and ‘are well-understood, routine, and conventional activities [that]
amount to no more than implementing the abstract idea with a computerized
system,’” Reply Br. 2 (citing Ans. 8).
As evidence of the conventional nature of the recited “mobile
computing device,” “processor,” “memory unit,” “wireless communications
interface,” “digital camera,” “vehicle sensors of a vehicle,” and “vehicle
financing server” in system claim 1, the Specification discloses these as
generic components. See Spec. ¶¶ 13,–16, 20–22, Fig. 2. For example, “any
suitable computer readable storage media may be utilized” (Spec. ¶ 13), and
“[t]he device 101 may have a processor 103 for controlling overall operation
of the device 101 and its associated components, including RAM 105, ROM
107, input/output module 109, and memory 115.” Spec. ¶ 14.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
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limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant’s
Specification, as identified above.19
The Manual of Patent Examining Procedure, based upon our
precedential guidance, provides additional considerations with respect to
analysis of the well-understood, routine, and conventional nature of the
claimed computer-related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim

19 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a system to determine vehicle financing that includes a “mobile
computing device,” “processor,” “memory unit,” “wireless communications
interface,” “digital camera,” “vehicle sensors of a vehicle,” and “vehicle
financing server” (claim 1) as argued by Appellant, and similarly for
claims 7, 27 and 33, is simply not enough to transform the patent-ineligible
abstract idea here into a patent-eligible invention under Step 2B. See Alice,
573 U.S. at 221 (“[C]laims, which merely require generic computer
implementation, fail to transform [an] abstract idea into a patent-eligible
invention.”).
We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea and
data collection using the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that Appellant’s claim 1, considered as a whole, is directed to a
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patent-ineligible abstract idea that is not integrated into a practical
application and does not include an inventive concept. Accordingly, we
sustain the Examiner’s § 101 rejection of independent claim 1, and grouped
claims 2, 4, 5, 7, 12, 22, 23, 27–29, 31–33, and 36–41 which fall therewith.
See Claim Grouping, supra.
CONCLUSION
Under our Revised Guidance, governed by relevant case law, we
conclude all claims in the rejection under 35 U.S.C. § 101 are directed to
patent-ineligible subject matter, and we sustain the rejection of claims 1, 2,
4, 5, 7, 12, 22, 23, 27–29, 31–33, and 36–41.
DECISION SUMMARY
Claims
Rejected
Basis Affirmed Reversed
1, 2, 4, 5, 7, 12,
22, 23, 27–29,
31–33, 36–41
§ 101 1, 2, 4, 5, 7, 12,
22, 23, 27–29,
31–33, 36–41

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)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED