ACLAIMANT, INC.

Patent Trials and Appeals Board

Oct 1, 2020

2020003654 (P.T.A.B. Oct. 1, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/627,646 02/20/2015 Michael A. Schultz 396184-991100 6459
26379 7590 10/01/2020
DLA PIPER LLP (US )
2000 UNIVERSITY AVENUE
EAST PALO ALTO, CA 94303-2248
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
10/01/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PatentDocketingUS-PaloAlto@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL A. SCHULTZ
____________

Appeal 2020-0036541
Application 14/627,646
Technology Center 3600
____________

Before BIBHU R. MOHANTY, MATTHEW S. MEYERS, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MEYERS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–21 which constitute all the claims pending in
this application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief
(“Appeal Br.,” filed November 20, 2019) and Reply Brief (“Reply Br.,” filed
April 13, 2020), and the Examiner’s Answer (“Ans.,” mailed February 12,
2020) and Final Office Action (“Final Act.,” mailed March 20, 2019).
Appellant identifies the real party in interest as “Aclaimant Inc.” (Appeal Br.
1).
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CLAIMED INVENTION
Appellant’s claims are
directed to an incident management and tracking system, which
is designed to: (1) make it easier to report and communicate
incidents in the workplace, (2) capture adequate information
quickly and seamlessly to simplify the claims adjudication
process, (3) integrate with third parties with built-in logic to
assist in the execution, investigation and executing a claim, (4)
capture information in a way that makes analysis and
investigation of trends simpler and easier.
Spec. ¶ 4.
Independent claims 1 and 2 are the independent claims on appeal.
Claim 1, reproduced below with bracketed notations added, is illustrative of
the claimed subject matter:
1. A method for enhancing workers compensation claim
administration to optimize claim resolution for an injured
employee, the method comprising:
[a] providing, with data processing hardware, a portal for
the injured employee to access, the portal in communication with
the data processing hardware;
[b] capturing, upon experiencing a claim event and using
a GPS device in a device of the injured user, a location of the
claim event;
[c] upon experiencing a claim event, accepting, at the data
processing hardware, a report from the injured employee on via
[sic] the portal to initiate a claim facilitation, the report including
the location of the claim event captured using the GPS device in
the device of the injured user;
[d] making, with the data processing hardware, the portal
accessible by related third party providers to enter information
related to the claim;
[e] displaying, at a computer connected to the portal
accessible by related third party providers, a map showing the
location of the claim event of the injured user based on the GPS
data; and
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[f] providing, with the data processing hardware,
incentives to the injured employee based on a condition of the
information entered by the third party providers

REJECTIONS
1. Claims 1–21 are rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
2. Claims 1–21 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shafer (US 2012/0022897 A1, pub. Jan. 26, 2012), Peak
(US 2011/0161100 A1, pub. June 30, 2011), and Wirz (US 8,666,786 B1,
iss. March 4, 2014).2
ANALYSIS
Patent-Ineligible Subject Matter
Under 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. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. 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. Alice, 573 U.S. 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 id. at 219 (“On their face, the claims before us are drawn to the concept

2 The Examiner indicates that claim 1–11 are rejected under this bases.
Final Act.8. However, the Examiner addresses claim 12–21 in the Final
Action. See id. at 14–16.
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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, 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 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 (Gottschalk, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Mayo/Alice 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, 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.
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The PTO recently published revised guidance on the application of
§ 101. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).3 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, i.e., that “apply, rely on, or use the judicial exception
in a manner that imposes a meaningful limit on the judicial exception, such
that the claim is more than a drafting effort designed to monopolize the
judicial exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53; see
also 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 is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or

3 In response to received public comments, the Office issued further
guidance on October 17, 2019, clarifying the 2019 Revised Guidance.
USPTO, October 2019 Update: Subject Matter Eligibility (the “October
2019 Update”) (available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df).

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(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 2019 Revised Guidance.
Independent claim 1 and dependent claims 2–11, 14–18, and 20
Appellant argues claims 1–11, 14–18, and 20 as a group (see Appeal
Br. 4–5; Reply Br. 1–4). We select independent claim 1 as representative.
Claims 2–11, 15–18, and 20 stand or fall with independent claim 1. See 37
C.F.R. § 41.37(c)(1)(iv).
Under the first step of the Mayo/Alice framework and Step 2A,
Prong 1 of the 2019 Revised Guidelines, 84 Fed. Reg. at 54, the Examiner
determines that exemplary independent claim 1 recites broadly the
concept of utilizing a computing device along with a graphical
user interface (a web portal) for users (injured employee, third
party providers) to access, capture, store, make, display, and
provide the incident related information. The claims merely use
a computing device along with a web portal (a graphical user
interface) for receiving and storing information related to an
incident from related personnel to build a database for later use.
Thus, the claims are directed to “a mental process” (processes of
collecting and organizing information), and thus “an idea of
itself.”
Final Act. 5. The Examiner further states that
other than the recitation of a generic computing device with a
web portal and a generic GPS, the claims contain limitations that
can practically be performed in the human mind (including an
observation, evaluation, judgment, and opinion). The claims do
not extend far beyond the mere use of a generic computing
device, a generic GPS with a generic instruction to implement
the abstract idea. The present claims are similar to those in the
Electric Power Group, LLC v. Alstom, S.A. case “collecting
information, analyzing it, and displaying certain results of the
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collection and analysis,” where the data analysis steps are recited
at a high level of generality such that they could practical be
performed in the human mind.
Ans. 5. Thus, when viewed through the lens of the 2019 Revised Guidance,
the Examiner’s analysis depicts the claimed subject matter as a “[m]ental
process[]—[a] concept[] performed in the human mind (including an
observation, evaluation, judgment, opinion).” 2019 Revised Guidance, 84
Fed. Reg. at 52 (footnotes omitted).
In response, Appellant argues that the Examiner erred in determining
that independent claim 1 is directed to an abstract idea because “the claims
recite a GPS receiver and capturing the location of an event using the GPS
receiver that is clearly not something that can be practically performed in the
human mind.” Appeal Br. 4; Reply Br. 1. We disagree.
Before determining whether the claim at issue is directed to an
abstract idea, we first determine to what the claim is directed. The Federal
Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter
to claims, considered in light of the specification, based on whether ‘their
character as a whole is directed to excluded subject matter.’” Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet
Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir.
2015)). It asks whether the focus of the claims is on a specific improvement
in relevant technology or on a process that itself qualifies as an “abstract
idea” for which computers are invoked merely as a tool. See id. at 1335–36.
Here, it is clear from the Specification, and the claim language, that the
focus of claim 1 is on an abstract idea, and not on any improvement to
technology and/or a technical field.
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In this regard, we note that the Specification is titled “SYSTEMS
AND METHODS FOR PROCESSING WORKERS COMPENSATION
CLAIM ADMINISTRATION TO FACILITATE CLAIM RESOLUTION,”
and states that the present invention utilizes “mobile devices, mobile and
web applications, and people to reduce the time it takes an injured worker to
report and resolve or treat an injury, illness or accident at the worksite, and
improving safety of workplace conditions through the use of data analysis.”
(Spec. ¶ 1). According to the Specification, the present invention
will reduce the time it takes an injured employee to return to
health, return to work, meet regulatory, compliance and
administrative reporting required in the workers compensation
claim execution process and improve the ease with which
employers are able to identify and correct dangerous or
hazardous areas in the work place.
Id. To that end, the Specification identifies that “embodiments of the
present application provide a series of tools throughout an organization that
organizes and synchronizes information capture, distribution, and
subsequent follow-up related to incidents as they occur in the workplace and
as they are related to the work comp process.” Id. ¶ 4.
Consistent with this description, independent claim 1 recites broadly
“[a] method for enhancing workers compensation claim administration to
optimize claim resolution for an injured employee” including the steps of
“providing . . . a portal for the injured employee to access,” upon
experiencing a claim event, “capturing . . . a location of the claim event”
using a GPS device, “accepting . . . a report from the injured employee” at
“the portal to initiate a claim facilitation” “including the location of the
claim event,” “making . . . the portal accessible by related third party
providers to enter information related to the claim,” “displaying . . . a map
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showing the location of the claim event,” and “providing . . . incentives to
the injured employee based on” third party provider information.
Upon reviewing the Specification and the claim as whole, as
summarized above, we agree with the Examiner that the focus of
independent claim 1 is on a
method of utilizing a generic computing device along with a web
portal and a generic GPS for users (injured employee, third party
providers) for receiving information (providing a portal for
injured employee to access, capture, and initiate a claim
facilitation), storing information (accepting report to initiate a
claim facilitation), making the stored information accessible
(making and displaying the portal accessible to others, i.e., third
party), and providing information (displaying map and providing
incentives).
Ans. 5 (emphases added). And, when considered collectively and under the
broadest reasonable interpretation of the claim limitations, the limitations of
claim 1 simply recite a method, performed by conventional computing
devices (see, e.g., Spec. ¶¶ 30, 33, 40, 43, 60, 62, 64–66), for enhancing and
optimizing workers compensation claim administration. We note that
limitation [b] recites capturing a location “using a GPS device,” but does not
specify whether an injured user is simply utilizing information from the GPS
device to input the location information into the “data processing hardware”
manually or whether the GPS device itself is reporting the location
information in some other way.4

4 As discussed in greater detail below, the Specification describes using a
generic GPS device according to its conventional operation, devoid of any
particular technological implementation for doing so. See, e.g., Spec. ¶¶ 31,
52, 53, 64.
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The Federal Circuit has held similar concepts to be abstract. For
example, the Federal Circuit has held that abstract ideas include the concepts
of collecting data, analyzing the data, and reporting the results of the
collection and analysis, including when limited to particular content. See,
e.g., Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (identifying the abstract idea of collecting, displaying,
and manipulating data); Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d
1350, 1354 (Fed. Cir. 2016) (characterizing collecting information,
analyzing information by steps people go through in their minds, or by
mathematical algorithms, and presenting the results of collecting and
analyzing information, without more, as matters within the realm of abstract
ideas); see also SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168
(Fed. Cir. 2018) (“As many cases make clear, even if a process of collecting
and analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” (quoting Elec. Power Grp., 830 F.3d at 1353, 1355 (citing cases)).
The Federal Circuit also held in SmartGene, where the claim did no more
than call for a computing device with basic functionality, that comparing
new and stored information and using rules to identify options is an abstract
idea. SmartGene, Inc. v. Advanced Biological Labs, S.A., 555 F. App’x 950,
955 (Fed. Cir. 2014).
We disagree with Appellant’s argument that independent claim 1 is
not directed to an abstract idea because “the claims recite generating and
displaying a map with the location (generated by the GPS receiver) that also
clearly cannot be practically performed in the human mind.” Appeal Br. 5;
Reply Br. 1. A substantially similar argument was expressly rejected by the
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Court in Alice. See Alice Corp., 134 S. Ct. at 2358 (“the mere recitation of a
generic computer cannot transform a patent-ineligible abstract idea into a
patent-eligible invention”). Although “a method that can be performed by
human thought alone is merely an abstract idea and is not patent-eligible
under § 101,” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366,
1373 (Fed. Cir. 2011), it does not logically follow that methods that arguably
cannot be performed either entirely in the human mind or manually, using
pen and paper, are, therefore, not directed to abstract ideas. Here, as the
Examiner points out,
other than the recitation of a generic computing device with a
web portal and a generic GPS, the claims contain limitations that
can practically be performed in the human mind (including an
observation, evaluation, judgment, and opinion). The claims do
not extend far beyond the mere use of a generic computing
device, a generic GPS with a generic instruction to implement
the abstract idea.
Ans. 5; see also id. at 4–5 (“[T]he word ‘GPS’ appears only once in each of
paragraphs 31, 52, 53, and 64 of the Appellant’s [S]pecification and is
recited at a high level of generality (i.e., a generic GPS to capture and
display location information).”).
Accordingly, we conclude independent claim 1 recites a mental
process, i.e., a concept performed in the human mind, including
observations, evaluations, judgments, and opinions, which is one of the
groupings of abstract ideas identified in the 2019 Revised Guidance, 84 Fed.
Reg. at 52.
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea, we turn to the second prong of step 2A of the 2019 Revised
Guidance and determine whether the claims recite a practical application of
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the recited judicial exception. Here we look to see if, for example, (i) any
additional elements of the claims reflects an improvement in the functioning
of a computer or to another technological field, (ii) an application of the
judicial exception with, or by use of, a particular machine, (iii) a
transformation or reduction of a particular article to a different state or thing
(iv) or a use of the judicial exception in some other meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment. See 2019 Revised Guidance, at 55; See also
MPEP § 2106.05(a)–(c), (e)–(h).
We find no indication in the Specification, nor does Appellant direct
us to any indication (see, e.g., Appeal Br. 5; Reply Br. 3), that the steps
recited in independent claim 1 invoke any assertedly inventive
programming, require any specialized computer hardware or other inventive
computer components, i.e., a particular machine, or effects a transformation
or reduction of a particular article to a different state or thing. Nor do we
find anything of record, short of attorney argument, that attributes any
improvement in computer technology and/or functionality to the claimed
invention or that otherwise indicates that the claimed invention “appl[ies],
rel[ies] on, or us[es] the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” See 2019
Revised Guidance, at 53.
Appellant argues that independent claim 1 is “integrated into a
practical application since the claims recite a method and system that is
using other technology (the GPS receiver for a location and the map with the
location to third parties) to improve the process.” Appeal Br. 5; Reply Br. 3.
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However, Appellant does not direct our attention to anything in the
Specification to indicate that the invention provides a technical improvement
to the claimed “GPS device,” as recited by limitation [b], or map
“display[ed], at a computer connected to the portal accessible by related
third party providers,” as recited by limitation [e].
There is a fundamental difference between computer functionality
improvements, on the one hand, and uses of existing computers as tools to
perform a particular task, on the other — a distinction that the Federal
Circuit, in fact, applied in Enfish, in rejecting a § 101 challenge at the first
stage of the Mayo/Alice framework because the claims at issue focused on a
specific type of data structure, i.e., a self-referential table, designed to
improve the way a computer stores and retrieves data in memory, and not
merely on asserted advances in uses to which existing computer capabilities
could be put. See Enfish, 822 F.3d at 1335–36. The alleged improvement in
Appellant’s claimed process for enhancing and optimizing workers
compensation claim administration does not concern an improvement to
computer capabilities but instead relates to an alleged improvement in a
business practice — a process in which a computer is used as a tool in its
ordinary capacity. Id.
We also note that Appellant’s reliance on SiRF Technology Inc. v.
International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010) as
establishing that any invention that cannot be fully performed without the
use of a machine, i.e., an invention that cannot be performed in the human
mind, or by a human using a pen and paper, is necessarily patent-eligible is
misplaced. Reply Br. 1–3. In SiRF, the Federal Circuit held “that the claims
at issue are properly directed to patentable subject matter as they explicitly
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require the use of a particular machine (a GPS receiver) and could not be
performed without the use of such a receiver.” SiRF Tech., 601 F.3d at 1333
(emphasis added). We do not see, and Appellant does not adequately
explain, how claim 1 is tied to any particular machine.
Instead, we agree with the Examiner that “Appellant’s [S]pecification
merely provides a generic description of the GPS.” Ans. 4. In this regard,
the Specification describes utilizing a mobile phone for “basic information
capture related to an injury including the date, prepopulated using the
phones internal calendar, location of incident, also supplemented by a
capture of the phones GPS at time of submission, description of the injury,
with optional ability to add photos or video, and witnesses of the injury.”
Spec. ¶¶ 5, 52. Here, we find Appellant’s use of a “GPS device” to
“includ[e] the location of the claim event” functions solely to provide a
generic speed and efficiency improvement related to the claimed for
enhancing and optimizing workers compensation claim administration akin
to the Specification’s description of providing date information using the
“the phones[’] internal calendar.” Spec. ¶ 52.
In order for the addition of a machine to impose a meaningful
limit on the scope of a claim, it must play a significant part in
permitting the claimed method to be performed, rather than
function solely as an obvious mechanism for permitting a
solution to be achieved more quickly, i.e., through the utilization
of a computer for performing calculations.
Versata Dev. Grp. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015)
(quoting SiRF Tech., 601 F.3d at 1333).
Turning to Step 2B of the of the 2019 Revised Guidance, we
determine whether the additional elements (1) add a specific limitation or
combination of limitations that is not well-understood, routine, and
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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 2019 Revised Guidance, at 56.
Under the second step of the Mayo/Alice framework and Step 2B of
the 2019 Revised Guidelines, 84 Fed. Reg. at 54, the Examiner determines
that
[t]he focus of the claims is on utilizing a generic
computing device along with a web portal for receiving,
capturing, and storing information related to an incident from
related personnel to build a database for later displaying and
providing data to users. The claims are not directed to a new type
of processor, a graphical user interface, or a system memory, nor
do they provide a method for processing data that improves
existing technological processes. The focus of the claims is not
on improving computer-related technology, but on a certain
independent abstract idea that uses computers as tools.
Final Act. 7.
Appellant does not specifically address the Examiner’s determination.
Instead, Appellant argues that although “the GPS receiver and map are
generally known, their use for the recited method and system is
unconventional, not well known in the worker's compensation industry.”
Appeal Br. 5; Reply Br. 3. However, other than asserting that the use of a
“GPS receiver and map” is “unconventional” and “not well known in the
worker’s compensation industry,” Appellant provides no further argument,
such as how the elements are arranged in a non-generic or unconventional
manner such that it is a technical improvement over prior art ways of
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administering workers’ compensation claims. See BASCOM Global Internet
Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 1, and claims 2–11,
14–18, and 20, which fall with independent claim 1.
Dependent claims 12, 13, 19, and 21
Appellant argues that
[t]he dependent claims recite further features that show that any
abstract idea is integrated into a practical application. For
example, claims 12–13 recite the recommending of a doctor to
treat an injured user based on the location of the claim event (that
is generated by the GPS device) and claims 19 and 21 further
recite using an inruty (sic, injury) reporting SMS service to set
up an injury file which are further improvements and are not
convention or well known in the workers compensation industry.
Appeal Br. 5; Reply Br. 3–4.
However, we find that dependent claims 12, 13, 19, and 21 merely
describe further characteristics of the underlying concept and lack additional
elements that would render the claim patent-eligible. In this regard, we
agree with the Examiner that recommending “a doctor to treat an injured
user based on the location is merely a post-solution activity with human
action” and “using a SMS service to set up an injury file is also a post-
solution activity and is merely using the existing technology to supplement
the method.” Ans. 8–9. We also agree with the Examiner that claims 12,
13, 19, and 21 “do no more than provid[e] additional instructions and
administrative requirements for the functional steps already recited in the
independent claims.” Id. at 9.
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As such, we are similarly not persuaded by Appellant’s arguments for
the same reasons as to independent claim 1, supra. Therefore, we sustain
the rejection of dependent claims 12, 13, 19, and 21 under 35 U.S.C. § 101.
Obviousness
Independent claims 1 and 2, and dependent claims 3–21
We are not persuaded of error by Appellant’s argument that the
combination of Shafer, Peak, Wirz fails to disclose or suggest limitations [b]
and [e], as recited by independent claim 1, and similarly recited by
independent claim 2. Appeal Br. 6–7; Reply Br. 4–6. More particularly,
Appellant argues that the asserted combination fails to disclose or suggest
“the claimed capturing of the location of a claim event or displaying the map
showing the location of the claim event.” Appeal Br. 6; Reply Br. 5.
Instead, we agree with, and adopt the Examiner’s findings and
rationale, as set forth at pages 7–16 of the Final Action (see Final Act. 8–9
(citing Peak ¶¶ 37, 59, 61, 73–75, 81, and Fig. 5; Shafer ¶¶ 83–87) and the
Examiner’s response to Appellant’s arguments, as set forth at pages 9–16 of
the Answer. We add the following discussion for emphasis only.
Shafer is directed to “an online centralized source to implement,
analyze and manage a workers’ compensation management program by a
company across multiple company units.” Shafer ¶ 5. Shafer discloses that
its system “may be used to input, process, analyze, quantify, store, retrieve
and display the compiled workers’ compensation program data 152 for a
plurality of company units.” Id. ¶ 83. Shafer’s system includes a dashboard
that “acts as a way for the management to monitor progress throughout the
implementation of the program across multiple units in diverse locations.”
Id. ¶ 82. Shafer discloses
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[t]he input and analyzed data 152 is stored on the remote
server 144 for access by an authorized user 104 from any
workstation 124 and/or 128 without the requirement of any
proprietary software being resident on the workstations 124
and/or 128. The data 152 may be extracted, compiled for various
analyses, and the results of the analyses presented on the
dashboard 120 in support of a plurality of purposes, including but
not limited to assessment of workers' compensation claim
management practices across multiple units or the company as a
whole, data benchmarking of economics of the workers'
compensation program, return to work data, production of
program improvement recommendations, implementation of
program management quality controls, training of users and
managers, identification of user activity, etc.
Id. ¶ 85.
Peak is directed to an insurance processing system for “the collection
and use of medical information for insurance processing using mobile
devices.” Peak ¶ 2. Peak’s system “provide[s] applications and mobile
devices to allow the ready, convenient and accurate collection and
monitoring of medical and health status information from individuals
seeking or having insurance coverage, so that such coverage can be priced,
managed and underwritten more accurately.” Id. ¶ 16. Peak describes that
its mobile devices “receive data and information from one or more sensor(s)
106.” Id. ¶ 21. More particularly, Peak discloses that
data collected by sensor(s) 106 may be stored temporarily ( or
for longer periods of time, if appropriate) in a memory of the
mobile device 104, or it may be forwarded through the mobile
device 104 to insurance company 102 for analysis and
processing. In general, the mobile device 104, under control of
one or more applications configured pursuant to the present
invention, operates to identify the user, identify the time of data
collection, identify (if appropriate) the location of data
collection, and manage the collection and transmission of data
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for further use by insurance company 102 or agents of the
insurance company 102.
Id. ¶ 25; see also id. ¶ 74 (“[M]obile device 500 may include circuitry and
sensors for supporting a location determining capability, such as that
provided by the global positioning system (GPS).”). Peak discloses that “the
collected data [are] packaged and transmitted to the insurance company 320
for further analysis” during processing. Id. ¶ 61.
Appellant asserts that Peak’s “GPS may be used for limited purpose
of identifying the location of a user to identify the user and for data
collection by the system,” but argues that Peak’s disclosure “fails to disclose
or suggest the claimed capturing of the location of a claim event or
displaying the map showing the location of the claim event.” Appeal Br. 6
(citing Peak ¶¶ 61, 74, 75). We cannot agree.
Instead, we agree with the Examiner that Peak discloses the argued
limitations. Here, we find that Peak clearly discloses that its mobile devices
include a GPS receiver (Peak ¶¶ 25, 61, 74) and location data are collected
from the mobile device for use in processing a request for insurance. Id.
¶ 59. Peak also discloses that the collected data the collected data are
transmitted to the insurance company for further analysis. Id. ¶ 61; see also
Shafer ¶ 85 (“The data 152 may be extracted, compiled for various analyses,
and the results of the analyses presented on the dashboard 120 in support of
a plurality of purposes.”). Although, we acknowledge, as Appellant points
out, that Peak utilizes “mapping services to identify the location of a testing
lab, a pharmacy” (Appeal Br. 6–7 (citing Peak ¶ 37)), we find that Peak also
discloses that its system can collect or capture the location of a claim event
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while processing insurance claims.5 See, e.g., Peak ¶ 65 (“If a determination
is made that no further data collection is required, a final response to the
insurance request may be received at 420. For example, the response
received at 420 may be a final determination from an underwriting business
process performed at the insurance company 320 such as a denial of
coverage, issuance of coverage, etc.”).
In view of the foregoing, we sustain the Examiner’s rejection of
independent claims 1 and 2. We also sustain the rejection of dependent
claims 3–11 because Appellant has not argued the separate patentability of
these claims. We also sustain the Examiner’s rejection of claims 12–21,
which although addressed separately, do not rise to the level of a separate
argument for patentability (see Appeal Br. 7; Reply Br. 5–6). See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (“more substantive arguments
in an appeal brief [are required] than a mere recitation of the claim elements
and a naked assertion that the corresponding elements were not found in the
prior art”). Cf. Ans. 13–16.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–21 103 Shafer, Peak, Wirz 1–21

5 We note that Appellant’s Specification indicates that location of incident
information is only “supplemented by a capture of the phones GPS at time of
submission.” Spec. ¶ 52.
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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
Overall
Outcome
1–21
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED