Alejandro Zarate Santovena et al.

Patent Trials and Appeals Board

Aug 1, 2019

14818923 - (D) (P.T.A.B. Aug. 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.
14/818,923 08/05/2015 Alejandro Zarate Santovena 40191/02001 1004
30636 7590 08/01/2019
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
EBERSMAN, BRUCE I
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
08/01/2019 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEJANDRO ZARATE SANTOVENA and ROBERT HOWE
____________

Appeal 2018-001534
Application 14/818,9231
Technology Center 3600
____________

Before ANTON W. FETTING, TARA L. HUTCHINGS, and
AMEE A. SHAH, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

1 According to Appellants, the real party in interest is Marsh USA, Inc.
(Appeal Br. 2).

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STATEMENT OF THE CASE2
Alejandro Zarate Santovena and Robert Howe (Appellants) seek
review under 35 U.S.C. § 134 of a final rejection of claims 1–28, the only
claims pending in the application on appeal. We have jurisdiction over the
appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of insurance risk matching.
Specification Title and para. 12.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method, comprising:
by a broker arrangement:
[1] storing account information for a plurality of insurance
accounts,
the account information for each insurance account being
normalized to a coordinate system;
[2] receiving parameters of a similarity account from
a broker user device utilized by a broker user
or a carrier user device utilized by a carrier user
of an insurance carrier;
[3] performing a similarity calculation

2 Our decision will make reference to the Appellants’ Appeal Brief (“App.
Br.,” filed October 12, 2016) and Reply Brief (“Reply Br.,” filed October
19, 2017), and the Examiner’s Answer (“Ans.,” mailed December 22, 2016),
and Final Action (“Final Act.,” mailed April 12, 2016).
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to identify a subset of the plurality of insurance accounts
that match the similarity account,
wherein the similarity account is also normalized to the
coordinate system,
wherein the similarity calculation includes,
calculating a distance between the similarity
account and each of the plurality of insurance
accounts, and
determining the subset of the plurality of insurance
accounts that is within a predetermined similarity
distance threshold from the similarity account in
the coordinate system.

The Examiner relies upon the following prior art:
Herz US 2009/0254971 A1 Oct. 08, 2009
Saunders US 2012/0239506 A1 Sept. 20, 2012
Stahl US 2014/0222469 A1 Aug. 07, 2014
Claims 1–28 stand rejected under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more.
Claims 1–28 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Herz, Stahl, and Saunders.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.
The issues of obviousness turn primarily on whether the art applied
describes the limitations recited.
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FACTS PERTINENT TO THE ISSUES
The following enumerated Findings of Fact (FF) are believed to be
supported by a preponderance of the evidence.
Facts Related to Claim Construction
01. The disclosure contains no lexicographic definition of
“distance.”
Facts Related to Appellants’ Disclosure
02. The similarity calculation may be considered as equivalent to
a distance calculation. Spec. para. 41.
03. In one example, Gower’s distance algorithm3 is used to measure
the distance between the different data points and determine if the
data point for any one account satisfies the similarity threshold.
Spec. para. 42.
Facts Related to the Prior Art
Herz
04. Herz is directed to a privacy-protected market for data
exchange between multiple self-interested parties. Herz para. 3.
05. In order to perform a wide range of analytical tasks, Herz needs
to make use of a variety of computational approaches. Among
these approaches, Herz describes measuring the similarity
between profile vectors. Given two customer (or vendor) profiles,
ci and cj, it is frequently desirable to know how similar they are.
For this purpose, we define the similarity metric M(ci, cj) to be a

3 Measure of dissimilarity between units in a dataset or between observations
in two distinct datasets. R Package documentation.
https://rdrr.io/cran/StatMatch/man/gower.dist.html.
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function that takes as input two customer vectors and returns as
output a numerical value in the range [0,1]. When two customers
ci and cj are identical, M(ci, cj)=1; when they’re completely
different, M(ci, cj)=0. Herz paras. 599–603.
06. Some key applications of SDI are: assessing the value of data
that involves plugging together sets of data, and measuring
predictive accuracy, matching data across vendors that
includesfinding patterns in common pseudonyms, denoting
common areas of interest and using catalogues of order codes and
item description to find similarities across data sets, and targeted
recommendations that match customers to their nearest neighbors
in a data set and generate recommendations for users, and use
collaborative-filtering style application. Herz paras. 689–693.
07. Herz describes uses for insurance agents and brokers. For
many types of insurance, (e.g. health, life, casualty), personally
sensitive information is disclosed by buyers to their agents and
brokers. Initially, before insurance services are purchased, it is
possible that useful detailed quotes and/or insurance advice could
be provided to a buyer pseudonymously. Herz para. 697.
08. Herz describes creating a form of insurance in which Herz
identifies extremely similar circumstances where similarity is
measured primarily by the nature and scope of the opportunity and
its associated risks as well as the entity whose critical action is
necessary to bring about the desired objective. In this case, the
individuals (or entities) benefiting from the desired action are able
to effectively conceive to contribute a certain level of value to the
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collective group to effectively insure the desirable outcome on
behalf of all of the members of that group, such that, if the
desirable action on behalf of the other entity (in this case the large
organization contemplating substantial layoffs) does not concede
to the desired action for one or more of the individuals, this value
contributed from the group is used to apply still greater economic
pressure upon the entity to perform the desired action. If this does
not facilitate the action, the value is instead applied in another
(albeit less optimal) form to compensate at least a portion of
negative economic impact upon that individuals/entity of course,
the level of risk may influence the amount of insurance each
individual/entity is willing to contribute within a given group..
Herz para. 968.
Stahl
09. Stahl is directed to insurance re-quoting. Stahl para. 5.
Saunders
10. Saunders is directed to the personalizing of advertisements that
are presented beside content of a website, such as a social
networking site. Saunders para. 1.
11. Saunders describes using a threshold in statistical similarity
analysis. A first user profile for a first user may be compared with
a second user profile generated in the same manner for a second
user. Based on the comparison (for example if the similarity
between the two profiles exceeds a threshold comparison
measure), the first user may be provided with a recommendation
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based on information acquired from the second user. Saunders
para. 74.
ANALYSIS
Initially we construe the term “distance” in the claims. This is not
lexicographically defined. Claim 1 recites calculating a distance in a
similarity calculation. The Specification states that the similarity calculation
may be considered as equivalent to a distance calculation and that one
example of a distance calculation is Gower’s distance algorithm, which is a
statistical measure of dissimilarity. Thus we construe “distance” as a
statistical measure of similarity or dissimilarity, and not some geometric
distance.
Claims 1–28 rejected under 35 U.S.C. § 101 as directed to a judicial
exception without significantly more
STEP 14
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of
those patent-ineligible concepts. If so, we then ask, “[w]hat else
is there in the claims before us? To answer that question, . . .

4 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 FR 50 (Jan. 7, 2019).
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consider the elements of each claim both individually and “as
an ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp., Pty. Ltd. v CLS Bank Intl, 573 U.S. 208, 217–18 (2014)
(citations omitted) (citing Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012)). To perform this test, we must first
determine what the claims are directed to. This begins by determining
whether the claims recite one of the judicial exceptions (a law of nature, a
natural phenomenon, or an abstract idea). Then, if claims recite a judicial
exception, determining whether the claims at issue are directed to the recited
judicial exception, or whether the recited judicial exception is integrated into
a practical application of that exception, i.e., that the claims “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.” 2019 Guidance at 54. If the
claims are directed to a judicial exception, then finally determining whether
the claims provide an inventive concept because the additional elements
recited in the claims provide significantly more than the recited judicial
exception.
STEP 2A Prong 1
Method claim 1 recites storing account information, receiving
parameters of a similarity account, and performing a similarity calculation.
The similarity calculation includes calculating a distance between accounts
and determining a subset of the accounts. The calculations are expressed as
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results to be obtained without technological details, and are therefore generic
computer analysis. Thus, claim 1 recites storing, receiving, and analyzing
data. None of the limitations recite technological implementation details for
any of these steps, but instead recite only results desired by any and all
possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts5, (2) certain methods of organizing
human activity6, and (3) mental processes7. Among those certain methods of
organizing human activity listed in the Revised Guidance are fundamental
economic principles or practices or commercial or legal interactions. Like
those concepts claim 1 recites the concept of buying and selling insurance.
Specifically, claim 1 recites operations that would ordinarily take place in
advising one to match insurance accounts based on a calculation using

5 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 130 S. Ct. 3218 (2010); Mackay Radio & Telegraph Co. v. Radio
Corp. of America, 306 U.S. 86, 94 (1939); SAP America, Inc. v. InvestPic,
LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
6 See, e.g., Bilski, 130 S. Ct. 3218 (2010); Alice, 573 U.S. at 219–20;
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart
Sys. Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed.
Cir. 2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61
(Fed. Cir. 2018).
7 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
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insurance account and similarity account data. The advice to match
insurance accounts based on a calculation using insurance account and
similarity account data involves looking for insurance, which is an economic
act, and matching insurance to needs, which is an act ordinarily performed in
the stream of commerce. For example, claim 1 recites “storing account
information for a plurality of insurance accounts,” which is an activity that
would take place whenever one is shopping for insurance. Similarly,
claim 1 recites “determining the subset of the plurality of insurance
accounts,” which is also characteristic of buying insurance.
The Examiner determines the claims to be directed to a brokerage
arrangement that relates to insurance and determining similar insurance
accounts. Final Act. 2.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in performing a calculation to match insurance
accounts with some reference absent any technological mechanism other
than a conventional computer for doing so.
As to the specific limitations, limitations 1 and 2 recite insignificant
generic storing and receiving of insurance and similarity account data, which
advise one to apply generic functions to get to these results. Limitation 3 is
the only step associated with performing what the claim produces and recites
performing a calculation to match data, which is simply generic analysis.
The limitations thus recite advice for matching insurance accounts based on
a calculation using insurance account and similarity account data. To
advocate matching insurance accounts based on a calculation using
insurance account and similarity account data is conceptual advice for
results desired and not technological operations.
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The Specification’s Title and paragraph 12 describe the invention as
relating to insurance risk matching. Thus, all this intrinsic evidence shows
that claim 1 recites a method for finding insurance companies, i.e. buying
and selling insurance. This is consistent with the Examiner’s determination.
This in turn is an example of fundamental economic principles or
practices or commercial or legal interactions as a certain method of
organizing human activity because insurance is a fundamental economic
practice and buying and selling insurance is a commercial interaction. The
concept of buying and selling insurance by matching insurance accounts
based on a calculation using insurance account and similarity account data is
an idea for how to select insurance carriers. The steps recited in claim 1
recite data and calculations for this idea.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (creating a transaction performance
guaranty for a commercial transaction on computer networks such as the
Internet); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1338 (Fed. Cir. 2013) (generating rule–based tasks for processing
an insurance claim); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of
Canada (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (managing a stable
value protected life insurance policy); Dealertrack, 674 F.3d at 1333
(processing loan information through a clearinghouse); Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1372 (Fed.
Cir. 2017) (collection, storage, and recognition of data).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of storing, receiving, and analyzing
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data mimic human thought processes of observation, evaluation, judgment,
and opinion, perhaps with paper and pencil, where the data interpretation is
perceptible only in the human mind. See In re TLI Commc’ns LLC Patent
Litig., 823 F.3d 607, 611 (Fed. Cir. 2016); FairWarning IP, LLC v. Iatric
Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016). Claim 1, unlike the
claims found non-abstract in prior cases, uses generic computer technology
to perform data storage, reception, and analysis and does not recite an
improvement to a particular computer technology. See, e.g., McRO, Inc. v.
Bandai Namco Games America Inc., 837 F.3d 1299, 1314–15 (Fed. Cir.
2016) (finding claims not abstract because they “focused on a specific
asserted improvement in computer animation”). As such, claim 1 is directed
to storing, receiving, and analyzing data, and not a technological
implementation or application of that idea.
From this we conclude that at least to this degree, claim 1 recites a
method for buying and selling insurance by matching insurance accounts
based on a calculation using insurance account and similarity account data.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.8
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, “all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.” Thus, an

8 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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invention is not rendered ineligible for patent simply because it
involves an abstract concept. “[A]pplication[s]” of such
concepts “ ‘to a new and useful end,’ ” we have said, remain
eligible for patent protection. Accordingly, in applying the §
101 exception, we must distinguish between patents that claim
the “ ‘buildin[g] block[s]’ ” of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
the mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is
not enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract
idea “on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
implementation is not generally the sort of “additional
feature[e]” that provides any “practical assurance that the
process is more than a drafting effort designed to monopolize
the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than simply
instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
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devoid of implementation details. Steps 1 and 2 are pure data gathering
steps. Limitations describing the nature of the data do not alter this. Step 3
recites generic computer processing expressed in terms of results desired by
any and all possible means and so presents no more than conceptual advice.
All purported inventive aspects reside in how the data is interpreted and the
results desired, and not in how the process physically enforces such a data
interpretation or in how the processing technologically achieves those
results.
Viewed as a whole, Appellants’ claim 1 simply recites the concept of
buying and selling insurance by matching insurance accounts based on a
calculation using insurance account and similarity account data as performed
by a generic computer. This is no more than conceptual advice on the
parameters for this concept and the generic computer processes necessary to
process those parameters, and do not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of the
computer itself. Nor does it effect an improvement in any other technology
or technical field. The 34 pages of specification spell out different generic
equipment9 and parameters that might be applied using this concept and the
particular steps such conventional processing would entail based on the
concept of buying and selling insurance by matching insurance accounts
based on a calculation using insurance account and similarity account data
under different scenarios. They do not describe any particular improvement
in the manner a computer functions. Instead, claim 1 at issue amounts to
nothing significantly more than an instruction to apply buying and selling

9 The Specification describes the system as including memory and a
processor. Spec. para. 4.
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insurance by matching insurance accounts based on a calculation using
insurance account and similarity account data using some unspecified,
generic computer. Under our precedents, that is not enough to transform an
abstract idea into a patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflect an improvement in the functioning of a
computer, or an improvement to other technology or technical field, applies
or uses a judicial exception to effect a particular treatment or prophylaxis for
a disease or medical condition, implements a judicial exception with, or uses
a judicial exception in conjunction with, a particular machine or manufacture
that is integral to the claim, effects a transformation or reduction of a
particular article to a different state or thing, or applies or uses the judicial
exception in some other meaningful way beyond generally linking the use of
the judicial exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to monopolize
the exception.
We conclude that claim 1 is directed to achieving the result of buying
and selling insurance by advising one to match insurance accounts based on
a calculation using insurance account and similarity account data as
distinguished from a technological improvement for achieving or applying
that result. This amounts to fundamental economic principles or practices or
commercial or legal interactions, which fall within certain methods of
organizing human activity that constitute abstract ideas. The claim does not
integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
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more than the recited judicial exception. Taking the claim elements
separately, the function performed by the computer at each step of the
process is purely conventional. Using a computer for storing, receiving, and
analyzing data amounts to electronic data query and retrieval—one of the
most basic functions of a computer. All of these computer functions are
generic, routine, conventional computer activities that are performed only
for their conventional uses. See Elec. Power Grp. v. Alstom S.A., 830 F.3d
1350, 1353 (Fed. Cir. 2016). Also see In re Katz Interactive Call Processing
Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible
narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . .
. those functions can be achieved by any general purpose computer without
special programming”). None of these activities are used in some
unconventional manner nor do any produce some unexpected result.
Appellants do not contend they invented any of these activities. In short,
each step does no more than require a generic computer to perform generic
computer functions. As to the data operated upon, “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.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants’ claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data storage-reception-analysis
is equally generic and conventional. See Ultramercial, 772 F.3d at 715
(sequence of receiving, selecting, offering for exchange, display, allowing
access, and receiving payment recited an abstraction), Inventor Holdings,
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LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017)
(sequence of data retrieval, analysis, modification, generation, display, and
transmission), Two-Way Media Ltd. v. Comcast Cable Communications,
LLC, 874 F.3d 1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing,
controlling, and monitoring). The ordering of the steps is therefore ordinary
and conventional.
We conclude that claim 1 does not provide an inventive concept because
the additional elements recited in the claim do not provide significantly more
than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely describe
process parameters. We conclude that the method claims at issue are
directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic
computer components configured to implement the same idea.
This Court has long “warn[ed] ... against” interpreting § 101“in
ways that make patent eligibility ‘depend simply on the
draftsman’s art.’
Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
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transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by buying and selling
insurance by advising one to matching insurance accounts based on a
calculation using insurance account and similarity account data, without
significantly more.
APPELLANTS’ ARGUMENTS
As to Appellants’ Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 2–4 and Answer 15–33 and
reach similar legal conclusions. We now turn to the Reply Brief.
To the extent Appellants argue the Examiner fails to follow USPTO
Guidance, we have set forth the rejection in a format that more explicitly
follows the guidance, including the most recent guidance, supra.
We are not persuaded by Appellants' argument that “the objective of
settlement risk in Alice and the risk matching of the present appeal are
fundamentally different concepts.” Reply Br. 3. Appellants go on to point
out the differing contexts between prior cases surrounding risk avoidance
and the instant case. Differences in context generally are not sufficient to
distinguish abstract from non-abstract. “The Supreme Court and this court
have repeatedly made clear that merely limiting the field of use of the
abstract idea to a particular existing technological environment does not
render the claims any less abstract.” Affinity Labs of Texas, LLC v.
DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016). Insuring against risk
by whatever means has generally been held to be within the scope of abstract
ideas, as we cite in cases supra.
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Appellants also attempt to analogize the claims to those involved in
McRO, 837 F.3d 1299. Reply Br. 4 and 7–8. In McRO, the court held
that, although the processes were previously performed by humans, “the
traditional process and newly claimed method . . . produced . . . results in
fundamentally different ways.” FairWarning, 839 F.3d at 1094
(differentiating the claims at issue from those in McRO). In McRO, “it
was the incorporation of the claimed rules not the use of the computer,
that improved the existing technology process,” because the prior process
performed by humans “was driven by subjective determinations rather
than specific, limited mathematical rules.” 837 F.3d at 1314 (internal
quotation marks, citation, and alterations omitted). In contrast, the claims
of the instant application merely implement an old practice of using
decision criteria in making sales decisions in a new environment.
Appellants have not argued that the claimed processes of selecting
products apply rules of selection in a manner technologically different
from those which humans used, albeit with less efficiency, before the
invention was claimed.
The claims in McRO were not directed to “a specific asserted
improvement in computer animation, i.e., the automatic use of
rules of a particular type.” We explained that “the claimed
improvement [was] allowing computers to produce ‘accurate
and realistic lip synchronization and facial expressions in
animated characters’ that previously could only be produced by
human animators.” The claimed rules in McRO transformed a
traditionally subjective process performed by human artists into
a mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094 (differentiating the claims at issue from
those in McRO).
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We are not persuaded by Appellants’ argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Reply Br. 5–6. The claims differ from those found patent
eligible in Enfish, where the claims were “specifically directed to a self-
referential table for a computer database.” 822 F.3d 1327, 1337 (Fed. Cir.
2016). The claims thus were “directed to a specific improvement to the
way computers operate” rather than an abstract idea implemented on a
computer. Id. at 1336. Here, by contrast, the claims are not directed to
an improvement in the way computers operate. Though the claims
purport to accelerate the process of insurance selection, our reviewing
court has held that speed and accuracy increases stemming from the
ordinary capabilities of a general purpose computer “do[] not materially
alter the patent eligibility of the claimed subject matter.” Bancorp Servs.,
L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278
(Fed. Cir. 2012). Instead, the claims are more analogous to those in
FairWarning, 839 F.3d 1089, wherein claims reciting “a few possible rules
to analyze audit log data” were found directed an abstract idea because
they asked “the same questions (though perhaps phrased with different
words) that humans in analogous situations detecting fraud have asked for
decades.” 839 F.3d at 1094, 1095.
We are not persuaded by Appellants’ argument that “the results of the
risk matching improves technology in computer-based approaches to
customized analyses for insurance account risk analysis by incorporating
customized factors as requested and desired by the insurance company or
insurance broker.” Appellants contend that the choice of data improves
performance. Choice of data improves performance even in a paper and
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pencil implementation. The recited operations are each conventional generic
computer operations. Choice of data does not improve any of those
operations as recited.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in Diamond v. Diehr, 450 U.S. 175 (1981).
Reply Br. 9. But,
we must read Diehr in light of Alice, which emphasized that
Diehr does not stand for the general proposition that a claim
implemented on a computer elevates an otherwise ineligible
claim into a patent-eligible improvement. Alice. Rather, Diehr
involved “a ‘well-known’ mathematical equation . . . used . . .
in a process designed to solve a technological problem in
‘conventional industry practice.’”
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015).
Diehr solved a technological problem in the conventional industry practice
of molding tires. Here, Appellants argue only that the invention directs
content for display from some different data source using some
mathematical algorithm. Displaying content is not a conventional
technological industry practice, but only making content available to be
apprehended.
Appellants further argue that the asserted claims are akin to the
claims found patent-eligible in DDR Holdings, LLC v. Hotels.com, L.P.
773 F.3d 1245 (Fed. Cir. 2014). Reply Br. 9–10. In DDR Holdings, the
Court evaluated the eligibility of claims “address[ing] the problem of
retaining website visitors that, if adhering to the routine, conventional
functioning of Internet hyperlink protocol, would be instantly
transported away from a host’s website after ‘clicking’ on an
advertisement and activating a hyperlink.” Id. at 1257. There, the Court
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found that the claims were patent eligible because they transformed the
manner in which a hyperlink typically functions to resolve a problem
that had no “pre-Internet analog.” Id. at 1258. The Court cautioned,
however, “that not all claims purporting to address Internet-centric
challenges are eligible for patent.” Id. For example, in DDR Holdings
the Court distinguished the patent-eligible claims at issue from claims
found patent-ineligible in Ultramercial. See id. at 1258–59 (citing
Ultramercial, 772 F.3d a t 715–16). As noted there, the Ultramercial
claims were “directed to a specific method of advertising and content
distribution that was previously unknown and never employed on the
Internet before.” Id. at 1258 (quoting Ultramercial, 772 F.3d at 715–
16). Nevertheless, those claims were patent ineligible because they
“merely recite[d] the abstract idea of ‘offering media content in exchange
for viewing an advertisement,’ along with ‘routine additional steps such as
updating an activity log, requiring a request from the consumer to view the
ad, restrictions on public access, and use of the Internet.’” Id.
Appellants’ asserted claims are analogous to claims found ineligible
in Ultramercial and distinct from claims found eligible in DDR Holdings.
The ineligible claims in Ultramercial recited “providing [a] media product
for sale at an Internet website;” “restricting general public access to said
media product;” “receiving from the consumer a request to view [a]
sponsor message;” and “if the sponsor message is an interactive message,
presenting at least one query to the consumer and allowing said consumer
access to said media product after receiving a response to said at least one
query.” 772 F.3d at 712. Similarly, Appellants’ asserted claims recite
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storing, receiving, and analyzing data. This is precisely the type of
Internet activity found ineligible in Ultramercial.
Claims 1–28 rejected under 35 U.S.C. § 103(a) as unpatentable over Herz,
Stahl, and Saunders
Herz describes storing data into records for insurance companies and
for customers. Herz’s insurance record corresponds to the limitation 1
insurance account and Herz’s customer record corresponds to the
limitation 2 similarity account. Herz describes calculating a similarity
distance between such records. Herz describes using this to match data
across vendors. This corresponds to matching those vendors with
similarities common with the customer. Stahl describes applying the
similarity measure described by Herz with thresholds as filters as recited in
the claims. Thus, Saunders describes a refinement of using the similarity
measure in Herz.
As to Appellants’ Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 5–33 and Answer 33–42 and
reach similar legal conclusions. We now turn to the Reply Brief.
We are not persuaded by Appellants' argument that “Herz does not
describe or suggest any distance calculation within the coordinate system for
a first point to a subset of other points.” Reply Br. 11. Herz explicitly states
“before insurance services are purchased, it is possible that useful detailed
quotes and/or insurance advice could be provided to a buyer
pseudonymously.” Fact 07. As a customer record in Herz corresponds to
the recited similarity account and a vendor record to an insurance account,
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this translates into matching the customer point to various insurance
company points. Herz does so using a statistical similarity distance measure.
We are not persuaded by Appellants’ argument that
the Examiner states that the term “distance” is literally found in
Herz. The Examiner also notes that any use of distance in the
claims is comparable to a record comparison performed in
Herz. Initially, it is noted that simply because a term as recited
in the claims is also found in the disclosure of Herz does not
automatically qualify Herz as disclosing the feature including
this term as recited in the claims.
Reply Br. 13 (citations omitted). We construed “distance” as a statistical
measure of similarity or dissimilarity supra. This is what Herz describes.
We are not persuaded by Appellants’ argument that “the cited
disclosure of Herz is directed to clusters and how an allegiance between
clusters may be updated.” Id. Herz explicitly describes using its techniques
to match insurance providers with a customer.
We are not persuaded by Appellants’ argument that “the image
comparison and the user profile comparison of Saunders are completely
unrelated to each other and any threshold deriving from the user profiles
have no bearing to distances, particularly to a distance as measured with the
image comparison.” Reply Br. 13–14. Saunders is applied only for its
teachings as to a refinement in the use of distance measures. It is applied
only to evidence the notoriously well-known use of thresholds to filter
results so as to eliminate outliers and results of lesser relevance in the
context of statistical distance calculations. This also addresses Appellants’
argument regarding motivation. Id. at 15.
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CONCLUSIONS OF LAW
The rejection of claims 1–28 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
The rejection of claims 1–28 under 35 U.S.C. § 103(a) as unpatentable
over Herz, Stahl, and Saunders is proper.
DECISION
The rejection of claims 1–28 is affirmed.
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) (2011).

AFFIRMED