Alok Mehta

Patent Trials and Appeals BoardAug 23, 2019

13422647 - (D) (P.T.A.B. Aug. 23, 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. 13/422,647 03/16/2012 Alok Mehta 006591.00331 5938 71823 7590 08/23/2019 BANNER & WITCOFF , LTD ATTORNEYS FOR CLIENT NUMBER 006591 71 SOUTH WACKER DR. SUITE 3600 CHICAGO, IL 60606 EXAMINER POLLOCK, GREGORY A ART UNIT PAPER NUMBER 3695 NOTIFICATION DATE DELIVERY MODE 08/23/2019 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 ALOK MEHTA ___________ Appeal 2017-011252 Application 13/422,647 Technology Center 3600 ____________ Before MAHSHID D. SAADAT, JOHNNY A. KUMAR, and LINZY T. MCCARTNEY KUMAR, Administrative Patent Judge. DECISION ON APPEAL Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s Final Rejection of claims 1, 4–8, 11–14, 21, 23–27, and 29–38, which constitute all the claims pending in this application. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). We AFFIRM. 1 According to Appellant, Allstate Insurance Company is the real party in interest. App. Br. 2. Appeal 2017-011252 Application 13/422,647 2 STATEMENT OF THE CASE2 Disclosed embodiments of Appellant’s invention relate to “determining one or more insurance products for online groups based on online group insurance profiles.” Spec. ¶ 4. Claim 1 is illustrative, bracketed indicators added:3 1. A method, comprising: [a] at an insurance computer system associated with an insurance provider and comprising at least one processor, at least one memory, and at least one network interface: [b] identifying, by the insurance computer system, an online group comprising a plurality of online group members that interact with a common online social networking platform, the online group being formed and managed independently of the insurance provider on the online social networking platform for at least one purpose unrelated to insurance; [c] accessing, by the insurance computer system, using the at least one network interface, one or more remote computer servers associated with the online social networking platform to retrieve, from the one or more remote computer servers, characteristics information for the online group associated with one or more individual characteristics of each online group member of the plurality of online group members of the online group, [d] wherein accessing the one or more remote computer servers associated with the online social networking platform comprises: [d1] presenting, via an online insurance application provided by the insurance provider and integrated with the 2 We herein refer to the Final Office Action, mailed Sept. 21, 2016 (“Final Act.”); the Appeal Brief, filed March 7, 2017 (“App. Br.”); the Examiner’s Answer, mailed July 5, 2017 (“Ans.”); and the Reply Brief, filed Aug. 29, 2017 (“Reply Br.”). 3 Appellant present a unified argument for independent claims 1, 8, and 30. See App. Br. 15, 21; see also Reply Br. 5. Appeal 2017-011252 Application 13/422,647 3 online social networking platform, an online insurance questionnaire to one or more online group members of the online group; [d2] receiving, via the online insurance application provided by the insurance provider and integrated with the online social networking platform, one or more completed insurance questionnaires from the one or more online group members of the online group; and [d3] obtaining, from the one or more remote computer servers associated with the online social networking platform, profile information for the one or more online group members of the online group, the profile information comprising data associated with one or more social networking member profiles of the one or more online group members of the online group on the online social networking platform; [e] verifying, by the insurance computer system, one or more responses of one or more online group members of the online group associated with the one or more completed insurance questionnaires received from the one or more online group members of the online group, based on external information obtained by the insurance computer system from one or more external databases not associated with the insurance provider; [f] creating, by the insurance computer system, an online group insurance profile for the online group based on the characteristics information, the one or more completed insurance questionnaires, the profile information, and the external information, wherein the online group insurance profile for the online group comprises a group risk profile for the one or more online group members of the online group, a group insurance coverage needs analysis for the one or more online group members of the online group, and a group pricing and preferences analysis for the one or more online group members of the online group; [g] selecting, by the insurance computer system, a first insurance product to offer to one or more members of the online group based on the group risk profile, the group insurance coverage needs analysis, and the group pricing Appeal 2017-011252 Application 13/422,647 4 and preferences analysis of the online group insurance profile; and [h] identifying, by the insurance computer system, the online group for an insurance offering update based on a size of the online group changing beyond a threshold amount, [i] wherein the online insurance application is configured to execute at least in part on the online social networking platform and is further configured to communicate with the insurance provider, and [j] wherein the online insurance application is further configured to provide at least one interface configured to present information associated with one or more insurance products and offerings available to members of the online group from the insurance provider. App. Br. 24–26 (Claims Appendix). Rejections A. Claims 1, 4–8, 11–14, 21, 23–27, and 29–38 are rejected under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. Final Act. 2–8. B. Claims 1, 5, 6, 8, 12, 13, 21, 23–27, and 29–33 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings of Auker et al. (US 2010/0100398 A1; Apr. 22, 2010) (hereinafter “Auker”), and Stivoric et al. (US 2009/0006458 A1; Jan. 1, 2009) (hereinafter “Stivoric”), and Kern (US 6,604,080 B1; Aug. 5, 2003). Final Act. 8–17. C. Claims 4 and 11 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings of Auker, Stivoric, Kern, and Pierre et al. (US 2011/0153368 A1; Jun. 23, 2011) (hereinafter “Pierre”). Final Act. 18. Appeal 2017-011252 Application 13/422,647 5 D. Claims 7 and 14 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings of Auker, Stivoric, Kern, and Beranski et al. (US 7,398,218 B1; Jul. 8, 2008) (hereinafter “Beranski”). Final Act. 18–19. E. Claims 34–38 are rejected under 35 U.S.C. § 103(a) as being obvious over the combined teachings of Auker, Stivoric, Kern, and Winslade et al. (US 2013/0018751 A1; Jan. 17, 2013) (hereinafter “Winslade”). Final Act. 19–21. Issues on Appeal 1. Did the Examiner err in rejecting claims 1, 4–8, 11–14, 21, 23–27, and 29–38 under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more? 2. Did the Examiner err in rejecting claims 1, 4–8, 11–14, 21, 23–27, and 29–38, under 35 U.S.C. § 103, as being obvious over the cited prior art? ANALYSIS We have considered all of Appellant’s arguments and the evidence presented. We highlight and address specific findings and arguments for emphasis in our analysis below. Principles of Law An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” See 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include Appeal 2017-011252 Application 13/422,647 6 implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. See, e.g., Alice, 573 U.S. at 216 (citation omitted). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010). 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” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (Diehr, 450 U.S. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); 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 that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176, 191 (“We view Appeal 2017-011252 Application 13/422,647 7 respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). That said, 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 to limit the use of the formula to a particular technological environment.” Id (citing Benson and Flook), and 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.”). 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. (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. In January 2019, the USPTO published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance, 84 Fed. Reg.”). 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 Appeal 2017-011252 Application 13/422,647 8 human activity such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MANUAL OF PATENT EXAMINING PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08. 2017, Jan. 2018)). 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, and conventional in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Revised Guidance, 84 Fed. Reg. 56. Examiner’s Determination of Patent-Ineligibility The Examiner determined that the claims are directed to an abstract idea of a fundamental economic principle for providing insurance products. Final Act. 6–7; see also Ans. 4. The Examiner finds claim 1 contains steps directed to the abstract idea of organizing, storing and transmitting information as well as the abstract idea of comparing new and stored information using rules. Final Act. 6. The Examiner added that the claims, when considered as a whole, fail to recite an inventive concept sufficient to transform the claimed subject matter into a patent eligible application. Final Act. 24–25; see also Ans. 4–6. The Examiner further determined the claims Appeal 2017-011252 Application 13/422,647 9 fail to amount to significantly more than the abstract idea. Final Act. 7–8; see also Ans. 6–7. Based on these determinations, the Examiner concluded that the claims are ineligible under § 101. Final Act 2. Appellant argues that the claimed invention solves a technical problem through an inventive concept using specific steps. App. Br. 12–13; see also Reply Br. 4–5. According to Appellant, the Examiner oversimplifies the claims and fails to account for the specific recited limitations that add significantly more to the purported abstract idea to render the claims eligible. App. Br. 13–16; see also Reply Br. 4–5. Revised Guidance Step 2A — Prong 1 Turning to claim 1, we first note that the claim recites a method and, therefore, falls within the process category of § 101. But despite falling within this statutory category, we must still determine whether the claim is directed to a judicial exception, namely an abstract idea. See Alice, 573 U.S. at 217. To this end, we determine (1) whether claim 1 recites a judicial exception (Revised Guidance Step 2A — Prong 1) and, if so, (2) whether the identified judicial exception is integrated into a practical application (Revised Guidance Step 2A — Prong 2). See Revised Guidance, 84 Fed. Reg. 52–55. We agree with the Examiner that claim 1 recites a judicial exception. The recited judicial exception can be categorized as certain methods of organizing human activity. App. Br. 24–26 (Claims Appendix). Steps [a]–[j], under their broadest reasonable interpretation, relate to identifying a group of people and collecting data about the group of people from multiple sources in order to determine and offer an insurance product Appeal 2017-011252 Application 13/422,647 10 to one or more people in the group — i.e., certain methods of organizing human activity, specifically the fundamental economic practice of providing an insurance product, and, therefore, an abstract idea. See Revised Guidance, 84 Fed. Reg. 52. The courts have held similar concepts to be abstract. Thus, for example, the Federal Circuit has held that managing an insurance policy is a fundamental economic practice, i.e., an abstract idea. See, e.g., Bancorp Services, L.L.C. v. Sun Life Assururance Co. of Canada (U.S.), 687 F.3d 1266, 1280 (Fed. Cir. 2012) (concluding that “managing a stable value protected life insurance policy by performing calculations and manipulating the results” is an abstract idea.); see also Accenture Glob. Services, GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1344–45 (Fed. Cir. 2013) (finding ineligible claims directed to generating rule-based tasks for processing an insurance claim). An integral part of determining an insurance product is to collect as much information as possible to assess the risk involved with insuring a particular person or group to determine an insurance product premium. See, e.g., Spec. ¶ 25 (“[I]nformation aggregated from various online sources may be used in the risk analysis.” “[A]n insurance product . . . may be priced . . . based on group . . . risk.”). Accordingly, recited steps directed to using an insurance computer system (step [a]) for: (1) identifying a group (step [b]); (2) collecting and verifying information about the group from various data sources such as social network platform servers and external databases (steps [c]–[e] and [i]); (3) determining risk and insurance product pricing (steps ([f]–[h]); and (4) providing an insurance product offer (step [j]) recite an abstract idea of certain methods of Appeal 2017-011252 Application 13/422,647 11 organizing human activity of a fundamental economic practice for providing an insurance product. Additionally, Appellant explains in the Specification, as described above, that insurance products offerings are based on risk characteristics, which determines insurance product offer pricing. See Spec. ¶¶ 35–37, 41, 44, and 49–51. Using aggregated data to determine risk for providing an insurance product at a particular price, thus, is a form of risk management based on classifying the risk associated with an insurance application. The Supreme Court has held that claims directed to “the basic concept of hedging, or protecting against risk” recite “a fundamental economic practice,” i.e., an abstract idea. Bilski, 561 U.S. at 611 (citations omitted). For the above reasons, we determine claim 1 recites a fundamental economic practice, identified as an abstract idea in the Revised Guidance. Revised Guidance Step 2A — Prong 2 Because claim 1 recites an abstract idea, we must determine whether the abstract idea is integrated into a practical application, namely whether the claim applies, relies on, or uses the abstract idea in a manner that imposes a meaningful limit on the abstract idea, such that the claim is more than a drafting effort designed to monopolize the abstract idea. See Revised Guidance, 84 Fed. Reg. 53. To this end, we (1) identify whether there any additional, recited elements beyond the judicial exception, and (2) evaluate those elements individually and collectively to determine whether they integrate the exception into a practical application. See id. at 54–55. The additional elements beyond the above-identified judicial exceptions recited in claim 1 are: (1) “an insurance computer system . . . comprising at least one processor, at least one memory, and at least one Appeal 2017-011252 Application 13/422,647 12 network interface;” (2) “computer servers” including “back office technology;”4 and (3) “external databases.” App. Br. 24–26 (Claims Appendix). When considering these elements individually or in combination, we determine they do not integrate the above-identified judicial exceptions into a practical application. First, we are not persuaded that the claimed invention improves the computers or their components’ functionality or efficiency, or otherwise changes the way those devices function, at least in the sense contemplated by the Federal Circuit in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) and McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), despite Appellant’s arguments to the contrary (App. Br. 12–15; see also Ans. 4–5). Specifically, the claimed invention is said to “enable an insurance processing computer system to offer insurance products to members of an online group and automatically identify when to provide an insurance offering update based on changes in the online group” and yields improvements “in computer functionality” by increasing “the speed and accuracy at which such an insurance processing computer system may select, offer, and administer insurance products.” App. Br. 12–13. However, merely “[u]sing a computer to accelerate an ineligible mental process does not make that process patent-eligible.” Bancorp Services, L.L.C. v. Sun Life Assurance Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also CLS Bank Int’l v. Alice Corp. Pty. Ltd., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an 4 See Spec. ¶ 40 (Appellant identifies “back office technology” as “one or more servers and supporting software components.”). Appeal 2017-011252 Application 13/422,647 13 otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.”); aff’d, 573 U.S. 208 (2014). With respect to Appellant’s arguments related to Enfish, the claimed self-referential table in Enfish was a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. Enfish, 822 F.3d at 1339. To the extent Appellant contends that the claimed invention uses such a data structure to improve a computer’s functionality or efficiency, or otherwise change the way that device functions, there is no persuasive evidence on this record to substantiate such a contention. Rather, the additional elements (1)–(3) are generic computer components executing automated process steps that merely serve as tools used to implement the abstract idea. See Spec. ¶¶ 16 (“Any suitable computer readable storage media may be utilized.”), 18 (“[P]rocessor . . . to execute a series of computer-readable instructions.”), 19 (“[N]etwork connections shown are illustrative and other means of establishing a communications link between the computers may be used . . . . well-known protocols.”); see also Alice, 573 U.S. at 226 (“[A] data processing system with a communications controller and data storage unit . . . is purely functional and generic. Nearly every computer [is] capable of performing the basic calculation, storage, and transmission functions required by the claims.”) (citations and quotations omitted). Furthermore, in McRO, the claimed process used a combined order of specific rules that rendered information in a specific format that was applied to create a sequence of synchronized, animated characters. McRO, 837 F.3d at 1315. Notably, the recited process automatically animated characters using particular information and techniques—an improvement over manual Appeal 2017-011252 Application 13/422,647 14 three-dimensional animation techniques that was not directed to an abstract idea. Id. at 1316. But, unlike the claimed invention in McRO that improved how the physical display operated to produce better quality images, the claimed invention here merely uses generic computing components collect data about a group of people from multiple sources in order to determine and offer an insurance product to them. This generic computer implementation is not only directed to a fundamental economic principle, but also does not improve a display mechanism as was the case in McRO. See SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO). Additionally, the claim limitation reciting “[j] wherein the online insurance application is further configured to provide at least one interface configured to present information associated with one or more insurance products and offerings available to members of the online group from the insurance provider,” not only uses generic computing components to perform the abstract idea as noted above, but this data transmitting function is also insignificant post–solution activity that merely disseminates data, and therefore, does not integrate the exception into a practical application for that additional reason. See In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc); aff’d on other grounds, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371-72 (Fed. Cir. 2011)(noting that even if some physical steps are required to obtain information from a database (e.g., entering a query via a keyboard, clicking a mouse), such data-gathering steps cannot alone confer patentability). Accord Revised Guidance, 84 Fed. Reg. 55 (citing MPEP § 2106.05(g)). Appeal 2017-011252 Application 13/422,647 15 For the above-stated reasons, we determine the additional elements recited in independent claim 1 beyond the judicial exception, whether considered alone or in combination, do not integrate the abstract idea into a practical application. Alice Step Two, Step 2B Under the Revised Guidance, if a claim: (1) recites a judicial exception; and (2) does not integrate that exception into a practical application, we then look to whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or, simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Revised Guidance, 84 Fed. Reg. 56. We find Appellant’s argument that “claim 1 recites a ‘non- conventional and non-generic arrangement’ that amounts to an ‘inventive concept’ when . . . considered as an ordered combination,” citing BASCOM, unavailing. App. Br. 13–15. In BASCOM, the court held eligible claims directed to a technology-based solution to filter Internet content that overcame existing problems with other Internet filtering systems by making a known filtering solution—namely a “one-size-fits-all” filter at an Internet Service Provider (ISP)—more dynamic and efficient via individualized filtering at the ISP. See BASCOM Global Internet Ser., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1351 (Fed. Cir. 2016). Notably, this customizable filtering solution improved the computer system’s performance and, therefore, was patent-eligible. See id. But, unlike the filtering system Appeal 2017-011252 Application 13/422,647 16 improvements in BASCOM that added significantly more to the abstract idea in that case, the claimed invention here uses generic computing components to implement an abstract idea as noted previously. On the record before us, we find no reversible error in the Examiner’s determination that additional elements, such as a recorded call, are nothing more than generic elements using conventional concepts. See Final Act. 7– 8; see also Ans. 4. In fact, the Specification supports the Examiner’s finding that the additional elements are merely generic computer elements performing generic computer functions, by providing non-limiting and exemplary descriptions of generic computer components that are used to aggregate data to determine risk for providing an insurance product at a particular price. See, e.g., Spec. ¶¶ 16, 18, 29, and 80. Appellant does not argue dependent claims 4–7, 11–14, 21, 23–27, 29 and 31–38 separately with sufficient particularity, but assert the rejection of those claims should be withdrawn for at least the same reasons as argued for independent claim 1. See App. Br. 15. In light of the foregoing, we conclude that each of claims 1–7, 11, 13–16, and 18–20, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application, and does not include an inventive concept. Accordingly, for the reasons discussed above, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of claims 1, 4–8, 11–14, 21, 23– 27, and 29–38.5 5 To the extent the Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2017-011252 Application 13/422,647 17 Rejection B of Representative Claim 1 under 35 U.S.C. § 103(a) Appellant contests the following conditional limitation of representative independent claim 1 (bracketed indicators added): [h] identifying, by the insurance computer system, the online group for an insurance offering update based on a size of the online group changing beyond a threshold amount App. Br. 25 (Claims Appendix) (emphasis added). Appellant argues the combination of Auker, Stivoric, and Kern fails to teach or suggest limitation [h]. App. Br. 20; see also Ans. 5–6. We note the conditional language employed in contested “based on a size of the online group changing beyond a threshold amount” limitation recited in claim 1 (i.e., the condition precedent). App. Br. 24–26 (emphasis added). See Ex parte Schulhauser, Appeal No. 2013-007847, 2016 WL 6277792, at *9 (PTAB, Apr. 28, 2016) (precedential) (Holding “[t]he Examiner did not need to present evidence of the obviousness of the remaining method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim (e.g., instances in which the electrocardiac signal data is not within the threshold electrocardiac criteria such that the condition precedent for the determining step and the remaining steps of claim 1 has not been met.”); see also Ex parte Carasso, Appeal No. 2018-005963, 2019 Pat. App. LEXIS 356, at *17–20 (BPAI Jan. 24, 2019) (holding claim language reciting “based on user input indicating that development of a text extraction rule is complete” was a condition precedent such that the conditional method step “storing the completed text extraction rule in computer memory” of claim 1 was not Appeal 2017-011252 Application 13/422,647 18 required to be performed under a broadest reasonable interpretation of the claim) (emphasis added). Applying the controlling guidance of Schulhauser here, we additionally find the Examiner need not present evidence of the obviousness of the conditional method step “identifying, by the insurance computer system, the online group for an insurance offering update” of claim 1 that is not required to be performed under a broadest reasonable interpretation of the claim.6 In particular, we conclude that claim 1 does not recite positively that the condition precedent (i.e., “a size of the online group changing beyond a threshold amount”) actually occurs, or is ever required to occur, within a broadest reasonable interpretation of the claim. Furthermore, the Specification supports the conclusion that the step “identifying, by the insurance computer system, the online group for an insurance offering update”, recited in claim 1 is a conditional step triggered by the condition precedent “a size of the online group changing beyond a threshold amount” as recited in claim 1. Additionally, reviews of existing insurance offerings and/or online groups may be triggered by a software component within the insurance system 230, using one or more triggering conditions indicating that an existing insurance offering or an 6 See e.g., Applera Corp.—Applied Biosystems Group v. Illumina, Inc., 375 Fed.Appx. 12, 21 (Fed. Cir. 2010) (unpublished) (affirming a district court's interpretation of a method claim as including a step that need not be practiced if the condition for practicing the step is not met); Cybersettle, Inc. v. Nat'l Arbitration Forum, Inc., 243 Fed.Appx. 603, 607 (Fed. Cir. 2007) (unpublished) (“It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.”). Appeal 2017-011252 Application 13/422,647 19 online group is a potential candidate for updating. For example, an online group may be automatically identified as a potential update candidate in step 501 when the size of the online group has changed by a threshold amount (e.g., a +/- absolute change or percentage change in group size) . . . . identifying an online group in step 501 may include . . . . if an existing online group has grown to exceed a size threshold . . . creat[ing] more appropriate subsets of potential customers for the updated online group insurance offerings. Spec. ¶ 44–45 (emphasis added). Appellant has not advanced additional arguments concerning the 35 U.S.C. § 103(a) rejection of representative claim 1. See generally App. Br.; see also Reply Br. To the extent Appellant has not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Therefore, on this record, and based upon a preponderance of the evidence, we are not persuaded of error regarding the Examiner’s underlying factual findings and ultimate legal conclusion of obviousness for representative independent claim 1. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103 rejection B of representative independent claim 1. The remaining claims rejected under rejection B (not argued separately) fall with claim 1. See App. Br. 21. Rejection C of Claims 4 and 11 under 35 U.S.C. § 103(a) Claims 4 and 11 depend from independent claims 1 and 8, respectively. Appellant advances no further separate substantive arguments regarding these claims. App. Br. 21. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain Appeal 2017-011252 Application 13/422,647 20 the Examiner's 35 U.S.C. § 103 rejection C of dependent claims 4 and 11, for the reasons discussed above regarding claim 1. Rejection D of Claims 7 and 14 under 35 U.S.C. § 103(a) Claims 7 and 14 depend from independent claims 1 and 8, respectively. Appellant advances no further separate substantive arguments regarding these claims. App. Br. 22. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection D of dependent claims 7 and 14, for the reasons discussed above regarding claim 1. Rejection E of Claims 34–38 under 35 U.S.C. § 103(a) Claims 34–38 depend from independent claim 1. Appellant advances no further separate substantive arguments regarding these claims. App. Br. 22. Arguments not made are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Accordingly, we sustain the Examiner's 35 U.S.C. § 103 rejection C of dependent claims 4 and 11, for the reasons discussed above regarding claim 1. DECISION We affirm the Examiner’s decision rejecting claims 1, 4–8, 11–14, 21, 23–27, and 29–38 under 35 U.S.C. § 101. We affirm the Examiner’s decision rejecting claims 1, 4–8, 11–14, 21, 23–27, and 29–38 under 35 U.S.C. § 103(a). Appeal 2017-011252 Application 13/422,647 21 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED