Geoffrey Clarke et al.

Patent Trials and Appeals Board

Jun 22, 2020

2019006232 (P.T.A.B. Jun. 22, 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.
12/802,589 06/09/2010 Geoffrey Clarke GUIDP015 8686
21912 7590 06/22/2020
VAN PELT, YI & JAMES LLP
10050 N. FOOTHILL BLVD #200
CUPERTINO, CA 95014
EXAMINER
KING JR., JOSEPH W
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
06/22/2020 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):
usptocorrespondence@ip-patent.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GEOFFREY CLARKE, STEPHEN J. BASSETT,
MICHAEL KUANG-CHUNG YANG and
ALAN HARRISON KEEFER
___________

Appeal 2019-006232
Application 12/802,589
Technology Center 3600
____________

Before CAROLYN D. THOMAS, CARL W. WHITEHEAD JR. and
IRVIN E. BRANCH, Administrative Patent Judges.

WHITEHEAD JR., Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE1
Appellant2 is appealing the final rejection of claims 1−8, 11, 13−19,
22, 24, and 25 under 35 U.S.C. § 134(a). Appeal Brief 1. Claims 1, 15, and

1 Rather than reiterate Appellant’s arguments and the Examiner’s
determinations, we refer to the Appeal Brief (filed February 6, 2019), the
Reply Brief (filed August 21, 2019), the Final Action (mailed September 6,
2018) and the Answer (mailed June 24, 2019), for the respective details.

2 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies Guidewire Software, Inc., as the real party in
interest. Appeal Brief 1.
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25 are independent. Claims 9, 10, 12, 20, 21, and 23 are cancelled. See
Claim Appendix. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Introduction
According to Appellant, the invention is directed to managing
insurance information wherein:
[C]ertain information that can be shared across several
policies is stored at the account level. The information is
selectively set to be versioned or non-versioned. When policy
information is obtained, non-versioned information is linked to
the policy so that when there is change to the non-versioned
information, the policy is automatically updated to reflect the
change. Versioned information is copied from the account to the
policy. When there is change to the versioned information, a
stored version of the policy information is saved at the policy
level and the part of the policy that corresponds to the versioned
information is updated. In some embodiments, whether a piece
of information is versioned or non-versioned depends on the
context, such as which job is being executed or which role a
contact is assigned.
Specification ¶ 11.
Claim 1 is reproduced below for reference (bracketed step lettering
added):
Representative Claim3
1. A method, comprising:

3 For the § 101 rejection, Appellant argues claims 1–8, 11, 13–19, 22, 24,
and 25 as a group, focusing on subject matter common to independent
claims 1, 15 and 25. See Appeal Brief 7. We select independent claim 1 as
the representative claim. See 37 C.F.R. § 41.37(c)(1)(iv).
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[a] obtaining account information, wherein the account
information includes information pertaining to an insurance account,
and wherein at least some of the account information is shared across
one or more insurance policies;
[b] wherein the account information is stored in an account
level data store;
[c] designating a first portion of the account information as
versioned information, wherein the first portion of the account
information designated as versioned information includes historical
values affecting terms of an insurance policy;
[d] designating a second portion of the account information as
non-versioned information, wherein the second portion of the account
information designated as non-versioned information includes
information that does not affect the terms of the insurance policy; and
[e] wherein the designating of the first and second portions of
the account information as versioned and non-versioned information,
respectively, is performed automatically based at least in part on at
least one of a type of job being executed and a type of role associated
with a contact;
[f] obtaining policy information associated with the insurance
policy, wherein at least some of the policy information is associated
with corresponding account information, wherein obtaining the policy
information includes synchronizing the policy information and the
account information, and wherein the synchronizing includes:
[f1] copying at least some of the first portion of the
account information designated as versioned information to a
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first portion of the insurance policy, wherein the copying
includes copying the at least some of the versioned information
from the account level data store to a policy level data store;
and
[f2] establishing a link between at least some of the
second portion of the account information designated as non-
versioned information and a second portion of the insurance
policy, wherein the at least some of the non-versioned
information is stored in the account level data store, wherein the
link comprises a reference, a pointer, or both to the at least
some of the non-versioned information stored in the account
level data store, and wherein the at least some of the non-
versioned information is not stored in the policy level data
store;
[g] receiving an update to the at least some of the non-versioned
information stored in the account level data store; and
[h] displaying, in a user interface, at least a portion of the
insurance policy, including displaying the at least some of the versioned
information stored in the policy level data store and using the link to display
the updated at least some of the non-versioned information stored in the
account level data store.
Rejection on Appeal
Claims 1−8, 11, 13−19, 22, 24, and 25 stand rejected under 35 U.S.C.
§ 101 because the claimed invention is directed to patent–ineligible subject
matter. Final Action 2–12.

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PRINCIPLES OF LAW
A. Section 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 U.S. 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 Court’s two-part framework, described in Mayo and Alice.
Alice at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first
determine what concept the claim is “directed to.” See Alice, 573 U.S. at
219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk.”).
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 waterproof cloth, vulcanizing India
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rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
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 187; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the 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. (citation omitted)
(citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that
an application of a law of nature or mathematical formula to a known
structure or process may well be deserving of patent protection.”).
If the claim is “directed to” an abstract idea, we turn to the second part
of the Alice and Mayo framework, where “we must examine the elements of
the claim to determine whether it contains an ‘inventive concept’ sufficient
to ‘transform’ the claimed abstract idea into a patent-eligible application.”
Alice, 573 U.S. at 221 (quotation marks omitted). “A claim that recites an
abstract idea must include ‘additional features’ to ensure ‘that the [claim] is
more than a drafting effort designed to monopolize the [abstract idea].’” Id.
(alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
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B. USPTO Section 101 Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101. 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019)
(“2019 Revised Guidance”).4 “All USPTO personnel are, as a matter of
internal agency management, expected to follow the guidance.” Id. at 51;
see also October 2019 Update at 1.
Under the 2019 Revised Guidance and the October 2019 Update, 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) (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)) (“Step 2A, Prong Two”).5
2019 Revised Guidance at 52–55.

4 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).
5 This evaluation is performed by (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception, and
(b) evaluating those additional elements individually and in combination to
determine whether the claim as a whole integrates the exception into a
practical application. See 2019 Revised Guidance at 54–55.
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Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional” in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
2019 Revised Guidance at 52–56.
ANALYSIS
The Examiner determines claims 1–8, 11, 13–19, 22, 24, and 25 are
patent ineligible under 35 U.S.C. § 101. See Final Action 2; see Alice, 573
U.S. at 217 (describing the two–step framework “for distinguishing patents
that claim laws of nature, natural phenomena, and abstract ideas from those
that claim patent-eligible applications of those concepts”).
We are not persuaded the Examiner’s rejection is in error. Unless
otherwise indicated, we adopt the Examiner’s findings and conclusions as
our own. We add the following primarily for emphasis and clarification
with respect to the Revised Guidance.

Step 2A–Prongs 1 and 2 identified in the 2019 Revised Guidance
Prong One
The Examiner determines, in the Answer, after the publishing of the
2019 Revised Guidance, “The recited abstract idea falls within one or more
of the three enumerated 2019 [Revised Guidance] categories of patent
ineligible subject matter, to wit: certain methods of organizing human
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activity, which includes fundamental economic practices or principles
(e.g., insurance --determining data to be copied into an insurance policy).”
Answer 6. Appellant argues:
[T]he claims do not recite a method of organizing human
activity, such as a fundamental economic concept, commercial
and legal interactions, or managing interactions between people.
For instance, the claims do not recite the fundamental economic
principle or practice of insurance itself. Rather, the claims are
directed to a specific implementation of a process for managing
account information using versioned and non-versioned
information.
Appeal Brief 8; Reply Brief 2.

The Specification discloses:
Managing insurance information is disclosed. In some
embodiments, certain information that can be shared across
several policies is stored at the account level. The information is
selectively set to be versioned or non-versioned. When policy
information is obtained, non-versioned information is linked to
the policy so that when there is change to the non-versioned
information, the policy is automatically updated to reflect the
change. Versioned information is copied from the account to the
policy. When there is change to the versioned information, a
stored version of the policy information is saved at the policy
level and the part of the policy that corresponds to the versioned
information is updated. In some embodiments, whether a piece
of information is versioned or non-versioned depends on the
context, such as which job is being executed or which role a
contact is assigned.
Specification ¶11.

Claim 1 recites obtaining insurance account information and
designating the first and second portions automatically as versioned and
non-versioned information in limitations [a]-[e]. Claim 1 further recites
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synchronizing the insurance policy information with account information
and copying the some of the versioned information from the account level
data store to the policy level data store; linking the non-versioned
information to a second portion of the insurance policy where some of the
non-versioned information is stored in the account level and policy level
data stores in limitations [f]-[f2]. Claim 1 also recites displaying some of
versioned information stored in the policy level data store and displaying
some of the non-versioned information stored in the account level data store
in limitations [g]-[h].
These steps comprise fundamental economic principles or practices
(including hedging, insurance, mitigating risk); thus, the claim recites the
abstract idea of “certain methods of organizing human activity.” See 2019
Revised Guidance, Section I (Groupings of Abstract Ideas). Our reviewing
court has found claims to be directed to abstract ideas when they recited
similar subject matter. See Bancorp Services, L.L.C. v. Sun Life
Assurance 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).
Therefore, we conclude the claims recite an abstract idea pursuant to Step
2A, Prong One of the 2019 Revised Guidance. See 2019 Revised Guidance,
Section III(A)(1) (Prong One: Evaluate Whether the Claim Recites a
Judicial Exception)).

Prong Two
Under Prong Two of the 2019 Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
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into a practical application of the exception.” 2019 Revised Guidance,
Section III(A)(2). It is noted that a “claim that integrates a judicial
exception into a practical application will 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 Revised Guidance, Section
III(A)(2).
We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance). See 2019 Revised Guidance at 55 nn. 25, 27–32.
Appellant argues, “[t]he claims are not directed to a judicial exception
at least because the claims, when considered as a whole, reflect an
improvement in the functioning of a computer, or an improvement to other
technology or technical field, and are more than a drafting effort designed to
monopolize the exception.” Appeal Brief 9. Appellant contends, “the
claims, similarly to those in Core Wireless[6], are directed to an improvement
to user interfaces over existing insurance policy management systems, at
least in part by eliminating duplicative data entry and achieving greater
flexibility in the use and display of information as compared with existing
insurance policy management systems.” Appeal Brief 10. We do not find
Appellant’s arguments persuasive because any alleged improvement to the
efficiency, speed, and accuracy, arise out of the conventional advantages of

6 Core Wireless Licensing S.A.R.L. v. LG Elecs., Inc., 880 F.3d 1356
(Fed. Cir. 2018).
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using the claimed computing device as a tool, and not a particular
improvement to the computing device itself (see Intellectual Ventures I LLC
v. Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015)
(“[M]erely adding computer functionality to increase the speed or efficiency
of the process does not confer patent eligibility on an otherwise abstract
idea”)); see 2019 Revised Guidance at 55; see also Trading Techs. Int’l, Inc.
v. IBG LLC, 921 F.3d 1084, 1090 (Fed. Cir. 2019) (“This invention makes
the trader faster and more efficient, not the computer. This is not a technical
solution to a technical problem.”). Further, as the Federal Circuit has
explained, a “claim for a new abstract idea is still an abstract idea.”
Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016). Even assuming the technique claimed was “[g]roundbreaking,
innovative, or even brilliant,” that would not be enough for the claimed
abstract idea to be patent eligible. See Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). Claim 1’s method does
not recite any improvement to the claimed user interface, instead the method
only uses the user interface device to display the updated insurance policy
information. See Appeal Brief 10.
Claim 1 recites:
displaying, in a user interface, at least a portion of the insurance
policy, including displaying the at least some of the versioned
information stored in the policy level data store and using the link
to display the updated at least some of the non-versioned
information stored in the account level data store.

Thus, the claim’s recitation of displaying data is unlike patent-eligible
claims directed to displaying data such as the claimed user interface in Core
Wireless. In Core Wireless, the court held that claims which recited an
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interface were patent eligible because the claims recited specific limitations
of the interface such as: an application summary that can be reached through
a menu, the data being in a list and being selectable to launch an application,
and additional limitations directed to the actual user interface displayed and
how it functions. Core Wireless, 880 F.3d at 1363. The court found that the
claims were directed to an improved user interface and not the abstract
concept of an index as the claim “limitations disclose a specific manner of
displaying a limited set of information to the user, rather than using
conventional user interface methods to display a generic index on a
computer.” Core Wireless at 1363; see also Trading Tech v. CQG, Inc., 675
Fed. App’x 1001 (Fed. Cir. 2017) (Holding that a user interface with a
prescribed functionality directly related to the interface’s structure, that is
addressed to and resolves a problem in the art, is patent eligible.). In
Appellant’s claim 1, there are no limitations directed to a specific manner of
displaying a limited set of information to the user or to how the user
interacts with the displayed data and, therefore, we find Appellant’s
arguments unpersuasive.
Appellant contends, “the specific implementation of a process for
managing insurance information using versioned and non-versioned data
recited in the claims does not monopolize an abstract idea that falls within
any of the groupings of abstract ideas enumerated in Section I of the 2019
[Revised Guidance].” Appeal Brief 13. Appellant reasons the data recited
in “the claims does not monopolize an abstract idea” are supported by
reciting the “groupings of subject matter” in the 2019 Revised Guidance,
Section I and simply stating “the claims does not monopolize the abstract
idea exceptions” of the subject matter groupings. See Appeal Brief 13. We
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do not find Appellant’s reasoning persuasive because as the Supreme Court
has described “the concern that drives this exclusionary principle [i.e., the
exclusion of abstract ideas from patent eligible subject matter] as one of pre-
emption.” Alice, 573 U.S. at 216. However, characterizing preemption as a
driving concern for patent eligibility is not the same as characterizing
preemption as the sole test for patent eligibility. As our reviewing court has
explained, “[t]he Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability,” and
“[f]or this reason, questions on preemption are inherent in and resolved by
the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d
1371, 1379 (Fed. Cir. 2015) (citing Alice, 573 U.S. at 216). And, although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.” Id.
Moreover, “[w]here a patent’s claims are deemed only to disclose patent
ineligible subject matter under the [Alice/Mayo] framework . . ., preemption
concerns are fully addressed and made moot.” Id.; see also OIP Techs., Inc.
v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“[T]hat the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract.”).
Additionally, we detect no additional element (or combination of
elements) recited in Appellant’s representative claim 1 that integrates the
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2). For example, Appellant’s claimed additional element
(e.g., user interface) does not: (1) improve the functioning of a computer or
other technology; (2) is not applied with any particular machine (except for a
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generic computer device); (3) does not effect a transformation of a particular
article to a different state; and (4) is not applied in any 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. See MPEP §§
2106.05(a)–(c), (e)–(h).
Accordingly, we determine the claim does not integrate the recited
judicial exception into a practical application. See 2019 Revised Guidance,
Section III(A)(2) (Prong Two: If the Claim Recites a Judicial Exception,
Evaluate Whether the Judicial Exception Is Integrated Into a Practical
Application)).

Step 2B identified in the 2019 Revised Guidance
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 217–18 (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72–73 (2012)).
Appellant contends, “the claims recite other than what is well-
understood, routine, and conventional in the field, and add unconventional
steps that confine the claims to a particular useful application because they
are analogous to the claims of Core Wireless, which were found to be
patent-eligible under 35 U.S.C. §101 by the Federal Circuit.” Appeal Brief
15. As we discussed above, we find the claims in the instant application to
be distinguished from the claims of Core Wireless. Also, we find the claims
do not include a specific limitation or a combination of elements that
amounts to significantly more than the judicial exception itself. See 2019
Revised Guidance, Section III(B) (Step 2B: If the Claim Is Directed to a
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Judicial Exception, Evaluate Whether the Claim Provides an Inventive
Concept).
Further, in Bascom, our reviewing court found that while the claims of
the patent were directed to an abstract idea, the patentee alleged an
“inventive concept can be found in the ordered combination of the claim
limitations that transform the abstract idea of filtering content into a
particular, practical application of that abstract idea.” Bascom Global
Internet Services, Inc., v. AT&T Mobility LLC 827 F.3d 1341, 1352 (Fed. Cir.
2016). In particular, the patent in Bascom claimed “a technology-based
solution (not an abstract-idea-based solution implemented with generic
technical components in a conventional way) to filter content on the Internet
that overcomes existing problems with other Internet filtering systems.”
Bascom at 1351. Claim 1 is distinguishable, as it recites an abstract-idea-
based solution, that is, a method of updating insurance information and
receiving the results on a generic technical component (e.g., user interface),
in a conventional way. See generally Specification. Therefore, we are not
persuaded that ordered combinations of steps in representative claim 1
provide an inventive concept. See 2019 Revised Guidance at 56.
Accordingly, we conclude claims 1−8, 11, 13−19, 22, 24, and 25 are
directed to fundamental economic principles or practices (including hedging,
insurance, mitigating risk); thus, the claim recites the abstract idea of
“certain methods of organizing human activity” identified in the 2019
Revised Guidance; and thus, an abstract idea with the claims failing to recite
limitations that amount to significantly more than the abstract idea itself.
We sustain the Examiner’s § 101 rejection of claims 1−8, 11, 13−19, 22, 24,
and 25.
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CONCLUSION

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1−8, 11,
13−19, 22,
24, 25
101 Eligibility 1−8, 11,
13−19, 22,
24, 25

Overall
Outcome
1−8, 11,
13−19, 22,
24, 25

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). See 37 C.F.R.
§ 1.136(a)(1)(v).

AFFIRMED