Manuel Becerra et al.Download PDFPatent Trials and Appeals BoardMar 31, 20212020006062 (P.T.A.B. Mar. 31, 2021) Copy Citation 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. 13/435,474 03/30/2012 Manuel Becerra 006128/416072 4922 826 7590 03/31/2021 ALSTON & BIRD LLP ONE SOUTH AT THE PLAZA 101 SOUTH TRYON STREET SUITE 4000 CHARLOTTE, NC 28280-4000 EXAMINER ARAQUE JR, GERARDO ART UNIT PAPER NUMBER 3689 NOTIFICATION DATE DELIVERY MODE 03/31/2021 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): usptomail@alston.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte MANUEL BECERRA, DAVID GLENN McMILLAN, EDWARD GORMAN, and GARY McWILLIAMS __________________ Appeal 2020-006062 Application 13/435,474 Technology Center 3600 ____________________ Before HUBERT C. LORIN, JAMES P. CALVE, and BRUCE T. WIEDER, Administrative Patent Judges. CALVE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the decision of the Examiner to reject claims 1–5, 8–15, and 17–36, which are all of the pending claims.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Assurant Inc. as the real party in interest. Appeal Br. 2. 2 Claims 6, 7, and 16 are cancelled. See Appeal Br. 63, 66 (Claims App.); see also Final Act. 2. Appeal 2020-006062 Application 13/435,474 2 CLAIMED SUBJECT MATTER Claim 1, 11, 20, and 36 are independent. Representative claim 1 recites: 1. A computer implemented method for electronic processing of a claim made at a client terminal under a wireless device protection program and programmatically ranking options for the fulfillment of the claim via a targeted fulfillment engine, the method comprising: receiving claim information associated with a subscriber and a covered wireless device, the claim information indicative of a claim associated with the wireless device protection program; employing, via processing circuitry, a predictive model to determine a plurality of options for fulfillment of the claim, the predictive model defining an aggregated weighted value for the plurality of options, the aggregated weighted value comprising: a component weighted value corresponding to a cost to provide each option of the plurality of options, the cost comprising a total cost to a provider of the wireless device protection program to provide each option for fulfilling the claim, a component weighted value corresponding to a predicted benefit associated with each option of the plurality of options, the predicted benefit comprising a numeric indicator representing a desirability of each option to a wireless carrier, wherein the wireless carrier provides wireless service to the covered wireless device and is not the provider of the wireless device protection program, a component weighted value corresponding to the functionality of the covered wireless device, a component weighted value corresponding to the functionality of a device with upgraded functionality relative to the covered wireless device, and a component weighted value corresponding to a predictive outcome of using each of the plurality of options to fulfill the claim, wherein the predictive outcome defines a likelihood of the subscriber expanding use of subscribed services in response to each option being used to fulfill the Appeal 2020-006062 Application 13/435,474 3 claim, wherein the subscribed services comprise services of the wireless carrier and services of the provider of the wireless device protection program; ranking the plurality of options based at least in part on the aggregated weighted value of the plurality of options; and causing the claim to be fulfilled according to at least one of the plurality of options, such that the predicted benefit associated with the at least one of the plurality of options is provided. Appeal Br. 61–62 (Claims App.). REJECTIONS3 Claims 1–5, 8–15, and 17–36 are rejected under 35 U.S.C. § 101 as directed to patent ineligible subject matter without significantly more. Claims 1, 3–5, 8–11, 13–15, 17–22, 24, 25, 28–32, and 35 are rejected under 35 U.S.C. § 103(a) as unpatentable over Birchall (US 2008/0097796 A1, pub. Apr. 24, 2008), Thomson (WO 01/71606 A1, pub. Sept. 27, 2001), and Gittins (US 2002/0077867 A1, pub. June 20, 2002). Claims 2 and 12 are rejected under 35 U.S.C. § 103(a) as unpatentable over Birchall, Thomson, Gittins, and Eskandari (US 2004/0039593 A1, pub. Feb. 26, 2004). Claims 23 and 36 are rejected under 35 U.S.C. § 103(a) as unpatentable over Birchall, Thomson, Gittins, and McKnight (US 2004/ 0148181 A1, pub. July 29, 2004). Claims 26, 27, 33, and 34 are rejected under 35 U.S.C. § 103(a) as unpatentable over Birchall, Thomson, Gittins, and Johnson (US 2009/ 0195394 A1, pub. Aug. 6, 2009). 3 The Examiner withdrew a rejection of claims 21–23, 29, and 30 under 35 U.S.C. § 112, second paragraph, for indefiniteness. See Adv. Action, mailed September 16, 2019. Appeal 2020-006062 Application 13/435,474 4 ANALYSIS Patent Eligibility of Claims 1–5, 8–15, and 17–36 Appellant largely argues the claims as a group. Appeal Br. 21–42. We select claim 1 as the representative claim of the group and separately address any arguments that were made for other claims such as claims 23 and 36. See 37 C.F.R. § 41.37(c)(1)(iv). Regarding claim 1, the Examiner determines that the limitations of processing a claim by receiving claim information, employing a predictive model to define an aggregated weighted value of costs, predicted benefits, functionality, and predictive outcomes, and then ranking the options, and fulfilling the claim by one of the options are certain methods of organizing human activity for an insurance protection program, which is a fundamental economic practice of mitigating risk for business, commercial, and legal relationships or transactions and a longstanding practice of fulfilling product protection contracts. Final Act. 13–15 (citing Spec. ¶¶ 2, 4). The Examiner determines that claiming a predictive model of component weighted values and ranking the options also recites mathematical concepts and calculations. Id. at 15. The Examiner determines the judicial exception is not integrated into a practical application because computer implemented processing of data at a client terminal and processing circuitry are generic computing components recited at a high level of generality to apply the abstract idea. Id. at 16–17. The Examiner determines that the additional elements, considered individually and as an ordered combination, do not amount to significantly more than the judicial exception, and the extra-solution data-gathering steps are well-understood, routine, and conventional functions. Id. at 17. Appeal 2020-006062 Application 13/435,474 5 Principles of Law Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. 35 U.S.C. § 101. Laws of nature, natural phenomena, and abstract ideas are not patentable. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). To distinguish patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications, we first determine whether the claims are directed to a patent-ineligible concept. Id. at 217. If they are, we consider the claim elements, individually and as an ordered combination, to determine if any additional elements provide an inventive concept sufficient to ensure that the claims in practice amount to significantly more than a patent on the ineligible concept. Id. at 217–18. The USPTO has issued guidance about this framework. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). To determine if a claim is “directed to” an abstract idea, we evaluate whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas listed in the Revised Guidance (i.e., mathematical concepts, certain methods of organizing human activities 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 § 2106.05(a)– (c), (e)–(h) (9th ed. Rev. 10.2019 June 2020) (“MPEP”)).4 Id. at 52–55. 4 “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.” Id. at 54. Appeal 2020-006062 Application 13/435,474 6 Only if a claim (1) recites a judicial exception and also (2) does not integrate that exception into a practical application, do we then consider whether the claim either (3) adds a limitation beyond a 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. Revised Guidance, 84 Fed. Reg. at 56. Step 1: Is Claim 1 Within a Statutory Category? Claim 1 recites a system, which is a statutory category of invention, namely, a process. 35 U.S.C. § 101. Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception? We agree with the Examiner that claim 1 recites certain methods of organizing human activity as fundamental economic practices (mitigating risk and insurance), commercial or legal interactions (agreements, contracts, legal obligations) and mathematical concepts. Final Act. 14–15. Some steps are recited as mental processes. Revised Guidance, 84 Fed. Reg. at 52. The focus of claim 1 is targeted fulfillment of claims made under a wireless device protection program. Spec. ¶ 6. The programs are offered as insurance or warranty programs to protect subscribers (customers) against the loss or damage of a wireless device by providing repair or replacement. Id. ¶¶ 2–4. The insurance company’s obligations are specified in the terms and conditions of a contract or policy. Id. ¶ 4. Targeted fulfillment allows insurers to satisfy their legal obligations under a contract for a claim while balancing the costs versus benefits of available options to achieve maximum customer satisfaction, achieve the goals of the parties to the transaction, and provide benefits to a wireless service provider. Id. ¶¶ 13–15. Appeal 2020-006062 Application 13/435,474 7 The preamble recites this purpose as “[a] computer implemented method for electronic processing of a claim made at a client terminal under a wireless device protection program and programmatically ranking options for the fulfillment of the claim via a targeted fulfillment engine.” Appeal Br. 61 (Claims App.). A subscriber files a claim under an insurance policy. Appellant argues that a “contract” may be involved at some point in dealings between two parties, but the claimed subject matter does not recite a contract or creating or fulfilling a contractual relationship. Appeal Br. 28. The claim language and the Specification’s description of these features of the wireless device protection program indicate otherwise. The Specification describes a wireless device protection program as a form of insurance or warranty protection. Spec. ¶ 4. “The obligations of an entity that offers the program (e.g., an insurance or warranty company) are typically specified in the terms and conditions of a policy or contract [and] [t]he terms and conditions typically specify the minimum standards for fulfilling a claim.” Id. A user (subscriber) typically pays a premium each month on their monthly airtime invoice. Id. ¶ 2. The premium is forwarded to an insurance company where part of the premium is held in reserve to pay for future losses while another portion is used to pay administrative expenses to manage the wireless device protection program. Id. The claimed targeted fulfillment method is provided “with respect to claims associated with a wireless device protection program.” Id. ¶ 6. It is a way to adjudicate and fulfill claims made under a wireless device protection policy or contract. Id. ¶¶ 2–6, 31–33. An insurance company fulfills terms and conditions of a wireless device protection program when a subscriber files a claim under a wireless protection policy or contract. See id. Appeal 2020-006062 Application 13/435,474 8 The preamble recites processing a claim made under a wireless device protection program by ranking options for fulfillment of the claim. Appeal Br. 61 (Claims App.). The first step receives claim information from a subscriber for a wireless device covered under a wireless device protection program. Id. Then, a predictive model determines options to fulfill the claim, and the method causes the claim to be fulfilled. Id. at 61–62. Contractual relations are a fundamental economic practice. See Alice, 573 U.S. at 219–20 (mitigating risk); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (hedging risk); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1353 (Fed. Cir. 2014) (“The relevant Supreme Court cases are those which find an abstract idea in certain arrangements involving contractual relations, which are intangible entities. . . . [T]he Court in both [Bilski and Alice] relied on the fact that the contractual relations at issue constituted ‘a fundamental economic practice long prevalent in our system of commerce.’”) (citations omitted). “Bilski . . . involved a method of entering into contracts to hedge risk in commodity prices, and Alice involved . . . ‘exchanging financial obligations between two parties using a third-party intermediary to mitigate settlement risk.’”). Insurance policies and contracts are a well-known means of hedging or mitigating the risk of loss as in Bilski and Alice. Here, the wireless device protection program protects a subscriber against the risk of losing a device but still having to pay for wireless subscription services. See Spec. ¶ 3. The first step receives claim information from a subscriber who files a claim under a wireless device protection program. Appeal Br. 61 (Claims App.). A customer files a claim with an insurance company that issued the policy. See Spec. ¶¶ 2–6, 16, 58–62, Figs. 3 (step 100), 4 (operation 200). Appeal 2020-006062 Application 13/435,474 9 When recited at this level of generality, such a data collection step is part of the same abstract idea and can be performed as a mental process. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“But merely selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.”); In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016) (“[T]he claims, as noted, are simply directed to the abstract idea of classifying and storing digital images in an organized manner. . . . [W]e have applied the ‘abstract idea’ exception to encompass inventions pertaining to methods of organizing human activity.”); Content Extraction and Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1347 (Fed. Cir. 2014) (steps of collecting data, recognizing certain data in the collected data, and storing recognized data recite mental steps that humans perform such as banks reviewing checks, recognizing relevant data (amount, account number) and storing the data). The next steps use a predictive model to determine a range of options to fulfill the claim by defining an aggregated weight value for the options of a total cost to a wireless device protection program provider to provide each option to fulfill a claim, a predicted benefit of a desirability of each option to a wireless carrier, the functionality of the covered wireless device, upgraded functionality for a covered wireless device, a predictive outcome for each option based on a likelihood of a subscriber expanding the use of subscribed services if the option is used to fulfill the user’s claim, and then “ranking the plurality of options based at least in part on the aggregated weighted value of the plurality of options.” Appeal Br. 61–62 (Claims App.). Appeal 2020-006062 Application 13/435,474 10 These steps weight and rank options that a wireless device protection program insurer can provide to fulfill its obligations under a policy to a user who files a claim under the policy. Spec. ¶¶ 14, 15, 33–45, 53–57; Appeal Br. 3 (citing Spec. ¶¶ 14, 15, 33–36, 39, 61 as support for this subject matter). The broad description of these features without any technological innovation confirms that they are part of the abstract idea identified above and use mathematical relationships to aggregate weighted fulfillment option values. See Elec. Power, 830 F.3d at 1354 (“[A]nalyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [recites] essentially mental processes within the abstract-idea category.”); Digitech Image Techs., LLC v. Elec. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014) (“Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.”); Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1054–55 (Fed. Cir. 2017) (calculating a credit score for loan applications as agents do is a fundamental economic practice). Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324 (Fed. Cir. 2016) (collecting borrower information to generate a credit grading for loan pricing can be performed without a computer). The Specification uses the term “aggregation” only once to describe how “[a] comparison, aggregation, or other consideration of the weighted values associated with claims fulfillment options may therefore be used to balance costs versus benefits for various options to determine options that are best for the parties associated with a claims transaction.” Spec. ¶ 33. No technical details are described for the aggregation process. Appeal 2020-006062 Application 13/435,474 11 Examples in the Specification of aggregated weighted values used to provide targeted fulfillment are equally abstract. A decision of whether to fulfill a claim by providing a customer with a new or refurbished device may be based on fulfillment options having weighted values (Spec. ¶ 54): • Claim Profile: First claim=0; second claim=-5, third/more claims=-15 • Loss Type: Lost=-5; stolen=-3; accidental damage=0; mechanical breakdown=+3 • Days insured: 1–90 days=0; 91–180 days=-2; 181–360 days=- 5; 361– 720 days=+2; 721+ days=+5 • Probability to Churn: 0–50%=0; 51–75%=+5; 76–100%=+10 • Fulfillment Cost: $0–$150=0; $151–$225=-4; $226–$350=-6; $351+=-10 The Specification states, “each component may have a weighted value toward a total value scored based on the likelihood that the customer will be more satisfied by receiving a new device.” Spec. ¶ 54. A person can assign weighted values to fulfillment options and add the values to arrive at a total (aggregated) value as claimed as a mental process or by using pen and paper. See Ans. 7. No technical innovations are described or required. “[T]he focus of the claims is not a physical-realm improvement but an improvement in wholly abstract ideas––the selection and mathematical analysis of information, followed by reporting or display of the results.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“Moreover, the ‘investment’ character of this information simply invokes a separate category of abstract ideas involved in Alice and many of our cases—‘the creation and manipulation of legal obligations such as contracts involved in fundamental economic practices.’” (quoting Elec. Power, 830 F.3d at 1354)). Appeal 2020-006062 Application 13/435,474 12 Appellant argues that the claims are not abstract because they solve technical problems of model accuracy and speed/processing power by the unique combination of steps and hardware in the claims. Appeal Br. 28. Appellant cites testimony of Mr. Kyle Davenport who states that simply tabulating the cost of various options, as in the prior art, was insufficient to model a fulfillment system operation accurately or to predict or account for additional variables and outcomes. Id. at 22 (citing Declaration of Mr. Kyle Davenport, dated Dec. 26, 2018) (hereinafter “Davenport Declaration”). Mr. Davenport testifies that the claims solve technical problems of model inaccuracy and speed/processing power by streamlining the processing that is required to model the fulfillment process and to deliver a solution directly at a client terminal. Davenport Decl. ¶ 8 (discussed in Appeal Br. 22–23). As claimed, any improvement in accuracy, speed, or processing power results from the generic computer implementation of the abstract idea, which does not take claim 1 out of the abstract realm. Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (“[T]he claimed invention is at most an improvement to the abstract concept of targeted advertising wherein a computer is merely used as a tool” and “[t]he only improvements identified in the specification are generic speed and efficiency improvements inherent in applying the use of a computer to any task.”); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (performing calculations more efficiently via a computer does not alter the patent eligibility analysis); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“At best, the claims describe the automation of the fundamental economic concept of offer-based price optimization through the use of generic computer functions.”). Appeal 2020-006062 Application 13/435,474 13 Here, targeted fulfillment options maximize subscriber satisfaction, benefit a wireless carrier, and increase the likelihood a subscriber will use more services as part of the abstract idea identified above. Spec. ¶¶ 41–52; see Customedia, 951 F.3d at 1352–63 (“The claims at issue here are directed to the abstract idea of using a computer to deliver targeted advertising to a user, not to an improvement in the functioning of a computer.”); Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266, 1270–71 (Fed. Cir. 2016) (delivering tailored content based on user demographic data is a fundamental economic practice); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015) (customizing information based on information known about a user and other data is a fundamental practice long prevalent in our system); see also In re Morsa, 809 F. App’x 913, 917 (Fed. Cir. 2020) (using demographic and psychographic user information to match a user to a specific advertiser is an abstract idea). Optimizing costs and outcomes is a fundamental economic concept. See OIP, 788 F.3d at 1362. Targeting fulfillment to a subscriber to optimize subscriber satisfaction and benefit wireless carriers may combine abstract concepts but combining judicial exceptions without improving computers or other technology is not enough. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract.”); Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”). Appeal 2020-006062 Application 13/435,474 14 The predictive model 80 may define outcomes for actions such as the likelihood of a subscriber expanding services in response to a specific model of phone being provided. Spec. ¶ 38. Other predictions may be provided for positive or negative outcomes that may result from the options recorded in predictive model 80. Id. The weighted values of any particular option may balance cost versus benefit associated with a predictive outcome defined for an option. Id. Weighted values for costs of a particular option may be offset by a value of a positive outcome that may occur by providing the option. Id. Even if we could read these features into the claims, they do not improve computers or networks. They automate the abstract idea. Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1316 (Fed. Cir. 2019) (“[T]he need to perform tasks automatically is not a unique technical problem.”). In response to arguments that improvements in speed and efficiency made a claim non-abstract at Alice Step One, the court in Customedia held: Customedia argues that by providing a reserved and dedicated section of storage, the claimed invention improves the data delivery system’s ability to store advertising data, transfer data at improved speeds and efficiencies, and prevent system inoperability due to insufficient storage. In short, by dedicating a section of the computer’s memory to advertising data, the claimed invention ensures memory is available for at least some advertising data. This does not, however, improve the functionality of the computer itself. Even if we accept Customedia’s assertions, the claimed invention merely improves the abstract concept of delivering targeted advertising using a computer only as a tool. This is not what the Supreme Court meant by improving the functioning of the computer itself nor is it consistent with our precedent applying this concept. Customedia, 951 F.3d at 1363. Here, a claim is made at a “client terminal.” Targeted fulfillment is provided by generic “processing circuitry.” Appeal 2020-006062 Application 13/435,474 15 Even if the Specification provided technical details of this process, those details are not claimed. See Ericsson Inc. v. TCL Commc’n Tech. Holdings Ltd., 955 F.3d 1317, 1325 (Fed. Cir. 2020) (“[T]he specification may be ‘helpful in illuminating what a claim is directed to . . . [but] the specification must always yield to the claim language’ when identifying the ‘true focus of a claim.’”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“The § 101 inquiry must focus on the language of the Asserted Claims themselves.”); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013) (“[T]he complexity of the implementing software or the level of detail in the specification does not transform a claim reciting only an abstract concept into a patent-eligible system or method.”). Thus, we determine claim 1 recites the abstract ideas identified above. Step 2A, Prong Two: Integration into a Practical Application We next consider whether claim 1 recites any additional elements that integrate the abstract idea into a practical application. Revised Guidance, 84 Fed. Reg. at 54. We determine that claim 1 lacks additional elements that improve a computer or other technology or implement the abstract idea in conjunction with a particular machine that is integral to the claim. Id. at 55. Nor does it include additional elements that transform or reduce a particular article to a different state or thing or apply the abstract idea in a meaningful way beyond linking it to a particular technological environment. Id. We agree with the Examiner that claiming a “computer implemented method for electronic processing of a claim made at a client terminal” using “processing circuitry” recites generic computer components that do not improve technology to integrate the abstract idea. Final Act. 16–17. Appeal 2020-006062 Application 13/435,474 16 The client terminals are described generically as a personal computer, laptop computer, network access terminal, PDA, cellular phone, or smart phone capable of communication over a network. Spec. ¶ 17. The network is a generic data network such as a local area network, a wide area network (e.g., the Internet), or a metropolitan area network. Id. ¶ 18. The targeted fulfillment engine 44 may be accessed at generic application server 40, or it may be provided at a client 20. Id. ¶ 20. Appellant argues that claim 11 relates to a server, and claim 20 relates to a computer program product. Appeal Br. 32. The server is described as an application server 40 to which clients 20 may be coupled via network 30. Spec. ¶ 19. Servers can be database servers. Id. ¶ 18. The application and database servers can be separate servers or a single server or device with a group of databases located on the same application server. Id. ¶ 19. “The application server 40 and the database server 42 may each include hardware and/or software for configuring the application server 40 and the database server, respectively, to perform various functions.” Id. Clients 20 may access targeted fulfillment engine 44 online at an application server or may download it for local operation. Id. ¶ 20. Application server 40 may include memory for storing instructions or targeted fulfillment engine 44. Id. ¶ 21. Some embodiments comprise a single device (e.g., application server 40 or client(s) 20), while others use a client/server relationship. Id. ¶ 23. These descriptions confirm the server is a generic tool that implements the abstract idea and does not provide a particular machine that is integral to the claims. With regard to the medium, computer program instructions may be stored in a non-transitory computer-readable storage medium that comprises memory to direct a computer or apparatus. Id. ¶ 60. Appeal 2020-006062 Application 13/435,474 17 The targeted fulfillment engine and predictive model implement the abstract idea without improving hardware or software. Spec. ¶ 38. Targeted fulfillment engine 44 comprises stored instructions for handling activities for practicing embodiments described in the Specification. Id. ¶ 20. It may be embodied at an application server 40 or a client, and it may provide targeted fulfillment services wherever it is instantiated. Id. ¶¶ 20–22. In OIP, the patentee argued, “the techniques described in [the prior art] generally cost more and take more time, and are less accurate than the techniques recited in [the claims].” OIP, 788 F.3d at 1363; see Appeal Br. 33–34. There, the claimed method tested a plurality of prices for a product by sending offers to potential customers at different prices and offer terms, gathered statistics generated during this testing of how potential customers responded to different offers, used a computerized system to determine automatically, based on the generated statistics, an estimated outcome of using each of the plurality of prices, selected a price to sell the product based on the estimated outcome, and sent offers at the selected price to potential customers. Id. at 1361. The court held, “relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” Id. at 1363. Nor did the steps of presenting offers to potential customers and generating statistics as to how potential customers responded to offers provide meaningful limitations. Id. at 1363–64. Here, the predictive model uses claim fulfillments, surveys, behavioral studies, research, and other data from customers, device manufacturers, service providers, and others to predict (estimate) outcomes for options and rank options based on aggregated values to optimize certain outcomes without improving computers or other technology. See Spec. ¶ 34; Reply Br. 2–3. Appeal 2020-006062 Application 13/435,474 18 The Specification also indicates that customer satisfaction is the key component and the program provider (insurance or warranty company) and the wireless service provider have an interest in maintaining a high level of customer satisfaction in fulfilling claims made under a wireless device protection program. Spec. ¶ 13. Thus, all parties involved appear to share some common (rather than conflicting) interests. See Appeal Br. 33. Mr. Davenport’s testimony regarding optimizing fulfillment options and balancing outcomes for parties with allegedly competing interests and solving technical problems of inadequacy and inaccuracy of previous models all pertain to the abstract idea identified under Prong One. Davenport Decl. ¶¶ 6–8. Because these features are recited as elements of the abstract idea without any technical innovation, they cannot serve as additional elements to integrate the abstract idea into a practical application. Revised Guidance, 84 Fed. Reg. at 55 n.24 (“USPTO guidance uses the term ‘additional elements’ to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception.”); Alice, 573 U.S. at 221 (holding that a claim to an abstract idea must include “additional features” to ensure it does not monopolize the abstract idea) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 77 (2012)). Mr. Davenport attributes the improved accuracy, speed, and reduced latency to downloading and operating the model and targeted fulfillment engine on the client terminal. Davenport Decl. ¶¶ 7, 8 (cited in Appeal Br. 22–23, 33–34, 36–37). This configuration is recited in claims 23 and 36 only. These arguments are not commensurate with the scope of any other claims. As to claims 23 and 36, these features merely involve operating an application on a client terminal rather than on a server computer. Appeal 2020-006062 Application 13/435,474 19 As discussed above, the Specification describes this arrangement as one of the embodiments that can be implemented. Client terminals 20 may access the targeted fulfillment engine 44 online at application server 40 or the targeted fulfillment engine 44 may be downloaded over the network 30 to one or more clients 20 for local operation. Spec. ¶ 20. Similar claims to a system for providing targeted broadcast media to wireless devices over a network by downloading an application over the network to the customer’s wireless cellular telephone device to present an interface that allowed the customer to select customized content recited an abstract idea in Affinity Labs. See Affinity Labs of Texas v. DIRECTV, LLC, 838 F.3d 1253, 1255–56 (Fed. Cir. 2016). The court held, “[t]he essential advance is not in the process of downloading applications, but only in the content of this particular application, and that is nothing but a functionally described display of information [t]hat . . . does not cross out of the abstract idea category.” Id. at 1263. Here, claims 23 and 36 do not recite a particular technology that is used to download the targeted fulfillment engine or a predictive model from a generic server to the generic client terminal over a generic data network. Nor does the Specification describe any innovative hardware or software technology. All these claims recite is the concept or “result” of downloading application software to operate on a client computer terminal without reciting any technological innovations or any details of the process used to perform the downloading. Even if this combination of features is novel and non-obvious over the prior art as Appellant contends (see Appeal Br. 37–38), such determinations do not affect the patent eligibility of these features when they are claimed as an abstract idea as discussed under Prong One. Appeal 2020-006062 Application 13/435,474 20 A claim to a new abstract idea is still an abstract idea. Synopsys, 839 at 1151. Adding one abstract idea to another abstract idea does not render a claim non-abstract because abstract ideas can be recited at different levels of abstraction. See RecogniCorp, 855 at 1327; Apple, 842 F.3d at 1240. Aggregating “weighted values” for multiple options, without more, is an abstraction that does not transform a particular article to a different state or thing, link the judicial exception to a particular machine that is integral to the claim, or meaningfully limit the claims. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1373–74 (Fed. Cir. 2011) (claim to verifying credit card information based on weighted values of a plurality of parameters in combination with consumer information recited nothing more than a computer readable medium containing program instructions that perform the method of claim 3, which is unpatentable because it recites a mental process and abstract idea). Accordingly, we determine that the claims lack additional elements that integrate the judicial exception into a practical application. Step 2B: Do the Claims Include an Inventive Concept? We next consider whether claim 1 recites any additional elements, individually or as an ordered combination, to provide an inventive concept. Alice, 573 U.S. at 217–18. This step is satisfied when the claim limitations involve more than well-understood, routine, and conventional activities known in the industry. See Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018); Revised Guidance, 84 Fed. Reg. at 56 (the second step of the Alice analysis considers if a claim adds a specific limitation beyond the recited judicial exception that also is not “well-understood, routine, conventional” activity in the field). Appeal 2020-006062 Application 13/435,474 21 Individually, the computer, server, and client terminal are recited as generic computer components that perform generic functions of receiving and processing data. Alice, 573 U.S. at 222 (“[S]imply implementing a mathematical principle on a physical machine, namely a computer, [i]s not a patentable application of that principle.”) (citation omitted). They collect and analyze claim information at a high level of generality by steps that recite the abstract idea identified above. As an ordered combination, they recite no more than individually. See BSG Tech LLC v., BuySeasons, Inc., 899 F.3d 1281, 1290–91 (Fed. Cir. 2018) (“If a claim’s only ‘inventive concept’ is the application of an abstract idea using conventional and well-understood techniques, the claim has not been transformed into a patent-eligible application of an abstract idea.”); SAP Am., 898 F.3d at 1169 (“[T]his court has ruled many times that ‘such invocations of computers . . . that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea.’”) (citation omitted); Affinity Labs, 838 F.3d at 1263 (“There is no further specification of a particular technology for getting the defined content displayed. Thus, the user-downloadable application does not constitute an inventive concept sufficient to render the claims patent eligible.”). The claims do not purport to improve computers or networks. They process data at a high level of generality, and, in the case of claims 23 and 36, perform some processing steps at the client terminal instead of a server. Accordingly, we determine that claim 1 lacks an inventive concept to transform the abstract idea into patent-eligible subject matter. Claims 2–5, 8–15, and 17–36 fall with claim 1. Appeal 2020-006062 Application 13/435,474 22 Claims 1, 3–5, 8–11, 13–15, 17–22, 24, 25, 28–32, and 35 Rejected over Birchall, Thomson, and Gittins Regarding independent claims 1, 11, and 20, the Examiner relies on Birchall to teach the invention substantially as claimed, with Thomson relied on to teach the concept of a value for upgrading the functionality of a device for purchasers, and Gittins to teach a predictive outcome value that defines a likelihood of a subscriber expanding use of subscribed services in response to each option that is used to fulfill the claim. Final Act. 22–30, 36–53. We agree with Appellant that Birchall only determines costs to an insurer to repair or replace an item and does not consider weighted values for multiple entities to include a wireless carrier, or ranking options based on aggregated weighted values of a plurality of options as claimed and therefore Birchall’s model does not balance aggregated values of options for multiple parties as claimed. Appeal Br. 45–48. We also agree that Birchall’s focus on calculating a monetary amount does not teach or suggest an aggregated weighted value of disparate components that consider benefits to multiple parties as claimed. Id. at 49–50. Birchall’s method and system help an insurance adjuster to determine whether to repair or replace an insured item that is damaged. Birchall ¶ 20. Toward this end, Birchall obtains repair costs for an item and compares and ranks the alternatives from cheapest to most expensive. Id. ¶ 59. Birchall attempts to include related costs such as storage, shipping, and other costs associated with an item’s repair. Id. ¶¶ 61, 62. Birchall also multiplies the total cost by an appropriate factor that accounts for the net present value and customer service. Id. ¶¶ 64–66. This system allows users to determine what portion of the total price is related to repair versus other costs. Id. ¶ 67. Appeal 2020-006062 Application 13/435,474 23 We agree with the Examiner that Birchall determines the total cost to an insurer of providing each repair option. Final Act. 24, 38, 46. However, even if we consider the total dollar cost determined by Birchall to be a value, we find no teaching in Birchall of weighting this total cost value or any other individual repair cost component. The total repair cost in Birchall does not correspond to the claimed aggregated weighted value because Birchall’s total cost simply aggregates individual costs related to the total cost of repair that an insurance company incurs. Birchall ¶¶ 53–67. It does not aggregate any other values related to benefits to another party, functionality of an item, or predictive outcome of a customer expanding use of subscribed services as claimed. The only weighting is weighting of total repair cost, which may be multiplied by a factor to account for net present value (time value of money) and customer service. Id. ¶ 65. Neither Thomson nor Gittins remedy these deficiencies of Birchall. See Appeal Br. 50–53. Gittins allows insurance customers to buy goods and services through the system to increase leverage over repair and replacement providers and to improve customer satisfaction (Gittins ¶ 16), but Gittins does not determine a weighted value predictive of a likelihood of a subscriber expanding the use of subscribed services. Thus, the combined teachings of the references does not teach or suggest defining an aggregated weighted value that comprises different component weighted values of predicted benefit, functionality, and predictive outcome in addition to total repair cost that Birchall calculates. Accordingly, we do not sustain the rejection of independent claims 1, 11, and 20 or their respective dependent claims as being unpatentable over Birchall, Thomson, and Gittins. Appeal 2020-006062 Application 13/435,474 24 Claims 2 and 12 Rejected over Birchall, Thomson, Gittins, and Eskandari The Examiner’s reliance on Eskandari to teach features recited in claims 2 and 12 does not overcome the deficiencies of Birchall, Thomson, and Gittins as to claims 1 and 11 from which claims 2 and 12 respectively depend. See Final Act. 57–61. Claims 23 and 36 Rejected over Birchall, Thomson, Gittins, and McKnight The Examiner relies on Birchall, Thomson, and Gittins to teach a predictive model using a targeted fulfillment engine to determine a plurality of options to fulfill a claim and define an aggregated weighted value that corresponds to plural options for different parties as recited in claim 36, and as discussed above for these same limitations in claim 1. Final Act. 64–74. We agree with Appellant that Birchall, Thomson, and Gittins do not render obvious claim 36 for the same reasons as claims 1, 11, and 20 above. See Appeal Br. 59. The Examiner cites McKnight to teach executing code at client terminals, but McKnight is not relied on to cure the deficiencies of Birchall, Thomson, and Gittins as to claim 36, or claim 1 from which claim 23 depends. See Final Act. 62–63. Thus, we do not sustain the rejection of claims 23 and 36. Claims 26, 27, 33, and 34 Rejected over Birchall, Thomson, Gittins, and Johnson The Examiner’s reliance on Johnson to teach features of claims 26, 27, 33, and 34 does not cure the deficiencies of Birchall, Thomson, and Gittins as to independent claims 1 and 11 from which these claims depend. See Final Act. 75–77. Thus, we do not sustain the rejection of these claims. Appeal 2020-006062 Application 13/435,474 25 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/ Basis Affirmed Reversed 1–5, 8–15, 17–36 101 Patent Eligibility 1–5, 8– 15, 17–36 1, 3–5, 8–11, 13–15, 17–22, 24, 25, 28–32, 35 103(a) Birchall, Thomson, Gittins 1, 3–5, 8– 11, 13–15, 17–22, 24, 25, 28–32, 35 2, 12 103(a) Birchall, Thomson, Gittins, Eskandari 2, 12 23, 36 103(a) Birchall, Thomson, Gittins, McKnight 23, 36 26, 27, 33, 34 103(a) Birchall, Thomson, Gittins, Johnson 26, 27, 33, 34 Overall Outcome 1–5, 8– 15, 17–36 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation