Manuel Becerra et al.

Patent Trials and Appeals Board

Mar 31, 2021

2020006062 (P.T.A.B. Mar. 31, 2021)

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.
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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
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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.
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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.
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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.
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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.
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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.
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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).
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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.).
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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.
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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)).
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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.”).
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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.”).
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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.”
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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.
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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.
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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
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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.
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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.
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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).
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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.
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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.
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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
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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