Edward M. Lee

Patent Trials and Appeals Board

Sep 25, 2019

14262583 - (D) (P.T.A.B. Sep. 25, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/262,583 04/25/2014 Edward M. Lee 1615/79 3547
25297 7590 09/25/2019
Jenkins, Wilson, Taylor & Hunt, P.A.
3015 Carrington Mill Boulevard
Suite 550
Morrisville, NC 27560
EXAMINER
TINKLER, MURIEL S
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
09/25/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
datcheson@jwth.com
usptomail@jwth.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDWARD M. LEE
Appeal 2018-005738
Application 14/262,583
Technology Center 3600
Before LARRY J. HUME, MELISSA A. HAAPALA, and
JULIET MITCHELL DIRBA, Administrative Patent Judges.
HUME, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Mastercard International
Incorporated, appeals from the Examiner’s decision rejecting claims 1–4,
6–13, and 15–20, which are all claims pending in the application. Appellant
has canceled claims 5 and 14.2 We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies the real party in interest as MasterCard
International Incorporated. App. Br. 2.
2 See Request for Reconsideration After Non-Final Rejection filed
Jan. 7, 2016.
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STATEMENT OF THE CASE3
The Invention
The claims are directed to methods, systems and computer readable
media for determining criminal propensities in a geographic location based
on purchase card transaction data. See Spec. 1 (Title). In particular,
Appellant’s disclosed embodiments and claimed invention relate to “the use
of purchase card transaction information to generate a model for predicting
the likelihood of criminal activity in a geographic region or area.” Spec. 1,
ll. 6–8.
Exemplary Claim
Claim 1, reproduced below, is representative of the subject matter on
appeal:
1. A method for determining criminal propensities in
a geographic location based on purchase card transaction data,
the method comprising:
utilizing, by a processing server, purchase card
transaction data associated with purchase card transactions
conducted during a designated time period to determine a
plurality of first normalized regional expenditure indices
corresponding to a plurality of industry categories for a first
geographic location, wherein the purchase card transaction data
is obtained from a purchase card transaction data repository by
the processing server, wherein each of the plurality of first
normalized regional expenditure indices corresponding to the
plurality of industry categories is equal to a quotient of a

3 Our decision relies upon Appellant’s Appeal Brief (“App. Br.,” filed
Dec. 27, 2017); Reply Brief (“Reply Br.,” filed May 11, 2018); Examiner’s
Answer (“Ans.,” mailed Mar. 13, 2018); Final Office Action (“Final Act.,”
mailed June 30, 2017); and the original Specification (“Spec.,” filed
Apr. 25, 2014).
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regional consumer card transaction expenditure per capita of an
industry category within the first geographic location and a
national consumer card transaction expenditure per capita of the
industry category;
generating, by the processing server, an algorithmic
model based on correlations between each of the first
normalized regional expenditure indices and a plurality of
criminal offense types committed during the designated time
period and in the first geographic location, wherein the
algorithmic model includes ratio model parameters correlating
each of the first normalized regional expenditure indices to a
number of committed offenses associated with each of the
plurality of criminal offense types, wherein data representative
of the plurality of criminal offense types is included in criminal
activity data obtained from a criminal offense data repository
by the processing server; and
applying, by the processing server, the algorithmic model
to each of a plurality of second normalized regional expenditure
indices corresponding to the plurality of industry categories
associated with a second geographic location in order to
determine a criminal propensity indicator in the second
geographic location for each of the plurality of criminal offense
types, wherein the criminal propensity indicator includes a
numeric value that represents a number of probable criminal
offenses associated with each of the plurality of criminal
offense types committed in the second geographic location.
App. Br. 19–20 (Claims Appendix).
Rejection on Appeal4
Claims 1–4, 6–13 and 15–20 stand rejected under 35 U.S.C. § 101 as
being directed to patent-ineligible subject matter. Final Act. 3.

4 In the event of further prosecution, we invite the Examiner’s attention to
dependent claims 6, 7, 15, and 16 for either cancellation or rejection as being
indefinite under 35 U.S.C. § 112(b). These claims variously depend from
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CLAIM GROUPING
Based on Appellant’s arguments (App. Br. 10–17) and our discretion
under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of the patent-
ineligible subject matter rejection of claims 1–4, 6–13, and 15–20 on the
basis of representative claim 1.5
ISSUE
Appellant argues (App. Br. 10–17; Reply Br. 2–5) the Examiner’s
rejection of claim 1 under 35 U.S.C. § 101 as being directed to patent-
ineligible subject matter is in error. These contentions present us with the
following issue:
Under the USPTO’s Revised Guidance, informed by our governing
case law concerning 35 U.S.C. § 101, is claim 1 patent-ineligible under
§ 101?

canceled claims 5 and 14, which were canceled by Appellant in an
Amendment filed January 7, 2016.
5 “Notwithstanding any other provision of this paragraph, the failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.” 37 C.F.R. § 41.37(c)(1)(iv).
In addition, when Appellant does not separately argue the patentability of
dependent claims, the claims stand or fall with the claims from which they
depend. In re King, 801 F.2d 1324, 1325 (Fed. Cir. 1986).
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PRINCIPLES OF LAW
A. 35 U.S.C. § 101
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.6
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[l]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we
first determine what concept the claim is “directed to.” See Alice, 573 U.S.
at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4
in petitioners’ application explain the basic concept of hedging, or protecting
against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental

6 This threshold analysis of whether a claim is directed to one of the four
statutory categories of invention, i.e., a process, machine, manufacture, or
composition of matter, is referred to as “Step 1” in the USPTO’s patent-
eligibility analysis under § 101. Manual of Patent Examining Procedure
(MPEP) § 2106.
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economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diehr, 450 U.S. at 191); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853)));
and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v.
Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held “[a] claim drawn to subject matter otherwise statutory
does not become nonstatutory simply because it uses a mathematical
formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view
respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, and this principle cannot be circumvented by attempting
to limit the use of the formula to a particular technological environment.”
Id. (citation omitted) (citing Benson and Flook); see, e.g., id. at 187 (“It is
now commonplace that an application of a law of nature or mathematical
formula to a known structure or process may well be deserving of patent
protection.”).
Abstract ideas may include, but are not limited to, fundamental
economic practices, methods of organizing human activities, and
mathematical formulas or relationships. Alice, 573 U.S. at 217–21. Under
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this guidance, we must therefore ensure at step one that we articulate what
the claims are directed to with enough specificity to ensure the step one
inquiry is meaningful. Id. at 217 (“[W]e tread carefully in construing this
exclusionary principle lest it swallow all of patent law.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
B. USPTO Revised Guidance
The USPTO recently published revised guidance in the Federal
Register concerning the application of § 101. 2019 Revised Patent Subject
Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (hereinafter
“Revised Guidance”) (https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf).
Under the Revised Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings
of abstract ideas (i.e., mathematical concepts, certain methods
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of organizing human activity such as a fundamental economic
practice, or mental processes);7 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).8
See Revised Guidance 52–53.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
(3) adds a specific limitation beyond the judicial
exception that is not “well-understood, routine, 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.9
See Revised Guidance 56.
Step 2A(i) – Abstract Idea
Informed by our judicial precedent, the Revised Guidance extracts and
synthesizes key concepts identified by the courts as abstract ideas to explain
that the abstract idea exception includes the following groupings of subject
matter, when recited as such in a claim limitation:
(a) Mathematical concepts—mathematical relationships,
mathematical formulas or equations, mathematical calculations;

7 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
8 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
9 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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(b) Certain methods of organizing human activity —
fundamental economic principles or practices (including
hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts;
legal obligations; advertising, marketing or sales activities or
behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social
activities, teaching, and following rules or instructions); and
(c) Mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment, opinion).
Under the Revised Guidance, if the claim does not recite a judicial
exception (a law of nature, natural phenomenon, or subject matter within the
enumerated groupings of abstract ideas above), then the claim is patent-
eligible at Step 2A(i). This determination concludes the eligibility analysis,
except in rare situations identified in the Revised Guidance.10
However, if the claim recites a judicial exception (i.e., an abstract idea
enumerated above, a law of nature, or a natural phenomenon), the claim
requires further analysis for a practical application of the judicial exception
in Step 2A(ii).
Step 2A(ii) – Practical Application
If a claim recites a judicial exception in Step 2A(i), we determine
whether the recited judicial exception is integrated into a practical
application of that exception in Step 2A(ii) by: (a) identifying whether there
are any additional elements recited in the claim beyond the judicial

10 In the rare circumstance in which an examiner believes a claim limitation
that does not fall within the enumerated groupings of abstract ideas should
nonetheless be treated as reciting an abstract idea, the procedure described in
of the Guidance for analyzing the claim should be followed. See Revised
Guidance, Section III.C.
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exception(s); and (b) evaluating those additional elements individually and
in combination to determine whether they integrate the exception into a
practical application.
The seven identified “practical application” sections of the MPEP,11
cited in the Revised Guidance under Step 2A(ii), are:
(1) MPEP § 2106.05(a) Improvements to the Functioning of
a Computer or To Any Other Technology or Technical
Field
(2) MPEP § 2106.05(b) Particular Machine
(3) MPEP § 2106.05(c) Particular Transformation
(4) MPEP § 2106.05(e) Other Meaningful Limitations
(5) MPEP § 2106.05(f) Mere Instructions To Apply An
Exception
(6) MPEP § 2106.05(g) Insignificant Extra-Solution Activity
(7) MPEP § 2106.05(h) Field of Use and Technological
Environment
See Revised Guidance 55.
If the recited judicial exception is integrated into a practical
application as determined under one or more of the MPEP sections cited
above, then the claim is not directed to the judicial exception, and the patent-
eligibility inquiry ends. See Revised Guidance 54. If not, then analysis
proceeds to Step 2B.

11 See MPEP §§ 2106.05(a)–(c), (e)–(h). Citations to the MPEP herein refer
to revision [R-08.2017]. Sections 2106.05(a), (b), (c), and (e) are indicative
of integration into a practical application, while §§ 2106.05(f), (g), and (h)
relate to limitations that are not indicative of integration into a practical
application.
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Step 2B – “Inventive Concept” or “Significantly More”
Under our reviewing courts’ precedent, it is possible that a claim that
does not “integrate” a recited judicial exception under Step 2A(ii) is
nonetheless patent eligible. For example, the claim may recite additional
elements that render the claim patent eligible even though a judicial
exception is recited in a separate claim element.12 The Federal Circuit has
held claims eligible at the second step of the Alice/Mayo test (USPTO Step
2B) because the additional elements recited in the claims provided
“significantly more” than the recited judicial exception (e.g., because the
additional elements were unconventional in combination).13 Therefore, if a
claim has been determined to be directed to a judicial exception under
Revised Step 2A, we must also evaluate the additional elements individually
and in combination under Step 2B to determine whether they provide an
inventive concept (i.e., whether the additional elements amount to
significantly more than the exception itself).14
Under the Revised Guidance, we must consider in Step 2B whether an
additional element or combination of elements: (1) “Adds a specific

12 See, e.g., Diehr, 450 U.S. at 187.
13 See, e.g., Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288,
1300, 1304 (Fed. Cir. 2016); Bascom Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341, 1349–52 (Fed. Cir. 2016); DDR Holdings v.
Hotels.com, L.P., 773 F.3d 1245, 1257–59 (Fed. Cir. 2014).
14 The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016). In particular, “[t]he question of whether a claim element or
combination of elements is well-understood, routine and conventional to a
skilled artisan in the relevant field is a question of fact.” Berkheimer v. HP
Inc., 881 F.3d 1360, 1368 (Fed. Cir. 2018).
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limitation or combination of limitations that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present;” or (2) “simply appends well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality, to the judicial exception, which is indicative
that an inventive concept may not be present.” See Revised Guidance,
III.B.15
In the Step 2B analysis, an additional element (or combination of
elements) is not well-understood, routine or conventional unless the
examiner finds an evidentiary basis, and expressly supports a rejection in
writing with, one or more of the following:
1. A citation to an express statement in the
specification or to a statement made by an applicant during
prosecution that demonstrates the well-understood, routine,
conventional nature of the additional element(s). . . .
2. A citation to one or more of the court decisions
discussed in MPEP § 2106.05(d)(II) as noting the well-
understood, routine, conventional nature of the additional
element(s).

15 In accordance with existing Step 2B guidance, an Examiner’s finding that
an additional element (or combination of elements) is well understood,
routine, conventional activity must be supported with at least one of the four
specific types of evidence required by the USPTO Berkheimer
Memorandum, as shown above. For more information concerning evaluation
of well-understood, routine, conventional activity, see MPEP § 2106.05(d),
as modified by the USPTO Berkheimer Memorandum (USPTO
Commissioner for Patents Memorandum dated Apr. 19, 2018, “Changes in
Examination Procedure Pertaining to Subject Matter Eligibility, Recent
Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.)” (hereinafter
“Berkheimer Memo”).
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3. A citation to a publication that demonstrates the
well-understood, routine, conventional nature of the additional
element(s). . . .
4. A statement that the examiner is taking official
notice of the well-understood, routine, conventional nature of
the additional element(s). . . .
See Berkheimer Memo.
The analysis in Step 2B further determines whether an additional
element or combination of elements:
(a) Adds a specific limitation or combination of
limitations that are not well-understood, routine, conventional
activity in the field, which is indicative that an inventive
concept may be present; or
(b) simply appends well-understood, routine,
conventional activities previously known to the industry,
specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be
present.
Revised Guidance; see also Berkheimer Memo.
If the Examiner or the Board determines under Step 2B that the
element (or combination of elements) amounts to significantly more than the
exception itself, the claim is eligible, thereby concluding the eligibility
analysis.
However, if a determination is made that the element and combination
of elements does not amount to significantly more than the exception itself,
the claim is ineligible under Step 2B, and the claim should be rejected for
lack of subject matter eligibility.
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ANALYSIS
Step 1 – Statutory Category
Claim 1, as a method (process) claim, recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that “[t]he claims are directed to
determining criminal propensities in a geographic location based on
purchase card transaction data (see independent claims), which is similar to
concepts found to be abstract by the courts.” Final Act. 4.
We conclude claim 1 does not recite the judicial exceptions of either
natural phenomena or laws of nature. We evaluate, de novo, whether
claim 1 recites an abstract idea based upon the Revised Guidance.
Claim 1 recites, in pertinent part, “[a] method for determining
criminal propensities in a geographic location based on purchase card
transaction data,” that includes the steps of:
(1) “[U]tilizing . . . purchase card transaction data . . . to
determine a plurality of first normalized regional expenditure
indices corresponding to a plurality of industry categories for a
first geographic location . . . wherein each of the plurality of
first normalized regional expenditure indices . . . is equal to a
quotient of a regional consumer card transaction expenditure
per capita of an industry category within the first geographic
location and a national consumer card transaction expenditure
per capita of the industry category.”
(2) [G]enerating . . . an algorithmic model based on
correlations between each of the first normalized regional
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expenditure indices and a plurality of criminal offense types
committed during the designated time period and in the first
geographic location.”
(3) [A]pplying . . . the algorithmic model to each of a
plurality of second normalized regional expenditure indices
corresponding to the plurality of industry categories associated
with a second geographic location in order to determine a
criminal propensity indicator in the second geographic location
for each of the plurality of criminal offense types.”
Claims App’x.
The Specification provides context as to what the claimed invention is
directed to. In this case, the Specification discloses that the invention
“relates to the use of purchase card transaction information to generate a
model for predicting the likelihood of criminal activity in a geographic
region or area,” and further “relates to systems, methods, and computer
readable media for determining criminal propensities in a geographic
location based on purchase card transaction data.” Spec. 6, ll. 6–11.
Appellant’s Abstract describes the invention as:
Methods, systems, and computer readable media for
determining criminal propensities in a geographic location
based on customer card transaction data are disclosed. In one
example, the method includes utilizing purchase card
transaction data associated with purchase card transactions
conducted during a designated time period to determine a
plurality of first normalized regional expenditure indices
corresponding to a plurality of industry categories for a first
geographic location. The method further includes generating an
algorithmic model based on correlations between each of the
first normalized regional expenditure indices and a plurality of
criminal offense types committed during the designated time
period and applying the algorithmic model to each of a plurality
of second normalized regional expenditure indices
corresponding to the plurality of industry categories associated
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with a second geographic location in order to determine a
criminal propensity indicator in the second geographic location
for each of the plurality of criminal offense types.
Spec. 23 (Abstract).
The claimed invention as recited in steps (1) through (3), above, uses
purchase card transaction data to determine normalized regional expenditure
indices related to industry categories in a geographic location, where the
indices are determined by calculating a quotient of regional expenditures per
capita of an industry category, and a national consumer expenditure per
capita of the same industry category. An algorithmic model based upon
correlations between the normalized regional expenditure indices and
criminal offense types committed during a specific time period in the first
geographic location is then applied to normalized regional expenditure
indices for industry categories in a second geographic location in order to
determine a criminal propensity indicator in the second geographic location
for each of a number of different criminal offense types. Simply stated, a
correlation factor derived from comparing expenditure indices to criminal
offense types in one geographic region is used to extrapolate criminal
offense types to a different geographic area based upon expenditure indices
in the different geographic area. See Spec. ¶¶ 1–2; Fig. 3 (Steps 302–306).
As such, under the broadest reasonable interpretation standard,16 and
under our Revised Guidance, we conclude the claimed invention recites a

16 During prosecution, claims must be given their broadest reasonable
interpretation when reading claim language in light of the specification as it
would be interpreted by one of ordinary skill in the art. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under this standard,
we interpret claim terms using “the broadest reasonable meaning of the
words in their ordinary usage as they would be understood by one of
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mathematical concept. Specifically, the claimed invention includes the
following mathematical concepts (mathematical relationships, mathematical
formulas or equations, mathematical calculations): utilizing purchase card
transaction data to determine a plurality of normalized regional expenditure
indices; generating an algorithmic model based on correlations; and applying
correlations derived from one set of data to another set of data, as found in
limitations (1) through (3).
Appellant alleges “the Examiner has failed to establish a prima facie
case that the claims are directed to patent-ineligible subject matter.” App.
Br. 10. We disagree.
We disagree because the Federal Circuit has repeatedly noted that “the
prima facie case is merely a procedural device that enables an appropriate
shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369
(Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)).
The Examiner satisfies the burden of establishing a prima facie case under
35 U.S.C. § 132 by setting forth a rejection in a sufficiently articulate and
informative manner. See In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011).
If the Examiner “adequately explain[s] the shortcomings . . . the burden
shifts to the applicant to rebut the prima facie case with evidence and/or
argument.” Hyatt, 492 F.3d at 1370.
The Final Office Action adequately explains the § 101 rejection. See
Final Act. 4–7; Ans. 7–10. The Examiner’s statements satisfy § 132(a)

ordinary skill in the art, taking into account whatever enlightenment by way
of definitions or otherwise that may be afforded by the written description
contained in the applicant’s specification.” In re Morris, 127 F.3d 1048,
1054 (Fed. Cir. 1997).
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because they apply the Alice analytical framework and apprise Appellant of
the reasons for the § 101 rejection under that framework. Appellant has not
responded by alleging a failure to understand the rejection, but that “the
Examiner fails to provide any substantive analysis or present any evidence
as to why the claimed invention is directed to an abstract idea in the Office
Action.” Appeal Br. 11.
Thus, under Step 2A(i), we agree with the Examiner that claim 1’s
method for determining criminal propensities in a geographic location based
on purchase card transaction data recites an abstract idea. Specifically,
under our Revised Guidance, we conclude claim 1 recites the judicial
exception of a mathematical concept.17
Step 2A(ii): Judicial Exception Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii) in
which we determine whether the recited judicial exception is integrated into

17 Our reviewing court recognizes that “[a]n abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in this case does
not, “impact the patentability analysis.” Id. at 1241. Further, “[t]he Board’s
slight revision of its abstract idea analysis does not impact the patentability
analysis.” Id. Moreover, merely combining several abstract ideas does not
render the combination any less abstract. RecogniCorp, LLC v. Nintendo
Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea (math)
to another abstract idea . . . does not render the claim non-abstract.”); see
also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed.
Cir. 2016) (determining the pending claims were directed to a combination
of abstract ideas). Thus, whether claim 1 recites a combination of
mathematical concepts, mental processes, and certain methods of organizing
human activity does not change the outcome of our patentability analysis.
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a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
We find each of the limitations of claim 1 recite abstract ideas as
identified in Step 2A(i), supra, and none of the limitations integrate the
judicial exception of a mathematical concept into a practical application, as
determined under one or more of the MPEP sections cited above and
discussed further below. The claim as a whole merely uses instructions to
implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea.
Under analogous circumstances, the Federal Circuit has held that
“[t]his is a quintessential ‘do it on a computer’ patent: it acknowledges that
[such] data . . . was previously collected, analyzed, manipulated, and
displayed manually, and it simply proposes doing so with a computer. We
have held such claims are directed to abstract ideas.” Univ. of Fla. Research
Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1367 (Fed. Cir. 2019); see
also Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1351 (Fed.
Cir. 2016) (“Though lengthy and numerous, the claims do not go beyond
requiring the collection, analysis, and display of available information in a
particular field, stating those functions in general terms, without limiting
them to technical means for performing the functions that are arguably an
advance over conventional computer and network technology.”).
Therefore, the claim as a whole merely uses instructions to implement
the abstract idea on a computer or, alternatively, merely uses a computer as a
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tool to perform the abstract idea. Thus, on this record, Appellant has not
shown an improvement or practical application under the guidance of
Manual of Patent Examining Procedure section 2106.05(a) (“Improvements
to the Functioning of a Computer or to Any Other Technology or Technical
Field”) or section 2106.05(e)(“Other Meaningful Limitations”). Nor does
Appellant advance any arguments in the Brief(s) that are directed to the
Bilski machine-or-transformation test, which would only be applicable to the
method (process) claims on appeal. See MPEP §§ 2106.05(b) (Particular
Machine) and 2106.05(c) (Particular Transformation).
Therefore, we conclude the abstract idea is not integrated into a
practical application, and thus the claim is directed to the judicial exception.
Step 2B – “Inventive Concept” or “Significantly More”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. For Step 2B we
must “look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs
of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258 (Fed. Cir. 2016)
(quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed.
Cir. 2016)).
In applying step two of the Alice analysis, our reviewing court guides
we must “determine whether the claims do significantly more than simply
describe [the] abstract method” and thus transform the abstract idea into
patentable subject matter. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709,
715 (Fed. Cir. 2014). We look to see whether there are any “additional
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features” in the claims that constitute an “inventive concept,” thereby
rendering the claims eligible for patenting even if they are directed to an
abstract idea. Alice, 573 U.S. at 221. Those “additional features” must be
more than “well-understood, routine, conventional activity.” Mayo, 566
U.S. at 79.
Limitations referenced in Alice that are not enough to qualify as
“significantly more” when recited in a claim with an abstract idea include, as
non-limiting or non-exclusive examples: adding the words “apply it” (or an
equivalent) with an abstract idea18; mere instructions to implement an
abstract idea on a computer19; or requiring no more than a generic computer
to perform generic computer functions that are well-understood, routine and
conventional activities previously known to the industry.20
Evaluating representative claim 1 under step 2 of the Alice analysis,
we conclude it lacks an inventive concept that transforms the abstract idea of
applying correlations relating criminal offense types to expenditure indices
into a patent-eligible application of that abstract idea.
The patent eligibility inquiry may contain underlying issues of fact.
Mortg. Grader, 811 F.3d at 1325. In particular, “[t]he question of whether a
claim element or combination of elements is well-understood, routine and

18 Alice, 573 U.S. at 221–23.
19 Alice, 573 U.S. at 221, e.g., simply implementing a mathematical
principle on a physical machine, namely a computer (citing Mayo, 566 U.S.
at 84–85).
20 Alice, 573 U.S. at 225, e.g., using a computer to obtain data, adjust
account balances, and issue automated instructions.
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conventional to a skilled artisan in the relevant field is a question of fact.”
Berkheimer, 881 F.3d at 1368.
As evidence of the conventional nature of the recited processing
server and various data repositories in method claim 1, system claim 10, and
computer readable medium claim 19, the Specification discloses:
[S]ystem 200 may be implemented using conventional
computer hardware, processing units, and application software
25 configurations including, for example, distributed server
systems. System 200 also may include other conventional
hardware and software components that are not shown in Figure
2, such as user terminals and data warehouse query tools.
Spec. 7, ll. 23–28. In addition,
processing server 202 may include a processor (not shown),
such as a microprocessor, central processing unit (CPU), or any
other like hardware based processor unit that is configured to
execute and/or utilize the modules in processing server 202.
Each of the depicted modules in processing server 202 may be
stored in local memory (not shown), such as random access
memory (RAM), read only memory (ROM), optical read/write
memory, cache memory, magnetic read/write memory, flash
memory, and the like.
Spec. 9, l. 33–10, l. 7.
Thus, because the Specification describes the additional elements in
general terms, without describing the particulars, we conclude the claim
limitations may be broadly but reasonably construed as reciting conventional
computer components and techniques, particularly in light of Appellant’s
Specification, as quoted above.21

21 Claim terms are to be given their broadest reasonable interpretation, as
understood by those of ordinary skill in the art and taking into account
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With respect to this step of the analysis, Appellant argues, “[t]he fact
that the claims are patentable over the prior art alone controls the outcome
because, if the claim elements in combination are novel and nonobviousness,
the claims could not possibly be deemed conventional.” App. Br. 14.
In response, we note the Supreme Court emphasizes, “[t]he ‘novelty’
of any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S.
at 188–89 (emphasis added). Our reviewing court further guides that
“[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017); see
also Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263
(Fed. Cir. 2016) (holding that “[e]ven assuming” that a particular claimed
feature was novel does not “avoid the problem of abstractness”).
Appellant further argues, “even if appellant's claims involve an
abstract idea, the independent claims do not pose a pre-emption risk of any
kind, much less one that should render the claims patent ineligible under 35
U.S.C. § 101.” App. Br. 16.
We agree with the Examiner’s response, which is supported by
precedent, i.e., “preemption is not a stand-alone factor in determining
subject-matter-eligibility . . . the Court has determined that improvements to
an abstract idea do not amount to significantly more than the abstract idea
(Alice).” Ans. 9; and see buySAFE, Inc. v. Google, Inc., 765 F.3d 1350,

whatever enlightenment may be had from the Specification. In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
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1355 (Fed. Cir. 2014) (collecting cases); Accenture Global Servs., GmbH v.
Guidewire Software, Inc., 728 F.3d 1336, 1345 (Fed. Cir. 2013); Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(“While preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility”).
Appellant additionally argues, “[a]s is the case here, an inventive
concept can be found in the non-conventional and non-generic arrangement
of known, conventional pieces.” App. Br. 16 (citing Bascom).22 We
disagree.
In Bascom, the claims were directed to the inventive concept of
providing customizable Internet-content filtering which, under Step 2 of the
Alice analysis, was found to transform the abstract idea of filtering content
into a patent-eligible invention. Although the underlying idea of filtering
Internet content was deemed to abstract, under step 2 of the Alice analysis,
the claims carved out a specific location for the filtering system, namely a
remote Internet service provider (ISP) server, and required the filtering
system to give users the ability to customize filtering for their individual
network accounts. Bascom, 827 F.3d at 1349.
We disagree with Appellant’s reliance upon Bascom because there is
no evidence of record to substantiate the assertion that the claims recite non-
conventional and non-generic arrangement of known, conventional
elements, as in Bascom. Moreover, we find no analogy between Appellant’s
determination and use of correlation factors relating criminal offense types

22 See Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016).
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to expenditure indices, and the Internet content filtering claims in Bascom.
Instead, Appellant’s claims merely determine correlation between different
sets of data, i.e., expenditure indices and criminal offense types in one
geographic area, and extrapolate that correlation to a second geographic
area.
The Manual of Patent Examining Procedure, based upon precedential
guidance, provides additional considerations with respect to analysis of the
well-understood, routine, and conventional nature of the claimed computer-
related components.
Another consideration when determining whether a claim
recites significantly more than a judicial exception is whether
the additional elements amount to more than a recitation of the
words “apply it” (or an equivalent) or are more than mere
instructions to implement an abstract idea or other exception on
a computer. As explained by the Supreme Court, in order to
transform a judicial exception into a patent-eligible application,
the additional element or combination of elements must do
“‘more than simply stat[e] the [judicial exception] while adding
the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. __,
134 S. Ct. 2347, 2357, 110 USPQ2d 1976, 1982-83 (2014)
(quoting Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example,
claims that amount to nothing more than an instruction to apply
the abstract idea using a generic computer do not render an
abstract idea eligible. Alice Corp., 134 S. Ct. at 2358, 110
USPQ2d at 1983. See also 134 S. Ct. at 2389, 110 USPQ2d at
1984 (warning against a § 101 analysis that turns on “the
draftsman’s art”) . . . .
In Alice Corp., the claim recited the concept of
intermediated settlement as performed by a generic computer.
The Court found that the recitation of the computer in the claim
amounted to mere instructions to apply the abstract idea on a
generic computer. 134 S. Ct. at 2359-60, 110 USPQ2d at 1984.
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The Supreme Court also discussed this concept in an earlier
case, Gottschalk v. Benson, 409 U.S. 63, 70, 175 USPQ 673,
676 (1972), where the claim recited a process for converting
binary-coded decimal (BCD) numerals into pure binary
numbers. The Court found that the claimed process had no
substantial practical application except in connection with a
computer. Benson, 409 U.S. at 71-72, 175 USPQ at 676. The
claim simply stated a judicial exception (e.g., law of nature or
abstract idea) while effectively adding words that “apply it” in a
computer. Id.
MPEP § 2106.05(f) (“Mere Instructions To Apply An Exception”).
With respect to the Step 2B analysis, we conclude, similar to Alice, the
recitation of a method for determining criminal propensities in a geographic
location based on purchase card transaction data that includes a processing
server and data repositories as argued by Appellant, and similarly for claims
10 and 19, is simply not enough to transform the patent-ineligible abstract
idea here into a patent-eligible invention under Step 2B. See Alice, 573 U.S.
at 221 (“[C]laims, which merely require generic computer implementation,
fail to transform [an] abstract idea into a patent-eligible invention.”).
We conclude the claims fail the Step 2B analysis because claim 1, in
essence, merely recites various computer-based elements along with no
more than mere instructions to implement the identified abstract idea using
the computer-based elements.
Therefore, in light of the foregoing, we conclude, under the Revised
Guidance, that Appellant’s claim 1, considered as a whole, is directed to a
patent-ineligible abstract idea that is not integrated into a practical
application and does not include an inventive concept. Accordingly, we
sustain the Examiner’s § 101 rejection of independent claim 1, and grouped
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claims 2–4, 6–13, and 15–20, which fall therewith. See Claim Grouping,
supra.
CONCLUSION
Under our Revised Guidance, governed by relevant case law, claims
1–4, 6–13, and 15–20, rejected under 35 U.S.C. § 101, are directed to patent-
ineligible subject matter, and we sustain the rejection.
DECISION
We affirm the Examiner’s decision rejecting claims 1–4, 6–13
and 15–20.
DECISION SUMMARY
Claims
Rejected
Basis  Affirmed Reversed
1–4, 6–13,
and 15–20
§ 101  1–4, 6–13,
and 15–20

FINALITY AND RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37
C.F.R. § 41.50(f).
AFFIRMED