Ex Parte Clements

Patent Trial and Appeal Board

Jan 28, 2019

13902900 (P.T.A.B. Jan. 28, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/902,900 05/27/2013
79804 7590 01/30/2019
Duncan Galloway Egan Greenwald, PLLC
9625 Ormsby Station Road
Louisville, KY 40223
FIRST NAMED INVENTOR
Richard F. Clements
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
113027 .000036US2 5163
EXAMINER
SHARVIN, DAVID P
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
01/30/2019 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):
kduncan@dgeglaw.com
carnold@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD F. CLEMENTS
Appeal 2017-011139
Application 13/902,900
Technology Center 3600
Before MARC S. HOFF, JOHN A. EVANS, and CATHERINE SHIANG,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 1-18. Appeal Br. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM. 2
1 Appellant states the real party in interest is Thomson Financial L.L.C.
Appeal Br. 1.
2 Rather than reiterate the arguments of the Appellant and the Examiner, we
refer to the Appeal Brief ( filed February 21, 201 7, "Appeal Br."), the Reply
Brief (filed August 28, 2017, "Reply Br."), the Examiner's Answer (mailed
June 28, 2017, "Ans."), the Final Action (mailed August 11, 2016, "Final
Appeal 2017-011139
Application 13/902,900
STATEMENT OF THE CASE
The claims relate to a computer-based system for evaluating risk in
asset backed securities (ABS). See Abstract.
Invention
Claims 1, 7, and 13 are independent. An understanding of the
invention can be derived from a reading of Claim 1, which is reproduced
below with some formatting added:
1. A computer-implemented method comprising:
(a) establishing a link between a central server
comprising a processor and a memory, and a third-party data
provider, the third party data provider storing a set of financial
data;
(b) receiving, by the central server, a request related to
the set of financial data from a client computing system;
( c) identifying by a processor an asset backed security
(ABS) related to the request for financial data;
( d) generating by a processor a data matrix associated
with the ABS, the data matrix comprising a set of assets
associated with the ABS;
( e) automatically collecting by a processor a first set of
data related to the set of assets associated with the ABS at a
first time, the first set of data comprising types of data
including at least one of a Fair Isaac Corporation (FICO) score,
Vantage Consumer Credit Score, Experian credit score,
Transunion credit score, Equifax credit score, and primary and
secondary borrower information;
Act."), and the Specification (filed May 27, 2013, "Spec.") for their
respective details.
2
Appeal 2017-011139
Application 13/902,900
( f) automatically updating by a processor the data matrix
based on the collected first set of data;
(g) automatically generating by a processor a first score
for the ABS based on applying a weighted rating model to a
plurality of types of data in the first set of data;
(h) automatically collecting by a processor a second set
of data related to the set of assets associated with the ABS at a
second time, the second set of data comprising types of data
including at least one of a Fair Isaac Corporation (FICO) score,
Vantage Consumer Credit Score, Experian credit score,
Transunion credit score, Equifax credit score, and primary and
secondary borrower information;
(i) automatically updating by a processor the data matrix
based on the collected second set of data;
(j) automatically determining by a processor a migratory
pattern associated with the set of assets associated with the
ABS based at least in part on comparing the first set of data and
the second set of data;
(k) based at least in part on the migratory pattern
associated with the set of assets associated with the ABS,
automatically generating by a processor a second score for the
ABS based on applying the weighted rating model to the
migratory pattern and a plurality of types of data in the second
set of data; and
( 1) storing by a processor the second score and
generating by a human-machine interface at the client
computing system a physical element based on the migratory
pattern.
3
Appeal 2017-011139
Application 13/902,900
Rejection3
Claims 1-18 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter. Final Act. 8-12.
ANALYSIS
We have reviewed the rejections of Claims 1-18 in light of
Appellant's arguments that the Examiner erred. We have considered in this
decision only those arguments Appellant actually raised in the Briefs. Any
other arguments which Appellant could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 41.37(c)(l)(iv). We
are not persuaded that the Appellant identify reversible error. Upon
consideration of the arguments presented in the Appeal Brief and Reply
Brief, we agree with the Examiner that all the pending claims are
unpatentable. We provide the following explanation to highlight and
address specific arguments and findings primarily for emphasis. We
consider Appellant's arguments seriatim, as they are presented in the Brief,
pages 5-28.
CLAIMS 11-19 AND 29-36: INELIGIBLE SUBJECT MATTER
Appellant argues all claims as a group in view of the limitations of
Claim 1 and the commensurate limitations of Claims 7 and 13. Appeal Br.
21. Therefore, we decide the appeal of the § 101 rejections with reference to
Claim 1, and refer to the rejected claims collectively herein as "the claims."
3 The present application, filed May 27, 2013, i.e., after March 16, 2013, was
examined under the first inventor to file provisions of the AIA. Final Act. 2.
4
Appeal 2017-011139
Application 13/902,900
See 37 C.F.R. § 4I.37(c)(l)(iv); In re King, 801 F.2d 1324, 1325 (Fed. Cir.
1986).
Parent Application.
The present application claims priority to, and is a continuation of,
U.S. Application 12/378,483, filed February 13, 2009. Spec., ,r 1. The '483
Application issued May 28, 2013 as US 8,452,681.
Claim 7 ( of the '483 Application) as amended, indicated by the
underlining, is set forth below:
A computerized method for evaluating risk in asset backed
securities, the method comprising: receiving by a processor a
first data set associated with an asset pool of an asset backed
security (ABS), the first data set including credit score data
related to the asset pool; applying a migratory pattern predictive
model to at least a part of the first data set, including the credit
score data, and determining by the processor a rating
concerning the relative risk associated with the ABS.
US 12/378,483, Claim 7 as amended October 16, 2011.
Appellant argued insertion of the phrase "by the processor" into each
step of the claimed method sufficed to render the claims eligible under §
101. The Examiner agreed and withdrew the original rejection of Claim 7
under 35 U.S.C. § 101, in view of an amendment filed October 16, 2011.
See Non-Final Action mailed December 14, 2011 in the '483 file history.
Claim 1 of the present application shares substantial similarities with
claims allowed in the '483 Application, including reciting the phrase "by the
processor" in each step of the claimed method. Similarly as was the case for
the '483 Application, Appellant argues that a "claimed process is patent-
5
Appeal 2017-011139
Application 13/902,900
eligible under 35 U.S.C. § 101 if ... it is tied to a particular machine or
apparatus." Appeal Br. 8.
"[I]n stating that the 'machine-or-transformation' test is an 'important
and useful clue' to patentability, [the Supreme Court] neither said nor
implied that the test trumps the 'law of nature' exclusion. Mayo
Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 88 (2012).
"[Parker v.] Flook stands for the proposition that the prohibition against
patenting abstract ideas cannot be circumvented by attempting to limit the
use of [the idea] to a particular technological environment." Alice Corp. Pty.
Ltd. v. CLS Bank Intern., 573 U.S. 208, 134 S.Ct. 2347, 2358 (2014). "In
Diehr, 450 U.S. 175, 101 S.Ct. 1048, 67 L.Ed.2d 155, by contrast, we held
that a computer-implemented process for curing rubber was patent eligible,
but not because it involved a computer. The claim employed a 'well known'
mathematical equation, but it used that equation in a process designed to
solve a technological problem in 'conventional industry practice."' Alice
Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208, 134 S.Ct. 2347, 2358
(2014).
We note the prosecution of the '483 application resulted in the
issuance of the '681 patent prior to promulgation of the Alice decision and
prior to the promulgation of the 2019 Revised Guidance4• Our analysis will
follow Alice and the Revised Guidance by asking whether the present claims
are designed to solve a technological problem.
4 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50-57 (January 7, 2019) ("Revised Guidance").
6
Appeal 2017-011139
Application 13/902,900
Preemption
Appellant contends the limitations of claim 1 are tied to specific
components and do not broadly preempt an entire field of endeavor. Appeal
Br. 14.
While preemption may denote patent ineligibility, its absence does not
demonstrate patent eligibility. See FairWarning, IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-
ineligible concept, preemption concerns "are fully addressed and made
moot" by an analysis under the Mayo/Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). We conduct
such an analysis below.
Prima facie case
Appellant contends the Examiner failed to make out a prima facie
case of patent ineligibility. Appeal Br. 8. Specifically, Appellant argues
"claim 1, and for similar and further reasons claims 7 and 13, are directed
towards statutory subject matter pursuant to 35 U.S.C. § 101 because claim 1
is not directed to an abstract idea, and further because claim 1 amounts to
significantly more than an abstract idea and otherwise satisfies the
requirements of § 101." Id.
The Examiner has provided a detailed analysis under the Mayo/Alice
framework. See Final Act. 2-7; 8-12.
We find the Examiner has adequately made out a prima facie case.
The Federal Circuit has explained repeatedly 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
7
Appeal 2017-011139
Application 13/902,900
In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The Examiner carries
the burden of establishing a prima facie case when its rejection satisfies
35 U.S.C. § 132 by setting forth a rejection in a sufficiently articulate and
informative manner. 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.
35 USC§ 101
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "[l]aws of nature,
natural phenomena, and abstract ideas" from the realm of patent-eligible
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
aims to promote. Alice Corp. Pty. Ltd. v. CLS Bankint'l, 134 S. Ct. 2347,
2354 (2014) (quoting Ass 'nfor Molecular Pathology v. Myriad Genetics,
Inc., 569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 72-78 (2012); Diamond v. Diehr, 450
U.S. 175,185 (1981).
Under the mandatory Revised Guidance, we determine whether
Appellant's claims recite:
1. any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing human
8
Appeal 2017-011139
Application 13/902,900
interactions such as a fundamental economic practice, or mental processes),
and
2. additional elements that integrate the judicial exception into a
practical application (see MPEP § 2106.05(a}-(c), (e}-(h)).
Only if a claim, (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, do we then reach the
issue of 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.
Judicial Exceptions.
Under the Revised Guidance, the abstract idea exception includes the
following groupings of subject matter, when recited as such in a claim
limitation(s) (that is, when recited on their own or per se): (a) mathematical
concepts, 5 i.e., mathematical relationships, mathematical formulas,
equations, 6 and mathematical calculations 7 ; (b) certain methods of
5 Bilski v. Kappos, 561 U.S. 593, 611 (2010) ("The concept ofhedging ...
reduced to a mathematical formula ... is an unpatentable abstract idea.").
6 Diamond v. Diehr, 450 U.S. 175, 191 (1981) ("A mathematical formula as
such is not accorded the protection of our patent laws''); Parker v. Flook,
437 U.S. 584, 594 (1978) ("[T]he discovery of [a mathematical formula]
cannot support a patent unless there is some other inventive concept in its
application.'').
7 SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir.
9
Appeal 2017-011139
Application 13/902,900
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)8; and (c) mental processes9 ----concepts performed in the human
mind (including observation, evaluation, judgment, opinion). 10
Appellant characterizes his claims as relating to:
a computer-based system for evaluating risk in asset backed
securities (ABS) comprising: a database containing data
associated with an asset pool of an ABS; a computer having a
processor for executing software and being adapted to establish
a communication link with an external provider of electronic
2018) (holding that claims to a "series of mathematical calculations based
on selected information'' are directed to abstract ideas).
8 Alice, 573 U.S. at 219--20 ( concluding that use of a third party to mediate
settlement risk is a "fundamental economic practice" and thus an abstract
idea); see Revised Guidance, p. 52, n.13 for a more extensive listing of
"certain methods of organizing human activity" that have been found to
abstract ideas.
9 If a claim, under its broadest reasonable interpretation, covers performance
in the mind but for the recitation of generic computer components, then it is
still in the mental processes category unless the claim cannot practically be
performed in the mind. See Revised Guidance, p. 52, n. 14; see Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
("[W]ith the exception of generic computer-implemented steps, there is
nothing in the claims themselves that foreclose them from being performed
by a human, mentally or with pen and paper.'').
10 Mayo, 566 U.S. at 71 (" '[M]ental processes[] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work' "(quoting Benson, 409 U.S. at 67)).
10
Appeal 2017-011139
Application 13/902,900
data and to receive a first data set associated with an asset pool
of an ABS, the first data set including credit score data related
to the asset pool; and a migratory pattern predictive model
application executed by the processor and adapted to analyze at
least a part of the first data set, including the credit score data,
and to determine a rating concerning the relative risk associated
with the ABS.
Appeal Br. 8 (citing Abstract). Appellant argues the present rejection is
based on an "overly generalized" view of the claims. Appeal Br. 11.
The Examiner finds that courts have determined that the
determination of creditworthiness and fraud detection are fundamental
economic practices and thus, are abstract ideas. Final Act. 2. Specifically,
the Examiner finds the claims are directed to "assigning a risk score to a
security." Ans. 3. We agree. As grouped by the Revised Guidance, the
category of abstract ideas includes:
(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).
Revised Guidance, 52.
Indeed, Appellant characterizes his claims as "a computer-based
system for evaluating risk in asset backed securities." Appeal Br. 8. Claim
1 recites various limitations consistent with this characterization, including:
(c) identifying by a processor an asset backed security (ABS)
related to the request for financial data;
( d) generating by a processor a data matrix associated with the
ABS, the data matrix comprising a set of assets associated with
the ABS;
11
Appeal 2017-011139
Application 13/902,900
( e) automatically collecting by a processor a first set of data
related to the set of assets associated with the ABS at a first
time, the first set of data comprising types of data including at
least one of a Fair Isaac Corporation (FICO) score, Vantage
Consumer Credit Score, Experian credit score, Transunion
credit score, Equifax credit score, and primary and secondary
borrower information;
( f) automatically updating by a processor the data matrix based
on the collected first set of data;
(g) automatically generating by a processor a first score for the
ABS based on applying a weighted rating model to a plurality
of types of data in the first set of data;
(h) automatically collecting by a processor a second set of data
related to the set of assets associated with the ABS at a second
time, the second set of data comprising types of data including
at least one of a Fair Isaac Corporation (FICO) score, Vantage
Consumer Credit Score, Experian credit score, Transunion
credit score, Equifax credit score, and primary and secondary
borrower information;
(i) automatically updating by a processor the data matrix based
on the collected second set of data;
(j) automatically determining by a processor a migratory pattern
associated with the set of assets associated with the ABS based
at least in part on comparing the first set of data and the second
set of data;
(k) based at least in part on the migratory pattern associated
with the set of assets associated with the ABS, automatically
generating by a processor a second score for the ABS based on
applying the weighted rating model to the migratory pattern and
a plurality of types of data in the second set of data.
Thus various claimed limitations recite an abstract idea, i.e., certain
methods of organizing human activity, specifically mitigating risk. See
Alice, 573 U.S. at 219--20 (concluding that use of a third party to mediate
12
Appeal 2017-011139
Application 13/902,900
settlement risk is a "fundamental economic practice" and thus an abstract
idea); id. (describing the concept of risk hedging identified as an abstract
idea in Bilski as "a method of organizing human activity"). Bancorp Servs.,
LLC v. Sun Life Assurance Co. of Can. (US.), 687 F.3d 1266, 1280 (Fed.
Cir. 2012) (identifying the concept of "managing a stable value protected
life insurance policy by performing calculations and manipulating the
results" as an abstract idea).
Integration of the judicial exception into a practical application.
Where, as here, it is determined the claims are directed to a judicial
exception, we look to determine the presence of additional elements that
integrate the judicial exception into a practical application. The Revised
Guidance is "designed to more accurately and consistently identify claims
that recite a practical application of a judicial exception [] and thus are not
'directed to' a judicial exception." Revised Guidance, at 53. The claims
recite a practical application where an additional element reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field. 11 Revised Guidance, at 55.
For the reasons which follow, we conclude that Appellant's claims do
not integrate the judicial exception into a practical application. See MPEP
11 The Revised Guidance also finds integration into a practical application
where the judicial exception is used in medical treatment or to transform an
article to a different state. Revised Guidance, at 55. Such considerations are
not before us.
13
Appeal 2017-011139
Application 13/902,900
§§ 2106.0S(a)-(c) and (e)-(h). We address these "practical application"
MPEP sections seriatim:
MPEP § 2106.0S(a) "Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field."
"In determining patent eligibility, examiners should consider whether
the claim "purport(s) to improve the functioning of the computer itself' or
"any other technology or technical field." MPEP § 2106.0S(a).
Appellant cites McRo 12 for the proposition that automating subjective
tasks previously performed by a human may be directed to statutory subject
matter where the claim is directed to "limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice." Appeal Br. 13 (quoting McRo, at 1316). See Reply Br.
2-3.
The McRo Court found "[t]he claimed process uses a combined order
of specific rules that renders information into a specific format that is then
used and applied to create desired results." McRo, at 1315. Appellant fails
to direct our attention to the "specific rules" that are incorporated into the
claimed method so as to make the claims analogous to those of McRo.
Appellant further analogizes the claims to those of Enfzsh 13 to argue
the "claimed method provides an improvement over the prior art methods by
at least allowing investors to compare issues from different regions by
proposing establishment of a global scoring standard, providing the
12 McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (2016).
13 Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016).
14
Appeal 2017-011139
Application 13/902,900
marketplace with better, in-depth analysis by periodically collecting updated
data associated with underlying assets that make up a pool and comparing
changes over time associated with conditions." Appeal Br. 13. Appellant
cites Enfish for the proposition that where an invention improves the actual
functioning of a computer it may not even be directed towards an abstract
idea and that the improvements may even be made by computer software.
Id. (citing Enfzsh, 882 F.3d at 1335). Appellant contends "the limitations of
claim 1 provide an improvement to the functioning of a computer." Reply
Br. 3. Specifically, Appellant argues "claim 1 recites specific components
such as a central server having a processor and a memory, a third-party data
provider, a data matrix, and a human-machine interface." Id.
We do not find Appellant persuasive because Appellant fails to
convincingly argue how the claimed method "improves the actual
functioning of the computer." Nor is such improvement to computer
functioning recited in the claims.
MPEP § 2106.05(b) Particular Machine.
At the outset, we note that the Bilski machine-or-transformation test is
only applicable to the method (process) claims on appeal. This section of
the MPEP guides: "When determining whether a claim recites significantly
more than a judicial exception, examiners should consider whether the
judicial exception is applied with, or by use of, a particular machine." See
Bilski v. Kappas, 561 U.S. 593, 604, (2010) ("The machine-or-
transformation test is a useful and important clue, and investigative tool" for
determining whether a claim is patent eligible under§ 101."). MPEP §
2106.05(b).
15
Appeal 2017-011139
Application 13/902,900
MPEP § 2106.05(b) provides further guidance regarding what
constitutes a particular machine:
[A]s described in MPEP §2106.05(±), additional elements that invoke
computers or other machinery merely as a tool to perform an existing
process will generally not amount to significantly more than a judicial
exception. See, e.g., Versata Development Group v. SAP America, 793 F.3d
1306, 1335 (Fed. Cir. 2015) (explaining that in order for a machine to add
significantly more, it must "play a significant part in permitting the claimed
method to be performed, rather than function solely as an obvious
mechanism for permitting a solution to be achieved more quickly").
We find the claims on appeal are silent regarding specific limitations
directed to an improved computer system, processor, memory, network,
database, or Internet, nor do Appellants direct our attention to such specific
limitations. "[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S.
Ct. at 2358; see also BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an
Internet computer network' or on a generic computer is still an abstract
idea"). Applying this reasoning here, we conclude Appellant's claims are
not directed to a particular machine, but rather merely implement an abstract
idea using generic computer components. Thus, we conclude Appellant's
method claims fail to satisfy the "tied to a particular machine" prong of the
Bilski machine-or-transformation test.
MPEP § 2106.05(c) Particular Transformation.
16
Appeal 2017-011139
Application 13/902,900
This section of the MPEP guides: "Another consideration when
determining whether a claim recites significantly more is whether the claim
effects a transformation or reduction of a particular article to a different state
or thing." "[T]ransformation and reduction of an article 'to a different state
or thing' is the clue to patentability of a process claim that does not include
particular machines." Bilski v. Kappas, 561 U.S. 593, 604 (2010) (quoting
Gottschalk v. Benson, 409 U.S. 63, 70, 175 (1972)).
The claims operate to select and score certain electronic data, i.e.,
credit scores. The selection and ranking of electronic data is not a
"transformation or reduction of an article into a different state or thing
constituting patent-eligible subject matter[.]" See Bilski, at 962 ( emphasis
added). See also CyberSource Corp v. Retail Decisions, Inc., 654 F.3d
13 66, 13 7 5 (Fed. Cir. 2011) ("The mere manipulation or reorganization of
data ... does not satisfy the transformation prong."). Applying this
guidance here, we conclude Appellant's method claims fail to satisfy the
transformation prong of the Bilski machine-or-transformation test.
MPEP § 2106.05(e) Other Meaningful Limitations.
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment.
450 U.S. 175 (1981). In Diehr, the claim was directed to the
use of the Arrhenius equation ( an abstract idea or law of nature)
in an automated process for operating a rubber-molding press.
450 U.S. at 177-78. The Court evaluated additional elements
such as the steps of installing rubber in a press, closing the
mold, constantly measuring the temperature in the mold, and
automatically opening the press at the proper time, and found
17
Appeal 2017-011139
Application 13/902,900
them to be meaningful because they sufficiently limited the use
of the mathematical equation to the practical application of
molding rubber products. 450 U.S. at 184. In contrast, the
claims in Alice Corp. v. CLS Bank International did not
meaningfully limit the abstract idea of mitigating settlement
risk. 573 U.S. 134 S. Ct. 2347 (2014). In particular, the Court
concluded that the additional elements such as the data
processing system and communications controllers recited in
the system claims did not meaningfully limit the abstract idea
because they merely linked the use of the abstract idea to a
particular technological environment (i.e., "implementation via
computers") or were well-understood, routine, conventional
activity.
MPEP § 2106.05(e).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer. Alice, 134 S. Ct. at 2359. Similarly as for Alice, we find
that "[t]aking the claim elements separately, the function performed by the
computer at each step of the process is "purely conventional." Id. "In
short, each step does no more than require a generic computer to perform
generic computer functions." Alice, 134 S. Ct. at 2359.
We agree with the Examiner's conclusion (Ans. 4) that Appellant's
claims do not add meaningful limitations beyond generally linking the use of
the judicial exception to a particular technological environment.
MPEP §2106.05([) Mere Instructions To Apply An Exception.
Appellant has not persuasively shown the claims do any more than to
invoke generic computer components merely as a tool in which the computer
instructions apply the judicial exception.
18
Appeal 2017-011139
Application 13/902,900
MPEP § 2106.05(g) Insignificant Extra-Solution Activity.
Following a determination of the relative risk of a particular asset-
backed security, the claims operate to store and display a risk score. See
claim 1, (1). We find storing and displaying data to be a classic example of
insignificant extra-solution activity. See, e.g., In re Bilski, 545 F.3d 943,
963 (Fed. Cir. 2008) (en bane), affd sub nom, Bilski v. Kappas, 561 U.S.
593 (2010).
MPEP § 2106.05(h) Field of Use and Technological Environment.
"[T]he Supreme Court has stated that, even if a claim does not wholly
preempt an abstract idea, it still will not be limited meaningfully if it
contains only insignificant or token pre- or post-solution activity-such as
identifying a relevant audience, a category of use, field of use, or
technological environment." Ultramercial Inc. v. Hulu LLC, 722 F.3d 1335,
1346 (Fed. Cir. 2013). We find the "central server, processor and memory"
limitations are simply a field of use that attempts to limit the abstract idea to
a particular technological environment.
We do not find Appellant's argument to be persuasive because "[t]he
courts have also identified examples in which a judicial exception has not
been integrated into a practical application." Revised Guidance, at 55. The
claims fail to recite a practical application where the additional element does
no more than generally link the use of a judicial exception to a particular
technological environment or field of use. Id. The mere application of an
abstract idea in a particular field is not sufficient to integrate the judicial
19
Appeal 2017-011139
Application 13/902,900
exception into a practical application. See id., n. 32. In view of the
foregoing, we find the claims to be "directed to" a judicial exception.
Well-understood, routine, conventional.
Because the claims recite a judicial exception and do not integrate that
exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that is not "well-understood, routine, conventional" in the field. Revised
Guidance, at 56.
Appellant discloses a conventional database server system. The
database may be "SQL 2005 or above or SQL Express or other suitable
database." Spec., ,r 33. Appellant discloses that the communications links
may be "[a]ny of several suitable communication links are available, such as
one or a combination of wireless, LAN, WLAN, ISDN, X.25, DSL, and
ATM type networks." Spec., ,r 34. The operating system may be "for
example, Microsoft Windows Vista (business, enterprise and ultimate
editions), or Windows XP Professional with SP2." Id. Appellant further
discloses the system requirements "may require the client machines to be
compatible with minimum threshold levels of processing capabilities, e.g.,
Intel Pentium III." Id. And Appellant further discloses "[a]spects of the
system 100 may be enabled using any combination of Internet or (World
Wide) WEB-based, private virtual network, ethemet, etc., and may be
desktop-based, or application WEB-enabled." Spec., ,r 35.
We find such "well-understood, routine, [and] conventional"
limitations fail to indicate the presence of an inventive concept.
Specified at a high level of generality.
20
Appeal 2017-011139
Application 13/902,900
It is indicative of the absence of an inventive concept where the
claims simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance, at 56.
Appellant contends that claim 1 recites specific components such as a
central server having a processor and a memory, a third-party data provider,
a data matrix, and a human-machine interface that are significantly more
than and outside the scope of the Examiner's alleged abstract idea of
"assigning a score to an asset backed security." Reply Br. 3. In analogy to
Enfzsh, Appellant argues the specific interaction of these elements of the
claimed method, specifically the manner in which the data matrix is
generated, updated, stored, and presented at a human-machine interface
provide for the more efficient functioning of a computer. Id. ( citing Spec.,
,r,r 22, 32, and 35-37).
We disagree with the Appellant's analogy to Enfish because the
specification and claims describe the claimed invention at such a high level
of abstraction that the public is not taught how the desired functions are
achieved.
Therefore, we conclude that none of the claim limitations, viewed
"both individually and as an ordered combination," amount to significantly
more than the judicial exception in order to sufficiently transform the nature
of the claims into patent-eligible subject matter. See Alice, 134 S. Ct. at
2355 (internal quotations omitted) (quoting Mayo, 132 S. Ct. at 1297).
21
Appeal 2017-011139
Application 13/902,900
Accordingly, we sustain the Examiner's 35 U.S.C. § 101 rejection of
representative claim 1, and claims 2-18 (not argued separately) which fall
with claim 1. See 37 C.F.R. § 4I.37(c)(l)(iv).
DECISION
The rejection of Claims 1-18 under 35 U.S.C. § 101 is AFFIRMED.
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)(l )(iv).
AFFIRMED
22