Ex Parte Herschler et alDownload PDFPatent Trials and Appeals BoardApr 23, 201911671598 - (D) (P.T.A.B. Apr. 23, 2019) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 11/671,598 02/06/2007 5073 7590 BAKER BOTTS L.L.P. 2001 ROSS A VENUE SUITE 900 DALLAS, TX 75201-2980 04/25/2019 FIRST NAMED INVENTOR Jacob M. Herschler 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. 002328.0719 9283 EXAMINER AKINTOLA, OLABODE ART UNIT PAPER NUMBER 3691 NOTIFICATION DATE DELIVERY MODE 04/25/2019 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): ptomaill@bakerbotts.com ptomail2@bakerbotts.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JACOB M. HERSCHLER, DANIEL 0. KANE, N. DAVID KUPERSTOCK, ROBERT FRANCIS O'DONNELL, STEVEN LEE PUTTERMAN, DAIN ERIC RUNESTAD, ROBERT J. SCHWARTZ, NICHOLAS BERARDIS JR., JOHN L. GRUCZA, MICHAEL ALBERT GUIDO, and J. SCOTT DUNN Appeal2018-001035 Application 11/671,598 Technology Center 3600 Before ELENI MANTIS MERCADER, CARL L. SILVERMAN, and JOHN D. HAMANN, Administrative Patent Judges. SILVERMAN, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's Final Rejection of claims 100-102, 105-107, and 111-118, which constitute all pending claims. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The invention relates to financial instruments, and particularly to managing assets including transferring assets from one investment to Appeal2018-001035 Application 11/671,598 alternate investments based on triggering events. Abstract; Spec. 1, Technical Field of the Invention, Figs. 6-9. Claim 100, reproduced below, is exemplary of the subject matter on appeal ( emphasis added): Claim 100. A non-transitory computer-readable medium comprising software stored thereon, the software operable, when executed by one or more processors, to: update a balance of an account comprising a plurality of assets allocated to one or more investments selected by a guarantee recipient, the update based on market performance of the one or more investments selected by the guarantee recipient, wherein the account is subject to a first guarantee of a protected value, a second guarantee entitling a beneficiary to receive a transfer of an amount of money, and an agreement to allow at least a portion of the account balance to be transferred in response to a triggering event; and using a minimum positive growth rate stored in one or more memory devices, calculate a protected value such that the calculated protected value is at least equal to an initial deposit into the account growing at the stored minimum positive growth rate, wherein: the minimum positive growth rate is a fixed rate between four percent and six percent; the minimum positive growth rate is based on a consumer price index; and the calculated protected value represents a guaranteed positive rate of return regardless of market performance of the one or more investments; detect an event trigger corresponding to one or more events selected from the group consisting of: a decrease in the balance of the account below a specified threshold; a decrease in the balance of the account at a rate greater than a specified threshold rate; 2 Appeal2018-001035 Application 11/671,598 a change in one or more credit ratings of one or more entities associated with one or more variable investments; and a change in a calculated risk associated with the account; in response to the detected event trigger, transfer at least a portion of the plurality of assets of the account from at least one of the one or more investments selected by the guarantee recipient to at least one alternative investment selected by a guarantor of the first and second guarantees, such that after the transfer the account comprises the portion of the plurality of assets transferred to the at least one alternative investment, the at least one alternative investment is negatively correlated with the at least one of the one or more investments selected by the guarantee recipient; and calculate on a daily basis a periodic value as the greater of the account balance and the periodic value from a preceding period increased according to the minimum positive growth rate, wherein the calculated protected value is at least equal to a maximum of the calculated periodic values. App. Br. 32-33. Claims Appendix. THE REJECTI0N 1 Claims 100-102, 105-107, and 111-118 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to patent-ineligible subject matter. Final Act. 2--4. PRINCIPLES OF LAW Patent-eligible subject matter is defined in 35 U.S.C. § 101 of the Patent Act, which recites: 1 The Examiner states that "[t]he 35 U.S.C § 103 rejection of claims 100- 102, 105-107 and 111-118 has been withdrawn." Final Act. 4. 3 Appeal2018-001035 Application 11/671,598 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. There are, however, three judicially created exceptions to the broad categories of patent-eligible subject matter in 35 U.S.C. § 101: "[l]aws of nature, natural phenomena, and abstract ideas." Alice Corp. Pty. Ltd. v. CLS Bankint'l, 573 U.S. 208,216 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012). 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. See Alice, 573 U.S. at 217-18 ( citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)). In accordance with that framework, we first determine what concept the claim is "directed to." See id. 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. Kappas, 561 U.S. 593, 611 (2010) ("Claims 1 and 4 in petitioners' application explain the basic concept of hedging, or protecting against risk."). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219-20; Bilski, 561 U.S. at 611 ); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594--95 (1978)); and mental processes (Gottschalkv. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as "molding rubber products" (Diamond v. Diehr, 450 U.S. 175, 191 (1981 )); "tanning, dyeing, making water-proof cloth, vulcanizing India 4 Appeal2018-001035 Application 11/671,598 rubber, smelting ores" (id. at 184 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 that "[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula." Diehr, 450 U.S. at 176; see also id. at 191-192 ("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. ( citing Benson and Flook); see, e.g., id. at 187 ("It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection."). If the claim is "directed to" an abstract idea, we tum 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 ( quotation marks omitted). "A claim that recites an abstract idea must include 'additional features' to ensure 'that the [claim] is more than a drafting effort designed to monopolize the [abstract idea]."' Id. ( quoting Mayo, 566 U.S. at 77). 5 Appeal2018-001035 Application 11/671,598 "[M]erely requir[ing] generic computer implementation[] fail[ s] to transform that abstract idea into a patent-eligible invention." Id. The PTO recently published revised guidance on the application of § 101. USPTO's January 7, 2019 Memorandum, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 ("Memorandum"). Under that guidance, we first determine whether the claim recites: ( 1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes); 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 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. See Memorandum. ANALYSIS The Examiner rejected claims 100-102, 105-107, and 111-118 under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without "significantly more." Final Act. 2. According to the Examiner, regarding independent claim 100: 6 Appeal2018-001035 Application 11/671,598 The claim recites a various steps for providing a financial instrument with an asset transfer feature. In other words, the claim describes a process for managing assets allocated to one or more investment that is transferable to alternative investment based on triggers. It is a mental process that could be performed in the human mind, or by a human using a pen and paper. Such basic concept is similar to other mental processes found abstract by the courts such as comparing new and stored information and using rules to identify options in SmartGene, and obtaining and comparing intangible data in Cybersource. The claim also recites a various calculations using mathematical techniques and outputting the results. In other words, the claimed method simply describes the concept of gathering and combining data by reciting steps of organizing information through mathematical relationships. Thus, the claim is directed to a mathematical formula, which is like a law of nature that falls within the exceptions to patent-eligible subject matter. Id. at 2-3. Regarding whether the claim amounts to significantly more than the abstract idea, the Examiner determines that the only additional limitation in the claim is the processor configured to execute preventative maintenance logic and, thus, the recited generic processor component performs no more than its basic processor functions. Id. at 3. According to the Examiner, this additional element is a well understood, routine and conventional limitation that amounts to mere instructions to implement the abstract idea on a computer, and, taking the computer limitations as an ordered combination adds nothing that is not already present when the elements are taken individually. Therefore, the Examiner determines the claim does not amount to significantly more than the recited abstract idea. Id. 7 Appeal2018-001035 Application 11/671,598 Appellants argue the Examiner applies too high a level of abstraction and errs in concluding the claims are directed to the abstract idea of "providing a financial instrument with an asset transfer feature" and, even if the asserted abstract idea were correct, the Examiner does not show correspondence to court cases. App. Br. 9 ( citing Final Act. 2; Enfzsh, LLC v. Microsoft Corp., No. 2:12-cv-07360, slip op. at 14 (Fed. Cir. May 12, 2016). Appellants argue the "claims recite a specific, unconventional implementation of transforming a portion of assets from an investment to an alternate investment." Id. at 9-10, ( emphasis omitted). Appellants argue the claims recite a transformation of a portion of assets from an investment to an alternative investment, which is not a preemption, and which constitutes a patent eligible transformation under Bilski. Id. at 11 ( citing Bilski v. Kappas, 561 U.S. 593 (2010)). Appellants argue the claims recite an inventive concept of transferring a portion of assets from an investment to an alternative investment and refer to advantages "over the known methods of generating an annuity from an existing pension." Id. at 11 (citing Spec. 4:32-5:15). In the Answer, the Examiner determines "[t]he entire concept as described in the claim is simply a mechanism for managing assets allocated to one or more investment that is transferable to alternative investments based on triggers" and "[i]t is a mental process that could be performed in the human mind, or by human using a pen and paper." Ans. 2. The Examiner determines that this "managing of assets ... " is similar to the abstract idea of managing risk (hedging) during consumer transactions in Bilski, or mitigating settlement risk in financial transactions in Alice, and collecting information, analyzing it, and displaying certain results of the 8 Appeal2018-001035 Application 11/671,598 collection and analysis in Electric Power Group. Id. ( citing Electric Power Group, LLC, v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016). The Examiner determines the various calculations or mathematical algorithms are like laws of nature that fall within the exceptions to patent-eligibility subject matter similar to mathematical formula for hedging in Bilski, and managing a stable value protected life insurance policy by performing calculations and manipulating the results in Bancorp. Id. at 2-3 ( citing Bancorp Servs, L.L.C. v. Sun Life Assur. Co. of Can., 771 F.Supp.2d 1054, 1065 (E.D. Mo. 2011) aff'd, 687 F.3d 1266 (Fed. Cir. 2012)). Regarding whether additional limitations amount to significantly more than the abstract idea, the Examiner reiterates the Final Action determination that the only additional limitation is the processor, and this is insufficient to amount to significantly more than the abstract idea. Id. at 3; see Final Act. 3, supra). The Examiner states "[t]ransformation of data and/or concrete and tangible system as alleged by Appellant are not factors in subject matter eligibility" because "[u]sing a generic processor to perform such functions inherently requires some form of transformation of data" and "such transformation is not considered 'significantly more' because it is routine and conventional that amounts to mere instructions to implement the abstract idea on a computer." Id. at 5. In the Reply Brief, Appellants argue the claims recite a transformation of data and are patent-eligible under the machine-or-transformation test. Reply Br. 2-3 ( citing Institution Decision of Covered Business Method Patent Review, PNC Bank et al. v. Secure Axcess, LLC, CBM2014-00100 (Sep. 9, 2014); the PTAB has stated "[w]e understand that the machine-or- transformation test is a useful tool ... for whether an invention is a patent- 9 Appeal2018-001035 Application 11/671,598 eligible process under§ 101." PNC Bank, at 23--4)). According to Appellants, [l]ike the challenged claims in PNC Bank, the pending claims recite a transformation of one thing (e.g., an account comprising assets from at least one of the one or more investments) to create something else ( e.g., an account comprising assets from the at least one alternative investment) and further recites a particular manner of transforming. Id. at 3. According to Appellants, the claims improve the functioning of a computer because they "perform particular automatic actions, the automatic performance of which is associated with a reduction in the use of computer resources." Id. at 3--4 (citing Enfzsh, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016); McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Appellants argue the claims are directed to a specific and unconventional method and system of transforming assets and are thus patent eligible and, like in Enfzsh, the claims here are not directed to any form of managing assets. Id. at 4. According to Appellants, the claims recite a specific process of managing assets that involves a physical transformation, the physical transformation being prompted by the detection of one or more particular events (e.g., a decrease in the balance of the account below a specified threshold, a decrease in the balance of the account at a rate greater than a specified threshold rate, a change in one or more credit ratings of one or more entities associated with one or more variable investments, and a chance in a calculated risk associated with the account). Id. Appellants argue, by generalizing and abstracting the claims, the Examiner has ensured that exceptions to § 101 swallow the rule. Id. ( citing Enfish, at 1337). As discussed below, we are not persuaded by Appellants' arguments. 10 Appeal2018-001035 Application 11/671,598 Applying the current Guidelines (Memorandum), we agree with the Examiner that claim 1 recites abstract ideas constituting "mental processes" and "certain methods of organizing human activity such as a fundamental economic practice." See Final Act 2--4; Ans. 2-5; 84 Fed. Reg. 50 at I(a), III. We refer to the claim 100 limitations that recite software operable, when executed by one or more processors, to ( 1) update a balance of an account comprising a plurality of assets allocated to one or more investments selected by a guarantee recipient; (2) using a minimum positive growth rate stored in one or more memory devices, calculate a protected value such that the calculated protected value is at least equal to an initial deposit into the account growing at the stored minimum positive growth rate; (3) detect an event trigger corresponding to one or more events; (4) in response to the detected event trigger, transfer at least a portion of the plurality of assets of the account; and (5) calculate on a daily basis a periodic value. As discussed below, these limitations can be performed with pen and paper and, therefore, constitute "mental processes." The remainders of limitation ( 1 }-( 5) can also be performed with pen and pencil: the remainder of limitation ( 1) the update based on market performance of the one or more investments selected by the guarantee recipient, wherein the account is subject to a first guarantee of a protected value, a second guarantee entitling a beneficiary to receive a transfer of an amount of money, and an agreement to allow at least a portion of the account balance to be transferred in response to a triggering event can be performed with pen and paper; the remainder of limitation (2) wherein the minimum positive growth rate is a fixed rate between four percent and six 11 Appeal2018-001035 Application 11/671,598 percent; the minimum positive growth rate is based on a consumer price index; and the calculated protected value represents a guaranteed positive rate of return regardless of market performance of the one or more investments can be performed with pen and paper; the remainder of limitation (3) selected from the group consisting of a decrease in the balance of the account below a specified threshold; a decrease in the balance of the account at a rate greater than a specified threshold rate; a change in one or more credit ratings of one or more entities associated with one or more variable investments; and a change in a calculated risk associated with the account; the remainder of limitation ( 4) from at least one of the one or more investments selected by the guarantee recipient to at least one alternative investment selected by a guarantor of the first and second guarantees, such that after the transfer the account comprises the portion of the plurality of assets transferred to the at least one alternative investment, the at least one alternative investment is negatively correlated with the at least one of the one or more investments selected by the guarantee recipient; and the remainder of limitation ( 5) as the greater of the account balance and the periodic value from a preceding period increased according to the minimum positive growth rate, wherein the calculated protected value is at least equal to a maximum of the calculated periodic values. Limitations ( 1 }-( 5) of claim 100 are nothing more than "mental processes" that could be performed in the human mind or by a human using a pen and paper-a subject matter that falls within the three types of abstract ideas identified by the Memorandum. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011) ("[A] method that can be performed by human thought alone is merely an abstract idea and is 12 Appeal2018-001035 Application 11/671,598 not patent-eligible under§ 101."); see also In re Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) ("[M]ental processes----or processes of human thinking-standing alone are not patentable even if they have practical application."); Gottschalkv. Benson, 409 U.S. 63, 67 (1972) ("Phenomena of nature, ... mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." (Emphasis added)). Additionally, mental processes remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource, 654 F.3d at 1375 ("That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson."). For example, limitations ( 1) through ( 5) of claim 100 can be performed by a financial analyst through observation, evaluation, and judgment. Additionally, we note the Specification states "[ w ]hile in certain embodiments financial instrument 100 is entered into without using a computer, other embodiments may have a computerized option for entering into an agreement." Spec. 46:25-28. In addition to the mental processes discussed, supra, the claim limitations, under their broadest reasonable interpretation, recite transforming a portion of assets from an investment to an alternative investment in response to detecting an event trigger. As discussed below, this constitutes a method of organizing human activity, such as a fundamental economic practice, which also constitutes an abstract idea. Additionally, we note the Specification states "[t]his invention relates generally to financial instruments and more particularly to a financial 13 Appeal2018-001035 Application 11/671,598 instrument with an asset transfer feature." Spec. 1, Technical Field of the Invention; 2:1-3:7. As in our discussion, supra, regarding the abstract idea of mental processes, limitations (1) update a balance of an account comprising a plurality of assets allocated to one or more investments selected by a guarantee recipient; (2) using a minimum positive growth rate stored in one or more memory devices, calculate a protected value such that the calculated protected value is at least equal to an initial deposit into the account growing at the stored minimum positive growth rate; (3) detect an event trigger corresponding to one or more events; (4) in response to the detected event trigger, transfer at least a portion of the plurality of assets of the account; and ( 5) calculate on a daily basis a periodic value also recite steps in managing financial instruments. More particularly, the claim is directed to managing financial instruments with an asset transfer feature. The remainder of limitations ( 1 }-( 5) provide additional detail on the managing and asset transfer features. Managing financial instruments involves organizing human activity and is an economic act that includes products ordinarily sold in the stream of commerce. 2 The transfer ( or "transformation" as asserted by Appellants) of assets between investments is an economic practice. Thus, like the concept of intermediated settlement in Alice, and the concept of hedging in Bilski, the concept of managing financial instruments recited in Appellants' claims 2 The Specification describes, "[f]or example, investment 132 may represent a municipal bond, a bond 10 fund, a money market account, a corporate security, an index fund, a mutual fund, a real estate investment trust, hedges, swaps, derivatives, or any other appropriate type of investment." Spec. 10:8-15. 14 Appeal2018-001035 Application 11/671,598 "is a fundamental economic practice long prevalent in our system of commerce." Alice, 573 U.S. at 219 ( citations and internal quotation marks omitted). Accordingly, we conclude the claims recite a fundamental economic practice, which is one of certain methods of organizing human activity, and thus an abstract idea. Next, we consider whether the claim includes additional elements that integrate the judicial exception into a practical application. To determine whether the judicial exception is integrated into a practical application, we identify whether there are "any additional elements recited in the claim beyond the judicial exception(s)" and evaluate those elements to determine whether they integrate the judicial exception into a recognized practical application. 84 Fed. Reg. at 54--55 (emphasis added); see also Manual of Patent Examining Procedure (MPEP) § 2106.05(a}-(c), (e}-(h) (9th ed. Rev. 08.2017, Jan. 2018). Here, we find the additional limitations do not integrate the judicial exception into a practical application. More particularly, the claims do not recite: (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) use a "particular machine" to apply or use the judicial exception (see MPEP § 2106.05(b )); (iii) a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP § 2106.05(e)). See also 84 Fed. Reg. at 55. Here, although the claim includes additional elements, one or more processors and one or more memory devices, these are insufficient to constitute integration into a practical application because these elements are recited at high level of generality and the claim simply applies the judicial 15 Appeal2018-001035 Application 11/671,598 exception using "processors" and "memory devices." In particular, the additional elements do not constitute a particular machine, but, even assuming the "processors" and "memory devices" represent a generically recited computer (i.e., generic computer components) to perform the abstract idea, that is insufficient. See 84 Fed. Reg. 50 at III A(2); MPEP § 2106.05(b ); Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 64---65 (1923); MPEP § 2106.05([); Alice, 573 U.S. at 222-26; Benson, 409 U.S. 63; Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044 (Fed. Cir. 2017). Appellants' arguments regarding improved functioning of a computer are not persuasive as the arguments are conclusory and not commensurate with the scope of the claim. Mere attorney arguments and conclusory statements that are unsupported by factual evidence are entitled to little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); Ex parte Belinne, Appeal 2009-004693, 2009 WL 2477843, at *3--4 (BPAI Aug. 10, 2009) (informative). Unlike the claims of Enfish, claim 100 is not "directed to an innovative logical model for a computer database [that] includes all data entities in a single table, with column definitions provided by rows in that same table" or similar improvements. Enfish, 822 F.3d at 1330. Appellants' arguments that the claim 100 physical transformation of data establishes patent eligibility are not persuasive. Although we agree with Appellants to the extent that the machine-or-transformation test is a useful tool ("clue") in determining patent eligibility, here, it does not establish patent eligibility. Bilski, 561 U.S. at 611. In particular, the claims 16 Appeal2018-001035 Application 11/671,598 recite the abstract ideas of "mental processes" and "fundamental economic practice" and, even if there is a transformation, it is inadequate to overcome the current record that there is no integration into a practical application. Additionally, the "transformation" asserted here is merely the intangible monetary content of funds being transformed into a different fund. Therefore, under the Memorandum, claim 100 is directed to an abstract idea, and we proceed to analyze the claim under Alice, step 2. As discussed above, in the Alice, step 2 inquiry, we determine whether there is an inventive concept that renders the abstract idea patent eligible. We note the introduction of a processor into the claims to implement an abstract idea is not a patentable application of the abstract idea. Alice, at 222-23. The computer implementation here, assuming the claimed "processors and memory devices" constitute computers, is purely conventional and performs basic functions. See id. at 224--225. Appellants do not adequately show how the claimed steps are done technically such that they cannot be done manually or that they are not routine and conventional functions of a generic computer. See Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) ("the limitations of claim 17 involve arranging a hierarchy of organizational and product groups, storing pricing information, retrieving applicable pricing information, sorting pricing information, eliminating less restrictive pricing information, and determining the price. All of these limitations are well-understood, routine, conventional activities previously known to the industry."). Moreover, the Specification does not support the view that the computer related claim elements are unconventional. See Spec. 50:7-52:2. 17 Appeal2018-001035 Application 11/671,598 We are not persuaded by Appellants' arguments that the claims "recite an unconventional method and system of transforming a portion of assets from an investment to an alternative investment in response to detecting an event trigger" and an inventive concept significantly more than an abstract idea. See App. Br. 11 (citing Spec. 4:32-5:15). These arguments are conclusory and not commensurate with the claim scope. In particular, Appellants argue the purported advantages of the claims but do not identify claim limitations that support their arguments. Id. We find no element or combination of elements recited in Appellants' claim 100 that contains any "inventive concept" or adds anything "significantly more" to transform the abstract concept into a patent-eligible application. Alice, 573 U.S. at 221. As discussed supra, we are not persuaded the added computer elements transform the abstract idea into a patent eligible invention. As our reviewing court has observed, "after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible." DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (citing Alice, 573 U.S. at 223). We note 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). Here, the processors and memory devices' elements are set forth at a high level of generality, as discussed supra, and the record sufficiently establishes that 18 Appeal2018-001035 Application 11/671,598 these elements and the combination are well-understood, routine and conventional to a skilled artisan in the relevant field. Regarding preemption, although 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). Unlike the claims of McRO, claim 100 is not directed to "a specific asserted improvement in computer animation" or similar improvements. McRO, 837 F.3d at 1314--15. Nor is claim 100 directed to using "a combined order of specific rules that renders information into a specific format that is then used and applied to create desired results: a sequence of synchronized, animated characters" or similar functions. Id. Instead, as discussed, supra, claim 100 focuses on abstract ideas that merely use processors and memory devices as tools to manipulate information. In view of the above, we sustain the rejection of claim 100, and independent claims 113 and 116 as these claims recite similar limitations to claim 100 and are not argued separately. 3 Regarding dependent claims 101, 102, 105-107, 111, 112, 114, 115, 117, and 118, the Examiner's finding are adequate and reasonable, and are not specifically argued by Appellants. See Final Act. 3--4. Therefore, we sustain the rejection of claims 101, 102, 105-107, 111, 112, 114, 115, 117, and 118. 3 Appellants state "[t]aking Claim 100 as an example, ... " App. Br. 9. 19 Appeal2018-001035 Application 11/671,598 DECISION We affirm the Examiner's decision rejecting claims 100-102, 105- 107, and 111-118 under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv). See 37 C.F.R. § 41.50(±). AFFIRMED 20 Copy with citationCopy as parenthetical citation