Gregory Gorder et al.

Patent Trials and Appeals Board

Sep 25, 2019

13420394 - (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.
13/420,394 03/14/2012 Gregory Gorder INVT-1-2409 8126
25315 7590 09/25/2019
LOWE GRAHAM JONES, PLLC
701 FIFTH AVENUE
SUITE 4800
SEATTLE, WA 98104
EXAMINER
GARCIA-GUERRA, DARLENE
ART UNIT PAPER NUMBER
3683
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):
docketing-patent@lowegrahamjones.com
patentdocketing@lowegrahamjones.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte GREGORY GORDER,
NATHAN P. MYHRVOLD, and
EDWARD K.Y. JUNG
_________

Appeal 2017–009767
Application 13/420,3941
Technology Center 3600
____________

Before HUBERT C. LORIN, KENNETH. G. SCHOPFER, and
AMEE A. SHAH, Administrative Patent Judges.

LORIN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Gregory Gorder, et al. (Appellant) seeks our review under 35 U.S.C.
§ 134(a) of the Final Rejection of claims 1, 3–8, and 10–45. We have
jurisdiction under 35 U.S.C. § 6(b).

SUMMARY OF DECISION
We AFFIRM.

1 The Appellant identifies IVP Holdings III LLC as the real party in interest.
Br. 1.
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THE INVENTION
Claim 1, reproduced below, is illustrative of the subject matter on
appeal.
1. A computer-implemented method, comprising:
under control of a computing system having a memory, a
computer processor, and a data store, the data store having
information regarding products and/or companies, patent information,
and subject matter areas, determining an invention gap with respect to
a business entity, the invention gap indicating a difference between
invention-related assets that are applicable to one or more products
and invention-related assets that are held by or otherwise available to
the business entity, by instructing the processor with instructions
stored in the memory by:
receiving an indication of a product;
determining, by retrieving information from the data
store, a subject matter category implicated by the indicated product,
the subject matter category referring to multiple patents that are each
directed at least in part to the subject matter category, each of the
multiple patents having an associated assignee that has a
corresponding assignee type, at least some of the assignees being
different from one another;
determining, specific to the business entity and without
reference to independent or dependent patent claims of the multiple
patents, an aggregate risk associated with the determined subject
matter category, the aggregate risk based at least in part on computing
a likelihood that the business entity is exposed to a loss with respect to
at least some of the multiple patents that are directed at least in part to
the determined subject matter category, wherein the at least some of
the multiple patents are not held by or otherwise available to the
business entity, wherein the aggregate risk is computed as a numerical
function that considers, for each of the at least some of the multiple
patents, a numerical likelihood that the business entity is exposed to a
loss with respect to the patent, wherein the numerical likelihood is
weighted based on the assignee type of the patent, wherein
determining the aggregate risk is further based at least in part on
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patent rights available to the business entity, and wherein the
computed likelihood that the business entity is exposed to a loss is
reduced based on how many patents are available to the business
entity; and
transmitting information about the determined aggregate
risk as a measure of the invention gap.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Wilkinson
Barnett
Adler
Del Vecchio
Pejic
Bilak
Zilka
Rozich
Pellegrino
Avasarala
US 2002/0077870 A1
US 2002/0082778 A1
US 2003/0033295 A1
US 2003/0036945 A1
US 2003/0229470 A1
US 2005/0261927 A1
US 7,117,443 B1
US 2008/0243799 A1
US 7,536,331 B1
US 2010/0287478 A1
Jun. 20, 2002
Jun. 27, 2002
Feb. 13, 2003
Feb. 20, 2003
Dec. 11, 2003
Nov. 24, 2005
Oct. 3, 2006
Oct. 2, 2008
May 19, 2009
Nov. 11, 2010

The following rejections2 are before us for review:
Claims 1, 3–8, and 10–45 are rejected under 35 U.S.C. § 101 for
claiming patent-ineligible subject matter.
Claims 1, 3–5, 7, 11, 12, 16, 18, 21–26, 28, 30, 32–38, 40, 42, and 43
are rejected under 35 U.S.C. § 103(a) as being unpatentable over Zilka,
Rozich, Barnett, and Del Vecchio.

2 The Examiner withdrew a §103 rejection of claim 45. Ans. 3. A rejection
of claim 45 under the second paragraph of 35 USC §112 was also
withdrawn. Advisory Action, mailed April 21, 2017.
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Claim 6 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zilka, Rozich, Barnett, Del Vecchio, and Pejic.
Claims 8, 27, and 39 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zilka, Rozich, Barnett, Del Vecchio, and Adler.
Claims 10, 19, 20, and 29 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Zilka, Rozich, Barnett, Del Vecchio, and Bilak.
Claim 13 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zilka, Rozich, Barnett, Del Vecchio, and Pellegrino.
Claim 14 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zilka, Rozich, Barnett, Del Vecchio, Pellegrino, and Colson.
Claim 15 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zilka, Rozich, Barnett, Del Vecchio, and Barney.
Claims 17, 31, and 44 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Zilka, Rozich, Barnett, Del Vecchio, and Wilkinson.
Claim 41 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Zilka, Rozich, Barnett, Del Vecchio, and Avasarala.
ISSUE
Did the Examiner err in rejecting claims 1, 3–8, and 10–45 under 35
U.S.C. §101 for claiming patent-ineligible subject matter?
Did the Examiner err in rejecting claims 1, 3–5, 7, 11, 12, 16, 18, 21–
26, 28, 30, 32–38, 40, 42 and 43 under 35 U.S.C. § 103(a) as being
unpatentable over Zilka, Rozich, Barnett, and Del Vecchio?
Did the Examiner err in rejecting claim 6 under 35 U.S.C. § 103(a) as
being unpatentable over Zilka, Rozich, Barnett, Del Vecchio, and Pejic?
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Did the Examiner err in rejecting claims 8, 27 and 39 under 35 U.S.C.
§ 103(a) as being unpatentable over Zilka, Rozich, Barnett, Del Vecchio,
and Adler?
Did the Examiner err in rejecting claims 10, 19, 20 and 29 under 35
U.S.C. § 103(a) as being unpatentable over Zilka, Rozich, Barnett, Del
Vecchio, and Bilak?
Did the Examiner err in rejecting claim 13 under 35 U.S.C. § 103(a)
as being unpatentable over Zilka, Rozich, Barnett, Del Vecchio, and
Pellegrino?
Did the Examiner err in rejecting claim 14 under 35 U.S.C. § 103(a)
as being unpatentable over Zilka, Rozich, Barnett, Del Vecchio, Pellegrino,
and Colson?
Did the Examiner err in rejecting claim 15 under 35 U.S.C. § 103(a)
as being unpatentable over Zilka, Rozich, Barnett, Del Vecchio, and
Barney?
Did the Examiner err in rejecting claims 17, 31 and 44 under 35
U.S.C. § 103(a) as being unpatentable over Zilka, Rozich, Barnett, Del
Vecchio, and Wilkinson?
Did the Examiner err in rejecting claim 41 under 35 U.S.C. § 103(a)
as being unpatentable over Zilka, Rozich, Barnett, Del Vecchio, and
Avasarala?

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ANALYSIS
The rejection of claims 1, 3–8, and 10–45 under 35 U.S.C. §101 for claiming
patent-ineligible subject matter.

Preliminary comments
#1 The Appellant has grouped the claims in five groups for purposes
of argument: I. Claims 1, 22, and 33 (Br. 8–19); II. Claim 6 (Br. 20–21); III.
Claims 8 and 27 (Br. 21–22); IV. Claim 45 (Br. 22); and V. Claims 3–5, 7,
10–21, 23–26, and 28–32 (Br. 23). Each group will be addressed separately
and in that order.
#2 The Appellant points to previous USPTO guidance of patent
eligibility (e.g., “July 2015 Update: Subject Matter Eligibility” (Br. 13)).
The 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance,” supersedes the
earlier guidance that was in effect at the time the Appeal Brief was filed
(Dec. 19, 2016). Id. at 51 (“Eligibility–related guidance issued prior to the
Ninth Edition, R–08.2017, of the MPEP (published Jan. 2018) should not be
relied upon.”). Accordingly, our analysis will not address the sufficiency of
the Examiner’s rejection against the Office’s previous guidance. Rather, our
analysis will comport with the 2019 Revised 101 Guidance.

I. CLAIMS 1, 22, AND 33
Representative claim
The Appellant argued these claims as a group. See App. Br. 8–10. To
be in accord with the Appellant’s discussion, we select claim 1 as the
representative claim for this group, and the remaining claims 22 and 33
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stand or fall with claim 1. 37 C.F.R. § 41.37(c)(1)(iv). Claim 1 is
reproduced above.

Introduction
35 U.S.C. § 101 provides that “[w]hoever 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.”
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.3 This is not in dispute.
Section 101, however, “contains an important implicit exception:
Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.

3 This discussion corresponds to Step 1 of the 2019 Revised 101 Guidance
which requires determining whether a “claim is to a statutory category.”
84 Fed. Reg. at 53; see also id. at 53–54 (“consider[ ] whether the claimed
subject matter falls within the four statutory categories of patentable subject
matter identified by 35 U.S.C. 101”).
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Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).
The Examiner determined that claim 1 is directed to “the concept of
determining an invention gap.” Final Act. 16.
The Appellant contends that the “claims represent an advance over the
prior art in the form of an improvement to computer functionality . . . .”
Br. 11. The Appellant argues, inter alia, that “Appellant’s claimed
techniques provide an important advance over the prior art of computer-
facilitated patent assessment technology.” Id. at 10. “Appellant’s solution
relies on an inventive combination of specific techniques in order to perform
large-scale patent risk assessment for a given business entity.” Id. See also
Id. at 18 (“Determining aggregate risk without reference to the claims
improves the technology of patent risk assessment by increasing the
efficiency of the risk assessment process.”)
Accordingly, there is a dispute over what claim 1 is directed to. Is it
directed to “the concept of determining an invention gap” (Final Act. 16) or
“an improvement to computer functionality” (Br. 11)?
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Claim Construction4
We consider the claim as a whole5 giving it the broadest reasonable
construction6 as one of ordinary skill in the art would have interpreted it in
light of the specification7 at the time of filing.
Claim 1 involves a computer (“computer-implemented method”), a
database (“a database of a computer”); that is, “a computing system having a
memory, a computer processor, and a data store.” The “computing system”

4 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).

5 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).

6 2019 Revised 101 Guidance, page 53, footnote 14 (If a claim, under its
broadest reasonable interpretation . . . .”) (emphasis added.)

7 “First, it is always important to look at the actual language of the claims.
. . . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Systems
Innovations, LLC v. Chicago Transit Authority, 873 F.3d 1364, 1378 (Fed.
Cir. 2017) (J. Linn, dissenting in part and concurring in part), citing Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among
others.

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and its parts (“a memory, a computer processor, and a data store”) are
generic.8
The claimed method calls on a generic “computing system” to
perform five functions on various types of information. They are
“receiving,” “determining,” “retrieving,” “comput[ing], and “transmitting.
We reproduce claim 1 below showing the various types of information
(Information A–F).
1. A computer-implemented method, comprising:
under control of a computing system having a memory, a
computer processor, and a data store, the data store having
[Information A], by instructing the processor with instructions stored
in the memory by:
receiving [Information B];
determining, by retrieving [Information C];
determining, [Information D], wherein [Information D]
is computed as a numerical function that considers [Information E];
and
transmitting [Information D] as [Information F].

8 Cf. Intellectual Ventures I LLC v. Capital One Financial Corporation, 850
F.3d 1332, 1341 (Fed. Cir. 2017) (“the claims recite [ ] a generic computer
element—a processor— …”); Planet Bingo, LLC v. VKGS LLC, 576 Fed.
Appx. 1005, 1008 (Fed. Cir. 2014) (nonprecedential) (“the claims at issue [ ]
require ‘a computer with a central processing unit,’ ‘a memory,’ ‘an input
and output terminal,’ ‘a printer,’ in some cases ‘a video screen,’ and ‘a
program . . . enabling’ the steps of managing a game of bingo. . . the claims
recite a generic computer implementation of the covered abstract idea.”);
and, Smartflash LLC v. Apple Inc., 680 Fed. Appx. 977, 984 (Fed. Cir. 2017)
(nonprecedential) (“we find here that ‘interfaces,’ ‘program stores,’ and
‘processors’ are all generic computer components.”)

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Where
Information A is “information regarding products and/or companies,
patent information, and subject matter areas, determining an invention
gap with respect to a business entity, the invention gap indicating a
difference between invention-related assets that are applicable to one
or more products and invention-related assets that are held by or
otherwise available to the business entity”;
Information B is “an indication of a product”;
Information C is “information from the data store, a subject matter
category implicated by the indicated product, the subject matter
category referring to multiple patents that are each directed at least in
part to the subject matter category, each of the multiple patents having
an associated assignee that has a corresponding assignee type, at least
some of the assignees being different from one another”;
Information D is “specific to the business entity and without reference
to independent or dependent patent claims of the multiple patents, an
aggregate risk associated with the determined subject matter category,
the aggregate risk based at least in part on computing a likelihood that
the business entity is exposed to a loss with respect to at least some of
the multiple patents that are directed at least in part to the determined
subject matter category, wherein the at least some of the multiple
patents are not held by or otherwise available to the business entity”;
Information E is “for each of the at least some of the multiple patents,
a numerical likelihood that the business entity is exposed to a loss
with respect to the patent, wherein the numerical likelihood is
weighted based on the assignee type of the patent, wherein
determining the aggregate risk is further based at least in part on
patent rights available to the business entity, and wherein the
computed likelihood that the business entity is exposed to a loss is
reduced based on how many patents are available to the business
entity”; and,
Information F is “a measure of the invention gap.”
We reasonably broadly construe claim 1 as being directed to a scheme
for “receiving,” “determining,” “retrieving,” “comput[ing], and
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“transmitting” various types of information implemented on a generic
computer system.

The Abstract Idea9
Just above where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.
The recited italicized limitations, individually and collectively,
describe mental processes; that is, “receiving,” “determining,” “retrieving,”
“comput[ing], and “transmitting” various types of information. These
concepts are akin to making observations and evaluations that can be
performed in the human mind and thus are matters that fall within the
“Mental processes” enumerated grouping of abstract ideas, both as to each
claim limitation and the claim as a whole.10

9 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. 2019 Revised 101 Guidance 53. Step 2A is a two prong
inquiry.
10 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: … (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” Id. at 54. This case implicates subject matter
grouping “(c)”:
(c) Mental processes – concepts performed in the human mind
(including an observation, evaluation, judgment, opinion).
Id. at 52.
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Improvement in the Functioning of a Computer11 (Appellant’s
Argument)
The Examiner’s characterization of what the claim is directed to (“the
concept of determining an invention gap” (Final Act. 16)) is similar to our
own (receiving, determining, retrieving, computing, and transmitting various
types of information), albeit ours is described at a lower level of abstraction.
Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240–41 (Fed. Cir. 2016)
(“An abstract idea can generally be described at different levels of
abstraction. As the Board has done, the claimed abstract idea could be
described as generating menus on a computer, or generating a second menu
from a first menu and sending the second menu to another location. It could
be described in other ways, including, as indicated in the specification,
taking orders from restaurant customers on a computer.”) Presumably, the
Appellant would challenge our characterization in a way similar to the

11 This corresponds to Prong Two (“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”) of Step 2A of the 2019 Revised 101 Guidance. 2019
Revised 101 Guidance 54. “A claim that integrates a judicial exception into
a practical application will apply, rely on, or use the judicial exception in a
manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception.” Id. One consideration, implicated here, that is “indicative that
an additional element (or combination of elements)[] may have integrated
the exception into a practical application” (id. at 55) is if “[a]n additional
element reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field” (id.).

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Appellant’s challenge of the Examiner’s characterization as set forth in the
briefs.
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.
The Appellant argues claim 1 is directed to an improvement in
computer functionality. See, inter alia, Br. 9. Citing Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). The Appellant argues that
“Appellant’s claimed techniques provide an important advance over the
prior art of computer-facilitated patent assessment technology.” App.
Br. 12.
We are unpersuaded that claim 1 is directed to a problem in the
computer-facilitated patent assessment technology arts. To the extent that
the Appellant means to argue that the recited steps functionally improve the
“computing system having a memory, a computer processor, and a data
store” (claim 1), it is true that specific asserted improvements in computer
capabilities, when claimed, can render claimed subject matter not directed to
an abstract idea. Cf. McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299, 1316 (Fed. Cir. 2016) (“When looked at as a whole, claim 1 is
directed to a patentable, technological improvement over the existing,
manual 3–D animation techniques.”). But, there is insufficient evidence in
the record before us that the claimed subject matter reflects any such
improvement.
“The ‘abstract idea’ step of the inquiry calls upon us to look at the
‘focus of the claimed advance over the prior art’ to determine if the claim’s
‘character as a whole’ is directed to excluded subject matter.’” Affinity Labs
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of Texas v. DirectTV, LLC, 838 F.3d 1253, 1257 (Fed. Cir. 2016) (quoting
Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir.
2016); see also Enfish, 822 F.3d at 1335. See also Ancora Techns., 908 F.3d
at 1347:
We examine the patent’s “‘claimed advance’ to
determine whether the claims are directed to an abstract idea.”
Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299, 1303
(Fed. Cir. 2018). “In cases involving software innovations, this
inquiry often turns on whether the claims focus on ‘the specific
asserted improvement in computer capabilities . . . or, instead,
on a process that qualifies as an “abstract idea” for which
computers are invoked merely as a tool.’” Id. (quoting Enfish,
822 F.3d at 1335–36); see BSG Tech LLC v. Buyseasons, Inc.,
899 F.3d 1281, 1285–86 (Fed. Cir. 2018). Computers are
improved not only through changes in hardware; “[s]oftware
can make non-abstract improvements to computer technology .
. . . ” Enfish, 822 F.3d at 1335; see Finjan, 879 F.3d at 1304.
We have several times held claims to pass muster under Alice
step one when sufficiently focused on such improvements.
The Specification’s description of the problem and solution shows the
advance over the prior art by the claimed invention is in the type of
information to be processed, not on any improvement in computer
functionality. According to the Specification, “[i]n typical approaches, the
claims of a patent are interpreted and applied to a product or a service
associated with the company to determine whether the patent poses a risk to
the company.” Spec., para. 2. The solution is to “determin[e] or identify[ ]
invention gaps.” Id. at para. 9.
We have carefully reviewed the Specification but can find no
disclosure of a technical improvement. There is no suggestion in the
Specification that the claimed subject matter means to solve a problem in the
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computer arts as the Appellant has argued. The heart of the invention is a
scheme for determining or identifying invention gaps, not the “computing
system having a memory, a computer processor, and a data store” (claim 1),
which are plainly generic and does not change upon implementation of said
scheme. Cf. Intellectual Ventures I LLC v. Erie Indemnity Company, 850
F.3d at 1328 (“the heart of the claimed invention lies in creating and using
an index to search for and retrieve data . . . an abstract concept.”)
The Specification attributes no special meaning to “receiving,”
“determining,” “retrieving,” “comput[ing], and “transmitting” with respect
to the “computing system having a memory, a computer processor, and a
data store” (claim 1). In our view, consistent with the Specification, these
are common processing functions one of ordinary skill in the art at the time
of the invention would have associated with generic computer systems. Cf.
OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015):
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer
activities or routine data-gathering steps. Alice, 134 S. Ct. at
2359 (quoting Mayo, 132 S.Ct. at 1294) (alterations in original).
. . . For example, claim 1 recites “sending a first set of
electronic messages over a network to devices,” the devices
being “programmed to communicate,” storing test results in a
“machine-readable medium,” and “using a computerized
system ... to automatically determine” an estimated outcome
and setting a price. Just as in Alice, “all of these computer
functions are ‘well-understood, routine, conventional
activit[ies]’ previously known to the industry.” Alice, 134 S.Ct.
at 2359 (quoting Mayo, 132 S.Ct. at 1294) (alterations in
original); see also buySAFE[, Inc. v. Google, Inc.], 765 F.3d
[1350,] 1355 [(Fed. Cir. 2014)] (“That a computer receives and
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sends the information over a network—with no further
specification—is not even arguably inventive.”).
Claim 1 describes a method whereby various types of information are
received, determined, retrieved, computed, and transmitted. The “computing
system having a memory, a computer processor, and a data store” (claim 1)
is generic and conventional. See Spec., paras. 63 (“general purpose …
computing systems”) – 75. The generic system claimed distinguishes over
other generic systems by certain types of information (Information A–F) that
are processed. But, that informational content difference alone is not
patentably consequential. This is so because “[c]laim limitations directed to
the content of information and lacking a requisite functional relationship are
not entitled to patentable weight because such information is not patent
eligible subject matter under 35 U.S.C. § 101.” Praxair Distribution, Inc. v.
Mallinckrodt Hospital Products IP Ltd., 890 F.3d 1024, 1032 (Fed. Cir.
2018).
The receiving, determining, retrieving, computing, and transmitting
scheme for identifying invention gaps as claimed does not ask the
“computing system having a memory, a computer processor, and a data
store” (claim 1) to go beyond its common functions. While instructions a
computer must follow to invoke the performance of certain steps can be
patentably significant (see Enfish, and Ancora Technologies, Inc. v. HTC
America, Inc., 908 F.3d 1343 (Fed. Cir. 2018)), here the instant record does
not sufficiently support the view that the recited steps are caused to be
performed by computer–executable instructions having a non–generic effect
on the “computing system having a memory, a computer processor, and a
data store” (claim 1). To the contrary, the record supports viewing the
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recitation of a “computing system having a memory, a computer processor,
and a data store” (claim 1) amounts to a mere instruction to implement the
recited scheme on a generic computer. Cf. Alice 573 U.S. at 225–26
(“Instead, the claims at issue amount to ‘nothing significantly more’ than an
instruction to apply the abstract idea of intermediated settlement using some
unspecified, generic computer.”)
Rather than being directed to any specific asserted improvement in
computer capabilities, the record supports the view that the claimed subject
matter is directed to a receiving, determining, retrieving, computing, and
transmitting scheme for identifying invention gaps, using a generic
computer.12
The claim provides no additional structural details13 that would
distinguish the “computing system having a memory, a computer processor,
and a data store” (claim 1) from that which was well known as being generic
at the time the application was filed.

12 See the 2019 Revised 101 Guidance at 55:

The courts have also identified examples in which a judicial exception
has not been integrated into a practical application:
• An additional element merely recites the words “apply it” (or an
equivalent) with the judicial exception, or merely includes
instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea;
13 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 Fed. Appx. 950, 954 (Fed.
Cir. 2018) (Nonprecedential). “Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”
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Rather, claim 1 describes it functionally, by describing certain
resulting steps; that is, receiving, determining, retrieving, computing, and
transmitting scheme various types of information. But, in that regard, there
is insufficient evidence showing they affect the “computing system having a
memory, a computer processor, and a data store” (claim 1) in any structural
way.
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration into a practical application.
We have considered all the Appellant’s arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 1 is directed to an abstract idea.

Alice step two – Does the Claim Provide an Inventive Concept?14
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 221 (quoting Mayo Collaborative Servs.
v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that:

14 This corresponds to Step 2B of the 2019 Revised 101 Guidance page 56
(“[I]f a claim has been determined to be directed to a judicial exception
under revised Step 2A, examiners should then 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).”).
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The claim requires no more than a general purpose computer to
perform generic computer functions that are well-understood in the art
of patent portfolio evaluation. After considering all claim elements,
both individually and in combination, it has been determined that the
claim does not amount to significantly more than the abstract idea
itself or more than a mere instruction to apply the abstract idea. While
the claim recites hardware and software elements, such as "under
control of a computing system having a memory, a computer
processor, and a data store, the data store having information
regarding products . . . “ these limitations are not sufficient to qualify
as being "significantly more” than the abstract idea. Further, claims to
an apparatus “comprising a computer for executing computer
instructions” and computer-readable medium which “stores a
computer program for evaluating pattern-based constraints” are held
ineligible for the same reason, e.g., the generically-recited computers
add nothing of substance to the underlying abstract idea. Therefore,
since there are no limitations in the claim that transform the exception
into a patent eligible application such that the claim amounts to
significantly more than the exception itself, the claims are rejected
under 35 USC 101 as being directed to non-statutory subject matter.
Having considered the claim as a whole, we turn to determine if the
claim is sufficient to ensure that the claim amounts to “significantly
more” than the abstract idea itself. The additional element(s) or
combination of elements in the claim(s) other than the abstract idea
per se amount(s) to no more than: an instruction to adjust a design
class.
Final Act. 17–18.
We agree with the Examiner.
In the section “Improving Another Technology” (Br. 18), the
Appellant argues, inter alia, that
There can be no doubt that evaluating patent risk is a technical
endeavor. Technology is the application of science and mathematics
to achieve industrial or commercial objectives. Determining
aggregate risk as recited by the claims is an application of scientific
and mathematical techniques to understand the quantity and quality of
patent risk faced by a business. The patent landscape is modeled in
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order to understand the likelihood of particular outcomes. In that
way, the claims can be analogized at a high level to, for example,
technologies such as weather forecasting, climate modeling, seismic
analysis, or other predictive technologies. While there may be family
resemblances to other modeling and prediction arts, the claimed
invention solves challenges and problems that are specific to the
patent analysis context.
We addressed the Appellant’s argument as to purported specific
asserted improvements in technology under step one of the Alice framework.
This is consistent with the case law. See Ancora, 908 F.3d at 1347 (“We
have several times held claims to pass muster under Alice step one when
sufficiently focused on such improvements.”). Such an argument can also
challenge a determination under step two of the Alice framework – as the
Appellant has done here (see App. Br. 17–21; e.g., 20: “a solution to a
technological problem”). See buySAFE, 765 F.3d at 1354–55. “[R]ecent
Federal Circuit jurisprudence has indicated that eligible subject matter can
often be identified either at the first or the second step of the Alice/Mayo
[framework].” 2019 Revised 101 Guidance at 53; see also id. n.17.
Be that as it may, we are unpersuaded that claim 1 presents an element
or combination of elements indicative of a specific asserted improvement in
computer capabilities, thereby rendering the claimed subject matter
sufficient to ensure that the patent in practice amounts to significantly more
than a patent upon the receiving, determining, retrieving, computing, and
transmitting scheme for identifying invention gaps abstract idea itself.
We have reviewed the Specification and, as explained above, we can
find no suggestion of any technical improvements associated with the
performance of the recited steps. The Specification is focused on
determining invention gaps, not on the “computing system having a
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memory, a computer processor, and a data store” (claim 1). Rather than
focusing on said computer system, the Specification focuses on the
receiving, determining, retrieving, computing, and transmitting various types
of information that will lead to the identifying of invention gaps, the
“computing system having a memory, a computer processor, and a data
store” (claim 1) acting merely as a conduit for practicing that scheme. Cf. In
re TLI Communications LLC Patent Litigation, 823 F.3d at 612 (Fed. Cir.
2016) (“Put differently, the telephone unit itself is merely a conduit for the
abstract idea of classifying an image and storing the image based on its
classification. Indeed, the specification notes that it ‘is known’ that ‘cellular
telephones may be utilized for image transmission,’ [U.S. Patent 6,038,295,]
col. 1 ll. 31–34, and existing telephone systems could transmit pictures,
audio, and motion pictures and also had ‘graphical annotation capability,’”
id. at col. 1 ll. 52–59.”)
We are unpersuaded that the record supports interpreting the steps
recited in the claim as resulting in a technological improvement as the
Appellant has argued. As discussed above, a “computing system having a
memory, a computer processor, and a data store” (claim 1) was notoriously
well–known, and the recited steps they perform ask nothing more of them
than to use them for their commonly–associated information–processing
functions. Much like the “data storage unit” and “computer, coupled to said
storage unit” in the claims of Alice (U.S. Patent 7,149,720, claim 1), “the
claims here do [not do] more than simply instruct the practitioner to
implement the abstract idea […] on a generic computer.” Alice, 573 U.S. at
225. See also Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada
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(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he use of a computer in an
otherwise patent-ineligible process for no more than its most basic
function—making calculations or computations—fails to circumvent the
prohibition against patenting abstract ideas and mental processes.”).
For the reasons discussed above, we are unpersuaded that the record
supports interpreting the steps recited in the claim as yielding any
improvement in technology.
The Appellant also argues in the section “Unconventional
Limitations” (Br. 17) that, inter alia, “determining aggregate risk without
reference to patent claims adds a specific, unconventional limitation that
confines the claim to a particular useful application.”
Claim limitations found to be novel and/or nonobvious can affect a
patent-eligibility determination. Cf. Ariosa Diagnostics, Inc., v. Sequenom,
Inc., 788 F.3d 1371 (Fed. Cir. 2015) (“For process claims that encompass
natural phenomenon, the process steps are the additional features that must
be new and useful.”). Thus, novelty is a factor to be considered when
determining “whether the claims contain an inventive concept” to
“transform” the claimed abstract idea into patent-eligible subject matter.”
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014).
“[N]ovelty in implementation of the idea is a factor to be considered only in
the second step of the Alice analysis.” Id. However, a finding of novelty or
nonobviousness does not necessarily lead to the conclusion that subject
matter is patentable eligible. “Groundbreaking, innovative, or even brilliant
discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular
Pathology v. Myriad Genetics, Inc., 133 S. Ct. 2107, 2117 (2013).
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Indeed, “[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.” Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (emphasis added); see also Mayo, 132 S. Ct. at 1303–04
(rejecting “the Government’s invitation to substitute §§ 102, 103, and
112 inquiries for the better established inquiry under § 101”). Here,
the jury’s general finding that Symantec did not prove by clear and
convincing evidence that three particular prior art references do not
disclose all the limitations of or render obvious the asserted claims
does not resolve the question of whether the claims embody an
inventive concept at the second step of Mayo/Alice."
Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed.
Cir. 2016). Nor does a finding of obviousness necessarily lead to the
conclusion that subject matter is patentable ineligible. See also Rapid Litig.
Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) (“That
each of the claims' individual steps (freezing, thawing, and separating) were
known independently in the art does not make the claim unpatentable.”).
“[P]atent-eligibility does not turn on ease of execution or obviousness of
application. Those are questions that are examined under separate provisions
of the Patent Act.” Id. at 1052 (citing Mayo, 566 U.S. at 90).
Notwithstanding that “the § 101 patent-eligibility inquiry and, say, the
§ 102 novelty inquiry might sometimes overlap,” [ ] a claim for a new
abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (quoting Mayo, 566 U.S. at 90). The question in
step two of the Alice framework is not whether an additional feature is novel
but whether the implementation of the abstract idea involves “more than the
performance of ‘well-understood, routine, [and] conventional activities
previously known to the industry.’” Content Extraction and Transmission
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LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d 1343, 1347–48 (quoting
Alice, 134 S.Ct. at 2359). In that regard, the Appellant has not shown that
any of the allegedly novel features of the receiving, determining, retrieving,
computing, and transmitting scheme for identifying invention gaps
transforms that abstract idea into patent-eligible subject matter.
We cited the Specification to show that it discloses that the claimed
system, i.e., the “computing system having a memory, a computer processor,
and a data store” (claim 1) is conventional. E.g., see para. 63 (“general
purpose computing systems/devices may be used . . . ).” In doing so, we
have followed “Changes in Examination Procedure Pertaining to Subject
Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v.
HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO Memorandum, Robert
W. Bahr, Deputy Commissioner For Patent Examination Policy, April 19,
2018 (the “Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314,
1325 (Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But, the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Id. at 1368 (emphasis added). This qualification has been
subsequently reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
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such a genuine dispute for claims 4–7, but not for claims 1–3
and 9 . . . . [I]n accordance with Alice, we have repeatedly
recognized the absence of a genuine dispute as to eligibility for
the many claims that have been defended as involving an
inventive concept based merely on the idea of using existing
computers or the Internet to carry out conventional processes,
with no alteration of computer functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018); see also Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018) (“A
factual allegation or dispute should not automatically take the determination
out of the court’s hands; rather, there needs to be justification for why
additional evidence must be considered—the default being a legal
determination.”). Here, the Specification indisputably shows the claimed
“computing system having a memory, a computer processor, and a data
store” (claim 1) was conventional at the time of filing. Accordingly, no
genuine issue of material fact exists as to the well–understood, routine, or
conventional nature of the claimed “computing system having a memory, a
computer processor, and a data store” (claim 1) as claimed.
Finally, as to the question of preemption, the Appellant asserts
“Appellant has identified numerous specific features that prevent preemption
of the allegedly abstract idea of determining an invention gap.” Br. 16.
With respect to the pre-emption concern, “[w]hat matters is whether a
claim threatens to subsume the full scope of a fundamental concept, and
when those concerns arise, we must look for meaningful limitations that
prevent the claim as a whole from covering the concept’s every practical
application.” CLS Bank Intern. v. Alice Corp. Pty. Ltd., 717 F.3d 1269,
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1281 (Fed. Cir. 2013) (Lourie, J., concurring). Pre-emption is not a separate
test.
To be clear, the proper focus is not preemption per se, for some
measure of preemption is intrinsic in the statutory right granted
with every patent to exclude competitors, for a limited time,
from practicing the claimed invention. See 35 U.S.C. § 154.
Rather, the animating concern is that claims should not be
coextensive with a natural law, natural phenomenon, or abstract
idea; a patent-eligible claim must include one or more
substantive limitations that, in the words of the Supreme Court,
add “significantly more” to the basic principle, with the result
that the claim covers significantly less. See Mayo 132 S. Ct. at
1294. Thus, broad claims do not necessarily raise
§ 101 preemption concerns, and seemingly narrower claims are
not necessarily exempt.
Id. See also Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (“[w]hile preemption may signal patent ineligible
subject matter, the absence of complete preemption does not demonstrate
patent eligibility.”). Because we find the claimed subject matter covers
patent-ineligible subject matter, the pre-emption concern is necessarily
addressed. “Where a patent’s claims are deemed only to disclose patent
ineligible subject matter under the Mayo framework, [] preemption concerns
are fully addressed and made moot.” Ariosa Diagnostics, 788 F.3d at 1379.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s remaining arguments and
find them unpersuasive.
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Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1 and claims 22 and 33, which stand
or fall with claim 1, are directed to an abstract idea and do not present an
“inventive concept,” we sustain the Examiner’s conclusion that they are
directed to patent-ineligible subject matter for being judicially-excepted
from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 Fed. Appx.
991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s
remaining arguments and have found them unpersuasive. Accordingly,
because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an ‘inventive concept,’ we hold that they are directed
to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs.,
788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).

II. Claim 6
According to the Appellant,
Dependent claim 6 recites “determining the subject matter
category includes extracting, by using computer-based natural
language processing, semantic information from a textual description
of the product.”
With respect to the first part of the Alice analysis, this
additional limitation further adds to the inventive combination of
features by additionally performing natural language processing to
obtain semantic information from a textual description of a product.
This operation further improves the efficiency and usability of the
claimed invention, by allowing a textual description of a product to
drive the determination of relevant subject matter categories.
Under the second part of the Alice analysis, computer-based
natural language processing is not a conventional computer operation.
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This combination of operations is simply not the kind of generic
computer operation (e.g., reading data, storing data, performing
calculations) that the Supreme Court had in mind when it developed
the “significantly more” portion of the test.
Br. 20.
With regard to “[t]his operation further improves the efficiency and
usability of the claimed invention, by allowing a textual description of a
product to drive the determination of relevant subject matter categories” (Br.
20), there is insufficient evidence on the record of such an improvement.
The Specification says this:
In yet another example, the user 110 provides a description of a
product in a natural language representation (e.g., a parts list, a
technical overview/abstract). The PRAS 100 may then process the
received information (e.g., by using natural language processing
techniques) to extract semantic information about the elements of the
product.
Para. 18. That is all that is said. Cf. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984);
Meitzner v. Mindick, 549 F.2d 775 (CCPA 1977), cert. denied, 434 US 854
(1977); In re Schulze, 346 F.2d 600, 602 (CCPA 1965); and In re Walters,
168 F.2d 79, 80 (CCPA 1948):
Although it is asserted in the brief of counsel for appellant that “the
result of using an oil modified alkyd resin coating on a loading coil
core was revolutionary” and that “It marked the greatest advance in
loading coil manufacture in many years,” there is no evidence of
record to substantiate that assertion, nor any evidence of record of
comparative tests to show superiority of the coating compositions
claimed here over the ceramic materials disclosed in the patent to
Gills. Furthermore, statements of counsel in a brief cannot take the
place of evidence.
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With regard to “computer-based natural language processing is not a
conventional computer operation” (Br. 20), the evidence in this record
shows otherwise. With respect to the ¶ 103 rejection of claim 6 (see Final
Act. 55), the Examiner cited Pejic (US 2003/0229470, filed Jun. 10, 2003)
which specifically discloses computer-based natural language techniques as
being conventional. See para. 89. Pejic is similarly concerned with patent–
related information.
The arguments challenging the rejection of claim 6 are unpersuasive
for the foregoing reasons.

III. Claims 8 and 27
The Appellant argues:
Dependent claim 8 recites:
determining, by the computer processor, an expanded set of
patents that includes at least one of: (1) patents that cite patents
in the initial set, (2) patents cited by patents in the initial set, (3)
patents having common inventorship with patents in the initial
set, and/or patents having common assignees with patents in the
initial set, wherein determining the expanded set of patents
includes limiting which patents are included in the expanded set
of patents based on keyword filtering and date-based filtering,
such that the expanded set of patents only includes patents that
include a specified keyword and that are unexpired and/or have
a specified amount of patent term remaining
(Numbering added.) Dependent claim 27 includes similar limitations.
With respect to the first part of the Alice analysis, these claim
aspects further add to the specific inventive combination of techniques
by determining a relevant patent set by first determining an expanded
set of patents and then limiting that set based on keyword and date.
This technique further limits any risk of preemption by adding
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specific requirements and leaving open other approaches for assessing
patent risk.
With respect to the second part of the Alice analysis, this
operation cannot be performed by simple reliance on standard
computer programming constructs or libraries. Again, this
combination of operations is simply not the kind of generic computer
operation (e.g., reading data, storing data, performing calculations)
that would ordinarily be considered a conventional computer
operation under Alice.
Br. 21.
The Appellant does not spell out, and we are unable to discern from
the recited determining step, a “specific inventive combination of
techniques” (Br. 21). The step calls for determining certain types of
information “which includes limiting which patents are included in the
expanded set of patents based on keyword filtering and date-based filtering”
(claim 8). But we do not see how employing a filter per se, as broadly
claimed here, transforms the abstract idea to which the claim is directed to
into an inventive concept. See LendingTree, LLC, 656 Fed. Appx. at 995.
Regarding the Appellant’s contention that “this operation cannot be
performed by simple reliance on standard computer programming constructs
or libraries” (Br. 21), the record suggests the opposite. See e.g., Spec., para.
63 (“general purpose or special purpose computing systems/devices may be
used to implement the PRAS 410”) and para. 71 (“In an example,
components/modules of the PRAS 410 are implemented using standard
programming techniques. . . . In general, a range of programming languages
known in the art may be employed . . . .).
The arguments challenging the rejection of claims 8 and 27 are
unpersuasive for the foregoing reasons.
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IV. Claim 45
The Appellant argues
Dependent claim 45 recites:
computing a numerical value that is a sum of the number of
patents in the first set [non-practicing entity patents] multiplied
by a first weight, the number of patents in the second set
[competitor patents] multiplied by a second weight, and the
number of patents in the third set [academic institution patents]
multiplied by a third weight, minus the number of patents in the
fourth set [entity patents] multiplied by a fourth weight,
wherein the first weight is larger than the second weight.
Claim 45 recites operations for computing aggregate risk, by
computing a sum of the number of patents owned or licensed by
different entity types (e.g., competitor, non-practicing entity, and
academic), where each of these numbers is weighted by a specific
weight for each entity type. Furthermore, claim 45 recites the
relationship between the weights, which is that the non-practicing
entity weight is greater than the competitor weight.
The specific operations recited by claim 45 are not conventional
operations. They are not performed by computers without special
configuration or programming. Furthermore, the recited specific
operations limit claim 45 to a particular way of determining an
aggregate risk, thereby confining the alleged abstract idea to a
particular application and limiting the risk of preemption.
Br. 22.
The Appellant argues that “[t]he specific operations recited by claim
45 are not conventional operations. They are not performed by computers
without special configuration or programming.” Id. But, there is insufficient
support in the record for this argument. As we have pointed out, the
Specification indicates that a general purpose computer and general
programming can used to implement the claimed method. Accordingly, the
record suggests the opposite from what is being argued.
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The arguments challenging the rejection of claim 45 are unpersuasive
for the foregoing reasons.

V. Claims 3–5, 7, 10–21, 23–26, and 28–32
The Appellant makes a single statement that these claims are directed
to patent–eligible subject matter for the reasons given in challenging the
rejection of the respective independent claims. Br. 23. Since we did not
find those reasons persuasive, we are unpersuaded as to the patent–eligibility
of these claims as well.

The rejection of claims 1, 3–5, 7, 11, 12, 16, 18, 21–26, 28, 30, 32–38, 40,
42 and 43 under 35 U.S.C. § 103(a) as being unpatentable over Zilka,
Rozich, Barnett, and Del Vecchio.
Claims 1, 22, and 33 are the independent claims and parallel each
other.
The Examiner’s position is that Zilka discloses all that is claimed but
for
the aggregate risk based at least in part on computing a likelihood that
the business entity is exposed to a loss with respect to at least some of
the multiple patents that are directed at least in part to the determined
subject matter category, wherein the aggregate risk is computed as a
numerical function that considers, for each of the at least some of the
multiple patents, a numerical likelihood that the business entity is
exposed to a loss with respect to the patent, wherein the numerical
likelihood is weighted based on the assignee type of the patent
(Final Act. 31), for which Rozich is relied upon; “the numerical likelihood is
weighted based on the assignee type of the patent” (id. at 35), for which
Barnett is relied upon; and “the computed likelihood that the business entity
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is exposed to a loss is reduced based on how many patents are available to
the business entity” (id. at 38), for which Del Vecchio is relied upon.
Specifically, the Examiner states that col. 7, lines 31–42 of Zilka
discloses the claim limitation “determining, specific to the business entity
and without reference to independent or dependent patent claims of the
multiple patents, an aggregate risk associated with the determined subject
matter category.” See Final Act. 25. The Examiner finds that Zilka teaches:
determining, specific to the business entity and without
reference to independent or dependent patent claims of the
multiple patents, an aggregate risk associated with the
determined subject matter category (col. 7, lines 31-42,
discussing that the competing intellectual property identifiers
may be collected by doing a “forward search” or “backward
search” utilizing information positioned on the patent, utilizing
the aforementioned databases, or any other data source; as an
option, such a “forward search” or “backward search” may be
initiated automatically or manually upon the selection of a
corresponding icon 508 found on the graphical user interface
500; as an example, a backward search can be performed by
identifying patents listed on the face of the patent itself or in its
text[.)]
Id. at 27. We reproduce col. 7, lines 31-42 of Zilka:
In an alternate embodiment, the competing intellectual
property identifiers may be collected by doing a “forward
search” or “backward search” utilizing information positioned
on the patent, utilizing the aforementioned databases 120 of
FIG. 1, or any other data source. As an option, such a “forward
search” or “backward search” may be initiated automatically or
manually upon the selection of a corresponding icon 508 found
on the graphical user interface 500. As an example, a backward
search can be performed by identifying patents listed on the
face of the patent itself or in its text.
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We do not see in the above portion of Zilka disclosure of “determining,
specific to the business entity and without reference to independent or
dependent patent claims of the multiple patents, an aggregate risk associated
with the determined subject matter category” as claimed.
There being no other position as the prior art disclosing or leading one
to the subject matter of said limitation, we accordingly do not sustain the
rejection of the independent claims, and that of the claims depending
therefrom which necessarily include said limitation and to which the
Examiner takes the same position that said Zilka passage discloses said
limitation (see Final Act. 39–55), because a prima facie case of obviousness
has not been made out in the first instance.

The rejection of claim 6 under 35 U.S.C. § 103(a) as being unpatentable
over Zilka, Rozich, Barnett, Del Vecchio, and Pejic.
The rejection of claims 8, 27 and 39 under 35 U.S.C. § 103(a) as being
unpatentable over Zilka, Rozich, Barnett, Del Vecchio, and Adler.
The rejection of claims 10, 19, 20 and 29 under 35 U.S.C. § 103(a) as being
unpatentable over Zilka, Rozich, Barnett, Del Vecchio, and Bilak.
The rejection of claim 13 under 35 U.S.C. § 103(a) as being unpatentable
over Zilka, Rozich, Barnett, Del Vecchio, and Pellegrino.
The rejection of claim 14 under 35 U.S.C. § 103(a) as being unpatentable
over Zilka, Rozich, Barnett, Del Vecchio, Pellegrino, and Colson.
The rejection of claim 15 under 35 U.S.C. § 103(a) as being unpatentable
over Zilka, Rozich, Barnett, Del Vecchio, and Barney.
The rejection of claims 17, 31 and 44 under 35 U.S.C. § 103(a) as being
unpatentable over Zilka, Rozich, Barnett, Del Vecchio, and Wilkinson.
The rejection of claim 41 under 35 U.S.C. § 103(a) as being unpatentable
over Zilka, Rozich, Barnett, Del Vecchio, and Avasarala.
Appeal 2017–009767
Application 13/420,394

36
These rejections of claims depending from the independent claims
addressed above are not sustained for the same reasons. The Examiner’s
position as to the aforementioned claim limitation is the same. See Final Act.
55–86.

CONCLUSION

In summary:
Claims
Rejected
Basis Affirmed Reversed
1, 3–8, and 10–45 § 101 1, 3–8, and
10–45

1, 3–5, 7, 11, 12,
16, 18, 21–26, 28,
30, 32–38, 40, 42
and 43
§ 103 over Zilka,
Rozich, Barnett, and
Del Vecchio
1, 3–5, 7, 11,
12, 16, 18,
21–26, 28, 30,
32–38, 40, 42
and 43
6 § 103 over Zilka,
Rozich, Barnett, Del
Vecchio, and Pejic
6
8, 27, and 39 Zilka, Rozich,
Barnett, Del
Vecchio, and Adler
8, 27, and 39
Appeal 2017–009767
Application 13/420,394

37
Claims
Rejected
Basis Affirmed Reversed
10, 19, 20, and 29 Zilka, Rozich,
Barnett, Del
Vecchio, and Bilak
10, 19, 20, and
29
13 Zilka, Rozich,
Barnett, Del
Vecchio, and
Pellegrino
13
14 Zilka, Rozich,
Barnett, Del
Vecchio, Pellegrino,
and Colson
14
15 Zilka, Rozich,
Barnett, Del
Vecchio, and Barney
15
17, 31, and 44 Zilka, Rozich,
Barnett, Del
Vecchio, and
Wilkinson
17, 31, and 44
41 Zilka, Rozich,
Barnett, Del
Vecchio, and
Avasarala
41

Appeal 2017–009767
Application 13/420,394

38

DECISION
The decision of the Examiner to reject claims 1, 3–8, and 10–45 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)(1)(iv).

AFFIRMED