INTUIT INC.

Patent Trials and Appeals Board

Jun 2, 2020

2019005753 (P.T.A.B. Jun. 2, 2020)

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.
15/008,025 01/27/2016 Luis Felipe Cabrera 327696-000033 7209
155998 7590 06/02/2020
DLA PIPER LLP US - Intuit
ATTN: PATENT GROUP
11911 Freedom Dr.
Suite 300
RESTON, VA 20190
EXAMINER
RANKINS, WILLIAM E
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
06/02/2020 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):
PatentProsecutionRes@dlapiper.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte LUIS FELIPE CABRERA, HENRY TAYLOE STANSBURY, and
WILLIAM T. LAASER
____________

Appeal 2019-005753
Application 15/008,025
Technology Center 3600
____________

Before BRYAN F. MOORE, CATHERINE SHIANG, and
BETH Z. SHAW, Administrative Patent Judges.

SHIANG, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–40, which are all the claims pending and rejected in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42.
Appellant identifies as Intuit Inc. the real party in interest. Appeal Br. 2.

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STATEMENT OF THE CASE
Introduction
The present invention relates to “calculating an estimated result while
preparing an electronic tax return.” Spec. ¶ 2. In one embodiment,
the system includes a server computer having a predictive
model running thereon. The system also includes a tax return
preparation computer operatively coupled to the server
computer by a network and having an electronic tax return
preparation program running thereon. The server computer is
configured to obtain a first taxpayer datum associated with a
taxpayer and execute the predictive model. The predictive
model, when executed, analyzes the first taxpayer datum to
identify a taxpayer data category as most relevant to the
estimated result for the taxpayer. The server computer is
configured to communicate the taxpayer data category
identified as most relevant to the tax return preparation
computer. The tax return preparation computer is configured to
obtain a second taxpayer datum associated with the taxpayer
and corresponding to the taxpayer data category identified as
most relevant. The tax return preparation computer is
configured to calculate the estimated result for the taxpayer
based, at least in part, on the second taxpayer datum. The tax
return preparation computer is configured to display the
estimated result to a user during preparation of the electronic
tax return.

Spec. ¶ 3. Claim 1 is exemplary:
1. A system for calculating an estimated result during
preparation of an electronic tax return, the system comprising:
a server computer having a predictive model running
thereon; and
a tax return preparation computer operatively coupled to
the server computer by a network and having an electronic tax
return preparation program running thereon;
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wherein the server computer is configured to obtain a
first taxpayer datum associated with a taxpayer and execute the
predictive model;
wherein the predictive model, when executed, analyzes
the first taxpayer datum to identify a taxpayer data category as
most relevant to the estimated result for the taxpayer;
wherein the server computer is configured to
communicate the taxpayer data category identified as most
relevant to the tax return preparation computer;
wherein the tax return preparation computer is configured
to obtain a second taxpayer datum associated with the taxpayer
and corresponding to the taxpayer data category identified as
most relevant;
wherein the tax return preparation computer is configured
to calculate the estimated result for the taxpayer based, at least
in part, on the second taxpayer datum;
wherein the tax return preparation computer is configured
to display the estimated result to a user during preparation of
the electronic tax return; and
wherein the tax preparation computer is configured to
update the estimated result at least once for subsequent taxpayer
data corresponding to a subsequent most relevant taxpayer data
category identified by the predictive model.

Rejection2

Claims
Rejected
35 U.S.C. § Basis
1–40 101 Subject Matter Eligibility

2 Throughout this opinion, we refer to the (1) Final Office Action dated
November 5, 2018 (“Final Act.”); (2) Appeal Brief dated May 1, 2019
(“Appeal Br.”); (3) Examiner’s Answer dated June 12, 2019 (“Ans.”); and
(4) Reply Brief dated July 25, 2019 (“Reply Br.”).
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ANALYSIS
35 U.S.C. § 101

We have reviewed and considered Appellant’s arguments in the
briefs, but such arguments are unpersuasive. To the extent consistent with
our analysis below, we adopt the Examiner’s findings and conclusions in (i)
the action from which this appeal is taken and (ii) the Answer.3
Section 101 of the Patent Act provides “[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, subject to the conditions and requirements of this
title.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural
phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty.
Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (internal quotation marks
and citation omitted).
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. Id. 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 Alice, 573
U.S. at 219 (“On their face, the claims before us are drawn to the concept of
intermediated settlement, i.e., the use of a third party to mitigate settlement
risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4

3 To the extent Appellant advances new arguments in the Reply Brief
without showing good cause, Appellant has waived such arguments. See 37
C.F.R. § 41.41(b)(2).
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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 (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held 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 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). Having
said that, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (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
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to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a
patent-eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In 2019, the PTO published revised guidance on the application of
§ 101. USPTO, 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”).4 Under the
guidance set forth in the Guidance, we first look to whether the claim
recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (Step 2A, Prong 1); and
(2) additional elements that integrate the judicial exception into
a practical application (see MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.05(a)–(c), (e)–(h)) (9th Ed., Rev.
08.2017, 2018) (Step 2A, Prong 2).
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:

4 The Guidance was update in October 2019.
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(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. (Step 2B.)
See Guidance, 84 Fed. Reg. at 54–56.
Step 2A, Prong 1
Turning to Step 2A, Prong 1 of the Guidance (Alice step one), claim 1
(with emphases added) recite:
1. A system for calculating an estimated result during
preparation of an electronic tax return, the system comprising:
a server computer having a predictive model running
thereon; and
a tax return preparation computer operatively coupled to
the server computer by a network and having an electronic tax
return preparation program running thereon;
wherein the server computer is configured to obtain a
first taxpayer datum associated with a taxpayer and execute the
predictive model;
wherein the predictive model, when executed, analyzes
the first taxpayer datum to identify a taxpayer data category as
most relevant to the estimated result for the taxpayer;
wherein the server computer is configured to
communicate the taxpayer data category identified as most
relevant to the tax return preparation computer;
wherein the tax return preparation computer is
configured to obtain a second taxpayer datum associated with
the taxpayer and corresponding to the taxpayer data category
identified as most relevant;
wherein the tax return preparation computer is
configured to calculate the estimated result for the taxpayer
based, at least in part, on the second taxpayer datum;
wherein the tax return preparation computer is
configured to display the estimated result to a user during
preparation of the electronic tax return; and
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wherein the tax preparation computer is configured to
update the estimated result at least once for subsequent
taxpayer data corresponding to a subsequent most relevant
taxpayer data category identified by the predictive model.5

All of the italicized limitations are associated with preparing a tax
return. For example, “a tax return preparation . . . ,” “obtain a first taxpayer
datum associated with a taxpayer . . . ,” “analyzes the first taxpayer datum to
identify a taxpayer data category as most relevant to the estimated result for
the taxpayer,” and “communicate the taxpayer data category identified as
most relevant to the tax return preparation . . .” facilitate preparing a tax
return by analyzing data to identify and communicate a data category as the
most relevant to the estimated result. Further, “the tax return preparation . . .
obtain a second taxpayer datum associated with the taxpayer and
corresponding to the taxpayer data category identified as most relevant”
facilitates preparing the tax return by obtaining the data in the data category.
In addition, “wherein the tax return preparation . . . calculate the
estimated result for the taxpayer based, at least in part, on the second
taxpayer datum,” “wherein the tax return preparation . . . display the
estimated result to a user during preparation of the electronic tax return,” and
“the tax preparation . . . update the estimated result at least once for
subsequent taxpayer data corresponding to a subsequent most relevant
taxpayer data category identified by the predictive model” facilitate
preparing the tax return by calculating the estimated result based on the

5 We select claim 1 as the representative claim, and group the remaining
claims accordingly under 37 C.F.R. § 41.37(c)(1)(iv) (“[T]he failure of
appellant to separately argue claims which appellant has grouped together
shall constitute a waiver of any argument that the Board must consider the
patentability of any grouped claim separately.”).
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obtained data, and repeating the estimation at least once based on a
subsequent data category.
Our determination is supported by the Specification, which describes
the need to provide better techniques for preparing a tax return:
Embodiments are directed to systems, computer-implemented
methods, and computer program products for calculating an
estimated result while preparing an electronic tax return.

Some current electronic tax return preparation systems are
configured to calculate an estimated result, which is displayed
to a user during entry of taxpayer data as an aid to the user.
Current systems calculate the estimated result based on entered
taxpayer data, with all other taxpayer data set to empty, zero or
not applicable. Other systems predict yet to be entered taxpayer
data to generate a more accurate estimated result as described in
U.S. patent application attorney docket no. INT-263-US1
(158622), the contents of which have been previously
incorporated-by-reference herein. However, even with
prediction of yet to be entered taxpayer data, current systems
obtain taxpayer data in a predetermined order without regard
to the relevance of the taxpayer data to a particular taxpayer’s
estimated result.

Some current systems update the estimated result after entry of
each item of taxpayer data, or after each page of a taxpayer data
entry user interface. Accordingly, the estimated result can
change drastically after entry of taxpayer data with large effects
on (i.e., more relevant to) the estimated result (e.g., interest or
dividend income, child tax credit, mortgage deductions, etc.).
Due to the predetermined order for obtaining taxpayer data and
variability of the financial situations of taxpayers, these drastic
changes in the estimated result can occur at random and
unexpected times during the electronic tax return preparation
process. Drastic changes (i.e., severe noise) in the estimated
result displayed to the user and occurring at random and
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unexpected times can have unwanted results. For instance, a
user may become discouraged and abandon the electronic
application, or a user may unfairly lose confidence in the
electronic tax return preparation system when a displayed
“expected refund” disappears or becomes an “amount owed.”
Obtaining taxpayer data (e.g., by presenting questions) in a
predetermined order exacerbates this problem due to the
variable effect of particular taxpayer data on the expected
result of particular taxpayers.

The embodiments described herein more accurately obtain an
estimated result earlier in the electronic tax return preparation
process by using a predictive model to identify taxpayer data
that should be more relevant to a particular taxpayer’s
estimated result.
Spec. ¶¶ 2, 27–29 (emphases added).
Similar to the concepts of intermediated settlement in Alice and
hedging in Bilski, the concept of preparing a tax return “is a fundamental
economic practice long prevalent in our system of commerce.” Alice, 573
U.S. at 216 (citations and internal quotation marks omitted). Accordingly,
we conclude claim 1 recites a fundamental economic practice, which is one
of certain methods of organizing human activity identified in the Guidance,
and thus an abstract idea. See Guidance, Step 2A, Prong 1 (Groupings of
Abstract Ideas).

Step 2A, Prong 2
Turning to Step 2A, Prong 2 of the Guidance, contrary to Appellant’s
arguments (Appeal Br. 4–10; Reply Br. 1–4), Appellant has not shown claim
1 recites additional elements that integrate the judicial exception into a
practical application. In particular, Appellant argues claim 1 “improve[s]
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the user interface presented to a user during operation of an electronic tax
return application.” Appeal Br. 4. That argument is not commensurate with
the scope of the claim, because Appellant does not persuasively explain why
displaying a different set of data on a known computer constitutes
“improve[ing] the user interface.”
Further, Appellant’s argument that the claims “address this problem in
the prior art by using a predictive model to identify taxpayer data that should
be more relevant to a particular taxpayer’s estimated results, obtaining the
more relevant taxpayer data and using it to calculate the estimate prior to
obtaining and using less relevant data” (Appeal Br. 5; see also Appeal Br. 9,
Reply Br. 1, 3–4) is unpersuasive. The Specification explains the
“predictive model” is a broad data analysis tool, such as “analyzing a tax
code”—not new in the context of preparing a tax return. See Spec. ¶ 39
(“As used in this application, ‘predictive model’ includes, but is not limited
to, one or more separate and independent components of a computer that
must be added to a general purpose computer before the computer can
identify a taxpayer data category as most relevant to an estimated result for a
particular taxpayer.); Spec. ¶ 62 (“In one embodiment, the predictive model
includes data analytics or “big data” analytics”); Spec. ¶ 65 (“The predictive
model may include analyzing a tax code.”).6 In any event, “a claim for a
new abstract idea is still an abstract idea.” Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered law of nature

6 In an exemplary embodiment, the Specification also discusses using the
known Pearson product-moment correlation coefficient. See Spec. ¶ 63
(“The predictive model may include calculating a Pearson product-moment
correlation coefficient”).
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(or natural phenomenon or abstract idea) cannot rely on the novelty of that
discovery for the inventive concept necessary for patent eligibility . . . .”
Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d 1369, 1376 (Fed. Cir. 2016)
(citations omitted).
In addition, Appellant’s argument about a “distributed system”
(Appeal Br. 5; see also Appeal Br. 6, 9; Reply Br. 1–3) is unpersuasive, as
the Specification describes using a generic server and a generic computer to
prepare a tax return.
As used in this application, “server” or “server computer”
includes, but is not limited to, one or more separate and
independent software and/or hardware components of a
computer that must be added to a general purpose computer
before the computer can receive and respond to requests from
other computers and software in order to share data or hardware
and software resources among the other computers and
software, and computers having such components added
thereto.
Spec. ¶ 39; Spec. ¶ 38 (“As used in this application, ‘computer[]’ . . .
includes, but are not limited to, a computer (laptop or desktop) and a
computer or computing device of a mobile communication device,
smartphone and tablet computing device such as an IPAD (available from
Apple Inc. of Cupertino, California”). Appellant does not persuasively
explain why using a generic server and a generic computer to process data
makes claim 1 patent eligible. See In re TLI Communications LLC Patent
Litigation, 823 F.3d 607, 611 (2016) (holding the claim was patent-
ineligible because “[w]hile [the asserted claim] requires concrete, tangible
components such as ‘a telephone unit’ and a ‘server,’ the specification
makes clear that the recited physical components merely provide a generic
environment in which to carry out the abstract idea”); Intellectual Ventures I
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LLC v. Symantec Corp., 838 F.3d 1307, 1320 (2016) (holding the claim was
patent-ineligible because “the recitation of a ‘telephone network,’ like the
telephone unit and server in TLI Communications, merely provides a
‘generic environment’ in which to carry out the well-known and abstract
idea”);
Appellant cites BASCOM Global Internet Services, Inc. v. AT&T
Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016) (Appeal Br. 6; Reply Br. 1–
2), but does not persuasively explain why that case is similar to the present
case. In BASCOM, the court determined that at the pleading stage and
construed in favor of the nonmovant,
The inventive concept described and claimed . . . is the
installation of a filtering tool at a specific location, remote from
the end-users, with customizable filtering features specific to
each end user. This design gives the filtering tool both the
benefits of a filter on a local computer and the benefits of a
filter on the ISP server. BASCOM explains that the inventive
concept rests on taking advantage of the ability of at least some
ISPs to identify individual accounts that communicate with the
ISP server, and to associate a request for Internet content with a
specific individual account.
BASCOM Global Internet Services, 827 F.3d at 1350 (emphasis
added).
Unlike the claims of BASCOM, claim 1 is not directed to an
“installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user” or
similar improvements. Id. at 1350. Nor does claim 1 “give[] the filtering
tool both the benefits of a filter on a local computer and the benefits of a
filter on the ISP server” or provide similar benefits. Id. Therefore,
BASCOM is inapplicable here.
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Contrary to Appellant’s assertions (Appeal Br. 6–7), Amdocs (Israel)
Limited v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016) is
inapplicable here. In Amdocs, the court determines:
claim 1 of the ‘065 patent is tied to a specific structure of
various components (network devices, gatherers, ISMs, a
central event manager, a central database, a user interface
server, and terminals or clients). It is narrowly drawn to not
preempt any and all generic enhancement of data in a similar
system, and does not merely combine the components in a
generic manner, but instead purposefully arranges the
components in a distributed architecture to achieve a
technological solution to a technological problem specific to
computer networks.
. . . claim 1 of the ‘065 patent depends upon a specific
enhancing limitation that necessarily incorporates the
invention’s distributed architecture—an architecture providing
a technological solution to a technological problem. This
provides the requisite ‘something more’ than the performance
of “well-understood, routine, [and] conventional activities
previously known to the industry.”
Amdocs, 841 F.3d at 1301 (citation omitted, emphases added).
Amdocs is inapplicable here because unlike the claims of Amdocs,
claim 1 does not “necessarily incorporate[] the invention’s distributed
architecture—an architecture providing a technological solution to a
technological problem” or provide similar technological solutions. Id. at
1301. To the contrary, claim 1 is directed to preparing a tax return, using a
generic server and a generic computer.
Appellant also cites Core Wireless Licensing S.A.R.L. v. LG
Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) (Reply Br. 3), but does not
persuasively argue why that case is on point. In Core Wireless, the Court
determines:
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The asserted claims in this case are directed to an improved
user interface for computing devices . . . . Claim 1 of the ‘476
patent requires “an application summary that can be reached
directly from the menu,” specifying a particular manner by
which the summary window must be accessed. The claim
further requires the application summary window list a limited
set of data, “each of the data in the list being selectable to
launch the respective application and enable the selected data to
be seen within the respective application.” This claim
limitation restrains the type of data that can be displayed in the
summary window. Finally, the claim recites that the summary
window “is displayed while the one or more applications are in
an un-launched state,” a requirement that the device
applications exist in a particular state. These limitations
disclose a specific manner of displaying a limited set of
information to the user, rather than using conventional user
interface methods to display a generic index on a computer.
Like the improved systems claimed in Enfish, Thales, Visual
Memory, and Finjan, these claims recite a specific
improvement over prior systems, resulting in an improved user
interface for electronic devices.

The specification confirms that these claims disclose an
improved user interface for electronic devices, particularly
those with small screens. It teaches that the prior art interfaces
had many deficits relating to the efficient functioning of the
computer, requiring a user “to scroll around and switch views
many times to find the right data/functionality.” ’020 patent at
1:47–49. Because small screens “tend to need data and
functionality divided into many layers or views,” id. at 1:29–30,
prior art interfaces required users to drill down through many
layers to get to desired data or functionality. Id. at 1:29–37.
That process could “seem slow, complex and difficult to learn,
particularly to novice users.” Id. at 1:45–46.

Core Wireless Licensing, 880 F.3d at 1362–63 (emphases added).
Unlike the claims of Core Wireless, claim 1 does not address the
problem of “prior art interfaces . . . deficits relating to the efficient
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functioning of the computer, requiring a user ‘to scroll around and switch
views many times to find the right data/functionality’” or similar problems.
Id. at 1363. Nor is claim 1 “directed to an improved user interface for
computing devices” or similar improvements. Id. at 1362. Therefore, Core
Wireless is inapplicable here.
As a result, we conclude claim 1 is directed to preparing a tax return,
and does not recite additional elements that integrate the judicial exception
into a practical application. See Guidance, Step 2A, Prong 2.
Step 2B
Turning to Step 2B of the Guidance (Alice step two), Appellant does
not persuasively argue any specific limitation was not well-understood,
routine, or conventional in the field. Nor does Appellant persuasively argue
the Examiner erred in that aspect. In particular, Appellant’s arguments
about prior art (Appeal Br. 7–8; Reply Br. 6) is unpersuasive, because a
prior art rejection is determined under 35 U.S.C. § 102 and § 103, which are
different statutory requirements. As the Supreme Court emphasizes: “[t]he
‘novelty’ of any element or steps in a process, or even of the process itself, is
of no relevance in determining whether the subject matter of a claim falls
within the § 101 categories of possibly patentable subject matter.” Diehr,
450 U.S. at 188–89 (emphasis added). Our reviewing court further guides
that “[e]ligibility and novelty are separate inquiries.” Two-Way Media Ltd.
v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017).
Further, Appellant’s attorney arguments about two prior art references
(Appeal Br. 7–8) are unsubstantiated, as Appellant does not provide
sufficient objective evidence to support the argument. See In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997) (“attorney argument [is] not the kind of
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factual evidence that is required to rebut a prima facie case of obviousness”);
Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977) (“Argument of
counsel cannot take the place of evidence lacking in the record.”). As a
result, Appellant’s conclusion under Berkheimer (Appeal Br. 8) is
unpersuasive, because that conclusion is based on Appellant’s prior art
arguments. In any event, that conclusion is unpersuasive, because as
discussed above, all of the italicized limitations, which include the terms
bolded by Appellant (Appeal Br. 8), are part of the abstract idea—not
additional elements. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1290 (Fed. Cir. 2018) (explaining the Alice “Court only assessed
whether the claim limitations other than the invention’s use of the ineligible
concept to which it was directed were well-understood, routine and
conventional” and “did not consider whether it was well-understood, routine,
and conventional to execute the claimed intermediated settlement method on
a generic computer”) (emphasis added). 7 As a result, Appellant has not
persuaded us the Examiner erred with respect to the Guidance’s Step 2B
analysis. See Guidance, Step 2B.
Because Appellant has not persuaded us the Examiner erred, we
sustain the Examiner’s rejection of independent claims 1 under 35 U.S.C.
§ 101.
For similar reasons discussed above with respect to claim 1, we
sustain the Examiner’s rejection of claims 2–40 under 35 U.S.C. § 101, as

7 As discussed above, the claimed “server” and “computer” were well-
understood, routine, or conventional in the field. We note Appellant does
not contend, let alone show, such devices were not well-understood, routine,
or conventional in the field.
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18
Appellant does not advance separate substantive arguments about those
claims. See 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
We affirm the Examiner’s decision rejecting claims 1–40 under 35
U.S.C. § 101.

In summary:

Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–40 101 Eligibility 1–40

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

AFFIRMED