Kocoves, Alexander K. et al.

Patent Trials and Appeals Board

Sep 24, 2019

14880517 - (D) (P.T.A.B. Sep. 24, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/880,517 10/12/2015 Alexander K. Kocoves GLP0100CIP 5465
62124 7590 09/24/2019
QUINN IP Law
21500 Haggerty Road
Suite 300
Northville, MI 48167
EXAMINER
TRAN, HAI
ART UNIT PAPER NUMBER
3697
NOTIFICATION DATE DELIVERY MODE
09/24/2019 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):
USDocketing@quinniplaw.com
adomagala@quinniplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALEXANDER K. KOCOVES and JAMES MORRIS POLLACK
____________

Appeal 2019-000165
Application 14/880,517
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–10 and 21–30, i.e., all pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as
GLP & Associates, Inc. Appeal Br. 2.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to “techniques
for generating investment service recommendations.” Spec. ¶ 2.2 The
Specification explains that the invention endeavors to “automatically
generat[e] . . . one or more investment service recommendations for the
prospective enrollee based on” an “investment profile” and “based on a
predicted performance of” a “defined contribution plan.” Id. ¶ 5. The
investment service recommendations should “generat[e] additional post-
retirement income in order to meet a goal of the prospective enrollee.” Id.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
1. A method for enabling users to access personalized
information generated by an investment management services
provider, the method comprising:
receiving, over a distributed computing network via a
communication device of a server computer from a first
computing device associated with the investment management
services provider, financial information for a prospective
enrollee in a retirement contribution plan;

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed October 12, 2015; “Final Act.” for the Final Office
Action, mailed May 23, 2018; “Appeal Br.” for the Appeal Brief, filed
July 9, 2018; “Ans.” for the Examiner’s Answer, mailed September 27,
2018; and “Reply Br.” for the Reply Brief, filed October 9, 2018.
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in response to receiving the financial information,
automatically:
generating, by the server computer based on the
received financial information, a personalized investment
profile for the prospective enrollee,
generating, by the server computer, an interactive
dashboard associated with the personalized investment
profile, and
transmitting, from the server computer over the
distributed computing network to a second computing
device associated with the prospective enrollee, an
invitation to access the interactive dashboard;
receiving, at the server computer over the distributed
computing network from the second computing device, a
response to the invitation, the response indicating a request
to access the interactive dashboard; and
in response to receiving the request to access the
interactive dashboard, automatically outputting, from the server
computer over the distributed computing network to the second
computing device, the interactive dashboard configured to
receive from the prospective enrollee inputs to
view the personalized investment profile and manipulate
data associated with the personalized investment profile,
and to
generate, in real time, new investment service
recommendations based on the received inputs.
Appeal Br. A1 (Claims App.).
The Rejection on Appeal
Claims 1–10 and 21–30 stand rejected under 35 U.S.C. § 101 as
directed to patent-ineligible subject matter. Final Act. 3–5.
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ANALYSIS
We have reviewed the rejection in light of Appellant’s arguments that
the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusion concerning ineligibility under § 101. We adopt the
Examiner’s findings and reasoning in the Final Office Action and Answer.
See Final Act. 3–10; Ans. 4–13. We provide the following to address and
emphasize specific findings and arguments.
Introduction
The Patent Act defines patent-eligible subject matter broadly:
“Whoever invents or discovers any new and useful process, machine,
manufacture, or composition of matter, or any new and useful improvement
thereof, may obtain a patent therefor, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth a
two-step analytical framework for evaluating patent-eligible subject matter.
Mayo, 566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
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In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”). The 2019 Guidance applies to the Board. Id. at 50–51, 57 n.42;
see 35 U.S.C. § 3(a)(2)(A) (investing the Director with responsibility “for
providing policy direction” for the PTO). Neither the Examiner nor
Appellant had the benefit of the 2019 Guidance when presenting their
respective positions concerning subject-matter eligibility.
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
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221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.
Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
Mayo/Alice Step One: PTO Step 2A Prong One
For Mayo/Alice step one, the Federal Circuit has noted that “[a]n
abstract idea can generally be described at different levels of abstraction.”
Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Here,
the Examiner determines that the claims are directed to the abstract idea of
“using a processor with a graphical user interface to receive financial
information from a prospective enrollee (collecting information), generate a
profile and an interactive dashboard for the enrollee to input data (analyzing
information), and allow the enrollee to view new investment
recommendations and manipulate data (displaying information).” Final Act.
3–4. The Examiner reasons that the claims resemble the patent-ineligible
claims in Electric Power directed to “collecting information, analyzing it,
. . . and displaying certain results of the collection and analysis.” Id. at 4
(citing Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir.
2016)). The Examiner further reasons that the claims resemble the patent-
ineligible claims in Capital One directed to “collecting, displaying, and
manipulating data.” Id. (citing Intellectual Ventures I LLC v. Capital One
Fin. Corp., 850 F.3d 1332 (Fed. Cir. 2017) (“Capital One”)). The Examiner
also reasons that the claims resemble the patent-ineligible claims in Smart
Systems Innovations directed to the “collection, storage, and recognition of
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data.” Id. (citing Smart Sys. Innovations, LLC v. Chi. Transit Auth.,
873 F.3d 1364 (Fed. Cir. 2017)).
Appellant disputes that independent claims 1 and 21 are directed to an
abstract idea. See Appeal Br. 10–17; Reply Br. 3–9. Specifically, Appellant
asserts that the Examiner “read[s] out the vast majority of the limitations”
set forth in the claims. Appeal Br. 10; see Reply Br. 2. According to
Appellant, the claims “do not merely recite collecting information, analyzing
information, and displaying information.” Appeal Br. 10.
We disagree that the Examiner errs under Mayo/Alice step one. In
determining that the claims are directed to an abstract idea, the Examiner
accurately assesses the “focus” of the claims and their “character as a
whole.” See Final Act. 3–4; see also SAP Am., 898 F.3d at 1167.
In addition, we determine that the claims recite abstract ideas falling
within one of the three groupings of abstract ideas specified in the 2019
Guidance, i.e., mental processes. See 84 Fed. Reg. at 51–52. The Guidance
describes “mental processes” as “concepts [practically] performed in the
human mind,” such as “an observation, evaluation, judgment, [or] opinion.”
Id. at 52 (footnote omitted). As explained below, each independent claim
recites “mental processes” in various limitations.
For instance, claim 1 recites the following limitations:
● “in response to receiving the financial information, . . .
generating . . . based on the received financial
information, a personalized investment profile for the
prospective enrollee”;
● “transmitting . . . an invitation to access [an] interactive
dashboard” with the personalized investment profile;
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● “receiving . . . a response to the invitation, the response
indicating a request to access the interactive dashboard”;
and
● “generate . . . new investment service recommendations
based on the received inputs.”
Appeal Br. A1. Claim 21 recites similar limitations. Id. at A3–A4.
The above-identified limitations encompass evaluations practically
performed by a human mentally or with pen and paper. For instance, a
financial advisor could receive financial information from a prospective
client. After receiving the financial information, the financial advisor could
generate, e.g., with pen and paper, a personalized investment profile for the
prospective client. After generating the personalized investment profile, the
financial advisor could invite, e.g., by telephone or email, the prospective
client to review the personalized investment profile. After receiving the
invitation, the prospective client could respond, e.g., by telephone or email,
with a request to review the personalized investment profile. After
reviewing the personalized investment profile, the prospective client could
provide additional financial information to the financial advisor. And if the
prospective client provides additional financial information, the financial
advisor could generate, e.g., with pen and paper, investment
recommendations for the prospective client based on the financial
information received from the prospective client.
For these reasons, the above-identified limitations encompass
evaluations practically performed by a human mentally or with pen and
paper. The 2019 Guidance identifies an evaluation practically performed by
a human mentally or with pen and paper as a mental process, and thus an
abstract idea. 84 Fed. Reg. at 52 & nn.14–15; see also Intellectual Ventures
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I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(“Symantec”) (“[W]ith the exception of generic computer-implemented
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”).
Mayo/Alice Step One: PTO Step 2A Prong Two
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, the independent claims recite computer-
system components. Appeal Br. A1, A3–A4. Specifically, method claim 1
recites (1) a “server computer” with a “communication device”; (2) a “first
computing device”; (3) a “second computing device”; and (4) a “distributed
computing network.” Id. at A1. Similarly, apparatus claim 21 recites (1) a
“server computer” with a “communication device,” a “memory device,” and
a “processor”; and (2) a “distributed computing network.” Id. at A3–A4.
The independent claims also recite data-collecting and data-presenting
limitations. Id. at A1, A3–A4. For instance, claim 1 recites the following
data-collecting and data-presenting limitations:
● “receiving . . . financial information for a prospective
enrollee in a retirement contribution plan”;
● “automatically . . . generating . . . an interactive
dashboard associated with the personalized investment
profile”;
● “in response to receiving the request to access the
interactive dashboard, automatically outputting . . . the
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interactive dashboard configured to” receive and present
information; and
● “receive . . . inputs to view the personalized investment
profile and manipulate data associated with the
personalized investment profile.”
Appeal Br. A1. Claim 21 recites similar data-collecting and data-presenting
limitations. Id. at A3–A4.
We determine that each independent claim as a whole does not
integrate the recited abstract ideas into a practical application because the
additional elements do not impose meaningful limits on the abstract ideas.
See 84 Fed. Reg. at 53–54; see also Final Act. 4–5; Ans. 4–8, 10–11, 13.
The claimed computer-system components constitute generic computer-
system components that perform generic computer functions. See Final
Act. 4–5 (citing Spec. ¶¶ 22–26); see also Spec. ¶¶ 22–26, 78–80, 82–84.
Further, the data-collecting and data-presenting limitations constitute
insignificant extra-solution activity. See, e.g., Mayo, 566 U.S. at 79; Bilski
v. Kappos, 561 U.S. 593, 611–12 (2010); Apple, 842 F.3d at 1241–42; OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363–64 (Fed. Cir. 2015);
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014);
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011); In re Grams, 888 F.2d 835, 839–40 (Fed. Cir. 1989).
As an example of insignificant extra-solution activity, in Mayo the
Supreme Court decided that measuring metabolite levels for later analysis
constituted purely “conventional or obvious” pre-solution activity. Mayo,
566 U.S. at 79. Similarly, the Federal Circuit has held that mere data-
gathering steps “cannot make an otherwise nonstatutory claim statutory.”
CyberSource, 654 F.3d at 1370 (quoting Grams, 888 F.2d at 840). The
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Federal Circuit has also held that (1) presenting offers to potential customers
and (2) gathering statistics concerning customer responses were
“conventional data-gathering activities that d[id] not make the claims patent
eligible.” OIP Techs., 788 F.3d at 1363–64. Consistent with those
decisions, the Manual of Patent Examining Procedure (“MPEP”) identifies
“gathering data” as an example of insignificant pre-solution activity. MPEP
§ 2106.05(g) (9th ed. rev. 08.2017 Jan. 2018).
Here, the data-collecting limitations amount to mere data-gathering
steps and require nothing unconventional or significant. See Classen
Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir.
2011) (analogizing “data gathering” to “insignificant extra-solution
activity”). For example, the Specification broadly provides that “the server
104 can receive user information.” Spec. ¶ 27. The Specification also
provides that “the salesperson 116 can capture the required information for
the prospective enrollee 120 at the computing device 108, which can then be
uploaded to the server 104 via the network 112.” Id. ¶ 64. Hence, the data-
collecting limitations do not help integrate the recited abstract ideas into a
practical application.
Further, in Flook the Supreme Court decided that adjusting an alarm
limit according to a mathematical formula was “post-solution activity” and
insufficient to confer eligibility. Parker v. Flook, 437 U.S. 584, 590, 596–98
(1978). Similarly, the Federal Circuit has held that printing menu
information constituted insignificant post-solution activity. Apple, 842 F.3d
at 1241–42. Consistent with those decisions, the MPEP identifies printing
“to output a report” as an example of insignificant post-solution activity.
MPEP § 2106.05(g).
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Here, the data-presenting limitations require generating and outputting
an “interactive dashboard associated with the personalized investment
profile.” Appeal Br. A1, A3–A4. The data-presenting limitations require no
particular presentation tool and nothing unconventional or significant. Just
as printing menu information in Apple constituted insignificant post-solution
activity, generating and outputting a generic “interactive dashboard” here
constitutes insignificant post-solution activity. See Final Act. 4. Consistent
with this, the Specification explains that “the interactive dashboard may be
implemented via a website or collection of websites.” Spec. ¶ 67. Hence,
the data-presenting limitations do not help integrate the recited abstract ideas
into a practical application.
Appellant contends that the claims “are directed to a particular
improvement in a distributed computer system’s use and functionality to
solve particular problems associated with a niche industry.” Appeal Br.
10–13 (citing Spec. ¶¶ 4, 64, 72); see Reply Br. 6.
Appellant’s contention does not persuade us of Examiner error.
“[L]imiting an abstract idea to one field of use” does not impart patent
eligibility. See Bilski, 561 U.S. at 612; see also Flook, 437 U.S. at 589–90;
SAP Am., 898 F.3d at 1169; Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1259 (Fed. Cir. 2016). A “claim is not patent eligible merely
because it applies an abstract idea in a narrow way.” BSG Tech LLC v.
BuySeasons, Inc., 899 F.3d 1281, 1287 (Fed. Cir. 2018).
Appellant contends that “the claimed systems and methods help to
simplify, expedite, and streamline the process of creating, manipulating, and
maintaining an investment retirement plan.” Reply Br. 4; see id. at 6, 8–9;
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see also Appeal Br. 14. Appellant characterizes that effort as “[h]istorically
a very tedious and convoluted process.” Reply Br. 4.
“But relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP
Techs., 788 F.3d at 1363. Moreover, the “mere automation of manual
processes using generic computers does not constitute a patentable
improvement in computer technology.” Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017). Further, the
Examiner correctly finds that the claims (1) “are not directed to a new type
of processor, a communication device, or a system memory”; (2) do not
improve “computer-related technology”; and (3) do not “provide a method
for processing data that improves existing technological processes.” Final
Act. 5, 9; Ans. 7, 9–10, 13. As the Examiner properly reasons, the claims
focus “on a certain independently abstract idea that uses computers as tools.”
Final Act. 5; Ans. 7, 9–10.
Appellant analogizes the claims here to the claims in the following
cases: Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d
1356 (Fed. Cir. 2018); McRO, Inc. v. Bandai Namco Games America Inc.,
837 F.3d 1299 (Fed. Cir. 2016); BASCOM Global Internet Services, Inc. v.
AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016); Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016); Visual Memory LLC v.
NVIDIA Corp., 867 F.3d 1253 (Fed. Cir. 2017); Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016); and DDR Holdings,
LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). See, e.g., Appeal
Br. 10–13; Reply Br. 3–6. But the claims here do not resemble the claims in
any of those cases.
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In Core Wireless, the “claims recite[d] a specific improvement over
prior systems,” i.e., a “particular manner of summarizing and presenting
information in electronic devices.” Core Wireless, 880 F.3d at 1362–63.
The Federal Circuit decided that the claims satisfied § 101 under Mayo/Alice
step one because the “invention improve[d] the efficiency of using the
electronic device.” Id. at 1363.
Unlike the claims in Core Wireless, the claims here do not improve
the efficiency of using a computer or another device. See Ans. 7. Instead,
the claims focus on improving investments for “a prospective enrollee in a
retirement contribution plan,” not the functioning of a computer or another
device. See Appeal Br. A1, A3–A4; see also Trading Techs. Int’l, Inc. v.
IBG LLC, 921 F.3d 1084, 1090–91 (Fed. Cir. 2019) (“Trading Techs. I”);
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1383–84 (Fed. Cir.
2019) (“Trading Techs. II”).
The Examiner correctly determines that the “claims amount to no
more than utilizing a processor connecting to a communication device and
a memory device over a distributed computing network to invite a user to
access its graphical user interface to send, receive, and manipulate data.”
Final Act. 5, 9; see Ans. 6–7, 9–11, 13. As discussed above, the claims use
generic computer-system components to automate manual processes, i.e.,
processes that were “[h]istorically . . . very tedious and convoluted.” Reply
Br. 4; see id. at 6, 8–9; see Appeal Br. 14. Here, “the purported advance ‘is
a process of gathering and analyzing information of a specified content, then
displaying the results, and not any particular assertedly inventive technology
for performing those functions.’” Trading Techs. II, 921 F.3d at 1385
(quoting Elec. Power, 830 F.3d at 1354).
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In McRO, the claims recited a “specific . . . improvement in computer
animation” using “unconventional rules” that related “sub-sequences of
phonemes, timings, and morph weight sets” to automatically animate lip
synchronization and facial expressions for three-dimensional characters that
only human animators could previously produce. McRO, 837 F.3d at
1302–03, 1307–08, 1313–15. The Federal Circuit reasoned that “the
incorporation of the claimed rules” improved an existing technological
process. Id. at 1314.
Similarly, in BASCOM, the claims recited a “specific method of
filtering Internet content” requiring “the installation of a filtering tool at a
specific location, remote from the end-users, with customizable filtering
features specific to each end user.” BASCOM, 827 F.3d at 1345–46, 1350.
The Federal Circuit reasoned that the claims covered “a technology-based
solution . . . to filter content on the Internet that overcomes existing
problems with other Internet filtering systems” and “improve[s] an existing
technological process.” Id. at 1351 (citing Alice, 573 U.S. at 223); see Alice,
573 U.S. at 223 (explaining that “the claims in Diehr were patent eligible
because they improved an existing technological process”).
Unlike the claims in McRO and BASCOM, the claims here do not
cover a technology-based solution that improves an existing technological
process. See Final Act. 4–5, Ans. 9. As discussed above, the Examiner
correctly finds that the claims (1) “are not directed to a new type of
processor, a communication device, or a system memory”; (2) do not
improve “computer-related technology”; and (3) do not “provide a method
for processing data that improves existing technological processes.” Final
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Act. 5, 9; Ans. 7, 9–10, 13; see Trading Techs. II, 921 F.3d at 1383; Credit
Acceptance, 859 F.3d at 1054–56.
As the Examiner explains, the claims recite “generic computer
elements” that perform conventional data-processing steps, e.g., “receiving
financial information,” “generating investment profile and a customized
dashboard,” “transmitting an email with a hyperlink,” and “outputting the
dashboard website.” Final Act. 4; see Ans. 4–6, 13 (citing Spec. ¶¶ 22, 25,
30, 82–83). As the Examiner also explains, the “claims do not lay out a
particular set of rules for aggregating, analyzing investment information, and
displaying the new investment recommendations.” Ans. 11.
In Enfish, the Federal Circuit decided that the claims satisfied § 101
under Mayo/Alice step one because they recited a “specific improvement to
the way computers operate,” i.e., an improved database configuration that
permitted faster and more efficient searching. Enfish, 822 F.3d at 1330–33,
1336, 1339. Further, the Federal Circuit has explained that the claims in
Enfish “did more than allow computers to perform familiar tasks with
greater speed and efficiency” and “actually permitted users to launch and
construct databases in a new way.” Finjan, Inc. v. Blue Coat Sys., Inc.,
879 F.3d 1299, 1305 (Fed. Cir. 2018); see also Secured Mail Sols. LLC v.
Universal Wilde, Inc., 873 F.3d 905, 910 (Fed. Cir. 2017) (explaining that
the claims in Enfish “focused on an improvement to computer functionality
itself”).
Similarly, in Visual Memory, the Federal Circuit decided that the
claims satisfied § 101 under Mayo/Alice step one because they were
“directed to an improved computer memory system” that “enabl[ed]
interoperability with multiple different processors” and “obviate[d] the need
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to design a separate memory system for each [different] type of processor.”
Visual Memory, 867 F.3d at 1259–60, 1262.
Unlike the claims in Enfish and Visual Memory, the claims here do
not recite an improvement to computer functionality. See Ans. 6–7. For
instance, the claims do not recite an advance in hardware or software that
causes a processor itself or a memory itself to operate faster or more
efficiently. As the Examiner correctly finds, the claims “do not provide a
memory system solution or improvement” and “do not improve a database
structure.” Id. at 6–7. Instead, the claims “utilize a processor connecting to
a communication device and a memory device over a distributed computing
network to invite a prospective enrollee to send in financial information,
receive a hyperlink via email to access [an] investment profile and
customized dashboard so to view and manipulate new investment
recommendations.” Id. at 7, 9–10. Further, the claims employ generic
computer-system components, e.g., a “server computer,” a “computing
device,” and a “distributed computing network,” in their ordinary capacities
to communicate, manipulate, and display data. See Appeal Br. A1, A3–A4;
Spec. ¶¶ 22–26, 78–80, 82–84; see also Alice, 573 U.S. at 226.
In Amdocs, the patents concerned network components “arrayed in a
distributed architecture” that “collect[ed] and process[ed] data close to its
source,” and thus enabled “load distribution” and reduced network
congestion. Amdocs, 841 F.3d at 1291–92, 1300, 1303, 1306. The Federal
Circuit decided that the claims satisfied § 101 under Mayo/Alice step two
because they either (1) “entail[ed] an unconventional technological solution
. . . to a technological problem” that required generic computer components
to “operate in an unconventional manner to achieve an improvement in
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computer functionality” or (2) “recite[d] a technological solution to a
technological problem specific to computer networks—an unconventional
solution that was an improvement over the prior art.” Id. at 1299–1306.
Unlike the claims in Amdocs, the claims here do not require generic
components to “operate in an unconventional manner to achieve an
improvement in computer functionality.” For instance, the claims do not
require an unconventional arrangement of components or an uncommon
network configuration. As the Examiner properly reasons, the claims
“merely use[] the existing Internet” and “its advantages,” such as “[e]fficient
communication” and “distribution of data,” in a “conventional and
predictable way.” Final Act. 9–10; Ans. 13.
In DDR Holdings, the Federal Circuit determined that certain claims
satisfied § 101 under Mayo/Alice step two because “the claimed solution
amount[ed] to an inventive concept for resolving [a] particular Internet-
centric problem,” i.e., a challenge unique to the Internet. DDR Holdings,
773 F.3d at 1257–59; see Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d
1138, 1151 (Fed. Cir. 2016) (noting that “[i]n DDR Holdings, we held that
claims ‘directed to systems and methods of generating a composite web page
that combines certain visual elements of a “host” website with content of a
third-party merchant’ contained the requisite inventive concept”). The
Federal Circuit explained that the patent-eligible claims specified “how
interactions with the Internet are manipulated to yield a desired result . . .
that overrides the routine and conventional sequence of events ordinarily
triggered by the click of a hyperlink.” DDR Holdings, 773 F.3d at 1258.
The court reasoned that those claims recited a technological solution
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“necessarily rooted in computer technology” that addressed a “problem
specifically arising in the realm of computer networks.” Id. at 1257.
According to the Federal Circuit, “DDR Holdings does not apply
when . . . the asserted claims do not ‘attempt to solve a challenge particular
to the Internet.’” Smart Sys., 873 F.3d at 1375 (quoting In re TLI Commc’ns
LLC Patent Litig., 823 F.3d 607, 613 (Fed. Cir. 2016)). Unlike the patent-
eligible claims in DDR Holdings, the claims here do not attempt to solve a
challenge particular to the Internet. See Appeal Br. A1, A3–A4; see also
Final Act. 4–5, 7–8, 10; Ans. 9–10.
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract ideas into a practical application. Thus, each claim is
directed to a judicial exception and does not satisfy § 101 under Mayo/Alice
step one.
Mayo/Alice Step Two: PTO Step 2B
Because we determine that each independent claim is directed to a
judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
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step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs, 838 F.3d at 1258 (quoting Elec. Power, 830 F.3d at 1353). An
“inventive concept” requires more than “well-understood, routine,
conventional activity already engaged in” by the relevant community. Rapid
Litig. Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016)
(quoting Mayo, 566 U.S. at 79–80). But a “non-conventional and
non-generic arrangement of known, conventional pieces” may provide an
“inventive concept” satisfying step two. BASCOM, 827 F.3d at 1350.
As discussed above, the independent claims recite the following
computer-system components: a “server computer” with a “communication
device,” a “memory device,” and a “processor”; a “first computing device”;
a “second computing device”; and a “distributed computing network.”
Appeal Br. A1, A3–A4. The Examiner correctly finds that the claimed
computer-system components do not differ meaningfully from “components
in general purpose computers.” Final Act. 4, 9; see Ans. 4–6, 8, 13 (citing
Spec. ¶¶ 22, 25, 30, 82–83). Further, the Examiner correctly finds that the
claimed computer-system components correspond to “generic computer
elements” that “perform basic functions.” Final Act. 4, 9; Ans. 4. The
Examiner identifies the “basic functions” as “send[ing], receiv[ing], and
manipulat[ing] data” and as “collecting information,” “analyzing
information,” and “displaying information.” Final Act. 3–4, 9; Ans. 4.
Consistent with the Examiner’s findings, the Specification describes
the claimed computer-system components generically and evidences their
conventional nature. See, e.g., Spec. ¶¶ 22–26, 78–80, 82–84. As an
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example, the Specification explains that a “server” may include “one or
more suitable computing devices, each including one or more processors,
operating in a parallel or distributed architecture.” Id. ¶ 22. As another
example, the Specification explains that a “computing device” may include a
“personal computing device,” such as “a desktop computer, a laptop
computer, a tablet computer, a mobile phone, etc.” Id. In addition, the
Specification states that a “network” may “include a local area network
(LAN), a wide area network (WAN), e.g., the Internet, or a combination
thereof” and may “comprise storage devices and computers that are
communicatively coupled to dissimilar computers and storage devices.” Id.
¶¶ 22, 84.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk v. Benson, 409 U.S. 63, 64–65, 71 (1972)).
In addition, the claimed computer-system components operate to
communicate, manipulate, and display data. Appeal Br. A1, A3–A4; see
Final Act. 3–4, 9; Ans. 4. Court decisions have recognized that generic
computer-system components operating to communicate, manipulate, and
display data are well understood, routine, and conventional to a skilled
artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65
& n.1, 1170; Symantec, 838 F.3d at 1316–20; Versata Dev. Grp., Inc. v. SAP
Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, 772 F.3d
at 715–16; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir.
2014).
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For example, the system claims in Alice recited a “data processing
system” (e.g., a “server computer” with a “processor”) with
a “communications controller” (e.g., a “communication device”) and a “data
storage unit” (e.g., a “memory device”). Alice, 573 U.S. at 226. The
Supreme Court decided that the system claims failed to satisfy § 101
because “[n]early every computer” includes those generic components for
performing “basic calculation, storage, and transmission functions” and the
system claims simply implemented the same abstract idea as the method
claims. Id. at 226–27. The Court reasoned that (1) “the system claims are
no different from the method claims in substance”; (2) “[t]he method claims
recite the abstract idea implemented on a generic computer”; and (3) “the
system claims recite a handful of generic computer components configured
to implement the same idea.” Id. at 226.
Here, the claimed computer-system components perform “basic
calculation, storage, and transmission functions” that nearly every computer-
system performs. Appeal Br. A1, A3–A4; see Final Act. 4–5; Ans. 4–11,
13. For instance, nearly every computer system includes a “processor” for
manipulating data, a “memory device” for storing data, and a
“communication device” for transmitting data. Hence, those generic
computer-system components do not satisfy the “inventive concept”
requirement. See, e.g., Mortg. Grader, Inc. v. First Choice Loan Servs. Inc.,
811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (holding that “generic computer
components such as an ‘interface,’ ‘network,’ and ‘database’” did not satisfy
the “inventive concept” requirement); FairWarning IP, LLC v. Iatric Sys.,
Inc., 839 F.3d 1089, 1095–96 (Fed. Cir. 2016) (describing the claimed
“microprocessor” and “user interface” as “generic computer elements”);
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Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17
(Fed. Cir. 2017) (describing the claimed “authentication server,” “access
server,” “Internet Protocol network,” “client computer device,” and
“database” as “indisputably generic computer components”).
We reach a similar conclusion concerning the data-collecting and
data-presenting limitations, e.g., the “receiving” and “outputting” limitations
in claims 1 and 21. As discussed above, the data-collecting limitations
amount to mere data-gathering steps and require nothing unconventional or
significant. As also discussed above, the data-presenting limitations require
no particular presentation tool and nothing unconventional or significant.
Consequently, the claimed insignificant extra-solution activity does not
satisfy the “inventive concept” requirement. See, e.g., Mayo, 566 U.S.
at 79–80; Flook, 437 U.S. at 590; Apple, 842 F.3d at 1241–42; OIP Techs.,
788 F.3d at 1363–64; CyberSource, 654 F.3d at 1370.
Insofar as Appellant relies on the recited abstract ideas to satisfy the
“inventive concept” requirement, Appellant wrongly does so. See, e.g.,
Appeal Br. 10–14, 16–17; Reply Br. 3–9. A “claimed invention’s use of the
ineligible concept,” e.g., an abstract idea, “cannot supply the inventive
concept that renders the invention ‘significantly more’ than that ineligible
concept.” BSG Tech, 899 F.3d at 1290 (Fed. Cir. 2018). “[U]nder the
Mayo/Alice framework, a claim directed to a newly discovered” 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).
Appellant asserts that the Examiner provides no “evidence” that the
claims “use[] only ‘generic computer elements.’” Appeal Br. 12; Reply Br.
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7–8. Appellant also asserts that the Examiner violates PTO guidance about
Berkheimer v. HP.3 Appeal Br. 12.
That PTO guidance states that citations to court decisions may
demonstrate “the well-understood, routine, conventional nature of the
additional element(s).” Apr. 19, 2018 PTO Mem. 4.
As discussed above, court decisions have recognized that generic
computer-system components operating to communicate, manipulate, and
display data are well understood, routine, and conventional to a skilled
artisan. See, e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65
& n.1, 1170; Symantec, 838 F.3d at 1316–20; Versata, 793 F.3d at 1334;
Ultramercial, 772 F.3d at 715–16; buySAFE, 765 F.3d at 1355.
The Examiner has expressly identified claim limitations that use
generic computer-system components to communicate, manipulate, and
display data, i.e., perform basic functions. See Final Act. 3–5, 9; Ans. 4–11,
13. The Examiner has also explained how the Specification describes the
claimed computer-system components generically and evidences their
conventional nature. Ans. 8; see, e.g., Spec. ¶¶ 22–26, 78–80, 82–84 (the
server includes a suitable computing device that communicates with another
computing device over a network, and the computing device includes “any
suitable personal computing device (a desktop computer, a laptop computer,
a tablet computer, a mobile phone, etc.) that includes a display” and the
network includes “a local area network (LAN), a wide area network (WAN),

3 USPTO Memorandum, Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018).
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e.g., the Internet, or a combination thereof”). Hence, we discern no error
under Mayo/Alice step two.
Appellant argues that the claims “do not seek to preempt an abstract
idea such that others cannot practice it.” Appeal Br. 15. Appellant similarly
argues that the claims do not “‘tie up’ the generalized idea of managing and
analyzing investment service data.” Id. at 16.
Appellant’s arguments do not persuade us of Examiner error. While
preemption may denote patent ineligibility, its absence does not establish
patent eligibility. See FairWarning, 839 F.3d at 1098. For claims covering
a patent-ineligible concept, preemption concerns “are fully addressed and
made moot” by an analysis under the Mayo/Alice framework. Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech, 899 F.3d at 1290.
Given the claimed generic computer-system components that perform
generic computer functions and the claimed insignificant extra-solution
activity, we conclude that the combination of limitations in each independent
claim does not supply an “inventive concept” that renders the claim
“significantly more” than an abstract idea. Thus, each claim does not satisfy
§ 101 under Mayo/Alice step two.
Summary for the Independent Claims
For the reasons discussed above, each independent claim fails to
satisfy § 101 under Mayo/Alice step one and step two. Hence, we sustain the
§ 101 rejection of the independent claims.
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Dependent Claims 2–10 and 22–30
We also sustain the § 101 rejection of dependent claims 2–10 and
22–30 because Appellant does not argue eligibility separately for them. See
Appeal Br. 17–18; Reply Br. 10; 37 C.F.R. § 41.37(c)(1)(iv).
CONCLUSION
We affirm the Examiner’s decision to reject claims 1–10 and 21–30.
In summary:
Claims Rejected Basis Affirmed Reversed
1–10 and 21–30 § 101 1–10 and 21–30
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