Naratil, Thomas C. et al.

Patent Trials and Appeals Board

Dec 17, 2019

10931300 - (D) (P.T.A.B. Dec. 17, 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.
10/931,300 09/01/2004 Thomas C. Naratil 092005-0302818 9288
109170 7590 12/17/2019
Pillsbury Withrop Shaw Pittman, LLP (UBS AG)
P.O. Box 10500
McLean, VA 22102
EXAMINER
POE, KEVIN T
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
12/17/2019 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):
Docket_ip@pillsburylaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS C. NARATIL and MARIANNE FREER
____________

Appeal 2018-003878
Application 10/931,300
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
MATTHEW S. MEYERS, Administrative Patent Judges.

MEDLOCK, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 92–130. An oral hearing was held on December 5, 2019.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED INVENTION
The claimed invention “relates to a system and method for managing
funds” and, more specifically, “to a system and method for sweeping client
funds between accounts” (Spec. ¶ 1).
Claims 92, 105, and 118 are the independent claims on appeal.
Claim 92, reproduced below with bracketed notations added, is illustrative
of the claimed subject matter:
92. A computerized method for maintaining a first
account based on a withdrawal limit for a cycle of a
predetermined period, the method being implemented on a
computer system that includes one or more physical processors
executing one or more computer program instructions which,
when executed, perform the method, comprising:
[(a)] maintaining, via the computer system, the first
account, wherein the first account is associated with the
withdrawal limit, the withdrawal limit comprising a total number
of withdrawals allowable from the first account within the cycle
of the predetermined period;

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.”)
filed September 12, 2017 and Reply Brief (“Reply Br.”) filed February 27,
2018, and the Examiner’s Answer (“Ans.”) mailed December 28, 2017 and
Non-Final Office Action (“Non-Final Act.”) mailed April 21, 2017.
Appellant identifies UBS Business Solutions AG as the real party in interest.
Appeal Br. 2.
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[(b)] monitoring, via the computer system, a number of
withdrawals associated with the first account within a first cycle
of the predetermined period;
[(c)] sweeping, via the computer system, a balance in the
first account into a second account when the number of
withdrawals associated with the first account within the first
cycle is at least equal to the withdrawal limit;
[(d)] receiving, via the computer system, during the first
cycle, a withdrawal request comprising a withdrawal amount;
[(e)] effecting, via the computer system, a withdrawal of
a first withdrawal amount of the withdrawal amount from a third
account when a balance of the third account satisfies a threshold
amount, wherein the withdrawal of the first withdrawal amount
from the third account does not cause a resulting balance in the
third account to be less than the threshold amount;
[(f)] effecting, via the computer system, a withdrawal of
a second withdrawal amount of the withdrawal amount from the
first account when the balance of the third account satisfies the
threshold amount, the first withdrawal amount is less than the
withdrawal amount, and the number of withdrawals associated
with the first account within the first cycle is less than the
withdrawal limit;
[(g)] effecting, via the computer system, a withdrawal of
the second withdrawal amount from the second account when the
balance of the third account satisfies the threshold amount, the
first withdrawal amount is less than the withdrawal amount, and
the number of withdrawals associated with the first account
within the first cycle is at least equal to the withdrawal limit;
[(h)] effecting, via the computer system, a withdrawal of
the withdrawal amount from at least one of the first account or
the second account when the balance in the third account does
not satisfy the threshold amount; and
[(i)] sweeping, via the computer system, a balance in the
second account into the first account when a second cycle
subsequent to the first cycle begins.
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REJECTION
Claims 92–130 are rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter.
ANALYSIS
Appellant argues the pending claims as a group (Appeal Br. 7–20).
We select independent claim 92 as representative. The remaining claims
stand or fall with claim 92. See 37 C.F.R. §41.37(c)(1)(iv).
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo,
566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an
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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.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101, the Examiner
determined that independent claims 92, 105, and 118 are directed to
“maintaining a first account based on a withdrawal limit for a cycle of a
predetermined period,” which the Examiner concluded is “similar to the
commercial practices that have been found by the courts to be abstract
ideas” (Non-Final Act. 7–9). The Examiner further determined that
independent claims 92, 105, and 118 do not include “limitations that are
‘significantly more’ than the abstract idea” (id. at 4–5) and that dependent
claims 93–104, 106–117, and 119–130 “do not remedy the deficiencies of
the independent claims” (id. at 11).
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance on January 7, 2019 for use by USPTO personnel in
evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED
PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57
(Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the
USPTO’s examination procedure with respect to the first step of the
Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that
[are] considered an abstract idea”; and (2) clarifying that a claim is not
“directed to” a judicial exception if the judicial exception is integrated into a
practical application of that exception. Id. at 50. The 2019 Revised
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Guidance, by its terms, applies to all applications, and to all patents resulting
from applications, filed before, on, or after January 7, 2019. Id.2
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Mayo/Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;
in Step 2A, Prong One, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that 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 (“Step 2A, Prong Two”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. 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,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
now superseded USPTO guidance.
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that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
We are not persuaded, as an initial matter, that the Examiner
overgeneralized the claims as directed to “maintaining a first account based
on a withdrawal limit for a cycle of a predetermined period” or that the
Examiner otherwise failed to consider the claims as a whole (Appeal Br. 7;
see also id. at 14–15; Reply Br. 5–6). Instead, Examiner’s characterization
of claim 92 is, in our view, fully consistent with the Specification, as
described below, including the claim language. That the claims include
more words than the phrase the Examiner used to articulate the abstract idea,
and that the Examiner, thus, articulates the abstract idea at a higher level of
abstraction than would Appellant is an insufficient basis to persuasively
argue that the claim language has been mischaracterized or that the
Examiner has failed to consider the claims as a whole. Cf. Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (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.”).
We also do not agree with Appellant that the Examiner erred in
determining that claim 92 is directed to an abstract idea (Appeal Br. 18–20).
The Federal Circuit has explained that “the ‘directed to’ inquiry applies a
stage-one filter to claims, considered in light of the specification, based on
whether ‘their character as a whole is directed to excluded subject matter.’”
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Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
(quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346
(Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific
improvement in relevant technology or on a process that itself qualifies as an
“abstract idea” for which computers are invoked merely as a tool. See id.
at 1335–36. Here, the Specification (including the claim language) makes
clear that the claims focus on an abstract idea, and not on any improvement
to technology and/or a technical field.
The Specification is titled “METHOD AND SYSTEM FOR FUNDS
MANAGEMENT,” and describes, in the Background section, that certain
types of financial accounts are insured; the Federal Deposit Insurance
Corporation, for example, offers insurance that may be applied to various
types of accounts, and provides coverage based on ownership and the
amount of insurance provided to each owner, e.g., up to $100,000 for each
single ownership account and up to $200,000 for each joint ownership
account (Spec. ¶ 2). Some insured accounts also may be subject to
additional restrictions, i.e., restrictions beyond the cap on insurance coverage
(id. ¶ 3). For example, a money market deposit account (“MMDA”) may
limit the number of withdrawals that may be made within an account cycle
(e.g., within one month); a negotiable order of withdrawal (“NOW”)
account, on the other hand, may require that a certain percentage of funds be
retained at all times (id.). The Specification describes that these restrictions
may lead to undesirable effects; for example, “the constraint on number of
withdrawals within each month on an MMDA account may limit what the
owner of the MMDA account can do and how the owner should handle
transactions related to the MMDA account” (id.). Similarly, “[t]he
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requirement of retaining [a] certain percentage of funds in an NOW account
may significantly reduce the amount of flexible fund[s] that an institution
(where the NOW account resides) can use to invest on a daily basis” (id.).
The claimed invention provides a system and method for managing
client funds by sweeping funds between multiple accounts maintained by an
owner at the same financial institution (id. ¶ 4). The Specification, thus,
discloses that in one embodiment, at least three accounts may be set up in
relation to a client for sweep purposes (id. ¶ 7). A first account may
correspond to a MMDA account, subject to a withdrawal limit during each
account cycle; a second account may correspond to an NOW account; and
the total balance in the MMDA and the NOW accounts may be insured up to
a cap amount (id.). To ensure that the total balance in the first and the
second account does not exceed the cap, a third account is established such
that when the total balance in the first and the second account reaches the
cap, a deposit is made to the third account; then when there is a positive
balance exceeding a threshold in the third account, a withdrawal is made
from the third account before making a withdrawal from the first or the
second account — ensuring at the same time that the limit on the number of
withdrawals made from the MMDA is respected (id.).
Consistent with this disclosure, claim 92 recites a method for
maintaining a first account based on a withdrawal limit for a cycle of a
predetermined period comprising: (1) maintaining a first account with a limit
on the number of withdrawals that can be made within each account cycle,
i.e., “maintaining, via the computer system, the first account, wherein the
first account is associated with the withdrawal limit, the withdrawal limit
comprising a total number of withdrawals allowable from the first account
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within the cycle of the predetermined period” (step (a)); (2) monitoring the
number of withdrawals from the first account within a first cycle, i.e.,
“monitoring, via the computer system, a number of withdrawals associated
with the first account within a first cycle of the predetermined period”
(step (b); (3) sweeping the funds from the first account into a second account
when the withdrawal limit is reached, i.e., “sweeping, via the computer
system, a balance in the first account into a second account when the number
of withdrawals associated with the first account within the first cycle is at
least equal to the withdrawal limit” (step (c)); (4) receiving a withdrawal
request for a withdrawal amount and withdrawing a first portion of the
withdrawal amount from a third account if the balance in the third account
satisfies a threshold amount and the withdrawal will not cause the third
account balance to drop below the threshold amount, i.e.,
receiving, via the computer system, during the first cycle,
a withdrawal request comprising a withdrawal amount; [and]
effecting, via the computer system, a withdrawal of a first
withdrawal amount of the withdrawal amount from a third
account when a balance of the third account satisfies a threshold
amount, wherein the withdrawal of the first withdrawal amount
from the third account does not cause a resulting balance in the
third account to be less than the threshold amount
(steps (d) and (e)); (5) if the balance in the third account satisfies a threshold
amount and the full amount of the withdrawal request has not been
withdrawn, withdrawing a second portion of the withdrawal amount from
the first account if the number of withdrawals from the first account is less
than the withdrawal limit; otherwise, if the number of withdrawals from the
first account is at least equal to the withdrawal limit, withdrawing the second
portion of the withdrawal amount from the second account, i.e.,
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effecting, via the computer system, a withdrawal of a
second withdrawal amount of the withdrawal amount from the
first account when the balance of the third account satisfies the
threshold amount, the first withdrawal amount is less than the
withdrawal amount, and the number of withdrawals associated
with the first account within the first cycle is less than the
withdrawal limit; [and]
effecting, via the computer system, a withdrawal of the
second withdrawal amount from the second account when the
balance of the third account satisfies the threshold amount, the
first withdrawal amount is less than the withdrawal amount, and
the number of withdrawals associated with the first account
within the first cycle is at least equal to the withdrawal limit
(steps (f) and (g)); (6) withdrawing the withdrawal amount from the first
account or the second account when the balance in the third account does not
satisfy the threshold amount, i.e., “effecting, via the computer system, a
withdrawal of the withdrawal amount from at least one of the first account or
the second account when the balance in the third account does not satisfy the
threshold amount” (step (h)); and (7) “sweeping, via the computer system, a
balance in the second account into the first account when a second cycle
subsequent to the first cycle begins” (step (i)).
These limitations, when given their broadest reasonable interpretation,
recite transferring funds between multiple financial accounts and controlling
withdrawals from the respective accounts in accordance with particular rules
so as to maintain compliance with restrictions (e.g., relating to the number of
permissible withdrawals, a required balance, an insurance cap) associated
with the accounts. Simply put, claim 92 recites effecting funds transfers
between, and withdrawals from, multiple financial accounts while
complying with associated account restrictions, i.e., a fundamental economic
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practice, which is a method of organizing human activity and, therefore, an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Having concluded that claim 92 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2).
The only additional elements recited in claim 92, beyond the abstract
idea, are “a computer system that includes one or more physical processors”
— elements that, as the Examiner observed, are disclosed in the
Specification as generic computer components (Non-Final Act. 9; see also,
e.g., Spec. ¶¶ 110–117). We find no indication in the Specification that the
operations recited in claim 92 require any specialized computer hardware or
other inventive computer components, i.e., a particular machine, invoke any
assertedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
We also find no indication in the Specification that the claimed
invention effects a transformation or reduction of a particular article to a
different state or thing. Nor do we find anything of record, short of attorney
argument, that attributes an improvement in technology and/or a technical
field to the claimed invention or that otherwise indicates that the claimed
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invention integrates the abstract idea into a “practical application,” as that
phrase is used in the 2019 Revised Guidance.3
Appellant asserts that the pending claims “recite a particular ordered
combination to provide a particular useful application that improves another
technology or technical field (e.g., banking computer systems for managing
multiple accounts of a single entity)” (Appeal Br. 18–19). And Appellant
argues that the claims are not directed to an abstract idea because, like the
claim at issue in McRO, Inc. v. Bandai Namco Games America, Inc.,
837 F.3d 1299 (Fed. Cir. 2016), the present claims “recite a particular
technical solution that uses specific ‘rules in a process specifically designed
to achieve an improved technological result in conventional industry
practice’ (e.g., the banking industry practice)” (id. at 19; see also id. at 7–9).
Although Appellant ostensibly suggests otherwise (see, e.g., id. at 15;
Reply Br. 3–4), the Federal Circuit did not premise its determination that the
claims in McRO were patent eligible merely on the specificity of the claimed
animation scheme or on the fact that the claimed process was not the same
as that previously used by human animators.4 Instead, the court determined

3 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
4 The court in McRO rejected the defendants’ argument that the subject
claims simply use a computer as a tool to automate conventional activity,
noting, “Defendants provided no evidence that the process previously used
by animators is the same as the process required by the claims,” and further
that “[t]he computer here is employed to perform a distinct process to
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that the claim there at issue was patent eligible because, when considered as
a whole, the claim was directed to a technological improvement over
existing, manual 3-D animation techniques and used limited rules in a
process specifically designed to achieve an improved technological result in
conventional industry practice. See McRO, 837 F.3d at 1316. In particular,
the Federal Circuit found that the claimed rules allow computers to produce
accurate and realistic lip synchronization and facial expressions in animated
characters that previously could only be produced by human animators. Id.
at 1313.
Referencing steps (c) and (e) through (i), as recited in claim 92,
Appellant argues here that the “‘sweeping’ and ‘withdrawal’ operations”
improve “a banking system’s ability to handle multiple accounts of a single
entity and maintain compliance of such accounts” (Appeal Br. 19; see also
id. at 8; Reply Br. 9–10). But, we are not persuaded that the pending claims,
thus, provide a technological improvement comparable to that in McRO.
Nor, contrary to Appellant’s assertions (id. at 8–9; see also id. at 18–19;
Reply Br. 9–10), do we agree that improving a bank’s ability to handle
multiple accounts of a single entity is a technological improvement
analogous to the use of a particular configuration of inertial sensors to more
accurately and efficiently measure the relative position and orientation of an

automate a task previously performed by humans.” McRO, 837 F.3d
at 1314. But, we find nothing in McRO to support Appellant’s argument that
“a patent examiner cannot properly reject a claim under Section 101 if the
examiner does not provide any evidence that at least a non-computer
implemented version of a computer-implemented process required by the
claims was a well-understood, routine, conventional activity” (see, e.g.,
Appeal Br. 12).
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object on a moving platform, as in Thales Visionix Inc. v. United States,
850 F.3d 1343 (Fed. Cir. 2017). Improving a bank’s ability to handle a
single entity’s multiple accounts may well improve a business process. But,
we are not persuaded that it achieves an improved technological result.
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 92 is not directed to an abstract idea because
“no single prior art reference or system discloses any of the claims” (id.
at 20). Neither a finding of novelty nor a non-obviousness determination
automatically leads to the conclusion that the claimed subject matter is
patent eligible. “Groundbreaking, innovative, or even brilliant discovery
does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-
obvious claim directed to a purely abstract idea is, nonetheless, patent
ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S.
175, 188–89 (1981) (“The ‘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.”).
We conclude, for the reasons outlined above, that claim 92 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim are no more than a generic
components used as tools to perform the recited abstract idea. As such, they
not integrate the abstract idea into a practical application. See Alice Corp.,
573 U.S. at 223–24 (“[W]holly generic computer implementation is not
generally the sort of ‘additional featur[e]’ that provides any ‘practical
assurance that the process is more than a drafting effort designed to
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monopolize the [abstract idea] itself.’”) (quoting Mayo, 566 U.S. at 77).
Accordingly, we agree with the Examiner that claim 92 is directed to an
abstract idea.
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 92 is directed to an abstract idea, we next consider under Step 2B of
the 2019 Revised Guidance, the second step of the Mayo/Alice framework,
whether claim 92 includes additional elements or a combination of elements
that provides an “inventive concept,” i.e., whether an additional element or
combination of elements adds specific limitations beyond the judicial
exception that are not “well-understood, routine, conventional activity” in
the field (which is indicative that an inventive concept is present) or simply
appends well-understood, routine, conventional activities previously known
to the industry to the judicial exception. 2019 Revised Guidance, 84 Fed.
Reg. at 56.
Appellant asserts here that the section 101 rejection cannot be
sustained because the Examiner has failed to provide “any explanation
supported by any evidence with regard to how the claimed invention as a
whole is a well-understood, routine, conventional activity” (Appeal Br. 7–8).
Specifically referencing steps (c) and (e) through (i), as recited in claim 92,
Appellant, thus, maintains that the rejection is improper because the
Examiner does not provide any evidence that “that at least a non-computer-
implemented version of a computer-implemented process required by the
claims was a well-understood, routine, conventional activity” (id. at 15–16;
see also id. at 18–20, Reply Br. 3–4).
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That argument is not persuasive at least because “the relevant inquiry
is not whether the claimed invention as a whole is unconventional or non-
routine,” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018), i.e., whether the claimed process merely automates “some well-
known, routine, conventional activity that would otherwise be the same as
the claimed process” (Appeal Br. 20). Instead, the question under step two
of the Mayo/Alice framework (i.e., step 2B) is whether the claim includes
additional elements, i.e., elements other than the abstract idea itself, that
“‘transform the nature of the claim’ into a patent-eligible application.” Alice
Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).
Appellant references steps (c) and (e) through (i), as recited in
claim 92. Yet, these steps are part of the abstract idea itself; they are not
additional elements to be considered when determining whether claim 92
includes additional elements or a combination of elements that is sufficient
to amount to significantly more than the judicial exception.
It could not be clearer from Alice, as described above, that under
step two of the Mayo/Alice framework, the elements of each claim are
considered both individually and “as an ordered combination” to determine
whether the additional elements, i.e., the elements other than the abstract
idea itself, “transform the nature of the claim” into a patent-eligible
application. Alice Corp., 573 U.S. at 217; see also Mayo, 566 U.S. at 72–73
(requiring that “a process that focuses upon the use of a natural law also
contain other elements or a combination of elements, sometimes referred to
as an ‘inventive concept,’ sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the natural law itself”)
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(emphasis added). In other words, the inventive concept under step two of
the Mayo/Alice framework cannot be the abstract idea itself:
It is clear from Mayo that the “inventive concept” cannot be the
abstract idea itself, and Berkheimer . . . leave[s] untouched the
numerous cases from this court which have held claims ineligible
because the only alleged “inventive concept” is the abstract idea.
Berkheimer v. HP, Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring); see also BSG Tech, 899 F.3d at 1290 (“It has been clear since
Alice that a claimed invention’s use of the ineligible concept to which it is
directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”) (citation omitted).
The Examiner determined here, and we agree, that the only claim
elements beyond the abstract idea are “a computer system that includes one
or more physical processors,” i.e., generic computer components used to
perform generic computer functions (Non-Final Act. 9) — a determination
amply supported by, and fully consistent with the Specification (see, e.g.,
Spec. ¶¶ 110–117).5 Appellant cannot reasonably contend, nor does
Appellant, that the operation of these components is not well-understood,
routine, or conventional, where, as here, there is nothing in the Specification
to indicate that the operations recited in claim 92 require any specialized

5 The Office’s April 19, 2018 Memorandum to the Examining Corps from
Deputy Commissioner for Patent Examination Policy, Robert W. Bahr,
entitled, “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP,
Inc.),” available at https://www.uspto.gov/sites/default/files/documents/
memo-berkheimer-20180419.PDF, expressly directs that an examiner may
support the position that an additional element (or combination of elements)
is well-understood, routine or conventional with “[a] citation to an express
statement in the specification . . . that demonstrates the well-understood,
routine, conventional nature of the additional element(s)” (id. at 3).
Appeal 2018-003878
Application 10/931,300

19
hardware or inventive computer components, invoke any assertedly
inventive software, or that the claimed invention is implemented using other
than generic computer components to perform generic computer functions,
e.g., receiving, transmitting, and processing information.
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 92 under 35 U.S.C. § 101. Therefore, we
sustain the Examiner’s rejection of independent claim 92, and claims 93–
130, which fall with claim 92.
CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
92–130 101 Eligibility 92–130
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED