ORACLE INTERNATIONAL CORPORATION

Patent Trials and Appeals Board

Jan 11, 2022

2021002149 (P.T.A.B. Jan. 11, 2022)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/740,570 01/14/2013 Z. Maria WANG 2011-0050US01 1081 74739 7590 01/11/2022 Potomac Law Group, PLLC (Oracle International) 8229 Boone Boulevard Suite 430 Vienna, VA 22182 EXAMINER DETWEILER, JAMES M ART UNIT PAPER NUMBER 3621 NOTIFICATION DATE DELIVERY MODE 01/11/2022 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): bgoldsmith@potomaclaw.com eofficeaction@appcoll.com patents@potomaclaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte Z. MARIA WANG and PETER GAIDAREV ____________ Appeal 2021-002149 Application 13/740,570 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and TARA L. HUTCHINGS, Administrative Patent Judges. HUTCHINGS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1-20, which constitute all the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. CLAIMED INVENTION Appellant’s claimed invention relates to “a computer system that estimates and predicts the lagged promotional effect for a retail product.” Spec. ¶ 1. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Oracle International Corporation as the real party in interest. Appeal Br. 2. Appeal 2021-002149 Application 13/740,570 2 Claims 1, 8, and 15 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. A non-transitory computer-readable medium having instructions stored thereon that, when executed by one or more processors, cause the processors to predict a lagged promotional effect in response to a promotion of a product in a store by training and validating a plurality of predictive models, the predicting comprising: [(a)] receiving historical sales data for the product in the store; [(b)] storing the historical sales data in a panel data format, wherein the panel data format comprises multi- dimensional data; [(c)] aggregating the stored sales data, wherein the stored sales data is aggregated to a level having data columns comprising: an identity of a store, a stock keeping unit (SKU) identifier of a product, and an identity of a time period for the sales data; [(d)] training, validating and testing a plurality of candidate regression models using the historical sales data comprising randomly sampling the aggregated data to generate training datasets, testing datasets and validation datasets, wherein as a result of the training, a plurality of trained regression models are generated that each include a plurality of variables for predicting a post-promotion pantry-loading effect, a first model of the plurality of trained regression models configured to predict store sales for each SKU based on a post- promotion pantry-loading effect with a constant dipping factor across all SKUs and all promotions, a second model of the plurality of trained regression models configured to consider a sales price during a promotion time period to affect a subsequent post-promotion sales dip, and a third model of the plurality of trained regression models configured to consider a sales lift during a promotion time period to have an effect on the post-promotion pantry-loading effect and consider any sales Appeal 2021-002149 Application 13/740,570 3 lift or dip in a first time period to possibly affect a next time period after the first time period; [(e)] selecting one of the plurality of trained candidate regression models based on the validating and testing and generating estimated model parameters using the selected regression model; and [(f)] scoring the selected regression model to determine a sales volume change for the product after the promotion; [(g)] wherein the scoring comprises, for a forecasting time period after the promotion has ended, using the selected regression model with the estimated model parameters. Appeal Br. 13-14 (Claims App.) REJECTION2 Claims 1-20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. ANALYSIS Patent-Ineligible Subject Matter Appellant argues the claims 1-20 as a group. Appeal Br. 4-12. We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Principles of Law 35 U.S.C. § 101 An invention is patent eligible if it is a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted § 101 to include implicit 2 The Examiner has withdrawn the indefiniteness rejection of claims 1-20. Ans. 4. Appeal 2021-002149 Application 13/740,570 4 exceptions: “[l]aws of nature, natural phenomena, and abstract ideas are not patentable.” E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-part framework, described in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice, “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice, 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,” such as an abstract idea. Id. According to Supreme Court precedent, concepts determined to be abstract ideas include certain methods of organizing human activity, such as fundamental economic practices (id. at 219-20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594-95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). If the claims are not directed to a patent-ineligible concept, such as 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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in Appeal 2021-002149 Application 13/740,570 5 practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original). USPTO Guidance The U.S. Patent and Trademark Office (“USPTO”) has set out agency policy with respect to its interpretation of Supreme Court and Federal Circuit decisions concerning the requirements for subject matter eligibility. 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51 (Jan. 7, 2019) (“2019 Guidance”); see also October 2019 Update (responding to comments on the 2019 Guidance solicited from the public);3 Berkheimer Memo.4 “The guidance sets out agency policy with respect to the USPTO’s interpretation of the subject matter eligibility requirements of 35 U.S.C. § 101 in view of decisions by the Supreme Court and the Federal Circuit.” 2019 Guidance, 84 Fed. Reg. at 51. However, the “guidance . . . does not create any right or benefit, substantive or procedural, enforceable by any party against the USPTO” and “[r]ejections will continue to be based upon the substantive law.” Id. Because the MANUAL OF PATENT EXAMINATION PROCEDURE §§ 2104-06, Ninth Edition, Rev. 10.2019 (June 2020) (“MPEP”) now incorporates the 2019 Guidance, the October 2019 3 October 2019 Update: Subject Matter Eligibility, available at: https://www.uspto.gov/sites/default/files/documents/ peg_oct_2019_update.pdf 4 Memorandum from Robert W. Bahr, Deputy Commissioner for Patent Examination Policy, to the Patent Examining Corps, “Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Decision (Berkheimer v. HP, Inc.)” (April 19, 2018), available at: https://www.uspto.gov/sites/default/files/documents/memo- berkheimer-20180419.PDF Appeal 2021-002149 Application 13/740,570 6 Update, and the Berkheimer Memo, this opinion refers to the MPEP instead of those materials. The MPEP acknowledges that “[t]he Alice/Mayo two-part test is the only test that should be used to evaluate the eligibility of claims under examination.” MPEP § 2106(I). It treats the first step (i.e., whether the claim is directed to a judicial exception) as a two-prong inquiry. Id. § 2106.04(II). “Prong One asks does the claim recite an abstract idea, law of nature, or natural phenomenon?” Id. § 2106.04(II)(A)(1). For determining whether a claim recites an abstract idea, the MPEP defines enumerated groupings of abstract ideas, distilled from precedent. Id. § 2106.04(a); see also id. § 2106.04(a)(2) (defining abstract idea groupings). If the claim recites a judicial exception, then the claim requires further analysis at Prong Two. Id. § 2106.04(II)(A)(1). “Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application?” Id. § 2106.04(II)(A)(2); see also id. § 2106.04(d).5 Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look, under Step 2B, to whether the additional elements, individually or in combination, provide an inventive concept. See MPEP §§ 2106(III), 2106.05. “An inventive concept ‘cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.’” Id. § 2106.05(I) (quoting Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 5 “A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” MPEP § 2106.04(d). Appeal 2021-002149 Application 13/740,570 7 2016)). Among the considerations in determining whether the additional elements, individually or in combination, amount to significantly more than the exception itself, we look to whether they add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. MPEP § 2106.05(II). Step One of the Mayo/Alice Framework (Guidance, Step 2A) We are not persuaded that the Examiner erred in determining that independent claim 1 is directed to an abstract idea. Appeal Br. 5-9. 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.’” 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, it is clear from the Specification (including the claim language) that claim 1 focuses on an abstract idea, and not on any improvement to technology and/or a technical field. The Specification is titled “RETAIL PRODUCT LAGGED PROMOTIONAL EFFECT PREDICTION SYSTEM.” The Specification describes in the Background section that retailers frequently initiate promotions and/or marketing campaigns to boost sales and ultimately increase profit. Spec. ¶ 2. During a promotion, sales volume of the Appeal 2021-002149 Application 13/740,570 8 merchandise items being promoted are expected to increase. Id. ¶ 3. Further, for a period of time after the promotion, sales of the previously promoted merchandise can drop below a normal sales level (or baseline) for a regular week without promotions. Id. ¶ 4. The promotional effects during post-promotion periods after a promotion include “lagged promotional effect,” “pantry-loading,” and “stockpiling effect.” Id. For example, if a shopper who typically buys a 6-pack of soda every week buys a 24-pack of soda in response to a promotion, the shopper becomes stocked-up on soda and likely will not buy soda again for four weeks. Id. ¶ 5. To optimize the overall profit or revenue of a retail store, the lagged promotional effect needs to be taken into account. Id.; see also id. ¶ 3 (“In order for a retailer to gauge the impact of a promotion accurately, the indirect promotional effects across post-promotion time periods cannot be neglected.”). To address this shortcoming in the art, Appellant’s claimed invention “predict[s] a lagged promotional effect in response to a promotion of a product in a store.” Id. ¶ 6. The method includes aggregating past historical sales for the product in the store, selecting a regression model, estimating model parameters, and predicting the lagged effect. Id. ¶ 9; see also id. ¶ 6. Consistent with this description, claim 1 recites the following steps for predicting a lagged promotional effect in response to a promotion of a product in a store: (1) “receiving historical sales data for the product in the store” (limitation (a)); (2) “storing the historical sales data in a panel data format, wherein the panel data format comprises multi-dimensional data” (limitation (b)); (3) “aggregating the stored sales data, wherein the stored sales data is aggregated to a level having data columns comprising: an Appeal 2021-002149 Application 13/740,570 9 identity of a store, a stock keeping unit (SKU) identifier of a product, and an identity of a time period for the sales data” (limitation (c)); training, validating and testing a plurality of candidate regression models using the historical sales data comprising randomly sampling the aggregated data to generate training datasets, testing datasets and validation datasets, wherein as a result of the training, a plurality of trained regression models are generated that each include a plurality of variables for predicting a post-promotion pantry-loading effect, a first model of the plurality of trained regression models configured to predict store sales for each SKU based on a post-promotion pantry-loading effect with a constant dipping factor across all SKUs and all promotions, a second model of the plurality of trained regression models configured to consider a sales price during a promotion time period to affect a subsequent post- promotion sales dip, and a third model of the plurality of trained regression models configured to consider a sales lift during a promotion time period to have an effect on the post- promotion pantry-loading effect and consider any sales lift or dip in a first time period to possibly affect a next time period after the first time period (limitation (d)); “selecting one of the plurality of trained candidate regression models based on the validating and testing and generating estimated model parameters using the selected regression model” (limitation (e)); and “scoring the selected regression model to determine a sales volume change for the product after the promotion” (limitation (f)); “wherein the scoring comprises, for a forecasting time period after the promotion has ended, using the selected regression model with the estimated model parameters” (limitation (g)). These limitations, when given their broadest reasonable interpretation, recite determining a sales volume change for a product after a promotion of the product. See Final Act. 6 (determining that limitations (a)-(g) describe Appeal 2021-002149 Application 13/740,570 10 training, validating, testing, and selecting a model to determine sales volume change for products after a promotion, and using the model to determine a sales volume). This concept pertains at least to “commercial . . . interactions,” including “advertising, [and] marketing or sales activities or behaviors,” which is a subgrouping of the “certain methods of organizing human activity” grouping of abstract ideas. See MPEP §§ 2106.04(a), 2106.04(a)(2)(II)(B); see also Final Act. 6 (determining that the concept falls within the commercial interactions subgrouping of the certain methods of organizing human activity grouping). For example, limitations (a)-(c) involve collecting and organizing historical sales data for the product; limitations (d) and (e) involve training, validating and testing a plurality of candidate regression models using the historical sales data, and selecting a trained model based on the results of validating and testing; and limitations (f) and (g) involve using the selected model to determine a sales volume change during a forecasting time period after the promotion has ended for the product. Having concluded that claim 1 recites a judicial exception under Step 2A, Prong One, we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application. MPEP §§ 2106.04(II)(A), 2106.04(d). Here, claim 1 additionally recites in the preamble: a “non-transitory computer-readable storage medium having instructions stored thereon,” and “one or more processors” to predict a lagged promotional effect in response to a promotion of a product in a store. However, the Specification describes these elements at a high level of generality, i.e., as generic computer components. See Spec. ¶ 10 (describing the processor as “any type of general or specific purpose processor” and Appeal 2021-002149 Application 13/740,570 11 memory as “any combination of random access memory (‘RAM’), read only memory (‘ROM’), static storage such as a magnetic or optical disk, or any other type of computer readable media”). There is no indication in the Specification that the operations recited in claim 1 require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any asserted 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.”); see also MPEP §§ 2106.04(d), 2106.05(b). We also find no indication in the Specification that the claimed invention as recited in claim 1 effects a transformation or reduction of a particular article to a different state or thing. Id. §§ 2106.04(d), 2106.05(c). Nor do we find anything of record that attributes an improvement in technology and/or a technical field to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in Office guidance. See MPEP §§ 2106.04(d), 2210.04(d)(1), 2106.05(a). Instead, the Specification makes clear that the claimed invention seeks to “optimiz[e] the overall profit or revenue of a retail store” by taking into account the lagged promotional or pantry effect when contemplating a promotion. Spec. ¶ 5. Accordingly, we agree with the Examiner that the additional elements, considered individually and as an ordered combination, amount to no more than mere instructions to apply the exception using generic computer Appeal 2021-002149 Application 13/740,570 12 components. See Final Act. 7-8. As such, the additional limitations do not integrate the abstract idea into a practical application. See Alice, 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 monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Appellant argues that claim 1 does not fall into any of the three abstract categories. See Appeal Br. 5-7. In particular, Appellant asserts that claim 1 does not fall into the “certain methods of organizing human activity” grouping of abstract ideas because the claims are “directed to the technical functionality of predicting ‘a lagged promotional effect in response to a promotion of a product in a store by training and validating a plurality of predictive models.’” Appeal Br. 7; see also id. (charging the Examiner with mischaracterizing the claims as “merely determining a ‘sales volume’”). But predicting a lagged promotional effect in response to a sales promotion of a product in a store pertains to advertising, marketing, and/or sales activities, which falls into the subgrouping of commercial or legal interactions of the certain methods of organizing human activity grouping of abstract ideas. MPEP § 2106.04(a)(2)(II). Appellant argues that claim 1 “fail[s] to recite ANY mathematical relationships, including failing to recite mathematical formulas using symbols or words.” Id. at 6. Even accepting Appellant’s argument that claim 1 does not recite a mathematical concept because it does not recite a mathematical formula,6 Appellant’s argument is unpersuasive of Examiner 6 But see, e.g., In re Board of Trustees of Leland Stanford Junior University, 989 F.3d 1367, 1373 (Fed. Cir. 2021) (determining that the claimed Appeal 2021-002149 Application 13/740,570 13 error, at least because claim 1 pertains to a commercial interaction, including advertising, marketing, or sales activities or behaviors, which is one of the enumerated subgroupings of the certain method of organizing human activity grouping of abstract ideas. Appellant argues that claim 1 is similar to Example 39 of the Subject Matter Eligibilities.7 Appeal Br. 6. In particular, Appellant contends that Example 39 considered training a neural network for facial detection to be patent eligible because it was not considered to recite any mathematical concepts. Id. The hypothetical claim of Example 39 recites steps of collecting digital facial images; applying transformations to each digital facial image; creating a first training set; training the neural network in a first stage; and training the neural networks in a second stage. Eligibility Examples 8-9. The Eligibility Examples explain that the claim does not recite any mathematical relationships, formulas, or calculations; does not recite a mental process; and does not recite any method of organizing human activity. Id. at 9. In contrast, unlike the hypothetical claim in Example 39, claim 1 relates to predicting a lagged promotional effect (i.e., a sales volume change) in response to a sales promotion of a product in a store. Put simply, claim 1, unlike the hypothetical claim in Example 39, recites a commercial invention is directed to a patent ineligible mathematical algorithm, even though the representative claim at issue did not recite a mathematical formula); SAP America Incorporated v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (determining that the claims focus on an “improved mathematical analysis,” even though no mathematical formulas are recited in the claims). 7 USPTO’s “Subject Matter Eligibility Examples: Abstract Ideas” (Jan. 7, 2019), available at https://www.uspto.gov/sites/default/files/documents/ 101_examples_37to42_20190107.pdf (hereinafter Eligibility Examples). Appeal 2021-002149 Application 13/740,570 14 interaction, including advertising, marketing, or sales activities or behaviors, which is a certain method of organizing human activity and, thus, an abstract idea. We further note that the combination of features recited in the claim of Example 39 provided an improved facial detection model that, unlike prior models, can detect faces in distorted images while limiting the number of false positives. See Eligibility Examples 8. In particular, prior neural network models used for detecting facial images suffered from an inability to detect human faces in images having shifts, distortions, and variations in scale and rotation of the face pattern. Id. To address this problem, the claim applied mathematical transformations to an acquired set of facial images (thereby introducing shifts, distortions, and variations in scale and rotation of the face pattern) to develop an expanded training set, and trained the neural network using this expanded set. Id. While training with the expanded set better detects human faces in images having shifts, distortions, and variations in scale and rotation of the face pattern, it also suffers from increased false positives when classifying non-facial images. Id. To reduce these false positives, the claim retrains the neural network with an updated training set containing the false positives produced after face detection has been performed on non-facial images. Id. No analogous technological improvement is apparent in Appellant’s claim 1. Appellant also argues that claim 1 is similar to the claims at issue in Ex parte Hannun, No. 2018-003323, 2019 WL 7407450 (PTAB. Apr. 1, 2019) (informative) (previously captioned Ex parte Linden). Appeal Br. 6. Appellant contends that in this case the PTAB indicated that training a neural network does not recite a mathematical algorithm or formula. Appeal 2021-002149 Application 13/740,570 15 Appellant’s argument is not persuasive of Examiner error in determining that claim 1 recites an abstract idea, at least because claim 1 recites an abstract idea in the form of a certain method of organizing human activity. Appellant argues that claim 1 recites additional elements that integrate the abstract idea into a practical application. Appeal Br. 7-9. Specifically, Appellant contends that claim 1 recites a plurality of trained regression models that each include a plurality of variables for predicting a post- promotion pantry-loading effect and additional details on three of the models. Id. at 7. According to Appellant, these models are “specialized machine learning models,” not generic components. Id. at 7-8; see also id. at 9 (arguing that the claims “do not recite using generic machine learning models,” but instead “recite the training of three different specialized models, each having different novel variables, and the use of these trained specialized models”). Yet, the claimed models and the variables they use are part of the method that is itself the abstract idea. Specifically, the three models are trained, validated and tested; one of the models is picked based on the results of the validating and testing; and the selected model is scored to determine a sales volume change for the product after the promotion. That is, the models are all used to predict a lagged promotional effect on sales activities in response to a promotion (marketing or advertising), which relates to a commercial interaction, including advertising, marketing, or sales activities or behaviors. As described above, the only additional elements recited in claim 1 beyond the abstract idea are a “non-transitory computer-readable storage medium having instructions stored thereon,” and “one or more Appeal 2021-002149 Application 13/740,570 16 processors,” which the Specification describes as generic computer components. See Spec. ¶ 10. Appellant argues that claim 1 improves the functioning of the computer. Appeal Br. 8. In particular, Appellant quotes paragraph 46 of the Specification and bolds the last sentence, which provides that because only one selected regression model is applied for prediction (as opposed to prior art approaches that solve multiple regression models simultaneously), the claimed invention “is more efficient and scalable for software implementation.” Appeal Br. 8 (quoting Spec. ¶ 46 (emphasis omitted)). Here, claim 1 may well improve how the lagged promotional effect is calculated (e.g., training, validating, and testing three models, and selecting one model based on the results of testing and validating for predicting) so as to make the method more efficient and scalable. However, this improvement pertains to the abstract idea itself, and is not an improvement to how a computer operates. See Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020) (“[T]o be directed to a patent- eligible improvement to computer functionality, the claims must be directed to an improvement to the functionality of the computer or network platform itself.”) (citing Enfish, 822 F.3d at 1336-39). Citing page 12 of a prior Decision by the Board for this application (“Decision,” iss. Feb. 4, 2020), Appellant asserts that claim 1 “now recite[s] ‘training, validating and testing a plurality of candidate regression models’ [(limitation (d))], and therefore improve[s] the functioning of the computer.” Appeal Br. 9. Yet, the Board did not indicate that the claims would improve computer functionality if they were to recite a plurality of models. See Decision 12. Instead, the Board noted that Appellant’s argument was not Appeal 2021-002149 Application 13/740,570 17 commensurate in scope with the claim language. Id. Here, Appellant does not persuasively argue that limitation (d), alone or in combination with other limitations, provides an improvement to computer functionality itself. Instead, limitation (d) in combination with other limitation improves how a lagged promotional effect is predicted, which, in turn, is used to optimize a store’s profit or revenue, not improve computer functionality. See Spec. ¶ 5. We also are not persuaded of Examiner error by Appellant’s argument concerning preemption. Appeal Br. 11. Although the Supreme Court has described “the concern that drives [the exclusion of abstract ideas from patent-eligible subject matter] as one of pre-emption” (Alice Corp., 573 U.S. at 216), characterizing preemption as a driving concern for patent eligibility is not the same as characterizing preemption as the sole test for patent eligibility. “The Supreme Court has made clear that the principle of preemption is the basis for the judicial exceptions to patentability” and “[f]or this reason, questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption may signal patent ineligible subject matter, [but] the absence of complete preemption does not demonstrate patent eligibility.” Id. Accordingly, Appellant’s assertion regarding preemption is not persuasive. We conclude, for the reasons outlined above, that claim 1 recites a method of organizing human activity, i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea are no more than generic computer components used as tools to perform the recited abstract idea. As such, they do not integrate the abstract idea into a practical Appeal 2021-002149 Application 13/740,570 18 application. Accordingly, we agree with the Examiner that claim 1 is directed to an abstract idea. Step Two of the Mayo/Alice Framework (Guidance, Step 2B) Having determined under step one of the Mayo/Alice framework that claim 1 is directed to an abstract idea, we next consider under Step 2B of the Guidance, the second step of the Mayo/Alice framework, whether claim 1 includes additional elements or a combination of elements that provides an “inventive concept,” i.e., whether the additional elements amount to “significantly more” than the judicial exception itself. MPEP § 2106.05(I). We are not persuaded that the Examiner erred in finding that the additional elements of claim 1 do not amount to significantly more than the abstract idea. Appeal Br. 9-10. In particular, quoting a purported limitation for “generating a plurality of trained regression models,” Appellant contends that the “Examiner has ignored the novel limitations/elements that were added to the independent claims and which resulting in overcoming the prior art.” Id. at 10; see also id. (arguing that the limitations added during prosecution “should not be considered part of any alleged abstract idea, [and] should be assumed to be non-conventional”). As an initial matter, claim 1 does not recite “generating a plurality of trained regression models.” The limitation Appellant quotes appears most similar to limitation (d) of claim 1, i.e., “training, validating and testing a plurality of candidate regression models.” To the extent Appellant argues that the Examiner has not shown limitation (d) is not well-understood, routine, or conventional, Appellant’s argument is not persuasive. Limitation (d) recites the abstract idea itself and, thus, cannot establish patent eligibility under Step 2B. “It has been clear since Alice that a claimed invention’s use of the ineligible Appeal 2021-002149 Application 13/740,570 19 concept to which it is directed cannot supply the inventive concept that renders the invention ‘significantly more’ than the ineligible concept.” BSG Tech. v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). That the claimed method for predicting a lagged promotional effect may be unconventional over prior methods for predicting is not relevant as a factual matter. 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.”). Appellant does not identify any additional element or combination of elements that amounts to significantly more than the abstract idea. As described above, the only additional elements recited in claim 1 beyond the abstract idea are “a non-transitory computer-readable medium having instructions stored thereon” and “one or more processors,” i.e., generic computer components (Final Act. 7-8) - a determination amply supported by and fully consistent with the Specification (see, e.g., Spec. ¶ 10). The Examiner determined, and we agree, that the additional limitations, considered individually and as an ordered combination, do not amount to significantly more than the abstract idea. Final Act. 7-8. Therefore, Appellant does not persuade us of error in the Examiner’s application of Step 2B. Because Appellant has not persuaded us that the Examiner erred, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of independent claim 1, and claims 2-20, which fall with claim 1. Appeal 2021-002149 Application 13/740,570 20 CONCLUSION The rejection of claims 1-20 under 35 U.S.C. § 101 is affirmed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Basis Affirmed Reversed 1-20 101 Eligibility 1-20 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