Praedicat, Inc.

Patent Trials and Appeals Board

Dec 13, 2021

2021001789 (P.T.A.B. Dec. 13, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/299,237 10/20/2016 David LOUGHRAN PR005US2 2969
139810 7590 12/13/2021
Praedicat, Inc.
5760 West Jefferson Blvd.
Los Angeles, CA 90016
EXAMINER
BRIDGES, CHRISTOPHER
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
12/13/2021 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):
stephen.jones@praedicat.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID LOUGHRAN, ROBERT THOMAS REVILLE,
GRANT CAVANAUGH, and NARESH CHEBOLU
____________

Appeal 2021-001789
Application 15/299,237
Technology Center 3600
____________

Before ANTON W. FETTING, NINA L. MEDLOCK, and
AMEE A. SHAH, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2021-001789
Application 15/299,237

2

STATEMENT OF THE CASE1
David Loughran, Robert Thomas Reville, Grant Cavanaugh, and
Naresh Chebolu (Appellant2) seek review under 35 U.S.C. § 134 of a final
rejection of claims 1 and 3−11, the only claims pending in the application on
appeal. We have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellant invented computer user interfaces for latent risk
assessment. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below (bracketed matter and some
paragraphing added).
1. A method of a computing device including a display and an
input device, the method comprising:
[1] displaying, on the display, a risk assessment user interface
including:
[1.1] an agent selector indicating selection of a plurality
of agents including a first agent and a second agent
according to batch input from a configuration file,
and
[1.2] a first curve indicating expected losses due to both
the first agent and the second agent at a first probability
level,
[1.3] wherein the first curve is generated based on a
plurality of simulated claims, each respective claim of the

1 Our decision will make reference to the Appellant’s Appeal Brief (“Br.,”
filed July 21, 2020) and the Examiner’s Answer (“Ans.,” mailed October 27,
2020), and Final Action (“Final Act.,” mailed February 21, 2020).
2 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 Praedicat,
Inc. (Appeal Br. 2).

Appeal 2021-001789
Application 15/299,237

3

plurality of simulated claims being associated with an
agent of the plurality of agents, a date, and a settlement
amount;
[2] while the risk assessment user interface is displayed,
receiving first user input de-selecting the second agent
via an application programming interface;
and
[3] after receiving the first user input,
[3.1] aggregating expected losses due to respective
claims of the plurality of simulated claims that are
associated with the first agent,
excluding respective claims of the plurality of
simulated claims that are associated with the
second agent,
and
[3.2] updating the first curve in the risk assessment user
interface to indicate the aggregated expected losses due
to the first agent and not the second agent.

Claims 1 and 3−11 stand rejected under 35 U.S.C. § 101 as directed to
a judicial exception without significantly more.
ISSUES
The issues of eligible subject matter turn primarily on whether the
claims recite more than abstract conceptual advice of results desired.

Appeal 2021-001789
Application 15/299,237

4

ANALYSIS
STEP 13
Claim 1, as a method claim, nominally recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. The issue before us
is whether it is directed to a judicial exception without significantly more.
STEP 2
The Supreme Court:
set forth a framework for distinguishing patents that claim laws
of nature, natural phenomena, and abstract ideas from those that
claim patent-eligible applications of those concepts. First, . . .
determine whether the claims at issue are directed to one of those
patent-ineligible concepts. If so, we then ask, “[w]hat else is
there in the claims before us? To answer that question, . . .
consider the elements of each claim both individually and “as an
ordered combination” to determine whether the additional
elements “transform the nature of the claim” into a patent-
eligible application. [The Court] described step two of this
analysis as a search for an “‘inventive concept’”—i.e., an
element or combination of elements that is “sufficient to ensure
that the patent in practice amounts to significantly more than a
patent upon the [ineligible concept] itself.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citations
omitted) (citing Mayo Collaborative Servs. v. Prometheus Labs, Inc.,
566 U.S. 66 (2012)). To perform this test, we must first determine what the
claims are directed to. This begins by determining whether the claims recite
one of the judicial exceptions (a law of nature, a natural phenomenon, or an
abstract idea). Then, if the claims recite a judicial exception, determining

3 For continuity of analysis, we adopt the steps nomenclature from 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Revised Guidance”).
Appeal 2021-001789
Application 15/299,237

5

whether the claims at issue are directed to the recited judicial exception, or
whether the recited judicial exception is integrated into a practical
application of that exception, i.e., that the claims “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.” Revised Guidance, 84 Fed. Reg.
at 54. If the claims are directed to a judicial exception, then finally
determining whether the claims provide an inventive concept because the
additional elements recited in the claims provide significantly more than the
recited judicial exception.
STEP 2A Prong 1
At a high level, and for our preliminary analysis, we note that method
claim 1 recites displaying data representing a user interface, receiving data
input, aggregating loss data, and updating curve data. Aggregating loss data
and updating curve data are data analysis by mathematical algorithms. Thus,
claim 1 recites displaying, receiving, and analyzing data. None of the
limitations recites technological implementation details for any of these
steps, but instead recite only results desired by any and all possible means.
From this we see that claim 1 does not recite the judicial exceptions of
either natural phenomena or laws of nature.
Under Supreme Court precedent, claims directed purely to an abstract
idea are patent ineligible. As set forth in the Revised Guidance, which
extracts and synthesizes key concepts identified by the courts, abstract ideas
include (1) mathematical concepts,4 (2) certain methods of organizing

4 See, e.g., Gottschalk v. Benson, 409 U.S. 63, 71–72 (1972); Bilski v.
Kappos, 561 U.S. 593, 611 (2010); Mackay Radio & Telegraph Co. v. Radio
Appeal 2021-001789
Application 15/299,237

6

human activity,5 and (3) mental processes6. Among those certain methods
of organizing human activity listed in the Revised Guidance are fundamental
economic principles or practices. Like those concepts, claim 1 recites the
concept of managing economic risk. Specifically, claim 1 recites operations
that would ordinarily take place in advising one to display risk associated
with one agent after deselecting another agent. The advice to display risk
associated with one agent after deselecting another agent involves displaying
a risk assessment user interface, which is an economic risk mediation act,
and updating the first curve in the risk assessment user interface, which is an
act ordinarily performed in the stream of risk mediation. For example,
claim 1 recites “displaying . . . a risk assessment user interface,” which is an
activity that would take place whenever one is mediating risk. Similarly,
claim 1 recites “updating the first curve in the risk assessment user
interface,” which is also characteristic of mediating risk.
The Examiner determines the claims to be directed to a series of steps
to assess risk, i.e., calculate future expected losses. Final Act. 2.
The preamble to claim 1 does not recite what it is to achieve, but the
steps in claim 1 result in managing economic risk by displaying risk

Corp. of Am., 306 U.S. 86, 94 (1939); SAP Am., Inc. v. InvestPic, LLC, 898
F.3d 1161, 1163 (Fed. Cir. 2018).
5 See, e.g., Bilski, 561 U.S. at 628; Alice, 573 U.S. at 219-20; Ultramercial,
Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed Cir. 2014); Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1383 (Fed. Cir.
2017); In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1160–61 (Fed.
Cir. 2018).
6 See, e.g., Benson, 409 U.S. at 67; CyberSource Corp. v. Retail Decisions,
Inc., 654 F.3d 1366, 1371–72 (Fed. Cir. 2011); Intellectual Ventures I LLC
v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016).
Appeal 2021-001789
Application 15/299,237

7

associated with one agent after deselecting another agent absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitation 2 recites receiving data.
Limitations 1 and 3 recite generic and conventional displaying, receiving,
and analyzing of economic risk data, which advise one to apply generic
functions to get to these results. The limitations thus recite advice for
displaying risk associated with one agent after deselecting another agent. To
advocate displaying risk associated with one agent after deselecting another
agent is conceptual advice for results desired and not technological
operations.
The Specification at paragraph 2 describes the invention as relating to
computer user interfaces for latent risk assessment. Thus, all this intrinsic
evidence shows that claim 1 recites managing economic risk. This is
consistent with the Examiner’s determination.
This in turn is an example of fundamental economic principles or
practices as a certain method of organizing human activity because
managing economic risk is a fundamental economic principle or practice.
The concept of managing economic risk by displaying risk associated with
one agent after deselecting another agent is one idea for identifying risk
components. The steps recited in claim 1 are part of how this might
conceptually be premised.
Our reviewing court has found claims to be directed to abstract ideas
when they recited similar subject matter. See Bilski above.
Alternately, this is an example of concepts performed in the human
mind as mental processes because the steps of displaying, receiving, and
analyzing data mimic human thought processes of observation, evaluation,
Appeal 2021-001789
Application 15/299,237

8

judgment, and opinion, perhaps with paper and pencil, where the data
interpretation is perceptible only in the human mind. See In re TLI
Commc’ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016);
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir.
2016). Claim 1, unlike the claims found non-abstract in prior cases, uses
generic computer technology to perform data display, reception, and analysis
and does not recite an improvement to a particular computer technology.
See, e.g., McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1314–15 (Fed. Cir. 2016) (finding claims not abstract because they “focused
on a specific asserted improvement in computer animation”). As such,
claim 1 recites displaying, receiving, and analyzing data, and not a
technological implementation or application of that idea.
Alternately, this is an example of a mathematical concept because the
steps of aggregating loss data and updating a computed curve perform a
mathematical algorithm. The remaining steps are mere data gathering and
incidental post processing steps.
From this we conclude that at least to this degree, claim 1 recites
managing economic risk by displaying risk associated with one agent after
deselecting another agent, which is fundamental economic principles or
practices, one of certain methods of organizing human activity identified in
the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 1 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
Appeal 2021-001789
Application 15/299,237

9

some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.7
At the same time, we tread carefully in construing this
exclusionary principle lest it swallow all of patent law. At some
level, “all inventions ... embody, use, reflect, rest upon, or apply
laws of nature, natural phenomena, or abstract ideas.” Thus, an
invention is not rendered ineligible for patent simply because it
involves an abstract concept. “[A]pplication[s]” of such
concepts “ ‘to a new and useful end,’ ” we have said, remain
eligible for patent protection. Accordingly, in applying the § 101
exception, we must distinguish between patents that claim the “
‘buildin[g] block[s]’ ” of human ingenuity and those that
integrate the building blocks into something more.
Alice, 573 U.S. at 217 (citations omitted).
Taking the claim elements separately, the operation performed by the
computer at each step of the process is expressed purely in terms of results,
devoid of implementation details. Step 2 is a pure data gathering step.
Limitations describing the nature of the data do not alter this. Step 1 recites
basic conventional data operations such as displaying, updating, and storing
data. Step 3 recites generic computer processing expressed in terms of
results desired by any and all possible means and so present no more than
conceptual advice. All purported inventive aspects reside in how the data
are interpreted and the results desired, and not in how the process physically
enforces such a data interpretation or in how the processing technologically
achieves those results.
Viewed as a whole, Appellant’s claim 1 simply recites the concept of
managing economic risk by displaying risk associated with one agent after

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
Appeal 2021-001789
Application 15/299,237

10

deselecting another agent as performed by a generic computer. This is no
more than conceptual advice on the parameters for this concept and the
generic computer processes necessary to process those parameters, and do
not recite any particular implementation.
Claim 1 does not, for example, purport to improve the functioning of
the computer itself. Nor does it effect an improvement in any other
technology or technical field. The 16+ pages of specification do not bulge
with disclosure, but only spell out different generic equipment8 and
parameters that might be applied using this concept and the particular steps
such conventional processing would entail based on the concept of
managing economic risk by displaying risk associated with one agent after
deselecting another agent under different scenarios. They do not describe
any particular improvement in the manner a computer functions. Instead,
claim 1 at issue amounts to nothing significantly more than an instruction to
apply managing economic risk by displaying risk associated with one agent
after deselecting another agent using some unspecified, generic computer.
Under our precedents, that is not enough to transform an abstract idea into a
patent-eligible invention. See Alice, 573 U.S. at 225–26.
None of the limitations reflects an improvement in the functioning of
a computer, or an improvement to other technology or technical field,
applies or uses a judicial exception to effect a particular treatment or
prophylaxis for a disease or medical condition, implements a judicial
exception with, or uses a judicial exception in conjunction with, a particular
machine or manufacture that is integral to the claim, effects a transformation

8 The Specification describes a system that includes a CPU, storage,
memory, and display. Spec. para. 58.
Appeal 2021-001789
Application 15/299,237

11

or reduction of a particular article to a different state or thing, or applies or
uses the judicial exception in some other meaningful way beyond generally
linking the use of the judicial exception to a particular technological
environment, such that the claim as a whole is more than a drafting effort
designed to monopolize the exception.
We conclude that claim 1 is directed to achieving the result of
managing economic risk by advising one to display risk associated with one
agent after deselecting another agent, as distinguished from a technological
improvement for achieving or applying that result. This amounts to
fundamental economic principles or practices, which fall within certain
methods of organizing human activity that constitute abstract ideas. The
claim does not integrate the judicial exception into a practical application.
STEP 2B
The next issue is whether claim 1 provides an inventive concept
because the additional elements recited in the claim provide significantly
more than the recited judicial exception.
The introduction of a computer into the claims does not generally alter
the analysis at Mayo step two.
[T]he mere recitation of a generic computer cannot transform a
patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea “while adding the words ‘apply it’” is not
enough for patent eligibility. Nor is limiting the use of an
abstract idea “‘to a particular technological environment.’”
Stating an abstract idea while adding the words “apply it with a
computer” simply combines those two steps, with the same
deficient result. Thus, if a patent’s recitation of a computer
amounts to a mere instruction to “implement[t]” an abstract idea
“on . . . a computer,” that addition cannot impart patent
eligibility. This conclusion accords with the preemption concern
that undergirds our § 101 jurisprudence. Given the ubiquity of
Appeal 2021-001789
Application 15/299,237

12

computers, wholly generic computer implementation is not
generally the sort of “additional feature[e]” that provides any
“practical assurance that the process is more than a drafting effort
designed to monopolize the [abstract idea] itself.”
Alice, 573 U.S. at 223–24 (citations omitted).
“[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea [] on a generic
computer.” Alice, 573 U.S. at 225. They do not.
Taking the claim elements separately, the function performed by the
computer at each step of the process is purely conventional. Using a
computer for displaying, receiving, and analyzing data amounts to electronic
data query and retrieval—one of the most basic functions of a computer. All
of these computer functions are generic, routine, conventional computer
activities that are performed only for their conventional uses. See Elec.
Power Grp. LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016). See
also In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303,
1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved
by any general purpose computer without special programming”). None of
these activities is used in some unconventional manner nor does any produce
some unexpected result. Appellant does not contend it invented any of these
activities. In short, each step does no more than require a generic computer
to perform generic computer functions. As to the data operated upon, “even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract.” SAP Am., 898 F.3d at 1168.
Appeal 2021-001789
Application 15/299,237

13

Considered as an ordered combination, the computer components of
Appellant’s claim 1 add nothing that is not already present when the steps
are considered separately. The sequence of data display-reception-analysis
is equally generic and conventional. See Ultramercial, 772 at 715 (sequence
of receiving, selecting, offering for exchange, display, allowing access, and
receiving payment recited an abstraction), Inventor Holdings, LLC v. Bed
Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (sequence of
data retrieval, analysis, modification, generation, display, and transmission),
Two-Way Media Ltd. v. Comcast Cable Communications, LLC, 874 F.3d
1329, 1339 (Fed. Cir. 2017) (sequence of processing, routing, controlling,
and monitoring). The ordering of the steps is therefore ordinary and
conventional.
We conclude that claim 1 does not provide an inventive concept
because the additional elements recited in the claim do not provide
significantly more than the recited judicial exception.
REMAINING CLAIMS
Claim 1 is representative. The remaining method claims merely
describe process parameters. We conclude that the method claims at issue
are directed to a patent-ineligible concept itself, and not to the practical
application of that concept.
As to the structural claims, they:
are no different from the method claims in substance. The
method claims recite the abstract idea implemented on a generic
computer; the system claims recite a handful of generic computer
components configured to implement the same idea. This Court
has long “warn[ed] ... against” interpreting § 101“in ways that
make patent eligibility ‘depend simply on the draftsman’s art.’”
Appeal 2021-001789
Application 15/299,237

14

Alice, 573 U.S. at 226. As a corollary, the claims are not directed to any
particular machine.
LEGAL CONCLUSION
From these determinations we further determine that the claims do not
recite an improvement to the functioning of the computer itself or to any
other technology or technical field, a particular machine, a particular
transformation, or other meaningful limitations. From this we conclude the
claims are directed to the judicial exception of the abstract idea of certain
methods of organizing human activity as exemplified by the fundamental
economic principles or practices of managing economic risk by advising one
to display risk associated with one agent after deselecting another agent,
without significantly more.
APPELLANT’S ARGUMENTS
As to Appellant’s Appeal Brief arguments, we adopt the Examiner’s
determinations and analysis from Final Action 2–7 and Answer 3–5 and
reach similar legal conclusions. As there is no Reply Brief, we particularly
note the following.
We are not persuaded by Appellant’s argument that:
Although the claimed user interface is referred to in claim 1 as a
“risk assessment” user interface, the claim does not recite the
practice of risk assessment. Although the Office Action presents
the claims as reciting risk assessment with incidental recitations
of a user interface, this misrepresents the claim. Claim 1 recites
a user interface with elements related to risk assessment but does
not set forth and describe risk assessment.
Appeal Br. 5–6. Appellant mischaracterizes the issue. As we determine
above, claim 1 recites several limitations that each is part of risk assessment
and mitigation. The claim recites no technological implementation details
Appeal 2021-001789
Application 15/299,237

15

for its operations, which are conventional display, reception and analysis of
data.
To the extent Appellant argue that providing an interface is eligible,
this is insufficient. As with the interface in Trading Technologies, “the
claims are focused on providing information to traders in a way that helps
them process information more quickly, not on improving computers or
technology. . . . The “tool for presentation” here . . . is simply a generic
computer.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384–85
(Fed. Cir. 2019)(citations omitted).
The claim as a whole is directed to the judicial exception of the
abstract idea of certain methods of organizing human activity as exemplified
by the fundamental economic principles or practices of managing economic
risk by advising one to display risk associated with one agent after
deselecting another agent, without significantly more.
We are not persuaded by Appellant’s argument that “the claim cannot
be practically performed in the human mind.” Appeal Br. 6. Appellant
presents no evidence to support this conclusory argument. It is apparent on
its face that claim 1 could readily be performed with paper and pencil with a
sufficiently simple and minimal data set. To the extent Appellant argues the
mind could not do so efficiently, this is not sufficient.
[W]e do not rely on the pen and paper test to reach our holding
of patent eligibility in this case. At the same time, we note that,
in viewing the facts in FairWarning’s favor, the inability for the
human mind to perform each claim step does not alone confer
patentability. As we have explained, “the fact that the required
calculations could be performed more efficiently via a computer
does not materially alter the patent eligibility of the claimed
subject matter.”
FairWarning, 839 F.3d at 1098 (citations omitted).
Appeal 2021-001789
Application 15/299,237

16

Although Appellant argues claims 10 and 11 separately, Appellant
relies on the above arguments for these claims as well.

CONCLUSIONS OF LAW
The rejection of claims 1 and 3−11 under 35 U.S.C. § 101 as directed
to a judicial exception without significantly more is proper.

CONCLUSION
The rejection of claims 1 and 3−11 is affirmed.
In summary:
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1, 3−11 101 Eligibility 1, 3−11

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) (2011).

AFFIRMED