Robert T. Clark et al.

Patent Trials and Appeals BoardSep 30, 2019

13736240 - (D) (P.T.A.B. Sep. 30, 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. 13/736,240 01/08/2013 Robert T. Clark 162.00126.0001.US.C4 1523 157954 7590 09/30/2019 Padda Law Group 45 South 7th Street, Suite 2315 Minneapolis, MN 55402 EXAMINER OUELLETTE, JONATHAN P ART UNIT PAPER NUMBER 3629 NOTIFICATION DATE DELIVERY MODE 09/30/2019 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): annette@paddalawgroup.com patents@paddalawgroup.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte ROBERT T. CLARK and ADAM ELLIOTT ____________ Appeal 2017-011808 Application 13/736,240 Technology Center 3600 ____________ Before ROBERT E. NAPPI, ST. JOHN COURTENAY III, and LARRY J. HUME, Administrative Patent Judges. COURTENAY, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 34, 36, 37, and 40–55, which are all the claims pending in this application.1 Claims 1–33, 35, 38, and 39 are canceled. We have jurisdiction over the pending claims under 35 U.S.C. § 6(b). An oral hearing was conducted on September 19, 2019. We affirm. 1 The real party in interest is ID Insight Incorporated, Assignee of the application. App. Br. 1 (emphasis added). Appeal 2017-011808 Application 13/736,240 2 STATEMENT OF THE CASE 2 Introduction Appellants’ claimed invention “relates, in general, to apparatuses and methods for identifying account fraud. In particular, this invention relates to detecting fraud and assisting in fraud prevention due to identity theft including to but not limited to address change, account takeover fraud, and new account application fraud.” Spec. 1, ll. 8–11. Rejection Claims 34, 36, 37, and 40–55 are rejected under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. Final Act. 2. ANALYSIS We reproduce, infra, independent claim 34 in Table One, and independent claim 43 in Table Two. We have considered all of Appellants’ arguments and any evidence presented. To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(1)(iv). Rejection of Claims 34, 36, 37, and 40–55 under 35 U.S.C. § 101 Issue: Under 35 U.S.C. § 101, did the Examiner err by rejecting claims 34, 36, 37, and 40–55, as being directed to a judicial exception, without significantly more? 2 We herein refer to the Final Office Action, mailed May 31, 2016 (“Final Act.”); Appeal Brief, filed May 18, 2017 (“App. Br.”); Examiner’s Answer, mailed July 26, 2017 (“Ans.”), and the Reply Brief, filed Sept. 26, 2017 (“Reply Br.”). Appeal 2017-011808 Application 13/736,240 3 Principles of Law — 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. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “‘[L]aws of nature, natural phenomena, and abstract ideas’ are not patentable.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012) (quoting Diamond v. Diehr, 450 U.S. 175, 185 (1981)). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, we first determine what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.” (emphasis omitted)); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” Appeal 2017-011808 Application 13/736,240 4 (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221 (citation omitted). “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). Appeal 2017-011808 Application 13/736,240 5 “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. Subject Matter Eligibility — 2019 Revised Guidance The USPTO recently published revised guidance on the application of 35 U.S.C. § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”). This new guidance is applied in this Opinion. Under the 2019 Revised Guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, mental processes, or certain methods of organizing human activity such as a fundamental economic practice or managing personal behavior or relationships or interactions between people);3 and (2) additional elements that integrate the judicial exception into a practical application (see Manual of Patent Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).4, 5 See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55. A claim that integrates a judicial exception into a practical application applies, relies on, or uses 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. See 2019 Revised Guidance, 84 Fed. Reg. at 54. When the judicial exception is so 3 Referred to as “Step 2A, Prong One” in the Revised Guidance (hereinafter “Step 2A, prong 1”). 4 Referred to as “Step 2A, Prong Two” in the Revised Guidance (hereinafter “Step 2A, prong 2”). 5 All references to the MPEP are to the Ninth Edition, Revision 08.2017 (rev. Jan. 2018). Appeal 2017-011808 Application 13/736,240 6 integrated, then the claim is not directed to a judicial exception and is patent eligible under 35 U.S.C. § 101. Id. Only if a claim: (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then evaluate whether the claim provides an inventive concept. See 2019 Revised Guidance, 84 Fed. Reg. at 56; Alice, 573 U.S. at 217–18. For example, we look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. 6 See 2019 Revised Guidance, 84 Fed. Reg. at 56. Because there is no single definition of an “abstract idea” under Alice step 1, the PTO has recently synthesized, for purposes of clarity, predictability, and consistency, key concepts identified by the courts as abstract ideas to explain that the “abstract idea” exception includes the following three groupings: 1. Mathematical concepts—mathematical relationships, mathematical formulas or equations, mathematical calculations; 2. Mental processes— concepts performed in the human mind (including an observation, evaluation, judgment, opinion); and 3. Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, 6 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the Supreme Court’s two-step framework, described in Mayo and Alice. Appeal 2017-011808 Application 13/736,240 7 insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See 2019 Revised Guidance, 84 Fed. Reg. at 52. According to the 2019 Revised Guidance, “[c]laims that do not recite [subject] matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas,” except in rare circumstances. Even if the claims recite any one of these three groupings of abstract ideas, these claims are still not “directed to” a judicial exception (abstract idea), and thus are patent eligible, if “the claim as a whole integrates the recited judicial exception into a practical application of that exception.” See 2019 Revised Guidance, 84 Fed. Reg. at 53. For example, limitations that are indicative of integration into a practical application include: 1. Improvements to the functioning of a computer, or to any other technology or technical field — see MPEP § 2106.05(a); 2. Applying the judicial exception with, or by use of, a particular machine — see MPEP § 2106.05(b); 3. Effecting a transformation or reduction of a particular article to a different state or thing — see MPEP § 2106.05(c); and 4. Applying or using 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 — see MPEP § 2106.05(e). Appeal 2017-011808 Application 13/736,240 8 In contrast, limitations that are not indicative of integration into a practical application include: 1. Adding the words “apply it” (or an equivalent) with the judicial exception, or merely include instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea — see MPEP § 2106.05(f); 2. Adding insignificant extra-solution activity to the judicial exception — see MPEP § 2106.05(g); and 3. Generally linking the use of the judicial exception to a particular technological environment or field of use — see MPEP 2106.05(h). See 2019 Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”). 2019 Revised Guidance, Step 2A, Prong One7 The Judicial Exception Under the 2019 Revised Guidance, we begin our analysis by first considering whether the claims recite any judicial exceptions, including certain groupings of abstract ideas, in particular: (a) mathematical concepts, (b) mental steps, and (c) certain methods of organizing human activities. We note the Examiner concludes all claims 34, 36, 37, and 40–55 recite an abstract idea, including collecting, comparing, analyzing, and organizing information. Final Act. 3. In the Answer, the Examiner cites to several additional case authorities in support, including Electric Power Group, LLC v. Alstom S.A. (830 F.3d 1350 (Fed. Cir. 2016)), and CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011). Ans. 4–5. 7 Throughout this opinion, we give the claim limitations the broadest reasonable interpretation consistent with the Specification. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). Appeal 2017-011808 Application 13/736,240 9 In Table One below, we identify in italics the specific claim limitations that we conclude recite an abstract idea. We also identify in bold the additional (non-abstract) claim limitations that are generic computer components: TABLE ONE Independent Claim 34 Revised 2019 Guidance [a] A computer-implemented method for assessing a risk of identity theft fraud with respect to new applications, comprising: A process (method) is a statutory subject matter class. See 35 U.S.C. § 101 (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”). The “computer” is an additional non- abstract limitation. [b] receiving as computer readable storage media first address information relating to an applicant for an account; receiving information is insignificant extra-solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). The “computer readable storage media” is an additional non-abstract limitation. [c] receiving as computer readable storage media reference address information relating to the applicant for the account; receiving information is insignificant extra-solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). Appeal 2017-011808 Application 13/736,240 10 Independent Claim 34 Revised 2019 Guidance The “computer readable storage media” is an additional non-abstract limitation. [d] accessing one or more databases to collect comparison data related to each of the first address and the reference address, the comparison data comprising at least one of demographic data, United States Postal Service data, previous history file data, warm address data, and fraud address data; “accessing” is insignificant extra- solution activity and includes data gathering. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). [e] appending the collected comparison data to the first and reference addresses; “appending” is insignificant extra- solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). [f] comparing the collected comparison data for the first address to the collected comparison data for the reference address to determine one or more variables by at least one of: Abstract idea, i.e., “comparing” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. [g] comparing financial make-ups of the two addresses to determine a financial make-up variable; Abstract idea, i.e., “comparing” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. [h] identifying a third party record that matches the first address with a name of the applicant to determine a third party variable; Abstract idea, i.e., “identifying” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. Appeal 2017-011808 Application 13/736,240 11 Independent Claim 34 Revised 2019 Guidance [i] comparing home values of the two addresses to determine a home value variable; Abstract idea, i.e., “comparing” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. [j] determining a distance between the two addresses to determine a distance variable; Abstract idea, i.e., “determining” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. [k] comparing types of housing of the two addresses to determine a housing type variable; Abstract idea, i.e., “comparing” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. [l] comparing the addresses to a warm address file to determine a warm address variable; Abstract idea, i.e., “comparing” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. [m] comparing Internet usage data for the two addresses to determine an Internet usage variable; and Abstract idea, i.e., “comparing” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. [n] determining a length of residence for the reference address to determine a length of residence variable; and Abstract idea, i.e., “determining” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. [o] based on data related to previous cases of identity theft, assigning a weight to each of the one or more Abstract idea, i.e., “assigning a weight” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. Appeal 2017-011808 Application 13/736,240 12 Independent Claim 34 Revised 2019 Guidance variables to determine a risk of identity theft using computer executable instructions. Abstract Ideas — Mental Processes We conclude the italicized abstract idea steps identified above in Table One could be performed alternatively as mental processes under the Revised Guidance. See Claim 34. See 2019 Revised Guidance, 84 Fed. Reg. at 52. If a method can be performed by human thought alone, or by a human using pen and paper, it is merely an abstract idea and is not patent eligible under § 101. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372-73 (Fed. Cir. 2011); “That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalk v. Benson.” CyberSource, 654 F.3d at 1375. See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146–47 (Fed. Cir. 2016). Moreover, “[u]sing a computer to accelerate an ineligible mental process does not make that process patent-eligible.” Bancorp Services, L.L.C. v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1279 (Fed. Cir. 2012); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015) (“relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.”). Appeal 2017-011808 Application 13/736,240 13 Additional Limitations As emphasized in bold supra, we note the additional non-abstract limitations of generic computer components. The computer (“computer- implemented method”) and the “computer readable storage media” are additional non-abstract limitations recited in independent claim 34. See 2019 Revised Guidance, 84 Fed. Reg. at 52. We also note the supporting description of generic computer and network components in the Specification, for example: Embodiments of the invention can be embodied in a computer program product. It will be understood that a computer program product including one or more features or operations of the present invention may be created in a computer usable medium (such as a CD-ROM or other medium) having computer readable code embodied therein. The computer usable medium preferably contains a number of computer readable program code devices configured to cause a computer to affect one or more of the various functions or operations herein described. Spec. 36, ll. 3–8 (emphasis added). We emphasize that McRO, Inc. v. Bandai Namco Games America Inc., (837 F.3d 1299 (Fed. Cir. 2016)), guides: “[t]he abstract idea exception prevents patenting a result where ‘it matters not by what process or machinery the result is accomplished.’” 837 F.3d at 1312 (quoting O’Reilly v. Morse, 56 U.S. 62, 113 (1854)) (emphasis added). Independent claim 51 recites similar language of commensurate scope that we conclude also falls into the same abstract idea category of mental processes, as mapped above for independent claim 34. See supra Table One. Appeal 2017-011808 Application 13/736,240 14 Independent Claim 43 Because independent claim 43 is of different scope than independent claims 34 and 51, we similarly identify in italics the specific claim limitations of claim 43 that we conclude recite an abstract idea in Table Two, infra. We similarly identify in bold the additional (non-abstract) claim limitations that are generic computer components in claim 43: TABLE TWO Independent Claim 43 Revised 2019 Guidance [a] A computer-implemented method for assessing a risk of fraud, comprising: A process (method) is a statutory subject matter class. See 35 U.S.C. § 101 (“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”). The “computer” is an additional non- abstract limitation. [b] using computer executable instructions, determining demographic attribute variables for a received street addresses to predict the risk of fraud by comparing one or more of income, net worth, and homeownership for the received street address and a reference address Abstract idea, i.e., “determining” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. The “computer” is an additional non- abstract limitation. Appeal 2017-011808 Application 13/736,240 15 Independent Claim 43 Revised 2019 Guidance [c] analyzing the demographic attribute variables against previous identity theft data, the previous identity theft data comprising a statistical analysis of demographic attributes in confirmed cases of fraud, wherein analyzing the determined differences comprises assigning a weight to the one or more demographic attribute variables; and Abstract idea, i.e., “analyzing” could be performed alternatively as a mental process. See 2019 Rev. Guid. 52. [d] presenting the analysis of demographic attribute variables as a score. “presenting” is insignificant post- solution activity. 2019 Revised Guidance, 55 n.31; see also MPEP § 2106.05(g). Because we conclude all claims on appeal recite an abstract idea, as identified above, under Step 2A, Prong One, we proceed to Step 2A, Prong Two. 2019 Revised Guidance, Step 2A, Prong Two Integration of the Judicial Exception into a Practical Application Pursuant to the 2019 Revised Guidance, we consider whether there are additional elements set forth in the claims that integrate the judicial exception into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 54–55. Appeal 2017-011808 Application 13/736,240 16 MPEP § 2106.05(a) Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field McRO Appellants contend “claim 34 is similar to the claims considered recently by the Federal Circuit in McRo.” App. Br. 13. In support, Appellants contend: “Similarly, Applicant’s [c]laim 34 is directed to a specific implementation of a distinct process having particular rules and representing an improvement over conventional fraud detection techniques.” App. Br. 14 (emphasis added). We find Appellants’ argument based upon McRO unavailing because we conclude Appellants’ computer-implemented method is unlike the subject claim(s) considered by the court in McRO.8 See independent claims 34 and 51. The patent at issue in McRO describes that prior character animation and lip synchronization were accomplished by human animators, with the assistance of a computer, which involved the use of a so-called “keyframe” approach in which animators set appropriate parameters, i.e., morph weights, at certain important times, i.e., in order to produce accurate and realistic lip synchronization and facial expressions. McRO, 837 F.3d at 1305. Animators knew what phoneme a character pronounced at a given time from a time-aligned phonetic transcription (a “timed transcript”). Id. In accordance with the prior technique, animators, using a computer, thus, manually determined the appropriate morph weight sets for each 8 Appellants are referring to McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). Appeal 2017-011808 Application 13/736,240 17 keyframe based on the phoneme timings in the timed transcript. Id. See also SAP Am. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) (distinguishing McRO): The claims in McRO were directed to the creation of something physical—namely, the display of “lip synchronization and facial expressions” of animated characters on screens for viewing by human eyes. Id. at 1313. The claimed improvement was to how the physical display operated (to produce better quality images), unlike (what is present here) a claimed improvement in a mathematical technique with no improved display mechanism. The claims in McRO thus were not abstract in the sense that is dispositive here. And those claims also avoided being “abstract” in another sense reflected repeatedly in our cases (based on a contrast not with “physical” but with “concrete”): they had the specificity required to transform a claim from one claiming only a result to one claiming a way of achieving it. SAP, 898 F.3d at 1167 (emphasis added). In contrast to the claimed invention in McRO that improved how a physical display operated to produce better quality images (id.), claim 34 merely uses generic computer components to perform the recited steps that result in the final step of “assigning a weight to each of the one or more variables to determine a risk of identity theft using computer executable instructions.” Thus, Appellants’ claims on appeal do not improve the operation of a physical display, as was the case in McRO, nor the operation of any other computer component, such as the generic computer and “computer readable storage media” recited in claim 34. See SAP, 898 F.3d at 1167. Moreover, we conclude Appellants’ generic computer implementation in claim 34 performs steps that can be performed alternatively as mental processes, as discussed above. Appeal 2017-011808 Application 13/736,240 18 In the Reply Brief, Appellants urge: Applicant does not seek to protect the computerization of well- known processes. Rather, Applicant’s claims provide for a new rules-based method for identifying a risk of identity theft fraud using a plurality of clearly defined variables, and a process of assigning appropriate weights to the variables. Reply Br. 9. Appellants further contend: Applicant’s claims provide a specific, technical solution to the problem of determining a risk of identity theft. The claimed solution improves fraud detection systems as a whole by accessing a variety of different databases, appending different types of data, and determining a variety of unique variables and variable weights to calculate a risk of fraud for an application. Reply Br. 12. Appellants specifically argue that the Examiner has failed to consider whether the claim limitations improve another technology or technical field. Reply Br. 17 (emphasis added). We disagree with all the arguments advanced in the Reply Brief, because an improved abstract idea (i.e., assessing a risk of identity theft fraud — claim 34) is still an abstract idea. See Mayo, 566 U.S. at 90 (holding that a novel and nonobvious claim directed to a purely abstract idea is, nonetheless patent-ineligible). We see nothing in Appellants’ claims that specifically improves the efficiency of the computer, or another technology or technical field, because Appellants’ claims, at best, merely improve the abstract idea of assessing a risk of identity theft fraud. Thus, any analysis based upon anticipation (or obviousness) is not relevant to our analysis for patent eligibility under 35 U.S.C. § 101. Appeal 2017-011808 Application 13/736,240 19 “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); 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.”); Affinity Labs of Texas, LLC v. DIRECTV, LLC, 838 F.3d 1253, 1263 n.3 (Fed. Cir. 2016) (noting that an eligibility finding does not turn on the novelty of using a user-downloadable application for the particular purpose recited in the claims). “Generally, a claim that merely describes an ‘effect or result dissociated from any method by which [it] is accomplished’ is not directed to patent-eligible subject matter.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244 (Fed. Cir. 2016) (citing Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348 (Fed. Cir. 2015)). This reasoning is applicable here. Accordingly, on this record, we conclude independent claims 34, 43, and 51 do not recite an improvement to the functionality of a computer or other technology or technical field. See MPEP § 2106.05(a). MPEP §§ 2106.05(b) and (c) The Bilski Machine-or-Transformation test (“MoT”) as applied to method claims At the outset, we note the Supreme Court cautions that the MoT test is not the sole test, but may provide a useful clue: This Court’s precedents establish that the machine-or- transformation test is a useful and important clue, an investigative tool, for determining whether some claimed Appeal 2017-011808 Application 13/736,240 20 inventions are processes under § 101. The machine-or- transformation test is not the sole test for deciding whether an invention is a patent-eligible “process.” Bilski, 561 U.S. at 604 (emphasis added). Because generic computer components are recited in all the computer- implemented method claims on appeal, we conclude claims 34, 36, 37, and 40–55 do not define or rely upon a “particular machine.” See MPEP § 2106.05(b). Further, we conclude method claims 34, 36, 37, and 40–55 do not transform an article to a different state or thing. See MPEP § 2106.05(c). We note Appellants advance no arguments regarding the Bilski Machine-or-Transformation test in the Briefs. To the extent that the method claims on appeal might effect a transformation of data, we note the “[t]ransformation and reduction of an article ‘to a different state or thing’ is the clue to the patentability of a process claim that does not include particular machines.” Gottschalk v. Benson, 409 U.S. at 70. “The mere manipulation or reorganization of data, however, does not satisfy the transformation prong.” CyberSource, 654 F.3d at 1375. Thus, without more, we conclude method claims 34, 36, 37, and 40– 55 do not use a “particular machine” to apply the judicial exception (see MPEP § 2106.05(b)), or perform a transformation of an article to a different state or thing (see MPEP § 2106.05(c)). Appeal 2017-011808 Application 13/736,240 21 MPEP § 2106.05(e) — Meaningful Claim Limitations 9 The Examiner finds: The claims do not recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Final Act. 3 (emphasis added). Appellants do not advance substantive arguments to any particular “meaningful” claim limitations, such as those of the types addressed under MPEP § 2106.05(e). Accordingly, on this record, we conclude independent computer-implemented method claim 34 has no other argued meaningful limitations, as considered under section 2106.05(e) of the MPEP, under the 2019 Revised Guidance. MPEP § 2106.05(f) Merely including instructions to implement an abstract idea on a computer, or Merely using a computer as a tool to perform an abstract idea The Examiner finds: “The limitations are merely instructions to implement the abstract idea on a computer and require no more than a generic computer to perform generic computer functions.” Final Act. 3. Without more, we agree with the Examiner that Appellants’ claimed 9 MPEP § 2106.05(e): “Applying or using 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.” (emphasis added). Appeal 2017-011808 Application 13/736,240 22 invention merely implements the abstract idea using generic computer components, as depicted in bold type in Tables One and Two, supra. MPEP § 2106.05(g) Adding insignificant extra-solution activity to the judicial exception As mapped in the right columns of Tables One and Two, supra, we conclude independent claims 34 and 51 (and independent claim 43) recite extra-solution activities that courts have determined to be insufficient to transform judicially excepted subject matter into a patent-eligible application. See MPEP § 2106.05(g); 84 Fed. Reg. at 55 n.31. MPEP § 2106.05(h) Generally linking the use of the judicial exception to a particular technological environment or field of use Preemption The Supreme Court guides: “the prohibition against patenting abstract ideas ‘cannot be circumvented by attempting to limit the use of the formula to a particular technological environment’ or [by] adding ‘insignificant post solution activity.’” Bilski, 561 U.S. at 611–12, (quoting Diamond v. Diehr, 450 U.S. 175, 191–92 (1981)). Appellants contend: “Claim 34 does not seek to preempt all methods of determining a risk of fraud, all computer-based methods of determining a risk of fraud, or all rules-based methods of determining a risk of fraud.” App. Br. 15. Appellants further argue: “Taken as a whole, the limitations of Claim 34 amount to a specific, discrete implementation of a narrowly circumscribed method of determining a risk of identity theft fraud. Claim 34 Appeal 2017-011808 Application 13/736,240 23 does not preempt other methods of determining a risk of identity theft fraud.” Id. at 24. In response, we note that preemption is not the sole test for patent eligibility. As our reviewing court has explained, “questions on preemption are inherent in and resolved by the § 101 analysis,” and, although “preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); cf. OIP Techs, 788 F.3d at 1362–63 (“[T]hat the claims do not preempt all price optimization or may be limited to price optimization in the e- commerce setting do not make them any less abstract.”). Nor do claims 34, 36, 37, and 40–55 on appeal present any other issues as set forth in the 2019 Revised Guidance regarding a determination of whether the additional generic elements integrate the judicial exception into a practical application. See Revised Guidance, 84 Fed. Reg. at 55. Thus, under Step 2A, Prong Two (MPEP §§ 2106.05(a)–(c) and (e)– (h)), we conclude claims 34, 36, 37, and 40–55 do not integrate the judicial exception into a practical application. Therefore, we proceed to Step 2B, The Inventive Concept. The Inventive Concept – Step 2B Under the 2019 Revised Guidance, only if a claim: (1) recites a judicial exception, and (2) does not integrate that exception into a practical application, do we then look to whether the claim adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or, simply appends Appeal 2017-011808 Application 13/736,240 24 well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. The Examiner finds: “All of the claimed additional features to the abstract idea are nothing more than a ‘well-understood, routine, conventional activity,’” citing in support to Mayo, 132 S. Ct. at 1298. See Final Act. 6. The Examiner additionally finds: “the limitations in the claims fail to transform the abstract idea that they recite into patent-eligible subject matter, because the claims simply instruct the practitioner to implement the abstract idea with routine, conventional activity.” Final Act. 6. The Examiner also finds the recited features do not make Appellants’ claims significantly more than the abstract idea because: the limitations are appending well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality. The computing device merely performs generic computer functions of retrieving data and processing data. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent- eligible application. The claim does not amount to significantly more than the abstract idea itself. Final Act. 8 (emphasis added). BASCOM 10 Appellants cite to BASCOM in support, and urge: Filtering content on the Internet was already a known concept, and the patent describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content." 827 F.3d at 1350 (emphasis added). The 10 See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). Appeal 2017-011808 Application 13/736,240 25 court held “an inventive concept can be found in the non- conventional and non-generic arrangement of known, conventional pieces.” Id. App. Br. 21. Appellants further contend: “As described in Applicant's Appeal Brief, the claims are directed to ‘a specific, discrete implementation’ and are ‘narrowly circumscribed’ to provide a specific solution to a problem.” Reply Br. 16. We find Appellants’ analogy to BASCOM unavailing. See App. Br. 21. The Federal Circuit held in BASCOM that the claimed Internet content filtering, which featured an implementation “versatile enough that it could be adapted to many different users’ preferences while also installed remotely in a single location,” expressed an inventive concept in “the non- conventional and non-generic arrangement of known, conventional pieces.” BASCOM, 827 F.3d at 1350. Here, Appellants have not shown a non-conventional, non-generic arrangement regarding the non-abstract limitations of generic computer components. See independent claim 34. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Therefore, it is our view that Appellants’ claims do not involve any improvements to another technology, technical field, or improvements to the functioning of the computer or network, as was seen by the court in BASCOM. Instead, we conclude Appellants’ claims 34, 36, 37, and 40–55 merely invoke generic computer components as a tool in which the instructions executing on the computer apply the judicial exception. Further, regarding the use of the recited generic computer identified above in Tables One and Two, the Supreme Court has held “the mere Appeal 2017-011808 Application 13/736,240 26 recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.” Alice, 573 U.S. at 223. Our reviewing court provides additional guidance: See FairWarning, 839 F.3d at 1096 (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent- eligible subject matter.”); OIP Techs, 788 F.3d at 1363 (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite “‘well- understood, routine conventional activit[ies],’ either by requiring conventional computer activities or routine data-gathering steps” (alteration in original)). This reasoning is applicable here. Therefore, on the record before us, Appellants have not shown that the claims on appeal add a specific limitation beyond the judicial exception that is not “well-understood, routine, and conventional” in the field (see MPEP § 2106.05(d)). In light of the foregoing, we conclude, under the 2019 Revised Guidance, that each of Appellants’ claims 34, 36, 37, and 40–55, considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application, and does not include an inventive concept. Appeal 2017-011808 Application 13/736,240 27 Accordingly, for the reasons discussed above, we sustain the Examiner’s Rejection under 35 U.S.C. § 101 of claims 34, 36, 37, and 40– 55.11 CONCLUSION The Examiner did not err in rejecting claims 34, 36, 37, and 40–55 under 35 U.S.C. § 101, as being directed to a judicial exception, without significantly more. DECISION We affirm the Examiner’s decision rejecting claims 34, 36, 37, and 40–55 under 35 U.S.C. § 101. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See 37 C.F.R. § 41.50(f). AFFIRMED 11 To the extent Appellants have not advanced separate, substantive arguments for particular claims, or other issues, such arguments are waived. See 37 C.F.R. § 41.37(c)(1)(iv).