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Patent Trials and Appeals Board

Jun 23, 2021

2021000200 (P.T.A.B. Jun. 23, 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.
15/292,185 10/13/2016 Nayeem Syed T-LEG-006-US1 8515
90879 7590 06/23/2021
Thomson Reuters c/o Intellectual Property
3 Times Square
New York, NY 10036
EXAMINER
MADAMBA, CLIFFORD B
ART UNIT PAPER NUMBER
3692
NOTIFICATION DATE DELIVERY MODE
06/23/2021 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):
IPDocketing@clarivate.com
IPDocketing@thomsonreuters.com
docketing@thomsonreuters.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte NAYEEM SYED
Appeal 2021-000200
Application 15/292,185
Technology Center 3600
Before MAHSHID D. SAADAT, JAMES W. DEJMEK, and
JOYCE CRAIG, Administrative Patent Judges.
CRAIG, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 3–9, 11–17, and 19–24. See Final
Act. 1. Claims 2, 10, and 18 are canceled. Id. at 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42 (2019). Appellant identifies the real party in interest as THOMSON
REUTERS ENTERPRISE CENTRE GMBH. Appeal Br. 2.
Appeal 2021-000200
Application 15/292,185
2
CLAIMED SUBJECT MATTER
The claims are directed to a risk and compliance analytic system.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A method for determining contract risk, the method
comprising:
selecting one or more contract clauses of a contract under
review;
selecting one or more associated model contract clauses
from a model contract clause database using a keyword matching
technique to match a selected associated model contract from the
one or more associated model contract clauses to a selected
contract clause from the one or more contract clauses;
determining a contract clause risk score for each of the one
or more contract clauses, the contract clause risk score based on
a contract value, a contract clause liability score, a contract
clause variation score and a breach risk score, wherein the
contract clause variation score of a selected contract clause is
based on a comparison of the selected contract clause to the
selected associated model contract clause;
determining a contract risk score for the contract based on
the contract clause risk score for each of the one or more contract
clauses; and
generating one or more contract risk analytic values for the
contract under review based on at least one of the contract risk
score and the one or more contract clause risk scores.
Appeal Br. Claims App. 1.
REJECTION
Claims 1, 3–9, 11–17, and 19–24 stand rejected under 35 U.S.C. § 101
because the claimed invention is directed to an abstract idea without
significantly more. Final Act. 4–8.

Appeal 2021-000200
Application 15/292,185
3
ANALYSIS
Appellant argues the Examiner’s rejection of claim 1 under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter is in error. To the extent
Appellant has not advanced separate, substantive arguments for particular
claims, or other issues, such arguments are waived. 37 C.F.R.
§ 41.37(c)(1)(iv). Appellant argues claims 1, 3–9, 11–17, and 19–24 as a
group. Appeal Br. 6. Given our discretion under 37 C.F.R. § 41.37(c)(1)(iv),
we decide the § 101 rejection of claims 1, 3–9, 11–17, and 19–24 based on
representative claim 1.
Principles of Law
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 U.S. 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. E.g., Alice Corp. v. CLS Bank Int’l, 573
U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo and Alice.
Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc.,
566 U.S. 66, 75–77 (2012)). 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.”); 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.”).
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Application 15/292,185
4
If the claim is “directed to” an abstract idea, we turn to the second part
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 (quotation marks 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). “[M]erely
requir[ing] generic computer implementation[] fail[s] to transform that
abstract idea into a patent-eligible invention.” Id.
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of § 101.2, 3
Under MPEP § 2106, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activity such as a fundamental economic practice, or mental
processes) (“Step 2A, Prong One”); and

2 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“2019 Revised Guidance”). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (the “October 2019 Update”). “All USPTO
personnel are, as a matter of internal agency management, expected to
follow the guidance.” 84 Fed. Reg. at 51; see also October 2019 Update at 1.
3 The Manual of Patent Examining Procedure (“MPEP”) now incorporates
this revised guidance and subsequent updates at Section 2106 (9th ed. Rev.
10.2019, rev. June 2020). All references to the MPEP are to the Ninth
Edition, Revision 10.2019 (Last Revised June 2020), unless otherwise
indicated.
Appeal 2021-000200
Application 15/292,185
5
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).4
MPEP § 2106.04(a) and § 2106.04(d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application,5 do we then look, under
Step 2B, to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, conventional activity” in the field; or
(4) simply appends well-understood, routine, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.6
MPEP § 2106.05(d).
Claim 1, as a method claim, falls within the process category of § 101.
See MPEP §§ 2106.03, 2106.06.
The Examiner determined that claim 1 recites an abstract fundamental
economic practice. Final Act. 2–3; Ans. 3–5. The Examiner identified the
following steps as part of the recited abstract idea:

4 “Examiners evaluate integration into a practical application by:
(1) identifying whether there are any additional elements recited in the claim
beyond the judicial exception(s); and (2) evaluating those additional
elements individually and in combination to determine whether” the claim as
a whole “integrates the exception into a practical application.” MPEP
§ 2106.04(d)II.
5 This corresponds to Alice part one where it is determined whether the claim
is “directed to” an abstract idea. See Alice, 573 U.S. at 219. If a claim is “not
directed to an abstract idea under step one of the Alice analysis, we do not
need to proceed to step two.” Enfish, LLC v. Microsoft Corp., 822 F.3d
1327, 1339 (Fed. Cir. 2016).
6 This corresponds to Alice part two where it is determined whether the
claim contains an “‘inventive concept’ sufficient to ‘transform’ the claimed
abstract idea into a patent-eligible application.” Alice, 573 U.S. at 221.
Appeal 2021-000200
Application 15/292,185
6
determining a contract clause risk score for each of the
one or more contract clauses, the contract clause risk score
based on a contract value, a contract clause liability score, a
contract clause variation score and a breach risk score, wherein
the contract clause variation score of a selected contract clause
is based on a comparison of the selected contract clause to the
selected associated model contract clause;
determining a contract risk score for the contract based
on the contract clause risk score for each of the one or more
contract clauses; and
generating one or more contract risk analytic values for
the contract under review based on at least one of the contract
risk score and the one or more contract clause risk scores.
Ans. 3–4. The Examiner also determined that the recited limitations, but for
the recitation of generic computer components, fall within the mental
processes grouping of abstract ideas. Id. at 5.
Appellant argues “it is clear that the specific limitations of”
selecting one or more associated model contract clauses
from a model contract clause database using a keyword
matching technique to match a selected associated model
contract from the one or more associated model contract clauses
to a selected contract clause from the one or more contract
clauses; and
determining a contract clause risk score for each of the
one or more contract clauses, the contract clause risk score
based on a contract value, a contract clause liability score, a
contract clause variation score and a breach risk score, wherein
the contract clause variation score of a selected contract clause
is based on a comparison of the selected contract clause to the
selected associated model contract clause,
as recited in claim 1, “are not a mathematical concept, an identified method
of organizing human activity, nor a mental process, and therefore not an
abstract idea.” Appeal Br. 7.
Consistent with Appellant’s description of the claims, we agree with
the Examiner that the “selecting,” “determining,” and “generating” steps, as
Appeal 2021-000200
Application 15/292,185
7
recited in claim 1, recite mental processes that are capable of performance in
the human mind. See Ans. 5; MPEP § 2106.04(a)(2)(III). The 2019
Guidance explains that “mental processes” include acts people can perform
in their minds or using pen and paper, even if the claim recites that a generic
computer component performs the acts. See MPEP § 2106.04(a)(2)(III)(A)
(“Claims can recite a mental process even if they are claimed as being
performed on a computer.”); see also Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) (“[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.”).
Here, the steps of selecting a contract clause, selecting an associated
model contract clause from a database using a keyword matching technique,
determining a contract clause risk score based in part on comparing the
associated model contract clause to the selected contract clause, determining
a contract risk score based on the contract clause risk score, and generating
contract risk analytic values based on one or both of the scores calculated in
the “determining” steps, as recited in claim 1, involve making observations,
evaluations, and judgments, which are examples of mental processes. See
MPEP § 2106.04(a)(2)(III). Nothing in claim 1 itself forecloses the steps
from being performed by a human mentally, or with the aid of pen and
paper. See id. Indeed, the recited steps do not specify what or who performs
the “selecting,” “determining,” and “generating,” or how those acts are
accomplished.
We also agree with the Examiner that the limitations describe
facilitating the management of risk (Ans. 5), which is fairly characterized as
a fundamental economic practice, and which falls into the certain methods or
Appeal 2021-000200
Application 15/292,185
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organizing human activity category of abstract ideas. See MPEP
§ 2106.04(a)(2)(II).
Appellant further argues that “using machine learning techniques to
perform a contract clauses analysis cannot be said to be an abstract idea.”
Appeal Br. 7 (citing Ex parte Boding, Appeal No. 2017-008591, Patent App.
No. 13/925,656 (PTAB Feb. 4, 2019)).
We are not persuaded. Ex parte Boding is a non-precedential decision
of the Board and, thus, is not binding on the USPTO, including both the
PTAB and examiners. Routine PTAB decisions are fact-specific to the case
being decided and thus are non-precedential. See PTAB Standard Operating
Procedure 2, Rev. 10. Accordingly, Ex parte Boding is not binding on the
Examiner or this panel in this case. Moreover, Appellant has not shown that
the claims at issue in Ex parte Boding are analogous to the claims at issue
here. Unlike the appealed claims, Ex parte Boding involved an
authentication analysis system designed to address the problem of fraudulent
activities associated with transactions between a user client computer and a
server computer. Ex parte Boding, slip op. at 2–3.
For these reasons, we agree with the Examiner that claim 1 recites an
abstract idea.
Appellant does not present arguments directed to whether the recited
abstract idea is integrated into a practical application (Step 2A, Prong 2) or
whether claim 1 includes an inventive concept (Step 2B). Moreover,
Appellant does not traverse the Examiner’s findings and clarifications in the
Answer, as no Reply Brief was filed. Arguments not made are forfeited. See
37 C.F.R. § 41.37(c)(1)(iv).
Appeal 2021-000200
Application 15/292,185
9
Nevertheless, the Examiner determined that the recited judicial
exception is not integrated into a practical application of that exception.
Final Act. 5–6. The Examiner determined
nothing in the steps involve an improvement to the
conventional functioning of a computer or to any other
technology, applying or using a judicial exception with, or, use
of a particular machine, effecting a transformation or reduction
of a particular article to a different state or thing aside from
merely using a computer as a tool to perform an abstract idea
while also generally linking the use of the judicial exception to
a particular technological environment or field of use.
Id. at 6.
Appellant has not challenged the Examiner’s findings. Thus, we are
not persuaded the Examiner erred in determining no additional element
integrates the recited abstract idea into a practical application, and that the
claim, therefore, is directed to an abstract idea. See id.
Turning to Step 2B, the Examiner evaluated claim 1 to see whether
there are any “additional features” that are not “well-understood, routine,
[and] conventional activity” and that constitute an “inventive concept.”
Alice, 573 U.S. at 221; Mayo, 566 U.S. at 79; Final Act. 6.
The Examiner determined that claim 1 as a whole merely describes
how generally to perform well-understood, routine, and conventional
functions. Final Act. 6. The Examiner determined that any additional
element, such as using a computer device to perform the recited steps,
amounts to no more than mere instructions to apply the exception using a
generic computer component. Id.
Appellant does not direct our attention to anything in the Specification
that indicates the computer components perform anything other than well-
understood, routine, and conventional functions, such as receiving data,
Appeal 2021-000200
Application 15/292,185
10
looking up data in a database, comparing data, calculating data, and
generating data.
For these reasons, we agree with the Examiner that claim 1 does not
have an inventive concept because the claim, in essence, merely recites
various computer-based elements along with no more than mere instructions
to implement the identified abstract idea on a generic computer.
Because the claims are directed to a judicial exception, without
significantly more, we sustain the Examiner’s § 101 rejection of independent
claim 1 and grouped claims 3–9, 11–17, and 19–24, not argued separately
with particularity.
CONCLUSION
The Examiner’s decision rejecting claims 1, 3–9, 11–17, and 19–24 is
affirmed.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 3–9, 11–
17, 19–24
101 Eligibility 1, 3–9, 11–
17, 19–24

TIME PERIOD FOR RESPONSE
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