Yuh-Shen Song et al.

Patent Trials and Appeals Board

Sep 4, 2019

11254077 - (D) (P.T.A.B. Sep. 4, 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.
11/254,077 10/18/2005 Yuh-shen Song 72209-000002 1457
7590 09/04/2019
SEYFARTH SHAW LLP
2029 CENTURY PARK EAST, SUITE 3500
LOS ANGELES, CA 90067-3021
EXAMINER
BEHNCKE, CHRISTINE M
ART UNIT PAPER NUMBER
3624
MAIL DATE DELIVERY MODE
09/04/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte YUH–SHEN SONG, CATHERINE LEW, ALEXANDER SONG,
and VICTORIA SONG
____________

Appeal 2018-003178
Application 11/254,0771
Technology Center 3600
____________

Before ANTON W. FETTING, JOSEPH A. FISCHETTI, and
MEREDITH C. PETRAVICK, Administrative Patent Judges.

FETTING, Administrative Patent Judge.

DECISION ON APPEAL

1 According to Appellants, the present application is not assigned. Yuh-shen
Song, Catherine Lew, Alexander Song, and Victoria Song are the real parties
in interest (Appeal Br. 3).

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STATEMENT OF THE CASE2
Yuh–shen Song, Catherine Lew, Alexander Song, and Victoria Song
(Appellants) seek review under 35 U.S.C. § 134(a) of a non–final rejection
of claims 53–69, the only claims pending in the application on appeal. We
have jurisdiction over the appeal pursuant to 35 U.S.C. § 6(b).
The Appellants invented a way of detecting suspicious and fraudulent
activities, and more specifically, dynamically associating different risk
values to different subjects, so that certain suspicious and fraudulent
activities associated with those subjects can be automatically detected with
higher resolution and accuracy. Specification para. 2.
An understanding of the invention can be derived from a reading of
exemplary claim 53, which is reproduced below (bracketed matter and some
paragraphing added).
53. A method of identifying and reporting suspicious activity,
comprising:
[1] providing a program for an investigator to at least view a
transaction on a second computer system;
[2] providing,
by a first computer system,
a user with a set of templates
to define a plurality of risk factors associated with
background data and transaction data of a plurality of
entities stored in a database,
each risk factor having a risk value determined by the
user;

2 Our decision will make reference to the Appellants’ Appeal Brief (“Br.,”
filed May 15, 2017) and the Examiner’s Answer (“Ans.,” mailed August 22,
2017), and Non-Final Action (“Non-Final Act.,” mailed December 15,
2016).
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[3] comparing,
by the first computer system,
the plurality of risk factors with background data and
transaction data of each entity of the plurality of entities
in the database
to identify a set of matched risk factors and a
corresponding set of risk values for each entity,
each risk value of the set of risk values corresponding to
one matched risk factor;
[4] deriving,
by the first computer system,
a representative risk value for each entity
based on a combination of risk values in the set of risk
values of each entity;
[5] storing,
by the first computer system,
with each entity in the database
the representative risk value of each entity;
[6] receiving,
by the first computer system,
a transaction selecting condition and an applicable range
of representative risk values from the program;
[7] identifying,
by the first computer system,
at least one entity
whose representative risk value falls within the
applicable range of representative risk values;
[8] selecting,
by the first computer system,
a transaction of the at least one identified entity
that matches the transaction selecting condition;
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[9] transmitting,
by the first computer system,
the selected transaction to the second computer system
to be viewable by the investigator via the program;
[10] receiving,
by the first computer system,
an instruction
given by the investigator from the second
computer system;
and
[11] transmitting,
by the first computer system,
a report of the selected transaction
to a third computer system in response to the instruction.
Claims 53–69 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.
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ANALYSIS
STEP 13
Claim 53, 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 Intl, 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 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 FR 50 (Jan. 7, 2019)
(“Revised Guidance”).
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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 at 53. 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 53 recites providing a view of a transaction, providing templates,
comparing risk factors with background data, deriving and storing a risk
value, receiving transaction data, identifying entity data, selecting and
transmitting a transaction, receiving instruction data, and transmitting a
report. Providing a view is displaying data. Providing templates is data
gathering. Comparing and deriving data are generic forms of computational
analysis. Identifying and selecting data are rudimentary forms of analysis.
Thus, claim 53 recites displaying, receiving, storing, analyzing, and
transmitting data. None of the limitations recite 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 53 does not recite the judicial exceptions
of either natural phenomena or laws of nature.
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Under Supreme Court precedent, claims directed purely to an abstract
idea are patent in-eligible. 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
human activity,5 and (3) mental processes.6 Among those certain methods
of organizing human activity listed in the Revised Guidance fundamental
economic principles or practices (including hedging, insurance, mitigating
risk). Like those concepts, claim 53 recites the concept of reducing risk.
Specifically, claim 53 recites operations that would ordinarily take place in
advising one to send a report as instructed after matching a transaction with
criteria based on risk data. The advice to send a report as instructed after
matching a transaction with criteria based on risk data involves assessing
risk, which is an economic act, and reporting on risk, which is an act
ordinarily performed in the stream of commerce. For example, claim 53
recites “comparing . . . risk factors” and “deriving . . . a representative risk
value,” which is an activity that would take place whenever one is seeking to
reduce risk.

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
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).
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The Examiner determines the claims to be directed to identifying and
reporting suspicious activity. Non-Final Act. 6.
The preamble to claim 53 recites that it is a method of identifying and
reporting suspicious activity. The steps in claim 53 result in a report after
matching a transaction with criteria based on risk data absent any
technological mechanism other than a conventional computer for doing so.
As to the specific limitations, limitations 1, 2, 6, and 10 are generic data
gathering. Limitations 5, 9, and 11 recite insignificant generic storing and
transmitting of risk data, which advise one to apply generic functions to get
to these results. Limitations 3, 4, 7, and 8, recite performing computational
or even more rudimentary generic analysis. The recited transmission in
limitation 11 is of a report upon an instruction. The analysis recites
matching a transaction with criteria based on risk data. The limitations thus
recite advice for sending a report as instructed after matching a transaction
with criteria based on risk data. To advocate sending a report as instructed
after matching a transaction with criteria based on risk data is conceptual
advice for results desired and not technological operations.
The Specification at paragraph 2 describes the invention as relating to
detecting suspicious and fraudulent activities, and more specifically,
dynamically associating different risk values to different subjects, so that
certain suspicious and fraudulent activities associated with those subjects
can be automatically detected with higher resolution and accuracy. Thus, all
this intrinsic evidence shows that claim 53 is directed to identifying risky
situations, i.e. reducing risk. This is consistent with the Examiner’s
determination.
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This in turn is an example of fundamental economic principles or
practices (including hedging, insurance, mitigating risk) as a certain method
of organizing human activity because reducing risk is a way of mitigating
risk. The concept of reducing risk by sending a report as instructed after
matching a transaction with criteria based on risk data is one idea for
suggesting actions to reduce risk. The steps recited in claim 53 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 buySAFE, Inc. v. Google, Inc.,
765 F.3d 1350, 1355 (Fed. Cir. 2014) (creating a transaction performance
guaranty for a commercial transaction on computer networks such as the
Internet); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1338 (Fed. Cir. 2013) (generating rule–based tasks for processing
an insurance claim); Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of
Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (managing a stable value
protected life insurance policy); Dealertrack, 674 F.3d at 1333 (processing
loan information through a clearinghouse); Smart Sys. Innovations, 873 F.3d
at 1372 (collection, storage, and recognition of data).
Alternately, this is an example of concepts performed in the human mind
as mental processes because the steps of displaying, receiving, storing,
analyzing, and transmitting data mimic human thought processes of
observation, evaluation, 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 53, unlike the claims found non-abstract in prior
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cases, uses generic computer technology to perform data display, reception,
storage, analysis, and transmission 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 53 is directed to displaying,
receiving, storing, analyzing, and transmitting data, and not a technological
implementation or application of that idea.
Alternately, this is an example of a mathematical concept because the
steps of comparing risk factors with data, deriving risk values, identifying
data falling within a range, and selecting data matching conditions 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 53 is directed
to reducing risk by sending a report as instructed after matching a
transaction with criteria based on risk data, which is a form of fundamental
economic principles or practices (including hedging, insurance, mitigating
risk), identified in the Revised Guidance, and, thus, an abstract idea.
STEP 2A Prong 2
The next issue is whether claim 53 not only recites, but is more
precisely directed to this concept itself or whether it is instead directed to
some technological implementation or application of, or improvement to,
this concept i.e. integrated into a practical application.7

7 See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S.
175 (1981).
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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. Steps 1, 2, 6, and 10 are pure data
gathering steps. Limitations describing the nature of the data do not alter
this. Steps 5, 9, and 11 are insignificant post solution activity, such as
storing, transmitting, or displaying the results. Steps 3, 4, 7, and 8 recite
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 is 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, Appellants’ claim 53 simply recites the concept of
reducing risk by sending a report as instructed after matching a transaction
with criteria based on risk data as performed by a generic computer. This is
no more than conceptual advice on the parameters for this concept and the
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generic computer processes necessary to process those parameters, and do
not recite any particular implementation.
Claim 53 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 19+ pages of the 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 reducing risk
by sending a report as instructed after matching a transaction with criteria
based on risk data under different scenarios. They do not describe any
particular improvement in the manner a computer functions. Instead, claim
53 at issue amounts to nothing significantly more than an instruction to
apply reducing risk by sending a report as instructed after matching a
transaction with criteria based on risk data 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 reflect 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 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

8 The Specification describes either one computer or a group of computers.
Spec. para. 53.
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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 53 is directed to achieving the result of reducing
risk by advising one to send a report as instructed after matching a
transaction with criteria based on risk data, as distinguished from a
technological improvement for achieving or applying that result. This
amounts to fundamental economic principles or practices (including
hedging, insurance, mitigating risk), 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 53 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,
the 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 pre-emption
concern that undergirds our § 101 jurisprudence. Given the
ubiquity of computers, wholly generic computer
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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, storing, analyzing, and transmitting 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. v. Alstom S.A., 830 F.3d 1350,
1353 (Fed. Cir. 2016). Also see 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 are used in some
unconventional manner nor do any produce some unexpected result.
Appellants do not contend they 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
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other than abstract.” SAP America, Inc. v. InvestPic LLC, 898 F.3d 1161,
1168 (Fed. Cir. 2018).
Considered as an ordered combination, the computer components of
Appellants’ claim 53 add nothing that is not already present when the steps
are considered separately. The sequence of data display-reception-storage-
analysis-transmission is equally generic and conventional. See
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014)
(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 Commc’ns, 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 53 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 53 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. There are no structural claims. As a corollary,
the claims are not directed to any particular machine.
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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 (including hedging, insurance, mitigating
risk) of reducing risk by sending a report as instructed after matching a
transaction with criteria based on risk data, without significantly more.
APPELLANTS’ ARGUMENTS
We are not persuaded by Appellants’ argument that “[claims 53-69
are directed to a non-conventional and non-generic arrangement of known,
conventional pieces].” Br. 6. Appellants admit that the claim steps are
“known, conventional pieces.” Appellants then present a step 2B argument
in a step 1A context. In particular, Appellants argue that the claims contain
an inventive concept that is also found in the specific ordered combination
of the limitations, similar to the Federal Circuit’s findings in BASCOM
(Bascom Global Internet v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir.
2016)). Br. 6. Initially, we remind Appellants that Bascom did not find
claims eligible on the substance, but rather that the Appellees did not
provide sufficient evidence to support a 12(b)(6) motion to dismiss in which
facts are presumed in the non-movant’s favor.
The key fact in Bascom was the presence of a structural change in
“installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user. This
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design gives the filtering tool both the benefits of a filter on a local computer
and the benefits of a filter on the ISP server.” Bascom, 827 F.3d at 1350.
The instant claims have no analogous structural benefit.
We are not persuaded by Appellants’ argument that the claims are
novel and non-obvious. Br. 6–7. “A claim for a new abstract idea is still an
abstract idea. The search for a § 101 inventive concept is thus distinct from
demonstrating § 102 novelty.” Synopsys, Inc. v. Mentor Graphics
Corporation, 839 F.3d 1138, 1151 (Fed. Cir. 2016).
We are not persuaded by Appellants’ argument that “[claims 53-69
provide an improvement to computer functionality].” Br. 7. Appellants
contend this improvement is “[t]o reduce the number of transactions that are
to be analyzed by an employee.” Br. 10. Focusing information for the
benefit of the viewer is not an improvement to computer functionality.
“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.” Trading Technologies International, Inc. v. IBG LLC, 921
F.3d 1378 (Fed. Cir. 2019).
We are not persuaded by Appellants’ argument that the claims are
analogous to those in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). Br. 10–11. The claims differ from those found patent eligible
in Enfish, where the claims were “specifically directed to a self-referential
table for a computer database.” 822 F.3d at 1337. The claims thus were
“directed to a specific improvement to the way computers operate” rather
than an abstract idea implemented on a computer. Id. at 1336. Here, by
contrast, the claims are not directed to an improvement in the way
computers operate. Though the claims purport to accelerate the process
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of identifying risk data, our reviewing court has held that speed and
accuracy increases stemming from the ordinary capabilities of a general
purpose computer “do[] not materially alter the patent eligibility of the
claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012). Instead, the claims
are more analogous to those in FairWarning, 839 F.3d 1089 (Fed. Cir.
2016), wherein claims reciting “a few possible rules to analyze audit log
data” were found directed an abstract idea because they asked “the same
questions (though perhaps phrased with different words) that humans in
analogous situations detecting fraud have asked for decades.” 839 F.3d at
1094, 1095.
Appellants also attempt to analogize the claims to those involved in
McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed.
Cir. 2016). Br. 11. In McRO, the court held that, although the processes
were previously performed by humans, “the traditional process and newly
claimed method . . . produced . . . results in fundamentally different ways.”
FairWarning v. Iatric Systems, 839 F.3d 1089, 1094 (Fed. Cir. 2016)
(differentiating the claims at issue from those in McRO). In McRO, “it
was the incorporation of the claimed rules not the use of the computer,
that improved the existing technology process,” because the prior process
performed by humans “was driven by subjective determinations rather
than specific, limited mathematical rules.” 837 F.3d at 1314 (internal
quotation marks, citation, and alterations omitted). In contrast, the claims
of the instant application merely implement an old practice of using
decision criteria in making risk decisions in a new environment. Appellants
have not argued that the claimed processes of selecting transactions apply
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rules of selection in a manner technologically different from those which
humans used, albeit with less efficiency, before the invention was claimed.
Merely pigeon holing the objects of decision making to aid decision making
is both old and itself abstract.
The claims in McRO were not directed to an abstract idea, but
instead were directed to “a specific asserted improvement in
computer animation, i.e., the automatic use of rules of a
particular type.” We explained that “the claimed improvement
[was] allowing computers to produce ‘accurate and realistic lip
synchronization and facial expressions in animated characters’
that previously could only be produced by human animators.”
The claimed rules in McRO transformed a traditionally
subjective process performed by human artists into a
mathematically automated process executed on computers.
FairWarning, 839 F.3d at 1094.
CONCLUSIONS OF LAW
The rejection of claims 53–69 under 35 U.S.C. § 101 as directed to a
judicial exception without significantly more is proper.
DECISION
The rejection of claims 53–69 is affirmed.
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