Ashish Aggarwal et al.

Patent Trials and Appeals Board

Aug 1, 2019

13194960 - (D) (P.T.A.B. Aug. 1, 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.
13/194,960 07/31/2011 Ashish Aggarwal 15548.0282 1031
27890 7590 08/01/2019
STEPTOE & JOHNSON LLP
1330 CONNECTICUT AVENUE, N.W.
WASHINGTON, DC 20036
EXAMINER
BARTLEY, KENNETH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
08/01/2019 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):
hfox@steptoe.com
ipdocketing@steptoe.com
lfielding@steptoe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte ASHISH AGGARWAL,
THOMAS C. BARRENTINE, WILLIAM R. BENNETT,
SARAH JOANNA PHILIP CLAYTON,
NORMAN RONALD DOWNEY III,
CHRISTOPHER B. EWING, WARREN D. HENRY SR.,
PATRICK G. HRDY, TABITHA T. LEECH,
SHELBY S. MACKEY, LEE A. McDAVID JR. GREG
MICHAELSON, ARTHUR J. SHARBEL III,
HEATHER N. SMITH and ELIZABETH D. WRIGHT
____________________

Appeal 2018-004180
Application 13/194,9601
Technology Center 3600
____________________
Before JASON V. MORGAN, JON M. JURGOVAN, and
DAVID J. CUTITTA II, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1–21, all of the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 Appellants identify Regions Financial Corporation as the real party in
interest. See Br. 3.
Appeal 2018-004180
Application 13/194,960

2
STATEMENT OF THE CASE
Invention
According to Appellants, the claimed invention relates to using a
decision tree to “sequentially and dynamically evaluate[] specific decision
points to assign a risk rating to loans and other assets and/or commitments
which warrant risk ratings in the regulatory space.” Spec. 2:6–8.2
Representative Claim
Claims 1 and 12 are independent. Claim 1, reproduced below with
bracketed material added, is representative of the claimed subject matter:
1. A data storage and retrieval system for evaluating a
sequence of decision points comprising:
[(a)] a computer-implemented data management
repository system that receives and stores investment data from
a financial institution,
[(b)] calculates key metrics by generating a debt
service coverage ratio and a loan to value ratio for an
investment, wherein the investment data and calculations
specifically distinguish one regulatory risk rating from
another;
[(c)] transmits the investment data and key metrics
to the decision tree based processing system for
assessment and processing; and
[(d)] a computer-implemented decision tree based
processing system;
wherein:

2 This Decision refers to: (1) Appellant’s Specification filed July 31, 2011
(Spec.); (2) the Final Office Action (Final Act.) mailed April 20, 2017;
(3) the Appeal Brief (Br.) filed November 28, 2017; (4) and the Examiner’s
Answer (Ans.) mailed January 10, 2018.
Appeal 2018-004180
Application 13/194,960

3
[(e)] said computer-implemented decision tree based
processing system is coupled to the computer-implemented data
management repository system,
[(f)] and wherein the decision tree based processing
system receives the transmitted key metrics,
[(g)] defines and selects components of the key metrics
[(h)] and receives subjective responses that augment the
selected components of the key metrics and distinguish among
regulatory risk ratings,
[(i)] said investment data calculations, and assessments
of factors that distinguish among regulatory risk ratings are
input into the decision tree based processing system;
and
[(j)] said computer-implemented decision tree based
processing system sequentially and dynamically evaluates
decision points to assign a risk rating to the investment,
[(k)] wherein the evaluation sequence of decision points
is determined by the outcome of previous decision points and
the system allows for a differential sequential evaluation of the
decision points.
Br. 11–12.

REFERENCES
The Examiner relies upon the following prior art3 in rejecting the
claims on appeal:
Fletcher US 6,112,190 Aug. 29, 2000
Friedman US 2005/0278246 A1 Dec. 15, 2005
Mahoney US 7,287,008 B1 Oct. 23, 2007
Wesley US 7,558,756 B1 July 7, 2009
Rafael Olivas, Decision Trees - A Primer for Decision-making Professionals
(2007) (“Olivas”).

3 All citations to the references use the first-named inventor only.
Appeal 2018-004180
Application 13/194,960

4
Mondaq Ltd., SEC to Consider Proposal Regarding Status under the
Advisers Act of Broker-Dealers That Provide Advisory Services, Mondaq
Business Briefing (2005) (“SEC”).

REJECTIONS
Claims 1–21 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. See Final Act. 8–15.
Claims 1–11 stand rejected under 35 U.S.C. § 112, first paragraph as
failing to comply with the written description requirement. See Final Act.
12–13.
Claims 1–11 stand rejected under 35 U.S.C. § 112, second paragraph
as indefinite. See Final Act. 14.
Claims 1, 2, 4, and 8 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Fletcher, Friedman, and Olivas. See
Final Act. 15–23.
Claim 3 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Fletcher, Friedman, Olivas, and SEC.
See Final Act. 23–24.
Claims 5–7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Fletcher, Friedman, Olivas, and
Wesley. See Final Act. 25–26.
Claims 9–11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Fletcher, Friedman, Olivas, and
Mahoney. See Final Act. 27–28.
Claims 12–14 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Friedman, Fletcher, and Olivas. See
Final Act. 28–35.
Appeal 2018-004180
Application 13/194,960

5
Claims 15–17 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Friedman, Fletcher, Olivas, and
Wesley. See Final Act. 35–36.
Claims 19–21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Friedman, Fletcher, Olivas, and
Mahoney. See Final Act. 37–38.
Our review in this appeal is limited to the above rejections and the
issues raised by Appellants. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. § 41.37(c)(1)(iv).
ANALYSIS
Rejection under 35 U.S.C. § 101
I. 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 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. Pty. Ltd. 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 Supreme Court’s two-step 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 id. 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
Appeal 2018-004180
Application 13/194,960

6
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, 67–68 (1972)).
Concepts determined to be patent eligible include physical and chemical
processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S.
175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing
India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56
U.S. 252, 267–68 (1853))); 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 176; 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
Appeal 2018-004180
Application 13/194,960

7
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. “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.
The PTO recently published revised guidance on the application of
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). Under that guidance, 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 activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed.
Rev. 08.2017, Jan. 2018)).
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:
Appeal 2018-004180
Application 13/194,960

8
(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, conventional activities
previously known to the industry, specified at a high level of
generality, to the judicial exception.
See Guidance, 84 Fed. Reg. at 56.

II. The Examiner’s § 101 Rejection
The Examiner determines that representative4 claim 1 is directed to a
judicial exception: an abstract idea. See Final Act. 8–10; Ans. 5–7.
According to the Examiner, claim 1 recites “the concept of evaluating risk
using a decision tree, which corresponds to concepts identified as abstract
ideas by the courts” because “[a]ll of these concepts relate to automation of
concepts in the economy and commerce and as claimed are fundamental
economic practices.” Final Act. 9. The Examiner also determines “[t]he
claims do not include additional elements that are sufficient to amount to
significantly more than the judicial exception because the additional
elements when considered both individually and as an ordered combination
do not amount to significantly more than the abstract idea.” Id.
We analyze the claims and the Examiner’s rejection in view of the
Guidance and we adopt the nomenclature for the steps used in the Guidance.

4 Appellants argue the claims as a group. See Br. 5–8. We, thus, select
independent claim 1 as representative of claims 1–21. See 37
C.F.R. § 41.37(c)(1)(iv).
Appeal 2018-004180
Application 13/194,960

9
III. Step 1 in the Guidance (Statutory Class)
Analyzing the Examiner’s rejection in view of the Guidance, we must
first determine whether the claim is directed to a statutory class of invention.
Section 101 provides that “[w]hoever 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.” 35 U.S.C. § 101. Independent
claim 1 recites a data storage and retrieval system and independent claim 12
recites a computer-implemented method. As such, the claims are directed to
statutory classes of invention within 35 U.S.C. § 101, i.e., a machine and a
process, respectively.

IV. Step 2A, Prong 1 in the Guidance (Alice/Mayo–Step 1)
(Judicial Exceptions)
Next, we determine whether claim 1, being directed to a statutory
classes of invention, nonetheless falls within a judicial exception. See
Guidance, 84 Fed. Reg. at 51. Apart from generic hardware and extra-
solution activity discussed separately below, claim 1 recites (a) a computer-
implemented data management repository system that” (b) calculates key
metrics by generating a debt service coverage ratio and a loan to value ratio
for an investment” and (d) “a computer-implemented decision tree based
processing system” that (g) “defines and selects components of the key
metrics,” (j) “sequentially and dynamically evaluates decision points to
assign a risk rating to the investment,” (k) “wherein the evaluation sequence
of decision points is determined by the outcome of previous decision points
and the system allows for a differential sequential evaluation of the decision
points.” Br. 11–12.
Appeal 2018-004180
Application 13/194,960

10
At a high level, as determined by the Examiner, these claimed steps
“describe the concept of evaluating [investment] risk using a decision tree.”
Final Act. 9. We therefore agree with the Examiner that these limitations
recite a fundamental economic practice (see Final Act. 9) as they “assign a
risk rating to loans and other assets and/or commitments which warrant risk
ratings in the regulatory space (Spec. 2:6–9).” Fundamental economic
practices fall into the category of certain methods of organizing human
activity and claim 1, therefore, recites a judicial exception, i.e., an abstract
idea. See 84 FR 52.

V. Step 2A, Prong Two in the Guidance
(Integration into a Practical Application)
Because claim 1 recites an abstract idea, we now determine whether
the claim is directed to the abstract idea itself or whether it is instead
directed to some technological implementation or application of, or
improvement to, this idea, i.e., integrated into a practical application. See,
e.g., Alice, 573 U.S. at 223, discussing Diehr, 450 U.S. at 175. We
determine whether the recited judicial exception is integrated into a practical
application of that exception by: (a) identifying whether there are any
additional elements recited in the claim beyond the judicial exception or
exceptions; and (b) evaluating those additional elements individually and in
combination to determine whether they integrate the exception into a
practical application.
The Examiner determines that in claim 1, “[t]here is no indication that
the combination of elements improves the functioning of a computer or
improves any other technology. Their collective functions merely provide
conventional computer implementation.” Final Act. 10.
Appeal 2018-004180
Application 13/194,960

11
Appellants argue claim 1 “enhance[s] the functioning of the computer
itself with the claimed . . . systems that improve the computer software’s
abilities to both assess, integrate and improve the speed and accuracy of data
flow.” Br. 8.
We are not persuaded that the claimed abstract idea is integrated into a
practical application. Aside from the abstract idea, claim 1 additionally
recites a computer-implemented data management repository system that (a)
receives and stores investment data from a financial institution and (c)
transmits the investment data and key metrics. A mere data gathering step—
such as recited in (a)—is insignificant extra-solution activity insufficient to
render the claim patent-eligible. See In re Bilski, 545 F.3d at 963
(characterizing data gathering steps as insignificant extra-solution activity).
Furthermore, a similar conclusion applies to the transmitting of data recited
in (c). Specifically, such outputting of data is insignificant post-solution
activity. Flook, 437 U.S. 584 at 590 (“[t]he notion that post-solution
activity, no matter how conventional or obvious in itself, can transform an
unpatentable principle into a patentable process exalts form over substance.).
Claim 1 additionally recites (d) “a computer-implemented decision
tree based processing system” that (f) “receives the transmitted key metrics,”
(h) “receives subjective responses that augment the selected components of
the key metrics” and (i) “said investment data calculations, and assessments
of factors that distinguish among regulatory risk ratings are input into the
decision tree based processing system.” As in the “computer-implemented
data management repository system,” discussed above, such receiving and
inputting of data is mere data gathering and recites insignificant extra-
solution activity that is insufficient to render the claim patent-eligible. See
Appeal 2018-004180
Application 13/194,960

12
In re Bilski, 545 F.3d at 963; see also Content Extraction & Transmission
LLC v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343, 1347 (Fed. Cir.
2014) (“collecting data, . . . recognizing certain data within the collected
data set, and . . . storing that recognized data in a memory.”).
Appellants argue the claimed system represents an improvement to
computer-related technology as in McRO, because the “system receives the
transmitted key metrics from the data management repository, defines and
selects components of the key metrics and receives subjective responses that
augment the selected components of the key metrics and distinguish among
regulatory risk ratings, the system allowing for a differential sequential
evaluation of the decision points.” Br. 7 (citing McRO, Inc. v. Bandai
Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)).
Appellants’ argument based on McRO is unpersuasive because
Appellants’ claim 1 is unlike the claims in McRO. The patent at issue in
McRO describes that, prior to the claimed invention, character animation and
lip synchronization were accomplished by human animators with the
assistance of a computer, and 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, manually
determined the appropriate morph weight sets for each keyframe based on
the phoneme timings in the timed transcript. Id.
Appeal 2018-004180
Application 13/194,960

13
Thus, in McRO, the improvement in computer animation was realized
by using “rules, rather than artists [i.e., human animators], to set the morph
weights and transitions between phonemes” (id. at 1313 (citation omitted)),
i.e., in McRO, the invention used “rules to automatically set a keyframe at
the correct point to depict more realistic speech, achieving results similar to
those previously achieved manually by animators.” Id. at 1307. The rules in
McRO, thus, allowed the computer to solve a technological problem by
producing accurate and realistic synchronization in animated characters that
could only previously be produced by humans.
In contrast with McRO, Appellants do not identify any specific rules
in the claim that are used by the claimed computer system to solve a
technological problem, let alone identify specific rules that act in the same
way as the specific rules enabling the computer in McRO to generate
computer animated characters. Rather, Appellants’ claim 1 merely
calculates investment risk-related metrics and evaluates decision points input
into a decision tree to assign a risk rating for an investment. No
technological rules are identified in the claim; rather the claim broadly
recites using “investment data calculations, and factors that distinguish
among regulatory risk ratings” “to evaluate[] decision points to assign a risk
rating to the investment.” Br. 12. We, therefore, find insufficient evidence
to support Appellants’ argument that claim 1 is similar to the claim in
McRO, where computers were unable to make certain subjective
determinations, i.e., regarding morph weight and phoneme timings, which
could only be made prior to the McRO invention by human animators.
Also, we agree with the Examiner that the solution addressed by
Appellants’ claim is a business problem, not a technical problem. Ans. 8
Appeal 2018-004180
Application 13/194,960

14
(“Using a computer-implemented decision tree to assign a risk rating to an
investment is solving a business problem not a technical problem.”). Rather
than addressing a problem unique to the technology in which the solution is
implemented, Appellants’ claim 1 merely automates, using generic computer
technology, a business process in which decision points are evaluated to
assign a risk rating to investments. As set forth in the Specification, the
invention “provides an objective process for generating a risk rating to these
distressed loans and other assets” by “defining the components of selected
key risk metrics” and “then augment[ing] these objective measures with
more subjective responses [input by a user] to questions carefully focused on
the factors that distinguish one regulatory risk rating from another.”
Spec. 3:9–12. Thus, claim 1 is directed to rating investment risk, which is
not an improvement to technology and does not recite a particular solution to
a technological problem or a particular way to achieve a desired outcome by
reciting an improvement to technology. See MPEP § 2106.05(a).
In addition, Appellants’ claimed additional elements do not require a
particular computer and so the claim also does not define or rely on a
“particular machine.” See MPEP § 2106.05(b). Further, the claim does not
transform matter; at best, it transforms information. That is, the claim
simply manipulates and outputs data such as by calculating and transmitting
key metrics. See MPEP § 2106.05(c); see also Benson, 409 at 71–72)
(holding that a computer based algorithm that merely transforms data from
one form to another is not patent-eligible). As such, the claim has no other
meaningful limitations (see MPEP § 2106.05(e)), and merely recites
instructions to execute an abstract idea on a generic computer hardware (see
Appeal 2018-004180
Application 13/194,960

15
MPEP § 2106.05(f)), along with insignificant extra-solution activity. See
MPEP § 2106.05(g).
We, therefore, determine claim 1 is not directed to a specific asserted
improvement in computer technology or otherwise integrated into a practical
application and thus is directed to a judicial exception.

VI. Step 2B in the Guidance (Alice/Mayo, Step 2) (Inventive Concept)
Next, we determine whether the claim includes additional elements
that provide significantly more than the recited judicial exception, thereby
providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566
U.S. at 72–73). To determine whether the claim provides an inventive
concept, the additional elements are considered—individually and in
combination—to determine whether they (1) add a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field or (2) simply append well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56.
The Examiner determines “[t]he use of generic computer components
to perform functions such as receiving, calculating, generating, transmitting,
defining and selecting, processing, inputting and (sequentially and
dynamically) evaluating does not impose any meaningful limit on the
computer implementation of the abstract idea.” Final Act. 10. Thus, “the
additional elements do not amount to significantly more than the above-
identified judicial exception (the abstract idea).” Id. We agree with the
Examiner.
Appeal 2018-004180
Application 13/194,960

16
Appellants argue the ordered combination of claim elements contains
an inventive concept. See Br. 5–6. Specifically, Appellants argue [t]he
claims are directed to significantly more than a fundamental economic
practice” because, like the claims in Bascom, “[t]hey are directed to a
specific system and methods in the field of data processing and computer
networks with a particular combination of steps and elements that allow a
differential sequential evaluation of the decision points.” Br. 7 (citing
Bascom Global Internet Services v. AT&T Mobility, LLC, 827 F.3d 1341
(Fed. Cir. 2016)).
The claims in Bascom described a particular arrangement of filtering
software at a specific location, remote from the end-users, with customizable
filtering features specific to each end user. The filtering software enabled
individually customizable filtering at the remote ISP server by taking
advantage of the technical ability of the ISP server to identify individual
accounts and associate a request for Internet content with a specific
individual account. The Federal Circuit recognized that Bascom’s
installation of an Internet content filter at a particular network location was
“a technical improvement over prior art ways of filtering such content”
because such an arrangement advantageously allows the Internet content
filter to have “both the benefits of a filter on a local computer and the
benefits of a filter on the ISP server” and “give[s] users the ability to
customize filtering for their individual network accounts.” Bascom, 827
F.3d at 1350, 1352.
In contrast to Bascom, Appellants’ claim 1 is directed to a data storage
and retrieval system for “generating a risk rating to these distressed loans
and other assets.” Spec. 3:8–9. As recognized by the Examiner, “[t]he
Appeal 2018-004180
Application 13/194,960

17
storage and retrieval and computer-implemented repository system are
recited at a high level of generality and are recited as performing generic
computer functions routinely used in computer applications.” Final Act. 10.
Appellants, in turn, do not identify the ordered combination in the claim that
allegedly adds significantly more to the abstract idea to provide an inventive
concept.
Considering the claimed functions of those computing components,
both separately and as an ordered combination, we agree with the Examiner
that those computer functions are generic, routine, and conventional
computer activities that are performed only for their conventional uses in an
ordinary manner. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353
(Fed. Cir. 2016) (“The focus of the asserted claims . . . is on collecting
information, analyzing it, and outputting certain results of the collection and
analysis.”); see also In re Katz Interactive Call Processing Patent Litigation,
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.”); see also 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). Indeed, the Specification describes that the computing
elements are generic computing elements. See Spec. Fig. 1 (illustrating
generic computing components used for both decision tree based processing
system 300 and data management repository system 400).
Additionally, Appellants’ argument that “the claims are specific and
detailed” and recite “limitations, which together make clear that the field of
Appeal 2018-004180
Application 13/194,960

18
data processing is not being tied up” does not persuade us that the claim is
directed to patent-eligible subject matter. Br. 8. As noted by the Examiner
(Ans. 10), 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). Where claims are deemed to recite only patent-ineligible subject
matter under the Alice analysis, as they are here, “preemption concerns are
fully addressed and made moot.” Id.
We, thus, conclude that claim 1 does not provide an inventive concept
because the additional elements recited in claim 1 do not provide
significantly more than the recited judicial exception. Accordingly, claim 1
does not recite patent-eligible subject matter. Because claim 1 is argued as
representative of the other claims, we also conclude that independent claim
12 and dependent claims 2–11 and 13–21 do not recite patent-eligible
subject matter. Therefore, we sustain the rejection of claims 1–21 under 35
U.S.C. § 101 as being directed to patent-ineligible subject matter.

Rejection Under 35 U.S.C. § 112, first paragraph
The Examiner rejects claims 1–11 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
See Final Act. 13–14. Appellants do not provide arguments disputing the
rejection. See Ans. 10–11. We, therefore, summarily affirm the rejection.
See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the
appellant fails to contest a ground of rejection to the Board, . . . the Board
may treat any argument with respect to that ground of rejection as waived.”).

Appeal 2018-004180
Application 13/194,960

19
Rejection Under 35 U.S.C. § 112, second paragraph
Claim 1 recites, in part, “calculates key metrics by generating a debt
service coverage ratio and a loan to value ratio for an investment, wherein
the investment data and calculations specifically distinguish one regulatory
risk rating from another.” Br. 11. The Examiner rejects this limitation
under 35 U.S.C. § 112, second paragraph, as indefinite. See Final Act. 14.
Specifically, the Examiner finds claim 1 “has ‘the investment data and
calculations specifically distinguish one regulatory risk rating from another’
where it is indefinite as to [how] data and calculations specifically
distinguish one regulatory risk rating from another. Further there is no
teaching in the disclosure as to how data and calculations can distinguish
anything.” Final Act. 14.
In response, Appellants argue claim 1 “recite[s] that investment data
calculations, and assessments of factors that distinguish among regulatory
risk ratings are input into the decision tree based processing system. Thus,
the investment data and calculations contribute to the factors assessed by
thethat [sic] specifically distinguishes one regulatory risk rating from
another.” Br. 8.
“The legal standard for definiteness is whether a claim reasonably
apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d
1354, 1361 (Fed. Cir. 1994) (citation omitted). “‘[A] claim is indefinite
when it contains words or phrases whose meaning is unclear.’” In re
Packard, 751 F.3d 1307, 1310, 1314–15 (Fed. Cir. 2014) (citing Manual of
Patent Examining Procedure (MPEP) § 2173.05(e)).
We agree with the Examiner that the claim contains words or phrases
whose meaning is unclear. The limitation at issue recites “calculations” that
Appeal 2018-004180
Application 13/194,960

20
“specifically distinguish one regulatory risk rating from another” but it is not
clear whether the recited calculations refer to the calculated key metrics
recited in the same limitation or some other calculations not recited in the
claim. Accordingly, for this reason alone we affirm the Examiner’s § 112,
second paragraph rejection.
The Examiner further notes that according to the Specification, all
three of (1) the received investment data, (2) calculations, and (3) subjective
assessments of factors must be input to the decision tree and that claim 1
only recites calculating the key metrics using (1) the received investment
data and (2) calculations. See Ans. 11 (citing Spec. 5:27–30). Appellants,
by not filing a Reply Brief, do not address this issue.
Although Appellants’ remarks are not sufficiently responsive to the
Examiner’s concerns we note that the issues raised by the Examiner would
be more properly addressed under 35 U.S.C. § 112, first paragraph. Setting
aside the ambiguity discussed above and assuming that the “calculations”
referred to in line 6, correspond to the “calculates key metrics” of line 5,
claim 1 broadly recites the function of calculating and the result obtained
from the calculating, i.e., “calculations [that] specifically distinguish one
regulatory risk rating from another.” The Specification, as noted by the
Examiner, does not explain how this result is obtained. See Ans. 11;
Spec. 5:28–31. The written description requirement is not met if the
specification merely describes a “desired result” using functional language.
See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir.
2010) (en banc). For software, this can occur when the algorithm or steps
for performing the computer function are not explained at all or are not
explained in sufficient detail in the specification. It is not enough that one
Appeal 2018-004180
Application 13/194,960

21
skilled in the art could write a program to achieve the claimed function
because the specification must explain how the inventor intends to achieve
the claimed function to satisfy the written description requirement. See, e.g.,
Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683
(Fed. Cir. 2015); MPEP 2161.01(1).
In summary, we sustain the Examiner’s 112, second paragraph,
rejection because it is unclear whether the recited calculations in claim 1
refer to the calculated key metrics recited in the same limitation or some
other calculations not recited in the claim.5

Rejection Under 35 U.S.C. § 103(a)
Claim 1 is rejected under 35 U.S.C. § 103(a) over the combination of
Fletcher, Friedman, and Olivas. See Final Act. 15–22. Claim 1 recites, in
part, “said computer-implemented decision tree based processing system
sequentially and dynamically evaluates decision points to assign a risk rating
to the investment.” Br. 12. The Examiner finds Fletcher’s disclosure of
using a computer-based “evidence tree that includes a generalized weighing
approach to represent how credit officers evaluate objective and subjective
elements of a credit decision” teaches using a decision tree to assign a risk
rating to an investment, as in claim 1. Final Act. 19 (citing Fletcher 6:42–
55). The Examiner finds Olivas’s general discussion of decision trees

5 In the event of further prosecution, we suggest the Examiner reject claim 1
under 35 U.S.C. § 112, first paragraph, for the same reasoning presented in
the 35 U.S.C. § 112, second paragraph, rejection in the Final Action and the
Answer. See Final Act. 13–14; Ans. 11. We also note that there are other
antecedent basis issues including for “decision tree based processing
system” in lines 8–9 of claim 1. See Br. 11.
Appeal 2018-004180
Application 13/194,960

22
teaches that decision trees are effective for dynamic and sequential decision
making because decision trees “quickly express complex alternatives
clearly” and are “helpful in comprehending sequential decisions and
outcome dependencies.” Final Act. 21–22 (citing Olivas § 1.1). The
Examiner determines “[i]t would have been obvious to one of ordinary skill
in the art at the time of invention to include in the evidence (decision) tree
method and system of the combined references [Fletcher and Friedman] the
ability to use decision trees for sequential and dynamic analysis as taught by
Olivas.” Final Act. 22.
Appellants dispute the Examiner’s factual findings. Appellants argue
Olivas does not teach the disputed limitation, because Olivas:
is a general document on decision trees, referencing a graphic
showing chance events and possible outcomes. This in no way,
teaches or suggests a computer-implemented decision tree
based processing system sequentially and dynamically
evaluates decision points to assign a risk rating to the
investment, let alone one that receives subjective responses that
augment the selected components of the key metrics and
distinguish among regulatory risk ratings, said investment data
calculations, and assessments of factors that distinguish among
regulatory risk ratings, and allowing for a differential sequential
evaluation of the decision points.
Br. 9–10.
We are unpersuaded because we agree with the Examiner that
“Appellant[s are] using piecemeal analysis to argue their claims.” Ans. 13.
The Examiner relies on the combination of Olivas with Fletcher and
Friedman, not Olivas alone, to teach the disputed limitation. By arguing
Olivas alone, rather than the cited combination of references, Appellants’
argument does not address the actual reasoning of the Examiner’s rejection.
Appeal 2018-004180
Application 13/194,960

23
Appellants, consequently, have not shown error in the Examiner’s factual
findings.
Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection
of independent claim 1 as well as the rejection of independent claim 12, and
dependent claims 2–11 and 13–20, which are not argued separately. See
Br. 9–10.

DECISION
We affirm the Examiner’s decision to reject claims 1–21 under
35 U.S.C. § 101.
We affirm the Examiner’s decision to reject claims 1–11 under
35 U.S.C. § 112(a).
We affirm the Examiner’s decision to reject claims 1–11 under
35 U.S.C. § 112(b).
We affirm the Examiner’s decision to reject claims 1–21 under
35 U.S.C. § 103(a).
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.
§ 41.50(f).
AFFIRMED