Barry S. Hurewitz et al.

Patent Trials and Appeals Board

Sep 3, 2019

14186223 - (D) (P.T.A.B. Sep. 3, 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.
14/186,223 02/21/2014 Barry S. Hurewitz 100824CON2 1670
26285 7590 09/03/2019
K&L GATES LLP-Pittsburgh
210 SIXTH AVENUE
PITTSBURGH, PA 15222-2613
EXAMINER
KING JR., JOSEPH W
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
09/03/2019 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):
USpatentmail@klgates.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BARRY S. HUREWITZ, VAUGHN S. HARVEY,
ROBERT TREDER, SCOTT SOLOMON,
OMAR MOUSTAFA, and THAMI RACHIDI
____________________

Appeal 2018-004821
Application 14/186,223
Technology Center 3600
____________________

Before ROBERT E. NAPPI, LINZY T. McCARTNEY, and
MICHAEL T. CYGAN, Administrative Patent Judges.

McCARTNEY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants seek review under 35 U.S.C. § 134 of the Examiner’s final
rejection of claims 1–11. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

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BACKGROUND
This patent application concerns “computer-based systems and
methods that determine interest scores for contacts (e.g., consumers) of a
research entity in research work product items produced by the research
entity where the interest scores are indicative of the contacts’ interest or
propensity to read the work product items.” Specification ¶ 5, filed February
21, 2014 (“Spec.”). Claims 1 and 6 are independent. Claim 1 illustrates the
claimed invention:
1. A computerized system for computing a ticker-interest
score of a first contact of a research entity for a first ticker when
the first contact has not accessed previously issued research work
product items produced by the research entity pertaining to the
first ticker over a prior time period, wherein the research entity
has a plurality of contacts, including the first contact, and each
contact is associated with an account, and wherein the research
entity comprises a plurality of research teams that produce
research pertaining to a plurality of tickers, wherein a first
research team produces research pertaining to the first ticker, the
computerized system comprising:
a computer system; and
a computer-based data storage system that stores:
data relating to the plurality of contacts, including
the first contact; and
data indicating a number of times that each contact
in the plurality of contacts downloaded from the computer
system previously issued research work product items
pertaining to the first ticker,
wherein the computer system is in communication with the
computer-based data storage system, wherein the computer
system comprises at least one processor and at least one memory
unit, and wherein the at least one memory unit stores software
that when executed by the at least one processor causes the at
least one processor to:
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segment contacts in a training subset of the plurality of
contacts into two or more groups, wherein each of the contacts
in the training subset:
have downloaded from the computer a threshold
number of previously issued research work product items
pertaining to the first ticker during the prior time period;
and
have one or more of the following characteristics:
the account associated with the contact in the
training subset holds shares of the first ticker;
the account associated with the contact in the
training subset made trades involving the first
ticker; or
the contact in the training subset
communicatively interacted with the first research
team about the first ticker;
fit a propensity model for the two or more groups;
compute the ticker-interest score for the first contact using
the propensity model, wherein the propensity model uses at least
one of the following derived variables for the first contact to
compute the first contact’s ticker-interest score:
a first derived variable that is based on trades of the
account associated with the first contact involving the first
ticker;
a second derived variable that is based on holding
of shares of the first ticker by the account associated with
the first contact;
a third derived variable based on broker votes by the
first contact for the first research team;
a fourth derived variable based on communications
interactions by the first contact with the first research
team; and
a fifth derived variable based on the first contact’s
propensity for accessing research produced by the first
research team.
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Appeal Brief 25–26, filed December 19, 2017 (“App. Br.”).
REJECTION
Claims Basis
Claims 1–11 § 101

DISCUSSION
We have reviewed the Examiner’s rejection and Appellants’
arguments, and we disagree with Appellants that the Examiner erred. As
consistent with the discussion below, we adopt the Examiner’s reasoning,
findings, and conclusion on pages 3–12 of the Final Office Action mailed
January 19, 2017 (“Final Act.”) and pages 3–16 of the Examiner’s Answer
mailed February 5, 2018 (“Ans.”).
Section 101 Rejection
Section 101 of the Patent Act provides that “any new and useful
process, machine, manufacture, or composition of matter, or any new and
useful improvement thereof” is patent eligible. 35 U.S.C. § 101. But the
Supreme Court has long recognized an implicit exception to this section:
“Laws of nature, natural phenomena, and abstract ideas are not patentable.”
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014) (quoting Ass’n for
Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 589 (2013)).
To determine whether a claim falls within one of these excluded categories,
the Court has set out a two-part framework. The framework requires us first
to consider whether the claim is “directed to one of those patent-ineligible
concepts.” Alice, 573 U.S. at 217. If so, we then examine “the elements of
[the] 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.” Alice, 573 U.S. at 217 (quoting Mayo
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Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 78, 79 (2012)).
That is, we examine the claim for an “inventive concept,” “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, 573 U.S. at 217–18 (alteration in original) (quoting
Mayo, 566 U.S. at 72–73).
The Patent Office has revised its guidance about this framework. See
2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50
(Jan. 7, 2019) (“Revised Guidance”). Under the Revised Guidance, to decide
whether a claim is directed to an abstract idea, we evaluate whether the
claim (1) recites subject matter that falls within one of the abstract idea
groupings listed in the Revised Guidance and (2) fails to integrate the recited
abstract idea into a practical application. See Revised Guidance, 84 Fed.
Reg. at 51, 54. If the claim is directed to an abstract idea, as noted above, we
then determine whether the claim has an inventive concept. The Revised
Guidance explains that when making this determination, we should consider
whether the additional claim elements add “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field” or “simply append[] well-understood,
routine, conventional activities previously known to the industry, specified
at a high level of generality.” Revised Guidance, 84 Fed. Reg. at 56.
With these principles in mind, we turn to the merits of the § 101
rejection.
Abstract Idea
The Revised Guidance explains that the abstract idea exception
includes “mental processes” and “certain methods of organizing human
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activity.” Revised Guidance, 84 Fed. Reg. at 52. The Examiner determined
that claim 1 recites subject matter that falls into these abstract idea groups.
See, e.g., Final Act. 6 (determining that claim 1 recites an “idea of itself” and
determines a score similar to a “marketing interest”), 11 (determining that
claim 1 involves “a marketing scheme to determine an interest (interest score
and/or subinterest score) by the contact in the articles and not a
technological improvement”). For the reasons discussed below, we agree.
Mental Processes
Claim 1 recites “[a] computerized system for computing a ticker-
interest score of a first contact of a research entity for a first ticker” in
certain circumstances. App. Br. 25. The computerized system includes “at
least one processor and at least one memory unit, and wherein the at least
one memory unit stores software that when executed by the at least one
processor causes the at least one processor to” perform three steps. App. Br.
25–26. First, the processor “segment[s] contacts in a training subset of the
plurality of contacts into two or more groups,” each contact having certain
characteristics. App. Br. 25. Next, the processor “fit[s] a propensity model
for the two or more groups.” App. Br. 26. Finally, the processor “compute[s]
the ticker-interest score for the first contact using the propensity model,” the
propensity model using one or more derived variables. App. Br. 26.
To the extent that the written description explicitly describes these
steps, the written description indicates that each step encompasses
mathematical calculations. See, e.g., Spec. ¶¶ 42 (disclosing that “K-Means
clustering is used to segment the contacts into groups”), 44–52 (discussing
fitting propensity models and computing interest scores), 79 (“The subject
contact’s ticker interest scores may be computed mathematically based on
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the contact’s readership and interaction scores for the tickers.”); see also
App. Br. 2–3 (mapping the fitting and computing steps to paragraphs 42 and
44–52 of the written description, among others). Claims that call for
performing mathematical calculations, without more, recite mental
processes. See Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350,
1354 (Fed. Cir. 2016) (“In a similar vein, we have treated analyzing
information by steps people go through in their minds, or by mathematical
algorithms, without more, as essentially mental processes within the
abstract-idea category.”). And because claim 1 does not require performing
the recited segmenting, fitting, and computing steps for prohibitively large
sets of data, people can perform the mathematical calculations that these
steps encompass using pen and paper. See App. Br. 25–26; see also Spec.
¶¶ 42, 44–52. Steps that people can perform using pen and paper encompass
mental processes. See, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654
F.3d 1366, 1372 (Fed. Cir. 2011) (determining that a claim that could
“performed in the human mind, or by a human using a pen and paper” was
directed to an unpatentable mental process).
Thus, even though claim 1 requires that a processor perform the
recited segmenting, fitting, and computing steps, these steps encompass
mental processes. See, e.g., Versata Dev. Grp., Inc. v. SAP Am., Inc., 793
F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that
required the use of a computer and still found that the underlying, patent-
ineligible invention could be performed via pen and paper or in a person’s
mind.”); Revised Guidance, 84 Fed. Reg. at 52 n.14 (“If a claim, under its
broadest reasonable interpretation, covers performance in the mind but for
the recitation of generic computer components, then it is still in the mental
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processes category unless the claim cannot practically be performed in the
mind.”). We therefore determine that claim 1 recites mental processes, one
of the abstract idea groupings listed in the Revised Guidance. Revised
Guidance, 84 Fed. Reg. at 52.
Appellants have not persuaded us otherwise. Appellants contend that
Electric Power Group shows that claim 1 is patent eligible. See App. Br. 18–
19. Appellants point out that the patent-ineligible claims in Electric Power
Group did not require a new source or type of information or new techniques
for analyzing the information. App. Br. 18 (quoting Elec. Power Grp., 830
F.3d at 1355). Appellants assert that, in contrast, claim 1 recites a new
source of information (derived variables) and new techniques for analyzing
the information (the segmenting, fitting, and computing steps). App. Br .19.
Thus, in Appellants’ view, Electric Power Group supports Appellants’
argument that claim 1 is patent eligible. App. Br. 19.
We disagree. First, the part of Electric Power Group relied on by
Appellants does not hold that reciting a new source of information or a new
technique for analyzing information inevitably makes a claim patent eligible.
The cited portion merely states that “[t]he claims in this case do not even
require a new source or type of information, or new techniques for analyzing
it. As a result, they do not require an arguably inventive set of components
or methods . . . . They do not invoke any assertedly inventive programming.”
Elec. Power Grp., 830 F.3d at 1355 (citations omitted).
Second, Appellants have provided no persuasive evidence that the
recited derived variables are new sources of information or that the recited
steps are new techniques for analyzing information. See App. Br. 19. The
derived variables include types of information that are indisputably well
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known such as the number of securities traded and the number of securities
held. See App. Br. 26; see also Spec. Table 1 (listing derived variables). And
as discussed above, the segmenting, fitting, and computing steps each
encompass mathematical calculations. See, e.g., Spec. ¶¶ 42, 44–52.
Appellants do not claim to have invented these calculations, and the written
description indicates that at least some of these calculations existed long
before the application at issue was filed. See, e.g., Spec. ¶ 42 (directing
readers to papers published in 1984 and 1994 for details about certain
calculations). We thus find this argument unpersuasive.
Certain Methods of Organizing Human Activity
The segment, fit, and compute steps discussed above also recite
certain methods of organizing human activity. These steps involve
separating specified contacts into at least two groups, fitting a propensity
model for the groups, and computing a “ticker-interest score” for a contact
using the propensity model. See App. Br. 25–26. The written description
indicates that disclosed invention can use the resulting score to “assist the
equity research department (e.g., salespeople of the equity research
department) in disseminating the research work product to the various
contacts of the equity research department in an efficient matter.” Spec.
¶¶ 22–23, 55. That is, the disclosed invention uses the ticker-interest score to
help salespeople efficiently distribute work product.
Because the segment, fit, and compute steps result in information that
helps salespeople efficiently distribute work product, these steps recite a
commercial practice. This commercial practice is similar to other
commercial practices that courts have determined are abstract ideas. See,
e.g., OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362 (Fed. Cir.
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2015) (offer-based price optimization); Bridge & Post, Inc. v. Verizon
Commc’ns, Inc., No. 2018-1697, 2019 WL 2896449, at *4 (Fed. Cir. July 5,
2019) (targeted marketing); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007,
1014 (C.D. Cal. 2014), aff’d, 622 F. App’x 915 (Fed. Cir. 2015) (targeted
advertising). We thus determine that claim 1 recites certain method of
organizing human activity, another of the abstract idea groupings listed in
the Revised Guidance. Revised Guidance, 84 Fed. Reg. at 52.
Practical Application
Because we determine that claim 1 recites abstract ideas, we next
consider whether claim 1 integrates these abstract ideas into a practical
application. See Revised Guidance, 84 Fed. Reg. at 51. In doing so, we
consider whether there are any additional elements beyond the abstract ideas
that, individually or in combination, “integrate the [abstract ideas] into a
practical application, using one or more of the considerations laid out by the
Supreme Court and the Federal Circuit.” Revised Guidance, 84 Fed. Reg. at
54–55.
The Examiner determined that additional elements recited in claim 1
include “a computer system” that comprises “at least one processor and at
least one memory unit” and “a computer-based data storage system.” Final
Act. 7. The Examiner determined that these elements “are recited at a high
level of generality as simply performing generic computer data receipt and
processing functions, data storage and communication routinely used in
computers, computer systems and computer networks, which are being used
in the recited claims to simply carry out the abstract idea.” Final Act. 7.
Appellants argue that claim 1 does not recite a general-purpose
computer that performs generic functions. See App. Br. 10–13. According to
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Appellants, “the explicitly recited functionalities in claim 1 (e.g., segmenting
contacts functionality, fitting a propensity model functionality, and
computing a ticker-interest score using the propensity model functionality)
are beyond generically claimed, court-recognized generic functionalities
provided by a general purpose computer (e.g., merely receiving/storing
data)” and thus claim 1 is patent eligible. App. Br. 12. Appellants assert that
“an off-the-shelf general purpose computer would not perform or be able to
perform such explicitly recited functionalities.” App. Br. 12.
We find these arguments unpersuasive. As an initial matter, the
recited segmenting, fitting, and computing steps that Appellants contend
make claim 1 patent eligible form part of the identified abstract ideas. An
abstract idea itself cannot make patent-ineligible subject matter patentable.
See Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1093 (Fed. Cir.
2019) (“The abstract idea itself cannot supply the inventive concept, ‘no
matter how groundbreaking the advance.’” (quoting SAP Am., Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018)).
In any event, the written description makes clear that the recited
computer components are generic and perform generic functions. For
example, the written description discloses that the terms “computer system”
and “processor” encompass “a processor, microcomputer, minicomputer,
server, mainframe, laptop, personal data assistant (PDA), wireless e-mail
device, cellular phone, pager, processor, fax machine, scanner, or any other
programmable device configured to transmit and/or receive data over a
network.” Spec. ¶ 84 (emphasis added); see also Spec. ¶ 86 (“The computer
systems may comprise one or more processors in communication with
memory (e.g., RAM or ROM) via one or more data buses. . . . The processor
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and the memory may comprise electrical circuits that conduct electrical
current.”).
Although Appellants assert that the recited processor performs
functions that “are beyond generic computer functions” such as the recited
segmenting, fitting, and computing steps, App. Br. 16, the written
description contradicts this assertion. See, e.g., Spec. ¶¶ 81 (“The software
and firmware code [that implement the described embodiments] may be
executed by a processor circuit or any other similar computing device”), 82
(“Moreover, the processes associated with the present embodiments may be
executed by programmable equipment, such as computers or computer
systems and/or processors.”), 84 (explaining that the terms “computer
system” and “processor” include “a processor, microcomputer,
minicomputer, server, mainframe, laptop, personal data assistant (PDA),
wireless e-mail device, cellular phone, pager, processor, fax machine,
scanner, or any other programmable device configured to transmit and/or
receive data over a network”). In any case, as explained above, these steps
encompass performing mathematical calculations. See, e.g., Spec. ¶¶ 42, 44–
52. Performing mathematical calculations is a generic computer function.
See Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”); Bancorp Servs., L.L.C. v. Sun Life Assur. Co. of Canada
(U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“The computer required by
some of Bancorp’s claims is employed only for its most basic function, the
performance of repetitive calculations, and as such does not impose
meaningful limits on the scope of those claims.”).
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As for the recited memory and computer-based data storage system,
the written description discloses that “memory may also include any means
for storing software, including a hard disk, an optical disk, floppy disk,
ROM (read only memory), RAM (random access memory), PROM
(programmable ROM), EEPROM ( electrically erasable PROM) and/or
other computer-readable media.” Spec.¶ 84 (emphasis added). The written
description also discloses that computer-based data storage system 12 (also
referred to as data storage system 12) “comprise[s] a number of data stores,
which may be implemented as computer databases, data files, directories, or
any other suitable system for storing data for use by computers.” Spec.
¶¶ 13, 14 (emphasis added).
Appellants next attack the Examiner’s analysis of claim 1. Appellants
contend the Examiner erred by (1) “fail[ing] to acknowledge” the
segmenting, fitting, and computing steps, (2) “mischaracterizing the”
additional elements recited in the claim, (3) relying on cases that are “not
clearly analogous to the” claim, and (4) ignoring “Supreme Court identified
considerations that support subject matter eligibility.” App. Br. 13, 14, 15,
18.
We see no merit in these arguments. Regarding Appellants’
contention that the Examiner failed to acknowledge the segmenting, fitting,
and computing steps, the Examiner explicitly addressed these steps in the
Final Office Action. The Examiner determined that these steps “simply carry
out” the abstract idea and are analogous to the patent-ineligible subject
matter in cases such as CyberSource and Electric Power Group. Final Act.
6.
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As for Appellants’ argument that the Examiner mischaracterized the
recited additional elements, we see no reversible error in the Examiner’s
characterization. The Examiner properly identified the additional elements
as “a computer system” that comprises “at least one processor and at least
one memory unit” and “a computer based data storage system.” Final Act. 7.
The Examiner determined—and for the reasons discussed above, we agree—
that these elements are generic computer components that perform generic
functions. See Final Act. 3, 7; Ans. 7.
Turning to Appellants’ arguments that the Examiner relied on cases
that are “not clearly analogous to” claim 1 such as Bancorp, Intellectual
Ventures I,1 and buySAFE,2 these arguments largely rest on Appellants’
belief that claim 1 recites “a specified computer” and functionalities
“beyond generic computer functions.” See App. Br. 15–17. But claim 1
simply calls for “a computer system” that comprises “at least one processor
and at least one memory unit” and “a computer based data storage system.”
As discussed above, the written description makes clear that these are
generic computer components that perform generic functions. See, e.g.,
Spec. ¶¶ 42, 44–52, 81–82, 84, 86; see also Alice, 573 U.S. at 226; Bancorp,
687 F.3d at 1278.
Appellants’ argument that the Examiner ignored “Supreme Court
identified considerations that support subject matter eligibility” is equally
unpersuasive. Appellants contend that the Examiner did not address whether
the claimed invention uses a particular machine to apply the abstract idea or

1 Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363
(Fed. Cir. 2015).
2 buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014).

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whether the additional elements are well understood, routine, and
conventional. See App. Br. 17–18. As explained above, claim 1 does not
require using a particular machine to perform the abstract idea; rather, as
found by the Examiner, the claim encompasses using generic computer
components, see Final Act. 3, 7; Ans. 7. And as explained below, the
Examiner correctly determined that additional elements recited in claim 1
are routine. We thus find these arguments unpersuasive.
Finally, Appellants contend that claim 1 is analogous to the patent-
eligible claims in McRO3 because claim 1 “define[s] a particular way to
render specified information into a desired format usable to realize a desired
result” and recites “functionalities [that] enable the recited computer system
to perform functions not previously performed by the computer to reach a
particular solution to an identified problem.” App. Br. 22 (emphases
omitted).
We disagree. In McRO, the claim before the court was “focused on a
specific asserted improvement in computer animation, i.e., the automatic use
of rules of a particular type.” McRO, 837 F.3d at 1314. The rules were
“limited” and had “specific characteristics,” and the claim incorporated “the
specific features of the rules as claim limitations.” McRO, 837 F.3d at 1313,
1316. In contrast, claim 1 recites a series of broad, result-oriented steps and
does not meaningfully limit how the steps are performed. See App. Br. 25–
26. For example, claim 1 does not recite how the processor segments
contacts, fits propensity models, or computes a ticker-interest score. The

3 McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir.
2016).

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claim simply recites that the processor does so. See App. Br. 25–26. Claim 1
is thus distinguishable from the patent-eligible claims in McRO.
At bottom, claim 1 uses generic computer components as tools to
implement the identified abstract ideas. Claim 1 thus does not integrate the
abstract ideas into a practical application. See Alice, 573 U.S. at 223–24
(“[W]holly generic computer implementation is not generally the sort of
‘additional featur[e]’ that provides any ‘practical assurance that the process
is more than a drafting effort designed to monopolize the [abstract idea]
itself.’” (second and third alterations in original) (quoting Mayo, 566 U.S. at
77)). Claim 1 is thus directed to abstract ideas.
Inventive Concept
Finally, because claim 1 is directed to abstract ideas, we consider
whether claim 1 has an inventive concept, that is, whether the additional
elements in the claim “‘transform the nature of the claim’ into a patent-
eligible application.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 78,
79). As discussed above, this requires us to evaluate whether the additional
claim elements add “a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field” or
“simply append[] well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality.”
Revised Guidance, 84 Fed. Reg. at 56.
The Examiner determined that the additional elements recited in claim
1 perform functions “routinely used in computers, computer systems and
computer networks” and cited a number of cases in support of this
determination. Final Act. 7. The Examiner determined that claim 1 thus has
“no ‘inventive concept’ or some element or combination of elements
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sufficient to ensure that the claims in practice amount to ‘significantly more’
than a patent on an ineligible concept.” Final Act. 7–8 (emphases omitted);
see also Ans. 5–6.
In response, Appellants contend that the Examiner incorrectly stated
that determining whether a claim includes additional elements that are well
understood, routine, and conventional is “is simply a factor for the Office to
use in its discretion . . . not a requirement.” Reply Brief 3, filed April 5,
2018 (“Reply Br.”) (quoting Ans. 10) (emphases omitted). Appellants assert
that the Examiner has not shown that the segmenting, fitting, and computing
steps are well understood, routine, and conventional activities and therefore
we should not sustain the Examiner’s § 101 rejection. App. Br. 19–20; Reply
Br. 2–3.
Even if the Examiner incorrectly stated that the well-understood,
routine, and conventional analysis is discretionary, the Examiner explicitly
determined that the recited additional elements perform routine functions.
See Final Act. 7. Appellants have not persuaded us that the Examiner erred
in this respect. As noted above, these steps encompass performing
mathematical algorithms. See, e.g., Spec. ¶¶ 42, 44–52. Performing
mathematical algorithms is a conventional computer function. See Alice, 573
U.S. at 226; Bancorp, 687 F.3d at 1278 (Fed. Cir. 2012); see also SAP, 898
F.3d at 1170 (“Indeed, we think it fair to say that an invocation of already-
available computers that are not themselves plausibly asserted to be an
advance, for use in carrying out improved mathematical calculations,
amounts to a recitation of what is ‘well-understood, routine, [and]
conventional.’” (alteration in original)). In any event, these steps form part
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of the identified abstract idea and thus cannot provide an inventive concept.
See Trading Techs. Int’l, 921 F.3d at 1093.
Appellants also contend that Examiner failed to address whether
dependent claims 5 and 10 recite functions that are not well understood,
routine, and conventional. See App. Br. 20–21. We find this argument
unpersuasive for the same reasons we found similar arguments for claim 1
unpersuasive. Claims 5 and 10 recite functionality that is part of the
identified abstract ideas: computing an interest score. See App. Br. 26, 28.
For this reason alone, this function does not make claims 5 and 10 patent
eligible. See Trading Techs. Int’l, 921 F.3d at 1093. And like the computing
step recited in claim 1, the computing steps recited in these claims
encompass mathematical calculations. See, e.g., Spec. ¶¶ 27, 55. Performing
mathematical calculations is a conventional computer function. See Alice,
573 U.S. at 226; Bancorp, 687 F.3d at 1278 (Fed. Cir. 2012); see also SAP,
898 F.3d at 1170.
Finally, Appellants assert that the “applicant does not claim all
computer systems and all ways of computing a ticker-interest score.” App.
Br. 20. Even if true, this assertion does not show that claim 1 is patent
eligible. “While 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).
In sum, whether we consider the recited additional elements
individually or in combination, these elements “simply append[] well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality.” Revised Guidance, 84 Fed.
Appeal 2018-004821
Application 14/186,223

19
Reg. at 56. We therefore determine that claim 1 does not recite an inventive
concept.
Conclusion
For the reasons discussed above, claim 1 is directed to an abstract idea
and does not have an inventive concept. We therefore sustain the Examiner’s
rejection of claim 1 under § 101. Other than the arguments for dependent
claims 5 and 10 addressed above, Appellants have not presented separate
arguments for the remaining claims. We thus also sustain the Examiner’s
rejections of claims 2–11 under § 101.
DECISION
Claims
Rejected

Basis Affirmed Reversed
1–11 § 101 1–11
Outcome 1–11

No period for taking any action in connection with this appeal may be
extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R. §§ 1.136(a)(1)(iv),
41.50(f), 41.52(b).

AFFIRMED