Barry S. Hurewitz et al.Download PDFPatent Trials and Appeals BoardSep 3, 201914186223 - (D) (P.T.A.B. Sep. 3, 2019) Copy Citation 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. Appeal 2018-004821 Application 14/186,223 2 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: Appeal 2018-004821 Application 14/186,223 3 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. Appeal 2018-004821 Application 14/186,223 4 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 Appeal 2018-004821 Application 14/186,223 5 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 Appeal 2018-004821 Application 14/186,223 6 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 Appeal 2018-004821 Application 14/186,223 7 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 Appeal 2018-004821 Application 14/186,223 8 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 Appeal 2018-004821 Application 14/186,223 9 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. Appeal 2018-004821 Application 14/186,223 10 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 Appeal 2018-004821 Application 14/186,223 11 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 Appeal 2018-004821 Application 14/186,223 12 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.”). Appeal 2018-004821 Application 14/186,223 13 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. Appeal 2018-004821 Application 14/186,223 14 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). Appeal 2018-004821 Application 14/186,223 15 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). Appeal 2018-004821 Application 14/186,223 16 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 Appeal 2018-004821 Application 14/186,223 17 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 Appeal 2018-004821 Application 14/186,223 18 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 Copy with citationCopy as parenthetical citation