Brian Blank et al.Download PDFPatent Trials and Appeals BoardApr 15, 202014214047 - (D) (P.T.A.B. Apr. 15, 2020) 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. 14/214,047 03/14/2014 Brian BLANK 201818-0430750 7975 909 7590 04/15/2020 Pillsbury Winthrop Shaw Pittman, LLP PO Box 10500 McLean, VA 22102 EXAMINER NGUYEN, TIEN C ART UNIT PAPER NUMBER 3694 NOTIFICATION DATE DELIVERY MODE 04/15/2020 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): docket_ip@pillsburylaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte BRIAN BLANK and BRYAN CHAN ____________ Appeal 2018-006905 Application 14/214,047 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and ROBERT J. SILVERMAN, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s rejection of claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed December 22, 2017) and Reply Brief (“Reply Br.,” filed June 19, 2018), and the Examiner’s Answer (“Ans.,” mailed April 20, 2018) and Non-Final Office Action (“Non-Final Act.,” mailed March 27, 2017). Appellant identifies “The Bank of New York Mellon” as the real party in interest (Appeal Br. 2). Appeal 2018-006905 Application 14/214,047 2 CLAIMED INVENTION Appellant’s claimed invention relates to “a computer-implemented system and method useful for managing collateral associated with Repurchase Agreements (‘Repos’)” (Spec. ¶ 2). Claims 1 and 12 are the independent claims on appeal. Claim 12, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 12. A computer-implemented method for allocating collateral for one or more Tri-Party repurchasing agreements, the method being implemented in a computer system having one or more physical processors programmed with computer instructions that, when executed by the one or more physical processors, cause the computer system to perform the method, the method comprising: [(a)] providing one or more memory elements coupled to the computer system and configured to at least store deal attributes including collateral allocation rulesets associated with the buyer, and one or more collateral characteristics for collateral provided by the seller that are associated with each of the Tri- Party repurchasing agreements; [(b)] recalling, via the computer system, collateral originally associated with the one or more Tri-Party repurchasing agreements into a common dealer box, [(c)] identifying, via the computer system, under- collateralized ones of the one or more Tri-Party repurchasing agreements; [(d)] identifying, via the computer system, using a self organizing map and one or more of the collateral allocation rulesets and the collateral characteristics, groups of the recalled collateral; [(e)] sorting, via the computer system, said groups of collateral such that smaller average margins are given a higher priority while larger average margins are given a lower priority; Appeal 2018-006905 Application 14/214,047 3 [(f)] determining, via the computer system, messaging passing nodes available for performing collateral allocation for said Tri-Party repurchasing agreements; [(g)] assigning, via the computer system, the groups of collateral from the common dealer box to the message passing nodes such that one of the message passing nodes is assigned to each of the one or more Tri-Party repurchasing agreements in order from the higher priority to the lower priority to allocate collateral to said Tri-Party repurchasing agreements; and [(h)] providing, via the computer system, the collateral allocation rulesets to the message passing nodes to cause each of the message passing nodes to allocate collateral to its respective Tri-Party repurchasing agreements in accordance with the collateral allocation rulesets, the performance of collateral allocations by each of the message passing nodes comprising the message passing node performing collateral allocation with respect to the message passing node’s Tri-Party repurchasing agreements by: replacing, via the computer system, at least a portion of the collateral assigned to the one or more Tri- Party repurchasing agreements based on the self organizing map to collateralize a maximal number of the one or more Tri-Party repurchasing agreements with remaining collateral in the dealer box and/or collateral assigned to the one or more Tri-Party repurchasing agreements. REJECTIONS Claims 1–20 are rejected under 35 U.S.C. § 101 as directed to a judicial exception without significantly more. Claims 1–20 are rejected on the ground of nonstatutory double patenting as unpatentable over claims 1–20 of U.S. Patent No. 8,762,246. Appeal 2018-006905 Application 14/214,047 4 ANALYSIS Patent Ineligible Subject Matter Appellant argues the pending claims as a group (Appeal Br. 5–18). We select independent claim 12 as representative. The remaining claims stand or fall with claim 12. See 37 C.F.R. §41.37(c)(1)(iv). Under 35 U.S.C. § 101, an invention is patent eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ — i.e., an element or combination of elements that is ‘sufficient to ensure that the Appeal 2018-006905 Application 14/214,047 5 patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217–18 (alteration in original). In rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that claim 1 is directed to providing rule-based tasks for processing and managing collateral allocations in Tri-Party repurchasing agreements, i.e., to an abstract idea similar to other concepts that the courts have held abstract (Non-Final Act. 3–4), and that the claim does not include additional elements that are sufficient to amount to significantly more than the abstract idea itself (id. at 4–5). The Examiner determined that independent claim 12 and dependent 2–11 and 13–20 are patent ineligible based on the same rationale applied with respect to claim 1 (id. at 6). After Appellant’s briefs were filed and the Examiner’s Answer mailed, the U.S. Patent and Trademark Office (the “USPTO”) published revised guidance for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO’s examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all Appeal 2018-006905 Application 14/214,047 6 applications, and to all patents resulting from applications, filed before, on, or after January 7, 2019. Id.2,3 Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A) The first step in the Mayo/Alice framework, as mentioned above, is to determine whether the claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next consider whether the claim includes additional elements, beyond the judicial exception, that “integrate the [judicial] exception into a practical application,” i.e., that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the 2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.” See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”). Accordingly, Appellant’s arguments challenging the sufficiency of the Examiner’s rejection will not be addressed to the extent those arguments are based on now superseded USPTO guidance. 3 The USPTO issued an update on October 17, 2019 (the “October 2019 Update: Subject Matter Eligibility,” available at https://www.uspto.gov/sites/ default/files/documents/peg_oct_2019_update.pdf) clarifying the 2019 Revised Guidance in response to public comments. Appeal 2018-006905 Application 14/214,047 7 judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception (“Step 2A, Prong Two”). Id. at 54–55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id. We are not persuaded, as an initial matter, that the Examiner overgeneralized the claims as directed to providing rule-based tasks for processing and managing collateral allocations in Tri-Party repurchasing agreements, or that the Examiner otherwise oversimplified the concept to which the claims are directed without taking the actual claim language into account (Appeal Br. 5–6, 12–13; see also Reply Br. 3–4). Instead, Examiner’s characterization of the claims is, in our view, fully consistent with the Specification, as described below, including the claim language. Appellant ostensibly contends otherwise; but, there is no requirement that an examiner’s formulation of the abstract idea must copy the claim language. That the claims include more words than the phrase the Examiner used to articulate the abstract idea, and that the Examiner, thus, articulates the abstract idea at a higher level of abstraction than would Appellant is, accordingly, an insufficient basis to persuasively argue that the claim language has been mischaracterized or that the Examiner has failed to consider the claims as a whole. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another Appeal 2018-006905 Application 14/214,047 8 location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.”). We also decline to find error here to the extent Appellant argues that the § 101 rejection cannot be sustained because the Examiner has not addressed the patent eligibility of each of the dependent claims individually (Appeal Br. 13; see also Reply Br. 5, 7). There is no dispute that examiners are to evaluate the patent eligibility of each claim individually. But, consideration of each claim individually does not require a separate written analysis for each individual claim. Moreover, we agree with the Examiner that the dependent claims are directed to the same abstract idea as independent claims 1 and 12, albeit at differing levels of specificity (Ans. 7). Cf. Content Extraction & Transmission LLC v. Wells Fargo Bank, N.A., 776 F.3d 1343, 1348 (Fed. Cir. 2014) (explaining that when all claims are directed to the same abstract idea, “addressing each claim of the asserted patents [is] unnecessary.”). Appellant’s argument that the Examiner erred in determining that claim 12 is directed to an abstract idea similarly fails (Appeal Br. 11–14, 16– 18). The Federal Circuit has explained that “the ‘directed to’ inquiry applies a stage-one filter to claims, considered in light of the specification, based on whether ‘their character as a whole is directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a specific improvement in relevant technology or on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool. See id. at 1335–36. Here, it is clear from the Specification (including the claim Appeal 2018-006905 Application 14/214,047 9 language) that claim 12 focuses on an abstract idea, and not on any improvement to technology and/or a technical field. The Specification is titled “SYSTEM AND METHOD FOR OPTIMIZING COLLATERAL MANAGEMENT,” and describes, in the Background section, that the application is directed to “a computer- implemented system and method useful for managing collateral associated with Repurchase Agreements (‘Repos’)” and, more particularly, to “a computerized system and method for efficiently allocating the collateral managed by a third party agent (a ‘Tri-Party agent’) in Tri-Party Repos” (Spec. ¶ 2). “In a Repo, a seller . . . sells securities for cash to a buyer . . . and agrees to repurchase those securities at a later date” (id. ¶ 3); Repos are, thus, economically similar to a secured loan with the buyer receiving securities, e.g., bonds, stocks, as collateral to protect against default (id. ¶ 4). The Specification describes that in a Tri-Party Repo, the collateral is managed by a Tri-Party agent, e.g., a bank, which acts as a custodian for the collateral and allows the flow of collateral and cash between buyers and sellers across one or more deals (id. ¶ 6). In some Repo agreements where the seller has numerous assets that are being managed by the Tri-Party agent, the agent also may have authority to restructure the collateral of the deals, so that the seller may free up some assets while placing other agreeable assets in the legal ownership of the buyer (id. ¶ 7). The Specification, thus, states that what is needed is, among other things, “a computer-implemented system and method that simplifies and improves the allocations of collateral associated with Tri-Party Repos in a [seller’s] portfolio” (id. ¶ 8). The claimed invention is intended to address this need by providing a system and method that purportedly enhance the allocation of collateral Appeal 2018-006905 Application 14/214,047 10 associated with one or more Tri-Party repurchasing agreements by identifying instances of overcollateralization and undercollateralization, and ascertaining the optimal allocation of collateral across the plurality of repurchasing agreements (id. ¶¶ 9, 12). Claim 12, thus, recites a method for allocating collateral for one or more Tri-Party repurchasing agreements comprising: (1) storing collateral allocation rulesets and one or more characteristics of the collateral associated with each of the repurchasing agreements, i.e., providing one or more memory elements coupled to the computer system and configured to at least store deal attributes including collateral allocation rulesets associated with the buyer, and one or more collateral characteristics for collateral provided by the seller that are associated with each of the Tri-Party repurchasing agreements (step (a)); (2) “recalling . . . collateral originally associated with the one or more Tri-Party repurchasing agreements into a common dealer box” (step (b)); (3) identifying under-collateralized ones of the Tri-Party repurchasing agreements, and identifying (using a self organizing map, the rulesets, and the collateral characteristics) groups of the recalled collateral, i.e., “identifying, via the computer system, under-collateralized ones of the one or more Tri-Party repurchasing agreements” and “identifying, via the computer system, using a self organizing map and one or more of the collateral allocation rulesets and the collateral characteristics, groups of the recalled collateral” (steps (c) and (d)); and (4) sorting the collateral groups according to average margins, and assigning the groups to message passing nodes in order from higher priority (smaller average margin) to lower priority (larger average margin), each message passing node allocating Appeal 2018-006905 Application 14/214,047 11 collateral to its respective Tri-Party repurchasing agreement in accordance with the collateral allocation rulesets, i.e., sorting, via the computer system, said groups of collateral such that smaller average margins are given a higher priority while larger average margins are given a lower priority; determining, via the computer system, messaging passing nodes available for performing collateral allocation for said Tri- Party repurchasing agreements; assigning, via the computer system, the groups of collateral from the common dealer box to the message passing nodes such that one of the message passing nodes is assigned to each of the one or more Tri-Party repurchasing agreements in order from the higher priority to the lower priority to allocate collateral to said Tri-Party repurchasing agreements; providing, via the computer system, the collateral allocation rulesets to the message passing nodes to cause each of the message passing nodes to allocate collateral to its respective Tri-Party repurchasing agreements in accordance with the collateral allocation rulesets, the performance of collateral allocations by each of the message passing nodes comprising the message passing node performing collateral allocation with respect to the message passing node’s Tri-Party repurchasing agreements by: replacing, via the computer system, at least a portion of the collateral assigned to the one or more Tri- Party repurchasing agreements based on the self organizing map to collateralize a maximal number of the one or more Tri-Party repurchasing agreements with remaining collateral in the dealer box and/or collateral assigned to the one or more Tri-Party repurchasing agreements (steps (e) through (h)). These limitations, when given their broadest reasonable interpretation, recite managing the allocation of collateral associated with Tri-Party repurchase agreements, i.e., a fundamental economic practice (see, e.g., Spec. ¶¶ 7, 8), which is a method of organizing Appeal 2018-006905 Application 14/214,047 12 human activity and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Having concluded that claim 12 recites a judicial exception, i.e., an abstract idea (Step 2A, Prong One), we next consider whether the claim recites additional elements that integrate the judicial exception into a practical application (Step 2A, Prong Two). The only additional elements recited in claim 12 beyond the abstract idea, are a “computer system having one or more physical processors”; “one or more memory elements coupled to the computer system”; a “common dealer box”; a “self organizing map”; and “message passing nodes” — elements that, as the Examiner observed, are recited at a high level of generality (see Final Act. 4 (describing the substantially similar language of claim 1); see also Ans. 5), i.e., as generic computer components; they also are described as such in the written disclosure (see, e.g., Spec. ¶¶ 25–27, 30– 31). We find no indication in the Specification that the operations recited in claim 12 require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any assertedly inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). We also find no indication in the Specification that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor do we find anything of record, short of attorney Appeal 2018-006905 Application 14/214,047 13 argument, that attributes an improvement in technology and/or a technical field to the claimed invention or that otherwise indicates that the claimed invention integrates the abstract idea into a “practical application,” as that phrase is used in the 2019 Revised Guidance.4 Appellant argues that the claims are patent eligible “at least for being directed to a particular useful application that provides an improvement to another technology or technical field (e.g., computer-assisted collateral allocation for a set of deals, etc.)” (Appeal Br. 6; see also id. at 17). And Appellant asserts that the “the claims recite a particular technical solution at least to problems . . . arising from the sub-optimal restructuring (overcollateralization or undercollateralization) of collateral allocations using existing computer systems” (Appeal Br. 6 (citing Spec. ¶¶ 9, 29); see also id. at 17). Yet, we are not persuaded that optimizing the allocation of collateral associated with Third-Party Repos by applying particular collateral allocation rules amounts to a technological improvement, as opposed to an improvement in the abstract idea of processing and managing collateral allocations in Tri-Party repurchasing agreements. See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[P]atent law does not protect such claims[, i.e., claims to an asserted advance in the realm of abstract ideas], without more, no matter how groundbreaking the advance.”). 4 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in describing the considerations that are indicative that an additional element or combination of elements integrates the judicial exception, e.g., the abstract idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. If the recited judicial exception is integrated into a practical application, as determined under one or more of these MPEP sections, the claim is not “directed to” the judicial exception. Appeal 2018-006905 Application 14/214,047 14 Appellant contends in the Reply Brief that “not only does the claimed solution improve the technology or technical field (e.g., collateral management system), it additionally improves the computer functionality of such computer systems (e.g., reduction in overall computing resource usage and faster computation time)” (Reply Br. 5–6). Yet, Appellant’s assertion is but unsupported attorney argument. We find nothing in the Specification, nor does Appellant direct us to anything in the Specification, that attributes any improvement in computer functionality, including any reduction in overall computing resource usage and faster computation time, to the claimed invention. Appellant cites McRO, Inc. v. Bandai Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016) as “holding that the claim at issue uses specific ‘rules in a process specifically designed to achieve an improved technological result in conventional industry practice’ and, ‘therefore, is not directed to an abstract idea’” (Appeal Br. 7). And Appellant ostensibly maintains that the present claims, like the claim in McRO, are not directed to an abstract idea because the claimed solution solves the problems of prior art collateral management systems through the use of message passing nodes and collateral allocation rules that cause the message passing nodes to perform their respective collateral allocations in a “particular way” (id. at 6– 7, 16–17). But, the Federal Circuit did not premise its determination that the claim in McRO was patent eligible merely on the specificity of the claimed animation scheme. Instead, the court determined that the claim there at issue was patent eligible because, when considered as a whole, the claim was directed to a technological improvement over existing, manual 3-D animation techniques and used limited rules in a process specifically Appeal 2018-006905 Application 14/214,047 15 designed to achieve an improved technological result in conventional industry practice. See McRO, 837 F.3d at 1316. In particular, the Federal Circuit found that the claimed rules allow computers to produce accurate and realistic lip synchronization and facial expressions in animated characters that previously could only be produced by human animators. Id. at 1313. Improving the process of restructuring collateral allocations across a plurality of Tri-Party repurchasing agreements by identifying instances of overcollateralization and undercollateralization, and determining the optimal allocation of collateral across the repurchasing agreements in accordance with a set of rules, may well improve a business process. But we are not persuaded that it achieves an improved technological result. We also are not persuaded of Examiner error to the extent Appellant maintains that the claims cannot be held patent ineligible under the first step of the Mayo/Alice framework because Examiner has “provided no evidence of a non-computer-implemented version of some well-known, routine, conventional activity that would otherwise be the same as the claimed process” (Appeal Br. 18 (citing McRO)). The court in McRO rejected the defendants’ argument that the subject claims simply use a computer as a tool to automate conventional activity, noting, “Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims,” and further that “[t]he computer here is employed to perform a distinct process to automate a task previously performed by humans.” McRO, 837 F.3d at 1314. But, we find nothing in McRO to support Appellant’s argument that a patent examiner cannot properly reject a claim under Section 101 if the examiner does not provide evidence that at least a non-computer-implemented version of a computer-implemented Appeal 2018-006905 Application 14/214,047 16 process required by the claims was a well-understood, routine, conventional activity (see Appeal Br. 13; see also id. at 18 (arguing that “there is no evidence to show that the claims in the instant application simply automate a well-understood, routine, conventional activity” and “no evidence of a non- computer-implemented version of some well-known, routine, conventional activity that would otherwise be the same as the claimed process”)). We conclude, for the reasons outlined above, that claim 12 recites a method of organizing human activity, i.e., an abstract idea, and that the additional elements recited in the claim are no more than generic computer components used as tools to perform the recited abstract idea. As such, they do not integrate the abstract idea into a practical application. See Alice Corp., 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.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 12 is directed to an abstract idea. Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B) Having determined under step one of the Mayo/Alice framework that claim 12 is directed to an abstract idea, we next consider under Step 2B of the 2019 Revised Guidance, the second step of the Mayo/Alice framework, whether claim 12 includes additional elements or a combination of elements that provides an “inventive concept,” i.e., whether the additional elements amount to “significantly more” than the judicial exception itself. 2019 Revised Guidance, 84 Fed. Reg. at 56. Appeal 2018-006905 Application 14/214,047 17 Appellant argues here that, contrary to applicable law and guidance, the Examiner failed to provide “any actual analysis to show how the features of the claims in combination with one another as a whole allegedly fail to recite patent-eligible subject matter” (Appeal Br. 14). Instead, according to Appellant, the Examiner “improperly assumed that the claims do not include additional elements that are sufficient to amount to ‘significantly more’ because the claims allegedly recite generic components and functions” (id. at 15; see also Reply Br. 7–8). Citing the Federal Circuit’s holding, in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), that an inventive concept can be found in the non-conventional and non-generic arrangement of known conventional pieces, Appellant maintains that, even if the claimed operations were deemed to be generic computer operations, “[g]eneric computer operations can, in an ordered combination, constitute an inventive concept” (Appeal Br. 15; see also Reply Br. 9). But, Appellant does not identify the allegedly “non-conventional and non-generic” arrangement of elements here that purportedly provides the inventive concept. Moreover, although Appellant ostensibly suggests otherwise (Appeal Br. 14–15), “the relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine.” BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Instead, the question under step two of the Mayo/Alice framework (i.e., step 2B) is whether the claim includes additional elements, i.e., elements other than the abstract idea itself, that “‘transform the nature of the claim’ into a patent-eligible application.” Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). See also Appeal 2018-006905 Application 14/214,047 18 Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (emphasis added)). The Examiner determined here, and we agree, that the only elements recited in claim 12 beyond the abstract idea are the “computer system having one or more physical processors”; “one or more memory elements coupled to the computer system”; “common dealer box”; “self organizing map”; and “message passing nodes,” i.e., generic computer components used to perform generic computer functions (Final Act. 4; see also Ans. 5) — a determination amply supported by, and fully consistent with the Specification (see, e.g., Spec. ¶¶ 25–27, 30–31).5 Appellant cannot reasonably contend, nor does Appellant, that there is inadequate factual support for the Examiner’s finding that the operation of these components is well-understood, routine, or conventional, where, as here, there is nothing in the Specification to indicate that the operations recited in claim 12 require any specialized hardware or inventive computer components or that the 5 The Office’s April 19, 2018 Memorandum to the Examining Corps from Deputy Commissioner for Patent Examination Policy, Robert W. Bahr, entitled, Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.), available at https://www.uspto.gov/sites/default/files/documents/ memo-berkheimer-20180419.PDF, expressly directs that an examiner may support the position that an additional element (or combination of elements) is well-understood, routine or conventional with “[a] citation to an express statement in the specification . . . that demonstrates the well-understood, routine, conventional nature of the additional element(s)” (id. at 3). Appeal 2018-006905 Application 14/214,047 19 claimed invention is implemented using other than generic computer components to perform generic computer functions, e.g., receiving, storing, and processing information. Indeed, the Federal Circuit, in accordance with Alice, has “repeatedly recognized the absence of a genuine dispute as to eligibility” where claims have been defended as involving an inventive concept based “merely on the idea of using existing computers or the Internet to carry out conventional processes, with no alteration of computer functionality.” Berkheimer v. HP, Inc., 890 F.3d 1369, 1373 (Fed. Cir. 2018) (Moore, J., concurring) (internal citations omitted); see also BSG Tech, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract features of the claimed inventions, alone or in combination, are not well- understood, routine and conventional database structures and activities. Accordingly, the district court did not err in determining that the asserted claims lack an inventive concept.”). We are not persuaded, on the present record, that the Examiner erred in rejecting independent claim 12 under 35 U.S.C. § 101. Therefore, we sustain the Examiner’s rejection of claim 12, and claims 1–11 and 13–20, which fall with claim 12. Double Patenting Appellant does not provide any response to the Examiner’s double patenting rejection. Therefore, the rejection is summarily sustained. Appeal 2018-006905 Application 14/214,047 20 CONCLUSION In summary: Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–20 101 Eligibility 1–20 1–20 101 Double Patenting 1–20 Overall Outcome 1–20 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Copy with citationCopy as parenthetical citation