Brian Blank et al.

Patent Trials and Appeals Board

Apr 15, 2020

14214047 - (D) (P.T.A.B. Apr. 15, 2020)

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).
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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;
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[(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.
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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
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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
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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.
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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
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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
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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
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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
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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
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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
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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.
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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
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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
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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.
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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
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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).
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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.
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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