HELLMAN, ROBERT B. et al.

Patent Trials and Appeals Board

Mar 26, 2020

12909320 - (D) (P.T.A.B. Mar. 26, 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.
12/909,320 10/21/2010 ROBERT B. HELLMAN JR. AIMF-001/00US
306335-2001
5657
58249 7590 03/26/2020
COOLEY LLP
ATTN: IP Docketing Department
1299 Pennsylvania Avenue, NW
Suite 700
Washington, DC 20004
EXAMINER
SHEIKH, ASFAND M
ART UNIT PAPER NUMBER
3627
NOTIFICATION DATE DELIVERY MODE
03/26/2020 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):
zIPPatentDocketingMailboxUS@cooley.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT B. HELLMAN and EDWARD O. DIFFENDAL
Appeal 2018-008227
Application 12/909,320
Technology Center 3600
Before MIRIAM L. QUINN, IRVIN E. BRANCH, and AMBER L. HAGY,
Administrative Patent Judges
HAGY, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2 and 3, which are all of the pending
claims.2 See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as American
Infrastructure Funds LLC. Br. 1.
2 Claim 1 has been canceled. Br. 7 (Claims App.).
Appeal 2018-008227
Application 12/909,320

2
CLAIMED SUBJECT MATTER
According to Appellant, the Specification describes and claims a
“computer-implemented technique for operating public infrastructure as a
master limited partnership.” Spec. ¶ 3. By way of background, Appellant’s
Specification describes a “master limited partnership” as a “corporate
organization governed by a contract between management (e.g., general
partners) and investors (e.g., limited partners),” and notes such partnerships
have been used to “capitalize on mature, low growth, cash generating
business” in “industries such as oil, gas, real estate, and natural resources.”
Id. Appellant’s Specification also notes that use of master limited
partnerships (MLPs) has declined in recent years after tax advantages of
using such partnerships were reduced. Id. ¶ 8. Appellant’s Specification
also notes that “[t]he decline in the use of MLP structures has coincided with
the decline in public infrastructure in the United States,” and states that “it
would be desirable to provide a means (via a computer-implemented
technique) for public infrastructure to have a new source of financing by
operating as a master limited partnership.” Id. ¶¶ 11, 13.
Claims 2 and 3 are both independent claims. Claim 2, reproduced
below, illustrates the claimed subject matter:
2. A computer, comprising:
a processor;
a network interface circuit connected to the processor, the
network interface circuit providing connectivity to a computer
network; and
a memory storing
capital data characterizing capital raised for the
purchase of real property supporting public
Appeal 2018-008227
Application 12/909,320

3
infrastructure, wherein the public infrastructure is a road
or bridge accessible to the general public,
operating data characterizing qualifying fees
collected in connection with the operation of the public
infrastructure, wherein the qualifying fees are in the form
of tolls, which are designated as rental income of real
property,
a master limited partnership module with
executable instructions executed by the processor to
designate master limited partnership income based upon
the capital data, the operating data and terms of a public
infrastructure master limited partnership; and
a regulatory report module with executable
instructions executed by the processor to produce
regulatory data for submission to the Securities and
Exchange Commission via the computer network.
REFERENCES3
The prior art relied upon by the Examiner is:
Smith II (“Smith”)
Poltorak
US 2004/0098666 A1
US 2008/0046353 A1
May 20, 2004
Feb. 21, 2008
Baker US 8,249,971 B2 Aug. 21, 2012

Ng, A. et al., (2007). Risk allocation in the private provision of public
infrastructure. International Journal Of Project Management, 25(1), 66–76
(“Ng”).
REJECTIONS4
Claims 2 and 3 stand rejected under 35 U.S.C. § 101 as being directed
to patent-ineligible subject matter (abstract idea). Final Act. 5–6.

3 All reference citations are to the first named inventor only.
4 The Leahy-Smith America Invents Act (“AIA”) included revisions to 35
U.S.C. § 103 that became effective on March 16, 2013. Because the present
application claims priority to an application filed before March 16, 2013, the
Appeal 2018-008227
Application 12/909,320

4
Claims 2 and 3 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over the combination of Baker, Ng, Poltorak, and Smith. Final
Act. 7–10.
OPINION
I. Section 101 Rejection
The Examiner rejects both pending claims under 35 U.S.C. § 101 as
patent-ineligible because they are directed to a judicial exception without
significantly more. Final Act. 2–3, 5–6; Ans. 3–4. Appellant argues that the
claims are not directed to an abstract idea, are directed to patent-eligible
subject matter, and the Examiner’s rejection should be reversed. Br. 3–4.
For the reasons explained below, we are not persuaded of Examiner error in
the § 101 rejection, and we, therefore, sustain that rejection.
A. Principles of Law
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 U.S. Supreme Court, however, has 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) (citation omitted).
The Court, in Alice, reiterated the two-part framework previously set
forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc.,
566 U.S. 66, 75–77 (2012), “for distinguishing patents that claim laws of
nature, natural phenomena, and abstract ideas from those that claim patent-

Examiner applies the pre-AIA version of the statutory basis for
unpatentability. Final Act. 2.
Appeal 2018-008227
Application 12/909,320

5
eligible applications of those concepts.” Alice, 573 U.S. at 217. The first
part in the analysis is to “determine whether the claims at issue are directed
to one of those patent-ineligible concepts.” Id. For example, abstract ideas
include, but are not limited to, fundamental economic practices, methods of
organizing human activities, an idea of itself, and mathematical formulas or
relationships. Id. at 218–20. The “directed to” inquiry asks not whether
“the claims involve a patent-ineligible concept,” but instead whether,
“considered in light of the specification, . . . ‘their character as a whole is
directed to excluded subject matter.’” Enfish, LLC v. Microsoft Corp.,
822 F.3d 1327, 1335 (Fed. Cir. 2016). In that regard, we determine whether
the claims “focus on a specific means or method that improves the relevant
technology” or are “directed to a result or effect that itself is the abstract idea
and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai
Namco Games America Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016).
If, in the first part of the Alice/Mayo analysis, we conclude that the
claims are not directed to a patent-ineligible concept, we consider them
patent eligible under § 101 and our inquiry ends. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016).
If the claims are directed to a patent-ineligible concept, the second
part in the Alice/Mayo analysis is to consider the elements of the claims
“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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S.
at 79, 78). In other words, the second part is to “search for an “‘inventive
concept’”—i.e., an element or combination of elements that is ‘sufficient to
ensure that the patent in practice amounts to significantly more than a patent
Appeal 2018-008227
Application 12/909,320

6
upon the [ineligible concept] itself.’” Id. at 217–18 (brackets in original)
(quoting Mayo, 566 U.S. at 72–73). The prohibition against patenting an
abstract idea “‘cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment’ or adding ‘insignificant
postsolution activity.’” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010)
(internal citation omitted).
The U.S. Patent and Trademark Office (the “Office”) has published
revised guidance on the application of 35 U.S.C. § 101. 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7,
2019) (“2019 Guidance”). Under the 2019 Guidance, the Office first looks
to whether the claim recites: (1) any judicial exceptions, including certain
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic practice, or
mental processes); and (2) additional elements that integrate the judicial
exception into a practical application. See 2019 Guidance at 52, 54–55; see
also MPEP § 2106.05(a)–(c), (e)–(h).5
Only if a claim (1) recites a judicial exception, and (2) does not
integrate that exception into a practical application, does the Office then
look to whether the claim: (a) adds a specific limitation beyond the judicial
exception that are not “well-understood, routine, conventional” in the field
(see MPEP § 2106.05(d)); or (b) simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high

5 Unless otherwise specified herein, all references to the MPEP are to Rev.
08.2017 (Jan. 2018).
Appeal 2018-008227
Application 12/909,320

7
level of generality, to the judicial exception. See 2019 Guidance at 56. We
follow this guidance here.6
In reviewing the Examiner’s rejection under § 101, we group both
claims together and select claim 2 as representative of the group, as the
Examiner and Appellant have done. See Final Act. 5–6; Br. 3–4; 37 C.F.R.
§ 31.47(c)(1)(iv). Accordingly, both claims stand or fall with claim 2. We
address the claims generally where possible, but when it is helpful to refer to
explicit claim language, we refer to claim 2.
B. Application of Legal Principles7
1. Step 2A of 2019 Guidance
Prong 1: Claims Recite an Abstract Idea
In applying the framework set out in Alice/Mayo, and as the first part
of that analysis, the Examiner concludes the claims “are directed to the
abstract idea of storing capital data characterizing capital raised for the
purchase of real property, storing operating data characterizing fees

6 “All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Guidance at 51; see also October
2019 Update: Subject Matter Eligibility, 2 (Oct. 17, 2019) (“October 2019
Update”) (“Note, the feedback received was primarily directed to
examination procedures and, accordingly, this update focuses on clarifying
practice for patent examiners. However, all USPTO personnel are expected
to follow the guidance.”).
7 Because it is undisputed that Appellant’s claims are directed to recognized
statutory categories of processes and machines, we move directly to the two-
part Alice/Mayo analysis. 2019 Guidance at 53 (“Examiners should
determine whether a claim satisfies the criteria for subject matter eligibility
by evaluating the claim in accordance with the criteria discussed in MPEP
2106, i.e., whether the claim is to a statutory category (Step 1) and the
Alice/Mayo test for judicial exceptions (Steps 2A and 2B).”).
Appeal 2018-008227
Application 12/909,320

8
collected (i.e., income of the real property), designating master limited
partnership income based on the capital data, and a reporting module.” Final
Act. 5. The Examiner finds the claim elements all “relate to ‘an economic
process’” (id. at 6), and also finds that the claim elements are “a mental
process (thinking) that can be performed in the human mind, or by a human
using a pen and paper” (id. at 3).
In rejecting the claims under 35 U.S.C. § 101, the Examiner analyzes
the claims using the Mayo/Alice two-step framework, consistent with the
guidance set forth in the USPTO’s “2014 Interim Guidance on Patent
Subject Matter Eligibility,” 79 Fed. Reg. 74618 (Dec. 16, 2014), as well as
the July 2015 Update on Subject Matter Eligibility, in effect at the time the
rejection was made, i.e., on January 13, 2017. We agree generally with the
Examiner’s rejection under § 101, and we clarify and expand the Examiner’s
reasoning in view of the 2019 Guidance.
The 2019 Guidance uses enumerated groupings of abstract ideas that
are rooted in U.S. Supreme Court precedent, as well as Federal Circuit
decisions interpreting that precedent. See 2019 Guidance at 51–52. By
grouping the abstract ideas, the 2019 Guidance synthesizes the holdings of
various court decisions to facilitate examination. The 2019 Guidance
describes one category of abstract ideas as including “[c]ertain methods of
organizing human activity” such as “fundamental economic principles or
practices.” Id. at 52. The 2019 Guidance describes another category of
abstract ideas as including “[m]ental processes”; that is, “concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion).” Id. (footnotes omitted).
Appeal 2018-008227
Application 12/909,320

9
Claims 2 and 3 recite a “computer” comprising a “memory storing”
certain data, including a “master limited partnership module” and a
“regulatory report module,” each including “executable instructions.” Br. 7
(Claims App.). The “executable instructions” for each module perform steps
of “designat[ing] master limited partnership income based upon the capital
data, the operating data and terms of a public infrastructure master limited
partnership,” and “produc[ing] regulatory data for submission to the
Securities and Exchange Commission via the computer network,”
respectively. Id.
We agree with the Examiner that the aforementioned recited steps are
steps of a fundamental economic practice—that is, using a structured entity
to raise funds to purchase infrastructure and receive income based on use of
that infrastructure—which is a certain method of organizing human activity
and, thus, is an abstract idea. (See Final Act. 2–4); see also 2019 Guidance
at 52. Consistent with the Examiner’s conclusions, we see no meaningful
difference between Appellant’s claims and similar claims that courts have
determined are directed to an abstract idea. See, e.g., Alice, 573 U.S. at 219
(holding the concept of intermediated settlement is an abstract idea directed
to a “fundamental economic practice long prevalent in our system of
commerce” (citation omitted)); see also buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1353–54 (Fed. Cir. 2014) (citing cases where contractual
relations at issue constituted fundamental economic practices, and noting
that forming or manipulating economic relations may involve an abstract
idea); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l
Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (explaining that claims directed
to “the mere formation and manipulation of economic relations” and “the
Appeal 2018-008227
Application 12/909,320

10
performance of certain financial transactions” have been held to involve
abstract ideas).
We also determine that the claims recite steps that fall within the
category of mental processes, consistent with the 2019 Guidance. See 2019
Guidance at 52; see also October 2019 Update8 at 7–8. The 2019 Guidance
explains that “mental processes” include acts that people can perform in
their minds or using pen and paper, even if the claim recites that a generic
computer component performs the acts. See 2019 Guidance 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 processes category unless the claim cannot practically be
performed in the mind.”). Examples of mental processes “include
observations, evaluations, judgments, and opinions.” October 2019 Update
at 7. Because each of the limitations discussed above encompasses one or
more acts that people can practically perform in their minds or using pen and
paper, the claims recite mental processes. For example, the claims recite the
mental acts (including at least observations and evaluations) of determining
the partnership’s income based on raised capital, cash flow in the form of
qualifying fees, and partnership terms; and generating data to report to the
SEC.
Appellant’s arguments have not persuaded us otherwise. In particular,
Appellant argues (1) the Examiner overgeneralizes the claims; and (2) the
claims do not recite a “mental process” because they each recite computer
hardware (such as a “network interface circuit”), which necessarily roots the

8 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf.
Appeal 2018-008227
Application 12/909,320

11
claimed invention in computer technology. Br. 3–4. We are not persuaded
by either argument. The Examiner’s characterization of the claims does not
overgeneralize the limitations, as our analysis under the 2019 Guidance
independently supports the Examiner’s conclusions. As for the recitation of
hardware in the claims—as noted above, claim limitations may still be
characterized as reciting mental processes even if they recite performance
with generic computer components. Here, Appellant’s claims recite only
generic computer hardware in the form of a “processor,” “network interface
circuit,” and “memory.”
In summary, under Prong 1 of Step 2A in accordance with the 2019
Guidance, we agree with the Examiner’s conclusions that the claims recite
steps comprising a fundamental economic practice, which also encompass
one or more acts that people can practically perform in their minds or using
pen and paper and are, thus, a mental process. Thus, we conclude the claims
recite judicial exceptions of a certain method of organizing human activity
as well as a mental process, and we, therefore, agree with the Examiner’s
conclusions that the claims recite an abstract idea. We turn now to Prong 2.
Prong 2: Claims Fail to Integrate the Abstract
Idea Into a Practical Application9
In accordance with Prong 2 of Step 2A of the 2019 Guidance, we
evaluate the claims to determine whether they recite additional elements
beyond the abstract idea, and, if so, we evaluate the additional elements to

9 We acknowledge that some of these considerations may be properly
evaluated under the second part of the Alice/Mayo analysis (Step 2B of the
2019 Guidance). For purposes of maintaining consistent treatment within
the Office, we evaluate them under the first part of the Alice/Mayo analysis
(Step 2A of the 2019 Guidance). See 2019 Guidance at 54–55.
Appeal 2018-008227
Application 12/909,320

12
determine whether they integrate the abstract idea into a practical
application. 2019 Guidance at 54. The 2019 Guidance at page 55 provides
exemplary considerations, including whether an additional element:
• “reflects an improvement in the functioning of a computer, or
an improvement to other technology or technical field”;
• “implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine or
manufacture that is integral to the claim”;
• “effects a transformation or reduction of a particular article [or
thing] to a different state or thing”; or
• “applies or uses the judicial exception in some other meaningful
way beyond generally linking the use of the judicial exception
to a particular technological environment.”
The 2019 Guidance also highlights certain examples in which courts
have held that “a judicial exception has not been integrated into a practical
application,” such as where the claims “merely use[] a computer as a tool to
perform an abstract idea” or the additional element adds “insignificant extra-
solution activity” to the abstract idea. 2019 Guidance at 55 (emphasis
added); see also October 2019 Update at 11–15.
The Examiner acknowledges the claims recite additional elements
beyond the abstract idea; namely, “a processor, a network interface circuit,
and a memory,” which the Examiner finds “are recited at a high level of
generality and are recited as performing generic computer functions
routinely used in computer applications.” Final Act. 6. We agree. In that
regard, we note Appellant’s Specification describes an exemplary computer
“to implement operations of the invention” as including “standard
Appeal 2018-008227
Application 12/909,320

13
components,” such as “a central processing unit,” “[a] network interface
circuit” and a “memory.” See Spec. ¶ 19. Nothing in Appellant’s claims or
Specification indicates any components that represent a technological
improvement.
Appellant argues, however, that the claims are comparable to the
claims determined to be patent-eligible in McRO, because they recite “rules”
that “improve computer-related technology by allowing computer
performance of a function previously not performable by a computer.” Br. 3
(citing McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299,
1314 (Fed. Cir. 2016)). We disagree. The claims in McRO did not simply
automate an existing process, but were directed towards an improved
method of enhancing visual animation products by generating accurate and
realistic lip synchronization and facial expressions in animated characters.
Specifically, in McRO, the claims described a way of animating characters
that represented a technological improvement over the existing, manual 3-D
animation techniques. McRO, 837 F.3d at 1316. Appellant’s claims, on the
other hand, do not produce any improved product, such as a visual
animation. Appellant, instead, claims a computer comprising memory
storing certain data used in a financial transaction and modules that
implement steps to utilize that data in a financial transaction. The claims’
data-gathering steps reasonably can be characterized as merely constituting
insignificant extra-solution activity:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions [that] is recited as part of a claimed
process of analyzing and manipulating the gathered information
by a series of steps in order to detect whether the transactions
were fraudulent.
Appeal 2018-008227
Application 12/909,320

14
MPEP § 2106.05(g). The steps of manipulating that data merely constitute
the underlying abstract idea—the fundamental economic and mental
processes that, as we determine above, can be performed in the human mind
or with pencil and paper.
Appellant also argues the Examiner commits error in stating the
claimed subject matter “merely implements an existing process,” and argues
there is no evidence the claimed invention “is a drafting effort designed to
monopolize an abstract idea.” Br. 3. In focusing on the alleged novelty of
the claimed invention, Appellant misapprehends the inquiry. Even if
Appellant’s claims were novel and nonobvious (contrary to our findings and
analysis in the next section), that would not render Appellant’s claims
patent-eligible under § 101. A novel and nonobvious claim directed to an
abstract idea is, nonetheless, patent-ineligible. See BSG Tech LLC v.
Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“It has been clear
since Alice that a claimed invention’s use of the ineligible concept to which
it is directed cannot supply the inventive concept that renders the invention
‘significantly more’ than that ineligible concept.”); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new
abstract idea is still an abstract idea.”) (emphasis omitted); SAP America,
Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“What is
needed is an inventive concept in the non-abstract application realm.”).
Consistent with the Examiner’s determination, we determine the
claims do not include an improvement to another technology or technical
field or an improvement to the functioning of the computer itself. See Final
Act. 5–6; see also Ans. 4. Nor do the claims implement the judicial
exception with “a particular machine or manufacture that is integral to the
Appeal 2018-008227
Application 12/909,320

15
claim Appellant’s invention.” Rather, Appellant’s invention is directed to
the business problem of creating a “funding mechanism for public
infrastructure” (Spec. ¶ 13), and the claims are directed to the business
solution of using a master limited partnership to provide capital to purchase
public infrastructure in return for receiving rental income based on use of the
public infrastructure (id. ¶¶ 25–26)—a process in which a computer is used
as a tool in its ordinary capacity to automate a fundamental economic
process, which could otherwise be carried out in the human mind, or with
the aid of pen and paper. See Final Act. 6; Ans. 4. As the U.S. Supreme
Court has explained, “if a patent’s recitation of a computer amounts to a
mere instruction to ‘implemen[t]’ an abstract idea ‘on . . . a computer,’ that
addition cannot impart patent eligibility.” Alice, 573 U.S. at 223 (quoting
Mayo, 566 U.S. at 84).
We also determine the claims do not recite elements beyond the
abstract idea that include a “transformation or reduction of a particular
article [or thing] to a different state or thing.” We similarly determine that
the claims do not apply the abstract idea beyond generally linking the use of
an abstract idea to a generic computing environment. 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)).
In summary, we conclude the claims do not integrate the abstract idea
into a practical application. Accordingly, in the first part of the Alice/Mayo
analysis, we conclude the claims are directed to an abstract idea.
Appeal 2018-008227
Application 12/909,320

16
2. Step 2B of 2019 Guidance – Claims Fail to Recite Significantly More
Than the Abstract Idea
Regarding the second part of the Alice/Mayo analysis, the Examiner
finds the elements of the claims, when considered individually or as an
ordered combination, “do[] not include additional elements that are
sufficient to amount to significantly more than the judicial exception.” Final
Act. 6. We agree. As noted above, we find the components beyond the
recited abstract idea—namely, a “processor,” “a network interface,” and “a
memory”—to be generic computer components that are well-understood,
routine, and conventional, and which perform generic computer functions of
executing stored instructions and transmitting data via a computer network.
Such generic computer functions and components do not convey an
inventive concept. See Alice, 573 U.S. at 217. Appellant is reminded that in
most cases, “relying on a computer to perform routine tasks more quickly or
more accurately is insufficient to render a claim patent eligible.” OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (citing Alice, 573
U.S. at 224 (holding that “use of a computer to create electronic records,
track multiple transactions, and issue simultaneous instructions” is not an
inventive concept)); Intellectual Ventures I LLC v. Capital One Bank, 792
F.3d 1363, 1370 (“[M]erely adding computer functionality to increase the
speed or efficiency of the process does not confer patent eligibility on an
otherwise abstract idea.”).
For the reasons discussed above, we determine that the elements
recited in Appellant’s claims, whether considered individually or as an
ordered combination, do not add any meaningful limitations beyond
generally linking the abstract idea to a generic technological environment.
Appeal 2018-008227
Application 12/909,320

17
Accordingly, we sustain the Examiner’s rejection of claims 2 and 3
under 35 U.S.C. § 101 as patent-ineligible.
II. Section 103 Rejections
The Examiner rejects claims 2 and 3 under 35 U.S.C. § 103(a) as
unpatentable over the combination of Baker, Ng, Poltorak, and Smith. Final
Act. 7–10; see also id. at 4–5. The Examiner finds that Baker teaches most
of the limitations of the claims (id. at 7–8), but determines that Baker “fails
to explicitly disclose wherein the public infrastructure is a road or bridge
accessible to the general public and a regulatory report module with
executable instructions executed by the processor to produce regulatory data
for submission to the Securities and Exchange Commission via the computer
network” (id. at 8). For teaching or suggesting the limitation of the public
infrastructure being “a road or bridge accessible to the general public,” the
Examiner relies on Ng. Id. at 8–9. For teaching or suggesting the recited
“regulatory report module,” the Examiner relies on Poltorak. Id. at 9. And
for teaching or suggesting “submission to the Securities and Exchange
Commission via the computer network,” the Examiner relies on Smith. Id.
at 10.
Appellant argues that the Examiner’s rejection is in error because
Baker does not teach “public infrastructure that is accessible to the general
public.” Br. 4. Appellant also argues that the Examiner’s rejection is in
error because the prior art does not disclose “the qualifying fees are in the
form of tolls . . . as rental income of real property.” Id. at 5.
As an initial matter, we note that Appellant’s arguments are based on
limitations reciting the nature of certain “data” stored in memory—that is
“capital data characterizing capital raised for the purchase of real property
Appeal 2018-008227
Application 12/909,320

18
supporting public infrastructure, wherein the public infrastructure is a road
or bridge accessible to the general public,” and “operating data
characterizing qualifying fees collected in connection with the operation of
the public infrastructure, wherein the qualifying fees are in the form of tolls,
which are designated as rental income of real property.” These limitations,
which merely characterize the nature of data stored in memory, do not lend
patentability to an invention that would otherwise have been taught by the
prior art, as they constitute nonfunctional descriptive material. See Ex parte
Mathias, Appeal 2005-1851, 84 U.S.P.Q.2d 1276 (BPAI 2005)
(informative); see also In re Gulack, 703 F.2d 1381, 1385 (Fed. Cir. 1983)
(when descriptive material is not functionally related to the substrate, the
descriptive material will not distinguish the invention from the prior art in
terms of patentability).
Nevertheless, even considering Appellant’s arguments, we are not
persuaded of Examiner error because Appellant’s arguments are inconsistent
with the cited prior-art disclosures. With regard to the “public
infrastructure” recitation, Baker discloses a system comprising a “memory”
to store financial data associated with a business entity having a plurality of
shares, where the business entity “may receive, directly or indirectly, income
associated with rent or lease of infrastructure assets.” Baker, code (57),
2:60–65. As the Examiner finds, and we agree, Baker discloses that the
infrastructure assets broadly comprise real estate. Final Act. 4. In
particular, Baker discloses that “the infrastructure assets . . . may comprise
real estate” (Baker, 4:39), and states that “real estate” may refer to “facilities
and infrastructure associated with transportation, energy, national resources,
refineries, and/or other suitable industries” (id. at 5:25–32). Thus, as the
Appeal 2018-008227
Application 12/909,320

19
Examiner also finds, and we agree, the ordinarily skilled artisan would have
realized from Baker’s disclosure that “land and/or buildings would include
land and/or buildings that would be accessible to the general public.” Final
Act. 4. This is particularly evident from Baker’s disclosure of “real estate”
as encompassing “infrastructure” associated with, inter alia,
“transportation.”
With regard to the recitation of “tolls” as “rental income of real
property,” the Examiner finds, and we agree, Baker discloses that “income
associated with infrastructure assets” qualifies “as rental income from real
property . . . thus reading on rental income.” Ans. 8 (citing Baker 2:4–15).
The Examiner also finds Ng teaches rental income in the form of tolls,
describing an investment entity (a “Special Purpose Vehicle (SPV)”) that is
run by a private consortium to fund “an infrastructure project” in which the
SPV receives “income based on the usage of the facility” (e.g., rent). Id.
(citing Ng; see Ng, p. 67). Ng further gives as an example a toll road built in
Colombia financed by such a consortium, in which the consortium was
given a concession period to operate that private toll road and receive
income from toll fees. Ng, p. 67; Ans. 8.
We have considered all of Appellant’s arguments challenging the
Examiner’s findings underlying the Examiner’s rejection of claims 2 and 3
under 35 U.S.C. § 103(a) over Baker, Ng, Poltorak, and Smith, and we are
not persuaded of Examiner error. We, therefore, sustain that rejection.
CONCLUSION
The Examiner’s 35 U.S.C. § 101 rejection of claims 2 and 3 is
affirmed.
Appeal 2018-008227
Application 12/909,320

20
The Examiner’s 35 U.S.C. § 103(a) rejection of claims 2 and 3 is
affirmed.
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
2, 3 101 Patent-ineligible
subject matter
2, 3
2, 3 103(a) Baker, Ng, Poltorak,
Smith
2, 3
Overall Outcome

2, 3
TIME PERIOD FOR RESPONSE
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