International Business Machines Corporation

Patent Trials and Appeals Board

Nov 10, 2020

2019006831 (P.T.A.B. Nov. 10, 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.
14/229,155 03/28/2014 XIN HU YOR920130641US1
YOR.909
6516
21254 7590 11/10/2020
MCGINN INTELLECTUAL PROPERTY LAW GROUP, PLLC
8321 OLD COURTHOUSE ROAD
SUITE 200
VIENNA, VA 22182-3817
EXAMINER
MEINECKE DIAZ, SUSANNA M
ART UNIT PAPER NUMBER
3683
MAIL DATE DELIVERY MODE
11/10/2020 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte XIN HU, REINER SAILER, DOUGLAS LEE SCHALES,
MARC PHILIPPE STOECKLIN, and TING WANG
____________________

Appeal 2019-0068311
Application 14/229,155
Technology Center 3600
____________________

Before PHILLIP J. KAUFFMAN, TARA L. HUTCHINGS, and
ALYSSA A. FINAMORE, Administrative Patent Judges.

FINAMORE, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1, 6–12, and 14. We have jurisdiction
under § 6(b). We AFFIRM.

1 The citations herein refer to the Specification filed March 28, 2014
(“Spec.”), Final Office Action mailed March 19, 2019 (“Final Act.”), Appeal
Brief filed June 27, 2019 (“Appeal Br.”), Examiner’s Answer mailed
July 26, 2019 (“Ans.”), and Reply Brief filed September 19, 2019 (“Reply
Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as International Business Machines
Corporation. Appeal Br. 1.
Appeal 2019-006831
Application 14/229,155

2
SUBJECT MATTER ON APPEAL
The invention relates to “a method and system of scoring asset risk.”
Spec. 1:11–12. Claims 1 and 14 are independent. Appeal Br., Claims App.
Independent claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method of scoring asset risk, the method comprising:
determining, using a processor, a risk value for each entity
of a plurality of entities within a network by modeling the
network as a graph connecting different entities, the different
entities including a device, a credential, a high-value asset, and
an external server, the graph being defined as a set of vertices
comprising the device, the credential, the high-value asset, and
the external server and a set of edges represented by an N-by-N
adjacency matrix with each pair of entities sharing a relationship;
ranking each risk value by iteratively computing a
reputation for the entity with respect to a risk that the entity poses
to a value asset in the network based on the shared relationship
in the adjacency matrix, wherein the reputation for the entity is
inferred from a prior knowledge about the entity and information
about another entity in the network with a connection to the
entity based on a Belief Propagation (BP) algorithm for solving
the inference problem over the graph by inferring the risk from
the entities own properties and surrounding entities with the
shared relationship in the adjacency matrix; and
allocating an additional resource for investigation for a
novel attack on the network from the entity having a ranked risk
value greater than a threshold value,
wherein the determining includes assigning an initial risk
value based on domain knowledge,
wherein the determining determines the risk of each entity
based on both of the domain knowledge of each individual entity
determined from actions of the entity in the network and
information about another entity in the network with a
connection to the entity,
wherein the prior knowledge is based on the entity
interaction with the other entities of the plurality of entities,
Appeal 2019-006831
Application 14/229,155

3
wherein the risk value is determined based on an initial
risk value,
wherein the determining further includes analyzing a
reputation of the each entity,
wherein the analyzing is based on at least one of an
exposure level of the each entity and a behavior of the each
entity,
wherein the analyzing includes correlating the reputation
of the each entity between entities.
Id. (claim status identifier omitted).

REJECTIONS
Claims Rejected 35 U.S.C. § Basis
1, 6–12, 14 112(a) Written Description
1, 6–12, 14 101 Eligibility

ANALYSIS
Written Description
Independent claim 1 and dependent claims 6–12
The Examiner finds a lack of written description for the limitation of
independent claim 1 reciting “allocating an additional resource for
investigation for a novel attack on the network from the entity having a
ranked risk value greater than a threshold value.” Final Act. 4–5.
According to the Examiner, the passage of the Specification at page 7,
lines 14–18, which describes “[b]y ranking the high risk devices, the present
invention allows Information Technology (IT) departments to make
informed decisions on the allocation of resources for further investigation,
such that more important and severe cases can be investigated first and
damages prevented at the earlier stage of the attacks,” does not provide
Appeal 2019-006831
Application 14/229,155

4
written description for the claim limitation because there is no indication that
a threshold value is defined, much less that additional resources for
investigation are allocated based on an entity having a ranked risk value
greater than a threshold value. Id. at 4.
Appellant argues the cited portion of the Specification provides
written description for the claim limitation because “‘severe cases’ would
easily be understood by a person having ordinary skill in the art as cases
above a set threshold value.” Reply Br. 2. Appellant also argues the
Specification describes “threshold” on page 16, lines 9–20. Appeal Br. 10.
Beginning with the Specification’s identification of “severe cases” in
the passage of the Specification at page 7, lines 14–18, this passage
describes ranking the high risk devices so that more important and severe
cases can be investigated first. The Examiner correctly finds that, in context,
“severe” refers to a high ranking of risk, not a threshold value above which
an additional resource for investigation is allocated. Final Act. 4; Ans. 8.
Turning to the Specification’s description of “threshold” on page 16,
lines 9–20, this portion of the Specification regards a threshold for
convergence of the message update equation. We agree with the Examiner
that this threshold does not describe a threshold for a ranked risk value
above which an additional resource for investigation is allocated. Ans. 7–8.
In view of the foregoing, Appellant does not show error in the
Examiner’s finding of a lack of written description for “allocating an
additional resource for investigation for a novel attack on the network from
the entity having a ranked risk value greater than a threshold value,” as
recited in independent claim 1. We, therefore, sustain the rejection of
independent claim 1 and claims 6–12 depending therefrom.
Appeal 2019-006831
Application 14/229,155

5
Independent claim 14
Like independent claim 1, independent claim 14 recites “allocating an
additional resource for investigation for a novel attack on the network from
the entity having a ranked risk value greater than a threshold value,” and the
Examiner finds this limitation of independent claim 14 similarly lacks
written description. Final Act. 4–5. For the reasons discussed above with
respect to independent claim 1, Appellant does not apprise us of error in this
finding.
The Examiner also finds a lack of written description for the last
limitation of independent claim 14, which recites “wherein the reputation for
the entity with respect to the risk that the entity poses to the value asset is
automatically flagged, denied entry, and additional resources are allocated to
the entity to determine a likelihood of an attack on the network from the
entity.” Id. at 5. Per the Examiner, the Specification describes flagging
suspicious entities, but there is no description denying entry of the
suspicious entity or allocating resources to suspicious entity to determine a
likelihood of an attack from the entity. Id. (citing Spec. 6:14–18).
Appellant maintains that the Specification provides written
description for this limitation, and relies on the same passage of the
Specification discussed above with respect to independent claim 1, namely
the passage at page 7, lines 14–18, describing ranking high risk devices so
that more important and severe cases can be investigated first and damages
prevented sooner. Reply Br. 2. In particular, Appellant contends that the
Specification’s description of preventing damages provides support for
denying entry. Id. Appellant, however, does not cite to a portion of
Specification relating the denial of entry to the prevention of damages or
Appeal 2019-006831
Application 14/229,155

6
otherwise explain persuasively why a person of ordinary skill in the art
would have understood preventing damages to describe denying entry.
Accordingly, Appellant does not apprise us of error in the Examiner’s
finding of a lack of written description for the last limitation of independent
claim 14.
For these reasons, Appellant does not show error in the Examiner’s
rejection of independent claim 14 for failing to comply with the written
description requirement. We sustain the rejection of independent claim 14.

Eligibility
Principles of Law
35 U.S.C. § 101
An invention is patent eligible if it is 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.” E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).
To “distinguish[] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts,” the Supreme Court, in Alice, reaffirmed the
two-step analysis previously set forth in Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 566 U.S. 66 (2012). Alice, 573 U.S. at 217.
The first step of the analysis considers whether a claim is directed to a
patent-ineligible concept, e.g., an abstract idea. Id. (citing Mayo, 566 U.S.
Appeal 2019-006831
Application 14/229,155

7
at 77). According to Supreme Court precedent, concepts determined to be
abstract ideas, and thus patent ineligible, include certain methods of
organizing human activity, such as fundamental economic practices (id.
at 219–20; Bilski v. Kappos, 561 U.S. 593, 611 (2010)); mathematical
formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental
processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)).
The Supreme Court has also made clear “[a] claim drawn to subject
matter otherwise statutory does not become nonstatutory simply because it
uses a mathematical formula.” Diamond v. Diehr, 450 U.S. 175, 187 (1981).
In that same case, the Supreme Court cautioned that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. at 191 (citing Benson and Flook).
If the claim is directed to an abstract idea, we turn to the second step
of the Alice framework. The second step considers whether the claim recites
an inventive concept—an element or combination of elements sufficient to
ensure the claim amounts to significantly more than the abstract idea and
transform the nature of the claim into a patent-eligible application. Alice,
573 U.S. at 217–18 (citing Mayo, 566 U.S. at 72–73, 78, 79). “A claim that
recites an abstract idea must include ‘additional features’ to ensure ‘that the
[claim] is more than a drafting effort designed to monopolize the [abstract
idea].’” Id. at 221 (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing]
generic computer implementation[] fail[s] to transform that abstract idea into
a patent-eligible invention.” Id.
Appeal 2019-006831
Application 14/229,155

8
USPTO Guidance
In January 2019, the U.S. Patent and Trademark Office (USPTO)
published revised guidance on the application of 35 U.S.C. § 101. 2019
Revised Patent Subject Matter Eligibility Guidance (“2019 Revised
Guidance”), 84 Fed. Reg. 50 (Jan. 7, 2019). In response to received public
comments, the Office issued further guidance on October 17, 2019,
clarifying the 2019 Revised Guidance. USPTO, October 2019 Update:
Subject Matter Eligibility (“October 2019 Update”), https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf. The Office has
since incorporated this guidance into the Manual of Patent Examining
Procedure (“MPEP”). MPEP § 2106 (9th ed. Rev. 10.2019, June 2020).
“All USPTO personnel are, as a matter of internal agency management,
expected to follow the guidance.” 2019 Revised Guidance, 84 Fed. Reg.
at 51; see also October 2019 Update supra at 1.
Under this Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas, i.e., (a) mathematical concepts, (b) certain methods of
organizing human activity such as a fundamental economic practice,
and (c) mental processes, (“Step 2A, Prong One”); and
(2) additional elements that integrate the judicial exception into a
practical application (“Step 2A, Prong Two”).
2019 Revised Guidance, 84 Fed. Reg. at 52–55; MPEP §§ 2106.04(II)(A),
2106.04(a), 2106.04(d). The evaluation under Step 2A, Prong Two is
performed by (a) identifying whether there are any additional elements
recited in the claim beyond the judicial exception, and (b) evaluating those
additional elements individually and in combination to determine whether
Appeal 2019-006831
Application 14/229,155

9
the claim as a whole integrates the exception into a practical application.
2019 Revised Guidance, 84 Fed. Reg. at 54–55 (Section III(A)(2)); MPEP
§§ 2106.04(II)(A)(2), 2016.04(d).
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look, under
“Step 2B,” to whether the claim:
(3) adds a specific limitation beyond the judicial exception that
is not “well-understood, routine, conventional” in the field; or
(4) simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.
2019 Revised Guidance, 84 Fed. Reg. at 52–56; MPEP § 2106.05(d).

Rejection
Appellant argues claims 1, 6–12, and 14 as a group. Appeal
Br. 10–14; Reply Br. 3–4. In accordance with 37 C.F.R. § 41.37(c)(1)(iv),
we select independent method claim 1 as representative, and the remaining
claims stand or fall with independent claim 1.
In rejecting independent claim 1 under 35 U.S.C. § 101 as patent
ineligible, the Examiner analyzes the claim using the Alice two-step
framework and the Office’s guidance. Final Act. 2–4. Pursuant to Step 2A,
Prong One, the Examiner determines the claim recites determining a risk
value, ranking each risk value by computing a reputation for an entity, and
allocating resources for investigation of a risk event, which are mental
processes and represent a method of organizing human activity such that the
claim recites an abstract idea. Final Act. 6. Under Prong Two, the
Appeal 2019-006831
Application 14/229,155

10
Examiner determines the claim does not recite any additional elements that
integrate the abstract idea into a practical application because the claimed
invention implements the abstract idea on a general purpose computer. Id.
(citing Spec. 26:21–22). In particular, the Examiner determines the
limitation reciting “allocating an additional resource for investigation for a
novel attack on the network from the entity having a ranked risk value
greater than a threshold value” does not integrate the abstract idea into a
practical application because the limitation “could simply mean that an area
of risk is identified and a human is advised to keep an eye on that particular
area of risk.” Id. Turning to Step 2B, the Examiner determines that, for the
same reasons the claim fails Step 2A, Prong Two, “there is nothing in the
claim[] as a whole that adds significantly more than the abstract idea.” Id.
Before evaluating the Examiner’s rejection and Appellant’s arguments
with respect to steps of the Alice framework and the Office’s guidance, we
reject Appellant’s assertion that the claimed invention is patent eligible
because it does not preempt the abstract idea. Reply Br. 4. Although
preemption may be the concern behind the judicial exceptions to statutory
subject matter, preemption is not the test for eligibility. “The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability. For this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citation omitted).
Step 2A, Prong One: Recitation of a Judicial Exception, e.g., an
Abstract Idea
Independent claim 1 recites the following limitations:
determining . . . a risk value for each entity of a plurality
of entities within a network by modeling the network as a graph
Appeal 2019-006831
Application 14/229,155

11
connecting different entities, the different entities including a
device, a credential, a high-value asset, and an external server,
the graph being defined as a set of vertices comprising the device,
the credential, the high-value asset, and the external server and a
set of edges represented by an N-by-N adjacency matrix with
each pair of entities sharing a relationship;
ranking each risk value by iteratively computing a
reputation for the entity with respect to a risk that the entity poses
to a value asset in the network based on the shared relationship
in the adjacency matrix, wherein the reputation for the entity is
inferred from a prior knowledge about the entity and information
about another entity in the network with a connection to the
entity based on a Belief Propagation (BP) algorithm for solving
the inference problem over the graph by inferring the risk from
the entities own properties and surrounding entities with the
shared relationship in the adjacency matrix; and
allocating an additional resource for investigation for a novel
attack on the network from the entity having a ranked risk value
greater than a threshold value,
wherein the determining includes assigning an initial risk
value based on domain knowledge,
wherein the determining determines the risk of each entity
based on both of the domain knowledge of each individual entity
determined from actions of the entity in the network and
information about another entity in the network with a
connection to the entity,
wherein the prior knowledge is based on the entity
interaction with the other entities of the plurality of entities,
wherein the risk value is determined based on an initial
risk value,
wherein the determining further includes analyzing a
reputation of the each entity,
wherein the analyzing is based on at least one of an
exposure level of the each entity and a behavior of the each
entity,
wherein the analyzing includes correlating the reputation
of the each entity between entities.
Appeal 2019-006831
Application 14/229,155

12
Appeal Br., Claims App. Determining a risk value for each entity based on
its connections to different entities and the domain knowledge and exposure
level of the entities and ranking each risk value by iteratively computing a
reputation based on prior knowledge of the entity’s interaction with other
entities, as recited in the claim, valuates the risk associated with each entity
of a network. Allocating an additional resource for investigation for a novel
attack on the network from the entity having a ranked risk value greater than
a threshold value, as also recited in the claim, is a response to the valuated
risk. Valuating risk and a response to the valuated risk are instructions for
addressing risk. Under the Office’s guidance, following rules or instructions
is considered managing personal behavior or relationships or interactions
between people, which is a sub-grouping of certain methods of organizing
human activity. October 2019 Update supra at 4–6; MPEP
§ 2106.04(a)(2)(II)(C). Certain methods of organizing human activity is one
of the groupings of abstract ideas identified in the guidance. 2019 Revised
Guidance, 84 Fed. Reg. at 52; MPEP §§ 2106.04(a), 2106.04(a)(2)(II). In
view of these limitations reciting an abstract idea, independent claim 1
recites a judicial exception.
Step 2A, Prong Two: Integration into a Practical Application
Having determined that independent claim 1 recites a judicial
exception, we next consider whether the claim recites any additional
elements that integrate the judicial exception into a practical application.
2019 Revised Guidance, 84 Fed. Reg. at 54–55; MPEP §§ 2106.04(II),
2106.04(d). More specifically, we evaluate any additional elements,
individually or in combination, to determine whether they integrate the
exception into a practical application, using one or more of the
Appeal 2019-006831
Application 14/229,155

13
considerations laid out by the Supreme Court and the Federal Circuit and set
forth in MPEP §§ 2106.04(d)(1)–(2) and 2106.05(a)–(c), (e)–(h). MPEP
§ 2106.04(d)(I); see also 2019 Revised Guidance, 84 Fed. Reg. at 54–55.
Apart from the limitations reciting the judicial exception, which we
identify above in accordance with Step 2A, Prong One, independent claim 1
recites a “processor” for determining a risk value. Appeal Br., Claims App.
As set forth in the Office’s guidance, if an additional element, alone or in
combination, implements a judicial exception with, or uses a judicial
exception in conjunction with, a particular machine, then the additional
element may integrate the judicial exception in a practical application.
Revised Guidance, 84 Fed. Reg. at 55; MPEP §§ 2106.04(d)(I), 2106.05(b).
However, a general purpose computer that applies a judicial exception via
generic computer functions does not qualify as a particular machine. MPEP
§§ 2106.04(d)(I), 2106.05(b)(I). The Examiner finds, and we agree, that the
processor is recited at a high level of generality, without any meaningful
detail about its structure or configuration. Final Act 6; Spec. 26:21–27:3
(“These computer readable program instructions may be provided to a
processor of a general purpose computer . . . to produce a machine, such that
the instructions . . . create means for implementing the functions/acts
specified in the flowchart and/or block diagram block or blocks.”). Thus,
the recited “processor” does not reflect a particular machine.
Appellant argues the claimed invention integrates the judicial
exception in a practical application by modeling a network as a graph using
a processor, applying a BP algorithm, and allocating additional resources for
higher risk entities. Appeal Br. 13. Appellant further argues the claimed
invention improves upon the relevant technology. Id.; Reply Br. 3–4.
Appeal 2019-006831
Application 14/229,155

14
According to the Office’s guidance for Prong Two, if an additional
element, alone or in combination, reflects an improvement in the functioning
of a computer or an improvement to another technology or technical field,
then the additional element may integrate the judicial exception into a
practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55; MPEP
§§ 2106.04(d)(1), 2106.05(a). The guidance also prescribes that “the Prong
Two analysis considers the claim as a whole,” and that “the limitations
containing the judicial exception as well as the additional elements in the
claim besides the judicial exception need to be evaluated together to
determine whether the claim integrates the judicial exception into a practical
application.” MPEP § 2106.04(d)III; see also October 2019 Update supra
at 12.
Determining a risk value for each entity of a network by modeling the
network as a graph, ranking each risk value based on a BP algorithm, and
allocating an additional resource for investigation for a novel attack on the
network from the entity having a highly ranked risk value are part of the
judicial exception, as set forth above in regard to Step 2A, Prong One, and
thus devoid of technology. Final Act. 6; Ans. 9. Considering these claim
limitations together with the recited processor, the recited processor does not
reflect a technological improvement, because it does not represent the
network which may be improved with the implementation of the recited risk
management. Rather, the recited processor is used simply to automate the
determining of a risk value for each entity, which is not a technological
improvement that integrates the judicial exception into a practical
application. MPEP § 2106.05(a)(I); see also Credit Acceptance Corp. v.
Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017) (“Our prior cases
Appeal 2019-006831
Application 14/229,155

15
have made clear that mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.”). For these reasons, independent claim 1 does not include any
additional elements, considered individually and in combination, that
integrate the judicial exception into a practical application. Consequently,
independent claim 1, as a whole, is directed to a judicial exception.
Step 2B: Well-understood, routine, conventional
As independent claim 1 recites a judicial exception and does not
integrate the judicial exception into a practical application, we consider
whether the claim includes any additional elements, alone or in combination,
that are not well-understood, routine, conventional activity in the field. 2019
Revised Guidance, 84 Fed. Reg. at 56; MPEP § 2106.05(d). Appellant
points to the claim limitations reciting determining a risk value for each
entity, ranking each risk value, and allocating an additional resource for
investigation based on the ranked risk value, and contends these limitations
are not well-understood, routine, or conventional. Appeal Br. 12–13; Reply
Br. 4. Appellant further contends these limitations are not well-understood,
routine, or conventional because they are not found in the prior art. Appeal
Br. 13; Reply Br. 4.
The analysis under Step 2B of the Office’s guidance is not an
evaluation of novelty or non-obviousness. MPEP § 2106.05(I); see also
Diehr, 450 U.S. at 188–89 (“The ‘novelty’ of any element or steps in a
process, or even of the process itself, is of no relevance in determining
whether the subject matter of a claim falls within the § 101 categories of
possibly patentable subject matter.”); Synopsys, Inc. v. Mentor Graphics
Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract
Appeal 2019-006831
Application 14/229,155

16
idea is still an abstract idea. The search for a § 101 inventive concept is thus
distinct from demonstrating § 102 novelty.”); Intellectual Ventures I LLC v.
Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016) (“While the claims
may not have been anticipated or obvious . . . that does not suggest that the
idea . . . is not abstract, much less that its implementation is not routine and
conventional.”). Moreover, Step 2B considers additional elements, as
limitations reciting a judicial exception cannot supply an inventive concept.
MPEP § 2106.05(I); see also Mayo, 566 U.S. at 72–73 (requiring “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)); 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.”); Berkheimer v. HP Inc.,
890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J., concurring) (“[A]nd
Berkheimer . . . leave[s] untouched the numerous cases from [the Federal
Circuit] which have held claims ineligible because the only alleged
‘inventive concept’ is the abstract idea.).”
As set forth above in regard to Step 2A, Prong One, determining a risk
value for each entity, ranking each risk value, and allocating an additional
resource for investigation based on the ranked risk value are part of the
judicial exception, not additional elements. Apart from the judicial
exception, independent claim 1 recites a “processor” for determining a risk
value. Appeal Br., Claims App. The processor is recited at a high level of
Appeal 2019-006831
Application 14/229,155

17
generality, and the Examiner correctly finds that the Specification describes
the processor as conventional. Final Act 6 (citing Spec. 26:21–22
(describing “a processor of a general purpose computer”)). Moreover, there
is no indication that using a processor to determine a risk value represents a
technological improvement. Rather, using a processor to process data is
well-understood function of conventional computers. MPEP
§ 2106.05(d)(II)(ii); see also In re Katz Interactive Call Processing Patent
Litig., 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower
construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those
functions can be achieved by any general purpose computer without special
programming.”). Thus, the additional element of independent claim 1,
considered alone and in combination, simply appends a well-understood,
routine, conventional activity previously known in the field, specified at a
highly level of generality, to the judicial exception.
Conclusion for the Rejection
In view of the foregoing, independent claim 1 is directed to a judicial
exception without significantly more to transform the nature of the claim
into a patent-eligible application. We, therefore, sustain the rejection of
independent claim 1, with claims 6–12 and 14 falling therewith.

CONCLUSION
We sustain the rejection of claims 1, 6–12, and 14 under 35 U.S.C.
§ 112(a) for failure to comply with the written description requirement. In
addition, we sustain the rejection of claims 1, 6–12, and 14 under 35 U.S.C.
§ 101 as patent ineligible.

Appeal 2019-006831
Application 14/229,155

18
DECISION SUMMARY
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1, 6–12,
14 112(a) Written Description
1, 6–12,
14
1, 6–12,
14 101 Eligibility
1, 6–12,
14
Overall
Outcome
1, 6–12,
14

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). 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED