BlackRock Financial Management, Inc.

Patent Trials and Appeals Board

Jun 30, 2020

14181620 - (D) (P.T.A.B. Jun. 30, 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.
14/181,620 02/14/2014 Sunder Rajan Ramkumar 22869-26045/US 4414
758 7590 06/30/2020
FENWICK & WEST LLP
SILICON VALLEY CENTER
801 CALIFORNIA STREET
MOUNTAIN VIEW, CA 94041
EXAMINER
TINKLER, MURIEL S
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
06/30/2020 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):
PTOC@Fenwick.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SUNDER RAJAN RAMKUMAR,
MICHAEL JOHN FREDERICKS, and
MICHAEL OLEGOVICH PENSKY

Appeal 2020-001499
Application 14/181,620
Technology Center 3600
____________

Before RICHARD M. LEBOVITZ, FRANCISCO C. PRATS, and
RACHEL H. TOWNSEND, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner rejected the claims under 35 U.S.C. § 101 as reciting
patent ineligible subject matter. Pursuant to 35 U.S.C. § 134(a), Appellant1
appeals from the Examiner’s decision to reject the claims. 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 BlackRock
Index Services, LLC. Appeal Br. 2.
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STATEMENT OF THE CASE
Claims 1–4, 7–11, and 14–202 stand finally rejected under 35 U.S.C. §
101 because the claimed invention is directed to non-statutory subject
matter. Ans. 3.
There are two independent claims, claims 1 and 10. We select claim 1
as representative. Claim 1 is reproduced below. The claim is annotated with
bracketed numbers for reference to the claim limitations.
1. A computer-implemented method for managing asset
decumulation performed by a decumulation management
system, the method comprising:
[1] establishing a plurality of spending amounts for
decumulation of a portfolio over a decumulation period of time,
the portfolio including a portfolio value invested in assets with a
risk profile, each spending amount indicating a different constant
value to be withdrawn from the portfolio value at designated
times during the decumulation period;
[2] determining, by the processor, for each point in time of
a plurality of points in time, a threshold portfolio value for each
spending amount of the plurality of spending amounts, wherein
each threshold portfolio value is a portfolio value at which a
probability of successfully withdrawing the spending amount for
a duration of the decumulation period is at a threshold
probability;
[3] selecting, by the processor, an initial spending amount
that is one of the established plurality of spending amounts;
[4] monitoring, by the processor, the portfolio value
during the decumulation of the portfolio at the initial spending
amount of the established plurality of spending amounts;
[5] identifying, by the processor, at a point in time of the
plurality of points in time, that the portfolio value during

2 The Final Action included claims 18–20 in the rejection; the Answer
omitted the claims, but we understand this to be an inadvertent error arising
from the fact that claims 18–20 were added during prosecution by
amendment. Final Act. 2.
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decumulation of the portfolio is below the threshold portfolio
value for the initial spending amount at the point in time; and
[6] responsive to the identification, automatically
reducing, by the processor, the spending amount from the initial
spending amount to a lower spending amount selected from the
established plurality of spending amounts.

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.”
However, not every discovery is eligible for patent protection. Diamond v.
Diehr, 450 U.S. 175, 185 (1981). “Excluded from such patent protection are
laws of nature, natural phenomena, and abstract ideas.” Id. The Supreme
Court articulated a two-step analysis to determine whether a claim falls
within an excluded category of invention. Alice Corp. Pty. Ltd. v. CLS Bank
Int’l, 573 U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs,
Inc., 566 U.S. 66, 75–77 (2012).
In the first step, it is determined “whether the claims at issue are
directed to one of those patent-ineligible concepts.” Alice, 573 U.S. at 217.
If it is determined that the claims are directed to an ineligible concept, then
the second step of the two-part analysis is applied in which it is asked
“[w]hat else is there in the claims before us?” Id. (citation omitted)
(alteration in original). The Court explained that this step involves
a 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
upon the [ineligible concept] itself.’
Alice, 573 U.S. at 217–218 (citing Mayo, 566 U.S. at 75–77) (alteration in
original).
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Alice, relying on the analysis in Mayo of a claim directed to a law of
nature, stated that in the second part of the analysis, “the elements of each
claim both individually and ‘as an ordered combination’” must be
considered “to determine whether the additional elements ‘transform the
nature of the claim’ into a patent-eligible application.” Alice, 573 U.S. at 217
(citation omitted).
The PTO published revised guidance on the application of 35 U.S.C.
§ 101. USPTO’s January 7, 2019 Memorandum, 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50, 51–57 (2019)
(“Eligibility Guidance”). This guidance provides additional direction on how
to implement the two-part analysis of Mayo and Alice.
Step 2A, Prong One, of the 2019 Guidance, looks at the specific
limitations in the claim to determine whether the claim recites a judicial
exception to patent eligibility. In Step 2A, Prong Two, the claims are
examined to identify whether there are additional elements in the claims that
integrate the exception into a practical application, namely, is there a
“meaningful limit on the judicial exception, such that the claim is more than
a drafting effort designed to monopolize the judicial exception.” 84 Fed.
Reg. 54 (2. Prong Two).
If the claim recites a judicial exception that is not integrated into a
practical application, then as in the Mayo/Alice framework, Step 2B of the
Eligibility Guidance instructs us to determine whether there is a claimed
“inventive concept” to ensure that the claims define an invention that is
significantly more than the ineligible concept, itself. 84 Fed. Reg. 56.
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With these guiding principles in mind, we proceed to determine
whether the claimed subject matter in this appeal is eligible for patent
protection under 35 U.S.C. § 101.
DISCUSSION
Claim 1 is directed to a computer-implemented method. Following
the first step of the Mayo/Alice analysis, we find that the claim is directed to
a “method” which is also a “process” and therefore falls into one of the
broad statutory categories of patent-eligible subject matter recited in 35
U.S.C. § 101. We, thus, proceed to Step 2A, Prong One, of the Eligibility
Guidance.
Step 2A, Prong One
In Step 2A, Prong One, of the Eligibility Guidance, the specific
limitations in the claim are examined to determine whether the claim recites
a judicial exception to patent eligibility, namely whether the claim recites an
abstract idea, law of nature, or natural phenomenon.
The claim is directed to a computer-implemented method for
“managing asset decumulation performed by a decumulation management
system.” Asset decumulation is explained in the Specification as
withdrawing an amount of assets from an account over a desired period of
time. Spec. ¶ 3. “For example, an advisor may suggest withdrawing a
specific percentage of the original assets every year, such as 6.5% of the
original value, with a target of depleting the account after 20 years.” Id.
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The Examiner found that the claim recites a fundamental economic
practice and a method of organizing human activity (Ans. 6),3 one of the
categories of abstract ideas identified by the courts and listed in the
Eligibility Guidance (84 Fed. Reg. 52). Appellant challenges this
determination, stating that “the claims of the present application are not
directed to an abstract idea, because they do not simply automate an existing
conventional method on a computer, and do not monopolize all potential
solutions to the problem of asset decumulation.” Appeal Br. 8; Reply Br. 3.
We agree with the Examiner’s determination. Step [1] of claim 1
establishes a plurality of spending amounts to withdraw from a portfolio
(“for decumulation of a portfolio”). Each spending amount is of “constant
value.”
In step [2] of the claim, the processor determines “a threshold
portfolio value for each spending amount of the plurality of spending
amounts.” This value is defined in the claim as “a portfolio value at which a
probability of successfully withdrawing the spending amount for a duration
of the decumulation period is at a threshold probability.” The Specification
explains that probabilities of success means “decumulation without
premature asset exhaustion.” Spec. ¶ 15. Thus, for each spending amount, a
portfolio value threshold is determined to make sure that the spending
amounts withdrawn over the selected period of time does not deplete the
account below the threshold value.

3 The Final Office Action was mailed on Apr. 30, 2018, before the
publication of the Eligibility Guidance. The Examiner’s Answer, however,
was mailed Oct. 18, 2019, after the Eligibility Guidance was published.
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An initial spending amount is selected in step [3] from the spending
amounts in step [1]. The processor identifies that “the portfolio value during
decumulation of the portfolio is below the threshold portfolio value” set in
step [2]. Steps [5] and [6] recites that “responsive to the identification,” the
processor carries out the step of “automatically reducing . . . the spending
amount from the initial spending amount to a lower spending amount
selected from the established plurality of spending amounts.” Thus, the
processor determines at a certain point in time when the initial spending
amount withdrawn from the account will deplete the account below a
threshold value, and then readjusts the spending amount to a lower amount.
As explained in the Specification: “When assets perform well, spending
levels are maintained and may be increased to the next spending tier. When
assets perform poorly, spending is reduced to a lower spending tier.” Spec.
¶ 4.
The method therefore is managing the assets of an account from
which spending amounts are being withdrawn over a period of time to
protect the account from being depleted early. We agree with the Examiner
that, under the principles enunciated in Bancorp Services, L.L.C. v. Sun Life
Assur. Co. of Canada (U.S.), 687 F.3d 1266 (Fed. Cir. 2012), the claimed
method is ineligible for a patent.
In Bancorp, the claim 9 of the ’037 patent was “for managing a life
insurance policy.” Bancorp, 687 F.3d at 1271. The first step of the claim
comprised “generating a life insurance policy including a stable value
protected investment with an initial value based on a value of underlying
securities of the stable value protected investment.” Id. Thus, like the “stable
value protected investment” of Bancorp, the claimed method comprises
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steps in which a portfolio value is protected by lowering spending amounts
when the portfolio value declines below a determined threshold (steps [2],
[5], and [6] of rejected claim 1). The court found that Bancorp’s claims were
an attempt to patent the abstract idea of managing a stable value protected
life insurance policy and “‘then instruct the use of well-known [calculations]
to help establish some of the inputs into the equation.’” Id. at 1278 (citation
omitted) (brackets in the original). Likewise in claim 1, input values of
spending amounts in steps [1] and [3], and the threshold portfolio value in
step [2], are used to manage asset decumulation and prevent the portfolio
value from falling below a certain threshold. The rejected claims recite an
abstract idea because they manage the portfolio asset value in a similar
fashion to how the claims in Bancorp managed the value of the life
insurance policy. The Eligibility Guidance lists Bancorp’s claims as falling
in the abstract idea category of “[c]ertain methods of organizing human
activity.” 84 Fed. Reg. 52 (n. 13). Therefore, the same category of abstract
ideas applies to the rejected claims in this appeal.
In sum, for the foregoing reasons, we find that claim 1 recites an
abstract idea. Accordingly, we proceed to Step 2A, Prong Two, of the
Eligibility Guidance.
Step 2A, Prong Two
Prong Two of Step 2A under the 2019 Eligibility Guidance asks
whether there are additional elements that integrate the exception into a
practical application. We must look at the claim elements individually and
“as an ordered combination” to determine whether the additional elements
integrate the recited abstract idea into a practical application. “A claim that
integrates a judicial exception in a practical application will apply, rely on,
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or use the judicial exception in a manner that imposes a meaningful limit on
the judicial exception, such that the claim is more than a drafting effort
designed to monopolize the judicial exception.” Eligibility Guidance, 84
Fed. Reg. 54. Integration into a practical application is evaluated by
identifying whether there are additional elements individually, and in
combination, which go beyond the judicial exception. Id. at 54–55.
Appellant argues that “the claims on appeal provide for a
technological improvement by allowing for computer automation of asset
decumulation strategies in a specific way that reduces a risk of premature
asset exhaustion in comparison to conventional asset decumulation.” Appeal
Br. 9. Appellant also contends that the claims
recite a practical application of the judicial exception that
addresses a specific challenge in asset management, namely,
how to automate of a decumulation strategy by dynamically
adjusting the spending and/or risk of the portfolio between
different spending amounts and/or risk profiles in a way that
minimizes a user’s risk of premature asset exhaustion.
Id. at 11; see also Reply Br. 7. Appellant contends that the claims are
analogous to those in McRO, Inc. v. Bandai Namco Games Am. Inc., 837
F.3d 1299 (Fed. Cir. 2016). Appeal Br. 8; Reply Br. 3–4.
We first address Appellant’s argument that the claims are patent
eligible for the same reasons as in McRO. In McRO, the claim was directed
to a “method for automatically animating lip synchronization and facial
expression of three-dimensional characters.” McRO, 837 F.3d, 1307–08. The
claim recited a series of steps that “produce[d] lip synchronization and facial
expression control of said animated characters.” Id. at 1308. The court found
that the claimed “automation goes beyond merely ‘organizing [existing]
information into a new form’ or carrying out a fundamental economic
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practice.” McRO, 837 F.3d at 1315 (citation omitted) (alteration in original).
Instead, the court found that “[t]he claimed process uses a combined order of
specific rules that renders information into a specific format that is then used
and applied to create desired results: a sequence of synchronized, animated
characters.” Id. McRO found that the recited rules “are limiting in that they
define morph weight sets as a function of the timing of phoneme sub-
sequences.” McRO, 837 F.3d at 1313. The claims were found to be directed
to a “technological improvement over the existing, manual 3-D animation
techniques.” McRO, 837 F.3d at 1316.
We do not agree with Appellant that the claims are like those in
McRO. Specifically, Appellant identifies step [1] and [2] as enabling the
method to dynamically adjust the spending amounts “in a way that
minimizes a user’s risk of premature asset exhaustion.” Appeal Br. 10. Step
[1], however, does not identify how the spending amounts are established.
Only the result is recited in the claim, but not a “specific rule” as asserted by
Appellant, for choosing these amounts. Indeed, the Specification discloses
that the “initial spending level [step [3] of claim 1 in which the amount is
selected from step [1]] may be provided by the account holder,” indicating
that steps [1] and [3] can accomplished by the user’s mental preference.
In step [2], a threshold portfolio value is determined. The step recites
that the value is “a portfolio value at which a probability of successfully
withdrawing the spending amount for a duration of the decumulation period
is at a threshold probability,” but does not explain how such value is
specifically determined. The Specification explains that thresholds can be
calculated and gives one example of using Monte-Carlo simulations to do
so. Spec. ¶¶ 15–16, 18. However, step [2] of the claim merely recites that the
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threshold values are determined, but without describing how the
determination is accomplished.
The subsequent steps are no different. In step [4], the value of the
account is monitored using a processor, and in step [5] the point in time
when the portfolio drops below the threshold is identified. No rule is recited
in the claim that dictates how the monitoring and threshold identification is
made. The last step [6] of the claim automatically reduces the spending
amount to a lower amount from the established spending amounts of step
[1]. This last step does not explain how the lower spending amount is
determined.
In sum, we cannot discern a specific rule in any of the claim steps that
determines how the decumulation is performed. For this reason, we find that
the claims are unlike those in McRO, 837 F.3d at 1313, where specific rules
were followed to create a sequence of synchronized, animated characters
(e.g., “morph weight sets as a function of the timing of phoneme sub-
sequences”).
The steps of the claim in combination have the same deficiency.
Spending amounts are determined in the claim and applied to an asset
portfolio until a threshold portfolio value is crossed, and then a lower
spending amount is selected. The rules are stated with such generality, that
the recited abstract idea of managing the value of the portfolio would be
preempted. As explained in McRO, the “limitations in claim 1 prevent
preemption of all processes for achieving automated lip-synchronization of
3–D characters.” McRO, 837 F.3d at 1315. The court held that “[t]he
specific structure of the claimed rules would prevent broad preemption of all
rules-based means of automating lip synchronization.” Id. McRO noted that
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“[t]he abstract idea exception has been applied to prevent patenting of claims
that abstractly cover results where ‘it matters not by what process or
machinery the result is accomplished.’” (quoting O’Reilly v. Morse, 56 U.S.
62, 113 (1853)); see also Mayo, 566 U.S. at 83.” McRO, 837 F.3d at 1314.
McRO stated that therefore, a court must “look to whether the claims in
these patents focus on a specific means or method that improves the relevant
technology or are instead directed to a result or effect that itself is the
abstract idea and merely invoke generic processes and machinery.” McRO,
837 F.3d at 1314.
Here, as explained above, the claim recites the desired result of [1]
establishing spending amounts, [2] determining threshold portfolio value, [5]
identifying when the portfolio value is below the threshold, and then [6]
automatically reciting the spending amount. Each of the steps state the
desired result without claiming the specific implementation of how the result
is accomplished. Therefore, McRO is distinguishable.
Appellant contends that the claims are patent-eligible because they do
not simply automate an existing conventional method on a computer. Appeal
Br. 8, 10. This argument is not persuasive. A claim is not patent-eligible
merely because the recited method is not conventional. As explained in
Diamond v. Diehr, 450 U.S. 175, 188–189 (1981), “[t]he ‘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.” Thus, it is not
determinative that the art-based rejections were withdrawn by the Examiner.
Appeal Br. 10; Ans. 9 (response by Examiner). Rather, the question under
the Mayo/Alice framework is “[w]hat else is there in the claims before us”
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other than the recited abstract idea. Mayo 566 U.S. at 78. Alice, referring to
the “what else” as “additional elements,” directed the § 101 analysis to be a
search for the additional elements, apart from the abstract idea that would
transform the claim into a patent-eligible practical application. Alice 573
U.S. at 217.
The steps that Appellant identifies as unconventional are integral to
the method of organizing human activity. Specifically, steps [1] and [2] of
picking spending amounts and threshold portfolio are necessary to
accomplish the management asset decumulation and are not accomplished
by specific rules which would confer eligibility as in McRO. Step [1] is not
even limited to being performed on a processor and therefore could be
accomplished by a mental process by the aid of pen and paper, a category of
abstract ideas listed in the Eligibility Guidance. 84 Fed. Reg. 52. See also
PEG Update4 C.iii.
Steps [5] and [6] of identifying when the portfolio is below the
threshold and then lowering the spending amount is tantamount to asset
decumulation management and therefore cannot serve as the additional
elements described in Alice. Moreover, because the claim does not specify
the rules to implement these steps, we find that they could be accomplished
mentally by human evaluation and observation and therefore constitute an
abstract idea. Eligibility Guidance, 84 Fed. Reg. 52 (“(c) Mental processes--
concepts performed in the human mind (including an observation,
evaluation, judgment, opinion” (footnote omitted)).

4 October 2019 Update: Subject Matter Eligibility, Available at
https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_update.p
df (last accessed Nov. 15, 2019) (“PEG Update”).
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Appellant argues that the recited limitations
ensure that the claims are limited to a specific way of
dynamically adjusting a spending value and/or a risk profile of
a portfolio based upon a current portfolio value and its
relationship to one or more predetermined spending or risk
bands defined by different threshold portfolio values, in order
to reduce a risk of premature asset exhaustion.
Appeal Br. 13 (emphasis added). Appellant also describes the asserted
improvement in the claims as “creat[ing] spending bands” and “risk bands.”
Appeal Br. 10. The terms “spending bands” and “risk bands,” however, do
not appear in the claim and Appellant has not explained how the recited
steps in the claim correspond to the asserted “bands.”
Appellant asserts that the claims provide for a technological
improvement “by allowing for computer automation” of asset decumulation
management. Appeal Br. 9. This argument is not persuasive. “Steps that do
nothing more than spell out what it means to ‘apply it on a computer’ cannot
confer patent-eligibility. Alice, 134 S.Ct. at 2359.” Intellectual Ventures I
LLC v. Capital One Bank (USA), 792 F.3d 1363, 1370–71 (Fed. Cir. 2015);
see also Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055
(Fed. Cir. 2017) (“mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.”).
BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827
F.3d 1341 (Fed. Cir. 2016), cited by Appellant (Appeal Br. 14), does not
lead to a different result. The court in BASCOM found the claimed process
eligible because the claims were found to “carve out a specific location for
the filtering system (a remote ISP server) and require the filtering system to
give users the ability to customize filtering for their individual network
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accounts.” BASCOM, 827 F.3d at 1352. While filtering content was “already
a known concept,” the court found the claims “recite a specific, discrete
implementation of the abstract idea of filtering content.” Id. at 1350. In
contrast, the claims here do not “carve out” a specific way of accomplishing
asset decumulation, but rather would preempt all ways of doing so. Id. at
1352 (“As explained above, construed in favor of BASCOM as they must be
in this procedural posture, the claims of the ’606 patent do not preempt the
use of the abstract idea of filtering content on the Internet or on generic
computer components performing conventional activities.”).
Appellant criticizes the Examiner as having “not properly described
why the claims are not directed to a method that provides a ‘technological’
improvement.” Appeal Br. 14. Appellant contends that “the claimed
invention resolves a problem in the realm of asset management involving
asset decumulation and the risk for premature asset exhaustion.” Id.
The issue in this analysis is “how” the problem is solved and whether
the asserted solution recited in the claim constitutes an “additional element”
alone, or in combination with the abstract ideas in the claim, to impart patent
eligibility to the claims and integration of the abstract idea into a practical
application. As discussed in detail above, while it might be true that the
method resolves a problem in asset decumulation, the steps in the claim that
accomplish this result are not stated with sufficient specificity, as they were
in McRO and BASCOM, to avoid reading on the abstract idea, itself.
Moreover, the portfolio threshold could be monitored without a computer by
human observation, and spending amount selection and lowering could be
done by human evaluation.
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Appellant contends “the present claims are analogous to Claims 2 and
3 of Example 46” of the PEG Update. Reply Br. 6. Appellant states that the
additional elements in claims 2 and 3 of the example take control of a feed
dispenser and operate a gate mechanism which provide meaningful
limitations to the claim. Id. at 6–7. In analogy, Appellant argues that
“automatically reducing, by the processor, the spending amount from the
initial spending amount to a lower spending amount selected from the
established plurality of spending amounts” is corrective action that
constitutes a meaningful limitation to the claims. Id. at 7.
As discussed by Appellant, the additional element in claim 2 of
Example 46 of the PEG Update is a feed dispenser which is automatically
operated to dispense supplements to the animals, and in claim 3, it is a
sorting gate which is automatically operated. These claims were determined
to be patent-eligible because they do not attempt to patent the abstract ideas
recited in claims 2 and 3, but rather are drawn to a process in which
“corrective action” is taken to control a food dispenser and gate,
respectively. PEG Update, Appendix 1, pp. 37, 40. Appellant attempts to
analogize these claims to claim 1, where the corrective action is lowering the
spending amount (claim 1, step [6]).
We do not agree with Appellant that operating a food dispenser and
sorting gate is the same type of action as lowering a spending amount.
Reducing the spending amount to maintain the portfolio value is in the realm
of abstract ideas because it is integral to the method of organizing human
behavior. The step, itself, could be performed mentally by picking “a lower
spending amount selected from the established plurality of spending
amounts.” Id.
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In sum, we have not been guided to an additional element in the
claim, beyond the abstract idea, that integrates the judicial exception in
practical application.
Step 2B
Because we determined that the judicial exception is not integrated
into a practical application, we proceed to Step 2B of the Eligibility
Guidelines, which asks whether there is an inventive concept. In making this
Step 2B determination, we must consider whether there are specific
limitations or elements recited in the claim “that are not well-understood,
routine, conventional activity in the field, which is indicative that an
inventive concept may be present” or whether the claim “simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present.” Eligibility
Guidance, 84 Fed. Reg. 56 (footnote omitted). We must also consider
whether the combination of steps perform “in an unconventional way and
therefore include an ‘inventive step,’ rendering the claim eligible at Step
2B.” Id. In this part of the analysis, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine “whether the
additional elements ‘transform the nature of the claim’ into a patent-eligible
application.” Alice, 573 U.S. at 217 (citation omitted).
Appellant argues that Examiner “acknowledges that the claims
contain elements that are not present in the prior art, indicating that the
claimed element include those that are not simply routine or conventional
elements. As such, the additional limitations of the claims thus cannot be
described as simply generic computer functions.” Appeal Br. 13. Appellant
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further states “the claim as a whole demonstrates inventive concept,
consistent with the Step 2B analysis articulated by the USPTO in the 2019
Guidance.” Id.
Appellant has not identified an additional element in the claim.
Appellant points to steps [1], [2], [5], and [6] of the claim, but fails to
explain why these steps are not part of the abstract idea, as opposed to an
additional element of the claim. Appellant essentially repeats the same
argument throughout the briefs that the claim recites specific rules that
provide a technological improvement and inventive practical application.
However, we disagree with Appellant’s conclusion because each step, alone,
and in combination, is stated as a result and is not restricted to how the steps
are accomplished. The aspects of the claim asserted to be unconventional
correspond to the abstract idea, itself. Step [2] defines the threshold portfolio
value, but not how it is determined or calculated. The “identifying” step [5]
is comparing the portfolio value to a threshold, which the Eligibility
Guidance in Example 40 characterized as a mental process (“The claim
recites the limitation of comparing at least one of the collected traffic data to
a predefined threshold. This limitation, as drafted, is a process that, under its
broadest reasonable interpretation, covers performance of the limitation in
the mind but for the recitation of generic computer components.”). Subject
Matter Eligibility Examples: Abstract Ideas. Step [6] does not inform how
the lower spending amount is determined. These same type of steps were
found in Bancorp to be an abstract idea: “without the computer limitations
nothing remains in the claims but the abstract idea of managing a stable
value protected life insurance policy by performing calculations and
manipulating the results.” Bancorp, 687 F.3d at 1280.
Appeal 2020-001499
Application 14/181,620

19
Summary
For the foregoing reasons, we affirm the rejection of claim 1 under
§ 101. Independent claim 10 has substantially the same limitations as claim
1 and the rejection of it is affirmed, as well. Claims 2–4, 7–9, 11, and 14–20
fall with claims 1 and 10 because separate reasons for their patentability
were not provided. 37 C.F.R. § 41.37(c)(1)(iv).

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–4, 7–11,
14–20
101 Eligibility 1–4, 7–11,
14–20

TIME PERIOD
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED