BUNICK, Claude B. et al.

Patent Trials and Appeals Board

Jan 27, 2020

14224991 - (D) (P.T.A.B. Jan. 27, 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.
14/224,991 03/25/2014 Claude B. BUNICK 40191/00303 1608
30636 7590 01/27/2020
FAY KAPLUN & MARCIN, LLP
150 BROADWAY, SUITE 702
NEW YORK, NY 10038
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
01/27/2020 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):
mmarcin@fkmiplaw.com
okaplun@fkmiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CLAUDE B. BUNICK and CHENGYOU XIAO

Appeal 2019-003054
Application 14/224,991
Technology Center 3600

Before HUBERT C. LORIN, ANTON W. FETTING, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

LORIN, 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 23–42. 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(a). Appellant identifies the real party in interest as Guy Carpenter &
Company, LLC. Appeal Br. 2.
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CLAIMED SUBJECT MATTER
The claimed subject matter relates to determining loss data based on
industry indices. Claim 23, reproduced below with emphasis added, is
illustrative of the claimed subject matter:
23. A method, comprising:
calculating, by a computing device, an element factor for
each of a plurality of elements based on a modeled company loss
for a plurality of events and a modeled industry loss for the
plurality of events;
calculating, by the computing device, a modeled company
index loss for each element based on the element factor and the
modeled industry loss for each of the corresponding elements for
each of the plurality of events;
selecting a section of a total range of expected loss values;
determining a first mean loss for a first event of the
plurality of events and a standard deviation of the first mean loss;
identifying a portion of the standard deviation of the first
mean loss lying within the section of the total range;
generating a first adjustment for the first event based on
the portion of the standard deviation; and
comparing, by the computing device, the modeled
company index loss for each element to the modeled company
loss for each element for the first event based on the first
adjustment, wherein the comparing occurs within the section of
the total range to determine a basis risk for the first event.
REJECTION
Claims 23–42 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter.
OPINION
The Appellant argued these claims as a group. See Appeal Br. 4–11.
We select claim 23 as the representative claim for this group, and the
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remaining claims 24–42 stand or fall with claim 24. 37 C.F.R.
§ 41.37(c)(1)(iv).

Preliminary comment
Previous Office guidance on patent subject matter eligibility has been
superseded by the 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (Jan. 7, 2019), hereinafter “2019 Revised 101 Guidance.”
Id. at 51 (“Eligibility–related guidance issued prior to the Ninth Edition, R–
08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”).
Accordingly, we will not address arguments on the sufficiency of the
Examiner’s position relative prior guidance but rather our analysis that
follows will comport with the 2019 Revised 101 Guidance. We will address
in particular Appellant’s arguments made in the Reply Brief which are raised
in the context of the 2019 Revised 101 Guidance.

Introduction
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 23 covers a “process” and is thus statutory
subject matter for which a patent may be obtained.2 This is not in dispute.

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” Id. at 53.
See also sentence bridging pages 53 and 54 (“consider[] whether the claimed
subject matter falls within the four statutory categories of patentable subject
matter identified by 35 U.S.C. 101.”).
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However, the § 101 provision “contains an important implicit
exception: Laws of nature, natural phenomena, and abstract ideas are not
patentable.” 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)).
In that regard, notwithstanding claim 23 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 23 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Id. at 217.

Alice step one – the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Id. at 218
(emphasis added).
The Examiner determined that claim 23 is “directed to the
abstract idea(s) of determining company loss.” Final Act. 2.
Appellant argues that the claims are not directed to an abstract idea
but rather to an improvement in computer functionality. Appellant mentions
“performance of [a] processor” (Appeal Br. 7) and a “software based
improvement” (Reply Br. 2) as types of improvements in computer
functionality that are obtained by performing the process as claimed.
Accordingly, there is a dispute over whether claim 23 is directed to an
abstract idea. Specifically, is claim 23 directed to determining company loss
(Final Act. 2) or an improvement in computer functionality as Appellant
argues?
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Claim Construction3
We consider the claim as a whole4 giving it the broadest reasonable
construction5 as one of ordinary skill in the art would have interpreted it in
light of the Specification6 at the time of filing.
Claim 23 calls for “a computing device,” albeit only to perform the
first two “calculating” steps and the last “comparing” step; the other recited
steps are not attached to a device and, accordingly, are reasonably broadly
construed as covering performing them by any means, including mentally.
The seven recited steps are:
1. “calculating” A “for each of a plurality of elements based
on” B “for a plurality of events and” C “for the plurality
of events”;

3 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).
4 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).
5 2019 Revised 101 Guidance, page 52, footnote 14 (“If a claim, under its
broadest reasonable interpretation . . . .”).
6 “First, it is always important to look at the actual language of the claims.
… Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part), citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016), among others.

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2. “calculating” D “for each element based on” A “and” E
“for each of the corresponding elements for each of the
plurality of events”;
3. “selecting” F;
4. “determining” G “for a first event of the plurality of events
and” H;
5. “identifying” I;
6. “generating” J “for the first event based on” I; and,
7. “comparing” D “for each element to” K “for each element
for the first event based on” J, “wherein the comparing
occurs within” F “to determine a basis risk for the first
event.”
where,
A is “an element factor”;
B is “a modeled company loss”;
C is “a modeled industry loss”;
D is “a modeled company index loss”;
E is “the modeled industry loss”;
F is “a section of a total range of expected loss values”;
G is “a first mean loss”;
H is “a standard deviation of” G;
I is “a portion of” H “lying within” F;
J is “a first adjustment”; and,
K is “the modeled company loss.”
Claim 23 is reasonably broadly construed as a scheme for determining
a basis risk for an event.
The Specification states that
[t]he reduction of basis risk is a key goal of those designing ILS
[Index-Linked Securities] instruments because the more basis
risk is reduced, the more cost effective and appealing ILS
instruments are as an alternative to standard reinsurance that
reimburses insureds for losses on a basis directly linked to the
insured's (or reinsured’s) actual losses.
Spec., para. 3. “[A]n advantageous tool would present data
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concerning such basis risk to the potential purchaser of these types of
securities.” Id. at para. 4. The Specification goes on to describe
“embodiments . . . related to systems and methods for analyzing risks related
to security instruments for hedging risk against catastrophic losses.” Id. at
para. 25.
Specifically, the exemplary embodiments allow a company (e.g.,
an insurance company) interested in purchasing such security
instruments to visually compare its assumed risk to the index
based risk and help determine whether the purchase of the
security instrument will aid the company in meeting its hedging
goals and also determine the price effectiveness of the security
instrument with respect to these hedging goals. Generally, index
based security instruments have a lower cost than traditional
reinsurance instruments for several reasons, such as the
avoidance of moral hazard in making payouts for catastrophic
losses and the elimination of operational risk related to an
individual insurance company. However, as described above and
as will be described in greater detail below, the value offered to
the buyer of the index based instruments is subject to
inefficiencies because of the existence of basis risk. Thus, the
exemplary embodiments address these inefficiencies in the value
to the buyer of the index based instruments.
Id.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the invention as being
related to hedging, based on the record before us, we reasonably broadly
construe claim 23 as being directed to a scheme for determining a basis risk
for an event associated with, e.g., a modeled company loss.

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The Abstract Idea7
Above, where we reproduce claim 23, we identify in italics the
limitations we believe recite an abstract idea.8 Based on our claim
construction analysis (above), we determine that the identified limitations
describe a scheme for determining a basis risk for an event associated with,
e.g., a modeled company loss. Determining a basis risk is a fundamental
business practice. It falls within the enumerated “[c]ertain methods of
organizing human activity” as grouping of abstract ideas set forth in the
2019 Revised 101 Guidance.9

7 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.
8 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the claim
under examination (individually or in combination) that the Examiner
believes recites an abstract idea.” Id. at 54.
9 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” Id. at 54. This case implicates subject matter
grouping “(b)”: “(b) Certain methods of organizing human activity—
fundamental economic principles or practices (including hedging, insurance,
mitigating risk); commercial or legal interactions (including agreements in
the form of contracts; legal obligations; advertising, marketing or sales
activities or behaviors; business relations); managing personal behavior or
relationships or interactions between people (including social activities,
teaching, and following rules or instructions).” Id. at 52.
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Improvement In the Functioning of a Computer10 (Appellant’s
Argument)
The Examiner’s characterization of what the claim is directed to is
similar to ours, albeit at a lower level of abstraction. “An abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). Cf. id. at 1241 (The
Board’s “slight revision of its abstract idea analysis does not impact the
patentability analysis.”).
We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 23 is directed to.
A principle argument Appellant makes is that the claimed subject
matter is not directed to an abstract idea but rather to an improvement in
computer functionality. However, we do not find that the record adequately
supports it.
Appellant argues, inter alia, that claim 23 provides for an added “an

10 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
apply, rely on, 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.” Id. at 54. One
consideration, implicated here, that is “indicative that an additional element
(or combination of elements) may have integrated the exception into a
practical application” (id. at 55) is if “[a]n additional element reflects an
improvement in the functioning of a computer, or an improvement to other
technology or technical field” (id. at 55).

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improvement to computer technology is realized from the performance of
the processor providing a more comprehensive and thorough evaluation
functionality in basis risk.” Appeal Br. 7. See also Reply Br. 2 (“[T]he
claims relate to a software based improvement that may be used in
evaluating basis risk associated with index based security instruments.”).
The record does not suggest any such realization.
The Specification does not describe the claimed method as providing
an improvement to computer technology or a software-based technology. No
technical improvement is mentioned. Rather, the Specification discloses
only non-technical improvements, such a “[t]he reduction of basis risk is a
key goal.” Spec., para. 3. See also, e.g., id. at para. 4 (“[F]or insurers to
effectively use the hedging potential of these types of security instruments,
the insurers must understand this basis risk with respect to their portfolio.”).
These improvements may help insurers mitigate risk with respect to their
exposure to certain securities but that alone is insufficient to show that there
is a technological improvement. Appellant’s technical improvement
argument is unpersuasive as to error in the Examiner’s or our
characterization of what the claim is directed to because the record evidence
fails to adequately support it. The argument alone cannot take the place of
evidence in the record. See generally In re Glass, 474 F.2d 1015, 1019
(CCPA 1973). See also In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974);
In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984); and In re Schulze, 346
F.2d 600, 602 (CCPA 1965).
We note Appellant’s citation of Finjan, Inc. v. Blue Coat Systems,
Inc., 879 F.3d 1299 (Fed. Cir. 2018). “It is respectfully submitted that the
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claims of the present application are similar in scope to the claims of Finjan
and also relate to a software based improvement that may be used in
evaluating basis risk associated with index based security instruments.”
Appeal Br. 5. We disagree.
The question in Finjan was “whether this behavior-based virus scan in
the '844 patent constitutes an improvement in computer functionality.” Id. at
1304. The court found that it did.
The “behavior-based” approach to virus scanning was
pioneered by Finjan and is disclosed in the '844 patent’s
specification. In contrast to traditional “code-matching” systems,
which simply look for the presence of known viruses, “behavior-
based” scans can analyze a downloadable’s code and determine
whether it performs potentially dangerous or unwanted
operations—such as renaming or deleting files. Because security
profiles communicate the granular information about potentially
suspicious code made available by behavior-based scans, they
can be used to protect against previously unknown viruses as
well as “obfuscated code”—known viruses that have been
cosmetically modified to avoid detection by code-matching virus
scans.
The security profile approach also enables more flexible
and nuanced virus filtering. After an inspector generates a
security profile for a downloadable, a user’s computer can
determine whether to access that downloadable by reviewing its
security profile according to the rules in whatever “security
policy” is associated with the user. Administrators can easily
tailor access by applying different security policies to different
users or types of users. And having the security profile include
information about particular potential threats enables
administrators to craft security policies with highly granular
rules and to alter those security policies in response to evolving
threats.
Id. There is nothing disclosed in the instant Specification that is similarly
technologically-based. The only improvements we have been able to discern
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from reading the Specification are nontechnical. Here, unlike Finjan, the
evidence weighs in favor of the view that the claim’s focus is on
nontechnical improvements, such as helping insurers mitigate risk. Cf.
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384 (Fed. Cir. 2019)
(“The claims are focused on providing information to traders in a way that
helps them process information more quickly, '556 patent at 2:26–39, not on
improving computers or technology.”).
We have carefully reviewed the claim. Per our previous claim
construction analysis, claim 23 is reasonably broadly construed as covering a
scheme for determining a basis risk for an event associated with, e.g., a
modeled company loss employing a generic computing device. We see no
specific asserted improvement in computer capabilities recited in the claim.
Nor does the Specification discuss any. Rather than being directed to any
specific asserted improvement in computer capabilities, the claim and
Specification support the opposite view – that the claimed subject matter is
directed to a scheme for determining a basis risk for an event by employing
a generic computing device. See Spec., paras. 27, 28, 90, and 91.
The claim provides no additional structural details11 that would
distinguish the recited “computing device” from that which was generic and
conventional at the time the application was filed. See, e.g., Spec., para. 90
(“Those skilled in the art will understand that the above-described

11 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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exemplary embodiments may be implemented in any suitable software or
hardware configuration or combination thereof.”).
With respect to the “calculating,” “selecting,” “determining,”
“identifying,” “generating,” and “comparing” steps, the Specification
attributes no special meaning to any of these operations, individually or in
the combination, as claimed. In our view, consistent with the Specification,
these are common computer processing functions that one of ordinary skill
in the art at the time of the invention would have known generic computers
were capable of performing and would have associated with generic
computers. Cf. OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363
(Fed. Cir. 2015):
Beyond the abstract idea of offer-based price
optimization, the claims merely recite “well-understood, routine
conventional activit[ies],” either by requiring conventional
computer activities or routine data-gathering steps. Alice, 134 S.
Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294) (alterations in
original). . . . For example, claim 1 recites “sending a first set of
electronic messages over a network to devices,” the devices
being “programmed to communicate,” storing test results in a
“machine-readable medium,” and “using a computerized
system ... to automatically determine” an estimated outcome
and setting a price. Just as in Alice, “all of these computer
functions are ‘well-understood, routine, conventional
activit[ies]’ previously known to the industry.” Alice, 134 S.Ct.
at 2359 (quoting Mayo, 132 S.Ct. at 1294) (alterations in
original); see also buySAFE[, Inc. v. Google, Inc.], 765 F.3d
[1350,] 1355 [(Fed. Cir. 2014)] (“That a computer receives and
sends the information over a network—with no further
specification—is not even arguably inventive.”).
At best, the “computing device” distinguishes over other generic
computers known at the time the application was filed in the type of
electronic information being processed – that is, for example, a “modeled
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company loss.” But that alone is not patentably consequential. This is so
because “[c]laim limitations directed to the content of information and
lacking a requisite functional relationship are not entitled to patentable
weight because such information is not patent eligible subject matter under
35 U.S.C. § 101.” Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP
Ltd., 890 F.3d 1024, 1032 (Fed. Cir. 2018).
Accordingly, within the meaning of the 2019 Revised 101 Guidance,
we find there is no integration of the abstract idea into a practical
application.
The Reply Brief argues, inter alia, that
the characterization of the “business objective” is precisely the
practical application that qualifies the claims as reciting patent
eligible subject matter … [T]he claims of the present application
are directed to a particular practical application of risk evaluation
through additional considerations relating to mean losses and
standard deviations relative to a total range to generate an
adjustment. Therefore, the claims recite a practical application
that is particular for evaluating basis risk.
Reply Br. 3–4. We disagree.
According to the 2019 Revised 101 Guidance, “[a] claim that
integrates a judicial exception into a practical application will apply, rely on,
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.” 2019 Revised 101 Guidance
54. Setting out a “business objective” for the claimed method does not
“apply, rely on, or use” the scheme for determining a basis risk (to which
claim 23 is directed to) so as to impose any meaningful limit on it. At most it
sets out a field of use (i.e., business) for said scheme. In that regard, the
2019 Revised 101 Guidance indicates that the “courts have . . . identified
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examples in which a judicial exception has not been integrated into a
practical application” (id. at 55) and includes when “an additional element
does no more than generally link the use of a judicial exception to a
particular technological environment or field of use” (id.), which is the case
in setting out a “business objective” as Appellant has argued in the Reply
Brief.
We have considered Appellant’s other arguments challenging the
Examiner’s determination under step one of the Alice framework and find
them unpersuasive. For the foregoing reasons, the record supports the
Examiner’s determination that claim 23 is directed to an abstract idea.

Alice step two – Does the Claim Provide an Inventive Concept?12
Step two is “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 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined that:
The claim(s) do not include additional elements that are
sufficient to amount to significantly more than the judicial
exception because the additional computer elements, which are
recited at a high level of generality, provide conventional

12 This corresponds to Step 2B of the 2019 Revised 101 Guidance 56 “if a
claim has been determined to be directed to a judicial exception under
revised Step 2A, examiners should then evaluate the additional elements
individually and in combination under Step 2B to determine whether they
provide an inventive concept (i.e., whether the additional elements amount
to significantly more than the exception itself).”
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computer functions that do not add meaningful limitations to
practicing the abstract idea.
Final Act. 3. We agree.
We addressed the matter of whether there were any purported specific
asserted improvements in computer capabilities in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”). Such an argument can
also challenge a determination under step two of the Alice framework. See
buySAFE, 765 F.3d at 1354–55. “[R]ecent Federal Circuit jurisprudence has
indicated that eligible subject matter can often be identified either at the first
or the second step of the Alice/Mayo [framework].” 2019 Revised 101
Guidance at 53; see also id. n.17.
Be that as it may, we are unpersuaded that claim 23 presents an
element or combination of elements indicative of a specific asserted
improvement in computer capabilities, thereby rendering the claimed subject
matter sufficient to ensure that the patent in practice amounts to significantly
more than a patent upon a scheme for determining a basis risk employing a
generic “computing device.”
We have reviewed the Specification and, as explained above, we can
find no suggestion of any improvements to the system as a result of
performing the functions as broadly as they are recited.
We cited the Specification in our earlier discussion. It is intrinsic
evidence that the claimed “computing device” as claimed is conventional. In
doing so, we have followed “Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
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(Berkheimer v. HP Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO
Memorandum, Robert W. Bahr, Deputy Commissioner For Patent
Examination Policy, April 19, 2018 (the “Berkheimer Memo”)).
The court in Berkheimer held that “[t]he patent eligibility inquiry may
contain underlying issues of fact.” Berkheimer, 881 F.3d at 1365 (quoting
Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1325
(Fed. Cir. 2016) (“The § 101 inquiry ‘may contain underlying factual
issues.”’)). But the court also held that “[w]hen there is no genuine issue of
material fact regarding whether the claim element or claimed combination is
well-understood, routine, [and] conventional to a skilled artisan in the
relevant field, this issue can be decided on summary judgment as a matter of
law.” Id. at 1368 (emphasis added). This qualification has been subsequently
reiterated.
If there is a genuine dispute of material fact, Rule 56 requires
that summary judgment be denied. In Berkheimer, there was
such a genuine dispute for claims 4–7, but not for claims 1–3
and 9. . . .
. . . .
[I]n accordance with Alice, we have repeatedly recognized the
absence of a genuine dispute as to eligibility for the many
claims that have been defended as involving an inventive
concept based merely on the idea of using existing computers
or the Internet to carry out conventional processes, with no
alteration of computer functionality.
Berkheimer v. HP Inc., 890 F.3d 1369, 1371–73 (Fed. Cir. 2018) (Order, On
Petition for rehearing en banc, May 31, 2018); see also Aatrix Software, Inc.
v. Green Shades Software, Inc., 890 F.3d 1354, 1368 (Fed. Cir. 2018) (“A
factual allegation or dispute should not automatically take the determination
out of the court’s hands; rather, there needs to be justification for why
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additional evidence must be considered—the default being a legal
determination.”).
Here, the Specification indisputably shows the recited “computing
device” individually and in the context as claimed was conventional at the
time of filing. See, e.g., Spec., para. 90 (“Those skilled in the art will
understand that the above-described exemplary embodiments may be
implemented in any suitable software or hardware configuration or
combination thereof.”). Accordingly, we are aware of no facts that would
persuade us that the claimed “computing device” involves anything other
than well–understood, routine, or conventional functionality.
Appellant argues that “the claims effect an improvement to computer
technology through improved performance of a processor in evaluating a
basis risk using an unconventional approach.” Appeal Br. 8. But, again, we
have been unable to find sufficient supporting evidence. Such improvements
could indeed transform claimed subject matter that is otherwise directed to
an abstract idea into something significantly more. But the difficulty here is
that the record insufficiently shows it.
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
that claim 23 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into an inventive application.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 23, and claims 24–42 which stand
Appeal 2019-003054
Application 14/224,991

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or fall with claim 23, are directed to an abstract idea and do not present an
“inventive concept,” we sustain the Examiner’s conclusion that they are
directed to patent-ineligible subject matter for being judicially-excepted
from 35 U.S.C. § 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 F. App’x
991, 997 (Fed. Cir. 2016) (“We have considered all of LendingTree’s
remaining arguments and have found them unpersuasive. Accordingly,
because the asserted claims of the patents in suit are directed to an abstract
idea and do not present an ‘inventive concept,’ we hold that they are directed
to ineligible subject matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs.,
788 F.3d at 1364; FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089,
1098 (Fed. Cir. 2016).
CONCLUSION
The decision of the Examiner to reject claims 23–42 is affirmed.
More specifically:
The rejection of claims 23–42 under 35 U.S.C. § 101 as being directed
to judicially-excepted subject matter is affirmed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
23–42 101 Eligibility 23–42

Appeal 2019-003054
Application 14/224,991

20
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