Edmund H. Louie et al.

Patent Trials and Appeals Board

Jan 10, 2020

12549577 - (D) (P.T.A.B. Jan. 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.
12/549,577 08/28/2009 Edmund H. Louie P55925 9285
157693 7590 01/10/2020
JPMorgan Chase / Greenblum & Bernstein
1950 Roland Clarke Place
Reston, VA 20191
EXAMINER
AKINTOLA, OLABODE
ART UNIT PAPER NUMBER
3691
NOTIFICATION DATE DELIVERY MODE
01/10/2020 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):
gbpatent@gbpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte EDMUND H. LOUIE and MICHAEL X. CAMPBELL
Appeal 2017-009644
Application 12/549,577
Technology Center 3600
BEFORE JOSEPH L. DIXON, MICHAEL J. STRAUSS, and
JON M. JURGOVAN, Administrative Patent Judges.
STRAUSS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 34 and 37–44. Claims 1–33, 35, and 36
are canceled. We have jurisdiction under 35 U.S.C. § 6(b).

1 We refer to the Specification, filed August 28, 2009 as amended (“Spec.”);
Final Office Action, mailed November 16, 2016 (“Final Act.”); Appeal
Brief, filed March 10, 2017 (“Appeal Br.”); Examiner’s Answer, mailed
May 1, 2017 (“Ans.”); and Reply Brief, filed June 29, 2017 (“Reply Br.”).
2 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 JPMorgan Chase
Bank, N.A. Appeal Br. 2.
Appeal 2017-009644
Application 12/549,577
2
We AFFIRM.
CLAIMED SUBJECT MATTER
Appellant describes the present invention as a loan syndication
tracking and management3 system and method that provides a user with
access to specific details related to a syndicated loan. The system
coordinates investor, borrower and resource information, and permits
multiple users to access the information for handling of approvals and
requests related to multiple investors and borrowers and handling institution
interchanges and notifications. Abstract. Independent claim 34 is
representative of the appealed claims. It is reproduced below with labels
added and emphasis added identifying language that recites an abstract idea:
34. A computer-implemented, client server-based, multi-user
loan management system for facilitating management of
syndicate loans for a syndicate manager, each syndicate loan
made to a borrower by a corresponding syndicate group
including at least one investor, the system comprising:
[(i)] at least one database server accessing a database storing a
lender data file being related to a plurality of lenders, a
borrower data file being related to at least one borrower, and
a loan resource data file being related to a plurality of loan
resources;
[(ii)] a processing system accessed by a system user through a
user interface provided over a network, the processing system
including an application server accessing the data stored in
the at least one database through the database server and
executing instructions to implement:
[(a)] a borrower management module including
instructions executed by the processing system for
identifying, accessing and retrieving the borrower

3 As used herein and unless otherwise indicated, we treat loan management
and loan administration as having equivalent meanings and use the terms
interchangeably.
Appeal 2017-009644
Application 12/549,577
3
information, and for creating a corresponding
borrower information data file;
[(b)] an investor management module including
instructions executed by the processing system for
identifying, accessing and retrieving the investor
information, and for creating a corresponding investor
information data file;
[(c)] a transaction management module including
instructions executed by the processing system for
identifying, accessing and retrieving the information
corresponding to particular transactions, and for
creating a corresponding transaction information data
file;
[(d)] a loan management module comprising a syndicate
loan sub-module and a facility management sub-
module, the loan management module including
instructions executed by the processing system upon
receiving a credit facility selection for identifying,
accessing, and retrieving information pertaining to a
corresponding syndicate loan, and for creating a
syndicate loan data file;
[(e)] a report module associated with a report server
configured to manage combined data files associated
with the loan management module, the transaction
management module, the borrower management
module and the investor management module, the
report module implemented by the processing system
to further generate reports based at least in part on the
combined data files related to selected parameters;
[(f)] a syndicate manager interface enabling syndicate
manager access to the multi-user system over the
network, including access to the generated reports
through the report server;
[(g)] a business logic module including stored pre-
defined criteria for determining if parameters of a
transaction are within appropriate value ranges,
wherein said business logic is operable to receive and
analyze a transaction request from a user through said
syndicate manager interface and operable to
Appeal 2017-009644
Application 12/549,577
4
automatically approve said transaction request based
on said pre-defined criteria; and
[(iii)] a loan portion ownership transfer module operable to
electronically notify investors in said loan management
system of a first investor offering a loan portion for at least
one of a sale and a trade, said loan portion ownership transfer
module being further operable to consummate said at least
one of said sale and said trade, whereby recordation of a
transfer of said loan portion ownership is made in said loan
management system,
[(iv)] wherein said transfer module is further operable to
electronically notify said first investor and another party to
said transfer of consummation of said transfer.

REJECTION
Claims 34 and 37–44 stand rejected under 35 U.S.C. § 101 as being
directed to patent-ineligible subject matter. Final Act. 2–5.4
ANALYSIS
Except as noted, we adopt as our own the findings, determinations,
and reasons set forth by the Examiner in the (1) action from which this
appeal is taken (Final Act. 2–5) and (2) Examiner’s Answer in response to
Appellant’s Appeal Brief (Ans. 2–8) and concur with the findings,
determinations and conclusions reached by the Examiner. We highlight the
following for emphasis.
STANDARD OF REVIEW
We review the appealed rejections for error based upon the issues
identified by Appellant, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential).

4 Rather than repeat the Examiner’s positions and Appellant’s arguments in
their entirety, we refer to the above-mentioned Appeal Brief, as well as the
Final Action, Examiner’s Answer and Reply Brief.
Appeal 2017-009644
Application 12/549,577
5

PRINCIPLES OF LAW
A. SECTION 101
Inventions for “new and useful process, machine, manufacture, or
composition of matter” generally constitute patent-eligible subject matter.
35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted
35 U.S.C. § 101 to include implicit exceptions: “[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).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-step framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice. Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–
77). In accordance with that framework, we first determine what concept
the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the
claims before us are drawn to the concept of intermediated settlement, i.e.,
the use of a third party to mitigate settlement risk.”); see also Bilski v.
Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’
application explain the basic concept of hedging, or protecting against
risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
Appeal 2017-009644
Application 12/549,577
6
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69
(citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Court held that “[a] claim drawn to subject matter otherwise statutory does
not become nonstatutory simply because it uses a mathematical formula.”
Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as
nothing more than a process for molding rubber products and not as an
attempt to patent a mathematical formula.”). Having said that, the Court
also indicated 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) (citation omitted); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
eligible application.” Alice, 573 U.S. at 221 (internal quotation marks
omitted). “A claim that recites an abstract idea must include ‘additional
features’ to ensure ‘that the [claim] is more than a drafting effort designed to
Appeal 2017-009644
Application 12/549,577
7
monopolize the [abstract idea].’” Id. (alterations in original) (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.

B. USPTO SECTION 101 GUIDANCE
In January 2019, the United States Patent and Trademark Office
(“USPTO”) published revised guidance on the application of 35 U.S.C.
§ 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84
Fed. Reg. 50 (Jan. 7, 2019) (“2019 Guidance”), updated by USPTO, October
2019 Update: Subject Matter Eligibility (available at https://www.uspto.gov/
sites/default/files/documents/peg_oct_2019_update.pdf) (jointly referred to
as “the 2019 Guidance”); see also October 2019 Patent Eligibility Guidance
Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October update).
Under the 2019 Guidance, we first look to whether the claim recites
the following:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)).
2019 Guidance, 84 Fed. Reg. at 52–55.
Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then look to
whether the claim:
Appeal 2017-009644
Application 12/549,577
8
(3) adds a specific limitation beyond the judicial exception that is not
“well-understood, routine, [and] conventional” in the field (see MPEP
§ 2106.05(d)); 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 Guidance, 84 Fed. Reg. at 56.

EXAMINER’S FINDINGS and CONTENTIONS OF ERROR
The Examiner determines:
[C]laim [34] describes the process of managing syndicate loans,
which is a commercial arrangement involving a borrower and
plurality of lenders. Managing such commercial arrangement of
syndicate loans is similar to the fundamental economic practices
found by the courts to be abstract ideas (e.g., hedging in Bilski,
mitigating settlement risk in Alice). Therefore, claim 34 is
directed to an abstract idea.
Final Act. 2. The Examiner further determines “[t]he system/method
[claims] consist[] of solely mental steps which can be carried out by a
human using pen and paper. The claims do not impose any requirements
that would make the invention impossible to carry out manually.” Id. at 3.
In addition to the step elements reciting processes capable of being
performed in the human mind and/or with pen and paper, the Examiner
identifies additional claim elements including a processor, database, and
various modules performing the claimed steps. According to the Examiner,
these additional elements require “uses [of] a generic computer to implement
an abstract idea . . . does not make the claim any less abstract.” Id. The
Appeal 2017-009644
Application 12/549,577
9
Examiner concludes “[t]he claim as a whole does not amount to significantly
more than an abstract idea.” Id.
Addressing Step 2A, Appellant contends the Examiner’s analysis is
flawed, arguing the Examiner’s finding that the pending claims are
analogous to those found by the courts to be directed to ineligible
fundamental economic practices is based an improper oversimplification of
the claims. Appeal Br. 7 (citing Enfish, LLC v. Microsoft Corp., 822 F.3d
1327 (Fed. Cir. 2016)). According to Appellant “the Examiner has . . .
ignored the clear benefits of the invention, as explained in the
Specification.” Id. at 8. Appellant argues “[t]he claimed invention recites
concrete and physical steps to facilitate such a multi-loan management
system for a syndicate manager.” Id. at 9. Appellant further contends the
Examiner improperly bases the rejection on the premise “that because the
invention may be run on a general purpose computer, the claims are de facto
directed to non-statutory subject matter.” Id. (citing Final Act. 3).5
Appellant further argues the claims are not directed to an abstract idea
because they require physical elements. Id. at 10. Appellant emphasizes
“the fact that embodiments of the invention may run on a general purpose
computer does not preclude a claim from passing muster under 35 U.S.C.
§ 101.” Id.
In connection with Step 2B, Appellant contends the claims recite
elements that amount to significantly more than the judicial exception,
enumerating four bases for reversal. Appeal Br. 11–19. Firstly, Appellant

5 “The claim simply uses a generic computer to implement an abstract idea.
The use of a generic computer for implementing an abstract idea does not
make the claim any less abstract.” Final Act. 3.
Appeal 2017-009644
Application 12/549,577
10
contends the Examiner fails to analyze the claim as a whole. Id. at 11–13.
Appellant argues the Examiner merely addresses the individual steps but
“has failed to take into account the subject matter of the claims and the
problem they are directed toward solving.” Id. at 12.
Secondly, Appellant argues “the present claims pose no risk of
preemption for any field of human endeavor.” Id. at 13 (formatting altered).
Appellant cites Tuxis Techs., LLC v. Amazon.com, Inc. No. 13-cv-1771
RGA, 2014 WL 4382446 (D. Del. Sept. 3, 2014) in support of argument that
claims including narrowing limitations do not cover the full abstract idea
itself thereby rendering them patent-eligible. Id. at 14–15.
Thirdly, Appellant contends “[t]he Examiner’s application of the
Mayo/Alice framework, however, has virtually guaranteed a ban of any and
all software and business method patents.” Id. at 15. Appellant argues
“[t]he claimed invention, like the invention in Messaging Gateway
Solutions, is ‘firmly rooted in technology’ and is addressed to a specific
problem. Furthermore, similar to Messaging Gateway Solutions, the claim
limitations ‘contain sufficient limitations to prevent it from preempting an
abstract idea.’” Id. at 16 (citing Messaging Gateway Solutions, LLC v.
Amdocs, Inc., Nos. 14-732-RGA to 14-737-RGA, 2015 WL 1744343 (D.
Del. Apr. 15, 2015)). Appellant further argues “[t]he claimed invention here
is analogous to the claims in DDR Holdings[6] that were found to recite
patent-eligible subject matter because the claims address the specific
problem of the lack of an automated management solution for syndicated
loans.” Id.

6 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256–57 (Fed.
Cir. 2014)
Appeal 2017-009644
Application 12/549,577
11
Fourthly, Appellant contends “The Claims Fall Under At Least Three
Of The Six Non-Limiting Categories Described in Alice” because they
(i) include steps that are not routine or conventional in the field, (ii) “provide
meaningful limitations beyond generally linking the use of an allegedly
abstract idea to a particular technological environment”; and (iii) “none of
the physical components . . . or their operations are superfluous or mere
insignificant ‘post-solution’ elements and are tied to a specific machine.” Id.
at 17–18.
In concluding argument, Appellant asserts:
The Office Argues that the claims are not statutory because they
consist of solely mental steps which can be carried out by a
human using pen and paper. Appellant respectfully submits that
the specific hardware structure as set forth in the claims
precludes this statement from being accurate. Furthermore, as
set forth in the background section of the present specification,
syndicate loan management is a highly complex activity that
requires a handling a large amount of data related to various
aspects of the loan. Success in becoming a syndicate manager
often depends on adroitly organizing contact information to
facilitate a market monitoring process between lenders and
borrowers. Numerous updates and notifications are required
after loan closing. Accordingly, the evolving complexity
requires much more than a human using a pen and a piece of
paper.
Id. at 19.
The Examiner responds, asserting the claim language has not been
oversimplified. Ans. 2.
The management of syndicate loans as recited describes a
commercial arrangement involving a borrower and plurality of
lenders. Such management of commercial transactions is a
fundamental economic practice long prevalent in our system of
commerce even before the advent of computers and/or internet.
Appeal 2017-009644
Application 12/549,577
12
While using computers and internet may have the advantage of
making the system faster and more efficient, they nonetheless do
not make it any less abstract because that is what computers are
meant to do conventionally. The use of computers to carry out
an abstract idea does not the claim less abstract. The recited
server, processing system, modules and interface are recited at a
high level of generality to simply perform the generic functions
as recited in the claim.
Id. at 2–3. The Examiner further finds the claims are unlike those
determined to be patent-eligible in Enfish. Id. at 3. Rather than providing a
specific improvement (i.e., providing a particular database technique) to how
computers perform a basic function (i.e., the storage and retrieval of data) as
in Enfish, the Examiner asserts the pending claims are “focused . . . on
asserted advances in uses to which existing computer capabilities could be
put.” Id. (citing Enfish, 822 F.3d at 1335–36, BASCOM Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016),
and Alice, 573 U.S. at 226). Similarly, the Examiner distinguishes the
pending claims from those determined patent-eligible in BASCOM, finding
no requirement for “any nonconventional computer, network, or display
components, or even a ‘nonconventional and non-generic arrangement of
known, conventional pieces,’ but merely [the] performance of the claimed
information collection, analysis, and display functions ‘on a set of generic
computer components’ and display devices.” Id. at 3–4 (citing BASCOM,
827 F.3d at 1350).
Contesting Appellant’s argument alleging that the claims are not
analogous to those found patent eligible by the courts, the Examiner
“considers this case comparable to cases where financial/commercial
arrangements, aimed at furthering favorable financial outcomes for one or
Appeal 2017-009644
Application 12/549,577
13
more parties, have been held to be abstract ideas.” Id. at 4 (citing Alice, 573
U.S. at 212, Bilski, 561 U.S. 593, 599, Association for Molecular Pathology
v. Myriad Genetics, Inc., 569 U.S. 576, 591–92 (2013)). The Examiner
further disputes Appellant’s argument the claims are eligible under Step 2B
because “[t]he claimed invention involves a technology-specific ‘inventive
concept’” (Appeal Br. 16 (citing Messaging Gateway Solutions, LLC v.
Amdocs, Inc., 2015 WL 1744343, at *5 (D. Del. Apr. 15, 2015)). Examiner
responds, asserting “the fact that a claimed concept is ‘[g]roundbreaking,
innovative, or even brilliant’ does not ‘itself satisfy the § 101 inquiry.’”
Ans. 4–5 (citing Myriad Genetics, 569 U.S. at 591). The Examiner also
disputes Appellant’s allegation that the claim elements were not evaluated
both individually and in ordered combination in determining whether the
claims include significantly more than an abstract idea, explaining “[t]he
Examiner identified additional elements of the claim such as the processor,
database and modules and determined that these elements do not amount to
significantly more because they are generic computer components with basic
functionality for managing syndication of loans.” Id. at 5.
In response to Appellant’s preemption argument (Appeal Br. 13–15),
the Examiner refers to the court’s decision in Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015), quoting the decision:
“[w]hile preemption may signal patent ineligible subject matter, the absence
of complete preemption does not demonstrate patent eligibility.” Ans. 6.
The Examiner further disputes Appellant’s contention that the
Examiner’s approach amount to a de facto ban on software patents,
responding “[t]he Examiner did not say all software patents are ineligible.”
Id. Instead, the Examiner explains he “simply went by the courts’
Appeal 2017-009644
Application 12/549,577
14
decisions/precedents regarding use of generic computers (which inherently
consists of both hardware and software) to implement abstract idea[s].” Id.
The Examiner disagrees the pending claims are similar to those
determined to be patent-eligible in DDR. According to the Examiner the
claims are not directed to a solution rooted in computer technology in order
to overcome a problem specifically arising in the realm of computer
networks as in DDR. Id. at 7. Instead, “the instant claims provide a
generically computer-implemented solution to a commercial/business
arrangement between a borrower and plurality of lenders, and are thus
incomparable to the claims at issue in DDR.” Id. The Examiner also
dismisses Appellant’s arguments alleging “the claims fall under at least three
of the six non-limiting categories described in Alice” (Appeal Br. 17–19)
because “under current 35 USC 101 examining practice, the existence of
such novel and/or non-obvious features [] does not necessarily cure the
deficiencies with respect to the abstract idea” (Ans. 7).
In connection with Step 2A, the Examiner concludes,
[The] Examiner cannot identify any meaningful limitation either
individually or as an ordered combination, beyond generally
linking the use of the abstract idea to a particular technological
environment. The recited server, processing system, modules
and interface are recited at a high level of generality to simply
perform the generic functions as recited in the claim.
Id. at 8.
In reply, Appellant maintains the claims are patent eligible, repeating
the argument alleging the Examiner has improperly overgeneralized the
inventive concept in determining the claims are directed to an abstract idea
and has failed to consider “the specific unique steps that are specifically
provided in the claims.” Reply Br. 3. Appellant argues:
Appeal 2017-009644
Application 12/549,577
15
[T]he Examiner failed to fill in the logical gap - (a) why the
claimed invention could be distilled to merely “management of
syndicate loans” without giving weight to the rest of the claim
language including the novel methodology and (b) why the
particularly claimed “computer-implemented, client server-
based, multi-user loan management system for facilitating
management of syndicate loans for a syndicate manager, each
syndicate loan made to a borrower by a corresponding syndicate
group including at least one investor. . . ” is “abstract.”
Id. “Appellant further directs the Board’s attention to the recent Federal
Circuit decision in Trading Technologies International Inc., v. CQG, Inc.,
675 Fed Appx. 1001 (Fed. Cir. 2017)” in arguing “the pending claims are
[patent-eligible as] directed to a computing system accessible to end-user
devices that is rooted in technology.” Id. at 5 (citation edited). According to
Appellant “the claims seek to solve an Internet-centric problem of
providing a multiuser system for managing and accessing the substantial
amount of data that is inherently required in these types of loans and thus is
necessarily [rooted] in computer technology.” Id. at 7. Appellant further
argues:
[W]hile the invention may have originated with the idea of
facilitating management of syndicate loans for a syndicate
manager, the system as claimed includes specific structure
including a remote storage medium accessed by a remote
database server, and an application server accessible over a
network by a system participant. Furthermore, the system
includes at least one specifically programmed processor.
Id. at 8–9.
ANALYSIS
Step 2A, Prong 1
Under Step 2A, Prong 1, of the 2019 Guidance, we first look to
whether the claim recites any judicial exceptions, including certain
Appeal 2017-009644
Application 12/549,577
16
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic principles or
practices, or mental processes). 2019 Guidance, 84 Fed. Reg. at 52–54.
Limitations (i), (ii), (ii)(f) require accessing data. Limitations (ii)(a)
through (ii)(d) require the capability of identifying, accessing, and retrieving
information and creating a resultant collection of information (e.g., a data
file). Accessing, retrieving, identifying, and collecting the results of
identifying certain information are concepts that can be performed in the
human mind as observations and the evaluation of information and
reasonably can be characterized as mental processes. The 2019 Guidance
expressly recognizes mental processes, including observations, evaluations,
judgments, and opinions that can be performed in the human minds or using
pen and paper as patent-ineligible abstract ideas. Accordingly, accessing,
retrieving, identifying, and collecting limitations (i), (ii), (ii)(a) through
(ii)(d) and (ii)(f) can be characterized as reciting a judicial exception to
patent-eligible subject matter.
Limitation (ii)(e) requires the capability of managing combined data
files . . . to . . . generate reports based at least in part on the combined data
. . . related to selected parameters. Generating a report (i.e., collecting
information) based on source information and specified criteria can be
performed in the human mind as the observation and evaluation of
information and reasonably can be characterized as mental processes.
Accordingly, limitation (ii)(e) can be characterized as reciting a judicial
exception to patent-eligible subject matter.
Limitation (iii) requires that capability of notifying investors of a first
investor offering a loan portion for at least one of a sale and a trade, and
Appeal 2017-009644
Application 12/549,577
17
consummating said at least one of said sale and said trade, whereby a
transfer of said loan portion ownership is recorded. Appellant directs
attention to the Specification at page 26, line 24 through page 27, line 6,
together with originally filed claim 2 for support of the requirement to
consummate the sale or trade. Appeal Br. 5 (Summary of Claimed Subject
Matter). However, we are unable to identify therein or elsewhere in
Appellant’s disclosure any definition of what is required to consummate a
sale or trade. Thus, based on the language of original claim 2 as
incorporated into limitation (iii), we interpret “consummate” to require
recordation of a transfer of loan portion ownership as recited by the
associated wherein clause of claim 34. Notifying others and recording
information are tasks that can be accomplished in the human mind or using
pen and paper. Accordingly, limitation (iii) can be characterized as reciting
a judicial exception to patent-eligible subject matter.
Limitation (iv) requires the capability to notify (a) the first investor
and (b) another party to the transfer of consummation of the transfer.
Notifying others can be accomplished using pen and paper. Accordingly,
limitation (iv) can be characterized as reciting a judicial exception to patent-
eligible subject matter.
For these reasons, the above-identified limitations encompass steps
that can be reasonably performed by a human mentally or with pen and
paper. The 2019 Guidance identifies an evaluation performed by a human
mentally or with pen and paper as a mental process, and thus an abstract
idea. 2019 Guidance, 84 Fed. Reg. at 52 nn.14–15; see also Intellectual
Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016)
(“Symantec”) (“[W]ith the exception of generic computer-implemented
Appeal 2017-009644
Application 12/549,577
18
steps, there is nothing in the claims themselves that foreclose them from
being performed by a human, mentally or with pen and paper.”).
We further agree with the Examiner, when considered as an ordered
combination, the claims are directed to “[t]he management of syndicate
loans [that are] a commercial arrangement involving a borrower and
plurality of lenders. Such management of commercial transactions is a
fundamental economic practice long prevalent in our system of commerce
even before the advent of computers and/or internet.” Ans. 2. This
determination is consistent with Appellant’s disclosure that “[t]he present
invention relates to a syndication loan management and administration
system for tracking information related to a syndicated loan.” In addition to
being a fundamental economic principle or practice, the claims may also be
characterized as being directed to administering (i) agreements in the form
of a contact, (ii) legal obligations, and/or (iii) business practices, all
characterized as commercial or legal interactions. Both (i) fundamental
economic principles or practices and (ii) commercial or legal interactions are
certain method or organizing human activity considered to be abstract ideas.
MPEP § 2106.04(a)(2)(II); 2019 Guidance, 84 Fed. Reg. at 52. See also
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012) (claims
directed to abstract idea of processing loan information through a
clearinghouse); LendingTree, LLC v. Zillow, Inc., 656 F. App'x 991, 997
(Fed. Cir. 2016) (holding ineligible claims to a computerized method of
speeding up a loan-application process); Credit Acceptance Corp. v.
Westlake Services, 859 F.3d 1044, 1064-1065 (Fed. Cir. 2017) (holding that
claims directed to automating previously manual processing of loan
applications to be ineligible subject matter, because the claims did not
Appeal 2017-009644
Application 12/549,577
19
amount to a technical improvement sufficient to render the abstract idea
patent eligible).
We are unpersuaded by Appellant’s argument that “syndicate loan
management is [such] a highly complex activity that requires . . . handling a
large amount data, . . . numerous updates and notifications . . . [that] the . . .
complexity requires much more than a human using a pen and a piece of
paper.” Appeal Br. 19. Not only is Appellant’s argument not commensurate
in scope with claim 34 which fails to include any limitations involving
complexities of processes or amounts of data, but is also deficient for lack of
supporting evidence of the facts asserted. In particular, Appellant’s
argument and conclusory statement, which are unsupported by factual
evidence, are entitled to little probative value. In re Geisler, 116 F.3d 1465,
1470 (Fed. Cir. 1997); In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir. 1984).
Attorney argument is not evidence. In re Pearson, 494 F.2d 1399, 1405
(CCPA 1974).
We also conclude Appellant’s argument is unpersuasive because any
capability to process large amounts of data comes from the capabilities of
the generic computer components--not the recited process itself. See
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016) (alteration in original) (citing Bancorp Servs., L.L.C. v. Sun Life
Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he
fact that the required calculations could be performed more efficiently via a
computer does not materially alter the patent eligibility of the claimed
subject matter.”)); see also Intellectual Ventures I LLC v. Erie Indem. Co.,
711 Fed.Appx. 1012, 1017 (Fed. Cir. 2017) (unpublished) (“Though the
claims purport to accelerate the process of finding errant files and to reduce
Appeal 2017-009644
Application 12/549,577
20
error, we have held that speed and accuracy increases stemming from the
ordinary capabilities of a general-purpose computer ‘do[] not materially alter
the patent eligibility of the claimed subject matter.”’) (alteration in original)
(citation omitted). Like the claims in FairWarning, the focus of claim 34 is
not on an improvement in computer processors as tools, but on syndicate
loan management using generic computing components as tools. See
FairWarning, 839 F.3d at 1095.
For the reasons discussed above, each of the recited limitations (i)
through (iv) of claim 34 reasonably can be characterized as reciting a
judicial exception to patent-eligible subject matter under Step 2A, Prong 1,
of the 2019 Guidance.
Step 2A, Prong 2
Under Step 2A, Prong 2, of the 2019 Guidance, we next analyze
whether claim 34 recites additional elements that individually or in
combination integrate the judicial exception into a practical application.
2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance provides
exemplary considerations that are indicative of an additional element or
combination of elements integrating the judicial exception into a practical
application, such as an additional element reflecting an improvement in the
functioning of a computer or an improvement to other technology or
technical field. Id. at 55; MPEP § 2106.05(a).
In addition to the mental processes discussed above, claim 34 recites a
(i) a database server; (ii) a processing system accessed by a system user
through a user interface provided over a network, the processing system
including an application server; (ii)(a) borrower, (ii)(b) investor, (ii)(c)
transaction, and (ii)(d) loan management modules including instructions
Appeal 2017-009644
Application 12/549,577
21
executed by the processing system for identifying, accessing and retrieving
specified information and creating respective information data files; (ii)(e)
report module associated with a report server to manage combines files and
generate reports, (ii)(f) a syndicate manager interface enabling syndicate
manager access to the multi-user system over the network, including access
to the generated reports through the report server, (ii)(g) a business logic
module including stored pre-defined criteria [and] operable to receive and
analyze a transaction request from a user through said syndicate manager
interface and . . . automatically approve said transaction request based on
said pre-defined criteria; (iii) a loan portion ownership transfer module
operable to electronically notify investors in said loan management system
of a first investor offering a loan portion for at least one of a sale and a trade,
[and] consummate said at least one of said sale and said trade, whereby
recordation of a transfer of said loan portion ownership is made in said loan
management system; and (iv) wherein said transfer module is further
operable to electronically notify said first investor and another party to said
transfer of consummation of said transfer.
We agree with Examiner “[t]he recited server, processing system,
modules and interface are recited at a high level of generality to simply
perform the generic functions as recited in the claim.” Ans. 3. We do not
ascertain any features provided by these additional elements that integrate
the judicial exception into a practical application according to the 2019
Guidance. Instead, we agree with the Examiner “[taking] the elements both
individually and as a combination, the processor, database and modules
components in claim 34 perform purely generic computer functions” such
that the additional elements are insufficient to amount to significantly more
Appeal 2017-009644
Application 12/549,577
22
than the concept of managing syndicate loans. Final Act. 3. See Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(“Nothing in the claims, understood in light of the specification, requires
anything other than off-the-shelf, conventional computer, network, and
display technology for gathering, sending, and presenting the desired
information”); 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”);
Alice, 573 U.S. at 224–26 (receiving, storing, sending information over
networks insufficient to add an inventive concept); In re Katz Interactive
Call Processing Patent Litigation, 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”).
Furthermore, the Federal Circuit has held, “the use of conventional
computer components, such as a database and processors, operating in a
conventional manner” “do[es] not confer patent eligibility.” Intellectual
Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1371 (Fed. Cir.
2015). This is because “mere automation of manual processes using generic
computers does not constitute a patentable improvement in computer
technology.” Credit Acceptance, 859 F.3d at 1055.
Although limitations (iii) and (iv) requiring steps of notification and
recordation are part of the recited abstract idea, for purposes of this
Decision, we alternatively evaluate these steps as additional elements.
These steps, however, are the type of insignificant extra-solution activity the
courts have determined insufficient to transform judicially excepted subject
Appeal 2017-009644
Application 12/549,577
23
matter into a patent-eligible application. See 84 Fed. Reg. at 55, 55 n.31;
MPEP § 2106.05(g); Parker v. Flook, 437 U.S. 584, 590 (1978)
(determining that adjusting an alarm limit is insignificant extra-solution
activity and explaining “[t]he notion that post-solution activity, no matter
how conventional or obvious in itself, can transform an unpatentable
principle into a patentable process exalts form over substance”); Bancorp
Servs., L.L.C. v. Sun Life Assur. Co. of Can., 771 F. Supp. 2d 1054, 1065
(E.D. Mo. 2011) aff'd, 687 F.3d 1266 (Fed. Cir. 2012) (explaining that
“providing data . . . [is] insignificant post-solution activity”); Bilski v.
Kappos, 561 U.S. 593, 612 (2010) (holding the use of well-known
techniques to establish inputs to the abstract idea as extra-solution activity
that fails to make the underlying concept patent eligible); Elec. Power, 830
F.3d at 1354 (recognizing “that merely presenting the results of abstract
processes of collecting and analyzing information, without more (such as
identifying a particular tool for presentation), is abstract as an ancillary part
of such collection and analysis”).
We are unpersuaded the Examiner’s characterization of the claims as
being directed to a fundamental economic practice is an oversimplification.
See Appeal Br. 7. Our reviewing court recognizes that [a]n abstract idea can
generally be described at different levels of abstraction.” Apple, Inc. v.
Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016). That need not and, in
this case does not, “impact the patentability analysis.” Id. at 1241. Further,
“[a]n abstract idea can generally be described at different levels of
abstraction. . . . The Board’s slight revision of its abstract idea analysis does
not impact the patentability analysis.” Id. Moreover, merely combining
several abstract ideas does not render the combination any less abstract.
Appeal 2017-009644
Application 12/549,577
24
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017)
(“Adding one abstract idea (math) to another abstract idea . . . does not
render the claim non-abstract.”); see also FairWarning, 839 F.3d at 1093–
94 (determining the pending claims were directed to a combination
of abstract ideas). Thus, the patentability analysis in this Appeal does not
turn on exactly how various limitations are characterized as being abstract,
i.e., as either an abstract mental processes or certain methods of organizing
human activity (i.e., fundamental economic principles or commercial or
legal interactions). Thus, we likewise disagree with the Examiner’s
comparison of the pending claims to those determined to be patent-ineligible
in Alice and Bilski is flawed or inadequate. See Final Act. 2, Ans. 4.
We are also unpersuaded the rejection is flawed because, as alleged by
Appellant, the Examiner has not considered the benefits of the invention.
Appeal Br. 8. In particular, Appellant argues the invention provides an
efficient tool to administer loans and providing Internet communication
capabilities. Id. This is consistent with the Examiner’s finding that “the
focus of the claims is not on such an improvement in computers as tools, but
on certain independently abstract ideas that use computers as tools.” Ans. 3.
Thus, any improvement is not to the tool(s) used to implement loan
administration, i.e., the computer or other technology, but to the task of
administering a loan. Because the argued improvement is to the concept of
administering a loan, a concept that we determine is patent-ineligible for the
reasons discussed above, the improvement does not integrate the judicial
exception into a practical application. Likewise, we are unpersuaded the
claims are patent-eligible because, as argued by Appellant, they recite
“concrete and physical steps to facilitate . . . a multi-loan management
Appeal 2017-009644
Application 12/549,577
25
system for a syndicate manager” or require physical elements. Appeal Br. 9,
10. Mere instructions to implement an abstract concept on a computer is
insufficient to qualify as significantly more. Alice, 573 U.S. at 226. We also
disagree the rationale used in determining the pending claims are patent-
ineligible is a de facto ban on software patents (Appeal Br. 9) for the reasons
expressed by the Examiner (Ans. 6) and discussed above.
We also disagree the rejection is improper because, as alleged by
Appellant, the Examiner has failed to take account the subject matter of
claims and problem solved. Appeal Br. 12. The Examiner determines the
claims are directed to the management of syndicate loans described as a
commercial arrangement involving a plurality of lenders. Ans. 2. In
connection with the problem solved, Appellant directs attention to the
Specification at pages 1–4. Appeal Br. 15. However, Appellant fails to
specify what technical problems are addressed and/or overcome by the
invention. Instead, the Specification describes problems of syndicate loan
management including “handling a large amount of data” (Spec. 2, l. 20),
tracking and updating loan resources, facilities, syndicate member,
borrower, and payment information and legal requirements (id. at 2, l 21 – 3,
l. 2), and managing “voluminous legal documents” (id. at 3, ll. 22–24).
Appellant further discloses “[a]s the loan matures, further functionality is
desirable, such as sharing data with other systems, analyzing loan
parameters and providing further access and integration with desktop type
systems.” Id. at 4, ll. 2–4.
It would be advantageous to any syndicate loan manager to have
a tool to efficiently handle the demands of loan administration,
while providing functionality for new possibilities of
communication, including the Internet, in a single package.
Presently, there is no known system that can deliver the needed
Appeal 2017-009644
Application 12/549,577
26
functionality in a complete and efficient manner in a single
package to handle the complexities and sophistication of these
types of deals in their present form. Accordingly, there is a need
for a multi-user sophisticated syndicated loan management
system which has high reliability, efficiency and accessibility.
Id. at 4, ll. 11–19. That is, the problem described may be summarized as the
need for a system to collect, process, and make available large quantities of
data involved in loan administration using an appropriate tool. In this case,
the tool used is disclosed as conventional computing resources for
performing the required tasks involved in administering a syndicate loan.
However, we do not ascertain any disclosure of a technical problem
addressed by the claimed system which is described and claimed at a high
level of generality in terms of a database, processing system, and modules
for performing loan administration tasks.
Appellant’s preemption argument (Appeal Br. 13) is also
unpersuasive for the reasons explained by the Examiner (Ans. 5–6). In
particular, preemption is not a stand-alone test for eligibility. Although
preemption “‘might tend to impede innovation more than it would tend to
promote it,’ thereby thwarting the primary object of the patent laws” (Alice,
573 U.S. at 216 (quoting Mayo, 566 U.S. at 71)), “the absence of complete
preemption does not demonstrate patent eligibility” (Ariosa Diagnostics, 788
F.3d at 1379); see also OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359,
1362–63 (Fed. Cir. 2015) (“[T]hat the claims do not preempt all price
optimization or may be limited to price optimization in the e-commerce
setting do not make them any less abstract.”).
Appellant’s citation to Tuxis Techs (Appeal Br. 14) is also
unpersuasive. The cited case is not controlling law and does not have legal
Appeal 2017-009644
Application 12/549,577
27
weight commensurate with guidance from the Federal Circuit, which is our
reviewing court. Rather than preemption, the Federal Circuit instructs that
the Alice two-step analysis is the test for whether claims are statutory.
“Where a patent’s claims are deemed only to disclose patent ineligible
subject matter under the Mayo framework, as they are in this case,
preemption concerns are fully addressed and made moot.” Ariosa
Diagnostics, 788 F.3d at 1379.
Appellant’s contention “[t]he Examiner’s application of the
Mayo/Alice framework, however, has virtually guaranteed a ban of any and
all software and business method patents” (Appeal Br. 15) is unpersuasive
for the reasons discussed above. We are also unpersuaded by Appellant’s
reliance on DDR Holdings. Id. As explained by the Examiner (Ans. 7), in
DDR Holdings the claims at issue involved “web pages displays [with] at
least one active link associated with a commerce object associated with a
buying opportunity of a selected one of a plurality of merchants.” DDR
Holdings, 773 F.3d at 1249. In determining that the claims in DDR
Holdings were not abstract, the court noted
these claims stand apart because they do not merely recite the
performance of some business practice known from the pre-
Internet world along with the requirement to perform it on the
Internet. Instead, the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically
arising in the realm of computer networks.
Id. at 1257.
Here, the problem does not specifically arise from a technology such
as computers or computer networks. Appellant asserts “the claims address
the specific problem of the lack of an automated management solution for
syndicated loans.” Appeal Br. 16. However, other than allege “the claims
Appeal 2017-009644
Application 12/549,577
28
seek to solve an Internet-centric problem of providing a multiuser system
for managing and accessing the substantial amount of data” (id.), Appellant
fails to explain why automating a manual process of syndicate loan
administration addresses a technical problem or provides a technical
solution.
Appellant’s further reliance on Messaging Gateway Solutions is
similarly unpersuasive. Appeal Br. 16. In that case the district court
determined that the asserted claims resembled the patent-eligible claims in
DDR Holdings because they addressed a “problem specifically arising in the
realm of computer networks,” i.e., a “problem unique to text-message
telecommunication between a mobile device and a computer.” Messaging
Gateway Solutions, 2015 WL 1744343, at *5 (quoting DDR Holdings, 113
F.3d at 1257). As explained above, however, the claim here does not
address a “problem specifically arising in the realm of computer networks”
and does not contain a similar inventive concept as the patent-eligible claims
in DDR Holdings.
Appellant’s contention that the Examiner has failed to fill a logical
gap between the focus of the claim as determined by the Examiner (i.e., the
management of syndicate loans) and its implementation (Reply Br. 3) is also
unpersuasive. As discussed above, we disagree the Examiner has erred in
determining claim 34 is directed to the management of syndicate loans.
Furthermore, use of generic computer system components (e.g., database
and processing system) supports a determination the claimed invention does
not improve technology, but is instead directed to a result or effect that itself
is the abstract idea that is merely invoked using generic processes and
machinery. See Enfish, 822 F.3d at 1335–36. Thus, disclosure of a generic
Appeal 2017-009644
Application 12/549,577
29
computer system does not save the claims from being directed to an abstract
idea under Step 1 or constitute an inventive concept under Step 2 of the
Alice/Mayo Framework
We are also unpersuaded by Appellant’s argument belatedly presented
for the first time in the Reply Brief that “while the invention may have
originated with the idea of facilitating management of syndicate loans for a
syndicate manager, the system as claimed includes specific structure
including a remote storage medium accessed by a remote database server,
and an application server accessible over a network by a system participant.”
Reply Br. 8–9. Absent a showing of good cause explaining why the
argument could not have been presented in the Appeal Brief, this newly
presented argument is untimely and waived. 37 C.F.R. § 41.41(b)(2) (2016).
Furthermore, Appellant’s argument is not commensurate in scope with claim
34 which does not recite the argued remote storage medium accessed by a
remote database server.
Appellant’s argument that the claim is similar to those of Trading
Techs. Int’l., Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017)
(“Trading Techs.”) (Rely Br. 5) is unpersuasive both because the case is
non-precedential and distinguishable. In Trading Techs., under Step 1, the
district court held that the claims were “directed to improvements in existing
graphical user interface devices that have no ‘pre-electronic trading analog,’
and recite more than ‘setting, displaying, and selecting’ data or information
that is visible on the [graphical user interface] device.” Trading Techs.
675 F. App’x at 1004 (internal quotations omitted). The district court
determined that the claims “solve problems of prior graphical user interface
devices . . . in the context of computerized trading[ ] relating to speed,
Appeal 2017-009644
Application 12/549,577
30
accuracy and usability” and did not “simply claim displaying information on
a graphical user interface.” Id. The claims required “a specific, structured
graphical user interface paired with a prescribed functionality directly
related to the graphical user interface’s structure that is addressed to and
resolves a specifically identified problem in the prior state of the art.” Id.
Further, under Step 2, the district court held that “the specific structure and
concordant functionality of the graphical user interface are removed from
abstract ideas, as compared to conventional computer implementations of
known procedures.” Id. The Federal Circuit agreed, holding that “the
claimed subject matter is ‘directed to a specific improvement to the way
computers operate,’ . . . for the claimed graphical user interface method
imparts a specific functionality to a trading system ‘directed to a specific
implementation of a solution to a problem in the software arts.’” Id. at 1006
(citations omitted).
Here, the claim simply requires accessing, retrieving, identifying, and
collecting information and providing results (i.e., notifications) without any
specific functionality directly related to the computer, its processor, or
database structure that is addressed to and resolves a problem in technology,
as discussed above. Rather, the claim is similar to those in Trading Techs.
Int’l, Inc. v. IBG LLC, 921 F.3d 1084, 1094 (Fed. Cir. 2019) (“Trading
Techs. I”) and Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1384
(Fed. Cir. 2019) (“Trading Techs. II”) where the claims directed to
displaying particular information in a particular way did not focus on an
improvement to computer technology.
For the reasons discussed and in the absence of sufficient evidence or
argument to the contrary, we determine the claims do not include additional
Appeal 2017-009644
Application 12/549,577
31
elements that integrate the judicial exception into a practical application
because the additional elements: (1) do not improve the functioning of a
computer or other technology; (2) are not applied with any particular
machine (except for a generic computer); (3) do not effect a transformation
of a particular article to a different state; and (4) are not applied in any
meaningful way beyond generally linking the use of the judicial exception to
a particular technological environment, such that the claim as a whole is
more than a drafting effort designed to monopolize the exception. See
MPEP § 2106.05(a)–(c), (e)–(h). Instead, any improvement is to the
underlying idea of syndicate loan management. Thus, claim 34 does not
integrate the judicial exception into a practical application.
Step 2B
Finally, we agree with the Examiner the claims implement syndicate
loan maintenance tasks using a generic computer, i.e., processor, database,
and modules. Final Act. 3. Thus, Appellant’s claims do not recite specific
limitations (or an ordered combination of limitations) that are not well-
understood, routine, and conventional. For example, the claimed “database
server,” “database,” “processing system,” and functionally described
“modules” are described at a high level of generality and perform generic
functions that are well-understood, routine, and conventional. See, e.g.,
FairWarning, 839 F.3d at 1096 (“the use of generic computer elements like
a microprocessor or user interface do not alone transform an otherwise
abstract idea into patent-eligible subject matter”), and OIP Techs, 788 F.3d
at 1363 (claims reciting, inter alia, sending messages over a network,
gathering statistics, using a computerized system to automatically determine
an estimated outcome, and presenting offers to potential customers found to
Appeal 2017-009644
Application 12/549,577
32
merely recite “‘well-understood, routine conventional activit[ies]”’ by either
requiring conventional computer activities or routine data-gathering steps
(alteration in original, internal citation omitted)).
We, therefore, determine that the limitations of claim 34 do not add
significantly more to the patent-ineligible abstract idea.

SUMMARY OF ANALYSIS
Accordingly, for the reasons discussed, the claims are directed to
(i) mental processes and/or (ii) certain methods organizing human activity,
i.e., agreements in the form of a contact, legal obligations, and/or business
practices. Both mental processes and certain methods of organizing human
behavior are identified in the 2019 Guidance as abstract ideas which
constitute judicial exceptions to patent eligibility. Furthermore, the claims
do not recite limitations that practically apply the abstract idea or recite
additional limitations that amount to significantly more than the abstract idea
itself. Accordingly, we sustain the rejection of independent claim 34 under
35 U.S.C. § 101 together with dependent claims 37–44 which are not argued
separately with particularity.

CONCLUSION
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
34, 37–44 101 Eligibility 34, 37–44

Appeal 2017-009644
Application 12/549,577
33
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)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED