Einat Hahn et al.

Patent Trials and Appeals Board

Oct 16, 2020

14508587 - (D) (P.T.A.B. Oct. 16, 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.
14/508,587 10/07/2014 Einat Steklov Hahn 14282A.KS 3426
158472 7590 10/16/2020
Shakir Law PLLC
1345 Ave. of the Americas
33rd Floor
New York, NY 10105
EXAMINER
KANERVO, VIRPI H
ART UNIT PAPER NUMBER
3619
NOTIFICATION DATE DELIVERY MODE
10/16/2020 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):
hassan.shakir@shakirlaw.com
patents@shakirlaw.com
uspto@dockettrak.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte EINAT STEKLOV HAHN and RISHI KUMAR
____________

Appeal 2020-003244
Application 14/508,587
Technology Center 3600
____________

Before KARA L. SZPONDOWSKI, SCOTT B. HOWARD, and
STEVEN M. AMUNDSON, Administrative Patent Judges.

AMUNDSON, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a final
rejection of claims 1–23, i.e., all pending claims. We have jurisdiction under
35 U.S.C. § 6(b).
We affirm.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42 (2018). Appellant identifies the real party in interest
as Kashable LLC. Appeal Br. 1.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention concerns “a sponsored
benefit-provision system, specifically a benefit-provision system operated
by an administrator to provide a benefit from a source to a benefit-eligible
recipient who is part of or associated with a sponsored applicant group for
which access to the benefit-provision system is being sponsored by a
sponsor” and “a method thereof.” Spec. 1.2 The Specification explains that
“banking and financial services are typically provided” to “[l]ower and
middle income employees” not “on a group basis but on an individual’s
financial performance or strength that is usually reflected as a ‘credit
score.’” Id. The Specification also explains that “[t]his traditional method
of underwriting by financial institutions has created a very large group of
individuals that have limited access to banking and financial services.” Id.
According to the Specification, “there is a need in the marketplace for
a better solution for access to financial services, especially credit,” by “one
or more eligible recipients who are difficult to reach using traditional
systems and methods.” Spec. 2. Hence, the invention endeavors to provide
“a new system to reach that segment of the population and a reliable method
of providing better, faster, cheaper access to credit to one or more eligible
recipients who are difficult and expensive to reach using traditional systems
and methods.” Id.

2 This decision uses the following abbreviations: “Spec.” for the
Specification, filed October 7, 2014; “Final Act.” for the Final Office
Action, mailed October 19, 2018; “Appeal Br.” for the Appeal Brief, filed
October 21, 2019; “Ans.” for the Examiner’s Answer, mailed January 27,
2020; and “Reply Br.” for the Reply Brief, filed March 27, 2020.
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Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows (with formatting added for clarity):
1. A system for providing by an administrator a benefit from a
source to a benefit-eligible recipient, a sponsor sponsoring access to
the system for the benefit-eligible recipient through an interactive
communications system, the benefit-eligible recipient most
advantageously accessing the system through the interactive
communications system; the system comprising:
a processor and
a memory combined with the processor,
the combined processor and memory configured to operate
a qualification unit for calculating if an applicant group
associated with the sponsor meets an initial qualification score
for being sponsored by the sponsor to access to the system, the
initial qualification score is calculated based on a churn of the
applicant group, the benefit-eligible recipient being a member
of the applicant group;
a recipient qualification unit for calculating if the benefit-
eligible recipient is qualified to receive the benefit, and
a benefit administration unit,
the benefit administration unit generating an
information page comprising a graphical benefit
evaluator, the information page being displayed via the
interactive communications network, the graphical
benefit evaluator comprising a maximum amount of the
benefit relative to a benefit related factor and being
displayed in graphical form to the benefit eligible
recipient,
the benefit administration unit varying the
graphical benefit evaluator responsive to a change in the
benefit related factor by the benefit-eligible recipient and
displaying in real-time an updated amount of the benefit
to the benefit-eligible recipient; and
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the benefit administration unit, upon
acknowledgement of the benefit related factor by the
benefit-eligible recipient, causing recalculation of the
updated amount of the benefit from the source to the
benefit-eligible recipient;
wherein the sponsor and the source are separate entities.
Appeal Br. 26 (Claims App.).
The Prior Art Supporting the Rejections on Appeal
As evidence of unpatentability under 35 U.S.C. § 103, the Examiner
relies on the following prior art:
The Rejections on Appeal
Claims 1–23 stand rejected under 35 U.S.C. § 101 as directed
to patent-ineligible subject matter. Final Act. 7–9.
Claims 14, 19, and 23 stand rejected under 35 U.S.C. § 103 as
unpatentable over Johnson and Armand. Final Act. 10–12.3
Claims 15–17 stand rejected under 35 U.S.C. § 103 as unpatentable
over Johnson, Armand, and Bazzani. Final Act. 12–13.

3 In the Final Office Action, the Examiner references § 102. In the Answer,
the Examiner corrects that harmless error and references § 103. See Ans. 3.
Name Reference Date
Colby US 2005/0256794 A1 Nov. 17, 2005
Barron, Jr. et al. (“Barron”) US 2009/0150189 A1 June 11, 2009
Johnson et al. (“Johnson”) US 2010/0223099 A1 Sept. 2, 2010
Stahl et al. (“Stahl”) US 2011/0145023 A1 June 16, 2011
Bazzani et al. (“Bazzani”) US 2011/0238451 A1 Sept. 29, 2011
Armand US 2013/0054489 A1 Feb. 28, 2013
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Claim 18 stands rejected under 35 U.S.C. § 103 as unpatentable over
Johnson, Armand, Bazzani, and Colby. Final Act. 14.
Claim 20 stands rejected under 35 U.S.C. § 103 as unpatentable over
Johnson, Armand, and Barron. Final Act. 14–15.
Claims 1, 6, 8, 13, 21, and 22 stand rejected under 35 U.S.C. § 103 as
unpatentable over Johnson, Armand, and Colby. Final Act. 15–20.4
Claims 2–4 and 9–12 stand rejected under 35 U.S.C. § 103 as
unpatentable over Johnson, Armand, Colby, and Bazzani. Final Act. 20–23.
Claim 5 stands rejected under 35 U.S.C. § 103 as unpatentable over
Johnson, Armand, Colby, and Stahl. Final Act. 23.5
Claim 7 stands rejected under 35 U.S.C. § 103 as unpatentable over
Johnson, Armand, Colby, and Barron. Final Act. 24.
ANALYSIS
We have reviewed the rejections in light of Appellant’s arguments
that the Examiner erred. For the reasons explained below, we agree with the
Examiner’s conclusions concerning ineligibility under § 101 but disagree
with the Examiner’s conclusions concerning unpatentability under § 103.
We adopt the Examiner’s findings and reasoning for the § 101 rejection in
the Final Office Action and Answer. See Final Act. 2–5, 7–9; Ans. 4–7,
22–24. We provide the following to address and emphasize specific
findings and arguments.

4 In the Final Office Action, the Examiner references § 102. In the Answer,
the Examiner corrects that harmless error and references § 103. See Ans. 4.
5 In the Final Office Action, the Examiner references § 102. In the Answer,
the Examiner corrects that harmless error and references § 103. See Ans. 4.
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The § 101 Rejection of Claims 1–23
INTRODUCTION
The Patent Act defines patent-eligible subject matter broadly:
“Whoever 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, subject to the conditions and
requirements of this title.” 35 U.S.C. § 101. In Mayo and Alice, the
Supreme Court explained that § 101 “contains an important implicit
exception” for laws of nature, natural phenomena, and abstract ideas. Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012);
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014); see Diamond v.
Diehr, 450 U.S. 175, 185 (1981). In Mayo and Alice, the Court set forth
a two-step analytical framework for evaluating patent eligibility. Mayo,
566 U.S. at 77–80; Alice, 573 U.S. at 217–18.
Under Mayo/Alice step one, we “determine whether the claims at
issue are directed to” a judicial exception, i.e., an abstract idea, a law of
nature, or a natural phenomenon. Alice, 573 U.S. at 217. Step one involves
looking at the “focus” of the claims at issue and their “character as a whole.”
SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018).
In January 2019, the PTO issued revised guidance for determining
whether claims are directed to a judicial exception. See 2019 Revised Patent
Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019
Guidance”).6 The 2019 Guidance applies to the Board. Id. at 50–51,

6 In response to received public comments, the PTO issued further guidance
in October 2019 clarifying the 2019 Guidance. October 2019 Update:
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57 n.42; see 35 U.S.C. § 3(a)(2)(A) (investing the Director with
responsibility “for providing policy direction” for the PTO).
The 2019 Guidance specifies two prongs for the analysis under
Mayo/Alice step one (PTO step 2A). 84 Fed. Reg. at 54–55. Prong one
requires evaluating “whether the claim recites a judicial exception, i.e., an
abstract idea, a law of nature, or a natural phenomenon.” Id. at 54. “If the
claim does not recite a judicial exception, it is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the claim does recite a judicial
exception, then it requires further analysis” under prong two. Id. Prong two
requires evaluating “whether the claim as a whole integrates the recited
judicial exception into a practical application of the exception.” Id. “When
the exception is so integrated, then the claim is not directed to a judicial
exception,” and it satisfies § 101. Id. “If the additional elements do not
integrate the exception into a practical application, then the claim is directed
to the judicial exception,” and it “requires further analysis” under
Mayo/Alice step two (PTO step 2B). Id.
Under Mayo/Alice step two, we “consider the elements of each claim
both individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. Alice, 573 U.S. at 217–18,
221–22 (quoting Mayo, 566 U.S. at 78–79). Step two involves the search for
an “inventive concept.” Alice, 573 U.S. at 217–18, 221; Univ. of Fla.
Research Found., Inc. v. Gen. Elec. Co., 916 F.3d 1363, 1366 (Fed.

Subject Matter Eligibility (Oct. 17, 2019) (available at https://www.uspto.
gov/sites/default/files/documents/peg_oct_2019_update.pdf).
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Cir. 2019). “[A]n inventive concept must be evident in the claims.”
RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 (Fed. Cir. 2017).
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG ONE
Patent-ineligible abstract ideas include fundamental economic
practices, mental processes, and mathematical formulas. See, e.g., Alice,
573 U.S. at 219–20 (fundamental economic practice of intermediated
settlement); Bilski v. Kappos, 561 U.S. 593, 599, 611–12 (2010)
(fundamental economic practice of hedging or protecting against risk in
independent claim and mathematical formula in dependent claim); Parker v.
Flook, 437 U.S. 584, 585–86, 596–98 (1978) (mathematical formula for
calculating updated alarm limit); Gottschalk v. Benson, 409 U.S. 63, 65–67
(1972) (mental process of converting binary-coded-decimal representation
to binary representation). The 2019 Guidance specifies three groupings
of abstract ideas: (1) certain methods of organizing human activity,
(2) mental processes, and (3) mathematical concepts. 84 Fed. Reg. at 51–52.
In Alice, the Supreme Court “did not establish any ‘precise contours’
for defining whether claims are directed to ‘abstract ideas’ or something
else.” Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306, 1315 (Fed. Cir.
2019) (citing Alice, 573 U.S. at 221). Further, for Mayo/Alice step one, the
Federal Circuit has noted 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).
Here, the Examiner determines that the claims are directed to the
abstract idea of “providing a benefit from a source to a benefit-eligible
recipient by calculating a maximum amount of benefit available to a benefit-
eligible recipient.” Final Act. 8; see id. at 3. The Examiner explains that
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“providing a benefit from a source to a benefit-eligible recipient by
calculating a maximum amount of benefit available to a benefit-eligible
recipient, as recited in the independent claims 1, 8, and 14, is similar to an
idea of itself found by the courts to be abstract ideas.” Id. at 8 (citing Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)). In
addition, the Examiner determines that the claims “recite an abstract idea
that belongs to mathematical concepts” that “are found by the courts to
be abstract ideas.” Ans. 22.
Appellant argues that the Examiner oversimplifies the claimed
invention. Appeal Br. 14–15; see Reply Br. 2–3. Appellant also argues that
the “claimed invention differs in scope and context from the claimed
invention in Electric Power Group” and that “[n]one of the limitations in
Electric Power Group were directed to calculating or recalculating eligibility
or generating an information page comprising a graphical benefit evaluator.”
Appeal Br. 14–15.
We disagree that the Examiner errs under Mayo/Alice step one. In
determining that the claims are directed to an abstract idea, the Examiner
accurately assesses the “focus” of the claims and their “character as a
whole.” See Final Act. 3–4, 8–9; Ans. 22; see also SAP Am., 898 F.3d
at 1167.
In addition, we determine that each independent claim recites abstract
ideas falling within one of the three groupings of abstract ideas specified in
the 2019 Guidance, i.e., mathematical concepts. See 84 Fed. Reg. at 51–52.
The 2019 Guidance describes mathematical concepts as “mathematical
relationships, mathematical formulas or equations, [or] mathematical
calculations.” Id. at 52 (footnote omitted).
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Here, claim 1 recites the following limitations encompassing
mathematical relationships or mathematical calculations (or both):
● “calculating if an applicant group associated with the
sponsor meets an initial qualification score for being
sponsored by the sponsor to access to the system, the
initial qualification score is calculated based on a churn
of the applicant group, the benefit-eligible recipient being
a member of the applicant group”;
● “calculating if the benefit-eligible recipient is qualified to
receive the benefit”;
● “the graphical benefit evaluator comprising a maximum
amount of the benefit relative to a benefit related factor”;
● “varying the graphical benefit evaluator responsive to a
change in the benefit related factor by the benefit-eligible
recipient”; and
● “causing recalculation of the updated amount of the
benefit from the source to the benefit-eligible recipient.”
Appeal Br. 26. Claims 8 and 14 recite similar limitations. Id. at 27–30.
Each of the above-identified limitations involves mathematical
relationships or mathematical calculations (or both). For instance, the
“calculating” and “causing recalculation” limitations expressly require
mathematical calculations. Further, determining “a maximum amount of
the benefit relative to a benefit related factor” involves a mathematical
relationship between the “maximum amount” and the “benefit related
factor,” such as a mathematical relationship between a maximum loan
amount and a monthly income. See Spec. 16–17. And “varying the
graphical benefit evaluator responsive to a change in the benefit related
factor by the benefit-eligible recipient” similarly involves a mathematical
relationship, such as a mathematical relationship between a maximum loan
amount, a loan term, and a repayment schedule. See id. at 22, Fig. 3c. The
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2019 Guidance identifies mathematical relationships and mathematical
calculations as mathematical concepts, and thus abstract ideas. 84 Fed. Reg.
at 52.
MAYO/ALICE STEP ONE: PTO STEP 2A PRONG TWO
Because we determine that each independent claim recites abstract
ideas, we consider whether each claim as a whole integrates the recited
abstract ideas into a practical application. See 84 Fed. Reg. at 54–55. “Only
when a claim recites a judicial exception and fails to integrate the exception
into a practical application, is the claim ‘directed to’ a judicial exception
. . . .” Id. at 51.
As additional elements, the independent claims recite computer-
system components, i.e., a “processor,” a “memory,” a “network,” and
software “units.” Appeal Br. 26–30; see Final Act. 9; Ans. 6–7, 22–23.
The claims also recite data-presenting limitations. Appeal Br. 26–30.
For instance, claim 1 recites the following data-presenting limitations:
● “generating an information page comprising a graphical
benefit evaluator, the information page being displayed”;
● “the graphical benefit evaluator . . . being displayed in
graphical form to the benefit eligible recipient”; and
● “the benefit administration unit . . . displaying in real-
time an updated amount of the benefit to the benefit-
eligible recipient.”
Appeal Br. 26. Claims 8 and 14 recite similar limitations. Id. at 27–30.
We determine that each independent claim as a whole does not
integrate the recited abstract ideas into a practical application because the
additional elements do not impose meaningful limits on the abstract ideas.
See 84 Fed. Reg. at 53–54; see also Final Act. 4–5, 9; Ans. 6–7, 22–24.
Instead, the claimed computer-system components constitute generic
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computer-system components that perform generic computer functions. See
Spec. 10–11; Final Act. 4–5, 9; Ans. 6–7, 22–24 (quoting Spec. 10–11).
Further, the data-presenting limitations constitute insignificant extra-solution
activity. See, e.g., Mayo, 566 U.S. at 79; Bilski, 561 U.S. at 611–12; Apple,
842 F.3d at 1241–42.
As an example of insignificant extra-solution activity, in Flook the
Supreme Court decided that adjusting an alarm limit according to a
mathematical formula was “post-solution activity” and insufficient to confer
eligibility. Flook, 437 U.S. at 590, 596–98; see Bilski, 561 U.S. at 610–11
(discussing Flook). Similarly, the Federal Circuit has held that printing
menu information constituted insignificant post-solution activity. Apple,
842 F.3d at 1241–42. Consistent with those decisions, the Manual of Patent
Examining Procedure (“MPEP”) identifies printing “to output a report” as an
example of insignificant post-solution activity. MPEP § 2106.05(g) (9th ed.
rev. 08.2017 Jan. 2018).
Here, the data-presenting limitations require no particular presentation
tool and nothing unconventional or significant. Instead, they require nothing
more than a generic display for presenting benefit-related information.
Appeal Br. 26–30. Consistent with this, the Specification discloses that “[i]n
lending system 100a, graphical benefit evaluator 264 varies an amount of
loan 12a and one or more benefit loan terms 266a and displays loan pertinent
information 268a.” Spec. 22, Fig. 3c. Just as printing menu information in
Apple constituted insignificant post-solution activity, presenting benefit-
related information here constitutes insignificant post-solution activity.
Hence, the data-presenting limitations in each independent claim do not help
integrate the recited abstract ideas into a practical application.
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Appellant contends that the claimed invention provides “a particular
implementation” with the following features “rather than an abstract
solution”:
(a) qualification of an applicant group via a composition
of the initial qualification score,
(b) two-tier qualification comprising a qualification unit
for an applicant group and a qualification unit for the
recipient, and
(c) a benefit administration unit that generates a specific
information page with a graphical benefit evaluator that
is responsive to a change in a benefit related factor and
displaying in real-time an updated amount of the benefit.
Appeal Br. 16; Reply 3–4; see Appeal Br. 17–18; Reply Br. 5.
We disagree that the above-identified features integrate the recited
abstract ideas into a practical application. The claimed invention does not
improve the functioning of a computer or any other technology. Final
Act. 9; see Ans. 7, 23–24. The Specification does not discuss an advance in
hardware or software that, for example, causes a processor, a memory, or a
network to operate faster or more efficiently.
Appellant asserts that the claims recite “more than mere receiving or
transmitting data over a network” because the graphical benefit evaluator
“is responsive to the benefit-eligible recipient and the updated amount
presents a new situation in graphical form to the benefit-eligible recipient in
an underserved population for consideration and acceptance of the benefit.”
Appeal Br. 20; see Reply Br. 5.
We disagree that “present[ing] a new situation in graphical form”
integrates the recited abstract ideas into a practical application. Rather, the
claims require “recalculation” of “the updated amount of the benefit from
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the source to the benefit-eligible recipient.” Appeal Br. 26, 28, 30.
Providing the benefit-eligible recipient “with new or different information”
using existing equipment “is not a technical solution to a technical problem.”
Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1383 (Fed. Cir. 2019).
Presenting benefit-related information “does not improve the functioning of
the [equipment], make it operate more efficiently, or solve any technological
problem.” Id. at 1385. The “purported advance ‘is a process of gathering
and analyzing information of a specified content, then displaying the results,
and not any particular assertedly inventive technology for performing those
functions.’” Id. (quoting Elec. Power, 830 F.3d at 1354).
Further, the claims do not require presenting benefit-related
information to “the benefit-eligible recipient in an underserved population.”
See Appeal Br. 26–30. Unclaimed features do not support patent eligibility.
See ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 769 (Fed. Cir.
2019); Berkheimer v. HP Inc., 881 F.3d 1360, 1369–70 (Fed. Cir. 2018).
Appellant argues that the “claimed invention does not monopolize
every potential solution to the problem.” Appeal Br. 16; see id. at 16–18;
Reply Br. 2–3. Appellant’s preemption argument does not persuade us of
Examiner error. While preemption may denote ineligibility, its absence does
not establish eligibility. See FairWarning IP, LLC v. Iatric Sys., Inc.,
839 F.3d 1089, 1098 (Fed. Cir. 2016). For claims covering a patent-
ineligible concept, preemption concerns “are fully addressed and made
moot” by an analysis under the Mayo/Alice framework. Ariosa Diagnostics,
Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015).
The 2019 Guidance identifies exemplary considerations indicating
that additional elements in claims “may have integrated the [judicial]
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exception into a practical application.” 84 Fed. Reg. at 55 & nn.25–29
(citing MPEP §§ 2106.05(a)–(c), 2106.05(e)). As the above analysis
indicates, we have evaluated Appellant’s arguments in light of those
exemplary considerations. For the reasons discussed above, however, we
determine that each independent claim as a whole does not integrate the
recited abstract ideas into a practical application. Thus, each claim is
directed to a judicial exception and does not satisfy § 101 under Mayo/Alice
step one.
MAYO/ALICE STEP TWO: PTO STEP 2B
Because we determine that each independent claim is directed
to a judicial exception, we “consider the elements of each claim both
individually and ‘as an ordered combination’ to determine whether the
additional elements” add enough to transform the “nature of the claim” into
“significantly more” than the judicial exception. See Alice, 573 U.S.
at 217–18, 221–22 (quoting Mayo, 566 U.S. at 78–79). Under Mayo/Alice
step two, we “look with more specificity at what the claim elements add, in
order to determine ‘whether they identify an “inventive concept” in the
application of the ineligible subject matter’ to which the claim is directed.”
Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1258
(Fed. Cir. 2016) (quoting Elec. Power, 830 F.3d at 1353). An “inventive
concept” requires more than “well-understood, routine, conventional activity
already engaged in” by the relevant community. Rapid Litig. Mgmt. Ltd. v.
CellzDirect, Inc., 827 F.3d 1042, 1047 (Fed. Cir. 2016) (quoting Mayo,
566 U.S. at 79–80). But a “non-conventional and non-generic arrangement
of known, conventional pieces” may provide an “inventive concept”
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satisfying step two. BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility
LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016).
As discussed above, the independent claims recite computer-system
components, i.e., a “processor,” a “memory,” a “network,” and software
“units.” Appeal Br. 26–30; see Final Act. 9; Ans. 6–7, 22–23. As also
discussed above, the claimed computer-system components constitute
generic computer-system components that perform generic computer
functions. See Spec. 10–11; Final Act. 4–5, 9; Ans. 6–7, 22–24 (quoting
Spec. 10–11).
The Specification describes the claimed computer-system components
generically and evidences their conventional nature. See Spec. 10–11. For
instance, the Specification states that the system includes “system hardware”
and “system software.” Spec. 10. The Specification identifies the “system
hardware” as preferably “a personal computer, a laptop, a tablet computer,
a smartphone, and/or any other suitable device” as well as “a networked
computing device, a server, or the like.” Id. The Specification explains that
the “system hardware executes one or more software for suitable functional
usage of the system hardware.” Id.
Simply implementing an abstract idea using conventional machines or
devices “add[s] nothing of substance.” See Alice, 573 U.S. at 226–27; see
also Mayo, 566 U.S. at 84–85 (explaining that “simply implementing a
mathematical principle on a physical machine” does not suffice for patent
eligibility) (citing Gottschalk, 409 U.S. at 64–65, 71).
Moreover, the claimed computer-system components operate to
collect, manipulate, and display data. Appeal Br. 26–30; see Final Act. 9;
Ans. 6–7, 22–24. Court decisions have recognized that generic computer-
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system components operating to collect, manipulate, and display data are
well understood, routine, and conventional to a skilled artisan. See, e.g.,
Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170;
Apple, 842 F.3d at 1234, 1241–42; Intellectual Ventures I LLC v. Symantec
Corp., 838 F.3d 1307, 1316–20 (Fed. Cir. 2016); Versata Dev. Grp., Inc. v.
SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015); Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014); buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014); Final Act. 4–5 (citing
court decisions).
For example, the system claims in Alice recited a “data processing
system” (e.g., a “processor”) with a “communications controller” and a “data
storage unit” (e.g., a “memory”). Alice, 573 U.S. at 226. The Supreme
Court decided that the system claims failed to satisfy § 101 because
“[n]early every computer” includes those generic components for
performing “basic calculation, storage, and transmission functions” and the
system claims simply implemented the same abstract idea as the method
claims. Id. at 226–27. The Court reasoned that (1) “the system claims are
no different from the method claims in substance”; (2) “[t]he method claims
recite the abstract idea implemented on a generic computer”; and (3) “the
system claims recite a handful of generic computer components configured
to implement the same idea.” Id. at 226.
Here, the claimed computer-system components perform “basic
calculation, storage, and transmission functions” that nearly every computer
system performs. Appeal Br. 26–30; see Final Act. 4–5, 9; Ans. 6–7, 22–24.
For instance, nearly every computer system includes a “processor” for
manipulating data and executing software “units” and a “memory” for
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storing data. Nothing in the claims “requires anything other than
conventional computer and network components operating according to their
ordinary functions.” See Two-Way Media Ltd. v. Comcast Cable Commc’ns,
LLC, 874 F.3d 1329, 1339, 1341 (Fed. Cir. 2017).
Hence, the claimed computer-system components do not satisfy the
“inventive concept” requirement. See, e.g., Customedia Techs., LLC v. Dish
Network Corp., 951 F.3d 1359, 1361, 1366 (Fed. Cir. 2020) (describing the
claimed “processor,” “storage device,” “programmable receiver unit,” and
“remote server” as “generic computer components”); Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016)
(holding that “generic computer components such as an ‘interface,’
‘network,’ and ‘database’” did not satisfy the “inventive concept”
requirement); FairWarning, 839 F.3d at 1095–96 (describing the claimed
“microprocessor” and “user interface” as “generic computer elements”);
Prism Techs. LLC v. T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17
(Fed. Cir. 2017) (describing the claimed “authentication server,” “access
server,” “Internet Protocol network,” “client computer device,” and
“database” as “indisputably generic computer components”).
We reach a similar conclusion concerning the data-presenting
limitations. As discussed above, the data-presenting limitations require no
particular presentation tool and nothing unconventional or significant.
Consequently, the claimed insignificant extra-solution activity does not
satisfy the “inventive concept” requirement. See, e.g., Mayo, 566 U.S.
at 79–80; Bilski, 561 U.S. at 611–12; Flook, 437 U.S. at 590; Apple,
842 F.3d at 1241–42.
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Regarding the “inventive concept” requirement, Appellant cites
a PTO memorandum about Berkheimer.7 Appeal Br. 18; Reply Br. 5.
Appellant then asserts that the Examiner fails “to meet the burden to show
that the additional elements and combination of elements in the presently
claimed invention are well-understood, routine, and conventional.” Appeal
Br. 18–19; Reply Br. 5.
The Berkheimer memorandum explains that a “citation to one or
more” court decisions may demonstrate that additional elements are well
understood, routine, and conventional to a skilled artisan. Berkheimer Mem.
3–4. As discussed above, court decisions have recognized that generic
computer-system components operating to collect, manipulate, and display
data are well understood, routine, and conventional to a skilled artisan. See,
e.g., Alice, 573 U.S. at 226–27; SAP Am., 898 F.3d at 1164–65 & n.1, 1170;
Apple, 842 F.3d at 1234, 1241–42; Intellectual Ventures, 838 F.3d at
1316–20; Versata, 793 F.3d at 1334; Ultramercial, 772 F.3d at 715–16;
buySAFE, 765 F.3d at 1355; Final Act. 4–5 (citing court decisions).
“Whether a combination of claim limitations supplies an inventive
concept that renders a claim ‘significantly more’ than an abstract idea to
which it is directed is a question of law.” BSG Tech LLC v. BuySeasons,
Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). Considering the limitations as
an ordered combination adds nothing to the abstract ideas that is not already
present when the limitations are considered separately. See Mayo, 566 U.S.
at 79; Final Act. 9; Ans. 7, 24. The ordered combination of limitations in

7 PTO Memorandum, Changes in Examination Procedure Pertaining
to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.) (Apr. 19, 2018) (“Berkheimer Mem.”).
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each independent claim amounts to nothing more than the abstract ideas
implemented with generic computer-system components that perform
generic computer functions. See Alice, 573 U.S. at 225–26; Final Act.
4–5, 9; Ans. 7, 24. Hence, we conclude that the ordered combination
of limitations in each independent claim does not supply an “inventive
concept” that renders the claim “significantly more” than the abstract ideas.
See Final Act. 4–5, 9; Ans. 7, 24. Thus, each claim does not satisfy § 101
under Mayo/Alice step two.
SUMMARY FOR INDEPENDENT CLAIMS 1, 8, AND 14
For the reasons discussed above, Appellant’s arguments have not
persuaded us of any error in the Examiner’s findings or conclusions under
Mayo/Alice step one or step two. Hence, we sustain the § 101 rejection of
the independent claims.
DEPENDENT CLAIMS 2–7, 9–13, AND 15–23
We also sustain the § 101 rejection of dependent claims 2–7, 9–13,
and 15–23 because Appellant does not argue eligibility separately for them.
See Appeal Br. 13–21; Reply Br. 1–5; 37 C.F.R. § 41.37(c)(1)(iv).
The § 103 Rejections of Claims 1, 6, 8, 13, 14, 19, and 21–23
INDEPENDENT CLAIMS 1, 8, AND 14
As noted above, the § 103 rejection of claims 1 and 8 rests on
Johnson, Armand, and Colby, while the § 103 rejection of claim 14 rests
on Johnson and Armand. See Final Act. 10–12, 15–19. In particular, the
Examiner cites Johnson as teaching or suggesting the following limitation
in claim 1 and similar limitations in claims 8 and 14:
a qualification unit for calculating if an applicant group
associated with the sponsor meets an initial qualification score
for being sponsored by the sponsor to access to the system, the
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initial qualification score is calculated based on a churn of the
applicant group, the benefit-eligible recipient being a member
of the applicant group.
Final Act. 6, 10, 15, 17 (citing Johnson ¶¶ 4, 14–20, 30–33).
Appellant argues that the Examiner erred in rejecting claims 1, 8,
and 14 because “Johnson fails to teach, disclose, or suggest that an applicant
group meets an initial qualification score, the initial qualification score is
calculated based on a churn of the applicant group, the benefit-eligible
recipient being a member of the applicant group.” Appeal Br. 22; see Reply
Br. 6–7. In particular, Appellant contends that the term “churn” means
“turnover of the applicant group,” i.e., “turnover of the members of the
applicant group.” Appeal Br. 22; Reply Br. 6. Appellant also contends that
Johnson differs from the claims because Johnson calculates a “churn score”
for an individual, i.e., “a single subscriber,” and not for members of an
applicant group. Appeal Br. 22–23; Reply Br. 6–7.
The Examiner finds that “Johnson discloses calculating ‘a new churn
score’ (i.e., ‘an initial qualification score’ of the instant application), where
this ‘new churn score’ is based on ‘an original churn score for a list of high
risk customers’ (i.e., ‘a churn of the applicant group’ of the instant
application).” Ans. 25–26 (citing Johnson ¶¶ 4, 14, 16, 30); see Final Act. 6
(citing Johnson ¶¶ 30–33). The Examiner reasons that “the new churn score
is a basis for ‘targeting an offer to particular subscribers’ (i.e., ‘the benefit-
eligible recipient who are member of the applicant group’ of the instant
application).” Ans. 26.
Based on the record before us, we agree with Appellant that the
Examiner has not adequately explained how the cited portions of Johnson
teach or suggest calculating “an initial qualification score” based on “a churn
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of the applicant group” as required by claims 1, 8, and 14. Johnson explains
that “customer ‘churn’ is an important factor for any business with a
subscriber-based service model as it may indicate customer dissatisfaction,
cheaper or better offers from the competition, more successful sales and
marketing by the competition, or reasons having to do with the customer life
cycle.” Johnson ¶ 3. Johnson describes a “churn score” as a “subscriber’s
likelihood of terminating service.” See id. ¶¶ 3–4, 16, 30–33.
Johnson discloses a “method for identifying the effect of one or more
offers from a service provider on one or more of its customers.” Johnson
¶ 4; see id. ¶¶ 30–33, Figs. 4–7. The method includes the following steps:
(1) calculating an initial churn score for a customer; (2) making an offer to
the customer, e.g., for unlimited text messages, discounted services, or
newer equipment; (3) calculating a new churn score for the customer; and
(4) determining whether the offer has moved the likelihood of the customer
churning from “very high” to “high” or “moderate.” Johnson ¶¶ 30–33,
Figs. 4–7 (0.0–0.25 for “low,” 0.25–0.5 for “moderate,” 0.5–0.75 for “high,”
and 0.75–1.0 for “very high”).
Accordingly, the cited portions of Johnson do not teach or suggest
calculating “an initial qualification score” based on “a churn of the applicant
group” i.e., the “turnover of the members of the applicant group.” See
Johnson ¶¶ 3–4, 14, 16, 30–33, Figs. 4–7; Appeal Br. 22–23; Reply Br. 6–7.
In Johnson, the initial churn score and the new churn score estimate the
likelihood that a customer will terminate service. See Johnson ¶¶ 3–4, 16,
30–33, Figs. 4–7. The Examiner does not cite Armand or Colby as teaching
or suggesting calculating “an initial qualification score” based on “a churn of
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the applicant group.” See Final Act. 6, 10, 15, 17; Ans. 25–26. Hence, we
do not sustain the § 103 rejections of claims 1, 8, and 14.
DEPENDENT CLAIMS 6, 13, 19, AND 21–23
Claims 6, 13, and 21 depend from claim 1; claim 22 depends from
claim 8; and claims 19 and 23 depend from claim 14. For the reasons
discussed for claims 1, 8, and 14, we do not sustain the § 103 rejections
of claims 6, 13, 19, and 21–23.
The § 103 Rejections of Claims 2–5, 7, 9–12, 15–18, and 20
Claims 2–5 and 7 depend from claim 1; claims 9–12 depend from
claim 8; and claims 15–18 and 20 depend from claim 14. On this record, the
Examiner has not shown how the additionally cited secondary references—
Bazzani, Barron, and Stahl—overcome the deficiency in the references
discussed above for claims 1, 8, and 14. Hence, for the reasons discussed
for claims 1, 8, and 14, we do not sustain the § 103 rejections of claims 2–5,
7, 9–12, 15–18, and 20.
Because the preceding determinations resolve the § 103 rejections
for all pending claims, we need not address Appellant’s other arguments
regarding Examiner error. See, e.g., Beloit Corp. v. Valmet Oy, 742 F.2d
1421, 1423 (Fed. Cir. 1984) (explaining that an administrative agency may
render a decision based on “a single dispositive issue”).
CONCLUSION
We affirm the rejection of claims 1–23 under 35 U.S.C. § 101.
We reverse the rejections of claims 1–23 under 35 U.S.C. § 103.
Because we affirm at least one ground of rejection for each claim
on appeal, we affirm the Examiner’s decision to reject all of the claims
on appeal. See 37 C.F.R. § 41.50(a)(1).
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In summary:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–23 101 Eligibility 1–23
14, 19, 23 103 Johnson, Armand 14, 19, 23
15–17 103
Johnson,
Armand,
Bazzani
15–17
18 103
Johnson,
Armand,
Bazzani,
Colby
18
20 103
Johnson,
Armand,
Barron
20
1, 6, 8,
13, 21, 22 103
Johnson,
Armand,
Colby
1, 6, 8, 13, 21, 22
2–4, 9–12 103
Johnson,
Armand,
Colby,
Bazzani
2–4, 9–12
5 103
Johnson,
Armand,
Colby, Stahl
5
7 103
Johnson,
Armand,
Colby,
Barron
7
Overall
Outcome 1–23
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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)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED