Ex Parte Weinflash et al

Patent Trials and Appeals Board

Apr 30, 2019

13947271 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/947,271 07/22/2013
20350 7590 05/02/2019
KILPATRICK TOWNSEND & STOCKTONLLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
Laura E. W einflash
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
90850-881912(000220US) 5577
EXAMINER
AUSTIN, JAMIE H
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
05/02/2019 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):
ipefiling@kilpatricktownsend.com
KTSDocketing2@kilpatrick.foundationip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURA E. WEINFLASH and LARRY W. SPOONER
Appeal2018-002311
Application 13/947,271
Technology Center 3600
Before JOHNNY A. KUMAR, JOHN A. EVANS, and JOYCE CRAIG,
Administrative Patent Judges.
EV ANS, Administrative Patent Judge.
DECISION ON APPEAL
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the
Examiner's final rejection of Claims 2-23, all pending claims. Final Act. 2.
We have jurisdiction under 35 U.S.C. § 6(b).
WeAFFIRM. 2
1 Appellants state the real party in interest is Early Warning Services, LLC.
App. Br. 3.
2 Rather than reiterate the arguments of Appellants and the Examiner, we
refer to the Appeal Brief (filed September 20, 2017, "App. Br."), the Reply
Brief (filed December 12, 2017, "Reply Br."), the Examiner's Answer
(mailed October 31, 2017, "Ans."), the Final Action (mailed June 6, 2017,
Appeal2018-002311
Application 13/947,271
STATEMENT OF THE CASE
The claims relate to a method of making check-risk decisions. See
Abstract.
Invention
Claims 2 and 13 are independent. An understanding of the invention
can be derived from a reading of claim 2, which is reproduced below with
some formatting added:
2. A computer-implemented method for facilitating the
making of a risk decision through a member service,
compnsmg:
receiving and storing, at a first database system
maintained by the member service and accessed by a computer,
status data relating to accounts maintained by a plurality of
member institutions that belong to the member service, the
status data received from the member institutions, wherein the
member institutions are financial institutions that belong to the
member service for assessing risk that a transaction will not
clear;
receiving and storing, at a second database system
maintained by the member service and accessed by the
computer, account activity data relating to accounts of a
plurality of non-member institutions that do not belong to the
member service, the account activity data contributed by
member institutions and relating to accounts not maintained by
the contributing member institutions;
filtering the activity data received at the second database
system to remove activity data relating to accounts maintained
by member institutions, and thereby storing in the second
"Final Act."), and the Specification (filed July 22, 2013, "Spec.") for their
respective details.
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database system only data relating to accounts of non-member
institutions that do not belong to the member service;
populating the second database system with risk data
reflecting the likelihood that a transaction conducted against a
specific account will not clear, as determined by a risk scoring
model;
receiving, at the computer, account data relating to an
account against which a transaction is conducted;
using the account data, at the computer, to determine if
the transaction is conducted against one of the accounts of
member institutions that belong to the member service and to
determine if the transaction is conducted against one of the
accounts of non-member institutions that do not belong to the
member service;
accessing the first database system to make a risk
decision for accounts of member institutions that belong to the
member service; and
accessing the second database system to make a risk
decision for accounts of nonmember institutions that do not
belong to the member service;
wherein an inquiring institution makes a risk decision for
accounts of member institutions based on status data accessed
from the first database system and makes a risk decision for
accounts of non-member institutions based on risk data
accessed from the separate, second database system.
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Application 13/947,271
Rejection3
Claims 2-23 stand rejected under 35 U.S.C. § 101 as directed to non-
statutory subject matter without significantly more. 4 Final Act. 17-23.
ANALYSIS
We have reviewed the rejections of claims 2-23 in light of
Appellants' arguments that the Examiner erred. We have considered in this
decision only those arguments Appellants actually raised in the Briefs. Any
other arguments which Appellants could have made but chose not to make in
the Briefs are deemed to be waived. See 37 C.F.R. § 4I.37(c)(l)(iv). We
are not persuaded that Appellants identify reversible error. Upon
consideration of the arguments presented in the Appeal Brief and Reply
Brief, we agree with the Examiner that all the pending claims are
unpatentable. We consider Appellants' arguments as they are presented in
the Appeal Brief, pages 6-20.
CLAIMS 2-23: INELIGIBLE SUBJECT MATTER
Based upon our de novo review of the record in light of recent
Director Policy Guidance with respect to patent-eligible subject matter
rejections under 35 U.S.C. § 101, we affirm the rejection of claims 2-23 for
the specific reasons discussed below. "Whether a claim is drawn to patent-
3 The present application was examined under the pre-AIA first to invent
provisions. Final Act. 2.
4 The Examiner finds each claim recites non-obvious subject matter. Final
Act. 8-11.
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Application 13/947,271
eligible subject matter is an issue of law that we review de novo." SiRF
Tech., Inc. v. Int 'l Trade Comm 'n, 601 F.3d 1319, 1331 (Fed. Cir. 2010).
Appellants argue all claims as a group in view of the limitations of
claim 2. See App. Br. 16-17 ("the pending claims (e.g., independent claim
2) recite significantly more than the Examiner's characterized abstract idea
of 'facilitating check risk decisions for member and non-member
institutions'."). Therefore, we decide the appeal of the§ 101 rejections with
reference to claim 2, and refer to the rejected claims collectively herein as
"the claims." See 37 C.F.R. § 4I.37(c)(l)(iv); In re King, 801 F.2d 1324,
1325 (Fed. Cir. 1986).
Prima Facie Case
Appellants contend the Examiner fails to make a prima facie case that
claim 2 recites patent-ineligible subject matter. See App. Br. 45.
We conclude that the Examiner did initially set forth a prima facie
case of patent-ineligibility, i.e., the Examiner's reasons are sufficient to set
forth the basis for the rejection so as to put the patent applicant on notice of
the reasons why the applicant is not entitled to a patent. Cf In re Oetiker,
977 F.2d 1443, 1445 (Fed. Cir. 1992).
Preemption.
Appellants contend "it is clear that the claims at issue do not attempt
to preempt every application of the abstract idea as characterized by the
Examiner ('facilitating check risk decisions for member and non-member
institutions')." App. Br. 19.
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While preemption may denote patent ineligibility, its absence does not
demonstrate patent 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). We conduct
such an analysis below. In response to Supreme Court and Federal Circuit
opinions, the USPTO has issued updated guidance. We review this appeal
within the framework of the Revised Guidance5 which specifies and
particularizes the Mayo/Alice framework.
35 u.s.c. § 101
Section 101 provides that a patent may be obtained for "any new and
useful process, machine, manufacture, or composition of matter, or any new
and useful improvement thereof." 35 U.S.C. § 101. The Supreme Court has
long recognized, however, that § 101 implicitly excludes "[l]aws of nature,
natural phenomena, and abstract ideas" from the realm of patent-eligible
subject matter, as monopolization of these "basic tools of scientific and
technological work" would stifle the very innovation that the patent system
aims to promote. Alice Corp. Pty. Ltd. v. CLS Bank Int 'l, 573 U.S. 208, 216
(2014) (quotingAss'nfor Molecular Pathology v. Myriad Genetics, Inc.,
569 U.S. 576, 589 (2013)); see also Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S.66, 72-78 (2012); Diamond v. Diehr, 450
5 USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84(4)
Fed. Reg. 50-57 (January 7, 2019) ("Revised Guidance," "Rev. Guid.").
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U.S. 175, 185 (1981).
Under the mandatory Revised Guidance, we reconsider whether
Appellants' claims recite:
1. any judicial exceptions, including certain groupings of abstract ideas
(i.e., mathematical concepts, certain methods of organizing human
interactions 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)).
Only if a claim, (1) recites a judicial exception, and (2) does not integrate
that exception into a practical application, do we then reach the issue of
whether the claim:
3. adds a specific limitation beyond the judicial exception that is not
"well-understood, routine, 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.
1. Judicial Exceptions.
The Revised Guidance extracts and synthesizes key concepts
identified by the courts as abstract ideas to explain that the abstract idea
exception includes the following groupings of subject matter, when recited
as such in a claim limitation(s) (that is, when recited on their own or per se):
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(a) mathematical concepts, 6 i.e., mathematical relationships, mathematical
formulas, equations, 7 and mathematical calculations8; (b) certain methods of
organizing human activity-fundamental economic principles or practices
(including hedging, insurance, mitigating risk); commercial or legal
interactions (including agreements in the form of contracts; legal
obligations; advertising, marketing or sales activities or behaviors; business
relations); managing personal behavior or relationships or interactions
between people (including social activities, teaching, and following rules or
6 Bilski v. Kappas, 561 U.S. 593, 611 (2010) ("The concept of hedging ...
reduced to a mathematical formula ... is an unpatentable abstract idea.").
7 Diehr, 450 U.S. at 191 ("A mathematical formula as such is not accorded
the protection of our patent laws"); Parker v. Flook, 437 U.S. 584, 594
(1978) ("[T]he discovery of [a mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.").
8 SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018)
(holding that claims to a "series of mathematical calculations based on
selected information" are directed to abstract ideas).
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instructions )9; and ( c) mental processes 10----concepts performed in the human
mind (including observation, evaluation, judgment, opinion). 11
The preamble of claim 2 recites "[a] computer-implemented method
for facilitating the making of a risk decision through a member service,
comprising." 12 The further recitations are set forth in Table I and analyzed
for abstract ideas as set forth in the Revised Guidance.
Table I
[LI] receiving and storing, at a first
database system maintained by the
member service and accessed b a
Insignificant extra-solution activity,
e.g., mere data gathering such as a
ste of obtainin information about
9 Alice, 573 U.S. at 219-20 ( concluding that use of a third party to mediate
settlement risk is a "fundamental economic practice" and thus an abstract
idea); see Revised Guidance at 52 n.13 for a more extensive listing of
"certain methods of organizing human activity" that have been found to be
abstract ideas.
10 If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind. See Revised Guidance at 52,
n.14; see Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307,
1318 (Fed. Cir. 2016) ("[W]ith the exception of generic computer-
implemented steps, there is nothing in the claims themselves that foreclose
them from being performed by a human, mentally or with pen and paper.").
11 Mayo, 566 U.S. at 71 ("'[M]ental processes[] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work'" (quoting Gottschalkv. Benson, 409 U.S. 63, 67
(1972))).
12 Limitation identifiers, e.g., "[L 1 ]" added to facilitate discussion.
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computer, status data relating to
accounts maintained by a plurality
of member institutions that belong
to the member service, the status
data received from the member
institutions, wherein the member
institutions are financial institutions
that belong to the member service
for assessing risk that a transaction
will not clear;
[L2] receiving and storing, at a
second database system maintained
by the member service and accessed
by the computer, account activity
data relating to accounts of a
plurality of non-member institutions
that do not belong to the member
service, the account activity data
contributed by member institutions
and relating to accounts not
maintained by the contributing
member institutions;
[L3] filtering the activity data
received at the second database
system to remove activity data
relating to accounts maintained by
member institutions, and thereby
storing in the second database
system only data relating to
accounts of non-member institutions
that do not belong to the member
service;
credit card transactions so that the
information can be analyzed in
order to detect whether the
transactions were fraudulent. Rev.
Guid. at 55 n.31.
Receiving and storing data is extra-
solution activity. Rev. Guid. at 55
n.31.
(b) Certain methods of organizing
human activity-fundamental
economic principles or practices
(including hedging, insurance,
mitigating risk). Rev. Guid. at 52.
Mere use of a computer as a tool to
perform an abstract idea. See
Benson, 409 U.S. 63 (holding that
merely implementing a
mathematical principle on a general
purpose computer is a patent
ineligible abstract idea). Rev. Guid.
at 55 n.30.
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[L4] populating the second database
system with risk data reflecting the
likelihood that a transaction
conducted against a specific account
will not clear, as determined by a
risk scoring model;
[L5] receiving, at the computer,
account data relating to an account
against which a transaction is
conducted;
[L6] using the account data, at the
computer, to determine if the
transaction is conducted against one
of the accounts of member
(b) Certain methods of organizing
human activity-fundamental
economic principles or practices
(including hedging, insurance,
mitigating risk). Rev. Guid. at 52.
Mere use of a computer as a tool to
perform an abstract idea. 13
Receiving and storing data is extra-
solution activity. Rev. Guid. at 55
n.31.
( c) Mental processes----concepts
performed in the human mind 14
(including an observation,
evaluation, judgment, opinion). 15
13 See e.g., Benson, 409 U.S. 63 (holding that merely implementing a
mathematical principle on a general purpose computer is a patent ineligible
abstract idea); Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044
(Fed. Cir. 2017) (using a computer as a tool to process an application for
financing a purchase). Rev. Guid. n.30.
14 If a claim, under its broadest reasonable interpretation, covers
performance in the mind but for the recitation of generic computer
components, then it is still in the mental processes category unless the claim
cannot practically be performed in the mind. See Intellectual Ventures I
LLCv. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016) ("[W]ith the
exception of generic computer-implemented steps, there is nothing in the
claims themselves that foreclose them from being performed by a human,
mentally or with pen and paper.''). Rev. Guid. n.14.
15 Mayo, 566 U.S. at 71 (" '[M]ental processes[ ] and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work'" (quoting Benson, 409 U.S. at 67)). Rev. Guid. n.15.
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institutions that belong to the
member service and to determine if
the transaction is conducted against
one of the accounts of non-member
institutions that do not belong to the
member service;
[L 7] accessing the first database
system to make a risk decision for
accounts of member institutions that
belong to the member service; and
[L8] accessing the second database
system to make a risk decision for
accounts of nonmember institutions
that do not belong to the member
service;
[L9] wherein an inquiring
institution makes a risk decision for
accounts of member institutions
based on status data accessed from
the first database system and makes
a risk decision for accounts of non-
member institutions based on risk
data accessed from the separate,
second database system.
Mere use of a computer as a tool to
perform an abstract idea.
Mere use of a computer as a tool to
perform an abstract idea.
( c) Mental processes----concepts
performed in the human mind
(including an observation,
evaluation, judgment, opinion).
In accordance with the Revised Guidance, we conclude limitations L3
and L4 recite a fundamental economic activity of mitigating risk, which the
Revised Guidance terms a "certain method of organizing human activity."
Rev. Guid., 52. Appellants disclose the "prior art participant database 10 is
populated by a daily flow of checking account status and item level data
from each of the participant pay or institutions." Spec., ,r 10. Appellants
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further disclose: "a payment processor may use this information to make a
decision regarding whether or not to open the line of credit or 'open to buy'
until the check clears. A merchant may also use the information to decline to
"accept the check." Id. Thus, claim 2 recites at least one abstract idea, per
se.
2. Integration of the judicial exception into a practical application.
Where, as here, we determine the claims recite a judicial exception,
we look to determine the presence of additional elements that integrate the
judicial exception into a practical application. The Revised Guidance is
"designed to more accurately and consistently identify claims that recite a
practical application of a judicial exception [] and thus are not 'directed to' a
judicial exception." Rev. Guid. at 53.
The claims recite a practical application where an additional element
reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field. 16 Revised Guidance
at 55.
The Examiner finds the claims are directed to the abstract idea of
facilitating check risk decisions which is a fundamental economic practice
and is "an idea of itself which "can be performed in the human mind, or by
a human using a pen and paper". Final Act. 18.
16 The Revised Guidance also finds integration into a practical application
where the judicial exception is used in medical treatment or to transform an
article to a different state. Revised Guidance at 55. Such considerations are
not before us.
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Appellants contend the Examiner's finding that the claims are directed
to "facilitating check risk decisions" results from characterizing the claims
"at an impermissibly high level of abstraction and also does not properly
reflect the concept recited in the claims." App. Br. 7.
In Table I, above, we examine each limitation of claim 2 and find, in
accordance with the Examiner, that the claims are directed to facilitating risk
management (see limitations L3 and L4) and find the method can be
substantially performed with paper and pencil (see limitations L6 and L9).
Appellants argue the claims "cannot be oversimplified 'by looking at
them generally and failing to account for the specific requirements of the
claims,' and the 'directed to' inquiry must be done 'without ignoring the
requirements of the individual steps."' Id. ( quoting McRo, slip op. 21 ). As
shown above in Table I, our analysis, which accords with that of the
Examiner, was performed keeping in mind "the requirements of the
individual steps."
Appellants further argue "performing the 'directed to' inquiry requires
analysis of the claims as a whole rather than on a piecemeal basis." Id.
( quoting Enfzsh ). The "as a whole" analysis asks whether further limitations
integrate the judicial exception into a practical application. See MPEP
§§ 2106.0S(a)-(c) and (e)-(h).
For the reasons which follow, we conclude that Appellants' claims do
not integrate the judicial exception into a practical application. We address
these "practical application" MPEP sections seriatim:
MPEP § 2106.0S(a) "Improvements to the Functioning of a Computer
or To Any Other Technology or Technical Field."
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"In determining patent eligibility, examiners should consider whether
the claim 'purport(s) to improve the functioning of the computer itself" or
"'any other technology or technical field."' MPEP § 2106.05(a).
With respect to technological improvements, Appellants contend:
[T]he focus of the claimed advance over the prior art is the
specifically recited database structure ... with two databases
maintained by a member service, where data contributed to the
second (non-participant) database is filtered to remove activity
data relating to accounts of member institutions, so that second
database only stores data relating to accounts of non-member
institutions.
App. Br. 9. Appellants further argue "the Examiner is ignoring the
significant operational and functional features of the recited database
structure." Reply Br. 3 (citing App. Br. 17).
Appellants' contentions seem to imply the claimed databases function
in a manner other than selectively sorting data into a database. However, the
Appeal Brief argues:
[T]he independent claims (such as claim 2) recite specially
programmed computer systems and methods that require the
specifically recited database structure (as described above),
with two databases maintained by a member service, where data
contributed to the second (non-participant) database is filtered
to remove activity data relating to accounts of member
institutions, so that second database only stores data relating to
accounts of non-member institutions. When a transaction is
conducted against an account, the account number is checked
against the participant database and the non-participant
database, and appropriate data is returned from the participant
database ( for accounts of member institutions) or from the non-
participant database (for accounts of non-member institutions).
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App. Br. 17 (cited by Appellant).
Contrary to Appellants' contentions, we find no "specially
programmed computer systems" to be recited in the claims. Nor do
Appellants cite to the Specification for disclosure of such systems. Rather,
Appellants disclose the "present invention may be implemented with any
combination of hardware and software." Spec. ,r 68.
We thus find the claims do not recite an improvement to the
functioning of a computer, nor of any other technology.
MPEP § 2106.05(b) "Particular Machine."
At the outset, we note that the Bilski machine-or-transformation test is
only applicable to the method (process) claims on appeal. This section of
the MPEP guides: "When determining whether a claim recites significantly
more than a judicial exception, examiners should consider whether the
judicial exception is applied with, or by use of, a particular machine." See
Bilski v. Kappas, 561 U.S. 593, 604 (2010) ("[T]he machine-or-
transformation test is a useful an important clue, and investigative tool" for
determining whether a claim is patent eligible under § 101 ). MPEP
§ 2106.05(b).
MPEP § 2106.05(b) provides further guidance regarding what
constitutes a particular machine:
[A]s described in MPEP §2106.05([), additional elements that
invoke computers or other machinery merely as a tool to
perform an existing process will generally not amount to
significantly more than a judicial exception. See, e.g., Versata
Development Group v. SAP America, 793 F.3d 1306, 1335
(Fed. Cir. 2015) (explaining that in order for a machine to add
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significantly more, it must "play a significant part in permitting
the claimed method to be performed, rather than function solely
as an obvious mechanism for permitting a solution to be
achieved more quickly").
In view of our discussion ofMPEP § 2106.0S(b) "Particular
Machine," we find the claims on appeal are silent regarding specific
limitations directed to an improved computer system, processor, memory,
network, database, or Internet, nor do Appellants direct our attention to such
specific limitations. "[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention."
Alice, 573 U.S. at 223; see also BASCOM Glob. Internet Servs., Inc. v.
AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract
idea on 'an Internet computer network' or on a generic computer is still an
abstract idea"). Applying this reasoning here, we conclude Appellants'
claims are not directed to a particular machine, but rather merely implement
an abstract idea using generic computer components. Our finding accords
with that of the Examiner. See Ans. 14 ("The appellant does not claim nor
have support for a special purpose computer."). Rev. Guid. n.32.
Thus, we conclude Appellants' method claims fail to satisfy the "tied
to a particular machine" prong of the Bilski machine-or-transformation test.
MPEP § 2106.0S(c) "Particular Transformation."
This section of the MPEP guides: "Another consideration when
determining whether a claim recites significantly more is whether the claim
effects a transformation or reduction of a particular article to a different state
or thing." "[T]ransformation and reduction of an article 'to a different state
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or thing' is the clue to patentability of a process claim that does not include
particular machines." Bilski v. Kappas, 561 U.S. at 658 (quoting Benson,
409 U.S. at 70).
The claims operate to select and analyze certain electronic data related
to the risk of check-fraud. The selection of electronic data is not a
"transformation or reduction of an article into a different state or thing
constituting patent-eligible subject matter[.]" See In re Bilski, 545 F.3d 943,
962 (Fed. Cir. 2008) ( emphasis added). See also CyberSource Corp. v.
Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("The mere
manipulation or reorganization of data ... does not satisfy the
transformation prong."). Applying this guidance here, we conclude
Appellants' method claims fail to satisfy the transformation prong of the
Bilski machine-or-transformation test.
MPEP § 2106.05( e) "Other Meaningful Limitations.
This section of the MPEP guides:
Diamond v. Diehr provides an example of a claim that recited
meaningful limitations beyond generally linking the use of the
judicial exception to a particular technological environment.
450 U.S. 175 (1981). In Diehr, the claim was directed to the
use of the Arrhenius equation ( an abstract idea or law of nature)
in an automated process for operating a rubber-molding press.
450 U.S. at 177-78. The Court evaluated additional elements
such as the steps of installing rubber in a press, closing the
mold, constantly measuring the temperature in the mold, and
automatically opening the press at the proper time, and found
them to be meaningful because they sufficiently limited the use
of the mathematical equation to the practical application of
molding rubber products. 450 U.S. at 184. In contrast, the
claims in Alice Corp. v. CLS Bank International did not
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meaningfully limit the abstract idea of mitigating settlement
risk. 573 U.S. _,134 S. Ct. 2347, 110 USPQ2d 1976 (2014). In
particular, the Court concluded that the additional elements
such as the data processing system and communications
controllers recited in the system claims did not meaningfully
limit the abstract idea because they merely linked the use of the
abstract idea to a particular technological environment (i.e.,
"implementation via computers") or were well-understood,
routine, conventional activity.
MPEP § 2106.05(e).
"[T]he relevant question is whether the claims here do more than
simply instruct the practitioner to implement the abstract idea ... on a
generic computer." Alice, 573 U.S. at 225. Similarly as for Alice, we find
that "[t]aking the claim elements separately, the function performed by the
computer at each step of the process is '[p ]urely conventional."' Id. "In
short, each step does no more than require a generic computer to perform
generic computer functions." Id.
MPEP § 2106.05(±) Mere Instructions To Apply An Exception.
Appellants are not persuasive that their claims do any more than to
invoke generic computer components as a tool in which the computer
instructions apply the judicial exception.
MPEP § 2106.05(g) Insignificant Extra-Solution Activity.
Limitation [L2] recites:
receiving and storing, at a second database system maintained
by the member service and accessed by the computer, account
activity data relating to accounts of a plurality of non-member
institutions that do not belong to the member service, the
account activity data contributed by member institutions and
relating to accounts not maintained by the contributing member
institutions.
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Limitation [L 1] contains a commensurate recitation respecting the accounts
of member institutions. We find these limitations recite insignificant extra-
solution activity. Receiving and storing data is extra-solution activity. Rev.
Guid. n.31; see, e.g., Bilski, 545 F.3d at 963 (en bane), ajf'd sub nom, Bilski
v. Kappas, 561 U.S. 593 (2010).
MPEP § 2106.05(h) Field of Use and Technological Environment.
[T]he Supreme Court has stated that, even if a claim does not
wholly pre-empt an abstract idea, it still will not be limited
meaningfully if it contains only insignificant or token pre- or
post-solution activity-such as identifying a relevant audience,
a category of use, field of use, or technological environment.
Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013). We
find the limitations relating to the "account activity data relating to accounts
of a plurality of [ member or] non-member institutions" are simply a field of
use that attempts to limit the abstract idea to a particular technological
environment.
We do not find Appellants' argument to be persuasive because "[t]he
courts have also identified examples in which a judicial exception has not
been integrated into a practical application." Revised Guidance at 55. The
claims fail to recite a practical application where the additional element does
no more than generally link the use of a judicial exception to a particular
technological environment or field of use. Id. The mere application of an
abstract idea in a particular field is not sufficient to integrate the judicial
exception into a practical application. See id. at n.32.
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In view of the foregoing, we conclude the claims fails to integrate the
judicial exception into a practical application, but are "directed to" a judicial
exception.
3. Well-understood, routine, conventional.
Because the claims recite a judicial exception and does not integrate
that exception into a practical application, we must then reach the issue of
whether the claim adds a specific limitation beyond the judicial exception
that is not "well-understood, routine, conventional" in the field. Revised
Guidance at 56.
The Examiner finds the "invention uses general purpose computers
which are used in routine and convention ways and perform typical
computer functions, which would not likely constitute 'significantly more'
or show improvement of the functioning of the computer or improvement of
the technology/technical field." Ans. 14.
Appellants contend "the Examiner is ignoring the significant
operational and functional features of the recited database structure." Reply
Br. 3.
Appellants cite no disclosure or other evidence in support of this
contention. Arguments of counsel cannot take the place of factually
supported objective evidence. In re Huang, 100 F.3d 135, 139-140 (Fed.
Cir. 1996). Attorney argument is not evidence. In re Pearson, 494 F .2d
1399, 1405 (CCPA 1974). Nor can it take the place of evidence lacking in
the record. Meitzner v. Mindick, 549 F.2d 775, 782 (CCPA 1977).
Lawyer's arguments and conclusory statements, which are unsupported by
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factual evidence, are entitled to little probative value. In re Geisler, 116
F.3d 1465, 1470 (Fed. Cir. 1997). We find such "well-understood, routine,
[and] conventional" limitations fail to indicate the presence of an inventive
concept.
4. Specified at a high level of generality.
It is indicative of the absence of an inventive concept where the
claims simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. Revised Guidance at 56.
Limitation [L4] recites "populating the second database system with
risk data reflecting the likelihood that a transaction conducted against a
specific account will not clear, as determined by a risk scoring model."
However, neither the claimed "risk scoring model," nor an algorithm by
which it might be determined, is specified. Rather, a non-specific model is
recited at a high level of generality.
We find the claimed "risk scoring model" limitation is specified at
such a high level of generality consistent with the absence of an inventive
concept. Therefore, we conclude that none of the claim limitations, viewed
"both individually and as an ordered combination," amount to significantly
more than the judicial exception in order to sufficiently transform the nature
of the claims into patent-eligible subject matter. See Alice, 573 U.S. at 217
(internal quotations omitted) (quoting Mayo, 566 U.S. at 79).
In view of the foregoing, we sustain the rejection of claims 2-23
under 35 U.S.C. § 101.
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DECISION
We affirm the rejection of claims 2-23 under 35 U.S.C. § 101.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 4I.50(f).
AFFIRMED
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