Feinstein, Jeffrey A. et al.

Patent Trials and Appeals Board

Apr 23, 2020

12939975 - (D) (P.T.A.B. Apr. 23, 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.
12/939,975 11/04/2010 Jeffrey A. Feinstein 35006-670001US 6511
76615 7590 04/23/2020
Mintz Levin/Fair Isaac
Mintz Levin Cohn Ferris Glovsky and Popeo, P.C.
One Financial Center
Boston, MA 02111
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
04/23/2020 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):
IPDocketingBOS@mintz.com
IPFileroombos@mintz.com
mintzdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JEFFREY A. FEINSTEIN, WEI JIANG,
RYAN MORRISON, and SHANE DE ZILWA
________________

Appeal 2019-003565
Application 12/939,975
Technology Center 3600
________________

Before BRADLEY W. BAUMEISTER, PHILLIP A. BENNETT, and
IFTIKHAR AHMED, Administrative Patent Judges.

BAUMEISTER, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4, 6, 7, 11, 12, 21, and 22.1 Appeal Br. 2. These
claims stand rejected under 35 U.S.C. § 101 as being directed to a judicial
exception to patent-eligible subject matter without significantly more. Final
Action mailed April 20, 2018 (“Final Act.”), 12–14.2 We have jurisdiction
under 35 U.S.C. § 6(b). We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Fair Isaac
Corporation. Appeal Brief filed November 20, 2018 (“Appeal Br.”), 1.
2 The Examiner withdrew a previously issued written-description rejection
under 35 U.S.C. § 112(a). Cf. Final Act. 15–16 with Supplementary
Examiner Answer mailed February 07, 2019 (“Ans.”), 3.
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CLAIMED SUBJECT MATTER
Appellant describes the present invention as follows:
A request to generate a responsibility score is received that
characterizes a likelihood of a change in a level of
creditworthiness of an individual in response to at least one
unknown financial event. Such responsibility score can provide
useful insight into a consumer that is complementary to a credit
score. Thereafter, a responsibility score is generated based on
historical creditworthiness data for the individual using at least
one predictive model. The at least one predictive model was
trained using historical creditworthiness data of a plurality of
consumers subjected to a plurality of financial events. In
addition, the at least one predictive model associates the
historical creditworthiness data of the individual with matching
states for each of a plurality of predefined performance behaviors
- with each pre-defined performance behavior having at least two
corresponding states. The responsibility score can be later
provided to a user (e.g., persisted, transmitted, displayed, etc.).
Related apparatus, systems, techniques, and articles are also
described.
Abstract.
Independent claim 1 is representative of the appealed claims.3
Claim 1 is reproduced below with paragraph numbering added for clarity
and emphasis added to the claim language that recites additional elements
beyond an abstract idea:
1. An article comprising a non-transitory machine-readable
medium embodying instructions that when performed by one or
more machines result in operations comprising:
[(i)] receiving a request to generate a responsibility
score, the responsibility score characterizing a likelihood

3 Appellant argues all of the claims together as a group. See Appeal Br. 17.
Accordingly, we select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(1)(iv).
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of a change in a level of creditworthiness of an individual
in response to at least one unknown financial event;
[(ii)] querying, using a predefined period of time and
a predetermined number of consumers, at least one of a
masterfile database and a credit bureau data containing the
historical creditworthiness data characterizing behaviors
of the predetermined number of consumers when
subjected to a plurality of financial events during the
predefined period of time;
[(iii)] determining, based on a result of the querying, a
dataset for generating the responsibility score for the
individual;
[(iv)] identifying, using the determined dataset, a
plurality of pre-defined performance behaviors, each pre-
defined performance behavior in the plurality of pre-
defined performance behaviors having at least two
corresponding states and characterizing behavior of each
consumer in the predetermined number of consumers in
response to the plurality of financial events during the
predefined period of time and after a credit scoring date
for each consumer;
[(v)] determining, based on the plurality of pre-
defined performance behaviors, a plurality of performance
dimensions, each performance dimension in the plurality
of dimensions defines dimensions containing unique
variance with regard to the other performance dimensions
and determined based on variations in the plurality of pre-
defined performance behaviors, the number of
performance dimensions being fewer than the number of
pre-defined performance behaviors;
[(vi)] generating, for each pre-defined performance
behavior, at least one predictive model, the at least one
predictive model associating matching states of the pre-
defined performance behaviors with matching states of
performance dimensions;
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[(vii)] outputting, using the at least one predictive
model, a partial responsibility score for each pre-defined
performance behavior;
[(viii)] aggregating partial responsibility scores for the
plurality of pre-defined performance behaviors;
[(ix)] generating, based on the aggregated partial
responsibility scores, the responsibility score; and
[(x)] displaying the generated responsibility score;
[(xi)] wherein the at least one unknown financial event
includes at least one of the following: a divorce of the
consumer, a job loss of the consumer, a mortgage rate
reset, and a job change of the consumer.

STANDARD OF REVIEW
The Board conducts a limited de novo review of 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).

PRINCIPLES OF LAW
Section 101
Inventions for a “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. 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
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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,
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 (1854))); 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 187; 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
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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 also, 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
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.
USPTO Section 101 Guidance:
In January 2019, the U. S. Patent and Trademark Office (“USPTO”)
published revised guidance on the application of 35 U.S.C. § 101.
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) (“October 2019
Guidance Update”); see also October 2019 Patent Eligibility Guidance
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Update, 84 Fed. Reg. 55942 (Oct. 18, 2019) (notifying the public of the
availability of the October 2019 Guidance Update). “All USPTO personnel
are, as a matter of internal agency management, expected to follow the
guidance.” 2019 Guidance, 84 Fed. Reg. at 51; see also October 2019
Guidance Update at 1.
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:
(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.

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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
groupings of abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activities such as a fundamental economic practice, or
mental processes). 84 Fed. Reg. at 52–54.
Limitation (i) recites “receiving a request to generate a responsibility
score, the responsibility score characterizing a likelihood of a change in a
level of creditworthiness of an individual in response to at least one
unknown financial event.” Receiving data reasonably can be characterized
as a certain method of organizing human activity. More specifically,
receiving data reasonably can be characterized as a method of managing
interactions between people, including teaching. The 2019 Guidance
expressly recognizes this type of certain method of organizing human
activity as constituting a patent-ineligible abstract idea. 84 Fed. Reg. at 52.
Receiving data alternatively can be reasonably characterized as a
mental process. More specifically, receiving data reasonably can be
characterized as an observation that can be performed in the human mind.
The 2019 Guidance also recognizes mental processes, including
observations, as constituting a patent-ineligible abstract idea. Id.
Accordingly, limitation (i) reasonably can be characterized as reciting a
patent-ineligible abstract idea.
Limitations (ii) reads as follows:
querying, using a predefined period of time and a
predetermined number of consumers, at least one of a
masterfile database and a credit bureau data containing the
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historical creditworthiness data characterizing behaviors
of the predetermined number of consumers when
subjected to a plurality of financial events during the
predefined period of time.
Querying a database and a datafile reasonably can be characterized as
an observation or evaluation that can be performed in the human mind. The
2019 Guidance recognizes mental processes, including observations and
evaluations, as constituting a patent-ineligible abstract idea. Id.
Accordingly, limitation (ii) reasonably can be characterized as reciting a
patent-ineligible abstract idea.
Limitation (iii) recites “determining, based on a result of the querying,
a dataset for generating the responsibility score for the individual.”
Determining a dataset reasonably can be characterized as constituting an
evaluation or judgment that can be performed in the human mind.
Accordingly, limitation (iii) reasonably can be characterized as reciting a
patent-ineligible abstract idea that the 2019 Guidance recognizes.
Limitations (iv) reads as follows:
identifying, using the determined dataset, a plurality of pre-
defined performance behaviors, each pre-defined performance
behavior in the plurality of pre-defined performance behaviors
having at least two corresponding states and characterizing
behavior of each consumer in the predetermined number of
consumers in response to the plurality of financial events during
the predefined period of time and after a credit scoring date for
each consumer.
Identifying performance behaviors reasonably can be characterized as
a mental evaluation or judgment. Accordingly, limitation (iv) reasonably
can be characterized as reciting a patent-ineligible abstract idea that the
2019 Guidance recognizes.
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Limitation (v) reads as follows:
determining, based on the plurality of pre-defined
performance behaviors, a plurality of performance
dimensions, each performance dimension in the plurality
of dimensions defines dimensions containing unique
variance with regard to the other performance dimensions
and determined based on variations in the plurality of pre-
defined performance behaviors, the number of
performance dimensions being fewer than the number of
pre-defined performance behaviors.
Determining performance dimensions reasonably can be characterized
as a mental evaluation or judgment. Accordingly, limitation (iv) reasonably
can be characterized as reciting a patent-ineligible abstract idea that the
2019 Guidance recognizes.
Limitation (vi) recites “generating, for each pre-defined performance
behavior, at least one predictive model, the at least one predictive model
associating matching states of the pre-defined performance behaviors with
matching states of performance dimensions.” Generating a predictive model
reasonably can be characterized as a judgment or opinion that can be
performed either in the human mind or with the aid of paper and pencil.
The 2019 Guidance recognizes mental judgments and opinions as
constituting patent-ineligible abstract ideas. Furthermore, the “mental
processes” judicial exception also includes concepts that can be performed
by a human with a pen and paper as well as those that can be performed
entirely in the mind. See October 2019 Guidance Update at 9 (“A claim that
encompasses a human performing the step(s) mentally with the aid of a pen
and paper recites a mental process”) (emphasis omitted). Accordingly,
limitation (vi) reasonably can be characterized as reciting an abstract idea.
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Limitation (vii) recites “outputting, using the at least one predictive
model, a partial responsibility score for each pre-defined performance
behavior.” Outputting data in the form of a score reasonably can be
characterized as expressing a judgment or an opinion. Accordingly,
limitation (vii) reasonably can be characterized as a mental process that the
2019 Guidance recognizes as an abstract idea.
Limitation (viii) recites “aggregating partial responsibility scores for
the plurality of pre-defined performance behaviors.” Aggregating scores
reasonably can be characterized as performing mathematical calculations.
The 2019 Guidance expressly recognizes mathematical concepts including
mathematical calculations as constituting a patent-ineligible abstract idea.
Aggregating scores additionally can be recognized as an evaluation that can
be performed in the human mind or with the aid of pencil and paper.
Accordingly, limitation (viii) reasonably can be characterized as a mental
process that the 2019 Guidance recognizes as an abstract idea.
Limitation (ix) recites “generating, based on the aggregated partial
responsibility scores, the responsibility score.” Like limitation (vi)’s step of
generating a predictive model, limitation (ix) reasonably can be
characterized as an evaluation that can be performed in the human mind or
with the aid of pencil and paper. Accordingly, limitation (ix) reasonably can
be characterized as reciting an abstract idea.
Limitation (x) recites “displaying the generated responsibility score.”
Displaying data reasonably can be characterized as expressing a judgment or
an opinion, either orally or with the aid of pencil and paper. Accordingly,
limitation (x) reasonably can be characterized as reciting an abstract idea
that the 2019 Guidance recognizes.
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Limitation (xi) recites “wherein the at least one unknown financial
event includes at least one of the following: a divorce of the consumer, a job
loss of the consumer, a mortgage rate reset, and a job change of the
consumer.” Limitation (xi) merely describes in more detail the unknown
financial event that is taken into account when generating the responsibility
score. Accordingly, limitation (xi) merely narrows the abstract ideas recited
in the other limitations. For example, limitation (xi) merely narrows the
certain method of organizing human activity or mental process of receiving a
request to generate a responsibility score, as is recited in limitation (i). See
SAP Am. In. v. InvestPic LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (“even
if a process of collecting and analyzing information is ‘limited to particular
content’ or a particular ‘source,’ that limitation does not make the collection
and analysis other than abstract”).
Furthermore, limitations (i)–(xi), viewed in combination, recite a
method of gathering credit and financial data and then generating and
displaying a “responsibility score”—a score that characterizes a likelihood
of a change in an individual’s level of creditworthiness. As such, all of the
limitations of claim 1, in combination, reasonably can be characterized as a
fundamental economic practice of estimating financial risk. Fundamental
economic practices are one class of certain methods of organizing human
activity that the 2019 Guidance expressly recognizes as constituting a
patent-ineligible abstract idea.
For these reasons, each of limitations (i) through (xi), both
individually and as an ordered combination, reasonably can be characterized
as reciting a judicial exception to patent-eligible subject matter under
step 2A, prong 1, of the 2019 Guidance.
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Step 2A, Prong 2
Under step 2A, prong 2, of the 2019 Guidance, we next analyze
whether claim 1 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).
As indicated above in reproduced claim 1, the only additional element
beyond the recited abstract idea is “a non-transitory machine-readable
medium embodying instructions that when performed by one or more
machines result in operations.” That is, the preamble of claim 1 merely
recites computer code for instructing a computer to perform the abstract
ideas recited by the body of the claim. Nothing in claim 1 reasonably
indicates that anything other than a generic computer needs to be used to
carry out the abstract idea.
Appellant argues that claim 1 is not directed to a fundamental
economic practice because the claim is, instead, “directed to a technical
method for performing responsibility analytics using separate processing and
communication components/capabilities implementing specific rules as well
as a specific order of implementing these rules.” Appeal Br. 9–10.
Appellant additionally argues that claim 1 “is not a method of organizing
human activity.” Id. at 11–12.
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Appellant’s arguments are unpersuasive because Appellant merely
supports this assertion by reciting the limitations of claim 1. Id. But the
patent rules make clear that “[a] statement [that] merely points out what a
claim recites will not be considered an argument for separate patentability of
the claim.” 37 C.F.R. § 41.37(c)(1)(iv). Furthermore, Appellant does not
sufficiently explain why the presently claimed method of organizing human
activity is any less of a fundamental economic practice merely because it is
being carried out more efficiently with the aid of a computer.
Appellant next argues that “[c]laim 1 is not abstract because it is not
a mathematical relationship or formula.” This argument is unpersuasive. As
we noted above in the analysis under step 2A, prong, 1, limitation (viii)
recites a step of aggregating scores. As such, claim 1 also is directed to an
abstract idea that entails a mathematical concept.
Appellant argues that “[c]laim 1 is not abstract because it is not an
idea of itself,” such as a mental process. Id. at 12–14. This argument is
unpersuasive because claim 1 recites various mental processes, as explained
above in the analysis under step 2A, prong 1, in relation to each of
limitations (i) through (xi).
Appellant argues that “[c]laim 1 is significantly more than an abstract
idea because the claimed implementation entails an unconventional solution
to a technical problem.” Appeal Br. 16–17. More specifically, Appellant
argues that claim 1 includes a means of attaining a technological
improvement, and “the means are the computing device that implements a
hybrid technique for executing a particular sequence of operations in a
predetermined order.” Id. at 15. Appellant further argues that
[c]laim 1 describes the unconventional solution of using the
claimed hybrid technique to solve a technical problem of
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executing a process for generating a consumer responsibility
score, where such score has practical, real-life applications that
enable analysis of short-term and long-term effects of various
financial stress on a consumer that can assist financial
institutions in evaluating creditworthiness of the consumer.
Id. at 16.
We disagree with Appellant that the claimed “hybrid technique”
solves a technical problem. Rather, the referenced sequence of claimed
operations entails the sequence of steps of abstract ideas discussed above.
“It has been clear since Alice that a claimed invention’s use of the ineligible
concept to which it is directed cannot supply the inventive concept that
renders the invention ‘significantly more’ than that ineligible concept.” BSG
Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018). “[A]
claim for a new abstract idea is still an abstract idea.” Synopsys, Inc. v.
Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (emphasis
omitted). “What is needed is an inventive concept in the non-abstract
application realm.” SAP Am., 898 F.3d at 1168.
Appellant argues that the claims are not directed to a mental process
because “[t]he computing and other components recited in claim 1 are not
generic.” Appeal Br. 12–13 (emphasis omitted). More specifically,
Appellant argues, inter alia,
[c]laim 1 provides for various computing components, including
processors, databases, etc. that provide for a graphical
representation of various aspects (e.g., responsibility scores) of a
particular process that allows users to visualize on a graphical
user interface effects of a particular change to one of the aspects
of such process on other aspects (e.g., consumer responsiveness
to various financial stresses). It also allows a determination of
how a particular consumer would respond to a specific financial
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event based on how other how other consumers responded to
financial stresses during a particular time period.
Id. at 13.
Appellant additionally argues that “even if a programmable processor
is generally deemed generic, it is respectfully submitted that the specifically
claimed at least one computing device is not generic because it is technically
configured to collectively execute the operations, as recited in claim 1.” Id.
This argument is unpersuasive because Appellant is essentially
arguing that the computer is not generic because it is programmed to carry
out the recited abstract idea. Appellant does not persuasively explain how
merely programming a computer to carry out an abstract idea improves
computer technology.
Furthermore, even if the receiving step of limitation (i) must be
interpreted narrowly as not constituting a mental process or any other
abstract idea, limitation (i)’s step of receiving a request to generate a score
still can be characterized reasonably as merely constituting insignificant
extra-solution activity. The same can be said of limitation (ii)’s step of
querying a database:
An example of pre-solution activity is a step of gathering data for
use in a claimed process, e.g., a step of obtaining information
about credit card transactions, which is recited as part of a
claimed process of analyzing and manipulating the gathered
information by a series of steps in order to detect whether the
transactions were fraudulent.
MPEP § 2106.05(g).
Similarly, limitation (vii)’s step of outputting a predictive model does
not add any meaningful limitations to the abstract idea because it merely
constitutes insignificant extra-solution activity of transmitting or displaying
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data. E.g., Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241–42 (Fed.
Cir. 2016) (holding that printing or downloading generated menus
constituted insignificant extra-solution activity). Limitation (x)’s step of
displaying the responsibility score, likewise, constitutes insignificant post-
solution activity, as well.
Appellant argues that claim 1 is not abstract because the nature and
means of performing the claimed function are not preemptive. Id. at 14–16.
We recognize that the Court has described “the concern that drives this
exclusionary principle [i.e., the exclusion of abstract ideas from patent
eligible subject matter] as one of pre-emption.” Alice, 573 U.S. at 216.
However, characterizing preemption as a driving concern for patent
eligibility is not the same as characterizing preemption as the sole test for
patent eligibility. As our reviewing court has explained: “The Supreme
Court has made clear that the principle of preemption is the basis for the
judicial exceptions to patentability” and “[f]or this reason, questions on
preemption are inherent in and resolved by the § 101 analysis.” Ariosa
Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)
(citing Alice, 573 U.S. at 216). Although “preemption may signal patent
ineligible subject matter, the absence of complete preemption does not
demonstrate patent eligibility.” Ariosa, 788 F.3d at 1379.
For these reasons, Appellant does not persuade us that claim 1 is
directed to an improvement in the function of a computer or to any other
technology or technical field. MPEP § 2106.05(a). Nor does Appellant
persuasively demonstrate that claim 1 is directed to a particular machine or
transformation, or that the claim adds any other meaningful limitations for
the purposes of the analysis under Section 101. MPEP § 2106.05(b), (c), (e).
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Accordingly, Appellant has not persuaded us that claim 1 integrates the
recited abstract ideas into a practical application within the meaning of the
2019 Guidance. See 2019 Guidance, 84 Fed. Reg. at 52–55.
Step 2B
Under step 2B of the 2019 Guidance, we next analyze whether
claim 1 adds any specific limitations beyond the judicial exception that,
either alone or as an ordered combination, amount to more than “well-
understood, routine, conventional” activity in the field. 84 Fed. Reg. at 56;
MPEP § 2106.05(d).
Appellant argues that the present claims are not well-understood,
routine, and convention because “the claimed elements are, either
individually or in an ordered combination, are not found in the prior art.”
Appeal Br. 16. This argument is unpersuasive because “[t]he ‘novelty’ of
any element or steps in a process, or even of the process itself, is of no
relevance in determining whether the subject matter of a claim falls within
the § 101 categories of possibly patentable subject matter.” Diehr, 450 U.S.
at 188–89. A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90.
Moreover, Appellant’s Specification, by describing computer-related
components at a high level without details of structure or implementation,
indicates that the recited computer components were, in fact, well-
understood, routine, and conventional:
Various implementations of the subject matter described
herein may be realized in digital electronic circuitry, integrated
circuitry, specially designed ASICs (application specific
integrated circuits), computer hardware, firmware, software,
and/or combinations thereof. These various implementations
may include implementation in one or more computer programs
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Application 12/939,975
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that are executable and/or interpretable on a programmable
system including at least one programmable processor, which
may be special or general purpose, coupled to receive data and
instructions from, and to transmit data and instructions to, a
storage system, at least one input device, and at least one output
device.
Spec. ¶ 30 (emphasis added).
Furthermore, Appellant’s Specification does not indicate that
consideration of these conventional elements, either individually or as an
ordered combination, adds any patentable significance when considered as a
whole. Rather, Appellant’s Specification indicates that the invention is
directed to an abstract idea that is made more efficient with generic
computer components—characterizing financial responsibility using
analytics. Spec. ¶ 2.
For these reasons, we determine that claim 1 does not recite additional
elements that, either individually or as an ordered combination, amount to
significantly more than the judicial exception within the meaning of the
2019 Guidance. 84 Fed. Reg. at 52–55; MPEP § 2106.05(d).

CONCLUSION
Accordingly, we affirm the Examiner’s rejection of claim 1 under
35 U.S.C. § 101 as being directed to an exception to patent-eligible subject
matter without reciting significantly more. We, likewise, affirm the
section 101 rejection of claims 2, 4, 6, 7, 11, 12, 21, and 22, which Appellant
does not argue separately. Appeal Br. 17.

Appeal 2019-003565
Application 12/939,975
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DECISION SUMMARY
In summary:

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

Claims
Rejected
35 U.S.C. § Reference(s)/
Basis
Affirmed Reversed
1, 2, 4, 6, 7, 11,
12, 21, 22
101 Eligibility 1, 2, 4, 6,
7, 11, 12,
21, 22