International Business Machines Corporation

Patent Trials and Appeals Board

Jan 27, 2021

2020005995 (P.T.A.B. Jan. 27, 2021)

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.
15/820,989 11/22/2017 Kelly A Argyros SVL920170083US1_8150-0893 8156
112978 7590 01/27/2021
Cuenot, Forsythe & Kim, LLC
20283 State Road 7, Suite 300
Boca Raton, FL 33498
EXAMINER
WAESCO, JOSEPH M
ART UNIT PAPER NUMBER
3683
NOTIFICATION DATE DELIVERY MODE
01/27/2021 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):
ibmptomail@iplawpro.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KELLY A. ARGYROS, DONNA K. BYRON,
LAKSHMINARAYANAN KRISHNAMURTHY, and
JOAN W. TOMLINSON

Appeal 2020-005995
Application 15/820,989
Technology Center 3600

Before HUBERT C. LORIN, CYNTHIA L. MURPHY, and
BRADLEY B. BAYAT, Administrative Patent Judges.

LORIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the
Examiner’s final decision to reject claims 1–21.1 We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies IBM Corporation as the real party in interest.
Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claimed subject matter “relates generally to a method, system,
and computer program product for automatically constructing a software
based on historical data. More particularly, the present invention relates to a
method, system, and computer program product for generating risk
assessment software based on parsed text streams.” (Spec. para. 1). Claim 1,
reproduced below with emphasis added, is illustrative of the claimed subject
matter:
1. A method of generating risk assessment software, the
method comprising:
identifying one or more portions of a text corpus indicative
of operational risk from a set of risk assessment documents;
determining contextual features from the one or more
portions of the text corpus by applying a natural language
processing (NLP) algorithm on the one or more portions;
extracting risk identifiers based on the determined
contextual features; and
generating a risk assessment software based on the
extracted risk identifiers and an operational risk category.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Bassin US 2013/0339921 A1 Dec. 19, 2013
Butler US 2014/0136901 A1 May 15, 2014
Monk US 2014/0172417 A1 June 19, 2014
REJECTIONS
Claims 1–21 are rejected under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter without significantly more.
Claims 1–5, 8–12, and 15–19 are rejected under 35 U.S.C. § 103 as
being unpatentable over Monk and Bassin.
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Claims 6, 7, 13, 14, 20, and 21 are rejected under 35 U.S.C. § 103 as
being unpatentable over Monk, Bassin, and Butler.
OPINION
The rejection of claims 1–21 under 35 U.S.C. § 101 as being directed to
judicially-excepted subject matter without significantly more.
Appellant indicates “claims 2-20 [sic, 2–21] stand or fall together with
independent claim 1.” See Appeal Br. 8:10–11. Accordingly, we select claim
1 as the representative claim for this group, and the remaining 2–21 stand or
fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
35 U.S.C. § 101 provides that “[w]hoever invents or discovers any
new and useful process, machine, manufacture, or composition of matter, or
any new and useful improvement thereof, may obtain a patent therefor.”
In that regard, claim 1 covers a “process” and is thus statutory subject
matter for which a patent may be obtained.2 This is not in dispute.
However, the 35 U.S.C. § 101 provision “contains an important
implicit exception: Laws of nature, natural phenomena, and abstract ideas
are not patentable.” Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S.
576, 589 (2013)).

2 This corresponds to Step 1 of the 2019 Revised 101 Guidance which
requires determining whether “the claim is to a statutory category.” 84 Fed.
Reg. at 53. See also id. at 53–54 (“consider[] whether the claimed subject
matter falls within the four statutory categories of patentable subject matter
identified by 35 U.S.C. 101.”).
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In that regard, notwithstanding claim 1 covers statutory subject
matter, the Examiner has raised a question of patent eligibility on the ground
that claim 1 is directed to an abstract idea.
Alice identifies a two-step framework for determining whether
claimed subject matter is directed to an abstract idea. Alice, 573 U.S. at 217.
Alice step one — the “directed to” inquiry
According to Alice step one, “[w]e must first determine whether the
claims at issue are directed to a patent-ineligible concept.” Alice, 573 U.S.
at 218 (emphasis added).
The Examiner repeats limitations from claim 1, states that “claim 1 is
directed to” them, and then finds that the limitations, “under their broadest
reasonable interpretation, covers performance of the limitation in the mind
for the purposes of Organizing and Tracking Information but for the
recitation of generic computer components.” Final Act. 5.
As we understand it, the Examiner has determined that the claim is
directed to organizing and tracking information. That appears to be
Appellant’s understanding as well. See Appeal Br. 13:1–3.
The Examiner goes on to say that “other than reciting applying
NLP algorithm, nothing in the claim element precludes the step from
practically being performed or read into the mind for the purposes of
Organizing and Tracking information.” Final Act. 5. And, “these process
[steps] recite limitations for organizing and tracking information, a ‘Method
of Organizing Human Activity’. Accordingly, the claim recites an abstract
idea.” Id.
Accordingly, the Examiner has determined that all the subject matter
of claim 1 but for the recitation of “applying a natural language processing
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(NLP) algorithm” falls within both the enumerated “[m]ental processes” and
“[c]ertain methods of organizing human activity” groupings of abstract ideas
set forth in the 2019 Revised 101 Guidance,3 and thus claim 1 is directed to
an abstract idea.
Appellant disputes that the claim is directed to subject matter that falls
in said Guidance’s groupings of abstract ideas. Rather, according to
Appellant, the “Claims are directed to an improvement to technology.”
Appeal Br. 15. According to Appellant,
As discussed in paragraphs [0021]-[0022] of Appellants'
disclosure, the claimed invention addresses problems associated
with configuring risk assessment software. The claimed
invention addresses these problems by applying a natural
language processing (NLP) algorithm to certain identified
portions of text corpus to determine contextual features and to
extract risk identifiers based on the determined contextual
features. The result of the claimed invention is the generation of
a risk assessment software using the extracted risk identifiers.
Thus, the claimed invention represents an improvement over the
prior art technology and integrates the alleged abstract idea into
a practical application.
Id. at 17.
Accordingly, there is a dispute over whether claim 1 is directed to an
abstract idea. Specifically, is claim 1 directed to organizing and tracking
information (Examiner) or an improvement to technology (Appellant)?

3 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54.
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Claim Construction
We consider the claim4 as a whole5 giving it the broadest reasonable
construction6 as one of ordinary skill in the art would have interpreted it in
light of the Specification7 at the time of filing.
Claim 1 describes a method comprising four steps.
The first step calls for “identifying one or more portions of a text
corpus indicative of operational risk from a set of risk assessment
documents.” This step is not associated with any device and can be
performed mentally because it can be accomplished simply by identifying

4 “[T]he important inquiry for a § 101 analysis is to look to the claim.”
Accenture Glob. Servs., GmbH v. Guidewire Software, Inc., 728 F.3d 1336,
1345 (Fed. Cir. 2013). “In Bancorp Servs., L.L.C. v. Sun Life Assurance Co.
of Can., 687 F.3d 1266, 1273 (Fed. Cir. 2012), the court observed that
‘claim construction is not an inviolable prerequisite to a validity
determination under § 101.’ However, the threshold of § 101 must be
crossed; an event often dependent on the scope and meaning of the claims.”
Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1347–48
(Fed. Cir. 2015).

5 “In determining the eligibility of respondents’ claimed process for patent
protection under § 101, their claims must be considered as a whole.”
Diamond v. Diehr, 450 U.S. 175, 188 (1981).

6 See 2019 Revised 101 Guidance, 84 Fed. Reg. at 52, footnote 14 (“If a
claim, under its broadest reasonable interpretation.”) (emphasis added).

7 “First, it is always important to look at the actual language of the claims. .
. . Second, in considering the roles played by individual limitations, it is
important to read the claims ‘in light of the specification.’” Smart Sys.
Innovations, LLC v. Chicago Transit Auth., 873 F.3d 1364, 1378 (Fed. Cir.
2017) (J. Linn, dissenting in part and concurring in part) (citing Enfish, LLC
v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)), among others.
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certain information in, for example, a document that is related to a
business’s operational risk. Cf. e.g., Spec. at 5 (“An aspect of the present
invention identifies one or more portions of a text corpus indicative of
operational risk from a set of risk assessment documents.”)
The second step calls for, in part, “determining contextual features
from the one or more portions of the text corpus.” Determining, per se, can
also be performed mentally. This is so because it can be accomplished
simply by noting the context in which said certain information is presented;
for example, if it is contained as part of a regulation. See e.g., id. at 87
(“[T]he contextual features may refer to a regulation, an obligation, a topic, a
subject, or a subject-matter domain.”)
We are cognizant that the claim specifically requires this second step
be performed “by applying a natural language processing (NLP) algorithm
on the one or more portions.” (emphasis added). But it is notable that the
claim does not further elaborate on how the algorithm should be applied in
order that the context of the said certain information (i.e., the “portions”) can
be determined. To make it more vague, the NLP algorithm itself is generic.
Appellant argues:
The claim recites applying a natural language processing
algorithm to portions of a risk assessment document. Natural
language processing refers to a particular type of computer
technology. Consequently, as claimed, the language at issue does
not recite limitations that can be practically be performed in the
human mind.
Appeal Br. 11:8–11.
Be that as it may, given the lack of technical detail and that the NLP
algorithm is generic, the recitation “applying a natural language processing
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(NLP) algorithm” amounts to an instruction to apply the “determining” step
using some unspecified, generic NLP algorithm. Cf. Alice 573 U.S. at 225–
226 (“Instead, the claims at issue amount to ‘nothing significantly more’
than an instruction to apply the abstract idea of intermediated settlement
using some unspecified, generic computer.”)
The third step of claim 1 calls for “extracting risk identifiers based on
the determined contextual features.” This, too, can be accomplished
mentally. Reasonably broadly construed, this step can be accomplished by
identifying those terms related to operational risk while taking into
consideration the context in which that information is used in, for example, a
report. See, e.g., Spec. paragraph 27:
In another example, a group of words in one or more portions in
the previous risk assessment reports are lemmatized to identify
one or more terms to use as a risk identifier. In several
embodiments, those of ordinary skill in the art will be able to
conceive many other ways of parsing the contents of an identified
portion of previous risk assessment reports for a similar purpose,
and the same are contemplated within the scope of the illustrative
embodiments.
We note that Appellant argues that the “extracting” step “cannot be
performed in the human mind” because “the claimed extracting is
described in the specification as a special data processing operation using
‘natural language processing,’ which is a specific type of computer
technology.” Appeal Br. 10:28–31. This argument is unpersuasive.
Notwithstanding the discussion in the Specification, the step is not
limited to requiring it be conducted via “natural language processing.” It is
broader than that. Limitations appearing in the specification but not recited
in the claim are not read into the claim. E-Pass Techs., Inc. v. 3Com Corp.,
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343 F.3d 1364, 1369 (Fed. Cir. 2003) (claims must be interpreted “in view
of the specification” but without importing limitations from the specification
into the claims unnecessarily).
Finally, by the fourth step, the method calls for “generating a risk
assessment software based on the extracted risk identifiers and an
operational risk category.” This step is worded in result–oriented language
lacking in any technical detail about the mechanism for generating the
software.
We agree that “[t]his is an operation necessarily performed using a
computer” (Appeal Br. 12:6–7) and, therefore, we also agree “generating
risk assessment software” as claimed is not something that can be performed
mentally.
Be that as it may, “generating” software is reasonably broadly
construed as encompassing generating software via a coding platform on a
generic computer (e.g., a generic “server” (see Spec., Figure 3, element
“SERVER 302”)). Notably, the Specification describes the “risk assessment
software” in generic terms. For example, “the risk identifiers [can be]
displayed on [a] risk assessment software via a graphical user interface, so as
to allow a user to evaluate the pertinent factors involved in an operational
risk assessment for a particular business process.” Spec. para. 32. See also
paragraph 35:
The illustrative embodiments are described with respect to
certain types of risk assessment software, NLP systems, risk
assessment reports, devices, data processing systems,
environments, components, and applications only as examples.
Any specific manifestations of these and other similar artifacts
are not intended to be limiting to the invention. Any suitable
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manifestation of these and other similar artifacts can be selected
within the scope of the illustrative embodiments.
In other words, although the step calls for “generating a risk assessment
software,” in light of the Specification, said phrase is reasonably broadly
construed as encompassing computer–enabled displaying of operational risk
assessments.
Putting it together, claim 1 is reasonably broadly construed as
covering a scheme whereby certain risk–related information is gathered and,
based on that information, a “risk assessment software” is generated for use
by a business to manage risks associated with operating its business. This
comports with the Specification.
According to the Specification, the invention concerns managing
operational risk.
Operational risk can include risks incurred by the internal
activities, policies, procedures, and rules of an organization.
Operational risk includes the risks arising from the people,
systems, and processes through which a company operates.
Operational risk can also include legal risk (including fines,
penalties, punitive damages resulting from supervisory actions
and private settlements) but excludes strategic and reputational
risk. Operational risk events may be separated into seven
categories: 1) internal fraud; 2) external fraud; 3) employment
practices and workplace safety; 4) clients, products, and business
practices; 5) damage to physical assets; 6) business disruption
and system failures; and 7) execution, delivery & process
management. Also, operational risk can include the risk of loss
resulting from inadequate or failed internal processes, people,
and systems. Illustrative embodiments recognize that banks and
other financial institutions may assess their own operational risk
in each category and calculate the capital reserve needed to cover
any operational risk.
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Spec. para. 14. The solution is to generate “risk assessment software” based
on certain risk–related information associated with a business.
[R]isk assessment software may determine a risk score
associated with the process based on the risk information
received from the business unit. The risk assessment software
may communicate the risk score to a user that may be responsible
for approving a risk management project associated with the
process subject to the risk. After the approval has been granted,
the risk assessment software may communicate information
about an approved risk management project to a second user
within the business unit, the risk management project including
at least one control designed to mitigate a risk identified by the
risk assessment system.
Id. para. 17.
Given certain risk–related information, a “risk assessment software”
can be generated (e.g., for displaying risk assessment on a computer
interface) for use by a business to help manage risks associated with
operating its business. This is the focus of the claimed advance over the
prior art.
Given the method as claimed as reasonably broadly construed above
and in light of the Specification’s description of the objective of the
invention, we reasonably broadly construe claim 1 as being directed to a
scheme for obtaining operational risk–related information associated with a
business and, based on that information, generating a “risk assessment
software” for that business.

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The Abstract Idea8
Above, where we reproduce claim 1, we identify in italics the
limitations we believe recite an abstract idea.9
Based on our claim construction analysis (above), we determine that
the identified limitations describe a scheme for obtaining operational risk–
related information associated with a business and, based on that
information, generating a “risk assessment software” for that business.
Managing operational risk is a fundamental economic practice as it is
a commercial interaction. It falls within the enumerated “[c]ertain methods
of organizing human activity” grouping of abstract ideas set forth in the
2019 Revised 101 Guidance.10 2019 Revised 101 Guidance, 84 Fed. Reg. at
52.

8 This corresponds to Step 2A of the 2019 Revised 101 Guidance. Step 2A
determines “whether a claim is ‘directed to’ a judicial exception,” such as an
abstract idea. Step 2A is two prong inquiry.

9 This corresponds to Prong One (a) of Step 2A of the 2019 Revised 101
Guidance. “To determine whether a claim recites an abstract idea in Prong
One, examiners are now to: (a) Identify the specific limitation(s) in the
claim under examination (individually or in combination) that the examiner
believes recites an abstract idea.” 84 Fed. Reg. at 54.

10 This corresponds to Prong One [“Evaluate Whether the Claim Recites a
Judicial Exception”] (b) of Step 2A of the 2019 Revised 101 Guidance. “To
determine whether a claim recites an abstract idea in Prong One, examiners
are now to: . . . (b) determine whether the identified limitation(s) falls within
the subject matter groupings of abstract ideas enumerated in Section 1 of the
[2019 Revised 101 Guidance].” 84 Fed. Reg. at 54. This case implicates
subject matter grouping “(b):” “(b) Certain methods of organizing human
activity—fundamental economic principles or practices (including hedging,
insurance, mitigating risk); commercial or legal interactions (including
agreements in the form of contracts; legal obligations; advertising,
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We have identified the relevant specific sub–grouping in the “[c]ertain
methods of organizing human activity” grouping of abstract ideas set forth in
the Guidance and in doing so satisfy Appellant’s request that it be so
identified. See Appeal Br. 12:22–25.
Technical Improvement11 (Appellant’s Argument)
Our characterization of what the claim is directed to is similar to that
of the Examiner’s (“organizing and tracking information” (Final Act. 5)),
albeit the Examiner’s characterization is described at a higher level of
abstraction. Nevertheless, “[a]n abstract idea can generally be described at
different levels of abstraction.” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229,
1240, 1240–41 (Fed. Cir. 2016) (“The Board’s slight revision of its abstract
idea analysis does not impact the patentability analysis.”).

marketing or sales activities or behaviors; business relations); managing
personal behavior or relationships or interactions between people (including
social activities, teaching, and following rules or instructions).” Id. at 52.

11 This corresponds to Prong Two [“If the Claim Recites a Judicial
Exception, Evaluate Whether the Judicial Exception Is Integrated Into a
Practical Application”] of Step 2A of the 2019 Revised 101 Guidance. “A
claim that integrates a judicial exception into a practical application will
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception.” 84 Fed. Reg.
at 54. One consideration, implicated here, that is “indicative that an
additional element (or combination of elements) may have integrated the
exception into a practical application” is if “[a]n additional element reflects
an improvement in the functioning of a computer, or an improvement to
other technology or technical field.” Id. at 55.

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We have reviewed the record and are unpersuaded as to error in our or
the Examiner’s characterization of what claim 1 is directed to.
Appellant argues that the claim presents a technical-improvement
solution.12 We have been unable to point to any claim language suggestive
of such an improvement in technology.
According to Appellant:
As discussed in paragraphs [0021]-[0022] of Appellants'
disclosure, the claimed invention addresses problems associated
with configuring risk assessment software. The claimed
invention addresses these problems by applying a natural
language processing (NLP) algorithm to certain identified
portions of text corpus to determine contextual features and to
extract risk identifiers based on the determined contextual
features. The result of the claimed invention is the generation of
a risk assessment software using the extracted risk identifiers.
Thus, the claimed invention represents an improvement over the
prior art technology and integrates the alleged abstract idea into
a practical application.
Appeal Br. 17:2–9.

12 We view Appellant’s argument as corresponding to Prong Two [“If the
Claim Recites a Judicial Exception, Evaluate Whether the Judicial Exception
Is Integrated Into a Practical Application”] of Step 2A of the 2019 Revised
101 Guidance. “A claim that integrates a judicial exception into a practical
application will apply, rely on, or use the judicial exception in a manner that
imposes a meaningful limit on the judicial exception, such that the claim is
more than a drafting effort designed to monopolize the judicial exception.”
84 Fed. Reg. at 54. One consideration, implicated here, that is “indicative
that an additional element (or combination of elements) may have integrated
the exception into a practical application” is if “[a]n additional element
reflects an improvement in the functioning of a computer, or an
improvement to other technology or technical field.” Id. at 55.

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We have reviewed paragraphs 21 and 22. They are reproduced below:
[0021] Illustrative embodiments recognize that an organization
may incorporate previous risk assessments to create a new risk
assessment template and/or a configuration for a risk assessment
software. To perform this function, an organization needs to
manually inspect previous risk assessments to generate new risk
assessment reports and/or to design their own risk assessment
software. Illustrative embodiments thus recognize that the
current solutions require a large commitment of resources to be
accurate and comprehensive, yet they still will be subject to
human errors.

[0022] The illustrative embodiments recognize that the presently
available tools or solutions do not address the needs or provide
adequate solutions for these needs. The illustrative embodiments
used to describe the invention generally address and solve the
above-described problems and other problems related to
configuring a risk assessment software.
We do not see there disclosed any discussion about “address[ing] problems
associated with configuring risk assessment software,” let alone that such
problems can be addressed “by applying a natural language processing
(NLP) algorithm to certain identified portions of text corpus to determine
contextual features and to extract risk identifiers based on the determined
contextual features” as Appellant argues. Appeal Br. 17:4–6 (emphasis
added).
Moreover, we do not see claim 1 as describing configuring risk
assessment software. As to claim 1, Appellant’s argument is not
commensurate in scope with what is claimed.
The steps as claimed involve, inter alia, a series of “identifying,”
“determining,” “extracting,” and “generating” steps that obtaining
operational risk–related information associated with a business and, based
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on that information, generating a “risk assessment software” for that
business. The steps as claimed are not focused on improving technology, but
rather a means (“risk assessment software”) by which a business can better
assess operational risk. Cf. Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d
1378, 1384 (Fed. Cir. 2019) (“The claims are focused on providing
information to traders in a way that helps them process information more
quickly, ’556 patent at 2:26–39, not on improving computers or
technology.”). Rather than being directed to any specific asserted
improvement in computer capabilities, the claim supports the opposite view
— that the claimed subject matter seeks to obtain operational risk–related
information associated with a business and, based on that information,
generating a “risk assessment software” for that business.
As for the NLP algorithm and the computer means for “generating
risk assessment software,” as we have explained, the Specification evidences
the generic nature of these elements that may be used to facilitate assessment
of operational risk. “[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. The claim provides no additional structural details
that would distinguish the NLP algorithm and the computer means for
“generating risk assessment software” required to be employed to practice
the steps as claimed from their generic counterparts.13

13 Cf. Move, Inc. v. Real Estate Alliance Ltd., 721 F. App’x 950, 954 (Fed.
Cir. 2018) (non-precedential) (“Claim 1 is aspirational in nature and devoid
of any implementation details or technical description that would permit us
to conclude that the claim as a whole is directed to something other than the
abstract idea identified by the district court.”).
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Also, the Specification attributes no special meaning to any of the
recited operations, individually or in the combination, as claimed.
Notwithstanding some of the steps are not attached to any device and can be
performed purely mentally, the “identifying,” “determining,” “extracting,”
and “generating” are nevertheless common computer information–
processing functions that one of ordinary skill in the art at the time of the
invention would have known generic processors were capable of performing
and would have associated with generic processors. Cf. OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015):
Beyond the abstract idea of offer-based price optimization, the
claims merely recite “well-understood, routine conventional
activit[ies],” either by requiring conventional computer activities
or routine data-gathering steps. Alice, 134 S.Ct. at 2359 (quoting
Mayo, 132 S.Ct. at 1294) . . . . For example, claim 1 recites
“sending a first set of electronic messages over a network to
devices,” the devices being “programmed to communicate,”
storing test results in a “machine-readable medium,” and “using
a computerized system . . . to automatically determine” an
estimated outcome and setting a price. Just as in Alice, “all of
these computer functions are ‘well-understood, routine,
conventional activit[ies]’ previously known to the industry.”
Alice, 134 S.Ct. at 2359 (quoting Mayo, 132 S.Ct. at 1294)
(alterations in original); see also buySAFE[, Inc. v. Google, Inc.],
765 F.3d [1350,] 1355 [(Fed. Cir. 2014)] (“That a computer
receives and sends the information over a network—with no
further specification—is not even arguably inventive.”).
By so broadly defining the inventive method, that is, by setting out
what it is aspiring to accomplish without any means for achieving it, other
than via a generic NLP algorithm and means for “generating a risk
assessment software,” let alone any purported technological improvement,
the claim is in effect presenting the invention in purely result-based
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functional language, strengthening our determination under Alice step one
that the claim is directed to an abstract idea. Cf. Two-Way Media Ltd. v.
Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017)
(“Claim 1 recites a method for routing information using result-based
functional language. The claim requires the functional results of
‘converting,’ ‘routing,’ ‘controlling,’ ‘monitoring,’ and ‘accumulating
records,’ but does not sufficiently describe how to achieve these results in a
non-abstract way.”). See also Uniloc USA v. LG Elecs. USA, 957 F.3d 1303,
1308 (Fed. Cir. 2020):
The claims we held ineligible in Two-Way Media similarly failed
to concretely capture any improvement in computer
functionality. In Two-Way Media, the claims recited a method of
transmitting packets of information over a communications
network comprising: converting information into streams of
digital packets; routing the streams to users; controlling the
routing; and monitoring the reception of packets by the users.
874 F.3d at 1334. Two-Way Media argued that the claims solved
data transmission problems, including load management and
bottlenecking, but the claimed method was not directed to those
improvements. Id. at 1336–37. We therefore held the claims
ineligible because they merely recited a series of abstract steps
(“converting,” “routing,” “controlling,” “monitoring,” and
“accumulating records”) using “result-based functional
language” without the means for achieving any purported
technological improvement. Id. at 1337.
Accordingly, we are unpersuaded that the claim is directed to a
technological improvement that renders the claim not, as Examiner argues,
directed to an abstract idea that falls within the enumerated “[c]ertain
methods of organizing human activity” grouping of abstract ideas set forth in
the 2019 Revised 101 Guidance. For the foregoing reasons, the record
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supports the Examiner’s determination that claim 1 is directed to an abstract
idea.

Alice step two — Does the Claim Provide an Inventive Concept?14
Step two is “a search for an ‘inventive concept’—i.e., an element or
combination of elements that is ‘sufficient to ensure that the patent in
practice amounts to significantly more than a patent upon the [ineligible
concept] itself.’” Alice, 573 U.S. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 73 (2012)).
In that regard, the Examiner determined, inter alia, that “[t]he claim
does not include additional elements that are sufficient to amount to
significantly more than the judicial exception . . . .” Final Act. 6. We agree.
In reaching that determination, the Examiner cogently explains the
conventional nature of the means covered by the claim for performing the
steps as claimed, citing the intrinsic record as evidence. Id. at 6–7. Appellant
does not appear to challenge the Examiner’s determination under step two of
the Alice framework. See Appeal Br. 17–18 where “Step 2B” is discussed.
See also Reply Br. 9–10. In our view the Examiner has not failed “to present
‘factual evidence establishing that the additional elements, both alone and in
combination, are well-understood, routine, and conventional” (id. at 10).

14 This corresponds to Step 2B, of the 2019 Revised 101 Guidance, 84 Fed.
Reg. at 56 “if a claim has been determined to be directed to a judicial
exception under revised Step 2A, examiners should then evaluate the
additional elements individually and in combination under Step 2B to
determine whether they provide an inventive concept (i.e., whether the
additional elements amount to significantly more than the exception itself).”
(Emphasis added).
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We addressed the matter of whether the claim presented any purported
specific asserted technical improvements in our analysis above under
step one of the Alice framework. This is consistent with the case law. See
Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343, 1347 (Fed. Cir. 2018)
(“We have several times held claims to pass muster under Alice step one
when sufficiently focused on such improvements.”).
We note that the Specification discloses using learning systems based
on conventional structures such as the Penn Treebank. Spec. para. 76. Also,
the Brief cites Wikipedia
(https://en.wikipedia.org/wiki/Natural_language_processing), which further
supports viewing the claim element “natural language processing (NLP)
algorithm” as well–known, conventional and routine. See Appeal Br. 11,
footnote 2. This suggests that, although the claim specifically requires the
determining be accomplished via a NLP algorithm, doing so does not add
anything of significance to performing a “determining contextual features
from the one or more portions of the text corpus” that could not otherwise be
accomplished mentally. Accordingly, the Specification provides intrinsic
evidence that the claimed NLP algorithm and means for “generating a risk
assessment software” as claimed are conventional. In doing so, we have
followed “Changes in Examination Procedure Pertaining to Subject Matter
Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP
Inc.[, 881 F.3d 1360 (Fed. Cir. 2018)],” USPTO Memorandum, Robert W.
Bahr, Deputy Commissioner For Patent Examination Policy, April 19, 2018
(the “Berkheimer Memo”)).
No other persuasive arguments having been presented, we conclude
that no error has been committed in the determination under Alice step two
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that claim 1 does not include an element or combination of elements
circumscribing the patent-ineligible concept it is directed to so as to
transform the concept into a patent-eligible invention.
We have considered all of the Appellant’s arguments (including those
made in the Reply Brief) and find them unpersuasive.
Accordingly, because we are not persuaded as to error in the
determinations that representative claim 1, and claims 2–21 which fall with
claim 1, are directed to an abstract idea and do not present an “inventive
concept,” we sustain the Examiner’s conclusion that they are directed to
patent-ineligible subject matter for being judicially-excepted from 35 U.S.C.
§ 101. Cf. LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 997 (Fed.
Cir. 2016) (“We have considered all of LendingTree’s remaining arguments
and have found them unpersuasive. Accordingly, because the asserted claims
of the patents in suit are directed to an abstract idea and do not present an
‘inventive concept,’ we hold that they are directed to ineligible subject
matter under 35 U.S.C. § 101.”); see, e.g., OIP Techs., 788 F.3d at 1364;
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir.
2016).

The rejection of claims 1–5, 8–12, and 15–19 under 35 U.S.C. § 103(a) as
being unpatentable over Monk and Bassin.
We have reviewed the positions taken by the Examiner and Appellant
and find the record favors Appellant.
According to the Examiner, the “identifying” step of independent
claims 1, 8, and 15 is disclosed in para. 4 of Monk. See Final Act. 9:
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[Monk discloses] identifying one or more portions of a text
corpus indicative of operational risk from a set of risk assessment
documents ([0004] a document, text document, which is
identifying operational and functional strategies, risks,
operational instructions, etc., is used to identify goals or portions
of the text which are used to [0054] create software applications
through the corpus of documents);
Paragraph 4 of Monk reads as follows:
Throughout these phases of product development,
communications in document form are employed to explain
operational and functional requirements, implementation
strategies, risks, operating instructions, adherence to regulatory
and industrial standards, and other engineering parameters. One
or more individuals create this documentation based upon their
areas of expertise and their knowledge of and experience with
the development project. The documentation is developed for
different levels of understanding of the project and for different
audiences to interpret and use the information to develop,
manufacture or use the products created.
We agree with Appellant’s assessment that paragraph 4 of Monk
“fails to teach the limitations for which the Examiner is relying upon Monk
to teach.” Appeal Br. 22. We, too, are unable to find “identifying” portion of
text in said disclosure.
The Examiner disputes that:
Monk clearly teaches a document is used (which is a text corpus
as per Applicant's specification) which is in [0004] identifying
operational and functional strategies, operational and functional
risks, operation and function instructions, etc., and thus teaches
this operational risk which is claimed.
Ans. 9.
However, as Appellant points out (Reply Br. 12), said passage at best
discloses communications employed to “explain” operational and functional
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requirements, etc., not to “identify” portions indicative of operational risk,
claimed.
The rejection is not sustained on the ground that a prima facie case of
obviousness has not been made out in the first instance for the subject matter
of independent claims 1, 8, and 15, and claims 2–5, 9–12, and 16–19
depending therefrom.

The rejection of claims 6, 7, 13, 14, 20, and 21 under 35 U.S.C. § 103(a) as
being unpatentable over Monk, Bassin, and Butler.
This rejection of dependent claims 6, 7, 13, 14, 20, and 21, is not
sustained for the reasons given above in not sustaining the rejection of
independent claims 1, 8, and 15 from which they depend.

CONCLUSION
The decision of the Examiner to reject claims 1–21 is affirmed.
More specifically:
The rejection of claims 1–21 under 35 U.S.C. § 101 as being directed
to judicially-excepted subject matter is affirmed.
The rejection of claims 1–5, 8–12, and 15–19 under 35 U.S.C.
§ 103(a) as being unpatentable over Monk and Bassin is reversed.
The rejection of claims 6, 7, 13, 14, 20, and 21 under 35 U.S.C.
§ 103(a) as being unpatentable over Monk, Bassin, and Butler is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–21 101 Eligibility 1–21
1–5, 8–
12, 15–
19
103(a) Monk, Bassin 1–5, 8–
12, 15–
19
6, 7, 13,
14, 20,
21
103(a) Monk, Bassin, Butler 6, 7, 13,
14, 20,
21
Overall
Outcome
1–21

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
AFFIRMED