Jochen Leidner et al.

Patent Trials and Appeals Board

Aug 3, 2020

2020001885 (P.T.A.B. Aug. 3, 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.
13/423,134 03/16/2012 Jochen L. Leidner 113027.000077US1 9439
79804 7590 08/03/2020
Duncan Galloway Egan Greenwald, PLLC
9625 Ormsby Station Road
Louisville, KY 40223
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/03/2020 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):
carnold@dgeglaw.com
kduncan@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOCHEN L. LEIDNER and FRANK SCHILDER
Appeal 2020-001885
Application 13/423,134
Technology Center 3600
Before JEREMY J. CURCURI, IRVIN E. BRANCH, and
PHILLIP A. BENNETT, Administrative Patent Judges.
BENNETT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–30. 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 the real party in interest as
Refinitiv US Organization. Appeal Br. 1.
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CLAIMED SUBJECT MATTER
The claims are directed to risk mining in order to generate entity risk
profiles that predict the behavior of a security. Spec. ¶ 1. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A computer implemented automated method for
displaying information stored in a computer data structure, the
method comprising:
a) receiving and transforming a first set of textual content
into a first set of risk scores using at least one computational
linguistic technique comprising at least one risk identification
algorithm;
b) generating by a computer a current entity-specific risk
profile, wherein the current entity-specific risk profile is a tuple
profile data structure comprising a plurality of risk types derived
in part from the first set of risk scores and further comprises the
first set of risk scores derived from the first set of textual content;
c) determining by a computer a risk difference between a
historical risk profile, the historical risk profile comprising a
second set of risk scores, the second set of risk scores having
been previously generated by transforming a second set of
content using at least one computational linguistic technique, and
the current entity-specific risk profile, wherein the first set of
content, collectively, is transformed in substantially real-time
upon being received and temporally more recent to the
determining than is, collectively, the second set of content;
d) based upon the risk difference, determining by a
computer a predicted movement of a price of a security
associated with an entity, the entity being the entity for which the
current entity-specific risk profile was generated; and
e) electronically transmitting by a computer a graphical
user interface comprising user-operable elements representing
the predicted movement and the entity-specific risk profile in
substantially real-time upon receipt of the first set of content,
wherein the plurality of risk types that comprise the tuple profile
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data structure are represented as graphical user interface
elements within the graphical user interface.
Appeal Br. 17 (Claims Appendix).
REJECTION2
Claims 1–30 stand rejected under 35 U.S.C. § 101 as being directed to
a judicial exception without significantly more. Final Act. 2–5.
ANALYSIS
Standard for Patent Eligibility
In issues involving subject matter eligibility, our inquiry focuses on
whether the claims satisfy the two-step test set forth by the Supreme Court in
Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). The Court instructs us
to “first determine whether the claims at issue are directed to a patent-
ineligible concept,” id. at 218, and, in this case, the inquiry centers on
whether the claims are directed to an abstract idea. If the initial threshold is
met, we then move to the second step, in which we “consider the elements of
each claim both individually and ‘as an ordered combination’ to determine
whether the additional elements ‘transform the nature of the claim’ into a
patent-eligible application.” Id. at 217–18 (quoting Mayo Collaborative
Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)). The Court
describes the second step as a search for “an ‘“inventive concept”’—i.e., an

2 This application was the subject of a prior appeal of the Section 101
rejections. Although not identified by Appellant as a related appeal, on
September 27, 2018, the Board decided Appeal No. 2017-004383 wherein
the rejections of claims 1–30 under 35 U.S.C. § 101 were affirmed.
Appellant’s claims have been amended to include additional limitations,
which we address de novo herein.
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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.’” Id. (quoting Mayo, 566 U.S. at 72–73).
The USPTO has published revised guidance on the application of
§ 101 consistent with Alice and subsequent Federal Circuit decisions.
USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed.
Reg. 50 (Jan. 7, 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”).
Under the Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, certain methods of
organizing human activity such as a fundamental economic
practice, or mental processes) (referred to Step 2A, prong 1 in
the Guidance); and
(2) additional elements that integrate the judicial exception into
a practical application (see MPEP § 2106.05(a)–(c), (e)–(h))
(referred to Step 2A, prong 2 in the Guidance).
See 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 move to Step 2B of the Guidance. There, we look to
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.
See Guidance, 84 Fed. Reg. at 56.
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Examiner’s Findings and Conclusions3
The Examiner rejects claim 1 as being directed to a judicial exception
without significantly more under the Guidance. Final Act. 3–6; Ans. 4–6.
Under Step 2A, prong 1, the Examiner determines claim 1 recites a judicial
exception. Ans. 4–5. Specifically, the Examiner determines that the claims
“recite data manipulation steps for determining the movement of a price”
(Final Act. 4), which the Examiner characterizes as both a mental process
(Ans. 3) and “a business method for managing personal behavior or
relationships or interactions between people,” i.e., a certain method of
organizing human activity (Ans. 5) under the Guidance.
Under Step 2A, prong 2, the Examiner determines the claims do not
integrate the abstract idea into a practical application because “[t]here is a
distinct difference between reciting an improvement to the performance of a
computer or computer component as a tool and reciting the use of a
computer as a tool to implement an abstract idea.” Ans. 3. The Examiner
determines additional elements reciting a “tuple structure” do not integrate
the abstract idea because “no particular solution specific to tuple data
structure is recited in the claims.” Id. The Examiner further determines the
claims only recite generic computer hardware that does not constitute a

3 The Final Office Action was mailed prior to the Guidance. The Final
Office Action applied the case-law-based approach from previous eligibility
guidance in rejecting the claims under § 101. The Appeal Brief, Examiner’s
Answer and Reply Brief were filed subsequent to the issuance of the
Guidance. The Examiner’s Answer updated the rejection to incorporate the
procedure set forth in the Guidance, and we refer primarily to the
determinations as updated by those findings and conclusions in the Answer.
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special purpose computer, and that “the graphical user interface is a generic
computer component that is used for data output.” Ans. 5.
Under Step 2B, the Examiner determines the additional claim
elements are well-understood, routine and conventional. Ans. 5–6 (citing
MPEP § 2106.05(d) and Spec. ¶¶ 59, 133).
Appellant’s Contentions
Appellant presents several arguments for eligibility. Appellant first
argues “[c]laim 1 specifically solves the technical problem of providing a
visual representation of risks associated with an entity and stored in an entity
risk profile tuple data structure.” Appeal Br. 8. Appellant further contends
“the graphical user interface of claim 1 ensures that the user is a useful set of
graphical user interface elements including user operable elements.” Appeal
Br. 8 (citing Spec. Fig. 18). Appellant further asserts that the functions
recited in claim 1 integrate any recited judicial exception into a practical
application because “[c]onsidering the whole claim, the specifically recited
combination of elements in the claim limitations amounts to a practical
application of even the Examiner’s abstraction of ‘determining a predicted
movement of a price of a security’ in a specific computer environment.”
Appeal Br. 10. Under Step 2B of the Guidance, Appellant argues the
Examiner has not provided sufficient evidence of the well-understood,
routine and conventional nature of the claims, and that “[t]he inventive
concept can be found in the unconventional and non-generic combination of
known elements including the presentation of the entity-specific risk profile
and predicted movement as user-operable elements in a graphical user
interface.” Appeal Br. 13.
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Revised Guidance, Step 2A, Prong 1
The Judicial Exception
Applying the Guidance, we are not persuaded the Examiner has erred
in determining that the claims recite a judicial exception to patent eligible
subject matter.4 The Guidance identifies three judicially-excepted
groupings: (1) mathematical concepts, (2) certain methods of organizing
human activity such as fundamental economic practices and commercial
interactions (including . . . advertising, marketing or sales activities or
behaviors; business relations), and (3) mental processes. We focus our
analysis on the third grouping—mental processes.5
We conclude the limitations of claim 1 recite a mental process under
the Guidance. For example, claim 1 recites (1) “receiving and transforming
a first set of textual content into a first set of risk scores using at least one
computational linguistic technique comprising at least one risk identification
algorithm,” and (2) “generating . . . a current entity-specific risk profile . . .
comprising a plurality of risk types derived in part from the first set of risk
scores and further comprises the first set of risk scores derived from the first
set of textual content,” (3) “determining . . . a risk difference between a
historical risk profile, the historical risk profile comprising a second set of

4 Throughout this opinion, we give the claim limitations the broadest
reasonable interpretation consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).
5 Appellant’s arguments against the § 101 rejection are made to the claims
generally. We treat claim 1 as representative. 37 C.F.R. § 41.37(c)(1)(iv)
(2018) (“When multiple claims subject to the same ground of rejection are
argued as a group or subgroup by Appellant, the Board may select a single
claim from the group or subgroup and may decide the appeal as to the
ground of rejection with respect to the group or subgroup on the basis of the
selected claim alone.”).
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risk scores, the second set of risk scores having been previously generated
by transforming a second set of content using at least one computational
linguistic technique, and the current entity-specific risk profile, wherein the
first set of content, collectively, is transformed in substantially real-time
upon being received and temporally more recent to the determining than is,
collectively, the second set of content,” and (4) “based upon the risk
difference, determining . . . a predicted movement of a price of a security
associated with an entity, the entity being the entity for which the current
entity-specific risk profile was generated.” Appeal Br. 17 (Claims
Appendix). These limitations all recite steps that could be performed by a
human in their mind or with the aid of pen and paper.6
Revised Guidance, Step 2A, Prong 2
Integration of the Judicial Exception into a Practical Application
Having determined that claim 1 recites a judicial exception, our
analysis under the Guidance turns now to determining whether claim 1
recites any additional elements that integrate the judicial exception into a
practical application. See Guidance, 84 Fed. Reg. at 54–55 (citing MPEP
§ 2106.05(a)–(c), (e)–(h)).
Under the Guidance, limitations that are indicative of “integration into
a practical application” include:

6 These limitations, considered together, also are reasonably characterized as
reciting a certain method of organizing human activity under the Guidance.
Thus, like the concept of intermediated settlement in Alice, and the concept
of hedging in Bilski, the concept of evaluating risk for investment purposes
recited in the claims is a fundamental economic practice long prevalent in
our system of commerce.
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1. Improvements to the functioning of a computer, or to any other
technology or technical field — see MPEP § 2106.05(a);
2. Applying the judicial exception with, or by use of, a particular
machine — see MPEP § 2106.05(b);
3. Effecting a transformation or reduction of a particular article to
a different state or thing — see MPEP § 2106.05(c); and
4. Applying or using the judicial exception in some other
meaningful way beyond generally linking the use of the judicial
exception to a particular technological environment, such that
the claim as a whole is more than a drafting effort designed to
monopolize the exception — see MPEP § 2106.05(e).
In contrast, limitations that are not indicative of “integration into a
practical application” include:
1. Adding the words “apply it” (or an equivalent) with the judicial
exception, or merely include instructions to implement an
abstract idea on a computer, or merely uses a computer as a tool
to perform an abstract idea — see MPEP § 2106.05(f);
2. Adding insignificant extra-solution activity to the judicial
exception — see MPEP § 2106.05(g); and
3. Generally linking the use of the judicial exception to a
particular technological environment or field of use — see
MPEP § 2106.05(h).
See Guidance, 84 Fed. Reg. at 54–55 (“Prong 2”).
As shown above, most of the claim limitations in claim 1 recite
abstract ideas. Additional to those abstract limitations, claim 1 recites that
various steps are performed “by a computer.” Appeal Br. 17 (Claims
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Appendix). It is well-settled that mere recitation of a non-specific and
generic computer is insufficient to integrate the recited judicial exception
into a practical application. See MPEP 2106.05(f) (explaining that it is not
indicative of integration into a practical application where the claims
“merely include instructions to implement an abstract idea on a computer, or
merely uses a computer as a tool to perform an abstract idea”).
Claim 1 additionally recites (a) “a tuple profile data structure,” and (b)
“electronically transmitting by a computer a graphical user interface
comprising user-operable elements representing the predicted movement and
the entity-specific risk profile in substantially real-time upon receipt of the
first set of content, wherein the plurality of risk types that comprise the tuple
profile data structure are represented as graphical user interface elements
within the graphical user interface.”
These limitations do not integrate the abstract idea into a practical
application because we do not discern in these limitations any improvements
to the functioning of a computer, or to any other technology or technical
field. MPEP § 2106.05(a). Limitation (a), which recites that the abstract
information is stored in a “tuple profile data structure,” merely confines the
judicial exception to a specific environment and field of use. That is, the
limitation specifies how information is stored, but it does so in the context of
implementing the abstract process, and provides no specific detail about the
data structure, other than it is a “tuple profile data structure.” Appellant’s
Specification references the recited “tuple” only in a single paragraph, and
describes those tuples as data sets of related data—not meaningfully
different from relational data stored in a conventional relational database.
See Spec. ¶ 96. Generally linking the use of the judicial exception to a
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particular technological environment or field of use, however, is not
indicative of integration into a practical application. MPEP § 2106.05(h).
Limitation (b), which generally recites that information is outputted on a
graphical user interface, also does not integrate the abstract idea into a
practical application because it can be reasonably characterized as extra-
solution activity. MPEP § 2106.05(f) (identifying “[s]electing a particular
data source or data type” and outputting data as examples of extra-solution
activities). The claim does not recite any improvement to how a graphical
user interface operates, and instead merely recites that the data generated in
carrying forward the abstract idea is outputted for display.
Appellant argues that “claim 1 [ ] solves the technical problem of
providing a visual representation of risks associated with an entity and stored
in an entity risk profile tuple data structure,” (Appeal Br. 8) and asserts the
claim compares favorably to Example 42 of the 2019 Guidance. Appeal Br.
10–11. We disagree. Example 427 describes a scenario in which a claim
integrates a judicial exception into a practical application because “the
additional elements recite a specific improvement . . . by allowing remote
users to share information in real time in a standardized format regardless of
the format in which the information was input.” Thus, the integration of the
judicial exception in Example 42 was based on a technical improvement to
how information could be standardized when input in a non-standardized
way. The claims here provide no similar improvement to how data is stored,

7 We note the Guidance states that “[t]he examples below are hypothetical
and only intended to be illustrative of the claim analysis under the 2019
PEG.”
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converted, or otherwise. Rather, the process recited in claim 1 merely
invokes a computer as a tool for carrying out the process of determining risk.
In sum, whether viewed individually or as an ordered combination,
the additional elements recited in claim 1 are not an improvement to
technology. The recited process, at best, affects an improvement to the
abstract idea itself. It is well-established, however, that improvements in the
abstract idea are insufficient to confer eligibility on an otherwise ineligible
claim. SAP Am. Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018). We conclude claim 1 is directed to a judicial exception under step
2A, prong 2, of the Guidance.
The Inventive Concept – Step 2B
Having determined the claim is directed to a judicial exception, we
proceed to evaluating whether claim 1 adds a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field (see MPEP § 2106.05(d)) or simply appends well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality, to the judicial exception. See Guidance, 84 Fed. Reg.
at 56.
Our review of the Examiner’s rejection under Step 2B is guided by the
Berkheimer Memorandum, which sets forth what fact finding requirements
are applicable to rejections under § 101. Consistent with the Berkheimer
Memorandum, we agree with the Examiner that claim 1 does not add
specific limitations beyond what is well-understood, routine, and
conventional.
Our analysis focuses largely on the same limitations addressed in
Step 2A, prong 2, above. The Examiner finds that the additional limitations
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are generic computer components and the remaining limitations are recited a
high level of generality. Ans. 5–6 (citing MPEP § 2106.05(d) and Spec. ¶¶
59, 133). Moreover, consistent with the Berkheimer Memorandum, the
Examiner cited MPEP § 2106.05(d) and portions of Appellant’s
Specification (¶¶ 39, 59, 133; Figs. 23–26) as evidence of the well-
understood, routine, and conventional nature of the additional limitations.
See Ans. 5–6. Appellant does not explain why the Examiner’s evidence of
the well-understood nature of the additional limitations is insufficient.
Because the Examiner correctly concluded claim 1 is directed to a
judicial exception, and because Appellant does not identify any error in the
Examiner’s determination under step 2B of the Guidance, we sustain the
rejection of representative claim 1 under 35 U.S.C. § 101, as well as of the
remaining claims.

CONCLUSION
We affirm the rejection under 35 U.S.C. § 101.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–30 101 Eligibility 1–30

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