Kovarsky, Moshe et al.

Patent Trials and Appeals Board

Feb 26, 2020

13603444 - (D) (P.T.A.B. Feb. 26, 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.
13/603,444 09/05/2012 Moshe Kovarsky 54545 3184
67801 7590 02/26/2020
MARTIN D. MOYNIHAN d/b/a PRTSI, INC.
P.O. BOX 16446
ARLINGTON, VA 22215
EXAMINER
POLLOCK, GREGORY A
ART UNIT PAPER NUMBER
3695
NOTIFICATION DATE DELIVERY MODE
02/26/2020 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):
usptomail@ipatent.co.il
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MOSHE KOVARSKY and AYAL BAHARY
____________

Appeal 2019-004209
Application 13/603,444
Technology Center 3600
____________

Before DONALD E. ADAMS, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from Examiner’s
decision to reject claims 1–19, 21–23, and 25–28.2 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 “AlphaVee
Solutions Ltd.” (Appellant’s February 15, 2018 Appeal Brief (Appeal Br.)
2).
2 See Appeal Br. 3.
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STATEMENT OF THE CASE
Appellant’s disclosure “relates to financial data and, more
particularly, but not exclusively, to methods and systems of historical and
current financial data analysis” (Spec.3 1). Appellant’s claim 1 is
reproduced below:
1. A computer-implemented method of performing testing
simulation based on a correlation marked using an interactive
display which is presented by a client terminal, the method
comprises:
presenting an interactive display on a client terminal by:
receiving said data,
automatically calculating, for each member
of a first group of a plurality of publically traded
financial instruments, a current growth grade
according to combination of a plurality of growth
factor scores extracted from said data and a current
value grade according to a combination of a
plurality of value factor scores extracted from said
data,
automatically generating said interactive
display with a multidimensional graphic
presentation depicting the distribution of a
plurality of members of said first group according
to their growth and value factor scores, and
forwarding instructions to display said
interactive display with said multidimensional
graphic presentation as part of an interactive user
interface executed on said client terminal,
instructions for automatically identifying a marking of
one or more sub-areas on said multidimensional graphic
presentation of said interactive display;

3 Appellant’s September 5, 2012 Specification.
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instructions for automatically calculating a correlation
between a sub-range of value grades from a value axis, and a
sub-range of growth grades from a growth axis, said correlation
being selected according to said one or more sub-areas , said
one or more sub-areas containing a sub-group of said members
of said first group;
instructions for automatically selecting a second group of
said publically traded financial instruments according to
historical financial data so that each member thereof having
growth and value grades which correspond with said value and
growth grade sub-ranges in a past period;
instructions for automatically performing at least one
back testing simulation to members of said second group
according to financial data from said past period; and
instructions for automatically presenting the outcome of
said at least one testing simulation on said interactive display.
(Appeal Br. 24–25.)

Ground of rejection before this Panel for review:
Claims 1–19, 21–23, and 25–28 stand rejected under 35 U.S.C. § 101.

ISSUE
Does the preponderance of evidence of record support Examiner’s
finding that Appellant’s claimed invention is directed to patent ineligible
subject matter?
PRINCIPLES OF LAW
An invention is patent-eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101. The
Supreme Court, however, has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “‘[l]aws of nature, natural phenomena, and abstract
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ideas’” are not patentable. See, e.g., 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 Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). 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, 69 (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 (1853))); and manufacturing flour (Gottschalk, 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
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
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mathematical formula.” Diehr, 450 U.S. at 176; 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 Supreme Court 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. (citing Gottschalk and Parker); see, 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 (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. (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.
Early in 2019, the PTO published revised guidance on the application
of § 101. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance,
84 Fed. Reg. 50 (January 7, 2019) (“Guidance”).4 In light of comments

4 Available at https://www.govinfo.gov/content/pkg/FR-2019-01-
07/pdf/2018-28282.pdf.
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received in response to the Office Guidance, the PTO subsequently issued
the October 2019 Patent Eligibility Guidance Update (“Update”).5
Following the Guidance and October 2019 Update, under Revised
Step 2A, 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 activity 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)).
See Guidance, 84 Fed. Reg. at 54–55. Only if a claim (1) recites a judicial
exception and (2) does not integrate that exception into a practical
application, do we then look, under Step 2B of the Office Guidance, to
whether the claim:
(3) adds specific limitations beyond the judicial exception that
are 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 51.
ANALYSIS
Applying the Revised Guidance and Update to the facts on this record,
we find that Appellant’s representative claim 1 is directed to patent-
ineligible subject matter.

5 https://www.uspto.gov/sites/default/files/documents/peg_oct_2019_
update.pdf.
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Step One: Does Claim 1 fall within a Statutory Category of § 101?
Appellant’s claim 1 recites a method and, therefore, falls within the
statutory categories of 35 U.S.C. § 101.

Step 2A, Prong One: Does Claim 1 Recite a Judicial Exception?
The Revised Guidance identifies three judicially-excepted groupings
identified by the courts as abstract ideas: (1) mathematical concepts, (2)
certain methods of organizing human behavior such as fundamental
economic practices, and (3) mental processes. On this record, we agree with
Examiner’s finding that Appellant’s claim 1 recites fundamental economic
practices and mental processes and, thus, recites an abstract idea (see Final
Act.6 5–6). In this regard, we note that Appellant discloses that
“[i]mplementation of the method and/or system of embodiments of the
invention can involve performing or completing selected tasks manually,
automatically, or a combination thereof” (see Spec. 6).
Appellant’s claimed method comprises the step of receiving data (see
Appeal. Br. 24). The collection, i.e. receipt, of data represents a mental
process. In addition, we find that the collection of data as a predicate step to
performing additional steps represents insignificant extra-solution activity.
See, e.g., In re Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub
nom, Bilski v. Kappos, 561 U.S. 593 (2010); see also CyberSource v. Retail
Decisions, 654 F.3d 1366, 1375 (Fed. Cir. 2011) (data-gathering “step[s]
cannot make an otherwise nonstatutory claim statutory.”) (citation omitted)).

6 Examiner’s June 30, 2017 Final Office Action.
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Appellant discloses that the “[i]mplementation of the method and/or
system of embodiments of the invention can involve performing or
completing selected tasks manually” (Spec. 6). Thus, we find that
Appellant’s collection, manipulation, and display of data involves
insignificant extra-solution activity and mental processes. See, e.g.,
Intellectual Ventures I LLC v. Capital One Financial Corp., 850 F.3d 1332,
1340 (Fed. Cir. 2017) (finding that “an invention directed to collection,
manipulation, and display of data was an abstract process”). Therefore, we
agree with Examiner’s finding that the steps of manipulating and displaying
data, on this record, are abstract ideas (see Final Act. 5–6).
The method of Appellant’s claim 1 also requires instructions for
automatically:
identifying a marking of one or more sub-areas on said
multidimensional graphic presentation of said interactive
display;
calculating a correlation between a sub-range of value
grades from a value axis, and a sub-range of growth grades
from a growth axis, said correlation being selected according to
said one or more sub-areas , said one or more sub-areas
containing a sub-group of said members of said first group;
selecting a second group of said publically traded
financial instruments according to historical financial data so
that each member thereof having growth and value grades
which correspond with said value and growth grade sub-ranges
in a past period;
performing at least one back testing simulation to
members of said second group according to financial data from
said past period; and
presenting the outcome of said at least one testing
simulation on said interactive display.
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(Appeal. Br. 25–26.) However, as discussed above, the steps of collecting,
manipulating, and display of data on this record involves insignificant extra-
solution activity and mental steps.
In addition, the steps of Appellant’s claimed method involve
publically traded financial instruments, i.e. fundamental economic practices.
Methods of organizing human activity, such as fundamental economic
practices, are abstract ideas. See Alice, 573 U.S. at 219–20; Bilski, 561 U.S.
at 611. Therefore, we agree with Examiner that Appellant’s claim 1 recites a
“fundamental economic practice” (Final Act. 6).
For the foregoing reasons, we find that Appellant’s claimed method
recites fundamental economic practices and mental processes and, thus, a
recites a judicial exception (see Final Act. 5–6).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that Examiner failed to establish that Appellant’s claimed
invention is directed to an abstract idea (Appeal Br. 13).

Step 2A, Prong Two: Is There Integration into a Practical Application?
As Examiner explains, Appellant’s Specification and claim “does not
describe any improvement to the existing technology or computer itself” and
“[t]here is no indication that the combination of elements improve the
functioning of a computer or improves any other technology” (Final Act. 7).
We agree.
On this record, Appellant’s Specification discloses a method wherein
“historical financial data of a plurality of publically traded financial
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instruments[7] [is used] to perform back testing simulation based on user
selected growth and value grade ranges” (Spec. 9: 24–27). “According to
some embodiments of . . . [Appellant’s] invention, a multidimensional
graphical presentation of the publically traded stocks, which are optionally
filtered, allows the user to mark the correlation in a graphical manner based
on the presented data,” wherein “[f]or example, the multidimensional
graphical presentation is a two dimensional (2D) grid, where each stock is
presented by a graphical indicator, such as [a] dot,” which
are mapped according to their value and growth grades. Stocks
with high grades are depicted as dots at the top-right corner of
the grid and stocks with low grades are depicted as dots at
lower-left corner. Stocks with high growth grades are at the top
rows of the grid and stocks with high value grades are at the
right column(s). This multidimensional graphical presentation
allows mapping a full universe of publically traded stocks onto
a 2D grid in a format that enables the user to quickly identify
stocks representing the balance of growth grade and value grade
that the user is interested in.
(Spec. 14: 11–30.) Appellant further discloses that a “user may graphically
mark the correlation between value and growth grade ranges, for example by
selecting one or more areas of interest on the multidimensional graphical
presentation” (Spec. 15: 17–19; see generally Appeal Br. 18–20). Thus,
Appellant contends that its “‘interactive display’ . . . provide[s] a specific
solution to solve problems of prior graphical user interface (GUI) based
devices in the context of computerized trading relating to speed, accuracy
and usability” (Appeal Br. 14; see also id. at 14–17). We are not persuaded.

7 Appellant defines the term “publically traded financial instruments” as
“stocks, bonds, market currencies, derivatives, commodities and/or any other
publically element which is merchandisable in one or more financial
marketplaces” (Spec. 9: 27–30).
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Here, as in Trading Techs., Appellant’s “invention makes the trader faster
and more efficient, not the computer. This is not a technical solution to a
technical problem,” but is instead the practice of the fundamental economic
practice. Trading Technologies International, Inc. v. IBG LLC, 921 F.3d
1084, 1090 (Fed. Cir. 2019); see id. at 1089 (Trading Techs. argued that its
“inventions addressed technical problems in the way prior art GUI tools
were constructed and operated,” addressing problems related to speed,
efficiency, usability, intuitiveness, visualization, and efficiency, which the
court found “relate to the practice of a financial product, not a technological
invention”).
For the foregoing reasons, we are not persuaded by Appellant’s
contention that its “claims clearly add functionality to a computer that was
previously not available and therefore are not directed to an abstract idea”
(Appeal Br. 18). For the same reasons, we are not persuaded by Appellant’s
contention that its claimed invention is analogous to that in Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) (see Appeal Br. 18). In
contrast to Appellant’s claimed invention the claims in Enfish were directed
to a self-referential table (“means for configuring” algorithm) that functions
differently than conventional database structures. Id. at 1337. This
technological improvement provided increased flexibility, faster search
times, and smaller memory requirements. Id. In contrast, as discussed
above, Appellant’s alleged improvement is not to computer technology
implementing the trading method, but rather to the manner in which data
associated with a fundamental economic practice is displayed, i.e., using a
computer to perform conventional computer functions of receiving,
processing, and displaying data.
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We are not persuaded by Appellant’s contentions regarding McRO
(see Appeal Br. 20). In contrast to Appellant’s claimed improvement to a
fundamental economic practice, in McRO, the claims focused on a specific
improvement in computer animation. The claimed process in McRO used a
combined order of specific rules that renders information into a specific
format used and applied to create a desired result-a sequence of
synchronized, animated characters. McRO, 873 F .3d at 1314-15. The
claims in McRO recited a process of automated lip-synchronization of 3-D
characters that resulted from a specific order of rules as a relationship
between sub-sequences of phonemes, timing, and weight of visual
expression at a particular timing by a morph weight set. Id. at 1315. The
rules in McRO improved the synchronization of 3-D characters on
computers. In contrast, as discussed above, although Appellant’s claim 1
may provide an improvement in a fundamental economic practice, unlike
McRO, Appellants’ alleged improvement is not to computer technology
implementing the trading method using rules, but rather to the trading
method itself. In other words, Appellant’s alleged improvement is to the
manner in which the trade is effected, i.e., using a computer to perform
conventional computer functions (the so-called “rules”) of receiving,
processing, and displaying data. See SAP, 898 F.3d at 1163 (“No matter
how much of an advance in the finance field the claims recite, the advance
lies entirely in the realm of abstract ideas, with no plausibly alleged
innovation in the non-abstract application realm. An advance of that nature
is ineligible for patenting.”).
The fact that Appellant’s claims may recite rules that are abstract
ideas does not provide an inventive step or integrate those abstract ideas into
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a patent-eligible application. See Synopsys, Inc. v. Mentor Graphics Corp.,
839 F.3d 1138, 1151 (Fed. Cir. 2016) (“a claim for a new abstract idea is still
an abstract idea.”); Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306,
1335 (Fed. Cir. 2015) (affirming unpatentability of claims that improved an
abstract idea, but not a computer’s performance).
We are not persuaded by Appellant’s contentions regarding DDR
Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014)
(see Appeal Br. 22). The claims in DDR Holdings addressed a problem
unique to the Internet in a manner that was “not merely the routine or
conventional use of the Internet.” Id. at 1259. In particular, rather than the
expected behavior of simply sending the website visitor to a third-party
website, the claimed invention behaved in a manner different than expected
by sending a website visitor to a hybrid web page presenting information
from a third-party with the look and feel of the host website. Id. at 1258–59.
In contrast, on this record, Appellant have not identified any unconventional
behavior by the recited computer limitations in its claim 1. Similarly, we are
not persuaded by Appellant’s contentions regarding Trading Technologies,
Inc. v. CQG, Inc., 675 Fed. Appx. 1001 (2017) (unpublished) (see Appeal
Br. 22). In contrast to Appellant’s claim 1, the claims at issue in CQG
“require[d] a specific, structured graphical user interface paired with a
prescribed functionality directly related to the graphical user interface’s
structure that is addressed to and resolves a specifically identified problem in
the prior state of the art.” See CQG, 675 Fed. Appx. at 1004. Thus, unlike
Appellant’s claim 1 on this record, the court in CQG agreed with the District
Court’s finding “that these patents are directed to improvements in existing
graphical user interface devices that have no ‘pre-electronic trading analog,’
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and recite more than ‘setting, displaying, and selecting’ data or information
that is visible on the [graphical user interface] device” (id. (alteration
original)).
Thus, we agree with Examiner’s finding that Appellant’s claimed
invention fails to integrate the abstract idea into a practical application (see,
e.g., Final Act. 7).

Step 2B: Does Claim 1 Recite Well-Understood, Routine, Conventional
Activity?
Receiving market information is simply routine data gathering, the
display of data on a two dimensional grid, and the selection and movement
of an icon to identify areas or sub-areas on a display are all well-known,
routine, conventional activities. See Trading Techs., 921 F.3d at 1093 (Our
reviewing Court agree with the Board’s finding that “receiving market
information is simply routine data gathering, and displaying information as
indicators along a scaled price axis is well-understood, routine, conventional
activity that does not add something significantly more to the abstract idea”
and “selecting and moving an icon is well-understood, routine, conventional
activity”).
In addition, we recognize that Appellant discloses:
Implementation of the method and/or system of
embodiments of the invention can involve performing or
completing selected tasks manually, automatically, or a
combination thereof. Moreover, according to actual
instrumentation and equipment of embodiments of the method
and/or system of the invention, several selected tasks could be
implemented by hardware, by software or by firmware or by a
combination thereof using an operating system.
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For example, hardware for performing selected tasks
according to embodiments of the invention could be
implemented as a chip or a circuit. As software, selected tasks
according to embodiments of the invention could be
implemented as a plurality of software instructions being
executed by a computer using any suitable operating system. In
an exemplary embodiment of the invention, one or more tasks
according to exemplary embodiments of method and/or system
as described herein are performed by a data processor, such as a
computing platform for executing a plurality of instructions.
Optionally, the data processor includes a volatile memory for
storing instructions and/or data and/or a non-volatile storage,
for example, a magnetic hard-disk and/or removable media, for
storing instructions and/or data. Optionally, a network
connection is provided as well. A display and/or a user input
device such as a keyboard or mouse are optionally provided as
well.
(Spec. 6.)
Therefore, we agree with Examiner’s finding that, to the extent that
the steps of Appellant’s claimed method are performed non-manually, the
steps are implemented through the use of a generic computer system (see
Final Act. 7). See Alice, 573 U.S. at 223 (“[M]ere recitation of a generic
computer cannot transform a patent-ineligible abstract idea into a patent-
eligible invention. Stating an abstract idea while adding the words ‘apply it’
is not enough for patent eligibility.” (citation and internal quotation
omitted)); Accenture Global Servs., GmbH v. Guidewire Software, Inc., 728
F.3d 1336, 1345 (Fed. Cir. 2013) (“Accenture attempts to limit the abstract
idea of claim 1 by applying it in a computer environment and within the
insurance industry. However, those types of limitations do not ‘narrow,
confine, or otherwise tie down the claim.’ . . . [S]imply implementing an
abstract concept on a computer, without meaningful limitations to that
concept, does not transform a patent-ineligible claim into a patent-eligible
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one.” (citation omitted)); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d
1359, 1363 (Fed. Cir. 2015) (“At best, the claims describe the automation of
the fundamental economic concept of offer-based price optimization
through . . . generic computer functions.”).
In addition, we note that steps that recite basic data collection and
analysis, even when limited to particular content (i.e., publically traded
financial instruments), without more, are insufficient to integrate abstract
ideas recited in claim 1 into a practical application. See buySAFE, Inc. v.
Google, Inc., 765 F.3d 1350, 1354–55 (Fed. Cir. 2014) (determining claims
to creating a contractual relationship with a “transaction performance
guaranty” recite a long-familiar commercial transaction that is an abstract
idea and reciting generic computer functions of receiving and sending
information over a network was insufficient to make the abstract idea patent
eligible); Trading Techs., 921 F.3d at 1092–93 (holding that claims to
placing an order on displayed market information, even with some
particularity, is a fundamental economic practice and that collecting,
organizing, and displaying two sets of information on a generic display
device does not make the claims patent eligible).
Thus, we find no error in Examiner’s finding that “the additional
limitations of a computer with a processor and a tangible, non-transitory
memory” are “generic computer components . . . claimed to perform their
basic functions of storing, retrieving, processing, and displaying that are
well-understood, routine, and conventional activities which amount to no
more than implementing the abstract idea with a computerized programmed
system” (Final Act. 7). See, e.g., Credit Acceptance Corp. v. Westlake
Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (Mere automation of manual
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processes, such as using a generic computer to process an application for
financing a purchase); LendingTree, LLC v. Zillow, Inc., 656 Fed. App’x
991, 996–97 (Fed. Cir. 2016) (non-precedential) (speeding up a loan-
application process by enabling borrowers to avoid physically going to or
calling each lender and filling out a loan application); see also MPEP §§
2106.05(a)(I) (providing examples that the courts have indicated may not be
sufficient to show an improvement in computer-functionality) and
2106.05(d)(II) (providing examples that the courts have recognized as well-
understood, routine, conventional activity in particular fields).
Moreover, claim limitations describing the excluded subject matter
cannot satisfy the second step of the Alice analysis. See SAP, 898 F.3d at
1163 (“No matter how much of an advance in the finance field the claims
recite, the advance lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm. An
advance of that nature is ineligible for patenting.”); Mayo, 566 U.S. at 72–73
(requiring “a process that focuses upon the use of a natural law also contain
other elements or a combination of elements, sometimes referred to as an
‘inventive concept,’ sufficient to ensure that the patent in practice amounts
to significantly more than a patent upon the natural law itself” (emphasis
added)); BSG Tech. LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir.
2018) (“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.”);
Berkheimer v. HP Inc., 890 F.3d 1369, 1374 (Fed. Cir. 2018) (Moore, J.,
concurring) (“[A]nd Berkheimer . . . leave[s] untouched the numerous cases
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from [the Federal Circuit] which have held claims ineligible because the
only alleged ‘inventive concept’ is the abstract idea.”).
To be complete, we are not persuaded by Appellant’s contentions
regarding preemption (Appeal. Br. 15–17). See Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (Although
“preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility.”). Nor are we
persuaded by Appellant’s contentions regarding “novelty or non-
obviousness” (see Appeal Br. 21). See Mayo, 566 U.S. at 90 (although the
§ 101 patent-eligibility inquiry and prior art inquiries might sometimes
overlap, “to shift the patent-eligibility inquiry entirely to these later sections
risks creating significantly greater legal uncertainty, while assuming that
those sections can do work that they are not equipped to do.”); see also
Diehr, 450 U.S. at 188–89 (“[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.”).
CONCLUSION
The preponderance of evidence of record supports Examiner’s finding
that Appellant’s claimed invention is directed to patent ineligible subject
matter. The rejection of claim 1 under 35 U.S.C. § 101 is affirmed. Claims
2–19, 21–23, and 25–28 are not separately argued and fall with claim 1.

Appeal 2019-004209
Application 13/603,444

19
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/B
asis
Affirmed Reversed
1–19, 21–23,
25–28
101 Eligibility 1–19,
21–23,
25–28

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).

AFFIRMED