MasterCard International Incorporated

Patent Trials and Appeals Board

Mar 27, 2020

14541390 - (D) (P.T.A.B. Mar. 27, 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.
14/541,390 11/14/2014 Debashis Ghosh 21652-00367 5070
75564 7590 03/27/2020
DANIEL M. FITZGERALD (21652)
ARMSTRONG TEASDALE LLP
7700 Forsyth Boulevard
Suite 1800
St. Louis, MO 63105
EXAMINER
KWONG, CHO YIU
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
03/27/2020 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):
USpatents@armstrongteasdale.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte DEBASHIS GHOSH
and
RANDY SHUKEN
____________________

Appeal 2019-005132
Application 14/541,3901
Technology Center 3600
____________________

BEFORE JOSEPH L. DIXON, DAVID M. KOHUT, and
JON M. JURGOVAN, Administrative Patent Judges.

JURGOVAN, Administrative Patent Judge.

DECISION ON APPEAL

Appellant seeks review under 35 U.S.C. § 134(a) from a Final
Rejection of claims 1 and 3–20. Claim 2 has been cancelled. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm.2

1 We use the word “Appellant” to refer to “applicant(s)” as defined in
37 C.F.R. § 1.42. The real party in interest is MasterCard International
Incorporated. (Appeal Br. 1.)
2 Our Decision refers to the Specification (“Spec.”) filed November 14,
2014, the Final Office Action (“Final Act.”) mailed August 11, 2017, the
Appeal Brief (“Appeal Br.”) filed March 28, 2018, the Supplemental Appeal
Brief (“Supp. Appeal Br.”) filed May 16, 2018, the Examiner’s Answer
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CLAIMED INVENTION
The claims are directed to a computer implemented method and
system “for determining an asset divestiture of a financial institution based
on asset data” and “improv[ing] the net operating income of the identified
financial institution.” (Spec. ¶ 25; Abstract.) In particular, Appellant’s
invention “determines a net operating income based at least in part on []
stored payment transaction data [associated with at least one asset of a
plurality of assets of the financial institution], and determines candidate
divestiture” based on “the determined net operating income associated with
the at least one asset.” (Spec. ¶ 63.)
Claims 1, 10, and 19 are independent claims. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A network-based computer system for determining
an asset divestiture of a financial institution based on asset data,
said system in communication with an electronic payment card
network separate from the financial institution and comprising at
least one processor in communication with at least one memory,
said at least one processor configured to
receive, from a computing device of the financial
institution, a divestiture request message including a financial
institution identifier identifying the financial institution;
receive asset data for the identified financial institution,
the asset data including data associated with a plurality of assets
of the identified financial institution, wherein each asset has an
asset value and a risk weight representing a potential change in
the asset value over time;
retrieve, from the electronic payment card network, stored
payment transaction data associated with at least one asset of the
plurality of assets;

(“Ans.”) mailed April 18, 2019, and the Reply Brief (“Reply Br.”) filed June
18, 2019.
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determine a net operating income of the at least one asset
based at least in part on the stored payment transaction data;
determine a candidate divestiture for the identified
financial institution at least in part based on the asset value and
the risk weight for each asset of the plurality of assets and on the
determined net operating income associated with the at least one
asset; and
transmit a divestiture report to the computing device of the
identified financial institution, wherein the divestiture report
includes the candidate divestiture for the identified financial
institution.

(Supp. Appeal Br. 2–9 (Claims App.).)3

REJECTION4
Claims 1 and 3–20 stand rejected under 35 U.S.C. § 101 as directed to
non-statutory subject matter. (Final Act. 2–4.)

ANALYSIS
Patent eligibility is a question of law that is reviewable de novo.
Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012).
Accordingly, we review the Examiner’s § 101 determinations concerning
patent eligibility under this standard.
Patentable subject matter is defined by 35 U.S.C. § 101, as follows:
[w]hoever invents or discovers any new and useful process,
machine, manufacture, or composition of matter, or any new and

3 Appellant’s Supplemental Appeal Brief does not have numbered pages.
We count the pages starting from the first page.
4 Claims 1 and 3–20 were rejected under 35 U.S.C. § 112(a), as failing to
comply with the written description requirement. (Final Act. 4–7.)
However, this rejection was withdrawn in the Examiner’s Answer and is no
longer pending on appeal. (Ans. 4.)
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useful improvement thereof, may obtain a patent therefor, subject
to the conditions and requirements of this title.
In interpreting this statute, the Supreme Court emphasizes that patent
protection should not preempt “the basic tools of scientific and technological
work.” Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Benson”); Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71 (2012)
(“Mayo”); Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 217–18 (2014)
(“Alice”). The rationale is that patents directed to basic building blocks of
technology would not “promote the progress of science” under the U.S.
Constitution, Article I, Section 8, Clause 8, but instead would impede it.
Accordingly, laws of nature, natural phenomena, and abstract ideas, are not
patent-eligible subject matter. Thales Visionix Inc. v. United States, 850
F.3d 1343, 1346 (Fed. Cir. 2017) (citing Alice, 573 U.S. at 216–17).
The Supreme Court set forth a two-part test for subject matter
eligibility in Alice (573 U.S. at 217–19). The first step is to determine
whether the claim is directed to a patent-ineligible concept. Id. (citing
Mayo, 566 U.S. at 76–77). If so, then the eligibility analysis proceeds to the
second step of the Alice/Mayo test in which we “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 (quoting Mayo, 566 U.S. at 72, 79). There is no need
to proceed to the second step, however, if the first step of the Alice/Mayo
test yields a determination that the claim is directed to patent eligible subject
matter.
The Patent Office has recently revised its guidance for how to apply
the Alice/Mayo test in the 2019 Revised Patent Subject Matter Eligibility
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Guidance, 84 Fed. Reg. 50–57 (January 7, 2019) (“the Revised Guidance”).
Under the Revised Guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of
abstract ideas (i.e., mathematical concepts, mental processes, or
certain methods of organizing human activity such as a
fundamental economic practice or managing personal behavior
or relationships or interactions between people); and
(2) additional elements that integrate the judicial exception into
a practical application (see Manual of Patent Examining
Procedure (“MPEP”) § 2106.05(a)–(c), (e)–(h)). 84 Fed. Reg. at
51–52, 55.
A claim that integrates a judicial exception into a practical application
applies, relies on, or uses 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. When the judicial exception is so integrated, then the claim is not
directed to a judicial exception and is patent-eligible under § 101. 84 Fed.
Reg. at 54. Only if a claim (1) recites a judicial exception and (2) does not
integrate that exception into a practical application, do we then evaluate
whether the claim provides an inventive concept. 84 Fed. Reg. at 56; Alice,
573 U.S. at 217–19, 221. Evaluation of the inventive concept involves
consideration of whether an additional element or combination of elements
(1) adds a specific limitation or combination of limitations that are not well-
understood, routine, conventional activity in the field, which is indicative
that an inventive concept may be present; or (2) simply appends well-
understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception,
which is indicative that an inventive concept may not be present.
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Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance

Step 2A—Prong 1 (Does the Claim Recite a Judicial Exception?)
Turning to the first step of the Alice inquiry (Step 2A, Prong 1 of the
Revised Guidance), the Examiner finds independent claims 1, 10, and 19
“are directed to determining [a] candidate asset to be divested based on
collected asset data” which is “a fundamental economic practice and an idea
of itself similar to the concepts that have been identified as abstract by the
courts, such as risk hedging in Bilski and comparing new and stored
information and using rules to identify options in Smartgene.” (Final Act. 3;
Ans. 5–7.)
The Examiner also finds claims 1, 10, and 19 do not include
additional elements that are sufficient to amount to “significantly more” than
the judicial exception because the claims “do not include an improvement to
another technology or technical field, an improvement to the functioning of
the computer itself, or meaningful limitations beyond generally linking the
use of an abstract idea to a particular technological environment.” (Final
Act. 3; Ans. 6–7.)
Appellant argues independent claims 1, 10, and 19 together,
presenting arguments directed to independent claim 1. (Appeal Br. 8, 10–
12, 15; Reply Br. 2–6.) As a result, we select independent claim 1 as the
representative claim for the group and address Appellant’s arguments
thereto. See 37 C.F.R. § 41.37(c)(1)(iv) (2017).
Appellant contends the Examiner erred in rejecting the claims under
35 U.S.C. § 101 as directed to non-statutory subject matter because the
claims are not directed to an abstract idea. (Appeal Br. 8–12; Reply Br. 2–
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4.) Particularly, Appellant contends “the Examiner’s Answer utterly fails to
identify any abstract idea recited in Appellant’s claims” and “[c]laim 1 does
not recite any method of organizing human activity, a mathematical
relationship, formula, or calculation.” (Reply Br. 2–3.) Appellant argues
“[c]laim 1 actually recites at least one processor” configured to perform the
determining and transmitting steps with “significant detail about how the
computer is caused to perform the determining function” and “significant
detail about how other functions of the computing device relate to generating
and transmitting a divesture report.” (Id.)
Appellant’s arguments are not persuasive. Here, representative
claim 1 recites a processor performing a method that results in determining
an asset divestiture of a financial institution based on asset data. (See Spec.
¶ 4; Title.) More specifically, representative claim 1 recites a “computer
system for determining an asset divestiture of a financial institution based on
asset data, said system in communication with an electronic payment card
network separate from the financial institution and comprising at least one
processor” that is configured to perform the following steps: (1) “receive . . .
[from the] financial institution, a divestiture request message including a
financial institution identifier identifying the financial institution,” “receive
asset data for the identified financial institution, the asset data including data
associated with a plurality of assets of the identified financial institution,
wherein each asset has an asset value and a risk weight representing a
potential change in the asset value over time,” and “retrieve . . . stored
payment transaction data associated with at least one asset of the plurality of
assets”; (2) “determine a net operating income of the at least one asset based
at least in part on the stored payment transaction data” and “determine a
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candidate divestiture for the identified financial institution at least in part
based on the asset value and the risk weight for each asset of the plurality of
assets and on the determined net operating income associated with the at
least one asset”; and (3) “transmit a divestiture report to . . . the identified
financial institution, wherein the divestiture report includes the candidate
divestiture for the identified financial institution.” (Supp. Appeal Br. 2–3
(Claims App.).) These limitations, under their broadest reasonable
interpretation, recite determining candidate assets to be divested based on
characteristics of the assets, thereby describing operations that would
ordinarily take place when banks and other financial institutions monitor and
control their assets and holdings to satisfy capital requirements and risk
mitigation rules imposed under bank regulation frameworks.
For example, the steps in limitation (1) in claim 1 describe identifying
a financial institution and collecting data pertaining to the identified
financial institution’s assets, which is an activity ordinarily performed by
banks and other financial institutions, or by entities on behalf of financial
institutions, for studying asset risk and preparing divestiture reports for such
institutions. (See Spec. ¶¶ 2–4, 21 (describing “a financial institution (e.g., a
bank, a credit union, an insurance company, or other financial institution)”).)
The steps in limitation (2) in claim 1 describe studying characteristics of
assets to determine the assets’ risk and assets’ performance or return, and to
identify performing and non-performing assets—an activity ordinarily
performed by financial institutions or by entities on behalf of financial
institutions, when studying the financial institutions’ risk exposure and
determining assets that may have adverse effects on the safety and
soundness of a financial institution/bank. Limitation (3) in claim 1 describes
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providing a divestiture report for a financial institution—an activity
ordinarily performed by financial institutions or by entities on behalf of
financial institutions when determining assets for divestiture in order to
ensure that a financial institution does not take on excess leverage, passes
regulatory stress tests (e.g., bank stress tests), and does not risk becoming
insolvent and losing depositors’ funds.
As correctly recognized by the Examiner, limitations (1)–(3) in claim
1, under their broadest reasonable interpretation, recite analyzing asset
characteristics and determining candidate assets to be divested by a financial
institution, which is a known business activity and a “fundamental economic
practice” in our system of commerce, “similar to . . . concepts that have been
identified as abstract by the courts, such as risk hedging in Bilski and
comparing new and stored information and using rules to identify options in
Smartgene.” (Final Act. 3 (citing Bilski v. Kappos, 561 U.S. 593 (2010);
SmartGene, Inc. v. Advanced Biological Labs., SA, 852 F.Supp.2d 42
(D.D.C. 2012), aff’d 555 F.App’x 950 (Fed. Cir. 2014)); Ans. 6 (citing
Alice, 573 U.S. at 208) Analyzing asset characteristics and determining
candidate assets to be divested by financial institutions in order to protect
depositors and ensure that financial institutions do not take on excess risks,
are activities squarely within the realm of abstract ideas, like: (1) the risk
hedging in Bilski, 561 U.S. at 599, 611–12; (2) the intermediated settlement
in Alice, 573 U.S. at 220; (3) verifying credit card transactions in
CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir.
2011); (4) guaranteeing transactions as in buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1354 (Fed. Cir. 2014); (5) distributing products over the Internet
in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); (6)
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determining a price of a product offered to a purchasing organization in
Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306 (Fed. Cir. 2015);
and (7) pricing a product for sale in OIP Techs., Inc. v. Amazon.com, Inc.,
788 F.3d 1359 (Fed. Cir. 2015). Analyzing asset characteristics and
determining candidate assets to be divested by a financial institution is also a
building block of a market economy and, like risk hedging and
intermediated settlement, is an “abstract idea” beyond the scope of 35 U.S.C.
§ 101. See Alice, 573 U.S. at 219–220; Bilski, 561 U.S. at 611–12 (“Claims
1 and 4 in petitioners’ application explain the basic concept of hedging, or
protecting against risk.”).
We disagree with Appellant’s argument that claim 1 does not recite an
abstract idea because the claim “provide[s] significant detail about how the
computer is caused to perform the determining function” thereby being
similar to “Claim 2 of Example 37 of the January 2019 Subject Matter
Eligibility Examples . . . which does not recite an abstract idea.” (Reply Br.
2 (citing “Subject Matter Eligibility Examples: Abstract Ideas” at
https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_
20190107.pdf).) Unlike Appellant’s claim 1, claim 2 of Example 37 of the
“Subject Matter Eligibility Examples” requires accessing a computer
memory indicative of application usage to determine an amount of use of
each icon on a graphical user interface (GUI) of a computer system, by
tracking how much memory has been allocated to each application
associated with each icon over a predetermined period of time.
We, therefore, conclude limitations (1)–(3) in representative claim 1,
and similar limitations in grouped claims 10 and 19, recite analyzing asset
characteristics and determining candidate assets to be divested by a financial
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institution, which is a fundamental economic practice and one of the certain
methods of organizing human activity identified in the Revised Guidance,
and therefore, an abstract idea. See Revised Guidance, 84 Fed. Reg. 52
(Revised Step 2A, Prong One), (describing an abstract idea category of
“[c]ertain methods of organizing human activity—fundamental economic
principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including . . . business relations)”), and 54;
see also Final Act. 3. In conclusion, representative claim 1, and grouped
independent claims 10 and 19, recite an abstract idea comprising a
fundamental economic practice.

Step 2A—Prong 2 (Integration into Practical Application)
Under Step 2A, Prong 2 of the Revised Guidance, we discern no
additional element (or combination of elements) recited in Appellant’s
representative claim 1 that integrates the judicial exception into a practical
application. See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong Two”).
For example, Appellant’s claimed additional elements in claim 1 (e.g., a
“network-based computer system,” “an electronic payment card network
separate from the financial institution,” “processor in communication with at
least one memory,” and a “computing device of the financial institution”) do
not: (1) improve the functioning of a computer or other technology; (2) are
not applied with any particular machine (except for generic computing
components); (3) do not effect a transformation of a particular article to a
different state; and (4) are not applied in any 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
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drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Appellant argues the claims “integrate the alleged abstract idea into a
practical application” because claim 1, for example “recites an improvement
over the prior art, characterized by rules applied by a network-based system
in communication with an electronic payment card network and a computing
device of a financial institution separate from the electronic payment card
network” wherein “the electronic payment card network and the computer
device of the financial institution each interacts with the network-based
system, thereby enabling processing data of multiple assets to expose the
most relevant assets to be divested (e.g., a divestiture report) to the particular
financial institution.” (Reply Br. 3–4.) Appellant also argues “[t]he claims
are directed to an eligible improvement in computer-related technology.”
(Appeal Br. 9–10 (emphasis omitted).) We remain unpersuaded.
Appellant’s claim 1 (and similarly, claims 10 and 19) merely links the
use of a judicial exception to a particular technological environment. That
is, although Appellant’s claim recites hardware and networking components
(network-based computer system, electronic payment card network,
processor, memory, and computing device of a financial institution), the
hardware and networking components are configured to perform numerous
real-world functions and operations that such components would normally
be expected to perform, adding nothing of substance to the underlying
abstract idea. (Ans. 5–7.) It is clear from the claim language and the
Specification (describing “a network, such as a local area network (LAN)
and/or a wide area network (WAN), dial-in connections, cable modems,
wireless-connections, and special high-speed ISDN lines,” a “computer
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system” being “run in a Windows® environment” or “on a mainframe
environment and a UNIX® server environment,” “payment card system 120,
such as a credit card payment system using the MasterCard® payment card
system payment network 128 (also referred to as an ‘interchange’ or
‘interchange network’),” “processor, as used herein, refers to central
processing units, microprocessors, microcontrollers, reduced instruction set
circuits (RISC), application specific integrated circuits (ASIC), logic
circuits, and any other circuit or processor capable of executing the functions
described herein,” and memory including “RAM memory, ROM memory,
EPROM memory, EEPROM memory, and non-volatile RAM (NVRAM)
memory”), these limitations require no improved network, processor,
computer system, electronic payment card network, or memory. (See Spec.
¶¶ 30, 33, 39, 69–70; see also Ans. 5–7.) Thus, the claim’s limitations are
not indicative of “integration into a practical application.” Rather, the
network, computer devices and processor, electronic payment card network,
and memory are readily available computing and networking elements using
their already available basic functions as tools in executing the claimed
determination of candidate assets for divestiture. See SAP Am., Inc. v.
InvestPic LLC, 898 F.3d 1161 (Fed. Cir. 2018). The claimed generic
computing and networking components are simply the “automation of the
fundamental economic concept.” See OIP Techs., 788 F.3d at 1362–63.
“[M]erely requir[ing] generic computer implementation,” “does not move
into [§] 101 eligibility territory.” See buySAFE, 765 F.3d at 1354.
For business-centric inventions such as Appellant’s invention
involving the determination of candidate assets to be divested by a financial
institution, the “integration into a practical application” prong requires
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consideration of whether the claim purports to provide “a technical solution
to a technical problem” as required by the Federal Circuit’s precedential
decisions in (1) DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1257 (Fed. Cir. 2014) and (2) Amdocs (Isr.) Ltd. v. Openet Telecom, Inc.,
841 F.3d 1288 (Fed. Cir. 2016). See MPEP § 2106.05(a).
For example, the Federal Circuit found DDR’s claims are patent-
eligible under 35 U.S.C. § 101 because DDR’s claims: (1) do not merely
recite “the performance of some business practice known from the pre-
Internet world” previously disclosed in Bilski and Alice; but instead (2)
provide a technical solution to a technical problem unique to the Internet,
i.e., a “solution . . . necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also found Amdocs’
claims patent-eligible under 35 U.S.C. § 101 because like DDR, Amdocs’
claims “entail[] an unconventional technological solution (enhancing data in
a distributed fashion) to a technological problem (massive record flows
which previously required massive databases)” and “improve the
performance of the system itself.” Amdocs, 841 F.3d at 1300, 1302.
In contrast, Appellant’s invention, involving analyzing asset
characteristics and determining candidate assets for divestiture, does not
provide any “technical solution to a technical problem” as contemplated by
the Federal Circuit in DDR and Amdocs. See MPEP § 2106.05(a).
Appellant argues (i) the claims are similar to DDR because the “pending
claims clearly feature a technological solution to a business problem” (see
Appeal Br. 12), and (ii) claim 1 integrates a practical application because
“the electronic payment card network and the computer device of the
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financial institution each interacts with the network-based system, thereby
enabling processing data of multiple assets to expose the most relevant
assets to be divested (e.g., a divestiture report) to the particular financial
institution” thereby “provid[ing] a clear benefit because of the convenience
of the divestiture report to the financial institution” (see Reply Br. 3–4).
However, Appellant’s claimed determination of a net operating income and
candidate divestiture, and transmission of a divestiture report do not provide
a technical solution to a technical problem unique to the Internet, i.e., a
“solution . . . necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
DDR, 773 F.3d at 1257. Appellant’s claim 1 provides a business solution
and a financial benefit of a divestiture report based on business parameters
(such as asset value, asset’s risk weight, and asset’s net operating income).
(Ans. 6–7.)
Appellant’s invention also does not entail any “unconventional
technological solution (enhancing data in a distributed fashion) to a
technological problem (massive record flows which previously required
massive databases)” or “improve the performance of the system itself,” as
Amdocs’ claims do. Amdocs, 841 F.3d at 1300, 1302. The focus of
Appellant’s invention is not to improve the performance of computers,
networking infrastructure, or electronic payment card networks; instead, the
focus is to use generic computing and networking components as a tool to
solve a business problem by gathering, analyzing, and transmitting business
data including asset data and its characteristics. (Ans. 6.)
We also note Appellant’s reliance on McRO and Enfish is misplaced.
(See Appeal Br. 11–12.) For example, McRO’s ’576 patent (U.S. Patent No.
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6,307,576) describes computer software for matching audio to a 3D
animated mouth movement to provide lip-synched animation. McRO’s
claims contain (i) specific limitations regarding a set of rules that “define[] a
morph weight set stream as a function of phoneme sequence and times
associated with said phoneme sequence” to enable computers to produce
“accurate and realistic lip synchronization and facial expressions in animated
characters” (McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299,
1313 (Fed. Cir. 2016)) and, when viewed as a whole, are directed to (ii) a
“technological improvement over the existing, manual 3–D animation
techniques” that uses “limited rules in a process specifically designed to
achieve an improved technological result in conventional industry practice.”
Id. at 1316. Enfish’s data storage and retrieval method and system recites a
“self-referential table [for a computer database] [which] is a specific type of
data structure designed to improve the way a computer stores and retrieves
data in memory.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336,
1339 (Fed. Cir. 2016).
In contrast to Enfish and McRO, Appellant’s Specification and claims
do not describe technological improvements, or a specific improvement to
the way computers store and retrieve data in memory. See Enfish, 822 F.3d
at 1336, 1339. Rather, Appellant’s Specification and claims describe
“analyzing assets held by a financial institution, and more specifically []
determining an asset divestiture using asset data.” (Spec. ¶ 1.)
We additionally note many of Appellant’s arguments are not
commensurate with the scope of claim 1. (See Appeal Br. 10–11.) For
example, Appellant argues:
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the claims as a whole recite a series of technological steps for
retrieving payment transaction data from an electronic payment
card network, and using this protected payment transaction data
to determine the net operating income of a commercial real
estate asset. A divestiture report is then transmitted to an
identified financial institution based, at least in part, on this net
operating income of the commercial real estate asset. The
protected transaction data, however, is not transmitted to the
financial institution.

(Appeal Br. 10 (emphases added).) Claim 1, however, does not recite
determining the net operating income of a commercial real estate asset, and
does not recite or require not transmitting protected transaction data to a
financial institution.
For these reasons, we determine claim 1, and grouped claims 10 and
19, do not integrate the judicial exception into a practical application,
and are directed to a judicial exception, namely, the abstract idea of
analyzing asset characteristics and determining assets to be divested by a
financial institution, which is a fundamental economic practice, and one of
the certain methods of organizing human activity identified as an abstract
idea in the Revised Guidance. Therefore, we proceed to Step 2B, The
Inventive Concept.

Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance

Appellant challenges the Examiner’s findings as to the second step of
the Alice analysis on the bases that (i) the claims “provid[e] a non-
conventional solution of determining the candidate divestiture, not at the
conventional location of the local bank computing system, but at the non-
conventional remote location associated with the electronic payment card
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network” and the resulting divestiture report “significantly improves upon
conventional processes by more accurately weighing the known static asset
data against the non-conventional, unknown, protected, dynamic asset data”
(Appeal Br. 14–15); (ii) the “pending claims are analogous to the BASCOM
claims” because “even though electronic payment card networks, divestiture
reports, and net operating incomes of assets were known at the time of the
application, it was not known to utilize the protected payment card
transaction data from the electronic payment card network to determine the
net operating income,” and “electronic payment card networks were not
known in the art, at the time of this application, to have the functionality of
determining a net operating income of one or more merchants at a
commercial real estate location” (Appeal Br. 13–14 (citing BASCOM Glob.
Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341
(Fed. Cir. 2016))); and (iii) the “claims introduce a new structural
component—the recited network-based system for determining an asset
divestiture of a financial institution—into the traditional architecture of a
payment card network” and recite “more than well-understood, routine, or
conventional activities at least with respect to communication channels
between a network-based system, an electronic payment card network, and a
computing device of a financial institution to generate a divestiture report
exposing the most relevant assets to be divested by the financial institution,”
although the Examiner provides no evidence of “well-understood, routine,
and conventional activities” (Reply Br. 4–6 (citing Berkheimer v. HP Inc.,
881 F.3d 1360, 1368–69 (Fed. Cir. 2018))).
Appellant’s arguments are not persuasive. As recognized by the
Revised Guidance, an “inventive concept” under Alice step 2 can be
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evaluated based on whether an additional element or combination of
elements:
(1) “[a]dds a specific limitation or combination of limitations
that are not well-understood, routine, conventional activity
in the field, which is indicative that an inventive concept
may be present;” or
(2) “simply appends well-understood, routine, conventional
activities previously known to the industry, specified at a
high level of generality, to the judicial exception, which is
indicative that an inventive concept may not be present.”
See Revised Guidance, 84 Fed. Reg. at 56.
In this case, however, no element or combination of elements recited
in Appellant’s claim 1 contains any “inventive concept” or adds anything
“significantly more” to transform the abstract concept into a patent-eligible
application. Alice, 573 U.S. at 221. Particularly, we are not persuaded by
Appellant’s argument that the claims recite “significantly more” because the
claims provide “a non-conventional solution of determining the candidate
divestiture” and the resulting divestiture report “significantly improves upon
conventional processes by more accurately weighing the known static asset
data against the non-conventional, unknown, protected, dynamic asset data.”
(See Appeal Br. 15.) Appellant’s claimed determination of a divestiture
report does not provide a technical solution to a technical problem, and
Appellant has not demonstrated the claimed generic computing elements and
electronic payment card network are able in combination to perform
functions that are not merely generic. See DDR Holdings, 773 F.3d at 1245,
1258. “[T]hat the techniques claimed are ‘[g]roundbreaking, innovative, or
even brilliant’ . . . is not enough for eligibility,” as “[n]o matter how much of
an advance in the finance field the claims recite, the advance lies entirely in
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the realm of abstract ideas, with no plausibly alleged innovation in the non-
abstract application realm.” See SAP Am., 898 F.3d at 1163.
Additionally, Appellant’s abstract idea of analyzing asset
characteristics and determining assets to be divested—applied to generic
computing infrastructure—does not provide any particular practical
application as required by BASCOM. See BASCOM, 827 F.3d at 1352,
1350. For example, BASCOM’s patent-eligible ordered combination of
claim limitations contains an “inventive concept [that] harnesses [a] . . .
technical feature of network technology in a filtering system by associating
individual accounts with their own filtering scheme and elements while
locating the filtering system on an ISP [(Internet Service Provider)] server.”
See BASCOM, 827 F.3d at 1350. BASCOM’s claimed ordered combination
“improve[s] the performance of the computer system itself” with a
“technology-based solution . . . to filter content on the Internet that
overcomes existing problems with other Internet filtering systems.” See
BASCOM, 827 F.3d at 1351–52 (internal citation omitted).
By contrast, Appellant’s invention uses generically-claimed
computing elements (computing devices and processors, and an electronic
payment card network) to perform the abstract idea that includes, e.g.,
determining an asset’s net operating income. (Ans. 7.) Appellant’s claim 1
also does not recite or require the electronic payment card network to have
the particular functionality of “determining a net operating income of one or
more merchants at a commercial real estate location” as Appellant argues.
(See Appeal Br. 14.) Rather, claim 1 recites that a network-based computer
system (which is “in communication with an electronic payment card
network”) includes a processor that retrieves from the electronic payment
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card network stored payment transaction data and determines an asset’s net
operating income based on the transaction data. Appellant’s claim 1 merely
recites generic computing devices and an electronic payment card network
providing financial data and determining financial indicators for assets, and
claim 1 does not evidence an improvement to the technology of electronic
payment card networks or to a networking or computing infrastructure. As
our reviewing court has observed, “after Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.” DDR Holdings, 773 F.3d at 1256 (citing
Alice, 134 S. Ct. at 2358).
We are also not persuaded that the claims recite “more than well-
understood, routine, or conventional activities at least with respect to
communication channels between a network-based system, an electronic
payment card network, and a computing device of a financial institution to
generate a divestiture report exposing the most relevant assets to be divested
by the financial institution.” (See Reply Br. 4–6; see also Appeal Br. 15.)
At the outset, we note Appellant’s arguments are not commensurate
with claim 1, which does not recite “determining the candidate divestiture,
not at the conventional location of the local bank computing system, but at
the non-conventional remote location associated with the electronic payment
card network,” and does not require a “new structural component” in the
“recited network-based system for determining an asset divestiture of a
financial institution” as Appellant argues. (See Appeal Br. 15 (emphasis
added); Reply Br. 5.) Additionally, Appellant’s Specification describes
generic processors, network, electronic payment card network, and memory
performing generic electronic communications including receiving,
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processing, and transmitting data. (See Spec. ¶¶ 30, 33, 39, 69–70; see also
Final Act. 4; Ans. 7; Intellectual Ventures I LLC v. Symantec Corp., 838
F.3d 1307, 1321 (Fed. Cir. 2016) (receiving, screening, and distributing
email is well known); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d
1306, 1334 (Fed. Cir. 2015) (receiving, storing, retrieving, sorting, and
eliminating information is well known); OIP Techs., 788 F.3d at 1363
(noting that storing data is well-understood, routine, and conventional); Elec.
Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(finding that use of “conventional computer, network, and display
technology for gathering, sending, and presenting the desired information”
does not add significantly more to the claimed abstract idea); CyberSource
Corp., 654 F.3d at 1370, 1375 (“[T]he incidental use of a computer to
perform the [claimed process] does not impose a sufficiently meaningful
limit on the claim’s scope.”).) “[T]he use of generic computer elements like
a microprocessor or user interface” to perform conventional computer
functions “do not alone transform an otherwise abstract idea into patent-
eligible subject matter.” FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (citing DDR Holdings, 773 F.3d at 1256); see
also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1286–87 (Fed. Cir.
2018) (“claims are not saved from abstraction merely because they recite
components more specific than a generic computer”).
Appellant also argues the claims’ patent eligibility based on “the
absence of any prior art rejection.” (See Reply Br. 6.) This improperly
conflates the test for 35 U.S.C. § 101 with the separate tests for 35 U.S.C.
§§ 102 and 103. See, e.g., Genetic Techs. Ltd. v. Merial L.L.C., 818 F.3d
1369, 1376 (Fed. Cir. 2016) (“[U]nder the Mayo/Alice framework, a claim
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directed to a newly discovered law of nature (or natural phenomenon or
abstract idea) cannot rely on the novelty of that discovery for the inventive
concept necessary for patent eligibility.”). As the Supreme Court
emphasizes, “[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.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (emphasis
added). Thus, a novel and nonobvious claim directed to a purely-abstract
idea is, nonetheless, patent-ineligible. See Mayo Collaborative Servs. v.
Prometheus Labs., Inc., 566 U.S. 66, 89–91 (2012).
Because Appellant’s representative claim 1, and grouped claims 10
and 19 are directed to a patent-ineligible abstract concept and do not recite
an “inventive concept” by providing a solution to a technical problem under
the second step of the Alice analysis, we sustain the Examiner’s § 101
rejection of independent claims 1, 10, and 19, and their dependent claims 3–
9, 11–18, and 20.

CONCLUSION
The Examiner’s rejection of claims 1 and 3–20 under 35 U.S.C. § 101
is AFFIRMED.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed
1, 3–20 101 Eligibility 1, 3–20
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED