Serbin, Vitaly et al.

Patent Trials and Appeals Board

Apr 2, 2020

12180129 - (D) (P.T.A.B. Apr. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/180,129 07/25/2008 Vitaly Serbin 107945.000001 9430
145584 7590 04/02/2020
Prince Lobel Tye LLP
One International Place
Suite 3700
Boston, MA 02110
EXAMINER
BORLINGHAUS, JASON M
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
04/02/2020 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):
docketing@princelobel.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VITALY SERBIN, PETER M. BULL, and HAOYUAN ZHU
____________

Appeal 2019-001022
Application 12/180,129
Technology Center 3600
____________

Before MICHAEL C. ASTORINO, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 1, 4–8, 11–15, 18–22, and 25–32, which are all the
claims pending in the application. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Our Decision references corrected Appellant’s Appeal Brief
(“Appeal Br.,” filed Feb. 15, 2018) and Reply Brief (“Reply Br.,” filed Nov.
19, 2018), and the Examiner’s Answer (“Ans.,” mailed Sept. 17, 2018) and
Final Office Action (“Final Act.,” mailed Dec. 19, 2016). Appellant
identifies the real party in interest as “ITG SOFTWARE SOLUTIONS, Inc.”
Appeal Br. 2.
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CLAIMED INVENTION
Appellant’s disclosure “relates generally to systems and methods for
managing and analyzing portfolios.” Spec. ¶ 2.
Claims 1, 8, 15, 22, and 30 are the independent claims on appeal.
Claim 1, reproduced below with added emphasis, is illustrative of the
claimed subject matter. See Appeal Br., Claims App.

1. A computerized method for generating a display of
performance of an electronic portfolio and of at least a portion
of a turnover efficient frontier for a graphical user interface of a
client device, the method performed by a portfolio
analysis server computer connected via an electronic data
network to a database storing electronic historical trading data
and to an electronic portfolio management system having a
database storing electronic portfolio data, the method
comprising:
(a) electronically performing, by one or more computer
modules executing in a memory of the portfolio analysis
server computer, computer simulations of an investment
fund’s return based on characteristics of the fund and the
electronic historical trading data to generate simulation
data that represents a turnover efficient frontier for the
investment fund that describes fund return versus fund
turnover for a plurality of fund sizes;
(b) calculating, by the one or more computer modules,
a current fund return and a current fund turnover of the
fund from the electronic portfolio data based at least in
part on electronic data on market-impact costs;
(c) determining, by the one or more computer modules,
whether a current position of the fund is on said turnover
efficient frontier based on the calculated current fund
return and fund turnover;
(d) determining, by the one or more computer modules,
whether an increase or a decrease in one of fund size or
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turnover will move the fund to a point on said turnover
efficient frontier;
(e) storing the determination of step (d) as optimization
data in a nontransitory memory of the computer;
(f) generating an electronic graphical report that
displays at least a portion of the turnover efficient
frontier and a current position of the fund relative to the
turnover efficient frontier; and
(g) transmitting the electronic graphical report to the
graphical user interface of the client device, so as to
cause the graphical user interface to display the at least
one portion of the turnover efficient frontier and the
current position of the fund relative to the turnover
efficient frontier.

REJECTION
Claims 1, 4–8, 11–15, 18–22, and 25–32 are rejected under 35 U.S.C.
§ 101 as directed to a judicial exception without significantly more.

OPINION
Patent-Ineligible Subject Matter
Under 35 U.S.C. § 101, 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 § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework
previously set forth in Mayo Collaborative Services v. Prometheus
Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim
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laws of nature, natural phenomena, and abstract ideas from those that claim
patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217.
The first step in that analysis is to “determine whether the claims at issue are
directed to one of those patent-ineligible concepts.” Id. If the claims are not
directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry
ends. Otherwise, the inquiry proceeds to the second step where the elements
of the claims are considered “individually and ‘as an ordered combination’”
to determine whether there are additional elements that “‘transform the
nature of the claim’ into a patent-eligible application.” Id. (quoting
Mayo, 566 U.S. at 78, 79). This is “a search for an ‘inventive concept’ —
i.e., an element or combination of elements that is ‘sufficient to ensure that
the patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original).
In rejecting the pending claims under 35 U.S.C. § 101 and under the
first step of the Alice framework, the Examiner determined that the claims
“recite the concept of electronic portfolio analysis.” Final Act. 7.
According to the Examiner, this concept “is similar to other concepts that
have been identified as abstract by the courts to be an abstract idea.” Id.
at 7.
Appellant argues claims 1, 4–8, 11–15, 18–22, and 25–32 together as
a group. See Appeal Br. 13–23. We select independent claim 1 as
representative for the group. Thus, pursuant to 37 C.F.R. § 41.37, claims 4–
8, 11–15, 18–22, and 25–32 stand or fall with claim 1.
After Appellant’s briefs were filed, and the Examiner’s Answer
mailed, the U.S. Patent and Trademark Office (the “USPTO”) published
revised guidance for use by USPTO personnel in evaluating subject matter
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eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER
ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Alice framework by
(1) “[p]roviding groupings of subject matter that [are] considered an abstract
idea”; and (2) clarifying that a claim is not “directed to” a judicial exception
if the judicial exception is integrated into a practical application of that
exception. Id. at 50. The 2019 Revised Guidance, by its terms, applies to all
applications, and to all patents resulting from applications, filed before, on,
or after January 7, 2019. Id.2
We have reviewed the eligibility of the pending claims through the
lens of the 2019 Revised Guidance, but we are not persuaded the Examiner
erred in concluding that the pending claims are directed to a judicial
exception without significantly more.
Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
The first step in the Alice framework, as mentioned above, is to
determine whether the claims at issue are “directed to” a patent-ineligible
concept, e.g., an abstract idea. Alice Corp., 573 U.S. at 217. This first step,
as set forth in the 2019 Revised Guidance (i.e., Step 2A), is a two-prong test;

2 The 2019 Revised Guidance supersedes MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) § 2106.04(II) and also supersedes all versions of the
USPTO’s “Eligibility Quick Reference Sheet Identifying Abstract Ideas.”
See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related
guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP
(published Jan. 2018) should not be relied upon.”). Accordingly,
Appellant’s arguments challenging the sufficiency of the Examiner’s
rejection will not be addressed to the extent those arguments are based on
currently superseded USPTO guidance.
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in Step 2A, Prong 1, we look to whether the claim recites a judicial
exception, e.g., one of the following three groupings of abstract ideas:
(1) mathematical concepts; (2) certain methods of organizing human
activity, e.g., fundamental economic principles or practices, commercial or
legal interactions; and (3) mental processes. 2019 Revised Guidance,
84 Fed. Reg. at 54. If so, we next consider whether the claim includes
additional elements, beyond the judicial exception, that “integrate the
[judicial] exception into a practical application,” i.e., that apply, rely on, or
use the judicial exception in a manner that imposes a meaningful limit on the
judicial exception, such that the claim is more than a drafting effort designed
to monopolize the judicial exception (“Step 2A, Prong 2”). Id. at 54–55.
Only if the claim (1) recites a judicial exception and (2) does not integrate
that exception into a practical application do we conclude that the claim is
“directed to” the judicial exception, e.g., an abstract idea.
The Federal Circuit has explained that “the ‘directed to’ inquiry
applies a stage-one filter to claims, considered in light of the specification,
based on whether ‘their character as a whole is directed to excluded subject
matter.’” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir.
2016) (quoting Internet Patents Corp. v. Active Network, Inc., 790 F.3d
1343, 1346 (Fed. Cir. 2015)). It asks whether the focus of the claims is on a
specific improvement in relevant technology or on a process that itself
qualifies as an “abstract idea” for which computers are invoked merely as a
tool. See id. at 1335–36. Here, it is clear from the Specification (including
the claim language) that the focus of the claim is on an abstract idea, and not
on any improvement to technology, as argued by Appellant.
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The Specification is entitled “SYSTEMS, METHODS AND
COMPUTER PROGRAM PRODUCTS FOR CREATING A TURNOVER
EFFICIENT FRONTIER FOR AN INVESTMEN PORTFOLIO,” and the
disclosure “relates generally to systems and methods for managing and
analyzing portfolios.” Spec. ¶ 2. The Specification in the Abstract section
describes the invention as:
A method, system and computer program for optimizing
return of an investment fund, based on a correlation between
AUM and turnover, includes steps of generating a turnover
efficient frontier for an investment fund that models fund return
versus fund turnover for one or more fund sizes; determining a
current fund return and fund turnover of the fund; determined a
current position of the fund on the turnover efficient frontier
based on the current fund return and fund turnover; and
determining whether an increase or a decrease in one of fund
size or turnover will move the fund to an optimal point on the
turnover efficient frontier.
The claimed invention is intended to provide a better understanding of the
source of an investment fund’s performance by determining if an increase or
decrease in fund size or turnover will generate an optimal return on an
investment portfolio.3

3 “One problem the invention seeks to address is understanding the source of
investment fund performance. In order to understand investment
fund performance, one must also determine how the overall capacity and
liquidity of a market, or a segment of the market, affects the funds that
invest in that market. The inventors of the present invention have
determined that one can accurately predict investment fund performance by
modeling alpha (a), fund strategy and the liquidity of the stocks in an
investment fund. Preferably, historical trade data for a fund is used to
calculate alpha (a) for an investment portfolio over a selected period of
time.” Spec. ¶ 27.

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To that end, claim 1 recites a method for generating a display of
performance of a portfolio and of at least a portion of a turnover
efficient frontier comprising: (a) performing simulations of an
investment fund’s return based on characteristics of the fund and the
historical trading data to generate simulation data that represents a
turnover efficient frontier for the investment fund that describes fund
return versus fund turnover for a plurality of fund sizes;
(b) calculating a current fund return and a current fund turnover of the
fund from the portfolio data based at least in part on data on market-
impact costs; (c) determining whether a current position of the fund is
on said turnover efficient frontier based on the calculated current fund
return and fund turnover; (d) determining whether an increase or a
decrease in one of fund size or turnover will move the fund to a point
on said turnover efficient frontier; (e) storing the determination of step
(d) as optimization data; (f) generating a graphical report that displays
at least a portion of the turnover efficient frontier and a current
position of the fund relative to the turnover efficient frontier; and (g)
transmitting the graphical report to display the at least one portion of
the turnover efficient frontier and the current position of the fund
relative to the turnover efficient frontier. See Claim 1 supra.
Under the broadest reasonable interpretation steps (a) and (b) describe
mathematical concepts. For example “performing . . . simulations of an
investment fund’s return based on characteristics of the fund and the . . .
historical trading data[, as recited in step (a)],” are calculations performed
that factor in a time period. See Spec. ¶ 51 (“Equation (1) provides the basis
for simulations performed by the present invention.”). Step (b), which
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recites calculating a current fund return and a current fund turnover of the
fund from the portfolio data based at least in part on data on market-impact
costs, is also described as involving mathematical calculations. See Spec.
¶ 12 (“The current position can be identified by, for example, calculating
actual returns from portfolio trading data.”); see also id. ¶¶ 67, 70, 80.
Under the Guidance, steps (a) and (b) fall under the Mathematical concepts
grouping, which includes mathematical calculations, and thus, recite an
abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52.
Together, such mathematical calculations have been determined to be
abstract ideas. See, e.g., In re Grams, 888 F.2d 835, 837 (Fed. Cir. 1989)
(“Mathematical algorithms join the list of non-patentable subject matter not
within the scope of section 101.”); SAP Am., Inc. v. InvestPic, LLC, 898 F.3d
1161, 1163 (Fed. Cir. 2018) (holding that claims to a “series of mathematical
calculations” are directed to an abstract idea); Diamond v. Diehr, 450 U.S. at
191 (“[a] mathematical formula . . . 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”) (citation
omitted); Blue Spike, LLC v. Google Inc., No. 14-CV-01650-YGR, 2015
WL 5260506 (N.D. Cal. Sept. 8, 2015), aff’d, No. 2016-1054, 669 Fed.
Appx. 575, 2016 WL 5956746 (mem) (Fed. Cir. Oct. 14, 2016) (comparison
of the results of the mathematical operations itself is an abstract idea).
Under the broadest reasonable interpretation steps (c)–(f) describe
mental processes that can practically be performed in the human mind or
with the aid of a pen and paper. For example, “determining whether a
current position of the fund is on said TEF based on the calculated current
fund return and fund turnover is described as immediately following the
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calculation of the performance of the given fund along the TEF “the current
position of the fund is plotted in comparison to the turnover efficient
frontier.” Spec. ¶ 86. This is similar to plotting a graph on a piece of paper.
Determining whether an increase or a decrease in one of fund size or
turnover will move the fund to a point on said turnover efficient frontier is a
mental process because the comparison made in the preceding step (c) will
inform what changes in the fund size or turnover in relation to the TEF need
to be made. These “strategic recommendations are made to optimize the
return of the fund. The recommendations may include increasing or
decreasing AUM, increasing or decreasing the amount of fund turnover, as
well as other similar recommendations.” Id. ¶ 87. Step (e) of storing the
determination in step (d) can be performed by recording optimization data
with a pen and paper and plotting a graphical report (step (f)) that displays a
portion of the TEF and a current position of the fund relative to the TEF.
See id. ¶ 89, Fig. 8. Together, these mental processes recite an abstract idea.
See Revised Guidance 84 Fed. Reg. at 52 (“Mental processes—concepts
performed in the human mind (including an observation, evaluation,
judgment, opinion.”)
Having concluded that claim 1 recites a judicial exception, i.e., an
abstract idea (Step 2A, Prong 1), we next consider whether the claim recites
additional elements that integrate the judicial exception into a practical
application (Step 2A, Prong 2). 2019 Revised Guidance, 84 Fed. Reg. at 51.
When a claim recites a judicial exception and fails to integrate the
exception into a practical application, the claim is “directed to” the judicial
exception. Id. Claim 1 may integrate the judicial exception when, for
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example, it reflects an improvement to technology or a technical field.
Id. at 55.
The additional elements recited in claim 1 supra are italicized. These
additional elements are “graphical user interface of a client device”; “server
computer”; “electronic data network”; “database’; computer modules”; and a
“non-transitory memory” — all of which are disclosed in the Specification at
a high degree of generality, i.e., as generic computer components (see
Spec. ¶¶ 25, 26, 29, 30). For example, the Specification indicates that such
components include general purpose computers, microprocessors, or the
like. Spec. ¶ 25. The recitation of transmitting the graphical report to the
user in step (g) is insignificant extra-solution activity because its incidental
to the primary process of claim 1. See MPEP § 2106.05 (g) (“An example of
post-solution activity is an element that is not integrated into the claim as a
whole, e.g., a printer that is used to output a report of fraudulent
transactions, which is recited in a claim to a computer programmed to
analyze and manipulate information about credit card transactions in order to
detect whether the transactions were fraudulent.”).
Appellant contends the invention is a computer-centric process that
cannot be done by the human mind and is rooted in computer technology.
(Appeal Br. 19; see Declaration of Vitaly Serbin ¶ 6 (hereinafter “Serbin
Decl.”). Appellant asserts instant claims are similar to those found patent
eligible in DDR Holdings4 and BASCOM.5 Appeal Br. 21.

4 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
5 BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341 (Fed. Cir. 2016).
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The Examiner disagrees that Appellant’s invention is analogous to
DDR Holdings (Ans. 9) and determines that unlike DDR where the claimed
solution was rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks, the present invention
is designed to overcome (modeling net return, forecasting next month’s
alphas, and optimize a portfolio) a problem not specifically arising from the
realm of computers (id. at 10). We agree.
Unlike DDR Holdings, Appellant does not identify any problem
particular to computer networks and/or the Internet that claim 1 allegedly
overcomes. In fact, the court in DDR Holdings cautioned “that not all
claims purporting to address Internet-centric challenges are eligible for
patent.” DDR Holdings, 773 F.3d at 1258. For example, the court
distinguished the patent-eligible claims at issue from claims held patent-
ineligible in Ultramercial. See id. at 1258–59 (citing Ultramercial, Inc. v.
Hulu, LLC, 772 F.3d 709, 715–16 (Fed. Cir. 2014)). As noted there, the
Ultramercial claims were “‘directed to a specific method of advertising
and content distribution that was previously unknown and never
employed on the Internet before.’” Id. at 1258 (quoting Ultramercial, 772
F.3d at 714). Nevertheless, those claims were patent ineligible because
they “merely recite[d] the abstract idea of ‘offering media content in
exchange for viewing an advertisement,’ along with ‘routine additional
steps such as updating an activity log, requiring a request from the
consumer to view the ad, restrictions on public access, and use of the
Internet.’” Id. (citation omitted). Here, contrary to Appellant’s argument,
managing and analyzing investment portfolios is not a technical solution
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akin to DDR Holdings because it fails to overcome any problem specifically
arising in the realm of computer networks.
In BASCOM, the Federal Circuit determined that the claimed
installation of a filtering tool at a specific location, remote from the end-
users, with customizable filtering features specific to each end user provided
an inventive concept in that it gave the filtering tool both the benefits of a
filter on a local computer and the benefits of a filter on the ISP server.
BASCOM, 827 F.3d at 1350. The court, thus, held that the second step of
the Alice framework was satisfied because the claimed invention “represents
a ‘software-based invention[ ] that improve[s] the performance of the
computer system itself.’” Id. at 1351 (alterations in original) (stating that
like DDR Holdings, where the patent “claimed a technical solution to a
problem unique to the Internet,” the patent in BASCOM claimed a
“technology-based solution . . . to filter content on the Internet that
overcomes existing problems with other Internet filtering systems . . .
making it more dynamic and efficient”).
Here, we are not persuaded that analyzing an investment portfolio
using generic computer components provides a nonconventional and non-
generic arrangement that is a technological improvement comparable to the
situation in BASCOM. Appellant also does not identify, and we do not find,
any improvement to computer technology analogous to the ordered
combination described in BASCOM or any additional element or elements
recited in claim 1 that yield an improvement in the functioning of a
computer, or an improvement to another technology or technical field.
We are not apprised of any operation recited in claim 1 that invokes
any assertedly inventive programming, requires any specialized computer
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hardware or other inventive computer components, i.e., a particular machine,
or that the claimed invention is implemented using other than generic
computer components to perform generic computer functions. See DDR
Holdings, 773 F.3d at 1256 (“[A]fter Alice, there can remain no doubt:
recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”). As discussed above, step (g) adds
insignificant extra-solution activity to the judicial exception (i.e., post-
solution activity), which does not meaningfully limit the claim.
We find no indication in the Specification that the claimed invention
effects a transformation or reduction of a particular article to a different state
or thing. Nor do we find anything of record that attributes an improvement
in computer technology and/or functionality to the claimed invention or that
otherwise indicates that the claimed invention integrates the abstract idea
into a “practical application,” as that phrase is used in the 2019 Revised
Guidance.6
Appellant also draws an analogy between the pending claims and
those at issue in Trading Technologies.7 Appeal Br. 23. The Examiner
disagrees with this comparison. See Ans. 14. In Trading Technologies, the
Federal Circuit affirmed the district court’s holding that the patented claims
(which recited a method and system for displaying market information on a

6 The 2019 Revised Guidance references MPEP § 2106.05(a)–(c) and (e) in
describing the considerations that are indicative that an additional element or
combination of elements integrates the judicial exception, e.g., the abstract
idea, into a practical application. 2019 Revised Guidance, 84 Fed. Reg.
at 55. If the recited judicial exception is integrated into a practical
application, as determined under one or more of these MPEP sections, the
claim is not “directed to” the judicial exception.
7 Trading Techs. Int’l Inc. v. CQG, Inc., 675 F. App’x 1001 (Fed. Cir. 2017).
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graphical user interface) did not simply claim displaying information on a
graphical user interface and were not directed to an abstract idea; instead, the
claims required “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.” Trading Techs., 675 F. App’x at 1004. In
contrast, Appellant’s claim 1 merely recites transmitting the electronic
graphical report to the graphical user interface of the client device, which is
described in the Specification as being performed using a generic computer
such as a general purpose computer. Spec. ¶ 25. Besides using a generic
graphical user interface as a tool in its ordinary capacity, Appellant has not
shown that the claimed invention reflects an improved interface.
We conclude, for the reasons outlined above, that claim 1 recites an
abstract idea, and the additional elements recited in the claim are no more
than generic components used as tools to perform the recited abstract idea.
As such, they do not integrate the abstract idea into a practical application.
See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic computer
implementation is not generally the sort of ‘additional featur[e]’ that
provides any ‘practical assurance that the process is more than a drafting
effort designed to monopolize the [abstract idea] itself.’”) (alterations in
original) (quoting Mayo, 566 U.S. at 77). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
Having determined under step one of the Alice framework that claim 1
is directed to an abstract idea, we next consider under Step 2B of the 2019
Revised Guidance, the second step of the Alice framework, whether claim 1
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includes additional elements or a combination of elements that provides an
“inventive concept,” i.e., whether the additional elements amount to
“significantly more” than the judicial exception itself. 2019 Revised
Guidance, 84 Fed. Reg. at 56.
The Examiner determined that the additional elements alone and in
combination fail to amount to significantly more than the recited abstract
idea, and recite well-understood routine and conventional computer activity.
Final Act. 11–13.
Besides the insignificant extra-solution activity recited in step (g), the
only additional elements recited are “graphical user interface of a client
device”; “server computer”; “electronic data network”; “database’; computer
modules”; and a “non-transitory memory” — all of which are disclosed in
the Specification at a high degree of generality, i.e., as generic computer
components (see Spec. ¶ 25). We agree with the Examiner that the
employment of such components in the manner recited is well understood,
routine, or conventional. Considering the steps individually, claim 1 lacks
additional elements to ensure that the claim amounts to significantly more.
Specifically, the recited steps, understood in light of the Specification, do
not appear to require anything other than off-the-shelf, conventional
computers and a network. Likewise, the calculating, determining, storing
and generating steps involve techniques well-known in the art. For example,
the Federal Circuit has recognized that “an invocation of already-available
computers that are not themselves plausibly asserted to be an advance, for
use in carrying out improved mathematical calculations, amounts to a
recitation of what is ‘well-understood, routine, [and] conventional.”’ SAP
Am., 898 F.3d at 1170 (alteration in original) (citing Mayo, 566 U.S. at 73).
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Thus, the additional elements, individually and in combination, do not
provide an inventive concept.
Appellant’s argument that the simulations and graphical user interface
are not conventional as evidenced by the lack of any prior art rejections
(Appeal Br. 23) is unpersuasive. Although the second step in the Alice
framework is termed a search for an “inventive concept,” the analysis is not
an evaluation of novelty or non-obviousness, but rather, a search for “an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Alice Corp., 573 U.S. at 217–18.
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad
Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim
directed to a purely abstract idea is, nonetheless, patent ineligible. See
Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89
(1981) (“The ‘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.”).
We are not persuaded, on the present record, that the Examiner erred
in rejecting independent claim 1 under 35 U.S.C. § 101. Accordingly, we
sustain the rejection of independent claim 1 under 35 U.S.C. § 101,
including claims 4–8, 11–15, 18–22, and 25–32, which fall with claim 1.

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CONCLUSION
The rejection of claims 1, 4–8, 11–15, 18–22, and 25–32 under 35
U.S.C. § 101 is AFFIRMED.
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 4–8, 11–
15, 18–22,
25–32
101 Eligibility 1, 4–8, 11–
15, 18–22,
25–32

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