ALIBABA GROUP HOLDING LIMITED

Patent Trials and Appeals Board

Apr 26, 2021

2020005910 (P.T.A.B. Apr. 26, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/993,862 01/12/2016 Wei WANG 13295.0034-00000 1160
22852 7590 04/26/2021
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER
LLP
901 NEW YORK AVENUE, NW
WASHINGTON, DC 20001-4413
EXAMINER
MITROS, ANNA MAE
ART UNIT PAPER NUMBER
3625
NOTIFICATION DATE DELIVERY MODE
04/26/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
regional-desk@finnegan.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WEI WANG and SHUMIN LIN
____________

Appeal 2020-005910
Application 14/993,862
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BRADLEY B. BAYAT, and
TARA L. HUTCHINGS, Administrative Patent Judges.

HUTCHINGS, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 7–12, and 18–29. We have jurisdiction under
35 U.S.C. § 6(b).

1 Our decision references the Specification (“Spec.,” filed Jan. 12, 2016),
Non-Final Office Action (“Non-Final Act.,” mailed Nov. 29, 2019), Appeal
Brief (“Appeal Br.,” filed May 6, 2020), Answer (“Ans.,” mailed June 23,
2020), Reply Brief (“Reply Br.,” filed Aug. 14, 2020), Request to Change
Applicant (“Request,” filed Sept. 29, 2020), and Corrected Filing Receipt
(“Filing Receipt,” mailed Oct. 2, 2020). We use the term “Appellant” to
refer to “applicant” as defined in 37 C.F.R. § 1.42. Subsequent the briefing
for this appeal, Appellant filed a Request to Change Applicant, identifying
Advanced New Technologies Co., Ltd. as the real party in interest. See
Request 1, See also Corrected Filing Receipt 1.
Appeal 2020-005910
Application 14/993,862

2
We AFFIRM.
CLAIMED INVENTION
Appellant’s claimed invention relates to “identifying risks in online
transactions.” Spec. ¶ 2.
Claims 1, 12, and 23 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method for identifying risks in online transactions,
comprising:
[(a)] recording a corresponding relation between finger
print information of a terminal device and an account by
collecting the finger print information via a web browser after
the terminal device logs in the account;
[(b)] calculating a total number of different accounts
logged in by the terminal device within a first predetermined
period of time, based on the corresponding relation;
[(c)] calculating a total number of logins by the terminal
device within a second predetermined period of time;
[(d)] acquiring a time duration between a first login by
the terminal device and a current time;
[(e)] calculating a total transaction amount within a third
predetermined period of time;
[(f)] calculating a transaction risk value representing a
transaction risk of using the terminal device based on the total
number of different accounts, the total number of logins, the time
duration, the total transaction amount, and an equation
, with Score being the
transaction risk value, F being the total number of logins, f1(F)
being a function of the total number of logins F, a1 being a weight
of the function f1(f), R being the time duration, f2(R) being a
function of the time duration R, a2 being a weight of the function
f2(R), M being the total transaction amount, f3(M) being a
function of the total transaction amount M, a3 being a weight of
Appeal 2020-005910
Application 14/993,862

3
the function f3(M), U being the total number of different
accounts, f0(U) being a function of the total number U, and b
being a weight of the function fo(U)
[(g)] in response to the transaction risk value satisfying a
threshold condition, rejecting the online transaction made by the
terminal device.

Appeal Br. 27–28 (Claims Appendix).

REJECTION
Claims 1, 7–12, and 18–29 are rejected under 35 U.S.C. § 101 as
directed to a judicial exception without significantly more.
ANALYSIS
Patent-Ineligible Subject Matter
Principles of Law
35 U.S.C. § 101
An invention is patent eligible if it is a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted § 101 to include implicit
exceptions: “[l]aws of nature, natural phenomena, and abstract ideas are not
patentable.” E.g., Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014)
(quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569
U.S. 576, 589 (2013)).
In determining whether a claim falls within an excluded category, we
are guided by the Court’s two-part framework, described in Mayo
Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012), and Alice, “for distinguishing patents that claim laws of nature,
natural phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice, 573 U.S. at 217. The first step in that
Appeal 2020-005910
Application 14/993,862

4
analysis is to “determine whether the claims at issue are directed to one of
those patent-ineligible concepts,” such as an abstract idea. Id. According to
Supreme Court precedent, concepts determined to be abstract ideas include
certain methods of organizing human activity, such as fundamental
economic practices (id. at 219–20; Bilski v. Kappos, 561 U.S. 593, 611
(2010)); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95
(1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 69
(1972)).
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.” Alice, 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78).
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) (citation omitted).
USPTO Guidance
We are also guided by U.S. Patent and Trademark Office (“USPTO”)
guidance, as set forth in the 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”), which has been
incorporated into the MPEP §§ 2104–06. “The guidance sets out agency
policy with respect to the USPTO’s interpretation of the subject matter
eligibility requirements of 35 U.S.C. [§] 101 in view of decisions by the
Supreme Court and the Federal Circuit.” Guidance, 84 Fed. Reg. at 51.
Appeal 2020-005910
Application 14/993,862

5
However, the “guidance . . . does not create any right or benefit, substantive
or procedural, enforceable by any party against the USPTO” and
“[r]ejections will continue to be based upon the substantive law.” Id.
Under the Guidance, the first step of the Mayo/Alice framework is a
two-prong inquiry. MPEP § 2106.04(II)(A); see also Guidance, 84 Fed.
Reg. at 54 (“Step 2A of the 2019 Revised Patent Subject Matter Eligibility
Guidance is a two-prong inquiry.”). “Prong One asks does the claim recite
an abstract idea, law of nature, or natural phenomenon?”
MPEP § 2106.04(II)(A)(1); see also Guidance, 84 Fed. Reg. at 54. For
determining whether a claim recites an abstract idea, the guidance defines
enumerated groupings of abstract ideas, distilled from precedent.
MPEP § 2106.04(a); see also id. § 2106.04(a)(2) (defining abstract idea
groupings); Guidance, 84 Fed. Reg. at 52. If the claim recites a judicial
exception, then the claim requires further analysis at Prong Two.
MPEP § 2106.04(II)(A)(1); Guidance, 84 Fed. Reg. at 54. “Prong Two asks
does the claim recite additional elements that integrate the judicial exception
into a practical application?” MPEP § 2106.04(II)(A)(2); see also
id. §§ 2106.04(d)–2106.04(d)(2) (setting forth relevant considerations set
forth by the courts in evaluating whether additional elements demonstrate
that a claim is directed to patentable subject matter), 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, to whether the additional elements, individually or in combination,
provide an inventive concept. See MPEP §§ 2106(III), 2106.05.
“An inventive concept ‘cannot be furnished by the unpatentable law
of nature (or natural phenomenon or abstract idea) itself.’” Id. § 2106.05(I)
Appeal 2020-005910
Application 14/993,862

6
(quoting Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376 (Fed.
Cir. 2016)). Instead, we consider whether the additional elements,
individually and in combination, amount to significantly more than the
exception itself. Id. Among the considerations set forth by the courts as
relevant to this evaluation is the conventionality of the additional elements
or combination, such as whether they add a specific limitation beyond the
judicial exception that is not “well-understood, routine, conventional” in the
field or simply append well-understood, routine, conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exception. MPEP §§ 2106.05(I), (II); Guidance, 84 Fed. Reg.
at 56.
Rejection
Focusing on claim 1 as representative, the Examiner determined that
limitations (a) through (g) of the claim recite a method for calculating a
transaction risk value. See Non-Final Act. 3–4. The Examiner determined
that this concept falls into the “commercial or legal interaction, [including]
advertising, marketing, or sales activities or behaviors” subgrouping of the
“certain methods of organizing human activity” grouping of abstract ideas.
Id. at 4; see also MPEP § 2106.04(a). The Examiner further determined that
limitations (a) through (g) of claim 1 recite observations and evaluations that
could be performed in the human mind and, thus, also fall into the “mental
processes” grouping of abstract ideas. Non-Final Act. 4;
MPEP § 2106.04(a). Additionally, the Examiner determined that the
limitations of claim 1 recite “mathematical concepts such as mathematical
algorithms, mathematical relationships, mathematical formulas, and
calculations” and, as such, fall into the “mathematical concepts” grouping of
Appeal 2020-005910
Application 14/993,862

7
abstract ideas. Non-Final Act. 4; MPEP § 2106.04(a). The Examiner also
determined that independent claims 12 and 23 recite similar subject matter
as claim 1 and fall into the same groupings of abstract ideas. Non-Final Act.
4. The Examiner further determined that claims 1, 12, and 23 do not recite
additional elements that integrate the abstract idea into a practical
application or that amount to significantly more than the abstract idea. Non-
Final Act. 5–6. Further, the Examiner determined that dependent
claims 7–11, 18–2, and 24–29 do not recite any additional elements that
integrate the abstract idea into a practical application or amount to
significantly more than the abstract idea. Non-Final Act. 6–7.
Step One of the Mayo/Alice Framework (Guidance, Step 2A)
Appellant argues claims 1, 12, and 23 as a group. Appeal Br. 8–25.
We select claim 1 as representative. Consequently, claims 12 and 23 stand
or fall with claim 1. See 37 C.F.R. §41.37(c)(1)(iv).
We are not persuaded by Appellant’s arguments that the Examiner
failed to consider claim 1 as a whole or otherwise erred in determining that
claim 1 recites an abstract idea. See Appeal Br. 8–12. 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
Appeal 2020-005910
Application 14/993,862

8
claim 1 focuses on a process that itself qualifies as an abstract idea, and not
on any improvement to technology and/or a technical field.
The Specification is titled “METHODS, SYSTEMS, AND
APPARATUS FOR IDENTIFYING RISKS IN ONLINE
TRANSACTIONS,” and describes, in the Background section, that as “total
transaction amount conducted over the internet grows, transaction security
becomes an issue.” Spec. ¶ 4 “Existing online transaction security practices
of traditional financial organizations usually involve authenticating an
identification of an account by using a security digital certificate.” Id. ¶ 5.
But this practice is unfriendly to users and burdensome. Id.
To overcome this shortcoming, the Specification describes recording a
corresponding relation between a fingerprint of a terminal device and an
account after the terminal device logs into the account. Id. ¶ 23, Fig. 1. The
fingerprint is information that uniquely identifies a terminal device, such as
a a Media Access Control (MAC) address, User Machine Identification
(UMID) code, or Terminal Identification (TID) code, which the internet
generally uses. Id. ¶¶ 24, 29. After recording a corresponding relation, the
invention calculates a total number of different accounts that the terminal
device logs into within a first predetermined period of time, and calculates,
based on the total number of different accounts, a transaction risk value
representing a transaction risk of using the terminal device to perform an
online transaction. Id. ¶¶ 30–31, Fig. 1. The transaction value can be used
to create an online transaction blacklist. Id. ¶ 32. For example, a terminal
device having a transaction value higher than a present threshold is
identified for an online transaction blacklist and when then terminal device
Appeal 2020-005910
Application 14/993,862

9
attempts to perform an online transaction, the terminal device is rejected.
See id.
Consistent with this disclosure, claim 1 recites a method for
identifying risks in online transaction. The method involves five steps for
calculating a transaction risk value associated with an online transaction and
rejecting the online transaction when the transaction risk value satisfies a
threshold condition: (1) “recording a corresponding relation between finger
print information of a terminal device and an account by collecting the
finger print information” (limitation (a)); (2) “calculating a total number of
different accounts logged in . . . within a first predetermined period of time,
based on the corresponding relation” (limitation (b)); (3) “calculating a total
number of logins . . . within a second predetermined period of time”
(limitation (c)); (4) “acquiring a time duration between a first login . . . and a
current time” (limitation (d)); (5) “calculating a total transaction amount
within a third predetermined period of time” (limitation (e)); (6)
calculating a transaction risk value . . . based on the total
number of different accounts, the total number of logins, the time
duration, the total transaction amount, and an equation
, with Score being the
transaction risk value, F being the total number of logins, f1(F)
being a function of the total number of logins F, a1 being a weight
of the function f1(f), R being the time duration, f2(R) being a
function of the time duration R, a2 being a weight of the function
f2(R), M being the total transaction amount, f3(M) being a
function of the total transaction amount M, a3 being a weight of
the function f3(M), U being the total number of different
accounts, f0(U) being a function of the total number U, and b
being a weight of the function fo(U)
Appeal 2020-005910
Application 14/993,862

10
(limitation (f)); and “in response to the transaction risk value satisfying a
threshold condition, rejecting the online transaction” (limitation (g)).
Limitations (a) through (g), when given their broadest reasonable
interpretation, recite a method for mitigating risk associated with a
transaction. This concept pertains to “fundamental economic principles or
practices (including . . . mitigating risk),” which is a subgrouping of the
“certain methods of organizing human activity” grouping of abstract ideas.
See MPEP § 2106.04(a)(2)(II); see also Appeal Br. 10 (admitting that the
invention “help[s] secure online transactions”). It is well-settled that
mitigating risk is a fundamental economic practice and, thus, an abstract
idea. See Alice, 573 U.S. at 219–20 (holding “intermediated settlement” is a
fundamental economic practice, which is an abstract idea); Bilski, 561 U.S.
at 611 (“hedging, or protecting against risk” is a “fundamental economic
practice long prevalent in our system of commerce”).
We also agree with the Examiner the concept of mitigating risk
associated with a transaction, as recited in limitations (a) through (g) of
claim 1, pertains to “commercial or legal interactions,” including “sales
activities or behaviors,” which is another subgrouping of the “certain
methods of organizing human activity” grouping of abstract ideas. See
MPEP §§ 2104.04(a); 2106.04(a)(2)(II). For example, limitations (a)
through (g) recite a set of rules that, when executed, results in calculating a
transaction risk value and, in response to the transaction risk value satisfying
a threshold condition (e.g., the transaction risk value being sufficiently
high), rejecting the transaction, i.e., a commercial interaction, including a
sales activity.
Appeal 2020-005910
Application 14/993,862

11
Appellant argues that the “Examiner’s analysis is flawed because it
[is] inconsistent.” Id. at 8. In this regard, Appellant quotes language from
page 14 of the Examiner’s Non-Final Office Action to charge that the
Examiner has “flip-flopped” in articulating the abstract idea and has failed to
consider the invention as a whole. Appeal Br. 8–9. Yet, the language that
Appellant quotes is not a re-characterization of the abstract idea by the
Examiner, but rather remarks rebutting Appellant’s argument that the
abstract idea is integrated into a practical application. Moreover, an abstract
idea generally can be described at different levels of abstraction without
impacting the patentability analysis. Apple, Inc. v. Amaranth, Inc., 842 F.3d
1229, 1240–41 (Fed. Cir. 2016).
To the extent that Appellant contends that the Examiner determines
that claim 1 recites a combination of abstract ideas, adding one abstract idea
to another does not render the combination any less abstract. RecogniCorp
LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (“Adding one abstract idea
(math) to another abstract idea (encoding and decoding) does not render the
claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839
F.3d 1089, 1094 (Fed. Cir. 2016 (determining the pending claims were
directed to a combination of abstract ideas); MPEP § 2106.04(II)(B) (“A
claim may recite multiple judicial exceptions.”).
Appellant argues that the Examiner erred in determining that claim 1
is directed to certain methods of organizing human activity, because the
claim is “not directed to transactions or mitigating investment risks (i.e.,
hedging) or settlement risks.” Appeal Br. 11. According to Appellant,
claim 1 “as a whole, [is] directed to identifying risks in online transactions . .
. to evaluate . . . earlier transactions . . . to determine whether to reject a
Appeal 2020-005910
Application 14/993,862

12
current transaction.” Id.; see also id. at 10 (arguing that these features
“help[] secure online transactions). Yet, even accepting Appellant’s
characterization of the claimed invention, an online transaction pertains to a
sale (i.e., a commercial interaction), and determining whether to reject a
current transaction based on risk pertains to mitigating risk (i.e., a
fundamental economic practice), which are two of the subgroupings within
the “certain methods of organizing human activity” grouping. Accordingly,
Appellant fails to persuade us that the Examiner erred either in determining
that claim 1 recites a certain method of organizing human activity, i.e., an
abstract idea, or in considering the claim as a whole. See Non-Final
Act. 3–4 (analyzing the combination of limitations (a) through (g) of claim 1
in the context of determining that claim 1 recites an abstract idea).
We also are not persuaded by Appellant’s arguments that claim 1 is
not “directed to” an abstract idea because it integrates the recited abstract
idea into a practical application (Step 2A, Prong Two). Appeal Br. 12–20.
Appellant’s arguments are largely premised on the contention that
limitations (a) and (g) of claim 1 integrate the abstract idea into a practical
application. See id. An additional element or combination of elements can
integrate the abstract idea into a practical application if, inter alia, the
additional element or combination of elements reflects an improvement in
the functioning of a computer or an improvement to other technology or
technical field. MPEP §§ 2106.04(d), 2106.04(d)(1), 2106.05(a). However,
additional limitations that merely use the computer as a tool to perform the
abstract idea and generally link the use of the abstract idea to a particular
technological environment or field do not integrate the abstract idea into a
practical application. Id. §§ 2106.04(d), 2106.05(f), 2106.05(h).
Appeal 2020-005910
Application 14/993,862

13
Here, “recording a corresponding relation between finger print
information of a terminal device and an account by collecting the finger
print information,” as recited in limitation (a), and “in response to the
transaction risk value satisfying a threshold condition, rejecting the online
transaction,” as recited in limitation (g), are part of the abstract idea itself.
See Genetic Techs., 818 F.3d at 1376 (explaining that eligibility “cannot be
furnished by the unpatentable . . . abstract idea”). Limitation (a)
additionally recites that the finger print information is collected “via a web
browser after the terminal device logs in the account” and limitation (g)
additionally recites that the rejected online transaction is “made by the
terminal device.” But these additional limitations, considered individually
and in combination, merely tie the abstract idea to a particular technological
environment (involving a terminal device and web browser) and amount to
using a computer as tool to implement the abstract idea.
We further note that these aspects of the claims resemble concepts
related to data collection, recognition, and analysis that have been held by
the Federal Circuit to be abstract ideas. See, e.g., Intellectual Ventures I
LLC v. Erie Indemnity Company, 850 F.3d 1315, 1327 (Fed. Cir. 2018)
(holding that the “creation of an index used to search and retrieve
information stored in a database” is abstract); In re TLI Communications
LLC Patent Litigation, 823 F.3d 607, 613 (Fed. Cir. 2016) (attaching
classification data to images to store the images in an organized manner is an
abstract idea pertaining to methods of organizing human activity); Content
Extraction and Transmission LLC v. Wells Fargo Bank, Nat. Ass’n, 776 F.3d
1343, 1347 (Fed. Cir. 2014) (holding the concept of data collection,
recognition, and storage to be abstract). Here, similar to the index in Erie
Appeal 2020-005910
Application 14/993,862

14
Indemnity, the classification data in TLI Communications, and the set of
symbols used to designate fields of information in Content Extraction, the
claimed finger print information of a terminal device is used to collect and
analysis information. For example, a corresponding relation between finger
print information of a terminal device and an account is recorded, i.e.,
limitation (a). Based on the corresponding relation, a total number of
different accounts logged in by the terminal device is calculated, i.e.,
limitation (b). Using the total number of different accounts, among other
information, the claimed method calculates a transaction risk value, i.e.,
limitation (f), which is used to reject the online transaction, i.e.,
limitation (g). See, e.g., Spec. ¶¶ 45–48 (describing that a device having too
many accounts indicates that the device has poor privacy and a risk of being
used maliciously and, thus, results in a higher transaction risk value); Appeal
Br. 14 (arguing that the invention improves online transaction security by
using a finger print of a terminal device to evaluate earlier transactions taken
by that terminal device).
Rather than focusing on any specific improvement to computers as
tools or any other technological improvement, the focus of claim 1 is on the
type of information collected and analyzed (such as the finger print
information and corresponding relation between the finger print information
and an account (limitation (a)) to determine whether to reject a reject an
online transaction. Claim 1 may well improve the commercial interaction
and/or fundamental economic practice itself by improving the data collected
and used in the analysis to determine whether to reject an online transaction.
However, “[a]s many cases make clear, even if a process of collecting and
analyzing information is ‘limited to particular content’ or a particular
Appeal 2020-005910
Application 14/993,862

15
‘source,’ that limitation does not make the collection and analysis other than
abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir.
2018) (quoting Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353,
1355 (Fed. Cir. 2016)).
For example, Appellant argues that limitations (a) and (g) of claim 1
“use the alleged judicial exception in a specific manner” and “limit[] the use
of the alleged judicial exception to the practical application” of identifying
risk in an online transaction using a finger print of a terminal device to
evaluate earlier transactions taken by the terminal device and determine
whether to reject the transaction. Appeal Br. 12–13 (emphasis omitted); see
also id. at 13 (contending that these limitations recite a “specific manner of
applying the evaluated risk value in online transactions of a certain terminal
device based on the evaluation of earlier transactions”). Yet, the alleged
specificity of claim 1, standing alone, is insufficient to confer patent
eligibility. A specific abstract idea is still an abstract idea. Cf. Mayo,
566 U.S. at 88–89 (noting that “cases have not distinguished among different
laws of nature according to whether or not the principles they embody are
sufficiently narrow”) (citing Parker v. Flook, 437 U.S. 584 (1978) (holding
narrow mathematical formula unpatentable)).
Appellant argues that claim 1 is akin to the hypothetical, patent-
eligible claims of Examples 37 and 41 of the USPTO’s 2019 Subject Matter
Eligibility Examples: Abstract Ideas (the “Eligibility Examples”).2 Appeal
Br. 12–13. However, we find no parallel between Appellant’s claim 1 and
these hypothetical claims. Example 41, for example, is titled

2 Available at https://www.uspto.gov/sites/default/files/documents/
101_examples_37to42_20190107.pdf.
Appeal 2020-005910
Application 14/993,862

16
“Cryptographic Communications,” and analyzes a hypothetical claim that
recites mathematical formulas for encoding each message block word signal
into a ciphertext word signal. Eligibility Examples 14–15 (emphasis
omitted). Because the claim recites a mathematical formula, it falls into the
mathematical concepts grouping of abstract ideas. Id. at 15; see also MPEP
§ 2106.04(a). However, the claim recites a combination of additional
limitations (i.e., “receiving,” “transforming,” and “transmitting”) that
integrates the abstract idea (i.e., mathematical formulas) into a practical
application by securing private network communications so that a ciphertext
word signal can be transmitted between computers of people who have not
shared a private key in advance of the message being transmitted. Eligibility
Examples 15–16. In this way, the claimed invention improves prior methods
for establishing cryptographic communications. Id. at 14. Appellant argues
that claim 1 is similar to Example 41 because it recites additional elements
such as “recording” and “rejecting the transaction” that use the abstract idea
in a specific manner. Appeal Br. 12–13. However, Appellant fails to
persuade us that claim 1 pertains to an improvement to technology
comparable to the improved method for establishing cryptographic
communications recited in the hypothetical claim of Example 41.
For similar reasons, we are not persuaded that claim 1 is similar to
hypothetical claim 1 of Example 37. See id. at 13. Claim 1 of Example 37
recites a method of rearranging icons on a graphical user interface (GUI)
comprising steps of receiving, via the GUI, a user selection to organize each
icon; determining, by a processor, the amount of use of each icon over a
predetermined period of time; and automatically moving the most used icons
to a position on the GUI closes to the start icon based on the predetermined
Appeal 2020-005910
Application 14/993,862

17
amount of use. Eligibility Examples 2. Because the step of determining the
amount of use of each icon could be calculated mentally by a user,
hypothetical claim 1 falls into the mental processes grouping of abstract
ideas. See id.; see also MPEP § 2106.04(a). However, the hypothetical
claim additionally recites a combination of additional elements (i.e.,
“receiving” and “automatically moving”) that results in displaying icons on
a graphical user interface to a user based on the usage of each icon, thereby
providing an improvement over prior user interfaces for electronic devices.
Eligibility Examples 2–3. We find no comparable improvement to user
interfaces or other technology here.
Appellant additionally argues that claim 1 improves an online
transaction security or the technical field of cyber security “by identifying
risks in online transactions based on a use of a finger print of a terminal
device to evaluate in a very specific manner earlier transactions taken by that
terminal device to determine whether to reject a current transaction by the
terminal device.” Appeal Br. 14 (emphasis omitted). However, we are not
persuaded that using a finger print of a terminal device collected from a web
browser to evaluate the terminal device’s earlier transactions and determine
a transaction risk value is a technological improvement as opposed to an
improvement to the abstract idea of mitigating risk associated with a
transaction, which is not enough for patent eligibility. See SAP, 898 F.3d at
1170 (“[P]atent law does not protect such claims[, i.e., claims to an asserted
advance in the realm of abstract ideas], without more, no matter how
groundbreaking the advance.”).
To the extent that Appellant argues that claim 1 improves online
transaction security and/or cyber security by improving the information
Appeal 2020-005910
Application 14/993,862

18
collected and analyzed to include a finger print of a terminal device, this
argument is unpersuasive. See BSG Tech LLC v. BuySeasons, Inc., 899 F.3d
1281, 1288 (Fed. Cir. 2018) (“[A]n improvement to the information stored
by a database is not equivalent to an improvement in the database’s
functionality.”). “As many cases make clear, even if a process of collecting
and analyzing information is ‘limited to particular content’ or a particular
‘source,’ that limitation does not make the collection and analysis other than
abstract.” SAP, 898 F.3d at 1168 (citation omitted). The “character of [the]
information simply invokes a separate category of abstract ideas.” Id. Such
an asserted improvement “lies entirely in the realm of abstract ideas, with no
plausibly alleged innovation in the non-abstract application realm.” Id. at
1163.
For similar reasons, we are not persuaded that claim 1 is similar to
claim 2 of Example 45 of the USPTO’s Appendix 1 to the October 2019
Update: Subject Matter Eligibility” (hereinafter “Additional Eligibility
Examples”).3 Appeal Br. 15–16. Example 45 pertains to a controller for an
injection mold. Additional Eligibility Examples 18. Hypothetical, patent-
eligible claim 2 of Example 45 depends from hypothetical, patent-ineligible
claim 1. Id. at 20. Hypothetical claim 1 recites a controller for an injection
molding apparatus configured to (a) repeatedly obtain temperature
measurements; (b) calculate an extent of curing completion; and (c)
determine the extent of curing as a percentage. Id. Example 45 provides
that limitations (b) and (c) of claim 1 fall into the “mathematical
calculations” grouping of abstract ideas. Id. at 21–22. Limitation (a) and

3 Available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_app1.pdf.
Appeal 2020-005910
Application 14/993,862

19
the “controller” configured to perform limitations (a) through (c) are the
additional elements. Id. at 22. But Example 45 explains that these elements,
even when viewed in combination, do not integrate the abstract idea into a
practical application or provide an inventive concept. Id. at 22–23.
Hypothetical claim 2 recites the same abstract idea as hypothetical
claim 1 (i.e., the mathematical concepts recited in claim 1’s limitations (b)
and (c)). Id. at 24. However, it additionally recites limitation (d), which
specifies that the control signals are sent to the injection molding apparatus
once the polyurethane reaches a target percentage. Id. at 20, 24.
Example 45 explains that limitation (d) in combination with the other
limitations uses the calculated percentage of an extent of cure to control the
operation of the injection molding apparatus. Id. at 24. By opening the
mold and ejecting the molded polyurethane when the target percentage of
cure is reached, the claimed controller avoids technical problems associated
with undercure and overcure that compromise the polyurethane’s strength
and wear performance. Id. Claim 2, thus, improves upon previous
controllers used in the technical field of injection molding. Id. It also uses
information from the mathematical concepts (i.e., the abstract ideas) to take
corrective action and control the injection molding apparatus in a particular
way that integrates the abstract idea into an overall control scheme. Id.
Appellant does not identify any comparable technological improvement
recited in the additional elements of claim 1. See Appeal Br. 15–16.
Appellant argues that the claimed invention “help[s] with
guaranteeing network subscriber’s fund security in online shopping or
financing while putting less burden (e.g., ‘authenticating an identification of
an account by using a security digital certificate’) on users when conducting
Appeal 2020-005910
Application 14/993,862

20
online transactions.” Appeal Br. 16–17 (citing Spec. ¶¶ 5, 33, 74, 96).
Appellant’s Specification provides that the claimed invention uses
“information analysis and data modeling on internet terminal devices used in
the online transactions” to “identify a risk value in the online transactions”
to “help guarantee users’ fund security in online transactions.” Spec. ¶¶ 33,
74; see also id. ¶ 96. To this end, claim 1 calculates a “transaction risk
value” representing a transaction risk of using a terminal device based on,
for example, the total number of different accounts, the total number of
logins, the time duration, and the total transaction amount (limitation (f)).
Appellant’s Specification describes that “as the total transaction amount
conducted over the internet grows, transaction security becomes an issue.”
Id. ¶ 4. “[I]f the [terminal] device has too many accounts [(e.g., one or two
being a reasonable number of accounts)], it indicates that the device has a
poor privacy feature, and even has a risk of being used maliciously.” Id.
¶ 48. If the device has “too high total number of logins, it implies that the
terminal device may be maliciously used.” Id. ¶ 51. Here, we are not
persuaded that the particular data analysis recited in claim 1 for rejecting
online transactions is a technological improvement, as opposed to an
improvement to a process for managing risk in online transactions, i.e., the
abstract idea itself.
Here, we agree with the Examiner that the only additional elements
recited in claim 1 beyond the abstract idea are a “web browser,” “terminal
device,” and that the transaction is “online.” Appellant’s Specification
makes clear that the claimed invention is implemented using generic
computer components to perform generic computer functions. See Spec.
¶¶ 72, 98, 100. We find no indication in the Specification that the method
Appeal 2020-005910
Application 14/993,862

21
steps recited in claim 1 require any specialized computer hardware or other
inventive computer components, i.e., a particular machine, invoke any
allegedly inventive programming, or that the claimed invention is
implemented using other than generic computer components to perform
generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no
doubt: recitation of generic computer limitations does not make an otherwise
ineligible claim patent-eligible.”).
Appellant misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 is patent eligible because the claim presents
no risk of preemption. Appeal Br. 18–20. Although the Supreme Court has
described “the concern that drives [the exclusion of abstract ideas from
patent-eligible subject matter] as one of pre-emption,” Alice Corp., 573 U.S.
at 216, characterizing preemption as a driving concern for patent eligibility
is not the same as characterizing preemption as the sole test for patent
eligibility. “The Supreme Court has made clear that the principle of
preemption is the basis for the judicial exceptions to patentability” and “[f]or
this reason, questions on preemption are inherent in and resolved by the
§ 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371,
1379 (Fed. Cir. 2015) (citing Alice Corp., 573 U.S. at 216). “[P]reemption
may signal patent ineligible subject matter, [but] the absence of complete
preemption does not demonstrate patent eligibility.” Id
We conclude, for the reasons outlined above, that claim 1 recites a
method of organizing human activity, i.e., an abstract idea, and that the
additional elements recited in the claim beyond the abstract idea are no more
than generic computer components used as tools to perform the recited
Appeal 2020-005910
Application 14/993,862

22
abstract idea. As such, they do not integrate the abstract idea into a practical
application. See Alice, 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.’” (quoting Mayo,
566 U.S. at 77) (alteration in original)). Accordingly, we agree with the
Examiner that claim 1 is directed to an abstract idea.
Step Two of the Mayo/Alice Framework (Guidance, Step 2B)
Having determined under step one of the Mayo/Alice framework that
claim 1 is directed to an abstract idea, we next consider under Step 2B of the
Guidance, the second step of the Mayo/Alice framework, whether claim 1
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. MPEP § 2106.05(I);
Guidance, 84 Fed. Reg. at 56. We agree with the Examiner that it does not.
The Examiner determined here, and we agree, that the only additional
elements recited in claim 1, beyond the abstract idea, are a “website,” “a
terminal device,” and that the transaction is conducted “online.” Put simply,
the additional elements require no more than generic computer components.
See Spec. ¶¶ 72, 97, 100. Appellant cannot reasonably maintain that there is
insufficient factual support for the Examiner’s determination that these
components are well-understood, routine, or conventional, where, as here,
there is nothing in the Specification to indicate that the operations recited in
claim 1 require any specialized hardware or inventive computer components
or that the claimed invention is implemented using other than a generic
computer component to perform generic computer functions, e.g., receiving,
Appeal 2020-005910
Application 14/993,862

23
processing, and transmitting information. Indeed, the Federal Circuit, in
accordance with Alice, has “repeatedly recognized the absence of a genuine
dispute as to eligibility” where claims have been defended as involving an
inventive concept based “merely on the idea of using existing computers or
the Internet to carry out conventional processes, with no alteration of
computer functionality.” Berkheimer v. HP Inc., 890 F.3d 1369, 1373 (Fed.
Cir. 2018) (Moore, J., concurring) (internal citations omitted); see also BSG
Tech, 899 F.3d at 1291 (“BSG Tech does not argue that other, non-abstract
features of the claimed inventions, alone or in combination, are not well-
understood, routine and conventional database structures and activities.
Accordingly, the district court did not err in determining that the asserted
claims lack an inventive concept.”).
Citing BASCOM Global Internet Services, Inc. v. AT&T Mobility
LLC, 827 F.3d 1341 (Fed. Cir. 2016), Appellant argues that the claimed
invention is like the content filtering system of BASCOM because it
improves online transaction security or cyber security by identifying risks in
online transactions based on the use of a finger print of a terminal device and
an evaluation of earlier transactions taken by that terminal device. See
Appeal Br. 20–25. But, we can find no parallel between claim 1 and the
claims at issue in BASCOM. There, the Federal Circuit determined that the
claims were directed to a technology-based solution to filter Internet content
that overcame existing problems with other Internet filtering systems by
taking a known filtering solution — i.e., a “one-size-fits-all” filter at an
Internet Service Provider (“ISP”) — and making it more dynamic and
efficient by providing individualized filtering at the ISP. BASCOM, 827
F.3d at 1351. The court, thus, held that the second step of
Appeal 2020-005910
Application 14/993,862

24
the Mayo/Alice framework was satisfied because the claimed invention
“represents a ‘software-based invention[ ] that improve[s] the performance
of the computer system itself.”’ Id. Unlike the filtering system
improvements in BASCOM that added significantly more to the abstract
idea, Appellant’s claim 1 uses generic computing components to implement
an abstract idea, i.e., managing risk in online transactions.
Appellant also misapprehends the controlling precedent to the extent
Appellant maintains that claim 1 is patent eligible, i.e., that the claim
includes an “inventive concept,” because it allegedly is novel and non-
obvious in view of the cited prior art. See Appeal Br. 20–21. Neither a
finding of novelty nor a non-obviousness determination automatically leads
to the conclusion that the claimed subject matter is patent eligible. Although
the second step in the Mayo/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 (citation omitted) (alteration in original).
“Groundbreaking, innovative, or even brilliant discovery does not by itself
satisfy the § 101 inquiry.” Ass’n for Molecular Pathology, 569 U.S. at 591.
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.”).
Appeal 2020-005910
Application 14/993,862

25
Accordingly, we are not persuaded, on the present record, that the
Examiner erred in rejecting independent claim 1 under 35 U.S.C. § 101.
Therefore, we sustain the Examiner’s rejection under 35 U.S.C. § 101 of
claim 1 and claims 12 and 23, which fall with claim 1. Appellant argues that
the dependent claims are patent-eligible for the same reasons as the
independent claims. Appeal Br. 25. Therefore, we sustain the rejection of
the dependent claims under 35 U.S.C. § 101 for the same reasons set forth
above with respect to the independent claims.
CONCLUSION

Claim(s)
Rejected
35 U.S.C.
§
Basis Affirmed Reversed
1, 7–12,
18–29
101 Eligibility 1, 7–12,
18–29

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