Ashish Aggarwal et al.Download PDFPatent Trials and Appeals BoardAug 1, 201913194960 - (D) (P.T.A.B. Aug. 1, 2019) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 13/194,960 07/31/2011 Ashish Aggarwal 15548.0282 1031 27890 7590 08/01/2019 STEPTOE & JOHNSON LLP 1330 CONNECTICUT AVENUE, N.W. WASHINGTON, DC 20036 EXAMINER BARTLEY, KENNETH ART UNIT PAPER NUMBER 3693 NOTIFICATION DATE DELIVERY MODE 08/01/2019 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): hfox@steptoe.com ipdocketing@steptoe.com lfielding@steptoe.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte ASHISH AGGARWAL, THOMAS C. BARRENTINE, WILLIAM R. BENNETT, SARAH JOANNA PHILIP CLAYTON, NORMAN RONALD DOWNEY III, CHRISTOPHER B. EWING, WARREN D. HENRY SR., PATRICK G. HRDY, TABITHA T. LEECH, SHELBY S. MACKEY, LEE A. McDAVID JR. GREG MICHAELSON, ARTHUR J. SHARBEL III, HEATHER N. SMITH and ELIZABETH D. WRIGHT ____________________ Appeal 2018-004180 Application 13/194,9601 Technology Center 3600 ____________________ Before JASON V. MORGAN, JON M. JURGOVAN, and DAVID J. CUTITTA II, Administrative Patent Judges. CUTITTA, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from a final rejection of claims 1–21, all of the claims pending in the application. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 Appellants identify Regions Financial Corporation as the real party in interest. See Br. 3. Appeal 2018-004180 Application 13/194,960 2 STATEMENT OF THE CASE Invention According to Appellants, the claimed invention relates to using a decision tree to “sequentially and dynamically evaluate[] specific decision points to assign a risk rating to loans and other assets and/or commitments which warrant risk ratings in the regulatory space.” Spec. 2:6–8.2 Representative Claim Claims 1 and 12 are independent. Claim 1, reproduced below with bracketed material added, is representative of the claimed subject matter: 1. A data storage and retrieval system for evaluating a sequence of decision points comprising: [(a)] a computer-implemented data management repository system that receives and stores investment data from a financial institution, [(b)] calculates key metrics by generating a debt service coverage ratio and a loan to value ratio for an investment, wherein the investment data and calculations specifically distinguish one regulatory risk rating from another; [(c)] transmits the investment data and key metrics to the decision tree based processing system for assessment and processing; and [(d)] a computer-implemented decision tree based processing system; wherein: 2 This Decision refers to: (1) Appellant’s Specification filed July 31, 2011 (Spec.); (2) the Final Office Action (Final Act.) mailed April 20, 2017; (3) the Appeal Brief (Br.) filed November 28, 2017; (4) and the Examiner’s Answer (Ans.) mailed January 10, 2018. Appeal 2018-004180 Application 13/194,960 3 [(e)] said computer-implemented decision tree based processing system is coupled to the computer-implemented data management repository system, [(f)] and wherein the decision tree based processing system receives the transmitted key metrics, [(g)] defines and selects components of the key metrics [(h)] and receives subjective responses that augment the selected components of the key metrics and distinguish among regulatory risk ratings, [(i)] said investment data calculations, and assessments of factors that distinguish among regulatory risk ratings are input into the decision tree based processing system; and [(j)] said computer-implemented decision tree based processing system sequentially and dynamically evaluates decision points to assign a risk rating to the investment, [(k)] wherein the evaluation sequence of decision points is determined by the outcome of previous decision points and the system allows for a differential sequential evaluation of the decision points. Br. 11–12. REFERENCES The Examiner relies upon the following prior art3 in rejecting the claims on appeal: Fletcher US 6,112,190 Aug. 29, 2000 Friedman US 2005/0278246 A1 Dec. 15, 2005 Mahoney US 7,287,008 B1 Oct. 23, 2007 Wesley US 7,558,756 B1 July 7, 2009 Rafael Olivas, Decision Trees - A Primer for Decision-making Professionals (2007) (“Olivas”). 3 All citations to the references use the first-named inventor only. Appeal 2018-004180 Application 13/194,960 4 Mondaq Ltd., SEC to Consider Proposal Regarding Status under the Advisers Act of Broker-Dealers That Provide Advisory Services, Mondaq Business Briefing (2005) (“SEC”). REJECTIONS Claims 1–21 stand rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. See Final Act. 8–15. Claims 1–11 stand rejected under 35 U.S.C. § 112, first paragraph as failing to comply with the written description requirement. See Final Act. 12–13. Claims 1–11 stand rejected under 35 U.S.C. § 112, second paragraph as indefinite. See Final Act. 14. Claims 1, 2, 4, and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fletcher, Friedman, and Olivas. See Final Act. 15–23. Claim 3 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fletcher, Friedman, Olivas, and SEC. See Final Act. 23–24. Claims 5–7 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fletcher, Friedman, Olivas, and Wesley. See Final Act. 25–26. Claims 9–11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Fletcher, Friedman, Olivas, and Mahoney. See Final Act. 27–28. Claims 12–14 and 18 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Friedman, Fletcher, and Olivas. See Final Act. 28–35. Appeal 2018-004180 Application 13/194,960 5 Claims 15–17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Friedman, Fletcher, Olivas, and Wesley. See Final Act. 35–36. Claims 19–21 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over the combination of Friedman, Fletcher, Olivas, and Mahoney. See Final Act. 37–38. Our review in this appeal is limited to the above rejections and the issues raised by Appellants. Arguments not made are waived. See MPEP § 1205.02; 37 C.F.R. § 41.37(c)(1)(iv). ANALYSIS Rejection under 35 U.S.C. § 101 I. Principles of Law An invention is patent-eligible if it claims a “new and useful process, machine, manufacture, or composition of matter.” 35 U.S.C. § 101. However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. E.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). In determining whether a claim falls within an excluded category, we are guided by the Supreme Court’s two-step framework, described in Mayo and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework, we first determine what concept the claim is “directed to.” See id. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the use of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 Appeal 2018-004180 Application 13/194,960 6 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”). Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67–68 (1972)). Concepts determined to be patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1853))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))). In Diehr, the claim at issue recited a mathematical formula, but the Supreme Court held that “[a] claim drawn to subject matter otherwise statutory does not become nonstatutory simply because it uses a mathematical formula.” Diehr, 450 U.S. at 176; see also id. at 191 (“We view respondents’ claims as nothing more than a process for molding rubber products and not as an attempt to patent a mathematical formula.”). Having said that, the Supreme Court also indicated that a claim “seeking patent protection for that formula in the abstract . . . is not accorded the protection of our patent laws, . . . and this principle cannot be circumvented by attempting to limit the use of the formula to a particular technological environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now commonplace that an application of a law of nature or mathematical formula Appeal 2018-004180 Application 13/194,960 7 to a known structure or process may well be deserving of patent protection.”). If the claim is “directed to” an abstract idea, we turn to the second step of the Alice and Mayo framework, where “we must examine the elements of the claim to determine whether it contains an ‘inventive concept’ sufficient to ‘transform’ the claimed abstract idea into a patent- eligible application.” Alice, 573 U.S. at 221. “A claim that recites an abstract idea must include ‘additional features’ to ensure ‘that the [claim] is more than a drafting effort designed to monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo, 566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[] fail[s] to transform that abstract idea into a patent-eligible invention.” Id. The PTO recently published revised guidance on the application of § 101. See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (USPTO Jan. 7, 2019) (“Guidance”). Under that guidance, we first look to whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activities such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h) (9th ed. Rev. 08.2017, Jan. 2018)). Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: Appeal 2018-004180 Application 13/194,960 8 (3) adds a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field (see MPEP § 2106.05(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See Guidance, 84 Fed. Reg. at 56. II. The Examiner’s § 101 Rejection The Examiner determines that representative4 claim 1 is directed to a judicial exception: an abstract idea. See Final Act. 8–10; Ans. 5–7. According to the Examiner, claim 1 recites “the concept of evaluating risk using a decision tree, which corresponds to concepts identified as abstract ideas by the courts” because “[a]ll of these concepts relate to automation of concepts in the economy and commerce and as claimed are fundamental economic practices.” Final Act. 9. The Examiner also determines “[t]he claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea.” Id. We analyze the claims and the Examiner’s rejection in view of the Guidance and we adopt the nomenclature for the steps used in the Guidance. 4 Appellants argue the claims as a group. See Br. 5–8. We, thus, select independent claim 1 as representative of claims 1–21. See 37 C.F.R. § 41.37(c)(1)(iv). Appeal 2018-004180 Application 13/194,960 9 III. Step 1 in the Guidance (Statutory Class) Analyzing the Examiner’s rejection in view of the Guidance, we must first determine whether the claim is directed to a statutory class of invention. Section 101 provides that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.” 35 U.S.C. § 101. Independent claim 1 recites a data storage and retrieval system and independent claim 12 recites a computer-implemented method. As such, the claims are directed to statutory classes of invention within 35 U.S.C. § 101, i.e., a machine and a process, respectively. IV. Step 2A, Prong 1 in the Guidance (Alice/Mayo–Step 1) (Judicial Exceptions) Next, we determine whether claim 1, being directed to a statutory classes of invention, nonetheless falls within a judicial exception. See Guidance, 84 Fed. Reg. at 51. Apart from generic hardware and extra- solution activity discussed separately below, claim 1 recites (a) a computer- implemented data management repository system that” (b) calculates key metrics by generating a debt service coverage ratio and a loan to value ratio for an investment” and (d) “a computer-implemented decision tree based processing system” that (g) “defines and selects components of the key metrics,” (j) “sequentially and dynamically evaluates decision points to assign a risk rating to the investment,” (k) “wherein the evaluation sequence of decision points is determined by the outcome of previous decision points and the system allows for a differential sequential evaluation of the decision points.” Br. 11–12. Appeal 2018-004180 Application 13/194,960 10 At a high level, as determined by the Examiner, these claimed steps “describe the concept of evaluating [investment] risk using a decision tree.” Final Act. 9. We therefore agree with the Examiner that these limitations recite a fundamental economic practice (see Final Act. 9) as they “assign a risk rating to loans and other assets and/or commitments which warrant risk ratings in the regulatory space (Spec. 2:6–9).” Fundamental economic practices fall into the category of certain methods of organizing human activity and claim 1, therefore, recites a judicial exception, i.e., an abstract idea. See 84 FR 52. V. Step 2A, Prong Two in the Guidance (Integration into a Practical Application) Because claim 1 recites an abstract idea, we now determine whether the claim is directed to the abstract idea itself or whether it is instead directed to some technological implementation or application of, or improvement to, this idea, i.e., integrated into a practical application. See, e.g., Alice, 573 U.S. at 223, discussing Diehr, 450 U.S. at 175. We determine whether the recited judicial exception is integrated into a practical application of that exception by: (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception or exceptions; and (b) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application. The Examiner determines that in claim 1, “[t]here is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.” Final Act. 10. Appeal 2018-004180 Application 13/194,960 11 Appellants argue claim 1 “enhance[s] the functioning of the computer itself with the claimed . . . systems that improve the computer software’s abilities to both assess, integrate and improve the speed and accuracy of data flow.” Br. 8. We are not persuaded that the claimed abstract idea is integrated into a practical application. Aside from the abstract idea, claim 1 additionally recites a computer-implemented data management repository system that (a) receives and stores investment data from a financial institution and (c) transmits the investment data and key metrics. A mere data gathering step— such as recited in (a)—is insignificant extra-solution activity insufficient to render the claim patent-eligible. See In re Bilski, 545 F.3d at 963 (characterizing data gathering steps as insignificant extra-solution activity). Furthermore, a similar conclusion applies to the transmitting of data recited in (c). Specifically, such outputting of data is insignificant post-solution activity. Flook, 437 U.S. 584 at 590 (“[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance.). Claim 1 additionally recites (d) “a computer-implemented decision tree based processing system” that (f) “receives the transmitted key metrics,” (h) “receives subjective responses that augment the selected components of the key metrics” and (i) “said investment data calculations, and assessments of factors that distinguish among regulatory risk ratings are input into the decision tree based processing system.” As in the “computer-implemented data management repository system,” discussed above, such receiving and inputting of data is mere data gathering and recites insignificant extra- solution activity that is insufficient to render the claim patent-eligible. See Appeal 2018-004180 Application 13/194,960 12 In re Bilski, 545 F.3d at 963; see also Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) (“collecting data, . . . recognizing certain data within the collected data set, and . . . storing that recognized data in a memory.”). Appellants argue the claimed system represents an improvement to computer-related technology as in McRO, because the “system receives the transmitted key metrics from the data management repository, defines and selects components of the key metrics and receives subjective responses that augment the selected components of the key metrics and distinguish among regulatory risk ratings, the system allowing for a differential sequential evaluation of the decision points.” Br. 7 (citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). Appellants’ argument based on McRO is unpersuasive because Appellants’ claim 1 is unlike the claims in McRO. The patent at issue in McRO describes that, prior to the claimed invention, character animation and lip synchronization were accomplished by human animators with the assistance of a computer, and involved the use of a so-called “keyframe” approach in which animators set appropriate parameters, i.e., morph weights, at certain important times, i.e., in order to produce accurate and realistic lip synchronization and facial expressions. McRO, 837 F.3d. at 1305. Animators knew what phoneme a character pronounced at a given time from a time-aligned phonetic transcription (a “timed transcript”). Id. In accordance with the prior technique, animators, using a computer, manually determined the appropriate morph weight sets for each keyframe based on the phoneme timings in the timed transcript. Id. Appeal 2018-004180 Application 13/194,960 13 Thus, in McRO, the improvement in computer animation was realized by using “rules, rather than artists [i.e., human animators], to set the morph weights and transitions between phonemes” (id. at 1313 (citation omitted)), i.e., in McRO, the invention used “rules to automatically set a keyframe at the correct point to depict more realistic speech, achieving results similar to those previously achieved manually by animators.” Id. at 1307. The rules in McRO, thus, allowed the computer to solve a technological problem by producing accurate and realistic synchronization in animated characters that could only previously be produced by humans. In contrast with McRO, Appellants do not identify any specific rules in the claim that are used by the claimed computer system to solve a technological problem, let alone identify specific rules that act in the same way as the specific rules enabling the computer in McRO to generate computer animated characters. Rather, Appellants’ claim 1 merely calculates investment risk-related metrics and evaluates decision points input into a decision tree to assign a risk rating for an investment. No technological rules are identified in the claim; rather the claim broadly recites using “investment data calculations, and factors that distinguish among regulatory risk ratings” “to evaluate[] decision points to assign a risk rating to the investment.” Br. 12. We, therefore, find insufficient evidence to support Appellants’ argument that claim 1 is similar to the claim in McRO, where computers were unable to make certain subjective determinations, i.e., regarding morph weight and phoneme timings, which could only be made prior to the McRO invention by human animators. Also, we agree with the Examiner that the solution addressed by Appellants’ claim is a business problem, not a technical problem. Ans. 8 Appeal 2018-004180 Application 13/194,960 14 (“Using a computer-implemented decision tree to assign a risk rating to an investment is solving a business problem not a technical problem.”). Rather than addressing a problem unique to the technology in which the solution is implemented, Appellants’ claim 1 merely automates, using generic computer technology, a business process in which decision points are evaluated to assign a risk rating to investments. As set forth in the Specification, the invention “provides an objective process for generating a risk rating to these distressed loans and other assets” by “defining the components of selected key risk metrics” and “then augment[ing] these objective measures with more subjective responses [input by a user] to questions carefully focused on the factors that distinguish one regulatory risk rating from another.” Spec. 3:9–12. Thus, claim 1 is directed to rating investment risk, which is not an improvement to technology and does not recite a particular solution to a technological problem or a particular way to achieve a desired outcome by reciting an improvement to technology. See MPEP § 2106.05(a). In addition, Appellants’ claimed additional elements do not require a particular computer and so the claim also does not define or rely on a “particular machine.” See MPEP § 2106.05(b). Further, the claim does not transform matter; at best, it transforms information. That is, the claim simply manipulates and outputs data such as by calculating and transmitting key metrics. See MPEP § 2106.05(c); see also Benson, 409 at 71–72) (holding that a computer based algorithm that merely transforms data from one form to another is not patent-eligible). As such, the claim has no other meaningful limitations (see MPEP § 2106.05(e)), and merely recites instructions to execute an abstract idea on a generic computer hardware (see Appeal 2018-004180 Application 13/194,960 15 MPEP § 2106.05(f)), along with insignificant extra-solution activity. See MPEP § 2106.05(g). We, therefore, determine claim 1 is not directed to a specific asserted improvement in computer technology or otherwise integrated into a practical application and thus is directed to a judicial exception. VI. Step 2B in the Guidance (Alice/Mayo, Step 2) (Inventive Concept) Next, we determine whether the claim includes additional elements that provide significantly more than the recited judicial exception, thereby providing an inventive concept. Alice, 573 U.S. at 221 (quoting Mayo, 566 U.S. at 72–73). To determine whether the claim provides an inventive concept, the additional elements are considered—individually and in combination—to determine whether they (1) add a specific limitation beyond the judicial exception that is not “well-understood, routine, conventional” in the field or (2) simply append well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. Guidance, 84 Fed. Reg. at 56. The Examiner determines “[t]he use of generic computer components to perform functions such as receiving, calculating, generating, transmitting, defining and selecting, processing, inputting and (sequentially and dynamically) evaluating does not impose any meaningful limit on the computer implementation of the abstract idea.” Final Act. 10. Thus, “the additional elements do not amount to significantly more than the above- identified judicial exception (the abstract idea).” Id. We agree with the Examiner. Appeal 2018-004180 Application 13/194,960 16 Appellants argue the ordered combination of claim elements contains an inventive concept. See Br. 5–6. Specifically, Appellants argue [t]he claims are directed to significantly more than a fundamental economic practice” because, like the claims in Bascom, “[t]hey are directed to a specific system and methods in the field of data processing and computer networks with a particular combination of steps and elements that allow a differential sequential evaluation of the decision points.” Br. 7 (citing Bascom Global Internet Services v. AT&T Mobility, LLC, 827 F.3d 1341 (Fed. Cir. 2016)). The claims in Bascom described a particular arrangement of filtering software at a specific location, remote from the end-users, with customizable filtering features specific to each end user. The filtering software enabled individually customizable filtering at the remote ISP server by taking advantage of the technical ability of the ISP server to identify individual accounts and associate a request for Internet content with a specific individual account. The Federal Circuit recognized that Bascom’s installation of an Internet content filter at a particular network location was “a technical improvement over prior art ways of filtering such content” because such an arrangement advantageously allows the Internet content filter to have “both the benefits of a filter on a local computer and the benefits of a filter on the ISP server” and “give[s] users the ability to customize filtering for their individual network accounts.” Bascom, 827 F.3d at 1350, 1352. In contrast to Bascom, Appellants’ claim 1 is directed to a data storage and retrieval system for “generating a risk rating to these distressed loans and other assets.” Spec. 3:8–9. As recognized by the Examiner, “[t]he Appeal 2018-004180 Application 13/194,960 17 storage and retrieval and computer-implemented repository system are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications.” Final Act. 10. Appellants, in turn, do not identify the ordered combination in the claim that allegedly adds significantly more to the abstract idea to provide an inventive concept. Considering the claimed functions of those computing components, both separately and as an ordered combination, we agree with the Examiner that those computer functions are generic, routine, and conventional computer activities that are performed only for their conventional uses in an ordinary manner. See Elec. Power Grp. v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. Cir. 2016) (“The focus of the asserted claims . . . is on collecting information, analyzing it, and outputting certain results of the collection and analysis.”); see also In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316 (Fed. Cir. 2011) (“Absent a possible narrower construction of the terms ‘processing,’ ‘receiving,’ and ‘storing,’ . . . those functions can be achieved by any general purpose computer without special programming.”); see also Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014) (sequence of receiving, selecting, offering for exchange, display, allowing access, and receiving payment recited an abstraction). Indeed, the Specification describes that the computing elements are generic computing elements. See Spec. Fig. 1 (illustrating generic computing components used for both decision tree based processing system 300 and data management repository system 400). Additionally, Appellants’ argument that “the claims are specific and detailed” and recite “limitations, which together make clear that the field of Appeal 2018-004180 Application 13/194,960 18 data processing is not being tied up” does not persuade us that the claim is directed to patent-eligible subject matter. Br. 8. As noted by the Examiner (Ans. 10), although preemption may signal patent-ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). Where claims are deemed to recite only patent-ineligible subject matter under the Alice analysis, as they are here, “preemption concerns are fully addressed and made moot.” Id. We, thus, conclude that claim 1 does not provide an inventive concept because the additional elements recited in claim 1 do not provide significantly more than the recited judicial exception. Accordingly, claim 1 does not recite patent-eligible subject matter. Because claim 1 is argued as representative of the other claims, we also conclude that independent claim 12 and dependent claims 2–11 and 13–21 do not recite patent-eligible subject matter. Therefore, we sustain the rejection of claims 1–21 under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. Rejection Under 35 U.S.C. § 112, first paragraph The Examiner rejects claims 1–11 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. See Final Act. 13–14. Appellants do not provide arguments disputing the rejection. See Ans. 10–11. We, therefore, summarily affirm the rejection. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“When the appellant fails to contest a ground of rejection to the Board, . . . the Board may treat any argument with respect to that ground of rejection as waived.”). Appeal 2018-004180 Application 13/194,960 19 Rejection Under 35 U.S.C. § 112, second paragraph Claim 1 recites, in part, “calculates key metrics by generating a debt service coverage ratio and a loan to value ratio for an investment, wherein the investment data and calculations specifically distinguish one regulatory risk rating from another.” Br. 11. The Examiner rejects this limitation under 35 U.S.C. § 112, second paragraph, as indefinite. See Final Act. 14. Specifically, the Examiner finds claim 1 “has ‘the investment data and calculations specifically distinguish one regulatory risk rating from another’ where it is indefinite as to [how] data and calculations specifically distinguish one regulatory risk rating from another. Further there is no teaching in the disclosure as to how data and calculations can distinguish anything.” Final Act. 14. In response, Appellants argue claim 1 “recite[s] that investment data calculations, and assessments of factors that distinguish among regulatory risk ratings are input into the decision tree based processing system. Thus, the investment data and calculations contribute to the factors assessed by thethat [sic] specifically distinguishes one regulatory risk rating from another.” Br. 8. “The legal standard for definiteness is whether a claim reasonably apprises those of skill in the art of its scope.” In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994) (citation omitted). “‘[A] claim is indefinite when it contains words or phrases whose meaning is unclear.’” In re Packard, 751 F.3d 1307, 1310, 1314–15 (Fed. Cir. 2014) (citing Manual of Patent Examining Procedure (MPEP) § 2173.05(e)). We agree with the Examiner that the claim contains words or phrases whose meaning is unclear. The limitation at issue recites “calculations” that Appeal 2018-004180 Application 13/194,960 20 “specifically distinguish one regulatory risk rating from another” but it is not clear whether the recited calculations refer to the calculated key metrics recited in the same limitation or some other calculations not recited in the claim. Accordingly, for this reason alone we affirm the Examiner’s § 112, second paragraph rejection. The Examiner further notes that according to the Specification, all three of (1) the received investment data, (2) calculations, and (3) subjective assessments of factors must be input to the decision tree and that claim 1 only recites calculating the key metrics using (1) the received investment data and (2) calculations. See Ans. 11 (citing Spec. 5:27–30). Appellants, by not filing a Reply Brief, do not address this issue. Although Appellants’ remarks are not sufficiently responsive to the Examiner’s concerns we note that the issues raised by the Examiner would be more properly addressed under 35 U.S.C. § 112, first paragraph. Setting aside the ambiguity discussed above and assuming that the “calculations” referred to in line 6, correspond to the “calculates key metrics” of line 5, claim 1 broadly recites the function of calculating and the result obtained from the calculating, i.e., “calculations [that] specifically distinguish one regulatory risk rating from another.” The Specification, as noted by the Examiner, does not explain how this result is obtained. See Ans. 11; Spec. 5:28–31. The written description requirement is not met if the specification merely describes a “desired result” using functional language. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). For software, this can occur when the algorithm or steps for performing the computer function are not explained at all or are not explained in sufficient detail in the specification. It is not enough that one Appeal 2018-004180 Application 13/194,960 21 skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc., 782 F.3d 671, 681–683 (Fed. Cir. 2015); MPEP 2161.01(1). In summary, we sustain the Examiner’s 112, second paragraph, rejection because it is unclear whether the recited calculations in claim 1 refer to the calculated key metrics recited in the same limitation or some other calculations not recited in the claim.5 Rejection Under 35 U.S.C. § 103(a) Claim 1 is rejected under 35 U.S.C. § 103(a) over the combination of Fletcher, Friedman, and Olivas. See Final Act. 15–22. Claim 1 recites, in part, “said computer-implemented decision tree based processing system sequentially and dynamically evaluates decision points to assign a risk rating to the investment.” Br. 12. The Examiner finds Fletcher’s disclosure of using a computer-based “evidence tree that includes a generalized weighing approach to represent how credit officers evaluate objective and subjective elements of a credit decision” teaches using a decision tree to assign a risk rating to an investment, as in claim 1. Final Act. 19 (citing Fletcher 6:42– 55). The Examiner finds Olivas’s general discussion of decision trees 5 In the event of further prosecution, we suggest the Examiner reject claim 1 under 35 U.S.C. § 112, first paragraph, for the same reasoning presented in the 35 U.S.C. § 112, second paragraph, rejection in the Final Action and the Answer. See Final Act. 13–14; Ans. 11. We also note that there are other antecedent basis issues including for “decision tree based processing system” in lines 8–9 of claim 1. See Br. 11. Appeal 2018-004180 Application 13/194,960 22 teaches that decision trees are effective for dynamic and sequential decision making because decision trees “quickly express complex alternatives clearly” and are “helpful in comprehending sequential decisions and outcome dependencies.” Final Act. 21–22 (citing Olivas § 1.1). The Examiner determines “[i]t would have been obvious to one of ordinary skill in the art at the time of invention to include in the evidence (decision) tree method and system of the combined references [Fletcher and Friedman] the ability to use decision trees for sequential and dynamic analysis as taught by Olivas.” Final Act. 22. Appellants dispute the Examiner’s factual findings. Appellants argue Olivas does not teach the disputed limitation, because Olivas: is a general document on decision trees, referencing a graphic showing chance events and possible outcomes. This in no way, teaches or suggests a computer-implemented decision tree based processing system sequentially and dynamically evaluates decision points to assign a risk rating to the investment, let alone one that receives subjective responses that augment the selected components of the key metrics and distinguish among regulatory risk ratings, said investment data calculations, and assessments of factors that distinguish among regulatory risk ratings, and allowing for a differential sequential evaluation of the decision points. Br. 9–10. We are unpersuaded because we agree with the Examiner that “Appellant[s are] using piecemeal analysis to argue their claims.” Ans. 13. The Examiner relies on the combination of Olivas with Fletcher and Friedman, not Olivas alone, to teach the disputed limitation. By arguing Olivas alone, rather than the cited combination of references, Appellants’ argument does not address the actual reasoning of the Examiner’s rejection. Appeal 2018-004180 Application 13/194,960 23 Appellants, consequently, have not shown error in the Examiner’s factual findings. Accordingly, we sustain the Examiner’s 35 U.S.C. § 103(a) rejection of independent claim 1 as well as the rejection of independent claim 12, and dependent claims 2–11 and 13–20, which are not argued separately. See Br. 9–10. DECISION We affirm the Examiner’s decision to reject claims 1–21 under 35 U.S.C. § 101. We affirm the Examiner’s decision to reject claims 1–11 under 35 U.S.C. § 112(a). We affirm the Examiner’s decision to reject claims 1–11 under 35 U.S.C. § 112(b). We affirm the Examiner’s decision to reject claims 1–21 under 35 U.S.C. § 103(a). 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. § 41.50(f). 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