CUneXus Solutions

Patent Trials and Appeals Board

Mar 18, 2021

2020004701 (P.T.A.B. Mar. 18, 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.
14/968,824 12/14/2015 David A. Buerger DBUE 00102 C1US 2205
64458 7590 03/18/2021
Hemingway & Hansen, LLP
1700 Pacific Avenue
Suite 4800
Dallas, TX 75201
EXAMINER
WALSH, EMMETT K
ART UNIT PAPER NUMBER
3628
NOTIFICATION DATE DELIVERY MODE
03/18/2021 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):
ehartman@hh-iplaw.com
shemingway@hh-iplaw.com
stompkins@hh-iplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte DAVID A. BUERGER, DARIN L. CHONG, and
JOHN REICH
____________

Appeal 2020-004701
Application 14/968,824
Technology Center 3600
____________

Before BIBHU R. MOHANTY, CYNTHIA L. MURPHY, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–57. We have jurisdiction under
35 U.S.C. § 6(b). Oral arguments were presented on March 11, 2021 by
telephone.

SUMMARY OF THE DECISION
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real parties in interest as
David A Buerger, Darin L. Chong, and John Reich. Appeal Br. 2.
Appeal 2020-004701
Application 14/968,824

2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to the field of evaluation of
customers and development and provision of multiple types of varied and
pre-approved customer product offers for on-demand acceptance and
fulfillment (Spec. para. 3). Claim 41, reproduced below with the italics
added, is representative of the subject matter on appeal.

41. A method comprising the steps of:
providing a communications interface for
communications to a first hardware data processor
through a transceiver subsystem and one or more
input/output ports located on said home network coupled
to said first hardware data processor;
accessing one or more of a plurality of non-
transitory storage devices using the first hardware data
processor;
determining, using the first hardware data
processor on a home hardware data processor subsystem,
a qualification level for one or more clients of said
predetermined financial institution, said qualification
level determination is made using a relationship
rules subprogram operating under one or more
relationship rules and a pre-filter subprogram to analyze
a plurality of credit data entries in a data matrix stored
in one or more of said plurality of non-transitory storage
devices, said qualification level will define one or more
loan products that will be offered to said one or more
clients on a preapproved basis, said credit data entries in
the data matrix include customer account data and credit
score data,
assigning a profile code corresponding to the one
or more pre-approved loan products extended to the one
or more clients of said predetermined financial
institution,
transmitting an electronic communication to said
one or more clients of said predetermined financial
Appeal 2020-004701
Application 14/968,824

3

institution from one or more input/output ports coupled
to said first hardware data processor, said electronic
communication indicating the one or more pre-approved
loan products approved for said one or more clients on
pre-approved basis, and said pre-approved loan products
capable of being funded and fulfilled by said first
hardware data processor on a real-time, immediate basis
upon acceptance by the one or more clients without the
need for further applications processing, evaluations, or
approvals from the predetermined financial institution;
receiving an acceptance communication from said
one or more clients of said predetermined financial
institution as to the one or more pre-approved loan
products being accepted by said of one or more clients,
said acceptance communication received through said
input/output port including data fields for loan type, loan
amount, loan term, down payment amount, funds
destination and selectable options specific to the
preapproved loan product, said acceptance
communication being received by said first hardware
data processor through said input/output port on said first
hardware data processor;
initiating, by the first hardware data processor, the
facilitation and funding of said loan products to said one
or more clients on an immediate, real-time basis using a
fulfillment subprogram without the need for further
application processing, information relating to
evaluations or approvals from the predetermined
financial institution;
maintaining information on one or more of said
plurality of non-transitory storage devices coupled to said
first hardware data processor related to the accepted
offers and fulfilled loan products associated with said
one or more clients of said predetermined
financial institution;
updating information on said one or more of
said plurality of non-transitory storage devices to reflect
the products fulfilled for said one or more clients of said
Appeal 2020-004701
Application 14/968,824

4

predetermined financial institution as fulfilled on an
immediate, real-time basis; and
updating said information on said one or more of
said plurality of non-transitory storage devices to remove
loan product offers that are no longer available after
being fulfilled for said one or more client of said
predetermined financial institution.

THE REJECTION
The following rejection is before us for review:2
Claims 21–57 are rejected under 35 U.S.C. § 101 as being directed to
non-statutory subject matter.

FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.3

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 41 is improper
because the claim is not directed to an abstract idea (Appeal Br. 64–66;
Reply Br. 8–10). The Appellant also argues the claim is integrated into a

2 The Final Office Action at page 5 indicated that claims 41–56 were rejected
under 35 U.S.C. § 112(b). The Answer at page 3 indicates that the rejection
of claims 41–53 under 35 U.S.C. § 112(b) is withdrawn. The omission of
claims 54–56 from being listed as withdrawn is considered a typographical
error.
3 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
Appeal 2020-004701
Application 14/968,824

5

practical application (Appeal Br. 67–75; Reply Br. 10–15). The Appellant
argues further that the claim is “significantly more” than the alleged abstract
idea (Appeal Br. 75–87; Reply Br. 15–18).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 6–17; Ans. 3–16).
We agree with the Examiner. 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. v. CLS
Bank Int’l, 573 U.S. 208, 216 (2014).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Id. at 217–18 (citing Mayo Collaborative Servs. v. Prometheus
Labs., Inc., 566 U.S. 66, 75–77 (2012)). In accordance with that framework,
we first determine what concept the claim is “directed to.” See Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk . . . .”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
Appeal 2020-004701
Application 14/968,824

6

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 (1854))); 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 187; 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. (internal citation omitted) (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 to a known structure or process may well be
deserving of patent protection.”).
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Guidance”). Under the
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
Appeal 2020-004701
Application 14/968,824

7

organizing human activity such as a fundamental economic
practice, or mental processes); and
(2) additional elements that integrate the judicial exception into
a practical application, i.e., evaluate whether the claim
“appl[ies], rel[ies] on, or use[s] 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.” (see Guidance, 84 Fed. Reg.
at 54; see also MPEP § 2106.05(a)–(c), (e)–(h)).
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:
(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.
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 (citation omitted). “A claim
that recites an abstract idea must include ‘additional features’ to ensure ‘that
the [claim] is more than a drafting effort designed to monopolize the
[abstract idea].’” Id. (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 Specification at paragraph 3 states that the invention generally
relates to the field of evaluation of customers and development and
Appeal 2020-004701
Application 14/968,824

8

provision of multiple types of varied and pre-approved customer product
offers for on-demand acceptance and fulfillment. Here, the Examiner has
determined that the claim sets forth a certain method of organizing human
activities in being a method for offering pre-approved loan products on a
real-time basis and for processing acceptance thereof (Final Act. 12). We
substantially agree with the Examiner. We determine that the claim sets
forth the subject matter in italics above which describes the concept of: [1]
“determining . . . a qualification level for one or more clients of said
predetermined financial institution, said qualification level determination is
made using a relationship rules subprogram operating under one or more
relationship rules and a pre-filter subprogram to analyze a plurality of credit
data entries in a data matrix”; [2] “assigning a profile code corresponding to
the one or more pre-approved loan products extended to the one or more
clients of said predetermined financial institution”; [3] “transmitting an
electronic communication to said one or more clients of said predetermined
financial institution . . . said electronic communication indicating the one or
more pre-approved loan products approved for said one or more clients on
pre-approved basis, and said pre-approved loan products capable of being
funded and fulfilled . . . on a real-time, immediate basis upon acceptance by
the one or more clients without the need for further applications processing,
evaluations, or approvals from the predetermined financial institution”; [4]
“receiving an acceptance communication from said one or more clients of
said predetermined financial institution as to the one or more pre-approved
loan products being accepted by said of one or more clients . . . including
data fields for loan type, loan amount, loan term, down payment amount,
funds destination and selectable options specific to the preapproved loan
Appeal 2020-004701
Application 14/968,824

9

product”; [5] “initiating . . . the facilitation and funding of said loan products
to said one or more clients on an immediate, real-time basis . . . without the
need for further application processing, information relating to evaluations
or approvals from the predetermined financial institution”; [6] “maintaining
information . . . related to the accepted offers and fulfilled loan products
associated with said one or more clients of said predetermined financial
institution”; [7] “updating information . . . to reflect the products fulfilled for
said one or more clients of said predetermined financial institution as
fulfilled on an immediate, real-time basis”; and [8] “updating said
information . . . to remove loan product offers that are no longer available
after being fulfilled for said one or more client of said predetermined
financial institution,” which is a method of determining qualification levels
for loan products and processing acceptance of that product, and is a certain
method of organizing human activities and fundamental economic practice,
i.e., a judicial exception.
In Mortgage Grader, Inc. v. First Choice Loan Services Inc., 811 F.3d
1314, 1324 (Fed Cir. 2016) it was held that claims drawn to a borrower
applying for a loan, a third party calculating the borrower’s credit grading,
lenders provide loan pricing information to the third party based on the
borrower’s credit grading, and only thereafter (at the election of the
borrower) the borrower disclosing its identity to a lender—could all be
performed by humans without a computer and was directed to an abstract
concept. In Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir.
2012) claims drawn to processing loan information through a clearinghouse
was held to be drawn to an abstract concept. See also Electric Power
Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016) (holding that
Appeal 2020-004701
Application 14/968,824

10

collecting information, analyzing it, and displaying results from certain
results of the collection and analysis to be an abstract idea). A method, like
the claimed method, “a process that employs mathematical algorithms to
manipulate existing information to generate additional information is not
patent eligible.” See Digitech Image Techs, LLC v. Elecs. for Imaging, Inc.,
758 F.3d 1344, 1351 (Fed. Cir. 2014). In buySAFE, Inc. v. Google, Inc., 765
F.3d 1350, 1355 (Fed. Cir. 2014) it was held that claims drawn to creating a
contractual relationship are directed to an abstract idea. In Versata
Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306, 1333 (Fed.
Cir. 2015) it was held that determining a price, using organizational and
product group hierarchies was held to be an abstract idea.
We next determine whether the claim recites additional elements in
the claim to integrate the judicial exception into a practical application. See
Guidance, 84 Fed. Reg. at 54–55. The 2019 Revised Patent Subject Matter
Eligibility Guidance references the MANUAL OF PATENT EXAMINING
PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h) (9th Ed., Rev. 10.2019,
June 2020).
Here, the claims do not improve computer functionality, improve
another field of technology, utilize a particular machine, or effect a
particular physical transformation. Rather, we determine that nothing in the
claims imposes a meaningful limit on the judicial exception, such that the
claims are more than a drafting effort to monopolize the judicial exception.
For example, in the claim, the additional elements beyond the abstract
idea are the recited “communications interface” and “data processor”, and
the functions of “providing,” “accessing,” “determining,” “assigning,”
“transmitting,” “receiving,” “initiating,” “maintaining,” and “updating” as
Appeal 2020-004701
Application 14/968,824

11

claimed “do not purport to improve the functioning of the computer itself,”
do not improve the technology of the technical field, and do not require a
“particular machine.” Rather, they are performed using generic computer
components. Further, the claim as a whole fails to effect any particular
transformation of an article to a different state. The recited steps in the
claim fail to provide meaningful limitations to limit the judicial exception.
In this case, the claim merely uses the claimed computer elements as a tool
to perform the abstract idea.
Considering the elements of the claim both individually and as “an
ordered combination” the functions performed by the computer system at
each step of the process are purely conventional. Each step of the claimed
method does no more than require a generic computer to perform a generic
computer function. Thus, the claimed elements have not been shown to
integrate the judicial exception into a practical application as set forth in the
Revised Guidance which references MPEP §§ 2106.05(a)–(c) and (e)–(h).
Turning to the second step of the Alice and Mayo framework, we
determine that the claim does not contain an inventive concept sufficient to
“transform” the abstract nature of the claim into a patent-eligible application.
Considering the claim both individually and as an ordered combination fails
to add subject matter beyond the judicial exception that is not well-
understood, routine, and conventional in the field. Rather the claim uses
well-understood, routine, and conventional activities previously known in
the art and they are recited at a high level of generality. The Specification at
paragraphs 37–45 for example describes using conventional computer
components such as a processor, memory, transmission network, the
Internet, and software modules in a conventional manner. The claim
Appeal 2020-004701
Application 14/968,824

12

specifically includes recitations for computers to implement the method but
these computer components are all used in a manner that is well-understood,
routine, and conventional in the field. Here, the claim has not been shown to
be “significantly more” than the abstract idea.
The Appellant at pages 87–91 of the Appeal Brief has cited to Enfish,
LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) to show that the
claim is not abstract but the claims in that case were not similar in scope to
those here and were in contrast directed to a self-referential data table.
For these above reasons the rejection of claim 41, and its dependent
claims drawn to similar subject matter for which the same arguments have
been provided, is sustained.
We reach the same conclusion as to independent system claims 21 and
29 and their dependent claims which are drawn to the same subject matter
discussed above. Here, as in Alice, “the system claims are no different in
substance from the method claims. The method claims recite the abstract
idea implemented on a generic computer; the system claims recite a handful
of generic computer components configured to implement the same idea.”
Alice, 573 U.S. at 226. “[T]he mere recitation of a generic computer cannot
transform a patent-ineligible abstract idea into a patent-eligible invention.
Stating an abstract idea ‘while adding the words “apply it”’ is not enough for
patent eligibility.” Id. at 223 (quoting Mayo, 566 U.S. at 72).

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 21–57 under 35 U.S.C. § 101.
Appeal 2020-004701
Application 14/968,824

13

DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
21–57 101 Eligibility 21–57
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).
AFFIRMED