Eva Chang et al.Download PDFPatent Trials and Appeals BoardOct 28, 20212021000673 (P.T.A.B. Oct. 28, 2021) 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. 15/169,728 05/31/2016 Eva Diane Chang 37202/661001; 1609645US 9221 57956 7590 10/28/2021 FBFK/Intuit Robert Lord 3200 Southwest Freeway, Suite 3200 HOUSTON, TX 77027 EXAMINER HENRY, MATTHEW D ART UNIT PAPER NUMBER 3683 NOTIFICATION DATE DELIVERY MODE 10/28/2021 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): docketing@fbfk.law jhathaway@fbfk.law rlord@fbfk.law PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte EVA DIANE CHANG, MADHU SHALINI IYER, and JEFFREY LEWIS KAUFMAN ____________ Appeal 2021-000673 Application 15/169,728 Technology Center 3600 ____________ Before MURRIEL E. CRAWFORD, NINA L. MEDLOCK, and ROBERT L. KINDER, Administrative Patent Judges. MEDLOCK, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s final rejection of claims 1, 2, 4–11, 13–20, and 22–27. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Our decision references Appellant’s Appeal Brief (“Appeal Br.,” filed August 3, 2020) and Reply Brief (“Reply Br.,” filed November 5, 2020), and the Examiner’s Answer (“Ans.,” mailed September 9, 2020) and Final Office Action (“Final Act.,” mailed June 19, 2020). Appellant identifies Intuit, Inc. as the real party in interest (Appeal Br. 4). Appeal 2021-000673 Application 15/169,728 2 CLAIMED INVENTION The Specification states, “the invention relates to a method for transmitting messages based on the occurrence of workflow events and the output of propensity models identifying a future financial requirement” (Spec. ¶ 3). Claims 1, 10, and 19 are the independent claims on appeal. Claim 1, reproduced below with bracketed notations added, is illustrative of the claimed subject matter: 1. A method, comprising: [(a)] building a propensity model using machine learning as a rule ensemble method, wherein the propensity model comprises a plurality of rules forming a rule ensemble type model, a rule of the plurality of rules combining one or more aspects of data of a data set with one or more aspects of metadata, wherein one or more of the rules of the plurality of rules are associated with a support value, a coefficient, and an importance value, the support value identifying a percentage of data sets for which the rule is true, the coefficient of the rule indicating an impact the rule has on a propensity model score, and the importance value of the rules reflecting an average influence of a predictor over a distribution of joint input variable values for the propensity model, and wherein the step of building the propensity model comprises: removing transaction records from the data to generate reconstructed data, generating the plurality of rules, testing the plurality of rules against the reconstructed data of a plurality of data sets that include the data set, and ranking the plurality of rules; [(b)] generating the propensity model score with the propensity model; Appeal 2021-000673 Application 15/169,728 3 [(c)] generating, by a classifier module of a requirement prediction system and based on the propensity model score of the data set, a classification of a future requirement; [(d)] determining, by a computing system of the requirement prediction system, that the classification of the future requirement meets a requirement threshold; [(e)] determining, by the computing system and by using data of the data set, that an aspect of the data set meets an activity threshold; [(f)] detecting, by the computing system, that a workflow event has occurred on a platform utilized to generate the data set, the workflow event of a plurality of workflow events that include selecting and viewing an item on the platform, and creating, modifying, and closing a record of a transaction with the platform; and [(g)] in response to the determination that the workflow event has occurred, transmitting, by a message transmission module of the requirement prediction system, a message to a user computer system. REJECTION Claims 1, 2, 4–11, 13–20, and 22–27 are rejected under 35 U.S.C. § 101 as directed to patent-ineligible subject matter. ANALYSIS Appellant argues the pending claims as a group (Appeal Br. 11–20). We select independent claim 1 as representative. The remaining claims stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Under 35 U.S.C. § 101, “[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.” 35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101 to include an implicit exception: “[l]aws of nature, natural phenomena, and abstract Appeal 2021-000673 Application 15/169,728 4 ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208, 216 (2014). The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 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). The U.S. Patent and Trademark Office (the “USPTO”) published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”).2 That guidance revised the USPTO’s 2 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at Section 2106 (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2021-000673 Application 15/169,728 5 examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. 2019 Revised Guidance, 84 Fed. Reg. at 54. If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Id. at 54–55. Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. Id. If the claim is determined to be directed to a judicial exception under revised Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements Appeal 2021-000673 Application 15/169,728 6 amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. 2019 Revised Guidance, 84 Fed. Reg. at 56. Here, in rejecting the pending claims under 35 U.S.C. § 101, the Examiner determined that independent claims 1, 10, and 19, when given their broadest reasonable interpretation, recite using a propensity model and business entity data to “classify business entities based on specific financial and non-financial rules (e.g.[,] a support value, a coefficient, and an importance value), monitoring events to determine if an event has occurred (based on thresholds), and transmitting the results of the analysis to a user to make [financial] determinations” (Final Act. 9); in other words, and simply put, the Examiner determined that the claims recite “analyzing business entities using rules to determine financial requirements for a business entity,” i.e., a commercial interaction, which is a method of organizing human activity, and, therefore, an abstract idea (id. at 4). The Examiner also determined that the recited abstract idea is not integrated into a practical application; that the independent claims do not include additional elements sufficient to amount to significantly more than the abstract idea itself; and that the dependent claims are patent ineligible for substantially the same reasons (id. at 10–13). We are not persuaded, as an initial matter, that the Examiner overgeneralized the claims, or that the Examiner otherwise failed to consider claim 1 as a whole (Reply Br. 2–3). Instead, the Examiner’s characterization of the claim is, in our view, fully consistent with the Specification, as described below, including the claim language. Appellant charges that the Examiner’s characterization of the abstract idea “fails to consider the expressed features of the claims and, thus, is Appeal 2021-000673 Application 15/169,728 7 overly broad and untethered from the claims” (Reply Br. 2). Yet, there is no requirement that an examiner’s formulation of the abstract idea must copy the claim language. That the Examiner, thus, articulates the abstract idea at a different level of abstraction than would Appellant is, accordingly, an insufficient basis to persuasively argue that the claim language has been mischaracterized or that the Examiner has failed to consider the claim as a whole. Cf. Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240 (Fed. Cir. 2016) (“An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.”). To the extent Appellant maintains that the Examiner has failed to establish a prima facie case of patent ineligibility (Reply Br. 3–4), we note that the Federal Circuit has observed repeatedly that “the prima facie case is merely a procedural device that enables an appropriate shift of the burden of production.” Hyatt v. Dudas, 492 F.3d 1365, 1369 (Fed. Cir. 2007) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). The court has, thus, held that the USPTO carries its procedural burden of establishing a prima facie case when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying the applicant of the reasons for the rejection, “together with such information . . . as may be useful in judging of the propriety of continuing the prosecution of [the] application.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alteration in original). Here, the Examiner set forth the statutory basis of the rejection in a sufficiently articulate and informative manner as to Appeal 2021-000673 Application 15/169,728 8 meet the notice requirement of 35 U.S.C. § 132. And we find that, in doing so, the Examiner established a prima facie case of patent ineligibility. Also, to the extent Appellant maintains that the present rejection cannot be sustained because the Examiner has not identified a case in which a similar concept has been identified by the courts as an abstract idea (Reply Br. 4), we note that the 2019 Revised Guidance (applicable here) supersedes earlier subject matter eligibility-related guidance. See 2019 Revised Guidance, 84 Fed. Reg. at 51 (“Eligibility-related guidance issued prior to the Ninth Edition, R-08.2017, of the MPEP (published Jan. 2018) should not be relied upon.”). The 2019 Revised Guidance “extracts and synthesizes key concepts identified by the courts as abstract ideas” (84 Fed. Reg. at 52), and does not require examiners to demonstrate that an identified abstract idea is similar to a concept that the courts previously have held abstract. Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A) Turning to step one of the Mayo/Alice framework, we are not persuaded by Appellant’s argument that the Examiner erred in determining that claim 1 is directed to an abstract idea (Appeal Br. 12–17). 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 2021-000673 Application 15/169,728 9 claim 1 focuses on an abstract idea, and not on an improvement to technology and/or a technical field. The present application is titled “TRANSMISSION OF MESSAGES BASED ON THE OCCURRENCE OF WORKFLOW EVENTS AND THE OUTPUT OF PROPENSITY MODELS IDENTIFYING A FUTURE FINANCIAL REQUIREMENT,” and describes, in the Background section, that “[f]or growing businesses, access to financial resources is key to continue[d] or increase[d] growth”; “[h]owever, many growing businesses fail to appreciate that continued growth will likely put them in a position of financial need sometime in the near future” (Spec. ¶ 2). Thus, by the time these businesses initiate the process of applying for, and obtaining financing, they are at a disadvantage, and may be forced to choose between accepting a higher interest rate short-term loan, or foregoing continued business growth by delaying business activities until a lower interest rate loan can be obtained (id.). The claimed invention ostensibly is intended to address this issue by identifying a future financial requirement of a business entity, e.g., a future financial need of the business entity, based on the occurrence of workflow events and the output of a propensity model, and transmitting a message to the business entity such that it may take steps to obtain any necessary financing in an efficient and timely manner (see, e.g., Spec. ¶¶ 3, 27, 95, 101–104). Claim 1, thus, recites a method comprising: (1) building a propensity model, including a plurality of rules, using machine learning, i.e., building a propensity model using machine learning as a rule ensemble method, wherein the propensity model comprises a plurality of rules forming a rule ensemble type model, a rule of the Appeal 2021-000673 Application 15/169,728 10 plurality of rules combining one or more aspects of data of a data set with one or more aspects of metadata, wherein one or more of the rules of the plurality of rules are associated with a support value, a coefficient, and an importance value, the support value identifying a percentage of data sets for which the rule is true, the coefficient of the rule indicating an impact the rule has on a propensity model score, and the importance value of the rules reflecting an average influence of a predictor over a distribution of joint input variable values for the propensity model, and wherein the step of building the propensity model comprises: removing transaction records from the data to generate reconstructed data, generating the plurality of rules, testing the plurality of rules against the reconstructed data of a plurality of data sets that include the data set, and ranking the plurality of rules (step (a)); (2) generating, based on a propensity model score of a business entity, a classification of a future financial requirement of the business entity, i.e., “generating the propensity model score with the propensity model” and “generating, by a classifier module of a requirement prediction system and based on the propensity model score of the data set, a classification of a future requirement” (steps (b) and (c)); (3) determining whether the classification of the future financial requirement of the business entity meets a financial requirement threshold and whether an aspect of the business entity meets a business activity threshold, i.e., “determining, by a computing system of the requirement prediction system, that the classification of the future requirement meets a requirement threshold” and “determining, by the computing system and by using data of the data set, that an aspect of the data set meets an activity threshold” (steps (d) and (e)); Appeal 2021-000673 Application 15/169,728 11 and (4) detecting whether a workflow event has occurred on a platform utilized by the business entity and, if so, transmitting a message to a user of the business entity, i.e., detecting, by the computing system, that a workflow event has occurred on a platform utilized to generate the data set, the workflow event of a plurality of workflow events that include selecting and viewing an item on the platform, and creating, modifying, and closing a record of a transaction with the platform; and in response to the determination that the workflow event has occurred, transmitting, by a message transmission module of the requirement prediction system, a message to a user computer system (steps (f) and (g)). Appellant maintains that the rejection of claim 1 cannot be sustained because the subject matter of claim 1 does not fall within any of the three enumerated groupings of abstract ideas (Appeal Br. 12–15). But, Appellant cannot reasonably deny that claim 1 recites “analyzing business entities using rules to determine financial requirements [e.g., a future financial need] for a business entity,” i.e., so that the entity may take proactive steps to address the identified financial need — a concept that the Examiner determined, and we agree, is a method of organizing human activity, which includes commercial interactions and managing personal behavior or relationships or interactions between people. See 2019 Revised Guidance, 84 Fed. Reg. at 52. Specifically referencing paragraph 84 of the Specification, Appellant notes that “the claims require building a propensity model, which is a form of machine learning model” (Appeal Br. 14). And Appellant argues that “[t]he limitations for building the propensity model” are not a mathematical Appeal 2021-000673 Application 15/169,728 12 concept, a mental process, or a method of organizing human activity (id.; see also Reply Br. 5). Yet, the Specification, as the Examiner observes, describes the use of machine learning only in general terms and provides no specifics regarding what the machine learning entails (Ans. 5 (noting that the Specification mentions machine learning only once, i.e., in paragraph 84)). Moreover, although claim 1 recites “building a propensity model using machine learning,” the processes recited in the claim for “building the propensity model,” (i.e., (1) “removing transaction records from the data [of a data set with one or more aspects of metadata] to generate reconstructed data”; (2) “generating [a] plurality of rules”; (3) “testing the plurality of rules against the reconstructed data of a plurality of data sets that include the data set”; and (4) “ranking the plurality of rules”) are all acts that could be performed by a human mentally or manually, using pen and paper without the use of a computer or any other machine. The Specification describes, for example, that during a reconstruction of the data of a business entity, the transactions removed from the previously collected business data may include transactions that occurred after a specified action (Spec. ¶ 82; see also id. ¶ 36 (describing that transaction information of a business entity may include invoice information, deposit information, and expense information of the business entity)) — a step that a human seemingly could perform. The Specification also describes that a propensity model may be expressed as a mathematical formula such that the application of the model to the business entity includes calculating a score of the business entity according to the mathematical formula (id. ¶ 54), i.e., a process that a human could perform mentally or using pen and paper. And the Specification further explains that after building the propensity model, “the rules may be Appeal 2021-000673 Application 15/169,728 13 modified manually, by a data scientist or engineer,” e.g., by altering its coefficient, by deleting a rule, by changing conditional values, etc. (id. ¶ 85 (further explaining that, in this way, the strength of the propensity model may be iteratively tested and improved)), which reasonably suggests that the rules can be not only modified manually but also manually generated by a data scientist or engineer in the first instance. As claimed, “building a propensity model using machine learning,” when given its broadest reasonable interpretation, recites a mental process, i.e., a concept performed in the human mind, including an evaluation or judgment, and, therefore, an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 52; CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011) (holding that method steps that can be performed in the human mind, or by a human using a pen and paper, are unpatentable mental processes). See also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”). We also are not persuaded of Examiner error by Appellant’s argument that claim 1 includes additional elements that integrate the recited abstract idea into a practical application (Appeal Br. 15–17). The 2019 Revised Guidance references MPEP, Ninth Edition (rev. Jan 2018) (available at https://www.uspto.gov/web/offices/ pac/mpep/old/mpep_E9R08-2017.htm) § 2106.05(a)–(c) and (e) in non-exhaustively listing considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception Appeal 2021-000673 Application 15/169,728 14 into a practical application. 2019 Revised Guidance, 84 Fed. Reg. at 55. In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if the additional element, inter alia, “reflects an improvement in the functioning of a computer or an improvement to other technology or technical field.” Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id. Citing Koninklijke KPN N.V. v. Gemalto M2M GmbH, 942 F.3d 1143 (Fed. Cir. 2019), and Finjan, Inc. v. Blue Coat System, Inc., 879 F.3d 1299 (Fed. Cir. 2018), Appellant argues that, even if claim 1 recites an abstract idea, claim 1 is nonetheless patent eligible because “all that is required of the claims at Step 2A is to recite more than the mere desired result, which may be done by reciting a specific solution for accomplishing the goal” (Appeal Br. 15 (citing KPN, 942 F.3d at 1151); see also Reply Br. 5). Neither Finjan nor KPN supports that proposition. Contrary to Appellant’s assertion (Appeal Br. 15 (“In further accordance with Finjan . . . , claims that recite more than a mere result are patent eligible when they recite specific steps to accomplish a desired result.”)), the Federal Circuit did not determine that the claims in Finjan are patent eligible simply because the claims recite a specific way of achieving a desired result. Instead, the court held that the claims are patent eligible because they are directed to an improvement in computer functionality. See Appeal 2021-000673 Application 15/169,728 15 Finjan, 879 F.3d at 1305 (“The asserted claims are . . . directed to a non- abstract improvement in computer functionality, rather than the abstract idea of computer security writ large.”). Similarly in KPN, the court determined that the claims are not directed to an abstract idea because they are directed to a non-abstract improvement in an existing technological process (i.e., error checking in data transmissions). KPN, 942 F.3d at 1150. Appellant asserts, “[h]ere, as a practical application, the claimed subject matter includes the desired result of a message being transmitted” (Appeal Br. 16). And Appellant argues that claim 1 is eligible at Step 2A, Prong 2, because the steps of building a propensity model using machine learning, generating a propensity model score with the propensity model, generating a classification with a classifier module, determining that a requirement meets a requirement threshold, determining that data meets an activity threshold, and detecting the occurrence of a workflow event “change the way in which message transmission is performed to be different from what is done in the industry by building and using a propensity model and detecting workflow events to control a message being transmitted” (id.). Appellant ostensibly maintains that the claimed invention, i.e., steps (a) through (f), as recited in claim 1, which result in a message being transmitted, is a practical application. But, the relevant question under Step 2A, Prong 2 is not whether the claimed invention itself is a practical application; instead, the question is whether the claim includes additional elements beyond the judicial exception that integrate the judicial exception into a practical application. The Examiner determined here, and we agree, that the only additional elements recited in claim 1 beyond the abstract idea are “a requirement Appeal 2021-000673 Application 15/169,728 16 prediction system,” including “a classifier module,” “a computing system,” and “a message transmission module,” i.e., generic computer components (Final Act. 5, 12; Ans. 6; see, e.g., Spec. ¶¶ 26, 31, 32, 57, 198, 199). “And after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). We also are not persuaded by Appellant’s further argument that “[t]he use of the machine learning model integrates the judicial exception into a practical application” (Appeal Br. 17). Claim 1 generally recites the use of machine learning to build the propensity model that serves as the basis for scoring the business entity and generating, based on the score, a classification of the future financial requirement of the business entity. But we do not discern (either from the claim language or the general description in the written portion of the Specification)3 any improvements to the functioning of a computer, or to any other technology or technical field attributable to the use of machine learning. Nor do we find any other indication that machine learning integrates the abstract idea into a “practical application,” as that phrase is used in the 2019 Revised Guidance. Appellant asserts that in order to build the propensity model, transaction records are removed from data to generate reconstructed data, which “objectively reduces the amount of data used to train the propensity model thereby reducing the amount of time to train and build the propensity 3 As discussed above, Appellant’s Specification describes the use of machine learning in general terms, without any specifics about the algorithms employed in connection with the machine learning. Appeal 2021-000673 Application 15/169,728 17 model and reducing the amount of storage required” (Appeal Br. 17). But, even accepting Appellant’s assertion, we are not persuaded that this alleged reduction “improve[s] the computing systems that implement the subject matter of the claims” (id.). Instead, to the extent there is any improvement at all, that improvement is to the abstract idea of “analyzing business entities using rules to determine financial requirements for a business entity” which is not enough for patent eligibility. See SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1170 (Fed. Cir. 2018) (“[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.”). 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 abstract idea. As such, they do not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223–24 (“[W]holly generic computer implementation is not generally the sort of ‘additional featur[e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)). Accordingly, we agree with the Examiner that claim 1 is directed to an abstract idea. Step Two of the Mayo/Alice Framework (2019 Revised 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 2019 Revised Guidance, the second step of the Mayo/Alice framework, whether claim 1 includes additional elements or a combination of elements Appeal 2021-000673 Application 15/169,728 18 that provides an “inventive concept,” i.e., whether an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field (which is indicative that an inventive concept is present) or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. 2019 Revised Guidance, 84 Fed. Reg. at 56. Appellant argues that Step 2B is satisfied because the claimed method steps, i.e., steps (a) through (g), as recited in claim 1, “when performed by the claimed computing systems, are not well-understood, routine and conventional activities” (Appeal Br. 18–19). Appellant characterizes the method steps as providing an “inventive concept.” Yet, the relevant inquiry is not whether the claimed invention as a whole supplies an inventive concept. See, e.g., BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (“[T]he relevant inquiry is not whether the claimed invention as a whole is unconventional or non-routine.”). Instead, the question under step two of the Mayo/Alice framework (i.e., step 2B) is whether the claim includes additional elements, i.e., elements other than the abstract idea itself, that “‘transform the nature of the claim’ into a patent- eligible application.” Alice Corp., 573 U.S. at 217 (quoting Mayo, 566 U.S. at 79, 78). See also Mayo, 566 U.S. at 72–73 (requiring that “a process that focuses upon the use of a natural law also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself” (citation omitted) (emphasis added)). Appeal 2021-000673 Application 15/169,728 19 The Examiner determined here, and we agree, that the only additional elements recited in claim 1, beyond the abstract idea, are “a requirement prediction system,” including “a classifier module,” “a computing system,” and “a message transmission module,” i.e., generic computer components (Final Act. 5, 12; Ans. 6) — a determination amply supported by, and fully consistent with the Specification (see, e.g., Spec. ¶¶ 26, 31, 32, 57, 198, 199). 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 generic computer components to perform generic computer functions, e.g., receiving, 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.”). Appeal 2021-000673 Application 15/169,728 20 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/or non- obvious in view of the cited prior art (Appeal Br. 20 (“[T]he ordered combination of the steps required by the claims is not well-known, routine, or conventional activity (e.g., it is not routine to build a propensity model to transmit a message). Furthermore, there is no cited art on record that shows otherwise, which is effectively admitted to by the Final Action by the indication of allowable subject matter at page 13.”)). 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). “Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the § 101 inquiry.” Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 591 (2013). A novel and non-obvious claim directed to a purely abstract idea is, nonetheless, patent ineligible. See Mayo, 566 U.S. at 90; see also Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter.”). Appeal 2021-000673 Application 15/169,728 21 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 of claim 1, and claims 2, 4–11, 13–20, and 22–27, which fall with claim 1. CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1, 2, 4–11, 13–20, 22–27 101 Eligibility 1, 2, 4–11, 13–20, 22–27 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 Copy with citationCopy as parenthetical citation