Integral Development Corporation

Patent Trials and Appeals Board

Dec 8, 2020

2020001518 (P.T.A.B. Dec. 8, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/860,999 04/11/2013 Michael Testa INDE/0012US 5654
107456 7590 12/08/2020
Artegis Law Group, LLP
John Carey
7710 Cherry Park Drive Suite T #104
Houston, TX 77095
EXAMINER
SHAIKH, MOHAMMAD Z
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
12/08/2020 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
jmatthews@artegislaw.com
kcruz@artegislaw.com
sjohnson@artegislaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL TESTA, VIKAS SRIVASTAVA, and
MICHELLE YIP CHEN
________

Appeal 2020-001518
Application 13/860,999
Technology Center 3600
____________

Before BART A. GERSTENBLITH, BRADLEY B. BAYAT, and
MATTHEW S. MEYERS, Administrative Patent Judges.

BAYAT, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final rejection of claims 13 and 16–23, which constitute all pending claims
in the application, under 35 U.S.C. § 101 as “directed to an abstract idea
without significantly more.” Final Act. 19. 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(a). Appellant identifies the real party in interest as Integral
Development Corporation. Appeal Br. 3.
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to “foreign exchange transactions over a
network.” Spec. ¶ 3. Sole independent claim 13 recites:
13. An apparatus for communications, comprising:
a memory that includes a communications module and an
exchange module; and
a processor that:
executes the communication module to:
configure, for each of one or more client devices, a
different trading platform interface associated with the
client device, wherein a first trading platform interface
associated with a first client device concurrently displays,
in a display region:
a plurality of individually-selectable netting plans,
and a plurality of total costs, wherein each total cost is
associated with a separate individually-
selectable netting plan included in the plurality of
individually-selectable netting plans, and
wherein the display region is automatically
refreshed to update the plurality of total costs abased on
a current market rate;
receive, via the trading platform interfaces, from
the one or more client devices, a plurality of trades,
wherein each trade included in the plurality of trades
includes trade information, the trade information
including at least one of a currency pair, a base currency
amount, a term currency amount, whether the trade is to
buy or to sell, and a value date; and
executes the exchange module to:
estimate a non-provided trade amount, not
included in the trade information, for each trade
type of aggregated sets of trades buy in a base
currency, a request to sell in a base currency, a
request to buy in a term currency, and a request to
sell in a term currency;
determine a netted amount and a market
amount to transact based on received trade
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information and the estimated non-provided trade
amount, wherein the netted amount comprises an
amount that is netted among the trades in the
plurality of trades, and the market amount
comprises an additional amount that remains after
the netted amount is netted among the trades in the
plurality of trades; and
execute one or more trades for the market
amount at a market rate;
wherein the processor further executes the
communication module to distribute the market amount
and the netted amount proportionally amongst the
plurality of trades received from the one or more client
devices.
Appeal Br. 18–19, Claims App. (emphases added).
Prior Decision of the Board
On October 2, 2017, in a prior Decision on Appeal (Appeal 2016-
002036), this Board panel affirmed the Examiner’s decision to reject
claims 13 and 16–23 under 35 U.S.C. § 101. On December 4, 2017,
Appellant filed an amendment to independent claim 13 accompanying a
Request for Continued Examination. On March 4, 2019, the Examiner
mailed a Final Office Action rejecting claims 13 and 16–23 under 35 U.S.C.
§ 101, which is before us for review.
OPINION
Under 35 U.S.C. § 101, an invention is patent eligible if it claims a
“new and useful process, machine, manufacture, or composition of matter.”
35 U.S.C. § 101. The Supreme Court, however, has long interpreted § 101
to include an implicit exception: “[l]aws of nature, natural phenomena, and
abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S.
208, 216 (2014).
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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 78, 79). This is “a search for an ‘inventive concept’ — i.e., an
element or combination of elements that is ‘sufficient to ensure that the
patent in practice amounts to significantly more than a patent upon the
[ineligible concept] itself.’” Id. at 217–18 (alteration in original) (citation
omitted).
In rejecting claim 13 and 16–23 as being directed to a judicial
exception without significantly more, the Examiner evaluated independent
claim 13 and dependent claims 16–23 separately under the Alice framework
and the 2019 Revised Guidance.2 See Final Act. 18–22. Appellant argues

2 The U.S. Patent and Trademark Office (“USPTO”) published revised
guidance 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, 57 (Jan. 7, 2019) (the “2019
Revised Guidance”). That guidance revised the USPTO’s examination
procedure with respect to the first step of the Alice framework by
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claims 13 and 16–23 as a group. See Appeal Br. 10–16. Sole independent
claim 13 is representative of the group, with claims 16–23 standing or falling
therewith. See 37 C.F.R. § 41.37(c)(1)(iv)(2019).
Statutory Categories Under § 101
To determine subject matter eligibility under 35 U.S.C. § 101, the
Examiner must first determine if the claims fall into one of the four statutory
categories of invention: processes, machines, manufactures, or composition
of matter. See MPEP § 2106.03. The Examiner determines claim 13 is
directed to a machine, which is one of the statutory categories of invention
under § 101. Final Act. 19.
We now turn to the two-step Alice framework.
Step One of the Alice Framework (2019 Revised Guidance, Step 2A)
Step 2A, Prong One
The first step in the Alice framework is to determine whether the
claims at issue are “directed to” a patent-ineligible concept, e.g., an abstract
idea. Alice Corp., 573 U.S. at 217. This first step, as set forth in the 2019
Revised Guidance (i.e., Step 2A), is a two-prong test; in Step 2A, Prong
One, the Examiner must 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,

(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.

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84 Fed. Reg. at 54. If so, the Examiner must next consider whether the
claim includes additional elements, beyond the judicial exception, that
“integrate the [judicial] exception into a practical application,” i.e., that
apply, rely on, or use the judicial exception in a manner that imposes a
meaningful limit on the judicial exception, such that the claim is more than a
drafting effort designed to monopolize the judicial exception (Step 2A,
Prong Two). Id. at 54–55. Only if the claim (1) recites a judicial exception
and (2) does not integrate that exception into a practical application, then the
Examiner can conclude that the claim is “directed to” the judicial exception,
e.g., an abstract idea.
To that end, the Examiner determines that the following limitations of
representative claim 13 recite a judicial exception: “a plurality of
individually-selectable netting plans, and a plurality of total costs, wherein
each total cost is associated with a separate individually-selectable netting
plan included in the plurality of individually-selectable netting plans”;
“receive, a plurality of trades, wherein each trade included in the plurality of
trades includes trade information, the trade information including at least
one of a currency pair, a base currency amount, a term currency amount,
whether the trade is to buy or to sell, and a value date”; “estimate a non-
provided trade amount, not included in the trade information, for each trade
type of aggregated sets of trades buy in a base currency, a request to sell in
a base currency, a request to buy in a term currency, and a request to sell in a
term currency”; “determine a netted amount and a market amount to transact
based on received trade information and the estimated non-provided trade
amount, wherein the netted amount comprises an amount that is netted
among the trades in the plurality of trades, and the market amount comprises
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an additional amount that remains after the netted amount is netted among
the trades in the plurality of trades”; “execute one or more trades for the
market amount at a market rate”; and “distribute the market amount and the
netted amount proportionally amongst the plurality of trades received.”
Final Act. 19–20.
According to the Examiner, under the broadest reasonable
interpretation the performance of the above limitations recite “a fundamental
economic practice of steps for netting a foreign exchange currency
transaction” which “falls within the ‘Certain Methods of Organizing
Human Activity’ grouping of abstract ideas,” enumerated in the 2019
Revised Subject Matter Eligibility Guidance. Id. at 20.
Alleging error in the Examiner’s rejection, Appellant argues that “the
present claims do not recite any methods of organizing human activity . . .
fundamental economic principles or practices, such as hedging, insurance, or
mitigating risk. Instead, the present claims recite a specific set of processing
components that presents information associated with electronic trading and
executes trades based on the presented information.” Appeal Br. 11 (citing
Spec. ¶¶ 74, 78). We are not persuaded the Examiner’s rejection is in error.
We find Appellant’s statement supra that the claims recite
“present[ing] information associated with electronic trading and executes
trades based on the presented information” supports the abstract concept
identified by the Examiner as a fundamental economic practice. As
discussed, Appellant’s disclosure relates to Foreign Exchange (FX)
transactions over a network. Spec. ¶ 3. The Specification discloses in
regard to the related art that “[c]urrently, systems that facilitate a list or
portfolio of FX transactions . . . may not deliver best execution” by “getting
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the most competitive price, minimizing transactions costs as well as market
impact.” Id. ¶ 4. Appellant’s alleged improved apparatus “facilitat[es] FX
transaction in which trades are netted, executed, and distributed in a fair,
efficient, and optimal manner.” Id. ¶ 5. According to Appellant’s
disclosure:
Participants in the FX market may engage in FX transactions
for various reasons, such as but not limited to, security
settlements, passive and/or active hedging, currency alpha,
dividends, payments, speculative trades, etc. The participants
have one or more objectives while engaging in FX transactions,
such as but not limited to, minimizing transaction costs,
obtaining a fair deal (e.g., no disadvantage in comparison to
like positioned participants), efficient and accurate processing,
etc.

Id. ¶ 14 (emphasis added). Appellant’s improvement in facilitating foreign
exchange transactions promises to deliver “efficiency, optimality, and
fairness when executing a portfolio of currency trades.” Id. ¶ 15. As such,
the limitations identified by the Examiner under Step 2A, Prong One
comprise fundamental economic principles or practices involving financial
transactions including hedging (see supra) and mitigating risk, which recites
an abstract idea and is one of the methods of organizing human activity
under the 2019 Revised Guidance.
This abstract idea is not meaningfully different from the ideas found
to be abstract in other cases before our reviewing court. For example, the
Federal Circuit held that claims to a new method of allocating returns to
different investors in an investment fund are a fundamental economic
concept and an abstract idea. In re Greenstein, 774 F. App’x 661, 664 (Fed.
Cir. 2019) (non-precedential); see also, e.g., Alice Corp., 573 U.S. at 219–20
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(describing the abstract concept of intermediated settlement as a
“‘fundamental economic practice long prevalent in our system of
commerce’” and also as “a building block of the modern economy”)
(citation omitted); Bilski v. Kappos, 561 U.S. 593, 611 (2010) (claims to the
abstract idea of hedging are a “fundamental economic practice long
prevalent in our system of commerce and taught in any introductory finance
class”) (citation omitted); In re Chorna, 656 F. App’x 1016, 1021 (Fed. Cir.
2016) (non-precedential) (describing the abstract idea of a financial
instrument to reduce the risk of investing as a fundamental economic
principle). In light of these decisions and our discussion above, we conclude
that claim 13 equally recites an abstract idea.
Accordingly, we agree with the Examiner that claim 13 recites an
abstract idea.
Step 2A, Prong Two
Having concluded that claim 13 recites a judicial exception, i.e., an
abstract idea, we next consider whether the claim recites additional elements
that integrate the judicial exception into a practical application (Step 2A,
Prong Two). 2019 Revised Guidance, 84 Fed. Reg. at 51. When a claim
recites a judicial exception and fails to integrate the exception into a
practical application, the claim is “directed to” the judicial exception. Id. A
claim may integrate the judicial exception when, for example, it reflects an
improvement to technology or a technical field. Id. at 55.
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.
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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.
Under Step 2A, Prong Two, the Examiner determines the additional
elements (italicized in claim 13 supra)—processor, memory including a
communications and exchange module, and a client device with trading
platform interface—are generic computer components. Final Act. 20.
According to the Examiner, the claims are not integrated into a practical
application because these additional elements are recited at a high level of
generality and are merely invoked as tools to implement the abstract idea.
Id. at 21. The Examiner indicates that “these additional elements, when
considered separately and as an ordered combination, do not integrate the
abstract idea into a practical application because they do not impose any
meaningful limits on practicing the abstract idea.” Id.
Appellant disagrees and argues that “the claims integrate any
purported abstract idea into a practical application of calculating and
executing a fair-netting plan on large numbers of user-selected trades.”
Appeal Br. 11. According to Appellant, “the claimed approach enables the
trading platform interface to transmit trade information,” generates a netting
plan for a portfolio of trades based on the received information, and executes
selected netting plan for the portfolio of trades. Id. at 12. We are not
persuaded by Appellant’s argument.
First, many of the features Appellant relies upon are part of the
abstract idea and not the additional elements required to integrate the judicial
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exception into a practical application. Second, Appellant’s argument
regarding “large numbers of user-selected trades” is not commensurate with
the scope of claim 13, and therefore cannot support an integration of the
judicial exception. The patent eligibility of a claim is based on the features
recited in the claim. See ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d
759, 769–70 (Fed. Cir. 2019) (“Even if ChargePoint’s specification had
provided, for example, a technical explanation of how to enable
communication over a network for device interaction (which, as discussed
above, it did not), the claim language here would not require those details.
Instead, the broad claim language would cover any mechanism for
implementing network communication on a charging station.”); Ericsson
Inc. v. TCL Commc’ns Tech. Holdings Ltd., 955 F.3d 1317, 1325 (Fed. Cir.
2020) (“[T]he specification may be helpful in illuminating what a claim is
directed to [but it] must always yield to the claim language when identifying
the ‘true focus of a claim.’”) (citation omitted); Synopsys, Inc. v. Mentor
Graphics Corp., 839 F.3d 1138, 1149 (Fed. Cir. 2016) (“The § 101 inquiry
must focus on the language of the Asserted Claims themselves.”); Digitech
Image Techs., LLC v. Elec. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir.
2014) (“Contrary to Digitech’s argument, nothing in the claim language
expressly ties the method to an image processor. The claim generically
recites a process of combining two data sets into a device profile.”);
Accenture Global Servs., GmbH v. Guidewire Software, 728 F.3d 1336,
1345 (Fed. Cir. 2013) (“[T]he important inquiry for a § 101 analysis is to
look to the claim.”).
We recognize that “[s]oftware can make non-abstract improvements
to computer technology just as hardware improvements can, and sometimes
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the improvements can be accomplished through either route.” Enfish, 822
F.3d at 1335. However, “to be directed to a patent-eligible improvement to
computer functionality, the claims must be directed to an improvement to
the functionality of the computer or network platform itself.” Customedia
Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1365 (Fed. Cir. 2020)
(citing Enfish, 822 F.3d at 1336–39). Claim 13 recites generic components
arranged in no particular way to perform generic functions of configuring,
receiving, estimating, determining, and executing a financial transaction
without improving computers or networks. The Specification’s description
of these components makes clear that they are generic components that do
not improve the functioning of a computer or other technology. See, e.g.,
Spec. ¶ 53 (“Exchange system 500 may include at least one of any type of
hardware, server, personal computer, mini-computer, mainframe computer,
or any computing device either special purpose or general computing
device.”); ¶ 65 (“Such a trading platform may be implemented via exchange
systems 110/500, system 600, or any other suitable computing-system using
techniques well-known in the art.”); ¶ 94 (“A general-purpose processor
may be a microprocessor, but, in the alternative, the processor may be any
conventional processor, controller, microcontroller, or state machine.”); see
also id. ¶¶ 54–58, 95–97.
Appellant also draws an analogy between the pending claims and
those at issue in Core Wireless Licensing S.A.R.L. v LG Electronics, Inc.,
880 F.3d 1356 (Fed. Cir. 2018), and Data Engine Technologies LLC v.
Google LLC, 906 F.3d 999 (Fed. Cir. 2018). Appeal Br. 13–14. However,
we find no parallel between claim 13 and the claims at issue in Core
Wireless or Data Engine. Although Core Wireless is “directed to a particular
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manner of summarizing and presenting information in electronic devices”
resulting in an improved user interface, claim 13 does not recite an improved
user interface. See Core Wireless, 880 F.3d at 1362. There, the court stated:
Claim 1 of the ‘476 patent requires “an application summary that
can be reached directly from the menu,” specifying a particular
manner by which the summary window must be accessed. The
claim further requires the application summary window list a
limited set of data, “each of the data in the list being selectable
to launch the respective application and enable the selected data
to be seen within the respective application.” This claim
limitation restrains the type of data that can be displayed in the
summary window. Finally, the claim recites that the summary
window “is displayed while the one or more applications are in
an un-launched state,” a requirement that the device applications
exist in a particular state. These limitations disclose a specific
manner of displaying a limited set of information to the user,
rather than using conventional user interface methods to display
a generic index on a computer. Like the improved systems
claimed in Enfish, Thales, Visual Memory, and Finjan, these
claims recite a specific improvement over prior systems,
resulting in an improved user interface for electronic devices.

Id. at 1362–63. In contrast, in Appellant’s claim 13, the recited interface
associated with a client device is used as a mere tool. Appellant’s argument
is not commensurate with the scope of the claim when viewed in light of the
Specification, because besides using a generic computing device, i.e.,
“personal computer, mini-computer, mainframe computer, or any computing
device either special purpose or general computing device” (Spec. ¶ 53),
interface as a tool in its ordinary capacity to display information, Appellant
has not shown that the claimed invention reflects an improved user interface.
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Claim 13 also lacks an identified structural feature, such as the
notebook tabs3 identified in Data Engine, to solve a problem in prior art
interfaces. Instead, claim 13 is comparable to the claims in Data Engine that
were found patent ineligible because they were more general and did not
contain sufficient structural detail regarding the interface. Unlike the
disclosure in Data Engine, Appellant’s Specification does not discuss a
specific solution to an existing technological problem because the
Specification does not identify a particular technological problem in need of
solving. In contrast to claim 13, in Data Engine our reviewing court
determined that “the claim recites a specific structure (i.e., notebook tabs)
within a particular spreadsheet display that performs a specific function (i.e.,
navigating within a three-dimensional spreadsheet).” Data Engine, 906 F.3d
at 1010–11.
Accordingly, because we determine that claim 13 lacks any additional
elements sufficient to integrate the abstract idea into a practical application,
we agree with the Examiner that the claim is directed to an abstract idea.
Step Two of the Alice Framework (2019 Revised Guidance, Step 2B)
We next consider whether claim 13 recites additional elements,
individually, or as an ordered combination, that provide an inventive
concept. Alice, 573 U.S. at 217–18. The second step of the Alice test is
satisfied when the claim limitations involve more than performance of
well-understood, routine, and conventional activities previously known to
the industry. Berkheimer v. HP Inc., 881 F.3d 1360, 1367 (Fed. Cir. 2018);

3 The evidence in Data Engine included articles and industry praise that
touted the advantages of the notebook tabs for navigation through three-
dimensional spreadsheets. See Data Engine, 906 F.3d at 1004.
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see 2019 Revised Guidance, 84 Fed. Reg. at 56 (explaining that the second
step of the Alice analysis considers whether a claim adds a specific
limitation beyond a judicial exception that is not a “well-understood, routine,
conventional” activity in the field).
Appellant argues that claim 13 recites significantly more than an
abstract idea because “[t]he Examiner has not made any rejections under 35
U.S.C. §§ 102 and 103 based on these particular limitations, which indicates
that the above limitations are unconventional and non-routine.” Appeal Br.
15. We disagree.
“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.” Diamond v. Diehr, 450 U.S. 175, 188–89 (1981). Even if the steps
are groundbreaking, innovative, or brilliant, that is not enough for eligibility.
See Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576,
591 (2013); accord SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163
(“No matter how much of an advance in the finance field the claims recite,
the advance lies entirely in the realm of abstract ideas, with no plausibly
alleged innovation in the non-abstract application realm. An advance of that
nature is ineligible for patenting.”). “An abstract idea can generally be
described at different levels of abstraction.” Apple, Inc. v. Ameranth, Inc.,
842 F.3d 1229, 1240 (Fed. Cir. 2016); see also Western Express Bancshares
v. Green Dot Corp., No. 2020-1079, 2020 WL 3967855, at *3 (Fed. Cir.
July 14, 2020) (“But the absence of the exact invention in the prior art does
not prove the existence of an inventive concept.”). Therefore, the fact that
the Examiner has not rejected the claims under §§ 102 or 103 over the prior
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art is not determinative of an inventive concept sufficient to make claim 13
patent eligible.
We agree with the Examiner that claim 13 lacks additional elements
that provide an inventive concept. As discussed, the additional elements
recited in claim 13 are generic computer components that perform well-
understood, routine, or conventional functions of configuring, receiving,
estimating, determining, and executing a financial transaction at a high level
of generality. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed.
Cir. 2014) (“That a computer receives and sends the information over a
network—with no further specification—is not even arguably inventive.”);
In re Katz Interactive Call Processing Patent Litig., 639 F.3d 1303, 1316
(Fed. Cir. 2011) (“Absent a possible narrower construction of the terms
‘processing,’ ‘receiving,’ and ‘storing,’ discussed below, those functions can
be achieved by any general purpose computer without special
programming.”).
As an ordered combination, these additional elements provide no
more than when they are considered individually. Alice, 573 U.S. at 225.
They recite generic computer components that perform well-understood and
conventional functions. They are used as tools to implement the judicial
exception. See SAP Am., 898 F.3d at 1169–70 (limitations of various
databases and processors did not improve computers but used already
available computers and available functions as tools to execute the claimed
process); Inventor Holdings LLC v. Bed Bath & Beyond, Inc., 876 F.3d
1372, 1378 (Fed. Cir. 2017) (considering the method steps of the
representative claims as an “ordered combination” reveals that they “amount
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to ‘nothing significantly more’ than an instruction to apply [an] abstract
idea” using generic computer technology).
We also find Appellant’s no risk of preemption argument (Appeal Br.
15–16) unpersuasive because a claim “need not, however, preempt an entire
field to run afoul of § 101.” Mayo, 566 U.S. at 73. “The Supreme Court has
made clear that the principle of preemption is the basis for the judicial
exceptions to patentability” and “[f]or this reason, questions on preemption
are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc.
v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015) (citing Alice Corp.,
573 U.S. at 216). “[P]reemption may signal patent ineligible subject matter,
[but] the absence of complete preemption does not demonstrate patent
eligibility.” Id.
Accordingly, we agree with the Examiner that claim 13 lacks an
inventive concept sufficient to transform the abstract idea into patent-eligible
subject matter. Thus, we sustain the rejection of independent claim 13 as
directed to a judicial exception under 35 U.S.C. § 101, and dependent claims
16–23, which fall with claim 13.
CONCLUSION
The Examiner’s decision to reject claims 13 and 16–23 under 35
U.S.C. § 101 is affirmed.

Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
13, 16–23 101 Eligibility 13, 16–23
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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).
AFFIRMED