International Business Machines Corporation

Patent Trials and Appeals Board

Sep 17, 2021

2020006319 (P.T.A.B. Sep. 17, 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.
14/473,128 08/29/2014 K. Anne-Rivers Forcke YOR920140266US1
(31282)
1095
48233 7590 09/17/2021
SCULLY, SCOTT, MURPHY & PRESSER, P.C.
400 GARDEN CITY PLAZA
SUITE 300
GARDEN CITY, NY 11530
EXAMINER
ANDERSON, MICHAEL W
ART UNIT PAPER NUMBER
3694
NOTIFICATION DATE DELIVERY MODE
09/17/2021 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):
IBMPAIRENotify@ssmp.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte K. ANNE-RIVERS FORCKE, DIMITRI KANEVSKY,
WALTER S. KUHNEL, ELIZABETH V. WOODWARD, and
SHUNGUO YAN
____________

Appeal 2020-006319
Application 14/473,128
Technology Center 3600
____________

Before MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
BRUCE T. WIEDER, 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 1, 3–11, 13–16, and 18–21. We have
jurisdiction under 35 U.S.C. § 6(b).

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 party in interest as
International Business Machines Corporation. (Appeal Br. 2).
Appeal 2020-006319
Application 14/473,128

2

CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to a method and system to
evaluate potential transactions by a consumer and provide feedback about
how these potential transactions would affect specified goals (Spec., paras.
1, 4). Claim 1, reproduced below with the italics added, is representative of
the subject matter on appeal.

1. A computer-implemented method of providing feedback
to a client computer device about a potential impact of a
potential transaction on defined goals of a specified person, the
method comprising:
a financial analysis computer system retrieving financial
information about the specified person from a financial
repository;
the financial analysis computer system, after retrieving
said financial information, connecting with a client application
running on the client computer device, said client application
being selected by the specified person to purchase goods or
services;
receiving at the financial analysis computer system
specified digital interactions intercepted from the client
computer when the specified person uses the client application
running on the client computer device to identify a potential
transaction, including detecting a context and an activity of the
potential transaction by an analysis of a display screen of the
client computer device;
storing in the financial analysis computer system a
plurality of transaction analysis applications, each of the
transaction analysis applications being used to analyze an
associated type of transaction;
the financial analysis computer system processing said
intercepted specified digital interactions to determine a
potential impact of said potential transaction on one or more
defined goals of the specified person, including the financial
analysis computer system invoking one or more of the
Appeal 2020-006319
Application 14/473,128

3

transaction analysis applications to analyze the potential
transaction of the specified person; and
before the specified person commits to said potential
transaction, the financial analysis computer system, in real
time, generating a client guidance signal based on the
determined potential impact of the potential transaction, and
sending the client guidance signal to the client computing
device to instruct the client computing device to convey
specified guidance to the specified person about the potential
transaction.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Name Reference Date
Fellowes US 2010/0280935 A1 Nov. 4, 2010
Kolkowitz US 2011/0251951 A1 Oct. 13, 2011
Calman US 2012/0232968 A1 Sept. 13, 2012
Joa US 2014/0258023 A1 Sept. 11, 2014

The following rejections are before us for review:
1. Claims 1, 3–11, 13–16, and 18–21 are rejected under 35 U.S.C.
§ 101 as being directed to non-statutory subject matter.
2. Claims 1, 5–11, 14–16, and 18–20 are rejected under 35 U.S.C.
§ 103 as unpatentable over Fellowes, Joa, and Kolkowitz.
3. Claims 3, 4, 13, and 21 are rejected under 35 U.S.C. § 103 as
unpatentable over Fellowes, Joa, Kolkowitz, and Calman.

Appeal 2020-006319
Application 14/473,128

4

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.2

ANALYSIS
Rejection under 35 U.S.C. § 101
The Appellant argues that the rejection of claim 1 is improper because
the claim is not directed to an abstract idea (Appeal Br. 23-26; Reply Br. 5,
6). The Appellant argues further that the claim relates to an improved
computer technology and is “rooted in computer technology” (Appeal Br.
26, 27; Reply Br. 6).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 7–9; Ans. 10–15).
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,

2 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 2020-006319
Application 14/473,128

5

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
determined to be patent eligible include physical and chemical processes,
such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 192
(1981)); “tanning, dyeing, making waterproof 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
Appeal 2020-006319
Application 14/473,128

6

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
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
Appeal 2020-006319
Application 14/473,128

7

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 states that the invention generally relates to a
method and system to evaluate potential transactions by a consumer and
provide feedback about how these potential transactions would affect
specified goals (Spec., paras. 1, 4). Here, the Examiner has determined that
the claim sets forth a method of organizing human activity and fundamental
economic practice (Final Act. 8, Ans. 11). 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] “retrieving financial
information about the specified person from a financial repository”; [2]
“receiving . . . specified digital interactions . . . when the specified person
uses the client application …to identify a potential transaction, including
detecting a context and an activity of the potential transaction by an
analysis”; [3] “storing . . . a plurality of transaction analysis applications”;
[4] “processing said intercepted specified digital interactions to determine a
potential impact of said potential transaction on one or more defined goals of
the specified person . . . invoking one or more of the transaction analysis
applications to analyze the potential transaction of the specified person”; and
[5] “before the specified person commits to said potential transaction, . . .
Appeal 2020-006319
Application 14/473,128

8

generating a client guidance signal based on the determined potential impact
of the potential transaction, and sending the client guidance signal to the
client . . . to convey specified guidance to the specified person about the
potential transaction;” which is a certain method of organizing human
activities and fundamental economic practice, i.e. a judicial exception.
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). See
Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)
where collecting information, analyzing it, and displaying results from
certain results of the collection and analysis 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 Guidance references the MANUAL OF
PATENT EXAMINING PROCEDURE (“MPEP”) §§ 2106.05(a)–(c) and (e)–(h).
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 “computer system” and “client computer device”. These
are described in the Specification as generic computer components (Spec.,
paras. 29–31). The claimed limitations of “retrieving,” “connecting,”
“receiving,” “identify[ing],” “storing,” “processing,” “invoking,”
Appeal 2020-006319
Application 14/473,128

9

“generating,” and “sending” as recited “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
Guidance which references the MANUAL OF PATENT EXAMINING PROCEDURE
(“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 29-31 for example describes using conventional computer components
such as a personal computer, network computer, and network, in a
Appeal 2020-006319
Application 14/473,128

10

conventional manner. The claim 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 claimed generic computer components which are used to
implement the claimed method are well-understood, routine, or conventional
in the field. The Appellant has not demonstrated that the computers
described in the Specification at paragraphs 29 and 30 for instance are not
general purpose computer components known to perform similar functions
in a well-understood manner. Here, the claim has not been shown to be
“significantly more” than the abstract idea.
The Appellant, at page 6 of the Reply Brief, has cited to McRO, Inc. v.
Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016) but the
claims in that case are distinguished from this case in being directed to rules
for lip sync and facial expression animation.
We note the point about pre-emption (App. Br. 26). While pre-
emption “might tend to impede innovation more than it would tend to
promote it, ‘thereby thwarting the primary object of the patent laws”’ (Alice,
134 S. Ct. at 2354 (quoting Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 132 S. Ct. 1289, 1293 (2012))), “the absence of complete preemption
does not demonstrate patent eligibility” (Ariosa Diagnostics, Inc. v.
Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015)). See also OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015)
(“[T]hat the claims do not preempt all price optimization or may be limited
to price optimization in the e-commerce setting do not make them any less
abstract.”).
Appeal 2020-006319
Application 14/473,128

11

For the above reasons, the rejection of claim 1 is sustained. The
remaining rejected claims are directed to similar subject matter, and the
rejection of these claims is sustained for the same reasons given above.

Rejection under 35 U.S.C. § 103
The Appellant argues that the rejection of claim 1 is improper because
the cited prior art fails to disclose the claim limitation drawn to identifying a
potential transaction “including detecting a context and an activity of the
potential transaction by an analysis of a display screen of the client computer
device” (Appeal Br. 20).
In contrast, the Examiner has determined that the cited claim
limitation is disclosed by prior art citing to Fellows at para. 49, and Joa at
Figure 1 (element 116), Figure 3 (elements 330–340), and paragraphs 14 and
15 (Ans. 7).
We agree with the Appellant. Here, the argued claim limitation
requires identifying a potential transaction “including detecting a context
and an activity of the potential transaction by an analysis of a display screen
of the client computer device.” Fellows at paragraph 49 discloses raw data
including account number, transaction type, balances but nothing related to
the context of an activity of a potential transaction on a display screen.
While, Joa at Figure 1 does display a generic computer screen 116 on a user
terminal there is no disclosure related to detecting a context and activity of a
potential transaction in the manner claimed. Joa at paragraphs 14 and 15
fails to disclose the specific claim limitation as well. As the cited claim
limitation has not been shown in the prior art, the rejection of claim 1 and its
dependent claims is not sustained. Independent claims 11 and 16 contain a
Appeal 2020-006319
Application 14/473,128

12

similar limitation, and the rejection of these claims and their dependent
claims is not sustained for the same reasons given above.

CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1, 3–11, 13–16, and 18–21 under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 1, 5–11, 14–16, and 18–20 under 35 U.S.C. § 103 as
unpatentable over Fellowes, Joa, and Kolkowitz.
We conclude that Appellant has shown that the Examiner erred in
rejecting claims 3, 4, 13, and 21 under 35 U.S.C. § 103 as unpatentable over
Fellowes, Joa, Kolkowitz, and Calman.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1, 3–11, 13–
16, 18–21
101 Eligibility 1, 3–11, 13–
16, 18–21

1, 5–11, 14–
16, 18–20
103 Fellowes, Joa,
Kolkowitz
1, 5–11, 14–
16, 18–20
3, 4, 13, 21 103

Fellowes, Joa,
Kolkowitz, Calman
3, 4, 13, 21
Overall
Outcome
1, 3–11, 13–
16, 18–21

Appeal 2020-006319
Application 14/473,128

13

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