Jochen Leidner et al.

Patent Trials and Appeals Board

Aug 26, 2020

2020000856 (P.T.A.B. Aug. 26, 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.
13/423,127 03/16/2012 Jochen L. Leidner 113027.000076US1 1201
79804 7590 08/26/2020
Duncan Galloway Egan Greenwald, PLLC
9625 Ormsby Station Road
Louisville, KY 40223
EXAMINER
SCHEUNEMANN, RICHARD N
ART UNIT PAPER NUMBER
3624
NOTIFICATION DATE DELIVERY MODE
08/26/2020 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):
carnold@dgeglaw.com
kduncan@dgeglaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOCHEN L. LEIDNER and FRANK SCHILDER
Appeal 2020-000856
Application 13/423,127
Technology Center 3600
Before AMBER L. HAGY, MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–10, 12–30, 32–40, and 42–48, which are all of the
claims pending in the application. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Refinitiv US Organization LLC as the
real party in interest. Appeal Br. 1.
Appeal 2020-000856
Application 13/423,127

2
TECHNOLOGY
The application relates to “providing data and analysis useful in
recognizing investment related trends, threats and opportunities including
risk identification using information mined from information sources.”
Spec. ¶ 2.
REJECTION ON APPEAL
Claims 1–10, 12–30, 32–40, and 42–48 stand rejected under 35 U.S.C.
§ 101 as directed to patent-ineligible subject matter without significantly
more. Final Act. 4.
The rejection under 35 U.S.C. § 112 was withdrawn. Ans. 3.
ANALYSIS
Legal Background
“Eligibility under 35 U.S.C. § 101 is a question of law, based on
underlying facts.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1166
(Fed. Cir. 2018). The Supreme Court has set forth a two part test for § 101
to determine whether the subject matter of a claim is patentable:
(1) “whether the claims at issue are directed to” “laws of nature, natural
phenomena, and abstract ideas” and (2) “whether the additional elements
‘transform the nature of the claim’ into a patent-eligible application.” Alice
Corp. v. CLS Bank Int’l, 573 U.S. 208, 217 (2014) (quoting Mayo
Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 79, 78 (2012)).
In 2019, the U.S. Patent & Trademark Office (“USPTO”) expanded
on the Supreme Court’s test with revised guidance. USPTO, 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019)
(“Guidance”); USPTO, October 2019 Update: Subject Matter Eligibility,
Appeal 2020-000856
Application 13/423,127

3
available at https://www.uspto.gov/sites/default/files/documents/
peg_oct_2019_update.pdf (“Oct. Update”). Under that Guidance, we use the
following steps to determine whether a claim recites the following items:
USPTO
Step Does the claim recite ___? MPEP §
1 A process, machine, manufacture, or composition of matter 2106.03
2A,
Prong 1
A judicial exception, such as a law of nature or any
of the following groupings of abstract ideas:
1) Mathematical concepts, such as
mathematical formulas;
2) Certain methods of organizing human
activity, such as a fundamental economic
practice; or
3) Mental processes, such as an observation or
evaluation performed in the human mind.
2106.04
2A,
Prong 2
Any additional limitations that integrate the judicial
exception into a practical application
2106.05(a)–
(c), (e)–(h)
2B
Any additional limitations beyond the judicial
exception that, alone or in combination, were not
“well-understood, routine, conventional”
2106.05(d)
See Guidance, 84 Fed. Reg. at 52, 55, 56.
The Prior Decision
Though Appellant does not directly address it, the Board previously
affirmed a § 101 rejection in this application.2 See Decision on Appeal 4–15
(July 26, 2018) (“Prior Decision”). The Prior Decision mailed before the
release of the 2019 Guidance. Nevertheless, the Prior Decision effectively
addressed the analysis required by the Guidance, including the following:

2 Appellant is reminded that 37 C.F.R. § 41.37(c)(1)(ii) requires an appeal
brief include a “statement identifying . . . all other prior and pending appeals
. . . which . . . may be related to, directly affect or be directly affected by or
have a bearing on the Board’s decision in the pending appeal.”
Appeal 2020-000856
Application 13/423,127

4
USPTO
Step Sample Holding from Prior Decision
Sample
Pages
2A,
Prong 1
“[A]ll the steps/functions recited in Appellants’
claims . . . are nothing more than ‘processing text,
analyzing the text to identify risk, generat[ing] a risk
profile based on the analysis, compar[ing] risk
profiles, identify[ing] trend data, and stor[ing] the
result’ that can also be performed mentally or using
pen and paper.”
8–11
2A,
Prong 2
“Appellants’ claims . . . do not improve the
performance of a computer or solve a problem
specific to computers or computer networks.”
11, 14
2B
“[A]fter Alice, there can remain no doubt: recitation of
generic computer limitations does not make an
otherwise ineligible claim patent-eligible.”
14
See also Ans. 4.
The Subsequent Amendments
After the Prior Decision, Appellant amended the claims to add further
limitations. Claim 1 is representative and reproduced below with
underlining to show the text added since the Prior Decision:
1. A computer implemented method comprising:
a) processing by a computer using a classifier, at least one
tagger, and a linker, a set of textual information to automatically
identify a text string indicative of risk associated with an entity
by identifying within the text string an entity tag and a
pre-defined word, pattern, or phrase indicative of a defined risk
type, the pre-defined word, pattern, or phrase comprising a
representation of a set of sequences of tokens in the set of textual
information, wherein the set of sequences of tokens comprises at
least one sequence of tokens corresponding to a pattern of wild
cards;
b) automatically analyzing by a linguistic analyzer module
of a computer a set of linguistic characteristics of the text string
and applying a learned risk taxonomy to the text string to identify
Appeal 2020-000856
Application 13/423,127

5
a risk associated with the entity, transforming textual information
related to the identified risk into a numerical expression;
c) based upon the step of automatically analyzing,
automatically generating by the computer using an entity-
specific risk profile generation module an entity-specific risk
profile (“ERP”) associated with the entity, the entity-specific risk
profile comprising a first risk component associated with a first
risk type and a second risk component associated with a second
risk type, each risk component comprising a numerical
expression derived from an identified risk associated
respectively, with either the first or second risk type, and storing
the first and second risk components in a risk database managed
by a risk database manager, the first and second risk components
being associated with metadata from the set of textual
information;
d) automatically comparing a first entity-specific risk
profile associated with a first entity with a second entity-specific
risk profile associated with the first or an other entity, whereby
the first and second risk components associated with the first and
second entity-specific risk profiles are compared to derive a
difference;
e) automatically identifying trend data based on the
derived difference and generating a forecast based at least in part
on the trend data; and
f) storing the first and second entity-specific risk profiles
and the forecast in a memory accessible by the computer.
See Amendment (Feb. 5, 2019); Amendment (Sept. 26, 2018).
Whether the Amendments Render the Claims Eligible Under § 101
The question before us is whether the amendments, in light of the
2019 Guidance, render the claims eligible under § 101. We agree with the
Examiner that they do not.
The subsequent amendments by the Appellant have not altered
the scope of the abstract idea, nor have they provided a practical
application. They have merely provided names for modules and
Appeal 2020-000856
Application 13/423,127

6
textual data; and a step for storing risk components in a generic
computer database.
Ans. 8.
For example, in the Prior Decision, claim 1 already recited “analyzing
. . . linguistic characteristics,” so the amendment adding that this step is done
by a “linguistic analyzer module” merely gives a name that repeats the
previously-recited functionality. It fails to provide any further technical
details. The same is true for the new limitation of “using an entity-specific
risk profile generation module” to perform the previously-recited step of
“generating . . . an entity-specific risk profile.” The addition of the
“classifier,” “tagger,” and “linker” are similarly devoid of further technical
details and are never referred to again in the claims.
The amendments also specified that the previously-recited “pre-
defined word, pattern, or phrase” must now comprise “at least one sequence
of tokens corresponding to a pattern of wild cards.” But Appellant fails to
explain how this is anything more technical or less of a mental process than
the previously-recited “pattern,” such as a person mentally searching for the
pattern of any word starting with “risk” (e.g., “risking” and “risked”). Thus,
the pattern, including any wildcards, is part of the abstract idea and “[i]t has
been clear since Alice that a claimed invention’s use of the ineligible concept
to which it is directed cannot supply the inventive concept that renders the
invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC
v. BuySeasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
We likewise agree with the Examiner that storing the result in a
database is an insignificant extra-solution activity that does not provide any
technical improvement (thereby insufficient under the Guidance’s Step 2A,
Prong 2) and instead uses only generic components (thereby insufficient
Appeal 2020-000856
Application 13/423,127

7
under the Guidance’s Step 2B). As the Federal Circuit has said, “generic
computer components such as an ‘interface,’ ‘network,’ and ‘database’ . . . .
do not satisfy the inventive concept requirement.” Mortg. Grader, Inc. v.
First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016).
“This type of activity, i.e., organizing and accessing records through the
creation of an index-searchable database, includes longstanding conduct that
existed well before the advent of computers and the Internet.” Intellectual
Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017).
Appellant’s Specification likewise recognizes the preexistence of databases
in the Background of the Invention and elsewhere. E.g., Spec. ¶¶ 7, 78.
Appellant argues in conclusory fashion that “the claimed invention,
when properly viewed as a whole, is not analogous to any of the concepts
identified in the 2019 Guidance in the three identified concept groupings”
because “[c]omputers can only inherently perform basic mathematical and
logical operations.” Appeal Br. 12. Appellant interprets the “mental
process” category too narrowly. As the Guidance instructs, “[i]f a claim,
under its broadest reasonable interpretation, covers performance in the mind
but for the recitation of generic computer components, then it is still in the
mental processes category unless the claim cannot practically be performed
in the mind.” Guidance, 84 Fed. Reg. at 52 n.14 (emphasis added). Here,
Appellant fails to provide sufficient explanation why the abstract idea cannot
be performed in the human mind or with pen and paper, as held in the Prior
Decision.
Appellant also argues that “[o]ne key technical solution provided by
the method of claim 1 is the more efficient processing of large corpuses of
textual information and the storage and management of the processed
Appeal 2020-000856
Application 13/423,127

8
information to provide for timely and useful human usable output.” Reply
Br. 2. However, any alleged “speed increase comes from the capabilities of
a general-purpose computer, rather than the patented method itself.”
FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1095 (Fed. Cir.
2016); see also BSG Tech, 899 F.3d at 1288 (“These benefits, however, are
not improvements to database functionality. Instead, they are benefits that
flow from performing an abstract idea in conjunction with a well-known
database structure.”).
In sum, Appellant fails to persuade us that any of the amendments
significantly change the abstract idea, integrate the abstract idea into a
practical application, or are not well-understood, routine, and conventional.
Thus, just as in the Prior Decision, the claims are directed to an abstract idea
without significantly more.
Accordingly, we sustain the rejection of claim 1, and claims 2–10, 12–
14, 16–30, 32–40, and 42–48, which Appellant argues are patentable for
similar reasons. See Appeal Br. 15; 37 C.F.R. § 41.37(c)(1)(iv).
OUTCOME
The following table summarizes the outcome of each rejection:
Claims
Rejected 35 U.S.C. § Basis Affirmed Reversed
1–10, 12–30,
32–40, 42–48
101 Eligibility 1–10, 12–30,
32–40, 42–48

TIME TO RESPOND
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.36(a)(1)(iv).
AFFIRMED