Jochen Lothar. Leidner et al.

Patent Trials and Appeals Board

Dec 3, 2019

12628426 - (D) (P.T.A.B. Dec. 3, 2019)

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.
12/628,426 12/01/2009 Jochen Lothar Leidner 113027.000069US0 5914
79804 7590 12/03/2019
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
12/03/2019 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 LOTHAR LEIDNER and FRANK SCHILDER
____________________

Appeal 2018-003151
Application 12/628,4261
Technology Center 3600
____________________

Before HUNG H. BUI, MELISSA A. HAAPALA, and
PHILLIP A. BENNETT, Administrative Patent Judges.

BUI, Administrative Patent Judge.

DECISION ON APPEAL
Appellant seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s final rejection of claims 1–6, 16–19, and 27–43, which are all
the claims pending in the application. Claims 7–15 and 20–26 are canceled.
App. Br. 22–28 (Claims App.). We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.2

1 We use the word “Appellant” to refer to “applicants” as defined in 37
C.F.R. § 1.42. The real party in interest is Thomson Reuters Global
Resources. App. Br. 1.
2 Our Decision refers to Appellant’s Appeal Brief (“App. Br.”) filed August
30, 2017; Examiner’s Answer (“Ans.”) mailed November 30, 2017; Reply
Brief (“Reply Br.”) filed January 30, 2018; Final Office Action (“Final
Act.”) mailed March 30, 2017; and original Specification (“Spec.”) filed
December 1, 2009.
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STATEMENT OF THE CASE
Appellant’s invention relates to “a method to accurately and
efficiently identify potential risks associated with various entities and
activities” by way of “mining risk-indicating patterns from textual databases
that can then be used to activate alerts, thus informing users, such as
analysts, that a risk may or is about to materialize.” Spec. ¶¶ 5–6; Abstract.
According to Appellant, the risk-indicating patterns are identified from
different sources, i.e., a “corpus” that includes, but is not limited to, “news,
financial information, [government agency reports, regulatory filings,
private entity publications], blogs, web pages, event streams, protocol files,
status updates on social network services, emails, short message services,
instant chat messages, Twitter tweets, and/or combinations thereof.” Spec.
¶¶ 7, 12.
Claims 1, 35, and 38 are independent. Claim 1 is illustrative of the
claimed subject matter, as reproduced below:
1. A method of risk mining, the method comprising:
accessing, using a computing device, a database that
includes a set of risk-indicating patterns, each of the set of risk-
indicating patterns including at least a first prerequisite
associated with an event, and precedes the event in time;
processing, using a risk-identification-algorithm based at
least in part on the set of risk-indicating patterns, a corpus of
textual data to identify a set of risks associated with legal
changes, the risk-identification-algorithm comprising at least a
risk miner, the risk miner searches the corpus of textual data for
instances of the risk-indicating patterns associated with the
corpus to create the set of risks associated with legal changes;
comparing the set of risks associated with legal changes
with the risk-indicating patterns to obtain a set of prerequisites
for identified risk-based events that has not occurred from the set
of risks based on a class type and a polarity, the class type
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indicating a risk class associated with the risk-indicating
patterns, the polarity indicating one of benefit and detriment
associated with the class type, the polarity being weighted to
either increase the risk class in order to reduce the detriment
associated with the class type or reduce the risk class in order to
increase the benefit associated with the class type;
routing a warning notification to a device associated with
a first user whose profile matches the class type, the warning
notification alerting the first user with respect to an identified set
of prerequisites for identified risk-based events, the warning
notification being generated based on at least a first risk-based
event unforeseeable to the first user, the notification being
transmitted prior to the actual occurrence of the first identified
risk-based event; and
transmitting, using a risk routing unit, a priority
notification to a second user indicating priority of management
of the at least one identified risk-based event and a materialized
event, the priority notification being based on the warning
notification generated to the first user, the priority notification
thereby minimizing delay in priority of an action by the second
user based on at least the first identified risk-based event.

App. Br. 22 (Claims App.).

EXAMINER’S REJECTIONS
(1) Claims 1–6, 16–19, and 27–43 stand rejected under 35 U.S.C. §
112 (pre-AIA), first paragraph, as failing to comply with the written
description requirement. Final Act. 7–8.
(2) Claims 1–6, 16–19, and 27–43 stand rejected under 35 U.S.C. §
112 (pre-AIA), second paragraph, as being indefinite. Final Act. 8–9.
(3) Claims 1–6, 16–19, and 27–43 stand rejected under
35 U.S.C. § 101 because the claimed invention is directed to a patent-
ineligible subject matter. Final Act. 4–6.

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DISCUSSION
35 U.S.C. § 112, First Paragraph: Written Description
Independent claim 1 recites, inter alia:
“processing, using a risk-identification-algorithm based at least
in part on the set of risk-indicating patterns, a corpus of textual
data.”

App. Br. 22 (Claims App.) (emphasis added). Independent claims 35 and 38
recite similar limitations.
In support of the § 112, first paragraph rejection of claims 1–6, 16–19,
and 27–43, the Examiner finds “no [risk-identification] algorithm [] is
provided in the claims or specification” and, as such, concludes the claimed
“risk-identification-algorithm” lacks written description. Final Act. 7.
Appellant argues (1) “[t]he risk-identification algorithm” and various
methods for risk identifications are described in paragraph 25 of Appellant’s
Specification; and (2) “additional examples of method for risk mining
including how risks, prerequisites, and types of risks [that] may be
identified,” are further described in paragraphs 26–31 of Appellant’s
Specification and shown in Figures 7–13. App. Br. 8.
In response, the Examiner takes the position that (1) paragraph 25 of
Appellant’s Specification “reveals no specific algorithm” and (2) “the
written description is inadequate in relation to . . . ‘a risk-identification-
algorithm,’” because “the claimed risk-identification algorithm covers all
manners of achieving the claimed result—identification of risk” whereas
“only a specific manner of risk identification is covered by the Appellant’s
disclosure,” citing LizardTech, Inc. v. Earth Res. Mapping, Inc. 424 F.3d
1336 (Fed. Cir. 2005). Ans. 3–5.
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We agree with Appellant. The written description requirement under
35 U.S.C. § 112, first paragraph only requires Appellant to “reasonably
convey[] to those skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly
& Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010). “[T]he level of detail required
to satisfy the written description requirement varies depending on the nature
and scope of the claims and on the complexity and predictability of the
relevant technology.” Id. However, “the disclosure as originally filed does
not have to provide in haec verba support for the claimed subject matter at
issue.” Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1323 (Fed.
Cir. 2000). In some cases, “drawings alone may provide a ‘written
description’ of an invention as required by § 112.” Vas-Cath, Inc. v.
Mahurkar, 935 F.2d 1555, 1565 (Fed. Cir. 1991). Regardless, the disclosure
must convey with reasonable clarity to those skilled in the art that the
inventor was in possession of the invention. Id. at 1563–1564.
Here, Appellant has shown that there is sufficient structure and
description in the specification as filed. For example, Figure 3 shows the
risk-identification algorithm 140, as incorporated into computing device
120, is provided with several components, including: (1) risk miner 220 to
identify risk based on risk indicating patterns from a database; (2) risk type
classifier 230 to classify each risk pattern by risk type (“RT”) according to a
pre-defined taxonomy of risk types (i.e., political, environmental, economic,
finance, technical, criminal, regulatory, safety or legal); (3) risk cluster 240
to group all risks in the database based on similarity, and (4) risk alerter 250
to alert a user of a risk upon a similarity matching between the risks in the
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database and likely instances of risks in textual feed 110. Figure 3 is
reproduced below with additional annotations for illustration.

Appellant’s Figure 3 shows a method of mining risks. Spec. ¶¶ 14–18.
As explained by Appellant, paragraph 25 of Appellant’s Specification
describes “a variety of methods of risk identification,” including various
examples and techniques for mining risks, shown in Figures 7–13, including
“how risks, prerequisites, and types of risks may be identified.” App. Br. 8.
We agree with Appellant that LizardTech is not applicable because
“[u]nlike the claims and described in LizardTech, the limitations of
[Appellant] claim 1 do not seek to generically claim every possible genus of
an invention while only provide a single species as an example.” Reply
Br. 2 (citing LizardTech, 424 F.3d at 1345–1346). Instead, “Appellant’s
specification provides, in addition to the methods of risk mining disclosed in
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paragraph [0025], [several] examples of risk-mining-algorithms in Figures 1
and 6–13, and those algorithms applied exemplary text corpuses in Figures
7–13 (shown as examples 1–7).” Id.
Because Appellant has “reasonably convey[ed] to those skilled in the
art that the inventor had possession of the claimed subject matter as of the
filing date,” we do not sustain the § 112, first paragraph rejection of claims
1–6, 16–19, and 27–43 for failure to comply with the “written description”
requirement.

35 U.S.C. § 112, Second Paragraph: Indefiniteness
Independent claim 1 also recites, inter alia:
“accessing, using a computing device, a database that includes a
set of risk-indicating patterns, [1] each of the set of risk-
indicating patterns including [a] at least a first prerequisite [i]
associated with an event, and [ii] preceded the event in time;

processing, using a risk-identification-algorithm based at least in
part on the set of risk-indicating patterns, a corpus of textual data
to identify [2] a set of risks associated with legal changes, the
risk-identification-algorithm comprising at least a risk miner, the
risk miner searches the corpus of textual data for instances of the
risk-indicating patterns associated with the corpus to create the
set of risks associated with legal changes;

comparing [2] the set of risks associated with legal changes with
[1] the risk-indicating patterns each including at least a first
prerequisite [i] associated with an event, and [ii] preceded the
event in time] to obtain [3] a set of prerequisites for identified
risk-based events . . .

App. Br. 22 (Claims App.) (bracketing added for emphasis). Independent
claims 35 and 38 recite similar limitations.
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In support of the § 112, second paragraph rejection of claims 1–6, 16–
19, and 27–43, the Examiner finds the usage of the terms “first prerequisite”
and “a set of prerequisites” indefinite. Final Act. 8–9. According to the
Examiner, “the prerequisites are used to identify prerequisites” and, as such,
“the claims are circular in nature, making them indefinite.” Id. at 9.
We do not agree. Whether a claim is indefinite is an issue of law.
Credle v. Bond, 25 F.3d 1566, 1576 (Fed. Cir. 1994). During prosecution,
we apply the approach for assessing indefinites approved by the Federal
Circuit in Packard, i.e., “[a] claim is indefinite when it contains words or
phrases whose meaning is unclear.” Ex parte McAward, Appeal 2015-
006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential as to
Section I.B) (citing In re Packard, 751 F.3d 1307, 1310 (Fed. Cir. 2014).
As recognized by Appellant, the term “at least a first prerequisite” is
first used in the context of a “set of risk-indicating patterns” stored in a
database and is expressly defined in each of independent claims 1, 35, and
38 as “[i] associated with an event and [ii] precedes the event in time.” App.
Br. 9. A “set of prerequisites” is then obtained by comparing [1] the risk-
indicating patterns [each including at least a first prerequisite [i] associated
with an event, and [ii] preceded the event in time] with [2] a set of risks
associated with legal changes. Id. As such, “[t]he claim recites two types of
prerequisites: 1) those that are included in the risk-indicating patterns and
are used to identify risks (‘at least a first prerequisite’); and 2) those that are
for the identified risk based events (‘a set of prerequisites’).” Reply Br. 4.
The “first prerequisite” and the “set of prerequisites” are distinct claim
elements associated with different claim limitations. App. Br. 9.
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We find a skilled artisan would understand the meaning of (1) the
term “first prerequisite” as included in the “set of risk-indicating patterns”
stored in a database and (2) the term “set of prerequisites” as obtained based
on a comparison between [1] a set of risk-indicating patterns and [2] a set of
risks associated with legal changes. We do not agree with the Examiner that
the meaning is unclear.
Separately, the Examiner also finds the term “risk miner” unclear and
indefinite because there is no corresponding structure disclosed in
Appellant’s Specification. Id. at 9. According to the Examiner, “[a]lthough
¶[0014] discusses a risk miner, the “risk miner” is not explained or described
in such a way as to give any structure to the term “risk miner.” Id.
We also disagree. Rather, we agree with Appellant that Figures 7–13
provide examples of risk mining and that the corresponding paragraphs
[0026-0031] describe embodiments for mining risk using a risk miner, which
include mining risks by identifying if P then Q events; mining risks by
identifying potential words, sequences of words, or partial phrases; and
other algorithms to mine for risk. See Appeal Br. 10. Thus, we agree with
Appellant thata “risk miner as claimed is a computer device [shown in
Figure 3] that has been programmed with specific rules and algorithms to
mine for risk in text documents.” Reply Br. 5. “The risk miner, therefore, is
the special purpose computer component that performs the act of mining for
risk as described in the specification.” Id. Therefore, we disagree with the
Examiner that the meaning of “risk miner” is unclear.
Based on this record, we are persuaded of Examiner error.
Accordingly, we do not sustain the Examiner’s § 112, second paragraph
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rejection of claims 1–5, 7–13, and 15–34 relative to the terms “prerequisites”
and “risk miner.”

35 U.S.C. § 101: Patent-Ineligible Subject Matter
In support of the § 101 rejection of claims 1–6, 16–19, and 27–43, the
Examiner determines these claims recite “a method of risk mining”
including limitations such as “comparing the set of risks . . . with the risk-
indicating patterns,” “routing a warning notification to a device,” and
“transmitting . . . a priority notification to a second user” that are nothing
more than “data acquisition, data manipulation, and data reporting” that are
considered as mental processes, i.e., all steps can be performed by a human
mentally, with pen and paper. Final Act. 5–6.
The Examiner then determines additional elements (i.e., “computing
device,” “device associated with a first user,” and “risk routing unit”), when
analyzed individually and as an ordered combination, do not amount to
significantly more than the abstract idea because these additional elements
(1) “do not recite any improvement to another technology or technical field,
nor do they recite an improvement to the functioning of the computer itself;”
(2) “require no more than a generic computer (a “computing device” in
independent claims 1, 25 [sic, 35], and 38) to perform generic computer
functions that are well-understood, routine and conventional. Final Act. 6.
Legal Framework
To determine whether claims are patent eligible under § 101, we apply
the Supreme Court’s two-step framework articulated in Alice Corp. v. CLS
Bank Int’l, 573 U.S. 208 (2014). First, we determine whether the claims are
directed to a patent-ineligible concept: laws of nature, natural phenomena,
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and abstract ideas. Id. at 216. If so, we then proceed to the second step to
consider the elements of the claims “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. at
217. In other words, the second step is to “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 218 (alteration in original,
internal quotation marks omitted).
The Federal Circuit has described the Alice step-one inquiry as
looking at the “focus” of the claims, their “character as a whole,” and the
Alice step-two inquiry as looking more precisely at what the claim elements
add—whether they identify an “inventive concept” in the application of the
ineligible matter to which the claim is directed. See Enfish, LLC v.
Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016); Internet Patents
Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015).
In an effort to achieve clarity and consistency in how the U.S. Patent
and Trademark Office (the “Office”) applies the Supreme Court’s two-step
framework, the Office has published revised guidance interpreting governing
case law and establishing a framework for all patent-eligibility analysis
under Alice and § 101 effective as of January 7, 2019. See 2019 Revised
Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50–57 (Jan. 7,
2019) (“2019 Revised Guidance”) and October 2019 Patent Eligibility
Guidance Update (October 2019 Update), as currently reflected in the
Manual of Patent Examination Procedure (MPEP) §§ 2103, 2104, 2105,
2106 and 2106.03 through 2106.07(c).
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2019 Revised Guidance
Under the 2019 Revised Guidance, we first look under Alice step 1 or
“Step 2A” to whether the claim recites:
(1) Prong One: any judicial exceptions, including certain
groupings of abstract ideas (i.e., [i] mathematical concepts,
[ii] mental processes—concepts performed in the human
mind (including an observation, evaluation, judgment,
opinion), or [iii] certain methods of organizing human activity
such as a fundamental economic practice or managing
personal behavior or relationships or interactions between
people); and

(2) Prong Two: additional elements that integrate the judicial
exception into a practical application (see Manual of Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–
(h)).3
See 2019 Revised Guidance, 84 Fed. Reg. at 51–52, 55, Revised Step 2A,
Prong One (Abstract Idea) and Prong Two (Integration into A Practical
Application). Only if a claim: (1) recites a judicial exception, and (2) does
not integrate that exception into a practical application, do we then evaluate
whether the claim provides an “inventive concept” under Alice step 2 or
“Step 2B.” See 2019 Revised Guidance at 56; Alice, 573 U.S. at 217–18.
For example, we look to whether the claim:
1) adds a specific limitation beyond the judicial exception that is
not “well-understood, routine, conventional” in the field (see
MPEP § 2106.05(d)); or

2) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high
level of generality, to the judicial exception.

3 All references to the MPEP are to the Ninth Edition, Revision 08.2017
(rev. Jan. 2018).
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See 2019 Revised Guidance, 84 Fed. Reg. at 56.
Alice/Mayo—Step 1 (Abstract Idea)
Step 2A–Prongs 1 and 2 identified in the Revised Guidance
Step 2A—Prong 1
Appellant argues independent claims 1, 35, and 38 together, further
providing specific arguments for claim 1. See App. Br. 10–20. Therefore,
we select independent claim 1 as the representative claim for the group and
address Appellant’s arguments thereto. See 37 C.F.R. § 41.37(c)(1)(iv)
(2017).
Turning now to the first step of the Alice inquiry, Appellant does not
dispute the Examiner’s determination that representative claim 1 recites “a
method of risk mining” equipped with a series of “mental processes.” Final
Act. 5–6. Instead, Appellant argues representative claim 1 is not directed to
an abstract idea because:
(1) the Examiner’s characterization of the claims is overly broad;

(2) the Supreme Court’s ruling in Alice is limited to “those
concepts which are fundamental and long prevalent” and
“concepts which have been in use for an extensive period of
time”—which “leads to a narrow definition of an ‘abstract idea’
to be an idea so old and entrenched as the concepts of hedging
risk or using a settlement intermediary, while excluding new or
modern concepts”; and

(3) the “Examiner has not cited to any specific cases where the
courts have identified patent ineligible subject matter which
Examiner believes to be directly analogous to the claimed
invention.”

App. Br. 12–14.
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Appellant’s arguments are not persuasive. At the outset, we note the
Supreme Court’s ruling in Alice is not limited to “those concepts which are
fundamental and long prevalent” and “concepts which have been in use for
an extensive period of time” as characterized by Appellant. As recognized
by the Examiner, “this is a misstatement of law.” Ans. 7. Instead, the
Office’s 2019 Revised Guidance provides the framework for all patent-
eligibility analysis under Alice and § 101 effective as of January 7, 2019,
including whether the claims are directed to a patent-ineligible concept:
“laws of nature, natural phenomena, and abstract ideas.”
Appellant’s Specification and claims describe “a method to accurately
and efficiently identify potential risks associated with various entities and
activities” by way of “mining risk-indicating patterns from textual databases
that can then be used to activate alerts, thus informing users, such as
analysts, that a risk may or is about to materialize.” Spec. ¶¶ 5–6; Abstract.
According to Appellant, the risk-indicating patterns are identified from
different sources, i.e., a “corpus” that includes, but is not limited to, “news,
financial information, [government agency reports, regulatory filings,
private entity publications], blogs, web pages, event streams, protocol files,
status updates on social network services, emails, short message services,
instant chat messages, Twitter tweets, and/or combinations thereof.” Spec.
¶¶ 7, 12. For example, Appellant’s claim 1 recites a method of risk mining,
comprising:
[1] accessing, using a computing device, a database that
includes a set of risk-indicating patterns, each of the set of risk-
indicating patterns including at least a first prerequisite
associated with an event, and precedes the event in time;

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[2] processing, using a risk-identification-algorithm based at
least in part on the set of risk-indicating patterns, a corpus of
textual data to identify a set of risks associated with legal
changes, the risk-identification-algorithm comprising at least a
risk miner, the risk miner searches the corpus of textual data for
instances of the risk-indicating patterns associated with the
corpus to create the set of risks associated with legal changes;

[3] comparing the set of risks associated with legal changes
with the risk-indicating patterns to obtain a set of prerequisites
for identified risk-based events that has not occurred from the set
of risks based on a class type and a polarity, the class type
indicating a risk class associated with the risk-indicating
patterns, the polarity indicating one of benefit and detriment
associated with the class type, the polarity being weighted to
either increase the risk class in order to reduce the detriment
associated with the class type or reduce the risk class in order to
increase the benefit associated with the class type;

[4] routing a warning notification to a device associated with
a first user whose profile matches the class type, the warning
notification alerting the first user with respect to an identified set
of prerequisites for identified risk-based events, the warning
notification being generated based on at least a first risk-based
event unforeseeable to the first user, the notification being
transmitted prior to the actual occurrence of the first identified
risk-based event; and

[5] transmitting, using a risk routing unit, a priority
notification to a second user indicating priority of management
of the at least one identified risk-based event and a materialized
event, the priority notification being based on the warning
notification generated to the first user, the priority notification
thereby minimizing delay in priority of an action by the second
user based on at least the first identified risk-based event.

App. Br. 22 (Claims App.) (bracketing added).

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As correctly recognized by the Examiner, these limitations of
Appellant’s claim 1, under their broadest reasonable interpretation, recite
nothing more than “data acquisition, data manipulation, and data reporting
related to. . . risk mining” which are considered as a series of “mental
processes” that could also be performed in the human mind or by a human
using a pen and paper (including an observation, evaluation, judgment,
opinion)—a subject matter that falls within the three groupings of abstract
ideas identified in the Revised Guidance. Final Act. 5–6; see CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372–73 (Fed. Cir. 2011)
(“[A] method that can be performed by human thought alone is merely an
abstract idea and is not patent-eligible under § 101.”); see also In re
Comiskey, 554 F.3d 967, 979 (Fed. Cir. 2009) (“[M]ental processes—or
processes of human thinking—standing alone are not patentable even if they
have practical application.”); Gottschalk v. Benson, 409 U.S. 63, 67 (1972)
(“Phenomena of nature, . . . mental processes, and abstract intellectual
concepts are not patentable, as they are the basic tools of scientific and
technological work.” (Emphasis added)). Additionally, mental processes
remain unpatentable even when automated to reduce the burden on the user
of what once could have been done with pen and paper. CyberSource, 654
F.3d at 1375 (“That purely mental processes can be unpatentable, even when
performed by a computer, were precisely the holding of the Supreme Court
in Gottschalk v. Benson.”).
For example, limitations (1)–(3) in claim 1 describe “accessing . . . a
database that includes a set of risk-indicating patterns”, “processing . . . a
corpus of textual data to identify a set of risks associated with legal
changes,” and then “comparing the set of risks associated with legal changes
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with the risk-indicating patterns to obtain a set of prerequisites for identified
risk-based events that has not occurred from the set of risks based on a class
type and a polarity” that can be performed by a person tasked to (i) review
information from different sources including, for example: “news, financial
information, blogs, web pages, event streams, protocol files, status updates
on social network services, emails, short message services, instant chat
messages, Twitter tweets, and/or combinations thereof” for “risk-indicating
patterns” or keywords (e.g., “risk” or “threat”), (ii) to observe a set of risks,
and (iii) to evaluate “risk-based events that has not occurred from the set of
risks” based on certain conditions. See Spec. ¶¶ 3, 5–7.
Limitations (4)–(5) in claim 1 describe “routing a warning notification
to a device associated with a first user whose profile matches the class type,”
and then “transmitting . . . a priority notification to a second user” that can
also be performed by the same person tasked to send such “a warning
notification” and “a priority notification,” via a pen or paper. See Spec. ¶¶ 3,
6, 36–39. We conclude that limitations (1)–(5) recited in claim 1 recite a
series of “data acquisition, data manipulation, and data reporting related to. .
. risk mining” can be performed in the human mind or by a human using a
pen and paper.
Alternatively, analyzing and identifying potential risks associated with
various entities and activities from different information sources, i.e., a
corpus of textual data recited in Appellant’s claim 1 is also a known business
activity and a fundamental economic practice in our system of commerce,
especially in the context of “research on correlations between stock prices or
stock price volatility (a proxy for risk) and published documents.” Spec.
¶¶ 1–3. Such activities are squarely within the realm of abstract ideas, like
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(1) the risk hedging in Bilski v. Kappos, 561 U.S. 593 (2010); (2) the
intermediated settlement in Alice, 573 U.S. at 220; (3) verifying credit card
transactions in CyberSource, 654 F.3d at 1370; (4) guaranteeing transactions
in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014);
(5) distributing products over the Internet in Ultramercial, Inc. v. Hulu, LLC,
772 F.3d 709 (Fed. Cir. 2014); (6) determining a price of a product offered
to a purchasing organization in Versata Dev. Grp., Inc. v. SAP America, Inc.,
793 F.3d 1306 (Fed. Cir. 2015); and (7) pricing a product for sale in OIP
Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359 (Fed. Cir. 2015).
Analyzing and identifying potential risks associated with various entities and
activities from different information sources is also a building block of
commerce and stock market and, like risk hedging and intermediated
settlement, is an “abstract idea” beyond the scope of § 101. See Alice,
573 U.S. at 220.
Thus, under Step 2A, Prong One, we agree with the Examiner that
limitations (1)–(5) in Appellant’s claim 1 recite collecting, analyzing
information to identify risks, and outputting “a warning notification” and “a
priority notification” to end users based on certain conditions, that are
nothing more than a series of “mental processes” as identified in the Revised
Guidance, and thus, an abstract idea. See 2019 Revised Guidance (Revised
Step 2A, Prong One), 84 Fed. Reg. at 52, 54.
Step 2A—Prong 2 (Integration into Practical Application)
Under Revised Step 2A, Prong Two of the Revised Guidance, we must
determine if the claims (i.e., additional limitations beyond the judicial
exception) integrate the judicial exception into a practical application.
However, we discern no additional element (or combination of elements)
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recited in Appellant’s claim 1 that integrates the judicial exception into a
practical application. See Revised Guidance, 84 Fed. Reg. at 54–55 (“Prong
Two”).
For example, Appellant’s additional elements (i.e., “computing
device,” “database,” and “risk routing unit”) recited in claim 1 do not (1)
improve the functioning of a computer or other technology, (2) are not
applied with any particular machine (except for generic computer
components), (3) do not effect a transformation of a particular article to a
different state, and (4) are not applied in any meaningful way beyond
generally linking the use of the judicial exception to a particular
technological environment, such that the claim as a whole is more than a
drafting effort designed to monopolize the exception. See MPEP
§§ 2106.05(a)–(c), (e)–(h).
Appellant argues the “claimed process is patent-eligible under 35
U.S.C. § 101” because “(1) it is tied to a particular machine or apparatus, or
(2) it transforms a particular article into a different state or thing.” App. Br.
10 (citing In re Bilski, 545 F.3d 943, 954 (Fed. Cir. 2008), aff'd 561 U.S. 593
(2010)); see also Gottschalk, 409 U.S. at 70.
We do not agree. As recognized by the Federal Circuit in
Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716 (Fed. Cir. 2014), Bilski’s
“machine-or-transformation” (MoT) test can provide a “useful clue” in the
second step of the Alice framework. See In re Bilski,4 545 F.3d at 954.

4 In In re Bilski, the Federal Circuit adopted a “machine-or-transformation”
(MoT) test to determine whether a process claim is eligible under 35 U.S.C.
§ 101. However, the Supreme Court held, in Bilski v. Kappos, 561 U.S. 593
(2010), that the “MoT” test, while a “useful and important clue,” is no
longer the sole test for determining the patent-eligibility of process claims
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However, Appellant’s claimed analysis and identification of potential risks
associated with various entities and activities from different information
sources as recited in claim 1 is neither sufficiently “tied to a particular
machine or apparatus” nor involved in any type of transformation of any
particular article.
Appellant also argues that, like the claims in Enfish, LLC v. Microsoft
Corp., 822 F.3d 1327, 1336–37 (Fed. Cir. 2016) and McRO, Inc. v. Bandai
Namco Games America, Inc., 837 F.3d 1299 (Fed. Cir. 2016), “the claims
are specifically rooted in computer technology and improve the functioning
of a computer.” Reply Br. 16; App. Br. 15. According to Appellant,
[t]he claimed method also improves the usefulness and
functionality of the computer system to the end user in part by
providing useful information from a large corpus of unprocessed
electronic data. See, e.g., Specification, paras. [0003], [0005-
0006], [0011]. Appellant’s Specification explicitly states that the
claimed method involves building a specific database and a
database was found to be patentable subject matter in Enfish.
Specification, paras. [0015], [0018]. Therefore, the functioning
of the computer system is improved because the claimed method
is more efficient when compared previous methods

App. Br. 16. Similarly,
the claimed invention [also] improves the functioning of a
computer by enabling a computer to automatically generate and
transmit an alert to a user based on comparing user profile
features to a class type and polarity. Furthermore, the claimed
invention enables a computer to perform this function
substantially faster than in prior art methods. Specification,
paras. [0003], [0005-0006].

under § 101. Since Bilski v. Kappos, the Supreme Court has created a two-
step framework in Alice, 573 U.S. 208 (2014) to address whether a claim
falls outside of § 101, which we discuss infra.
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App. Br. 17.
We do not agree. As correctly recognized by the Examiner, “data
acquisition, data manipulation, and data reporting steps related to . . . risk
mining” do not purport to “improve the performance of a computer.”
Ans. 8. Nor these steps “inherently require a computer for implementation.”
Id. Instead, “a computer is [only] used as a tool for implementation”
because (1) “[t]he use of a computer analyze data is well understood,” and
(2) “the use of a computer to perform calculations can be more efficient than
a human being manually performing calculations.” Id.
We also note Appellant’s reliance on McRO and Enfish is misplaced.
See App. Br. 15–17; Reply Br. 5–6. For example, McRO’s ’576 patent (U.S.
Patent No. 6,307,576) describes computer software for matching audio to a
3D animated mouth movement to provide lip-synched animation. McRO’s
claims contain (i) specific limitations regarding a set of rules that “define[] a
morph weight set stream as a function of phoneme sequence and times
associated with said phoneme sequence” to enable computers to produce
“accurate and realistic lip synchronization and facial expressions in animated
characters” (McRO, 837 F.3d at 1313) and, when viewed as a whole, are
directed to (ii) a “technological improvement over the existing, manual 3–D
animation techniques” that uses “limited rules in a process specifically
designed to achieve an improved technological result in conventional
industry practice.” Id. at 1316. Similarly, Enfish’s data storage and retrieval
method and system recites a “self-referential table [for a computer database]
[which] is a specific type of data structure designed to improve the way a
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computer stores and retrieves data in memory.” Enfish, 822 F.3d at 1336,
1339.
In contrast to Enfish and McRO, Appellant’s Specification and claims
do not describe “an improvement to the functioning of a computer” or a
specific improvement to the way computers store and retrieve data in
memory. See Enfish, 822 F.3d at 1336, 1339; see also Ans. 8. Rather,
Appellant’s Specification and claims describe “a method to accurately and
efficiently identify potential risks associated with various entities and
activities” by way of “mining risk-indicating patterns from textual databases
that can then be used to activate alerts, thus informing users, such as
analysts, that a risk may or is about to materialize.” Spec. ¶¶ 5–6; Abstract.
As recognized by the Examiner,
“claim 1 essentially recites mental steps for identification of
words and phrases in text that could be identified by a human
being . . . All of these steps could be done mentally (or on paper)
without the use of a computer.”

Ans. 9 (emphasis added).
For business-centric inventions such as Appellant’s invention
involving collecting, analyzing, and identifying potential risks associated
with various entities and activities from different information sources (i.e., a
corpus of textual data) for business applications such as “research on
correlations between stock prices or stock price volatility (a proxy for risk)
and published documents” (Spec. ¶¶ 1–3), the “integration into a practical
application” prong requires consideration of whether the claims purport to
provide “a technical solution to a technical problem” as required by the
Federal Circuit’s precedential decisions in (1) DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014) and (2) Amdocs
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(Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016). See
MPEP § 2106.05(a).
For example, the Federal Circuit found DDR’s claims are patent-
eligible under 35 U.S.C. § 101 because DDR’s claims: (1) do not merely
recite “the performance of some business practice known from the pre-
Internet world” previously disclosed in Bilski and Alice; but instead (2)
provide a technical solution to a technical problem unique to the Internet,
i.e., a “solution . . . necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
DDR, 773 F.3d at 1257. Likewise, the Federal Circuit also found Amdocs’
claims patent-eligible under 35 U.S.C. § 101 because like DDR, Amdocs’
claims “entail[] an unconventional technological solution (enhancing data in
a distributed fashion) to a technological problem (massive record flows
which previously required massive databases)” and “improve the
performance of the system itself.” Amdocs, 841 F.3d at 1300, 1302.
In contrast, Appellant’s invention—involving collecting, analyzing,
and identifying potential risks associated with various entities and activities
from different information sources (i.e., a corpus of textual data) before
transmission—does not provide any “technical solution to a technical
problem” as contemplated by the Federal Circuit in DDR and Amdocs. See
MPEP § 2106.05(a). For example, Appellant’s claimed “data acquisition,
data manipulation, and data reporting related to . . . risk mining” does not
provide a technical solution to a technical problem unique to the Internet,
i.e., a “solution . . . necessarily rooted in computer technology in order to
overcome a problem specifically arising in the realm of computer networks.”
DDR, 773 F.3d at 1257. Nor does Appellant’s invention entail, like Amdocs,
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any “unconventional technological solution (enhancing data in a distributed
fashion) to a technological problem (massive record flows which previously
required massive databases)” and “improve the performance of the system
itself.” Amdocs, 841 F.3d at 1300, 1302. The focus of Appellant’s
invention is not to improve the performance of computers or any underlying
technology. There is no support from Appellant’s Specification for any
feature that would improve any existing computer technology or would
overcome any problem arising in the realm of computer networks, as
Appellant argues. App. Br. 13–17. Instead, Appellant’s claims seek to
utilize a generic computer as a tool to perform the recited abstract idea, i.e.,
to solve a business problem for identifying risks. Ans. 8.
Contrary to Appellant’s arguments, using generic computer
components does not provide any “technical solution to a technical problem”
as contemplated by the Federal Circuit in DDR (see MPEP § 2106.05(a)),
and is insufficient to show “integration into a practical application.” See
MPEP § 2106.05(f). Instead, these generic computer components are simply
the “automation of the fundamental economic concept.” OIP Techs., 788
F.3d at 1362–63. “[M]erely requir[ing] generic computer implementation,”
“does not move into [§] 101 eligibility territory.” buySAFE, 765 F.3d at
1354 (second alteration in original).
A claim for a new abstract idea is still an abstract idea. See Synopsys,
Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016). “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.” See SAP America, Inc. v.
InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018).
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For these reasons, we are not persuaded that Appellant’s “additional
elements” recited in claims 1–6, 16–19, and 27–43 integrate the abstract idea
into a practical application.
Alice/Mayo—Step 2 (Inventive Concept)
Step 2B identified in the Revised Guidance
Under the 2019 Revised Guidance, 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 adds a specific limitation
beyond the judicial exception that is not “well-understood, routine,
conventional” in the field (see MPEP § 2106.05(d)); or, simply appends
well-understood, routine, conventional activities previously known to the
industry, specified at a high level of generality, to the judicial exception.
See 2019 Revised Guidance, 84 Fed. Reg. at 56. However, we find no
element or combination of elements recited in Appellant’s claim 1 that
contain any “inventive concept” or add anything “significantly more” to
transform the abstract concept into a patent-eligible application. Alice, 573
U.S. 208 at 221.
Appellant does not identify any specific limitation of claim 1 beyond
the judicial exception that is not ‘well-understood, routine, conventional’ in
the field” as per MPEP § 2106.05(d). Instead, Appellant argues the claims
recite “significantly more” than an abstract idea because, like the claims in
California Institute of Technology v. Hughes Communications, Inc., 59
F.Supp.3d 974 (C.D. Cal. 2014), “[t]he novel steps of claim 1 could not be
performed in a human mind” or “could not be replicated by a human
performing mental steps.” App. Br. 18; Reply Br. 6. According to
Appellant,
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[t]he accessing of the database, processing of an electronic data
corpus, comparing electronic data in a computer system, routing
warning notifications to a device connected to a computer
system, and transmitting notifications through a computer
network as claimed could not have been done by hand or entirely
in the mind.

App. Br. 18–19.
We do not agree. At the outset, we note Appellants’ reliance on
California Institute of Technology is misplaced because the district court’s
holding in California Institute of Technology that claims directed to
“methods of error correction in data transmission” were not directed to an
abstract idea is not analogous to Appellant’s claims directed to “risk mining”
involving “data acquisition, data manipulation, and data reporting related to.
. . risk mining.”
As previously discussed, utilizing generic computer components (i.e.,
“computing device,” “database,” and “risk routing unit”) does not alone
transform an otherwise abstract idea into patent-eligible subject matter.
Pre-emption
Lastly, Appellant argues the claims are patent-eligible because
“claim 1 does not pre-empt every system or method for ‘a method of risk
mining’” and “does not pre-empt an entire [technological] field.” Appeal
Br. 17 (citing McRO, 837 F.3d at 1299). We disagree. The lack of
preemption is a necessary clue for patent eligibility, but it is not sufficient
for patent eligibility. As the McRO court explicitly recognized, “the absence
of complete preemption does not demonstrate patent eligibility.” See McRO,
837 F.3d at 1315 (quoting Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788
F.3d 1371, 1379 (Fed. Cir. 2015)); see also Ans. 7–8. Furthermore,
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“[w]here a patent’s claims are deemed only to disclose patent ineligible
subject matter” under the Alice/Mayo framework, “preemption concerns are
fully addressed and made moot.” Ariosa, 788 F.3d at 1379.
Because Appellant’s representative claim 1 is directed to a patent-
ineligible abstract concept and does not recite an “inventive concept” or
provides a solution to a technical problem under the second step of the Alice
analysis, we sustain the Examiner’s § 101 rejection of Appellant’s claim 1,
and similarly, claims 35 and 38, and their respective dependent claims 2–6,
16–19, 27–34, 36–37, and 39–43 not separately argued.

CONCLUSION
On the record before us, we conclude Appellant has demonstrated the
Examiner erred in rejecting claims 1–6, 16–19, and 27–43 under 35 U.S.C.
§§ 112, first and second paragraphs, but has not demonstrated the Examiner
erred in rejecting claims 1–6, 16–19, and 27–43 under 35 U.S.C. § 101.

DECISION
As such, we REVERSE the Examiner’s rejections of claims 1–6, 16–
19, and 27–43 under 35 U.S.C. §§ 112, first and second paragraphs, but
AFFIRM the Examiner’s final rejection of claims 1–6, 16–19, and 27–43
under 35 U.S.C. § 101.

DECISION SUMMARY
Claims
Rejected
35 U.S.C.§ Basis Affirmed Reversed
1–6, 16–19, 27–43 112 written
description
1–6, 16–19,
27–43
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Claims
Rejected
35 U.S.C.§ Basis Affirmed Reversed
1–6, 16–19, 27–43 112 indefiniteness 1–6, 16–19,
27–43
1–6, 16–19, 27–43 101 non-statutory 1–6, 16–19,
27–43

Overall Outcome 1–6, 16–19,
27–43

Because we have affirmed at least one ground of rejection with
respect to each claim on appeal, the Examiner’s decision is affirmed. See 37
C.F.R. § 41.50(a)(1).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED