Michael Cole et al.

Patent Trials and Appeals Board

Oct 8, 2019

14509099 - (D) (P.T.A.B. Oct. 8, 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.
14/509,099 10/08/2014 MICHAEL COLE 1064.046 4307
69432 7590 10/08/2019
WEITZMAN LAW OFFICES, LLC
425 EAGLE ROCK AVENUE
SUITE 102
ROSELAND, NJ 07068
EXAMINER
ZARE, SCOTT A
ART UNIT PAPER NUMBER
3649
MAIL DATE DELIVERY MODE
10/08/2019 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MICHAEL COLE, PATRICK CHAN, KEVIN ENG, ADAM
GENN, CHARLES McMAHON, PATRICK SEDDEN, and ANAND
WAISHAMPAYAN
Appeal 2018-007220
Application 14/509,099
Technology Center 3600
Before DEBRA K. STEPHENS, CARL W. WHITEHEAD JR., and KARA
L. SZPONDOWSKI, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant,1 Morgan Stanley, appeals
from the Examiner’s decision to reject claims 1–20 (Final Act. 2). We have
jurisdiction under 35 U.S.C. § 6(b).

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
assignee MORGAN STANLEY, a corporation organized and existing under
the laws of the State of Delaware, as evidenced by an Assignment recorded
at Reel 033908, Frame 0272. Appeal Br. 1.
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We AFFIRM.
CLAIMED SUBJECT MATTER
The claims are directed to a computerized account database access
tool for complying with the Customer identification Program (“CIP”), anti-
money laundering (“AML”) requirements, and the “Know Your Customer”
(“KYC”) requirements (Spec. 1 ¶ 1). Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A computerized method of identifying accounts stored in a
database of a computerized account management system, for
review under jurisdictionally relevant CIP/AML/KYC
requirements for a plurality of jurisdictions, the method
comprising:
retrieving, using a processor, specified data from all
accounts in the database of the computerized account
management system;
for each account, using the retrieved specified data and the
processor, determining whether each account is to be evaluated
against regulatory requirements for each jurisdiction of the
plurality of jurisdictions, by comparing retrieved data for each
account with each of multiple jurisdiction-specific inclusion
rules and, in each instance where an individual account satisfies
a jurisdiction-specific inclusion rule, storing an identifier of that
individual account in inclusion results storage specific to the
jurisdiction associated with the satisfied jurisdiction-specific
inclusion rule;
applying exclusion rules associated with a specific
jurisdiction to the retrieved data for each individual account
whose identifier is stored in the inclusion storage for the specific
jurisdiction and, in each instance where the retrieved data for the
individual account satisfies one or more of the specific
jurisdiction exclusion rules, storing that individual account's
identifier in exclusion results storage along with exclusion data
reflecting the one or more satisfied jurisdiction-specific
exclusion rules; and
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merging and aggregating all of the accounts, using
contents of the inclusion results storage and exclusion data from
the exclusion results storage, to
(i) assign the accounts to per-jurisdiction buckets
for review under the relevant CIP/AML/KYC
requirements of the respective jurisdictions; and
(ii) maintain Scope/Reason buckets containing at
least one of a tag, flag, record or rule identifier reflecting,
for each account, each inclusion rule that caused them to
have specific jurisdictional associations and each
exclusion rule that caused any of the accounts to be
excluded from review under any jurisdiction's
CIP/AML/KYC requirements, such that, after the merging
and aggregating, all accounts will be analyzed and
assigned to one or more of the per-jurisdiction buckets or
at least one default bucket and none of the accounts will
go unassigned.
REJECTION
Claims 1–20 are rejected under 35 U.S.C. § 101 because the claimed
invention is not directed to patent eligible subject matter (Final Act. 2).
OPINION
Principles of Law
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 (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
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Labs., Inc., 566 U.S. 66, 75–77 (2012))). In accordance with that
framework, we first determine what concept the claim is “directed to” (see
id. 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, 191
(1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India
rubber, smelting ores” (id. at 184 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (1853))); 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 176; 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
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principle cannot be circumvented by attempting to limit the use of the
formula to a particular technological environment” (id. (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.”)).
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
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 (quotation marks 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. (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.).

USPTO January 7, 2019 Revised Section 101 Memorandum
The USPTO published revised guidance on the application of § 101
(see 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg.
50 (Jan. 7, 2019 (“Guidance”))). Under the 2019 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 (see MPEP § 2106.05(a)–(c), (e)–(h)).
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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, Section III(B)).

ANALYSIS
The Examiner concluded claims 1–20 are directed to patent-ineligible
subject matter (Final Act. 2–10). Appellant argues the invention as recited
in claims 1–20 is directed to patent-eligible subject matter (App. Br. 7–18).
Therefore, the issue presented by the arguments is whether the Examiner
erred in concluding the invention as recited is patent-ineligible.

STEP 1
Section 101 provides that “[w]hoever invents or discovers any new
and useful process, machine, manufacture, or composition of matter, or any
new and useful improvement thereof, may obtain a patent therefor, subject to
the conditions and requirements of this title” (35 U.S.C. § 101).
Representative independent claim 1 recites a method and independent claims
10 and 15 each recite a system and, thus, are each directed to a statutory
class of invention within 35 U.S.C. § 101, i.e., a process and a machine.

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STEP 2A, Prong 1
Under Step 2A, Prong 1 of the Guidance, we must determine whether
the claims, being directed to statutory classes of invention, nonetheless fall
within a judicial exception.
Appellant argues “the claims are not directed to a method of
organizing human activity” (App. Br. 10). Rather, Appellant asserts,
because the claim “acts on the results of previous human interaction, such as
data representing accounts that humans created in the past, [this claim] is not
directed to a method of organizing human activity” (id.).
Representative claim 1 recites, in part:
[(a)] retrieving, . . . , specified data from all accounts. . .
[(b)] for each account, . . . , determining whether each
account is to be evaluated against regulatory requirements for
each jurisdiction of the plurality of jurisdictions, by comparing
retrieved data for each account with each of multiple
jurisdiction-specific inclusion rules and, in each instance where
an individual account satisfies a jurisdiction-specific inclusion
rule, storing an identifier of that individual account . . . specific
to the jurisdiction associated with the satisfied jurisdiction-
specific inclusion rule;
[(c)] applying exclusion rules associated with a specific
jurisdiction to the retrieved data . . . and, in each instance where
the retrieved data for the individual account satisfies one or more
of the specific jurisdiction exclusion rules, storing that individual
account's identifier in exclusion results storage along with
exclusion data . . . ; and
[(d)] merging and aggregating all of the accounts, using
contents of the inclusion results storage and exclusion data from
the exclusion results storage, to
(i) assign the accounts to per-jurisdiction buckets
for review under the relevant CIP/AML/KYC
requirements of the respective jurisdictions; and
(ii) maintain Scope/Reason buckets containing at
least one of a tag, flag, record or rule identifier reflecting,
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for each account, each inclusion rule that caused them to
have specific jurisdictional associations and each
exclusion rule that caused any of the accounts to be
excluded from review under any jurisdiction's
CIP/AML/KYC requirements, such that, . . . , all accounts
will be analyzed and assigned to one or more of the per-
jurisdiction buckets or at least one default bucket . . .
(Claim 1). Limitations (a) and (b) recite comparing retrieved data against
inclusion rules (criteria) and, if an inclusion rule is satisfied, associating the
account with an identifier (Claim 1). Limitation (c) recites applying
exclusion rules associated with the identifier and, and if that criteria (rule) is
met, storing the identifier along with the exclusion data (id.). Limitation (d)
merges and aggregates all the accounts using the previously acquired data
and identifiers, to assign account to buckets for review and to maintain
Scope/Reason buckets containing information on the associated inclusion
rule and exclusion rule (id.). Claims 10 and 15 are similarly recited ––the
systems are recited to perform the functions discussed above. These steps
are directing to mitigating risks. As set forth in the Specification, “[t]he
possibility of any such miss [of accounts subject to CIP/AML/KYC rules
and/or requirements] creates a technical problem that results in a real
liability/compliance risk to the entity handling the missed account(s)” (Spec.
¶ 5). The Specification further describes that the present invention “reduces
or eliminates the risk of missing an account for review, re-review, or for or
during an audit” (id. ¶ 6). Even further, the Specification discloses:
We have devised a technical solution to the query/report
approach problem; a technical approach that helps ensure that
accounts do not "fall through the cracks" or will be missed for
review/re-review for compliance with policies implementing the
CIP/AML/KYC rules and/or requirements to which an account
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may be subject in each jurisdiction, for example, rules
implementing Section 526 of the U.S. Patriot Act, as well as
other regulatory processes such as Hong Kong Professional
Investors (HKPI), and the European Markets in Financial
Instruments Directive (MiFID) 2004/39/EC”
(id. ¶ 17). And even further, the Specification describes the invention is “for
use in minimizing risk associated with complying with CIP/AML/HYC
requirements by missing an account that should be certified” (id. ¶ 22).
Thus, Appellant’s Specification discloses that the purpose of its invention is
to mitigate risk of missing an account subject to compliance with
CIP/AML/KYC rules and/or requirements. The recited claims are directed
to that purpose – comparing the data with rules to see if the rules apply, and
based on that analysis, assigning accounts to various buckets based on
whether any jurisdiction’s CIP/AML/KYC requirements may apply.
Accordingly, these steps comprise fundamental economic principles
or practices and/or commercial or legal interactions; thus, the claim recites
the abstract idea of “certain methods of organizing human activity” such as
mitigating risk, sales activities and business relations (see Guidance, Section
I (Groupings of Abstract Ideas)). Our reviewing courts have found claims to
be directed to abstract ideas when they recited similar subject matter (see
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
. . . .”); Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1333 (Fed. Cir. 2012)
(claims directed to abstract idea of processing loan information through a
clearinghouse); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed.
Cir. 2014) (sequence of receiving, selecting, offering for exchange, display,
allowing access, and receiving payment recited an abstraction); Inventor
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Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (holding that sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract)).
Appellant further argues the claims are not directed to a fundamental
economic practice and in particular, “there is nothing intuitive or
fundamental about organizing accounts into ‘jurisdictional buckets’ and
Scope/Reason buckets’” (id.). We are not persuaded an ordinarily skilled
artisan in the finance field would be unaware of “[t]he laws, rules and/or
other legal controls . . . generally known as CIP, AML and/or KYC
requirements” (Spec. 1 ¶ 2). Appellant additionally describes “[t]he
possibility of any such miss [(of identifying accounts or conforming to rule)]
creates a technical problem that results in a real liability/compliance risk to
the entity handling the missed account(s)” (Spec. 2 ¶ 5). Accordingly, the
claims are directed to certain methods of organizing human activity and in
particular, fundamental economic principles or practices including
mitigating risk.
Therefore, we conclude the claims recite an abstract idea pursuant to
Step 2A, Prong One of the guidance (see Guidance, Section III(A)(1) (Prong
One: Evaluate Whether the Claim Recites a Judicial Exception)).

STEP 2A Prong 2
Under Prong Two of the Revised Guidance, we must determine
“whether the claim as a whole integrates the recited judicial exception
into a practical application of the exception” (Guidance, Section III(A)(2)).
The Guidance continues “[a] claim that integrates a judicial exception into a
practical application will apply, rely on, or use the judicial exception in a
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manner that imposes a meaningful limit on the judicial exception, such that
the claim is more than a drafting effort designed to monopolize the judicial
exception” (id.).
We acknowledge that some of the considerations at Step 2A, Prong 2,
properly may be evaluated under Step 2 of Alice (Step 2B of the Office
guidance). For purposes of maintaining consistent treatment within the
Office, we evaluate them under Step 1 of Alice (Step 2A of the Office
guidance) (see Guidance at 55 n.25, 27–32).
Appellant contends “the Examiner inappropriately strips out all
unique and specific express features of the claim” (App. Br. 12). According
to Appellant, “the entire claim must be considered” and the Examiner has
“glossed over the expressly claimed elements,” and in particular, the recited
modules (id. at 13). Appellant argues the claims recite “an unconventional
data structure and method for interacting with that particular structure” that
“improves[s] accuracy and usability and improve[s] the functionality of the
system itself” (id.).
Appellant’s Specification supports the determination that the
remaining limitations, “a processor,” “storage,” and “modules,”
implementing the claimed invention recited in claims 1, 10 and 15, use
generic computing elements performing generic computing functions. For
example, the Specification describes “reference to ‘a processor’ is intended
to encompass one, or more than one, processing element(s) whether
microprocessor(s), minicomputer or mainframe processing units, server(s),
or any other type of processing element, known or subsequently developed”
(Spec. 22 ¶ 61). The Specification further discloses storage is “in the form
of random access memory (RAM), read-only memory (ROM), non-transient
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program storage, other non-transient storage such as disks, tape, DVD, CD,
or any other media” (id.). Lastly, the Specification discloses a “module” is
to be “understood as referring to any implementation, whether entirely in
hardware, entirely in software and/or firmware running on some hardware
(i.e., executed by one or more processors), or some combination thereof” (id.
at 22–23 ¶ 62). Thus, the processes recited are performed using a generic
processor and generic storage and each of the recited systems comprises a
generic processor, generic storage, and generic modules.
We find Appellant’s claims are distinguished from those claims that
our reviewing court has found to be patent eligible by virtue of reciting
technological improvements to a computer system (see, e.g., DDR Holdings,
LLC v. Hotels.com LP, 773 F.3d 1245, 1257 (Fed. Cir. 2014) (holding that
claims reciting computer processor for serving “composite web page” were
patent eligible because “the claimed solution is necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks”); Visual Memory LLC v. NVIDIA Corp.,
867 F.3d 1253, 1259 (Fed. Cir. 2017) (holding that claims directed to “an
improved computer memory system” having many benefits were patent
eligible)). For example, Appellant contends, like in DDR, the claims are
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer databases, in that the problem
solved “is one that did not exist before computing systems” (Appeal Br. 14).
Specifically, Appellant argues the technological problem of overlooking
records is unique to database queries (Appeal Br. 15–16; Reply Br. 11).
Appellant argues the various claimed modules implement a more efficient
and extensible solution as compared to previous solutions (Appeal Br. 17).
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We disagree with Appellant that overlooking or missing records is a problem
unique to database queries. Rather, we agree with the Examiner that the
claims are directed to an improvement to the abstract idea (see Ans. 5).
Appellant also contends the claims are similar to those in McRO, Inc.
v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1303 (Fed. Cir. 2016)
(Appeal Br. 11, 14). We disagree. In McRO, the Federal Circuit concluded
that the claim, when considered as a whole, was directed to a “technological
improvement over the existing, manual 3-D animation techniques” through
the “use [of] limited rules . . . specifically designed to achieve an improved
technological result in conventional industry practice” (McRO, 837 F.3d at
1316). Specifically, the Federal Circuit found that the claimed rules allowed
computers to produce accurate and realistic lip synchronization and facial
expressions in animated characters that previously could only be produced
by human animators; and further, the rules were limiting because they
defined morph weight sets as a function of phoneme sub-sequences (id. at
1313).
We find no evidence of record here that the present situation is like the
one in McRO where computers had been unable to make certain subjective
determinations, e.g., regarding morph weight and phoneme timings, which
could only be made prior to the claimed invention by human animators. The
Background section of one of the patents at issue in McRO, Rosenfeld (US
Patent 6,307,576 B1; issued Oct. 23, 2001), includes a description of the
admitted prior art method and the shortcomings associated with that prior
method (see McRO, 837 F.3d at 1303–06). There is no comparable
discussion in Appellant’s Specification or elsewhere of record (see Appeal
Brief 12–14, Specification ¶¶ 60-62). Further, as the Federal Circuit has
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explained, a “claim for a new abstract idea is still an abstract idea”
(Synopsis, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir.
2016)). Even assuming the technique claimed was “[g]roundbreaking,
innovative, or even brilliant,” that would not be enough for the claimed
abstract idea to be patent eligible (see Ass’n for Molecular Pathology v.
Myriad Genetics, Inc., 569 U.S. 576, 591 (2013)).
Appellant contends “the claims recite a technical solution for a
problem in an electronic context that improves speed and accuracy with a
specific method of efficiently querying and storing data in a database system
(Appeal Br. 14; Reply Br. 10). We disagree. Any alleged improvement to
the efficiency, speed, and accuracy, arise out of the conventional advantages
of using the claimed computer components as tools, and not a particular
improvement to the computer itself (see Intellectual Ventures I LLC v.
Capital One Bank (USA), 792 F.3d 1363, 1370 (Fed. Cir. 2015) (“[M]erely
adding computer functionality to increase the speed or efficiency of the
process does not confer patent eligibility on an otherwise abstract idea”)).
Subsequently, we do not find Appellant’s arguments persuasive
because the claims utilize a computerized account management system
having a processor, storage, and a database without any improvement to the
functioning of the devices themselves (see Specification ¶¶ 60-62; see also
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335–36 (Fed. Cir. 2016)
(“[W]e find it relevant to ask whether the claims are directed to an
improvement to computer functionality versus being directed to an abstract
idea . . . the focus of the claims is on the specific asserted improvement in
computer capabilities (i.e., the self-referential table for a computer database)
or, instead, on a process that qualifies as an ‘abstract idea’ for which
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computers are invoked merely as a tool.”)). Instead, the claims recite, at
most, a new arrangement of information, e.g., into buckets, in order to
reduce the risk that an account is missed (see Spec. ¶ 5–6). Appellant argues
the “Scope/Reason buckets . . . provide the discrepancy highlighting
functionality that improves data quality,” and the “‘default bucket’ . . .
ensures that no account ‘slips through the cracks’ and reduces organizational
non-compliance risk (Appeal Br. 17; Reply Br. 10). However, Appellant has
not sufficiently explained how these “buckets” constitute “an
unconventional data structure” in such a way that they improve the
functioning of the computer, make the computer operate more efficiently, or
solve any technological problem.
Therefore, the claims do not recite an additional element or elements
that reflect an improvement in the functioning of a computer, or an
improvement to other technology or technical field (see Alice, 573 U.S. at
222 (“In holding that the process was patent ineligible, we rejected the
argument that ‘implement[ing] a principle in some specific fashion’ will
‘automatically fal[l] within the patentable subject matter of § 101.’”
(Alterations in original) (quoting Parker v. Flook, 437 U.S. 584, 593
(1978)))).
Accordingly, we determine the claims do not integrate the judicial
exception into a practical application (see Guidance, Section III(A)(2)
(Prong Two: If the Claim Recites a Judicial Exception, Evaluate Whether the
Judicial Exception Is Integrated Into a Practical Application)).
STEP 2B
Next, we determine whether the claims include additional elements
that provide significantly more than the recited judicial exception, thereby
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providing an inventive concept (Alice, 573 U.S. at 218–219 (quoting Mayo,
566 U.S. at 72–73)). “If a claim has been determined to be directed to a
judicial exception under revised Step 2A,” the additional elements should be
evaluated “individually and in combination . . . to determine whether they
provide an inventive concept (i.e., whether the additional elements amount
to significantly more than the exception itself)” (Guidance, Section
III(A)(2)).
Appellants argue:
[T]he Examiner’s Answer does not, as a matter of law, satisfy
the Office’s burden of showing that the claims do not amount to
“significantly more.” See Berkheimer v. HP Inc., 881 F.3d 1360
(Fed. Cir. 2018). “Whether something is well-understood,
routine, and conventional to a skilled artisan at the time of the
patent [application] is a factual determination” (id. at 1369), and
cannot be maintained without an express admission by the
applicant, citation to a court decision or other appropriate
publication, or a taking of official notice based on an examiner's
personal certainty. (See April 2018 Memo Re: Changes in
Examination Procedure Pertaining to Subject Matter Eligibility,
at 3-4)

(Reply Brief 8). The Guidance in Section III(B), footnote 36 states
(emphasis added):
In accordance with existing guidance, an examiner’s conclusion
that an additional element (or combination of elements) is well
understood, routine, conventional activity must be supported
with a factual determination. For more information concerning
evaluation of well-understood, routine, conventional activity, see
MPEP 2106.05(d), as modified by the USPTO Berkheimer
Memorandum.
We do not find Appellant’s argument persuasive of Examiner error.
The Examiner determines, ‘“[t]he term ‘fundamental’ is used in the sense of
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being foundational or basic, and not in the sense of necessarily being ‘old’
and ‘well-known’” (July 2015 Update: Subject Matter Eligibility, p. 4 [“The
phrase ‘fundamental economic practices’ is used to describe concepts
relating to the economy and commerce, such as agreements between people
in the form of contracts, legal obligations, and business relations. The term
‘fundamental’ is used in the sense of being foundational or basic, and not in
the sense of necessarily being ‘old’ or ‘well‐known.’],” Final Action 3).
Thus, Appellant’s arguments are not persuasive.
Furthermore, we agree with the Examiner’s determination that the
claims do not recite “more than the abstract idea itself” (Final Act. 7) and
therefore, do not include additional elements providing significantly more
than the recited judicial exception. In particular, we agree with the
Examiner that the claims recite “‘retrieving . . . specified data,’ ‘comparing
[] data . . . ,’ ‘applying exclusion rules,’ ‘storing [] individual account's
identifier in exclusion results storage [] with exclusion data . . . ,’ and
‘merging and aggregating’ data” (Final Act. 7) (see Inventor Holdings, LLC
v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir. 2017) (holding
that considering claims reciting data retrieval, analysis, modification,
generation, display, and transmission as an “‘ordered combination”’ reveals
that they “amount to ‘nothing significantly more’ than an instruction to
apply [an] abstract idea” using generic computer technology) (internal
citation omitted); 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”);
Alice, 573 U.S. at 224–26 (receiving, storing, sending information over
networks is insufficient to add an inventive concept)).
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Application 14/509,099

18
Similarly, the remaining claim limitations recited in independent
claims 10 and 15, which are not part of the abstract idea discussed above,
recite generic computing elements and functions, e.g., “processor,”
“storage,” and various “modules” running on the processor (see, e.g., Mortg.
Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25
(Fed. Cir. 2016) (holding that “generic computer components such as an
‘interface,’ ‘network,’ and ‘database’” did not satisfy the “inventive
concept” requirement); Fair Warning IP, LLC v. Iatric Sys., Inc., 839 F.3d
1089, 1096 (Fed. Cir. 2016) (noting that using generic computing
components like a microprocessor or user interface do not transform an
otherwise abstract idea into eligible subject matter); Prism Techs. LLC v.
T-Mobile USA, Inc., 696 F. App’x 1014, 1016–17 (Fed. Cir. 2017)
(describing the claimed “authentication server,” “access server,” “Internet
Protocol network,” “client computer device,” and “database” as
“indisputably generic computer components”)).
Moreover, to the extent Appellant relies on the novelty or non-
obviousness (Appeal Br. 18), “[t]he ‘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)). A novel and nonobvious claim directed to a purely abstract idea
is, nonetheless, patent ineligible (see Mayo, 566 U.S. at 90).
We, thus, conclude the claims do not provide an inventive concept
because the additional elements recited in the claims do not provide
significantly more than the recited judicial exception. Therefore,
independent claims 1, 10, and 15 do not recite patent-eligible subject matter
Appeal 2018-007220
Application 14/509,099

19
under 35 U.S.C. § 101. Claims 2–9, 11–14, and 16–20 depend from
independent claims 1, 10, and 15, respectively. Appellant did not argue
these claims separately, instead relying on the arguments set forth for the
independent claims (see generally App. Br.). Accordingly, claims 2–9, 11–
14, and 16–20 are not directed to patent-eligible subject matter under 35
U.S.C. § 101.
DECISION
The Examiner’s rejection of claims 1–20 under 35 U.S.C. § 101 for
being directed to patent ineligible subject matter is affirmed.
FINALITY AND 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