Michael Lee. Mattox

Patent Trials and Appeals Board

Sep 3, 2019

13448334 - (D) (P.T.A.B. Sep. 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.
13/448,334 04/16/2012 Michael Lee Mattox 2921621-000001 9837
7590 09/03/2019
Michael Lee Mattox
Suite 320
673 Woodland Square Loop SE
Lacey, WA 98503
EXAMINER
POE, KEVIN T
ART UNIT PAPER NUMBER
3692
MAIL DATE DELIVERY MODE
09/03/2019 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 LEE MATTOX
____________

Appeal 2018-002712
Application 13/448,334
Technology Center 3600
____________

Before ANTON W. FETTING, AMEE A. SHAH, and
MATTHEW S. MEYERS, Administrative Patent Judges.

SHAH, Administrative Patent Judge.

DECISION ON APPEAL1
The Appellant2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 3, 5, 7–14, and 16–21, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b).3
We AFFIRM.

1 Throughout this Decision, we refer to the Appellant’s Appeal Brief
(“Appeal Br.,” filed June 16, 2017), Reply Brief (“Reply Br.,” filed Jan. 17,
2018), and Specification (“Spec.,” filed Apr. 16, 2012), and to the
Examiner’s Answer (“Ans.,” mailed Nov. 17, 2017) and Final Office Action
(“Final Act.,” mailed June 17, 2016).
2 According to the Appellant, the real party in interest is “Access the USA,
LLC.” Appeal Br. 2.
3 We note that a Notice of Hearing was mailed June 12, 2019. The
Appellant’s failure to respond resulted in waiver of the oral hearing.
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STATEMENT OF THE CASE
The Appellant’s invention “relates generally to computer software.
More specifically, the invention relates to a method for financing
investments that meet the requirements of the United States government’s
EB-5 immigrant investor visa program.” Spec. 1, ll. 6–8.
Claim 3, reproduced below, is the only independent claim on appeal
and is representative of the subject matter on appeal:
3. An immigrant investor visa system useful for
establishing and operating economic development projects with
investors to qualify for seeking a visa upon economic
participation therein, comprising:
a computer system application server configured with a
computer database and a communicator for accessing a
communications network, the computer database for tracking at
least one economic development project financed by a project
capital investment;
a plurality of investor capital investments each purchasing
a respective portion of the project capital investment issued by
an entity established for the economic development project
funded by the project capital investment, the project capital
investment comprising at least one bond issued by the entity,
each investor capital investment received from a respective one
of a plurality of investors that participate on a pro rata basis in
the economic development project;
the computer database operatively connected to the
computer system application server accessible through the
communications network connecting with at least one
workstation and configured for receiving, maintaining and
displaying information as to the economic development project
and as to each of the plurality of the investors, including
financing criteria information for the economic development
project comprising one or more of infrastructure research
information, economic modeling information, business and
project document information, marketing information, and for
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each of the respective one of the plurality of investors pro rata
economic development project expenses and revenues and
investment transaction information thereof;
an escrow account to hold a pooled amount accumulated
from the plurality of investor capital investments received from
the plurality of the investors until purchase of the at least one
bond of the project capital investment;
a securities depository having a plurality of broker
accounts through which a broker / dealer associated with a
respective one of the broker accounts pays for the at least one
bond using at least a portion of the pooled amount held in the
escrow account and receives the at least one bond from the entity
after payment therefor, the securities depository organized as a
banking organization, a clearing corporation, and a securities
clearing agency for acquiring bonds directly from a selected one
of a plurality of issuers of bonds, the plurality of issuers of bonds
including the entity, and for holding bonds on behalf of a
plurality of third parties; and
a plurality of accounts provided by the broker / dealer,
each account to hold a pro-rata value representative of the at least
one bond in association with a respective one of the plurality of
investors based on the investor capital investment thereof and
configured for receiving a respective pro-rata portion of a
plurality of periodic payments from the entity, which sum of
periodic payments accumulates to equal the investor capital
investment of the said respective one of the plurality of investors
and a time-based interest amount;
whereby each one of the plurality of investors, being
invested in the economic development project funded by the
project capital investment, may qualify for seeking to receive an
immigrant visa and receive following a pre-determined period a
payment of the accumulated amount in the respective account
thereof.
Claims App’x. 1–2.
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THE REJECTION4
Claims 3, 5, 7–14, and 16–21 stand rejected under 35 U.S.C. § 101 as
being directed to a judicial exception without significantly more. Ans. 4.

ANALYSIS
The Appellant argues claims 3, 5, 7–14, and 16–21 as a group. See
Appeal Br. 16, 23. We select claim 3 from the group with the remaining
claims standing or falling therewith. See 37 C.F.R. 41.37(c)(1)(iv).
35 U.S.C. § 101 Framework
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
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 Alice,
573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)

4 The Examiner has withdrawn the rejections under 35 U.S.C. § 103 of
claims 3, 5, 7–14, and 16–21. Ans. 5.
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(“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, 67 (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 182 n.7 (quoting Corning v. Burden, 56 U.S.
252, 267–68 (185))); 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 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
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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 (citation omitted).
“A claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (alterations in original) (quoting Mayo,
566 U.S. at 77). “[M]erely requir[ing] generic computer implementation[]
fail[s] to transform that abstract idea into a patent-eligible invention.” Id.
Earlier this year, the PTO published revised guidance on the
application of § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY
GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (“2019 Revised Guidance”).
Under the 2019 Revised 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 MANUAL OF PATENT EXAMINING
PROCEDURE (MPEP) §§ 2106.05(a)–(c), (e)–(h) (9th Ed., Rev.
08.2017, Jan. 2018)).
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:
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(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 2019 Revised Guidance.
Step One of the Mayo/Alice Framework
Under the first step of the Mayo/Alice framework, the Examiner
determines that claim 3 is “directed towards financing investments that meet
the requirements of the United States government's EB-5 immigrant investor
visa program” (Final Act. 7), which is a “fundamental economic practice
long prevalent in our system of commerce, which is in the realm of abstract
ideas identified by the Supreme Court” (id. at 9) and “involve[s] certain
methods of organizing human activity that have been found by the courts to
be abstract ideas” (Ans. 5). When viewed through the lens of the 2019
Revised Guidance, the Examiner’s analysis depicts the claimed subject
matter as a “[c]ertain methods of organizing human activity—fundamental
economic principles or practices (including hedging, insurance, mitigating
risk)” under Prong One of Revised Step 2A. 2019 Revised Guidance, 84
Fed. Reg. at 52.
The Appellant contends that the claim is “directed to influencing
investment activities of capital investors [for] the purpose of . . .
encourag[ing] investment funding of economic development projects
through a primary direct bond purchase/issuance on behalf of capital
investors making capital investments into a regional center charged with job
growth and economic development.” Appeal Br. 18; see also Reply Br. 3.
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We agree with and adopt the Examiner’s findings and determinations
under Prong One that claim 3 recites a method for financing instruments that
meet government requirements, a fundamental economic process or practice
similar those in Alice and similar cases that is a method of organizing human
activity, and thus an abstract idea. See Final Act. 7–9; Ans. 5–8. However,
even under the Appellant’s characterization of the claim reciting a way of
influencing investment activities and encouraging investment funding, the
claim recites a fundamental economic process or practice similar to hedging
against financial risk in Bilksi, 561 U.S. at 609, to using a third party to
mitigate settlement risk in Alice, 573 U.S. at 219–220, and collecting and
analyzing investment data in SAP America, Inc. v. Investpic, LLC, 898 F.3d
1161, 1167–68 (Fed. Cir. 2018), and thus an abstract idea.
Under Step 2A, Prong 2 of the 2019 Revised Guidance, 84 Fed. Reg.
at 54, we look to whether the claims “apply, rely on, or use the judicial
exception in a manner that imposes a meaningful limit on the judicial
exception, such that the claim is more than a drafting effort designed to
monopolize the judicial exception,” i.e., “integrates a judicial exception into
a practical application.” Here, the Appellant contends
The claim[] include[s] an inventive concept that ensures the
invention amounts to “significantly more” in that the claim[]
“looked at as a whole” include[s] meaningful limitations that
affect another technology or technological field involving the
finance industry and patentably directed to a particular
application whereby capital investors may possibly qualify for
an immigrant visa, without preemption of the abstract idea.
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Appeal Br. 18; see also Reply Br. 3–4.5 When viewed through the lens of
the 2019 Revised Guidance, the Appellant contends that under Prong Two,
the elements of the claim integrate the abstract idea into a practical
application because “[a]n additional element reflects an improvement in the
functioning of a computer, or an improvement to other technology or
technical field.” 84 Fed. Reg. at 55. We disagree. Claim 3 recites a system
comprising the components of a computer application server, a plurality of
investments, a computer database, an escrow account, a securities
depository, and a plurality of accounts. See Claims App’x. 1–2. The
Specification describes the application server as a conventional server and is
used interchangeably with “‘application,’ ‘computer program,’ ‘computer
process,’ ‘computer application,’ etc., . . . and deemed for the purposes of
this application and claims to mean one or more computer applications
performing the computer functions herein described unless otherwise
indicated.” Spec. 7, ll. 10–21. The claimed database is a conventional data
storage structure. See id. at 8, ll. 1–10. The investments, escrow and other
accounts, and depository are non-tangible financial records and contractual
relationships. See id. at 9, l. 11–10, l. 23.
Further, contrary to the Appellant’s contention, “economic
development projects funded by capital investments of a plurality of capital
investor for job creation and economic developments” (Appeal Br. 18)
and/or “business development and economic growth” (Reply Br. 4) are not

5 We acknowledge that some of these considerations may be properly
evaluated under Step 2 of Alice (Step 2B of Office guidance). Solely for
purposes of maintaining consistent treatment within the Office, we evaluate
them under Step 1 of Alice (Step 2A of Office guidance). See 2019 Revised
Guidance at 55.
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technological fields, but abstract commercial and financial fields. See Alice,
573 U.S. at 219–21. The “focus” of the claim is not “on the specific asserted
improvement in computer capabilities” (Enfish, LLC v. Microsoft Corp., 822
F.3d 1327, 1335 (Fed. Cir. 2016), but rather on using the computer as a tool
to implement the abstract idea in the particular field of funded economic
development projects. See Affinity Labs of Tex., LLC v. DIRECTV, LLC,
838 F.3d 1253, 1259 (Fed. Cir. 2016) (“merely limiting the field of use of
the abstract idea to a particular . . . environment does not render the claim
any less abstract”).
We disagree with the Appellant’s contention that the clam is similar to
those of McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed.
Cir. 2016) because “the [Appellant’s] specification details the problem
addressed by the invention in the technical fields of investment and
immigrant visa programs.” Appeal Br. 19; see also Reply Br. 4–6. In
McRO, the claims were directed to a specific improvement in computer
animation and used rules to automate a subjective task of humans to create a
sequence of synchronized, animated characters. See McRO, 837 F.3d at
1314–15. Unlike Flook, Bilski, and Alice, it was not the use of the computer
but the incorporation of the rules that improved an existing technological
process. Id. at 1314.
Here, as discussed above, there is no such improvement to technology
or a technological process. The claimed system comprises conventional
computer functions and non-tangible financial records and contractual
agreements without reciting how the functions of accessing, purchasing/
paying, receiving, maintaining, and displaying information, including
monetary information, are performed technologically other than manually or
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by using conventional computer components in their ordinary capacities.
The Appellant also does not direct our attention to anything in the
Specification to indicate that the invention provides a technical improvement
in accessing, purchasing/paying, receiving, maintaining, or displaying data
or that it incorporates rules to automate a subjective task of humans, as in
McRO. The problem being addressed, i.e., complexities of financing
projects (see Appeal Br. 19–20), is not one arising out of the realm of
computers, and the purported solution comprises, at best, conventional
computer components operating in their ordinary capacities and manual
accounts and business organizations. The benefit of the invention is not a
technical or technological improvement, but rather, any benefit lies in the
ability “of individual capital investors [to] participate in capital bonds that
generate jobs in an economic development project.” Appeal Br. 21. This
alleged improvement lies in the abstract idea itself, not to any technological
improvement. See BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281,
1287–88 (Fed. Cir. 2018).
Thus, we are not persuaded of error in the Examiner’s determination
that claim 3 is directed to an abstract idea.
The Second Step
Under the second step in the Alice framework (corresponding to Step
2B of the 2019 Revised Guidance), we find supported the Examiner’s
determination that the claim’s limitations, taken individually or as an
ordered combination, do not amount to significantly more than the judicial
exception and that the computer components “recited at a high level of
generality and its broadest reasonable interpretation perform generic
computer functions. Generic computers performing generic computer
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functions to apply an abstract idea do not amount to significantly more than
the abstract idea.” Final Act. 10; see also Ans. 9–10.
The Appellant does not offer additional reasoning or argument why
the claims “[a]dd[] a specific limitation or combination of limitations that
are not well-understood, routine, conventional activity in the field, which is
indicative that an inventive concept may be present.” 2019 Revised
Guidance, 84 Fed. Reg. at 56. Rather, the Appellant argues that the claim
“provides meaningful limitations that together form an unconventional,
patentable combination by which capital investments of individual capital
investors participate in capital bonds that generate jobs in an economic
development project” that “is not the same as the prior systems” (Appeal
Br 21; see also Reply Br. 4, 6–8) and that there is “No Preemption Of
Abstract Idea Nor Mere Implementation” (Appeal Br. 22 (emphasis
omitted); see also Reply Br. 6–8). We disagree.
With regards to the Appellant’s contention that the claim recites an
inventive concept because it recites an “unconventional, patentable
combination . . . [that] is not the same as the prior systems” (Appeal Br. 21)
and a “novel combination of investor financing though the primary bond
market” (Reply Br. 4), an abstract idea does not transform into an inventive
concept just because the prior art does not disclose or suggest it. See Mayo,
566 U.S. at 78. The “structures” of the investments, accounts, and
depository and the functions of accessing, purchasing/paying, receiving,
maintaining, and displaying data are all part of the abstract idea. “It 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
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invention ‘significantly more’ than that ineligible concept.” BSG Tech LLC
v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018).
Regarding the Appellant’s argument that claim 3 is not directed to an
abstract idea because it does not “preempt others from the abstract idea
primary bond purchase/investment transactions nor preclude inventive
activities by others in this field” (Appeal Br. 21–22; see also Reply Br. 4),
although the Supreme Court has described “the concern that drives this
exclusionary principle[, i.e., the exclusion of abstract ideas from patent
eligible subject matter,] as one of pre-emption” (see Alice, 573 U.S. 208),
characterizing preemption as a driving concern for patent eligibility is not
the same as characterizing preemption as the sole test for patent eligibility.
“The Supreme Court has made clear that the principle of preemption is the
basis for the judicial exceptions to patentability” and “[f]or this reason,
questions on preemption are inherent in and resolved by the § 101 analysis.”
Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir.
2015) (citing Alice, 573 U.S. 208); cf. Reply Br. 2–3. Although “preemption
may signal patent ineligible subject matter, the absence of complete
preemption does not demonstrate patent eligibility.” Id.
Taking the claimed elements separately, the functions performed by
the computer are purely conventional. The claimed application server and
database comprise a conventional, general purpose computer. See supra. It
is clear, from the Specification, including the claims’ language, that the
“limitations require no improved computer resources [the Appellant] claims
to have invented, just already available computers, with their already
available basic functions, to use as tools in executing the claimed process”
performed by the claimed system. SAP Am., 898 F.3d at 1169–70. We
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agree with the Examiner that the application server and database operate in
their ordinary and conventional capacities to perform the well-understood,
routine, and conventional functions of accessing, purchasing/paying,
receiving, maintaining, and displaying data. See Elec. Power Grp., LLC v.
Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (gathering, sending,
monitoring, analyzing, selecting, and presenting information does not
transform the abstract process into a patent-eligible invention); Inventor
Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d 1372, 1378 (Fed. Cir.
2017) (method for purchasing goods did not supply inventive concept); SAP
Am., 898 F.3d at 1170 (“[A]n invocation of already-available computers that
are not themselves plausibly asserted to be an advance, for use in carrying
out improved mathematical calculations, amounts to a recitation of what is
‘well-understood, routine, [and] conventional.’”) (quoting Mayo, 566 U.S.
at 73); Alice, 573 U.S. at 226 (“Nearly every computer will include a
‘communications controller’ and ‘data storage unit’ capable of performing
the basic calculation, storage, and transmission functions required by the
method claims.”).
Considered as an ordered combination, the components of the
Appellant’s claim add nothing that is not already present when the steps are
considered separately. The sequence of data communication (accessing and
receiving), analyzing (determining and weighting), and using the analysis to
generate or adjust data is equally generic and conventional or otherwise held
to be abstract. See Intellectual Ventures I LLC v. Capital One Fin. Corp.,
850 F.3d 1332, 1341 (Fed. Cir. 2017) (holding that the sequence of
collecting, organizing, identifying, mapping, organizing, defining, and
detecting was abstract); Elec. Power, 830 F.3d at 1354–56 (holding that the
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sequence of gathering, analyzing, and displaying in real-time was abstract);
Inventor Holdings, LLC v. Bed Bath & Beyond, Inc., 876 F.3d at 1378
((holding that the sequence of data retrieval, analysis, modification,
generation, display, and transmission was abstract); SAP Am., 898 F.3d
at 1170 (holding that the sequence of transmitting, receiving, providing,
submitting, and receive data for purchase of a good was ordinary and
conventional.
Thus, we are not persuaded of error in the Examiner’s determination
that the limitations of claim 3 do not transform the claims into significantly
more than the abstract idea.
For at least the reasons above, we sustain the Examiner’s rejection
under 35 U.S.C. § 101 of independent claim 3 and dependent claims 5, 7–14,
and 16–21, the rejection of which stands with claim 3.

DECISION
The Examiner’s rejection of claims 3, 5, 7–14, and 16–21 under
35 U.S.C. § 101 is AFFIRMED.
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)(l)(iv).
AFFIRMED