Silvio Tavares et al.

Patent Trials and Appeals Board

Oct 21, 2019

13447024 - (D) (P.T.A.B. Oct. 21, 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.
13/447,024 04/13/2012 Silvio Tavares 87188-826868 (097180US) 4678
20350 7590 10/21/2019
KILPATRICK TOWNSEND & STOCKTON LLP
Mailstop: IP Docketing - 22
1100 Peachtree Street
Suite 2800
Atlanta, GA 30309
EXAMINER
DELICH, STEPHANIE ZAGARELLA
ART UNIT PAPER NUMBER
3623
NOTIFICATION DATE DELIVERY MODE
10/21/2019 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):
KTSDocketing2@kilpatrick.foundationip.com
ipefiling@kilpatricktownsend.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SILVIO TAVARES, SUSAN FAHY,
and DENNIS CARLSON
____________
Appeal 2018-005621
Application 13/447,024
Technology Center 3600
____________

Before JOHNNY A. KUMAR, JOHN P. PINKERTON, and
JOYCE CRAIG, Administrative Patent Judges.

CRAIG, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–21. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as First Data
Corporation. Appeal Br. 3.
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STATEMENT OF THE CASE
The Invention
Appellant’s disclosed embodiments and claimed invention relate to
market tracking and reporting using aggregated point-of-sale data. Spec.
¶ 2.
Exemplary Claim
Claim 1, reproduced below, is illustrative of the subject matter on
appeal (emphasis added to contested prior-art limitations):
1. A method for providing information regarding an
investment holding using point-of-sale (POS) data, the method
comprising:
aggregating, by an aggregation subsystem of a computer
system, POS datasets from a plurality of merchant POS
terminals in a POS network, wherein:
the computer system comprises a trend processing
subsystem, a data storage subsystem configured to store the
aggregated POS datasets, an interface subsystem comprising a
web server, at least one input device, and at least one output
device;
each POS terminal is disposed at a merchant associated
with terminal data indicating at least one merchant identifier
and at least one merchant classifier;
each POS terminal is configured to collect transaction
data as a function of transactions effected via the POS terminal;
the transaction data comprises a time of the transaction
and an amount of the transaction; and
the POS datasets comprise the terminal data and the
transaction data;
identifying a market dataset from the POS datasets
corresponding to a given market;
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generating, by the computer system, market trend data
from the market dataset;
identifying a trend event comprising one or more of data
points, data ranges, or trend results;
generating a trend explanation by analyzing the trend
event against trend analysis data and correlation data, wherein
the trend analysis data comprises one or more of explanations,
headlines, or annotations, and wherein the correlation data
comprises one or more of seasonality data, macroeconomic
data, or social data;
identifying an investment holding whose price is related
to a trend of the market trend data, the market trend data being
derived from the POS datasets;
updating the market trend data based on additional POS
datasets received by the aggregation subsystem;
performing an analysis of the updated market trend data
and the trend explanation just as soon as the market trend data
is updated to generate an estimated future price of the
investment holding;
generating a formatted graphical report of the estimated
future price, wherein the formatted graphical report is
automatically formatted using auto-graphics zones; and
transmitting, using the web server, the formatted
graphical report over a wireless communication channel to a
user device;
wherein the formatted graphical report causes the
formatted graphical report to display on the user device.
Rejections on Appeal
Claims 1–21 stand rejected under 35 U.S.C. § 101 as directed to
patent-ineligible subject matter. Final Act. 9–14.
Claims 1–5, 7–10, 12–15, and 17–20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Rotman et al. (US
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2007/0100728 A1; published May 3, 2007) (“Rotman”), Levinson (US
2005/0091146 A1; published Apr. 28, 2005), Thompson et al. (US
2003/0130966 A1; published July 10, 2003) (“Thompson”), Malov et al.
(US 2009/0144123 A1; published June 4, 2009) (“Malov”), and Hays et al.
(US 7,331,015 B2; issued Feb. 12, 2008) (“Hays”). Final Act. 15–33.
Claims 6 and 16 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rotman, Levinson, Thompson, Malov,
Hays, and Duffy et al. (US 2008/0262900 A1; published Oct. 23, 2008)
(“Duffy”). Final Act. 33–35.
Claims 11 and 21 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Rotman, Levinson, Thompson, Malov,
Hays, and Kiron (US 2011/0191234 A1; published Aug. 4, 2011). Final
Act. 35–36.
Claim Grouping
In reaching this decision, we consider all evidence presented and all
arguments actually made by Appellant. To the extent Appellant has not
advanced separate, substantive arguments for particular claims, or other
issues, such arguments are waived. 37 C.F.R. § 41.37(c)(1)(iv).
Regarding the § 101 rejection, Appellant argues claims 1–21 as a
group. Appeal Br. 15. Given our discretion under 37 C.F.R.
§ 41.37(c)(1)(iv), we decide the § 101 rejection of claims 1–21 based on
representative claim 1.
With regard to the § 103(a) rejections, Appellant argues claims 1–5,
7–10, 13–15, and 17–20 as a group. Appeal Br. 16. Appellant does not
argue claims 6, 11, 16, and 21 separately with particularity. See id. Thus,
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given our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the
§ 103(a) rejections of claims 1–21 based on representative claim 1.
ANALYSIS
Rejection of Claims 1–21 Under 35 U.S.C. § 101
Legal Standard
“Whether a claim is drawn to patent-eligible subject matter is an issue
of law that we review de novo.” SiRF Tech., Inc. v. Int’l Trade Comm’n,
601 F.3d 1319, 1331 (Fed. Cir. 2010).
The Supreme Court’s two-step framework guides our analysis of
patent eligibility under 35 U.S.C. § 101. Alice Corp. v. CLS Bank Int’l,
573 U.S. 208, 217 (2014). In addition, the Office recently published revised
guidance for evaluating subject matter eligibility under 35 U.S.C. § 101,
specifically with respect to applying the Alice framework. USPTO, 2019
Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7,
2019) (“Office Guidance”). If a claim falls within one of the statutory
categories of patent eligibility (i.e., a process, machine, manufacture, or
composition of matter) then the first inquiry is whether the claim is directed
to one of the judicially recognized exceptions (i.e., a law of nature, a natural
phenomenon, or an abstract idea). Alice, 573 U.S. at 217. As part of this
inquiry, we must “look at the ‘focus of the claimed advance over the prior
art’ to determine if the claim’s ‘character as a whole’ is directed to excluded
subject matter.” Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d
1253, 1257 (Fed. Cir. 2016).
Per Office Guidance, this first inquiry has two prongs of analysis (i)
does the claim recite a judicial exception (e.g., an abstract idea), and (ii) if
so, is the judicial exception integrated into a practical application. 84 Fed.
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Reg. at 54. Under the Office Guidance, if the judicial exception is integrated
into a practical application, see infra, the claim is patent eligible under
§ 101. 84 Fed. Reg. at 54–55. If the claim is directed to a judicial exception
(i.e., recites a judicial exception and does not integrate the exception into a
practical application), the next step is to determine whether any element, or
combination of elements, amounts to significantly more than the judicial
exception. Alice, 573 U.S. at 217; 84 Fed. Reg. at 56. If the claim is
“directed to” an abstract idea, we turn to the second step of the Alice and
Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66
(2012) 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.
To summarize, under current Office 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);2 and
(2) additional elements that integrate the judicial
exception into a practical application (see Manual for Patent
Examining Procedure (“MPEP”) §§ 2106.05(a)–(c), (e)–(h)).3

2 Referred to as “Revised Step 2A, Prong 1” in the Revised Guidance
(hereinafter “Step 2A(i)”).
3 Referred to as “Revised Step 2A, Prong 2” in the Revised Guidance
(hereinafter “Step 2A(ii)”).
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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 are 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.4
See Office Guidance.
Step 1
Claim 1, as a method [process], recites one of the enumerated
categories of eligible subject matter in 35 U.S.C. § 101. Therefore, the issue
before us is whether it is directed to a judicial exception without
significantly more.
Step 2A(i): Does the Claim Recite a Judicial Exception?
The Examiner determined that claim 1 is directed to “a process of
gathering and analyzing information of a specified content and then
displaying the results in a report,” which is an abstract idea. Final Act. 9–
12. The Examiner concluded that the steps of aggregating POS (point-of-
sale) datasets, identifying a market dataset, generating market trend data,
identifying a trend event, generating a trend explanation by analyzing the
trend event against trend analysis and correlation data, identifying an
investment holding whose price is related, updating the market trend data,

4 Items (3) and (4) continue to be collectively referred to as “Step 2B” of the
Supreme Court’s two-step framework, described in Mayo and Alice.
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performing an analysis of the updated trend data and the explanation to
generate an estimated future price, and generating an auto-graphics zone
formatted report that is transmitted and displayed, as recited in claim 1, are
part of the recited abstract idea. Id. at 10.
Consistent with Appellant’s description of the claims (Spec. ¶¶ 6–7),
we find that the following limitations are fairly characterized as processes
that can be performed in the human mind or practicably with pen and paper.
Such processes fall into the mental process category of abstract ideas. See
84 Fed. Reg. at 52.
[A]ggregating . . . POS datasets from a plurality of
merchant POS terminals in a POS network, wherein:
. . .
identifying a market dataset from the POS datasets
corresponding to a given market;
generating . . . market trend data from the market dataset;
identifying a trend event comprising one or more of data
points, data ranges, or trend results;
generating a trend explanation by analyzing the trend
event against trend analysis data and correlation data, wherein
the trend analysis data comprises one or more of explanations,
headlines, or annotations, and wherein the correlation data
comprises one or more of seasonality data, macroeconomic
data, or social data;
identifying an investment holding whose price is related
to a trend of the market trend data, the market trend data being
derived from the POS datasets;
updating the market trend data based on additional POS
datasets received by the aggregation subsystem;
performing an analysis of the updated market trend data
and the trend explanation just as soon as the market trend data
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is updated to generate an estimated future price of the
investment holding.
Claim 1 includes steps of aggregating POS datasets, identifying a
market dataset from the POS datasets, identifying a trend event, and
identifying an investment holding whose price is related to a trend of the
market trend data. Claim App’x 19. The “aggregating” limitation is simply
a data combining step, which can be performed mentally. The “identifying”
limitations involve the concept of an observation, evaluation, or judgment
that can be performed in the human mind, which also falls within the
“mental processes” grouping. See 84 Fed. Reg. at 52. Similarly, the recited
“generating,” “updating,” and “performing an analysis” limitations can be
performed in the human mind or with pen and paper. As such, claim 1
recites mental processes.
As we explained above, because the claims involve identifying,
updating, generating, and analyzing information, the claims recite steps
requiring “observation, evaluation, judgment, and opinion,” which are
mental processes. Official Guidance 84 Fed. Reg. at 52; see also Elec.
Power Grp., LLC, v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016)
(“[M]erely selecting information, by content or source, for collection,
analysis, and display does nothing significant to differentiate a process from
ordinary mental processes, whose implicit exclusion from § 101 undergirds
the information-based category of abstract ideas”).
Under the Office Guidance, mental processes are identified as a
category of abstract ideas, thus we determine that the claims recite an
abstract idea. Official Guidance 84 Fed. Reg. at 52.
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Step 2A(ii): Integrated into a Practical Application?
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “practical application” Step 2A(ii), in
which we determine whether the recited judicial exception is integrated into
a practical application of that exception by: (a) identifying whether there are
any additional elements recited in the claim beyond the judicial exception(s);
and (b) evaluating those additional elements individually and in combination
to determine whether they integrate the exception into a practical
application.
We use the term “additional elements” for claim features, limitations,
or steps that the claim recites beyond the identified judicial exception. See
Office Guidance at 55 n.24. In claim 1, the additional elements include the
limitations “an aggregation subsystem of a computer system,” “POS datasets
from a plurality of merchant POS terminals in a POS network,” “a trend
processing subsystem,” “a data storage subsystem configured to store the
aggregated POS datasets,” “an interface subsystem comprising a web
server,” “at least one input device,” “at least one output device,” and “a user
device.” In particular, the additional elements of claim 1 include the
following limitations:
the computer system comprises a trend processing
subsystem, a data storage subsystem configured to store the
aggregated POS datasets, an interface subsystem comprising a
web server, at least one input device, and at least one output
device;
each POS terminal is disposed at a merchant associated
with terminal data indicating at least one merchant identifier
and at least one merchant classifier;
each POS terminal is configured to collect transaction
data as a function of transactions effected via the POS terminal;
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the transaction data comprises a time of the transaction
and an amount of the transaction; and
the POS datasets comprise the terminal data and the
transaction data;
. . .
generating a formatted graphical report of the estimated
future price, wherein the formatted graphical report is
automatically formatted using auto-graphics zones; and
transmitting, using the web server, the formatted
graphical report over a wireless communication channel to a
user device;
wherein the formatted graphical report causes the
formatted graphical report to display on the user device.
With focus on the limitations that do not define the mental processes,
we note that the composition of the recited computer system (a trend
processing subsystem, a data storage subsystem configured to store the
aggregated POS datasets, an interface subsystem comprising a web server, at
least one input device, and at least one output device), the arrangement of
those components, and a description of the data do not improve the
functioning of a computer or another technology or technical field. We
agree with the Examiner that “[t]here is no improvement defined by the
logical structures and the specification does not describe any achieved
benefit over conventional computerized systems.” Ans. 4.
Similarly, the “generating” and “transmitting” steps do not improve
the function of a computer or another technology or technical field. Instead,
generating a formatted graphical report, transmitting the formatted graphical
report, and causing the report to display on a user device recite steps
involving insignificant extra-solution activity that merely makes use of
computer technology. We agree with the Examiner that “[n]either the
claims nor the specification illustrate or realize any specific technology
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required for the delivery of or improving conventional graphical data
delivery.” Ans. 3.
Appellant argues that the Examiner erred because “the claims recite
limitations that necessarily require the use of computer technology,” “[t]he
claimed recitations cannot be performed by a general purpose computer, nor
can these features be performed by the human mind,” and “the limitations
require the operation of specific hardware to perform the recited functions.”
Appeal Br. 8; see also Reply Br. 2–3.
We are not persuaded that the Examiner erred. Improving the
functioning of a computer can reflect integration of an idea into a “practical
application.” Office Guidance Section III; see also DDR Holdings, LLC v.
Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014); Bascom Glob. Internet
Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).
Appellant, however, does not explain, and we do not discern, any
improvement in technology from the claimed invention. Compare DDR,
773 F.3d at 1258 (Fed. Cir. 2014) (“the claims at issue here specify how
interactions with the Internet are manipulated to yield a desired result—a
result that overrides the routine and conventional sequence of events
ordinarily triggered by the click of a hyperlink.”) with Bascom, 827 F.3d at
1350 (“harness[ing a] technical feature of network technology in a filtering
system” to customize content filtering).
The claims in DDR, for example, were “necessarily rooted in
computer technology in order to overcome a problem specifically arising in
the realm of computer networks,” see, e.g., DDR, 773 F.3d at 1257, but
Appellant’s claim 1 recites data processing and report generation that merely
use generic computing elements. See Spec. ¶¶123–25; Ans. 3–7.
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As the Examiner found, the method of claim 1 may be implemented
on generic computer components. Ans. 3–4. The Specification makes clear
that the recited hardware elements can include general purpose processors
and do not require any “non-conventional arrangement of elements.” Id.
(citing Spec. ¶¶ 123–25). None of the claims provides, and nowhere in the
Specification can we find, any description or explanation as to how these
data manipulation steps are intended to provide, for example a “solution . . .
necessarily rooted in computer technology in order to overcome a problem
specifically arising in the realm of computer networks,” as explained by the
Federal Circuit in DDR Holdings. DDR, 773 F.3d at 1257. That the claim
may require the computer to be specially programmed does not claim a
solution “necessarily rooted in computer technology in order to overcome a
problem specifically arising in the realm of computer networks.” See EON
Corp. IP Holdings LLC v. AT & T Mobility LLC, 785 F.3d 616, 623 (Fed.
Cir. 2015) (“A general purpose computer is flexible—it can do anything it is
programmed to do.”); see Credit Acceptance Corp. v. Westlake Servs., 859
F.3d 1044, 1056 (Fed. Cir. 2017) (stating “merely ‘configur[ing]’ generic
computers in order to ‘supplant and enhance’ an otherwise abstract manual
process is precisely the sort of invention that the Alice Court deemed
ineligible”) (citing Alice, 573 U.S. at 220–25 (alteration in original)); id. at
1055 (discussing using generic computers to automate a manual process).
Appellant also does not direct us to any evidence that claim 1 recites
any unconventional rules, transforms or reduces an element to a different
state or thing, or otherwise integrates the idea into a practical application.
Reciting a result-oriented solution that lacks any details as to how the
computer performs the steps is the equivalent of the words “apply it.”
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Intellectual Ventures I LLC v. Capital One Fin. Corp., 850 F.3d 1332, 1341–
42 (Fed. Cir. 2017) (citing Elec. Power Grp., 830 F.3d at 1356 (cautioning
against claims “so result focused, so functional, as to effectively cover any
solution to an identified problem”)).
Moreover, Appellant’s claim 1 is unlike the technology-based
integrations cited by Appellant. See Appeal Br. 8–14. For example, in
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), the patent-
eligible claim was directed to a self-referential table to improve computer
databases. Enfish, 822 F.3d at 1330. The disclosed technique enabled faster
searching and more effective storage of data than previous methods. Id. at
1333. The court found the claims directed to “a specific improvement to the
way computers operate, embodied in the self-referential table” (id. at 1336),
and explained that the claims are “not simply directed to any form of storing
tabular data, but instead are specifically directed to a self-referential table
for a computer database” that functions differently than conventional
databases. Id. at 1337.
Likewise, in McRO, the patent-eligible claim focused on a specific
asserted improvement in computer animation. McRO, Inc. v. Bandai Namco
Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016). The claims in McRO
recited a “specific . . . improvement in computer animation” using
“unconventional rules that relate[d] sub sequences of phonemes, timings,
and morph weight sets.” McRO, 837 F.3d at 1302–03, 1307–08, 1314–15.
In McRO, “the incorporation of the claimed rules, not the use of the
computer,” improved an existing technological process. Id. at 1314.
Appellant does not direct us to any evidence that the claimed steps
correspond to unconventional rules.
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Rather, Appellant alleges claim 1 is patent-eligible because its
practice does not preempt practice by others. Appeal Br. 9. While
preemption may signal patent ineligible subject matter, the absence of
complete preemption does not demonstrate patent eligibility, “[w]here a
patent’s claims are deemed only to disclose patent ineligible subject matter
under the Mayo framework, as they are in this case, preemption concerns are
fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom,
Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015); see also OIP Techs., Inc. v.
Amazon.com, Inc., 788 F.3d 1359, 1362–63 (Fed. Cir. 2015) (“that the
claims do not preempt all price optimization or may be limited to price
optimization in the e-commerce setting do not make them any less
abstract”).
Appellant’s arguments based on Ex Parte Ravenel, Appeal 2015-
003604 (PTAB 2016), are also unavailing. See Appeal Br. 10–12, 13.
Ravenel is a non-precedential decision of the Board; therefore, it is not
binding on this panel.
Regarding Appellant’s arguments based on Amdocs (Israel) Ltd. v.
Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir. 2016), the claim in Amdocs
provided a technological solution to a technological problem—i.e., a
distributed architecture that allowed the system to “efficiently and accurately
collect network usage information in a manner designed for efficiency to
minimize impact on network and system resources.” Amdocs, 841 F.3d at
1303. Claim 1, though, does not recite a technological improvement to how
the data is processed or the formatted graphical report is created. Rather,
claim 1 uses the computer as a tool, in its ordinary capacity, to carry out the
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abstract idea. In this way, claim 1 is unlike the claim in Amdocs. Accord
Ans. 6–7 (discussing Amdocs).
Considering claim 1 as a whole, then, Appellant’s invention lacks a
technical solution to a technical problem like the claims in the cases cited by
Appellant.
Thus, claim 1 recites an abstract idea as identified in Step 2A(i),
supra, and none of the limitations integrates the judicial exception into a
practical application. Claim 1 as a whole merely uses instructions to
implement the abstract idea on a computer or, alternatively, merely uses a
computer as a tool to perform the abstract idea. Thus, on this record,
Appellant has not shown that the abstract idea is integrated into a practical
application under the guidance of Manual of Patent Examining Procedure
section 2106.05(a) (“Improvements to the Functioning of a Computer or to
Any Other Technology or Technical Field”) or section 2106.05(e) (“Other
Meaningful Limitations”).
Therefore, we conclude the abstract idea is not integrated into a
practical application and, thus, claim 1 is directed to the judicial exception.
Step 2B – “Inventive Concept”
If the claims are directed to a patent-ineligible concept, as we
conclude above, we proceed to the “inventive concept” step. In Step 2B we
“look with more specificity at what the claim elements add, in order to
determine ‘whether they identify an “inventive concept” in the application of
the ineligible subject matter’ to which the claim is directed.” Affinity Labs,
838 F.3d at 1258 (quoting Elec. Power Grp., 830 F.3d at 1353). Here, we
look to see whether there are any “additional features” in the claims that
constitute an “inventive concept,” thereby rendering the claims eligible for
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patenting even if they are directed to an abstract idea. Alice, 573 U.S. at
221. Those “additional features” must be more than “well-understood,
routine, conventional activity.” Mayo, 566 U.S. at 79.
The Examiner found that the additional elements
are recited at a high level of generality and are recited as
performing generic computer functions routinely used in
computer applications including gathering or collecting data,
transmitting information over a network, receiving inputs and
displaying outputs. Generic computer components recited as
performing generic computer functions that are well-
understood, routine and conventional activities amount to no
more than implementing the abstract idea with a computerized
system.
Final Act. 13.
We agree. As discussed above, we are not persuaded by Appellant’s
argument that the limitations of claim 1, “when taken as an ordered
combination, provide unconventional steps that confine the abstract idea to a
particular useful application.” See Reply Br. 4. Appellant’s arguments are
conclusory and unsupported by persuasive evidence and technical reasoning
identifying or explaining any alleged unconventional use of computer
software or hardware. Moreover, we see nothing in claim 1 or the
Specification suggesting that the recited “aggregation subsystem of a
computer system,” “POS datasets from a plurality of merchant POS
terminals in a POS network,” “a trend processing subsystem,” “a data
storage subsystem configured to store the aggregated POS datasets,” “an
interface subsystem comprising a web server,” “at least one input device,”
“at least one output device,” and “a user device” are anything but generic
computer components that perform well-understand, routine, and
conventional activities. See, e.g., Spec. ¶¶ 122–26.
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Thus, considering claim 1 as a whole, we determine that the additional
elements recited in claim 1 do not provide “a specific limitation or
combination of limitations that are not well-understood, routine,
conventional activity in the field.” Office Guidance, 84 Fed. Reg. at 56.
Rather, these elements “simply append[] well-understood, routine,
conventional activities previously known to the industry, specified at a high
level of generality.” Id. Accordingly, we agree with the Examiner that
claim 1 does not have an inventive concept.
Because we determine that claim 1 is directed to an abstract idea and
does not contain an inventive concept, we sustain the Examiner’s rejection
of claim 1 under 35 U.S.C. § 101. For the same reasons, we sustain the
Examiner's rejection under 35 U.S.C. § 101 of grouped claims 2–21. See
Claim Grouping, supra.
Rejection of Claims 1–21 Under 35 U.S.C. § 103(a)
We disagree with Appellant’s arguments with respect to the § 103(a)
rejections of independent claims 1 and 12 and, unless otherwise noted, we
incorporate by reference herein and adopt as our own: (1) the findings and
reasons set forth by the Examiner in the action from which this appeal is
taken, and (2) the reasons and rebuttals set forth in the Examiner’s Answer
in response to Appellant’s arguments. We highlight and address specific
findings and arguments regarding the claims for emphasis as follows.
Appellant contends the Examiner erred because the cited prior art
references do not teach or suggest an investment holding whose price is
related to a trend of the market trend data, the market trend data being
derived from the POS datasets, as claim 1 requires. Appeal Br. 15.
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Application 13/447,024

19
We are not persuaded that the Examiner erred. As the Examiner
correctly noted, nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). The test for obviousness is not whether the claimed invention is
expressly suggested in any one or all of the references, but whether the
claimed subject matter would have been obvious to those of ordinary skill in
the art in light of the combined teachings of those references. See In re
Keller, 642 F.2d 413, 425 (CCPA 1981).
Nowhere has Appellant addressed the combined teachings of Rotman
and Levinson, as cited by the Examiner. The Examiner relied on Rotman to
teach identifying an investment related to a trend in market trend data
derived from POS datasets. Ans. 7; Final Act. 18 (citing Rotman Figs. 3A–
3E, ¶¶ 24, 67, 87). The Examiner found that, although Rotman does not
explicitly recite that stocks related to the trend of the data are related by
price, Levinson teaches predicting stock prices, as well as how past price
behavior of a stock and the relationships to other scenarios can be used for
predicting price behavior. Id. (citing Levinson ¶¶ 20–22, 35–36, 44–46).
The Examiner further found that Levinson teaches outputs that are combined
to generate a final prediction, where trend data is used to determine effects
of stock prices over certain periods of time, and to produce a prediction for a
stock price. See id.
For these reasons, we are not persuaded that the Examiner erred in
finding that the combination of Rotman, Levinson, Thompson, Malov, and
Hays teaches or suggests the disputed limitation of claim 1.
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Application 13/447,024

20
Appellant further argues that “there is no nexus between the stock
price predictions of Levinson and the system of Rotman,” and that “[t]he
teachings of Levinson that relate to a product generated based on past stock
prices cannot be combined with Rotman that relate to a product generated
based on POS datasets as a simple substitution.” Appeal Br. 15–16.
We are not persuaded that the Examiner erred. The Examiner set
forth articulated reasoning with rational underpinnings for the combination.
Final Act. 22–23. Appellant has not identified any knowledge relied upon
by the Examiner that was gleaned only from Appellant’s disclosure and that
was not otherwise within the level of ordinary skill in the art at the time of
invention. See In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). Nor
has Appellant provided objective evidence of secondary considerations,
which “operates as a beneficial check on hindsight.” Cheese Sys., Inc. v.
Tetra Pak Cheese and Powder Sys., Inc., 725 F.3d 1341, 1352 (Fed. Cir.
2013).
Accordingly, we sustain the Examiner’s § 103(a) rejections of
independent claim 1 and grouped claims 2–21, which fall therewith. See
Claim Grouping, supra.

Appeal 2018-005621
Application 13/447,024

21
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Basis Affirmed Reversed
1–21 101 1–21
1–5, 7–10,
12–15, 17–
20
103(a)

Rotman, Levinson,
Thompson, Malov,
Hays
1–5, 7–10,
12–15, 17–
20

6, 16 103(a)

Rotman, Levinson,
Thompson, Malov,
Hays, Duffy
6, 16
11, 21 103(a)

Rotman, Levinson,
Thompson, Malov,
Hays, Kiron
11, 21
Overall
Outcome
1–21

DECISION
We affirm the Examiner’s decision rejecting claims 1–21.
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). See
37 C.F.R. § 41.50(f).
AFFIRMED